Sales Affiliates v. Hutzler Bros. Co.

• Decision Date: 29 January 1947
• Docket Number: No. 2496,2935.,2496
• Citation: 71 F. Supp. 287
• Parties: SALES AFFILIATES, Inc., v. HUTZLER BROS. CO. SAME v. CARTER PRODUCTS, Inc.
• Court: U.S. District Court — District of Maryland

71 F. Supp. 287

SALES AFFILIATES, Inc., v. HUTZLER BROS. CO.

SAME v. CARTER PRODUCTS, Inc.

Nos. 2496, 2935.

District Court, D. Maryland.

January 29, 1947.

COPYRIGHT MATERIAL OMITTED

Morgan, Finnegan & Durham, of New York City, and Piper, Watkins, Avirett & Egerton, of Baltimore, Md., for plaintiff.

Campbell, Brumbaugh & Free, of New York City, Venable, Baetjer & Howard, of Baltimore, Md., Worthington Campbell and Leland L. Chapman, both of New York City, and Raymond Clark, of Baltimore, Md., for defendants.

COLEMAN, District Judge.

This is a patent infringement suit. The plaintiff, Sales Affiliates, Inc., a New York corporation, is the assignee of United States patent No. 2352524, granted June 27, 1944, on application of June 20, 1938, to Ralph L. Evans and Everett G. McDonough, for a depilatory, that is, for an agent for the removal of hair from the human body.

Schering Corporation, a New Jersey company engaged in the business of manufacturing and selling cosmetic preparations, is the exclusive licensee of the plaintiff under this patent for making and selling a depilatory known as IMRA. One of the defendants, Hutzler Brothers Company, a Maryland corporation, sells a depilatory known as SLEEK, manufactured by Elizabeth Arden, Inc., a New York corporation. Plaintiff first sued Hutzler Brothers Company, claiming infringement of the patent. Shortly thereafter, a similar suit was brought by plaintiff against Carter Products, Inc., a Maryland corporation, which makes and sells a depilatory known as NAIR. The Schering Corporation, at the commencement of the trial of the present suit, petitioned for leave to intervene, but this right was denied because in contravention of the express provisions of the license agreement between that corporation and the plaintiff; and also because of the absence of any showing that the Schering Corporation's rights under that agreement would not be adequately protected, even though it was denied the right to intervene at this time.

The two suits were consolidated and tried together. Both defendants have asserted the usual defenses of (1) non-infringement, and (2) invalidity of the patent. The patent embraces 17 claims. However, only six are in suit, namely, Nos. 2, 6, 11, 12, 13 and 17, and counsel for defendants virtually conceded infringement of all of them in the course of the hearing, but deny their validity.

The novelty claimed for the patent is that the compound which it embraces is the first chemical depilatory to combine all of the following characteristics: (1) absence of objectionable odor; (2) non-irritating and harmless to the human skin; and (3) quick and completely effective in its depilating results. The alleged invention may best be understood by quoting the following from the specifications of the patent itself: "The practice of removing hair from the skin of certain parts of the body has been followed for many years. Various methods such as shaving, abrading, plucking, electrolysis, etc., have been resorted to, but the method most popular for removal of hair from the arms, armpits, and legs, particularly of women, employs preparations whose chemical action on the hair fibre sufficiently weakens it so that the hair above the skin surface may be wiped or washed off in a few minutes after applying. These preparations are known as depilatories and are sold in liquid, paste or powder form. The latter is made into a paste by addition of sufficient water in order to be used.

"These chemical preparations contain as their effective ingredients, one or more of the alkali or alkaline-earth salts of hydrogen sulfide. Such salts have a tendency to hydrolyze and have an appreciable vapor pressure due to the hydrogen sulfide gas. Their use in any product imparts to it the disagreeable odor that is reminiscent of rotten eggs. All attempts to mask the odor result in failure. The use of heavy perfume and gaseous absorbents, such as clays and charcoals, only serve to minimize the objectionable odor. If the alkalinity is increased, the odor is reduced but the possible danger due to irritation of the skin is increased. If the sulfide is oxidized to an odorless form, its odor is destroyed, but also the effectiveness of the product is lost.

"Another disadvantage that accompanies the use of these sulfides is that when present in a paste they impart to it an unattractive greenish cast, probably due to the formation of insoluble colored metallic sulfides.

