Shelco, Inc. v. Dow Chemical Company
| Decision Date | 23 September 1970 |
| Docket Number | No. 67 C 1393,67 C 2190.,67 C 1393 |
| Parties | SHELCO, INC., et al., Plaintiff, v. The DOW CHEMICAL COMPANY et al., Defendants. SHELCO, INC., et al., Plaintiff, v. BOYLE-MIDWAY, INC., et al., Defendants. |
| Court | U.S. District Court — Northern District of Illinois |
Anderson, Luedeka, Fitch, Even & Tabin, Chicago, Ill., for plaintiff.
Merriam, Marshall, Shapiro & Klose, Chicago, Ill., for defendant Dow Chemical and others.
Molinare, Allegretti, Newitt & Witcoff, Chicago, Ill., for defendant Boyle-Midway and others.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
1. Plaintiff, Shelco, Inc., is a Massachusetts Corporaion having its principal place of business at Wellesley Hills, Massachusetts. Plaintiff, The Shelco Company, is a Delaware corporation having its principal place of business at Wellesley Hills, Massachusetts. The Shelco Company is a wholly-owned subsidiary of The Clorox Company, an Ohio corporation authorized to do business in Illinois. (Pl. Pretrial Brief 7)
2. On December 4, 1969, The Shelco Company acquired substantially all of the assets of Shelco, Inc., including the right, title, and interest in U.S. Patent No. 3,335,092 (). Shelco, Inc. was the owner of the patent in suit prior to December 4, 1969. (Pl. Pretrial Brief p. 7) Shelco, Inc. was the sole plaintiff until January 14, 1970, when, on plaintiff's motion, The Shelco Company was joined as a party plaintiff on condition that it be bound by all proceedings in the case with the same force and effect as they are applicable to Shelco, Inc. (9-10). The Shelco Company also agreed in open court to assume any liabilities of Shelco, Inc. arising from this case (18-19). Hereinafter, unless otherwise indicated, the plaintiffs will be referred to as "Shelco."
3. Shelco, Inc. became the owner of the patent in suit by way of an assignment from Winfield Brooks Company, Inc., the assignee of the patentee, Kenneth E. Perry (Pl. Pretrial Brief 7). There is a continuing relationship between Shelco, Winfield Brooks, and Mr. Perry, as follows: Mr. Perry is the President of and owns the controlling interest in Winfield Brooks, and he is a Director of and, through Winfield Brooks, owns approximately 35% of Shelco, Inc. (811, 1082, 1127-29). Winfield Brooks makes and Shelco sells the oven cleaner ("Jifoam") which is the commercial embodiment of the Example of the patent in suit. (1087, 1092, 1302; Stipulated Statement of Uncontested Facts p. 3).
4. Defendant, The Dow Chemical Company, (hereafter "Dow") is a Delaware corporation having a regular and established place of business in Chicago, Illinois. Defendant Harry G. Schierholz & Co. (hereafter "Schierholz"), is an Illinois corporation having a regular and established place of business in Chicago, Illinois.
5. On August 10, 1967, Shelco, Inc. filed a complaint (C.A. No. 67 C 1393) charging Dow and Schierholz with infringement of U.S. Patent 3,335,092, entitled "Oven Cleaner and Method of Using the Same." Dow is the manufacturer of an oven cleaner ("Dow All New Oven Cleaner") charged to infringe this patent and Schierholz is Dow's distributor for this oven cleaner in the Chicago area.
6. On December 21, 1967, Shelco, Inc. filed a complaint (C.A. No. 67 C 2190) charging defendants Boyle-Midway, Inc. (hereafter "Boyle-Midway") and American Home Products Corporation (hereafter "AHP") with infringement of the same patent by manufacture and sale of Boyle-Midway's "Easy-Off" oven cleaner).
7. All defendants have filed counterclaims seeking a declaration of invalidity of the patent and attorneys' fees and Dow has further counterclaimed for treble damages under the antitrust laws.
8. This Court has jurisdiction of the parties and subject matter. Venue in this District is proper.
9. By order of October 1, 1969, C.A. Nos. 67 C 1393 and 67 C 2190 were consolidated for trial on the sole issue of validity of the patent in suit.
10. On December 4, 1963, Kenneth E. Perry filed his original application for the patent in suit (DX 74). A first revised application was filed July 6, 1964 (DX 75) and a second revised application was filed on August 26, 1965 (DX 76). The August 26, 1965 application matured into U.S. Patent 3,335,092 on August 8, 1967 (DX 77).
