Petition — Herschensohn v. Hoffman

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In the Supreme Court of the. |

United States

October Term, 1978

No. =

38-1901

ARTHUR M. HERSCHENSOHN and

CORONA HAIR NET CORP.,

Petitioners,

v.

ROBERT M. HOFFMAN,

HOFFMAN BEAUTY AND BARBER SUPPLY

CO., and ADVANCE DESIGN

LABORATORIES, INC.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATE COURT OF APPEALS

FOR THE NINTH CIRCUIT

RONALD WILLIAM REAGIN

STEPHEN LOWELL KING

REAGIN & KING

10960 Wilshire Boulevard

Suite 1220

Los Angeles, California 90024

(213) 478-2506

Counsel for Petitioners

June 1979

Westside Law Publishers Santa Monica, California 213/451-1714

i

TOPICAL INDEX

Opinions Below 2

Jurisdiction 2

Questions Presented 2

Statutory Provision Involved 2

Statement Of The Case 3

Reasons For Granting The Writ 7

7

As To The First Question

1. The Decision Below Conflicts With The

Decisions Of Other Courts Of Appeal As

To The Proper Interpretation Of 35 U.S.C.

§ 103 7

A. The History Of The Conflict 7

B. Lower Court Rulings After Black

Rock and Sakriada 9

2. The Decision Below Raises Significant

And Recurring Problems Concerning The

Standard Of Patentability Of A Combina-

tion Of Known Elements 1]

As To The Second Question 15

The Decision Below Conflicts With The

Decisions Of This Court And The Other

Courts Of Appeal 15

Conclusion 18

Appendix

Opinion Of The Court Of Appeals A-1

Memorandum Of Decision And Order Of The Trial

Court | A-14

Findings Of Fact And Conclusions Of Law Of The

Trial Court A-21

United States Letters Patent 3,253,292-Herschen-

sohn A-33

ii

TABLE OF AUTHORITIES CITED

Cases Page

Anderson’s-Black Rock v. Pavement Co., 369 U.S.

57 (1969) 5, 6, 8,

S, 80, 31, 12, i3

Graham v. John Deere Co., 383 U.S. 1 (1966) 7,8,9,

10, 12, 14

Graver Tank & Manufacturing Co. v. Linde Air

Products Co., 339 U.S. 605 (1950) 15, 16

Hadco Products, Inc. v. Frank Dini Co., 401 F.2d

462 (3d Cir. 1968) 16

Herschensohn v. Hoffman, 592 F.2d 893 (9th Cir.

1979) 2, 6, 15

Hotchkiss v. Greenwood, 52 U.S. 248 (1851) 7

Independent Pneumatic Tool Co. v. Chicago Pneu-

matic Tool Co., 194 F.2d 945 (7th Cir. 1952) 16

In re Kollman, 595 F.2d 48 (CCPA 1979) 11

Marvin Glass & Associates v. Sears, Roebuck & Co.,

448 F.2d 60 (Sth Cir. 1971) 16

McCullough Tool Co. v. Well Surveys, Inc., 343

F.2d 381 (10th Cir. 1965) 16

Parker v. Motorola, Inc., 524 F.2d 518 (Sth Cir.

1975) 10

Phillips Industries, Inc. v. State Stove Manufacturing

Co., 552 F.2d 1137 (6th Cir. 1975) 10

Porter-Cable Machine Co. v. Black & Decker Manu-

facturing Co., 402 F.2d 517 (4th Cir. 1968) 16

Republic Industries, Inc. v. Schlage Lock Co., 592

F.2d 963 (7th Cir. 1979) 10, 12, 13, 14

Sakraida v. Ag Pro, Inc.,425 U.S. 273(1976) 6,9, 10,

12

Sakraida v. Ag Pro, Inc., 474 F.2d 167 (Sth Cir.

1973) 8

Tapco Products Co. v. Van Mark Products, 446 F.2d

420 (6th Cir. 1971) 18

Triangle v. National Electric, 149 F.2d 87 (3d Cir.