"Besides the disgusting odor that accompanies the use of hydrogen sulfide salts is the fact that the liberated or free hydrogen sulfide that escapes into the room is toxic to breathe and although in such dilution it is probably not dangerous, nevertheless, together with its nauseating odor it has caused certain individuals to become ill.

"Also the escape of this hydrogen sulfide gas into the home causes black coating of most metal utensils, such, for example, as silverware or jewelry. Also, it is retained and imparts its loathsome odor to fabrics and rugs, etc.

"The object of our invention is the production of depilating preparations which have none of these disadvantages. There are no objectionable odors, a white paste is produced, a delicate perfume may be used and silverware or other metals are not tarnished if brought in contact with the preparation. Depilating preparations made in accordance with our invention will remove hair quickly (within 5 to 10 minutes), depending on coarseness of the hair, safely (without injury to the skin), and effectively (no stubble left).

* * * * * *

"A depilatory to achieve its purpose must destroy hair without damaging or even irritating the outermost layers of the skin. The difficulty of accomplishing this object appears almost insurmountable when one realizes the close chemical relation that exists between the outer skin (epidermis) and hair. Further, in a commercially successful preparation the depilatory must remove even the most resistant and coarse hair and yet not injure or irritate the most delicate and sensitive skin. Further, the depilation must take place in a very short time, not to exceed about thirty minutes, not only because the user will be annoyed the longer the time but also because with longer contacts there is a tendency to do skin damage because of (a) penetration into and action on the skin of the depilatory solution and (b) evaporation of water from a paste depilatory to form a crust that abrades the tenderized skin on removal."

The further specifications of the patent are quite detailed and lengthy. Summarized, the alleged primary basic distinction between the depilatory covered by the patent and depilatories previously known, lies in the use of mercaptans instead of sulfides. Mercaptans may be broadly described as organic compounds having sulfide atoms. They are divided into two broad classes which are commonly spoken of as (1) simple mercaptans and (2) substituted mercaptans. A simple mercaptan is an organic substance stemming from an alcohol, in which the hydroxyl group has been replaced by one hydrogen sulphide group (HS). A substituted mercaptan is a simple mercaptan in which one or more of the hydrogen atoms have been replaced by some other atom or groups of atoms. Substituted mercaptans are again divisible into (1) those of the non-polar group which in solution do not ionize, that is, do not, when put in solution, break down into electrically charged particles, both positive and negative, known as ions; and (2) those of the polar group which do ionize in solution. This latter group includes both (a) those of the acid-acting kind, and (b) those of the basic-acting kind. It is clear from the Evans and McDonough specifications that all of the aforementioned types of substituted mercaptans are intended to be included.

Of the claims in suit No. 2 is the narrowest and No. 6 the broadest. We quote them both:

"2. A depilatory for use in removing human hair from the body, comprising a creamy preparation containing a substantial amount of a creamy non-depilating vehicle carrying thioglycollic acid, and an excess of an alkaline reacting material, said creamy preparation being adapted to be spread upon the human skin and around the hair, the amount of thioglycollic acid being sufficient to render the hair removable after contact therewith within a short time and without irritation to the skin, and the alkaline reacting material being present to an amount sufficient to give the preparation a pH value between about 10 and 12.5."

"6. A depilatory for use in removing human hair from the body, comprising a creamy preparation containing a substantial amount of a creamy non-depilating vehicle carrying a mercaptan, and an excess of an alkaline reacting material, said creamy preparation being adapted to be spread upon the human skin and around the hair, the amount of mercaptan being sufficient to render the hair removable after contact therewith within a short time and without irritation to the skin, and the alkaline reacting material being present in an amount sufficient to give the preparation a pH value between 9 and about 12.5."

Breaking down claim 2, the narrowest of the claims in suit, into its component parts, we find that it calls for the six following things: (1) A substantial amount of a creamy non-depilating vehicle; (2) carrying thioglycollic acid (which is also known as mercapto-acetic acid); (3) an excess of an alkaline reacting material; (4) this creamy preparation being adapted for spreading upon the human skin and around the hair; (5) the amount of thioglycollic acid being sufficient to render the hair removable after contact therewith within a short time and without irritation to the skin; and (6) the alkaline reacting material being present in an amount sufficient to give the preparation a pH value between about 10 and 12.5.

It will be seen that the compound called for by the claim embraces two depilating ingredients: (1) the mercaptan, namely,...