11. The patent relates to a composition for cleaning ovens, grills, and similar surfaces and to a method for applying the composition. Dow and Schierholz are charged with infringement of composition and method claims, specifically Claims 1-6, 14, 16-19, 26, and 28-32. American Home Products and Boyle-Midway are charged with infringement of the same claims with the exception of 31 and 32. (Stipulated Statement of Uncontested Facts, p. 3; Pl. Pretrial Brief, p. 10).
12. The sole composition example of the patent in suit reads:
"EXAMPLE
Proportion
Ingredient: per cent
NaOH (in the form of a 50% solution
or 50° Baume) .......................... 1 3.0
Ammonium salt of the sulfate ester of an
alkylphenoxy polyoxy ethylene ethanol, .
sold under the trade name Alipal CO-436
by Antara Chem. Co. (surfactant) ......... 1.0
Sulfonate surfactant sold under the trade
name Benax 2A1 by Dow Chemical Co. ....... 0.1
Propylene glycol ............................ 20.0
Furfuryl alcohol ............................ 1.4
Tetrahydrofurfuryl alcohol .................. 0.7
Water (including water of NaOH solution) .... 73.8
1. Exclusive of water in solution."
Mr. Perry, the inventor, summarized his invention as being:
"the development of the best oven cleaner on the market that could be— that was basically a safe aqueous caustic oven cleaner applied to a hot oven through an aerosol can, gaining the benefits both of the ingredients and the application through an aerosol can, * * *" (1249)
13. The composition claims, broadly, call for a liquid oven cleaner for application as a spray to a hot oven, consisting essentially of water in an amount of over 50% by weight of the composition, and an alkali metal hydroxide in an amount of from 1-10% of the composition packaged in an aerosol container with a propellant (e. g. Claim 16). Both sodium hydroxide and potassium hydroxide are classified as alkali metal hydroxides (51, 1254-55).
14. Certain narrower claims specify that the alkali metal hydroxide be sodium hydroxide in an amount of 3% and further call for the presence of any amount of a humectant and any amount of a surfactant (e. g. Claim 28).
15. A humectant, in the context of this patent, is a substance used to retard evaporation of the composition. (DX 77, Col. 3, lines 41-44; 59; 3358; 3385-86). No specific amount of humectant is specified by any of the claims. The specification says the amount of humectant may be as little as 1% or may be omitted altogether. (DX 77, Col. 3, lines 53-56, 70-73). The humectant can be either a glycerol (a polyhydric alcohol known commercially as glycerine), a glycol (an alcohol having two hydroxyl groups), or any alcohol having more than two hydroxyl groups. (DX 77, Col. 3, lines 41-44; 60-65; 1623-24; DX 624; 3351-55).
16. The term "surfactant" is a shorthand term for a surface active agent (39). In the context of this patent, a surfactant is a wetting agent (40; 2373). The surfactant can be one (or more) selected from the groups classified as anionic (carrying a negative charge in solution), cationic (carrying a positive charge in solution), or nonionic (carrying a neutral charge in solution) (65-66; DX 77, Col. 3, lines 62-70). No specific amount of surfactant is called for in any of the claims, nor in the specification. (DX 77, Col. 4, lines 3-6).
17. The method claimed by the patent is to spray the composition on a hot oven, leave the composition on the hot oven for an interval of time, and then remove the composition (e. g. Claim 1). Some claims state that the oven should be at a temperature of at least 140° F. (e. g. Claim 6).
18. While both the composition and method claims refer to the composition as being sprayed from an "aerosol container" by a "propellant," the patent specification states that the "same results were achieved by spraying the cleaner * * * on a hot oven with a conventional pressure atomizer" (DX 77, Col. 3, lines 38-40).
19. In the patent in suit, the reduced caustic (3%) is said to have the advantage of making the cleaner safer, less corrosive, and easier to store (Col. 1, lines 48-52; Col. 2, lines 3-5). The spray is said to make the cleaner less messy to apply and easy to remove (Col. 1, lines 44-48; Col. 2, lines 14-17). The application to a hot oven is said to be more convenient in that the oven may be cleaned without waiting for it to cool (Col. 2, lines 63-67), and the elevated temperature speeds the reaction to the point where the cleaning can be done in 5 to 20 minutes, a fraction of the time required by paste cleaners (Col. 2, lines 50-56; 18-26). It is to be noted that while the patentee says that heat is essential to his invention (1318; 1325-26) Shelco maintains, under oath, that the composition is covered by the patent claims whether used on a hot or cold surface .
20. In written arguments and sworn affidavits submitted to the Patent Office during the pendency of Perry's third application, Perry made the following statements:
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