1945) 18

United States v. Adams, 383 U.S. 39 (1966) 8

United States Plywood Corp. v. General Plywood

Corp., 370 F.2d 500 (6th Cir. 1967) 16

Statutes

Act of February 21, 1793, ch. XI, § 1, 1 Stat. 318 7

28 U.S.C.

§ 1254(1) 2

§ 1338(a) 4

§ 1400(b) 4

35 U.S.C.

§ 101 7

§ 102 ae

§ 103 a y 2

8,9, 10, 11, 12, 13, 14

§ 271(a) 5

Rules

Federal Rules of Civil Procedure

Rule 52(a) 16

Miscellaneous

4 Deller’s Walker on Patents, Second Edition,

Section 238 18

Dula, “*Sakraida v. Ag Pro, Inc.: Combination Pat-

ents Now Require Synergistic Effects’ 15

Houston Law Review 157 (1977) 1]

iv

Edwards, “That Clumsy Word ‘Nonobviousness’ ”’

60 Journal of the Patent Office Society 3

Mintz, ““The Standard of Patentability in the United

States, Another Point of View,” 1977 Detroit

10

College Law Review 755 (1977) 11,12

Rich, “*Escaping the Tyranny of Words — Is Evolu-

tion in Legal Thinking Possible?”’ 60 Journal of

the Patent Office Society 271 (1978)

Schneider, ““Nonobviousness, The Supreme Court

and the Prospects for Stability,” 60 Journal of

the Patent Office Society 304 (1978)

Sears, “Combination Patents and 35 U.S.C. § 103”

1977 Detroit College Law Review 83 (1977)

11

11

12

In the Supreme Court of the

United States

October Term, 1978

No.

ARTHUR M. HERSCHENSOHN and

CORONA HAIR NET CORP.,

Petitioners,

v,

ROBERT M. HOFFMAN,

HOFFMAN BEAUTY AND BARBER SUPPLY

CO., and ADVANCE DESIGN

LABORATORIES, INC.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATE COURT OF APPEALS

FOR THE NINTH CIRCUIT

Petitioners, Arthur M. Herschensohn and Corona Hair

Net Corporation, respectfully pray that a writ of certiorari

issue to review the judgment and opinion entered on

March 26, 1979 by the United States Court of Appeals for

the Ninth Circuit in its case number 77-1718.

Le]

OPINIONS BELOW

The opinion of the Court of Appeals is reported at 593

F.2d 893 and is reprinted in the Appendix to this petition

at page A-1. The Memorandum of Decision and Order

of the District Court for the Central District of California

was not reported, and is reprinted in the Appendix to this

petition at page A-14. The findings of fact and conclu-

sions of law of the District Court for the Central District of

California were not reported, and are reprinted in the

Appendix to this petition at page A-21.

JURISDICTION

The judgment of the Court of Appeals was entered on

March 26, 1979. This petition for a writ of certiorari was

filed within ninety days of that date. The jurisdiction of this

Court is invoked under 28 U.S.C. § 1254(1).

QUESTIONS PRESENTED

1. Whether, in order for a combination of known

elements to be patentable, there is a requirement that the

combination have a synergistic effect as a substitute for or

in addition to the requirement of nonobviousness under 35

U.S.C. § 103.

2. Whether a Court of Appeal can substitute its own

finding of noninfringement for a finding of infringement by

a trial court without holding that the trial court was clearly

erroneous in its finding of infringement.

STATUTORY PROVISION INVOLVED

United States Code, Title 35:

§ 103. Conditions for patentability, nonobvi-

ous subject matter

A patent may not be obtained though the

invention is not identically disclosed or de-

scribed as set forth in section 102 of this title, if

the differences between the subject matter sought

to be patented and the prior art are such that the

subject matter as a whole would have been

obvious at the time the invention was made to a

person having ordinary skill in the art to which

said subject matter pertains. Patentability shall

not be negatived by the manner in which the

invention was made.

STATEMENT OF THE CASE

Petitioners are the patentee and the owner of United

States Letters Patent 3,253,292 (hereinafter called ‘‘the

Herschensohn patent”) which is a patent on a hair brush.

A copy of the Herschensohn patent is reprinted in the

Appendix to this petition at page A-33. Claim | of the

Herschensohn patent, which is representative of the

claims in the patent, recites as follows:

1. Ina hair brush of the character described,

a handle, a brush back comprising a flexible

spine element extending as a cantilever from said

handle, a first series of closely spaced fingers

extending laterally from one side and a second

series of closely spaced fingers extending laterally

from the opposite side of said spine element and

tufts of relatively stiff bristles extending down-

wardly from at least the fingers of said brush

back whereby when the brush is pulled through

hair through which a comb can pass, said spine

will bend so that the distal ends of the fingers on

the trailing side of the brush will approach each

other.

