Toy Ideas, Inc. v. Montgomery Ward & Co.

• Decision Date: 06 May 1959
• Docket Number: Civ. No. 10428.
• Citation: 172 F. Supp. 878
• Parties: TOY IDEAS, INC., and American Character Doll Corp. v. MONTGOMERY WARD & CO., Inc.
• Court: U.S. District Court — District of Maryland

172 F. Supp. 878

TOY IDEAS, INC., and American Character Doll Corp. v. MONTGOMERY WARD & CO., Inc.

Civ. No. 10428.

United States District Court D. Maryland.

May 6, 1959.

Richard W. Emory and Venable, Baetjer & Howard, Baltimore, Md., and Thomas J. Byrne, Jr., and Keith, Bolger, Isner & Byrne, New York City, for plaintiffs.

Lawrence Perin and Semmes, Bowen & Semmes, Baltimore, Md., and Nichol M. Sandoe and Emery, Whittemore, Sandoe & Dix, New York City, for defendant.

THOMSEN, Chief Judge.

This case involves the same patent which was held valid and infringed in Brock v. Brown, D.C.D.Md., 138 F.Supp. 628, affirmed Brown v. Brock, 4 Cir., 240 F.2d 723, namely, U. S. Patent No. 2,675,644 for a "weeping doll", issued April 20, 1954, to Senior et al. Those opinions contain a discussion of the prior art and of the method of operation of the Senior device, which need not be repeated here. Judge Sobeloff summarized the invention as follows:

"The successful Senior doll embodied, for the first time in a doll a liquid container that is rigid, that can be put anywhere in the doll's body, head, or neck, and need not be adjacent to a rigid wall. The distinctive feature of the combination effected by Senior is that the water container itself need not be squeezed, reduced, or collapsed. It permits, instead, pressure on any part of the doll's body to force air into the upper part of the container, which, in turn, causes the liquid to be forced upward through conducting tubes to the eyes. This is new in dolls." 240 F.2d at page 726.

Plaintiffs are now vested with all right, title and interest in and to the Senior patent. Uneeda Doll Co., Inc., the manufacturer of the accused dolls sold by defendant, has assumed complete control of the defense of this action. The accused dolls will be referred to herein as defendant's old doll and defendant's new dolls No. 1 and No. 2.

Plaintiffs contend that defendant's old doll infringes Claim 1 and Claim 8 of the Senior patent, and that both types of defendant's new doll infringe Claim 8.¹ Defendant contends that its dolls do not respond literally to the terms of those claims, and that plaintiffs are barred by file wrapper estoppel from relying on the doctrine of equivalents. We will be concerned principally with (a) the eye tubing, (b) the air tube (overflow conduit), and (c) the means for closing the mouth opening.

Defendant concedes that "its dolls, both old and new, do contain certain features which are found in the patented doll. Thus, defendant's container, in each case, is rigid; it does have liquid conducting passages leading to the eyes; it does have a conduit leading to the mouth; and it does have an overflow passage through which air pressure may be communicated to the container, and through which overflow water may be discharged."

I. Infringement

(A) Eye tubing.

Claim 1. Old Doll Only. Claim 1 of the Senior Patent calls for "liquid conducting tubing connected to said tear openings and projecting downwards into said container". Defendant contends that the eye tubing in its old doll does not project downwards nor into the container.

The eye tubing in defendant's old doll follows a tortuous course. Whether it projects generally downwards from the tear opening to the container depends upon the position in which the doll is held. If the doll is held vertical, the general course is nearly level, but not predominantly downward. If the doll is cradled or held with its head tilted back, even slightly, the course would be downward. The important thing is that water will not flow by gravity from the container to the eye openings when the doll is held in any usual position. Even if the doll is held face down the narrowness of the tubing and its tortuous course prevents the tears from starting to flow until the doll's body is squeezed, which brings into operation the principle of the Senior invention, forcing the water from the container to the eye openings. So whether or not defendant's old doll responds literally to this term of Claim 1, its eye tubing is the equivalent of Senior's.

The eye tubing projects through the juncture of the bottom and front walls of the liquid container, and thus projects into such container, within the meaning of Claim 1 of the Senior patent.

Claim 8. All Dolls. Claim 8 does not specify that the eye tubing shall project "downwards", but calls for "two conduits leading from openings adjacent the eyes and extending into said container below the inner end of said overflow conduit". In all of defendant's dolls, old and new, the eye tubing projects through the juncture of the bottom and front walls of the liquid container, at a point well below the inner end of the overflow conduit, which in each of the dolls is at or near the top of the liquid container. The construction of the eye tubing in all of defendant's dolls responds literally to this requirement of Claim 8.²

(B) The Air Tube (Overflow Conduit).

Referring to the air tube (overflow conduit), Claim 1 of the Senior Patent calls for "an air tube projecting upwards into said container and terminating, in the interior of said container, above the lower termination of said liquid conducting tubing to the eyes, said air tube extending into the interior of the hollow body or body part external to the container". Claim 8 calls for "an overflow conduit connected with said container with the inner end thereof disposed to permit the partial filling of said container" and, as we have seen, "two conduits leading from openings adjacent the eyes and extending into said container below the inner end of said overflow conduit". Whether it be called an air tube or overflow conduit, this element has the dual function of serving as an air tube to admit air under pressure from the doll's body, and as an overflow conduit to permit the overflow of liquid from the container. In each of the three variations of the defendant's mechanism, there is an air tube (overflow conduit) which has the same dual function.

Claims 1 and 8 of the Senior patent differ in language, but they are the same in substance, because it is the relative position within the container of the termination of the air tube (overflow conduit) and the termination of the eye tubing that is significant. It is immaterial whether it be stated, as in Claim 1, that the air tube shall terminate in the container above the termination of the eye tubing, or, as in Claim 8, that the eye tubing shall terminate in the container below the inner end of the overflow conduit.

In defendant's old doll the lower part of the air tube (overflow conduit) is a rubber tube leading down into the doll's body. The upper part of the air tube (overflow conduit) is constructed of plastic material in the form of a chamber attached to the back of the liquid container (tear reservoir) and passages leading to the top of that container. In defendant's new doll No. 1 the air tube (overflow conduit) consists of two conduits or passages located in and near the top of the front wall of the liquid container (tear reservoir). In defendant's new doll No. 2 the air tube (overflow conduit) consists of one conduit or passage located in the center and near the top of the front wall of the liquid container (tear reservoir), to which (conduit or passage) is attached a rubber tube leading down into the doll's body. The air tube (overflow conduit) in defendant's old doll and in its new doll No. 2 are the same except for details of construction.

In all three constructions—defendant's old doll, defendant's new doll No. 1 and defendant's new doll No. 2—the air tube (overflow conduit) terminates in the interior of the liquid container (tear reservoir) above the termination of the eye tubing. It is this fact which permits defendant's mechanism to function. In each of the three constructions the inner end of the air tube (overflow conduit) is so disposed as to permit the partial filling of the container. With respect to this feature the old doll literally infringes Claim 1, and all of defendant's dolls literally infringe Claim 8.

(C) Means for Closing the Mouth Opening.

Both Claim 1 and Claim 8 of the Senior patent call for "means for closing the mouth opening". The means for closing the mouth opening in defendant's old doll is similar to that employed in the doll of Ideal Toy Corporation which was held to infringe Claims 1 and 8 of the Senior patent in Brock v. Brown, supra. Senior had suggested "a closure plug, e. g. in the form of a comforter in the mouth of the doll," but Claims 1 and 8 were not so limited. In the Ideal doll the means for closing the mouth opening was a ball valve located just inside the mouth in the conduit leading from the mouth to the liquid container (tear reservoir). The Fourth Circuit said: "The use of the stop valve construction is a minor variation dictated by commercial design considerations and does not avoid infringement." 240 F.2d at page 728. The ball valve in defendant's old doll is the same type of construction and has the same function as the ball valve in the Ideal doll. Instead of being located in the conduit from the mouth to the liquid container at a point just inside the mouth, defendant's ball valve is located at the container end of this conduit. But, as in the Senior patent and in the Ideal doll, defendant's ball valve serves the purpose of closing the mouth opening to prevent the escape of air under pressure, and therefore responds literally to the relevant term of Claim 1 and of Claim 8. If there is any doubt about the matter, it is removed by the doctrine of equivalents.

In defendant's new dolls No. 1 and No. 2 there is a constriction in the conduit leading from the mouth to the liquid container (tear reservoir). That constriction reduces the amount of air which escapes through the mouth opening when the doll is squeezed (so that the necessary amount of pressure is preserved), but does not prevent all the air from escaping. Senior teaches closing the...