Petitioner Coronoa Hair Net Corp. manufactures and

sells a hair brush which includes a spine element extending

as acantilever from the handle of the brush. The brush also

includes a series of closely spaced finger elements extend-

ing laterally from both sides of the spine element. The

bristles of the brush are formed from a relatively heavy

monofilament nylon. A single strand of the monofilament

nylon is folded near its center and is stapled into a hole in

the fingers of the brush at the fold point. Both ends of the

nylon monofilament project out of the hole, thereby

forming a tuft of two bristles which extend downwardly

from the fingers and other portions of the brush back. The

handle, spine and fingers are mol/led as a single piece from

a plastic known as polypropylene, which is the material

specified in the Herschensohn patent as being the flexible

material from which the flexible spine of the patent can be

made.

The respondents are two corporations, one of which is a

wholesaler and the other of which is a retailer of barber and

beauty supplies, and an individual who owns 100% of the

stock of both corporations. Respondents observed the

success of petitioners’ brush on the marketplace and

undertook to have a mold copy of the brush manufactured

in Hong Kong for their distribution in this country. When

they did so, petitioners brought an action for patent

infringement in the United States District Court for the

Central District of California on June 13, 1975. Jurisdic-

tion was founded upon 28 U.S.C. § 1338 (a) and venue

existed under 28 U.S.C. § 1400 (b). The complaint

charged infringement of the Herschensohn patent by

reason of respondents’ sale of the hair brush which they

had copied from petitioners.

The action came for trial on November | 2, 1976 before

the Honorable Laughlin E. Waters, District Judge for the

United States District Court for the Central District of

California. On January 20, 1977, Judge Waters’ Memor-

andum of Decision and Order in this matter was entered,

in which he found the Herschensohn patent to be valid and

to have been infringed by the respondents. On February

28, 1977, findings of fact and conclusions of law and

judgment in this matter were entered.

In his findings of fact and conclusions of law, Judge

Waters made findings of fact concerning the scope and

content of the art at the time the invention was made, the

differences between the prior art and the claims of the

patent, and the level of skill of a man having ordinary skil

in the art at the time the invention was made,

concluded that the Herschensohn patent was not obvious

and satisfied the requirements of 35 U.S.C. § 103. Jadge

Waters also found as a finding of fact that the brushes in

question contain all of the elements of claims 1, 3, and 4 of

the Herschensohn patent and that accordingly the acts of

the respondents in selling the brushes weré acts of

infringement of the Herschensohn patent under 35 U.S.C.

§ 271 (a).

On March 26, 1979, the United States Court of

Appeals for the Ninth Circuit reversed/both of Judge

Waters’ holdings of validity and infringement. In its —

opinion, the Court of Appeals totally jignored the trial

court’s findings of fact concerning the scope and content of

the prior art, the difference between the prior art and the

claims at issue and the level of ordinary skill in the

pertinent art. Instead, the Court of Appeals concluded that

the Herschensohn patent was a combination of known

elements which had no synergistic result (apparently

defining that term as being “‘an effect greater than the sum

of the several effects taken separately”) and was thus

invalid under this Court’s rulings in Anderson's - Black

Rock v. Pavement Co., 369 U.S. 57( 1969) and Sakraida

v. Ag Pro, Inc., 425 U.S. 273 (1976).

In reversing the findings of infringement and substitut-

ing its own holding of noninfringement, the Court of

did not find that the trial court was clearly

erroneous in fin he brushes contained all of the

elements of the claims o erschensohn patent.

Instead, the Court of Appeals merely he

brush “*(1) does not have a flexible spine but a spine which

will not bend on use; (2) does not have tufts of bristles, but

one single monofilament folded to form two bristles;

(3) which, by the trial court's Memorandum of Decision

and Finding of Fact No. 22 has a purpose (‘to be pulled

through the hair with remarkable ease’), a purpose not

listed in the patent and entirely different from the listed

objects of the alleged invention.” Appendix page A-19,

593 F.2d 893, 898.

(The opinion in the Court of Appeals also decided a

second dispute between the same parties which had arisen

out of the trial court proceeding and which had been

combined with the case No. 77-1718 in the Court of

Appeals. This second case, designated No. 77-2638 inthe

Court of Appeals, related to an appeal from a holding by

the trial court that the respondents were in contempt of

court. No review by this Court of the holding of the Court

of Appeals in case No, 77-2638 is sought by petitioners. )

REASONS FOR GRANTING THE WRIT

As To The First Question

I, The Decision Below Conflicts With The Deci-

sion Of Other Courts Of Appeal As To The

Proper Interpretation Of 35 U.S.C. § 103.

A. The History of the Conflict

The Patent Act of 1793 required that a device had to be

both new and useful to be patentable. Act of February 21,

1793, ch. XI, § 1, 1 Stat. 318. Thereafter, a third

requirement was judicially created. A device had to be an

“invention” as well. Hotchkiss v. Greenwood, 52 U.S.

(11 How.) 248 (1851). In the ensuing 100 years, most of

the patent litigation in the courts struggled with this

concept of invention. Attempts to define the concept were

usually limited to the factual setting of a particular case or

patent, and the result was an inconsistent and unpredicta

ble body of law in which the ultimate decisions of

patentability were based upon the subjective view of the

reviewing court.

Congress revised the patent laws in 1952. The novelty

and utility requirements ere maintained and recodified.

35 U.S.C. §§ 101, 102. Congress also dealt for the first

time with “invention,” and enacted 35 U.S.C. § 103, set

forth above in its entirety. This section provides that even

though the invention meets the requirements of 35 U.S.C.

§ 102, a patent still may not be obtained if the differences

between the subject matter sought to be patented and the

prior art are such that the subject matter as a whole would

have been obvious at the time the invention was made to a

person having ordinary skill in the art.

Section 103 received its definitive interpretation by this

Court in Graham vy. John Deere Co., 383 U.S. 1 (1966).

There, this Court, in calling for “strict observance” of its

requirements, laid out the analysis to be followed in cases

involving the obviousness standard:

“While the ultimate question of patent validi-

ty is one of law [citations omitted], the § 103

condition, which is but one of three conditions,

each of which must be satisfied, lends itself to

several basic factual inquiries. Under § 103, the

scope and content of the prior art are to be

determined; differences between the prior art

and the claims at issue are to be ascertained; and

the level of ordinary skill in the pertinent art

resolved.”

Id. at 17.

At no point in Graham or in the decision in its

companion case, United States v. Adams, 383 U.S. 39

(1966), was synergism or any equivalent concept discussed,

nor was any separate or different standard for patentability

set forth for patents which involved a combination of

known elements, although all patents involved in those

cases were patents involving combinations of known

elements.

The controversy over the proper interpretation of § 103

springs from this Court’s subsequent decisions in Black

Rock and Sakraida, both of which involved patents which

were a combination of known elements and which this

Court held invalid. In each case, the opinion made passing

use of the word “synergistic.” In Black Rock, the extent of

the Court’s discussion of synergism was limited to two sen-

tences: ‘*A combination of elements may result in an effect

greater than the sum of the several effects taken together.

No such synergistic result is argued here.”’ 369 U.S. at 61.

In Sakraida, the Fifth Circuit had held the patent valid

and had stated that the invention did achieve a synergistic

result. 474 F.2d 167, 173 (Sth Cir. 1973). To this

conclusion, this Court responded: ‘‘We cannot agree that

the combination of these old elements. . . can properly

be characterized as synergistic. . . .”” 425 U.S. at 282.

B. Lower Court Rulings after Black Rock

and Sakraida

Since Black Rock and Sakraida, a conflict has devel-

oped among the Courts of Appeal for the various circuits

as to what is the controlling test of patentability in cases

involving combinations of known elements. Some courts

have taken the view that synergism, and not the criteria

articulated in Graham, is the controlling test in these

cases. Other courts have taken the view that the criteria

articulated in Graham is the controlling test for all patents,

whether combinations of known elements or otherwise.

Indeed, these courts have questioned whether such a thing

as synergism exists as the term is used in mechanical and

electrical patent cases.

It is difficult to imagine a case in which a requirement for

synergism is presented more starkly than in the present

proceedings. In its opinion below, the Court of Appeals

does not even pay lip service to the criteria of Graham,

which requires an analysis of the scope and content of the

prior art, the difference between the prior art and the

claims at issue and the level of ordinary skill in the art.

Instead, the court looked solely to synergism, found none

(although the respondents presented no evidence whatso-

ever as to the presence or absence of synergism) and

reversed the holding of the trial court, which had applied

the criteria of Graham and made the necessary factual

findings to determine nonobviousness.

The court below is not the only court which has so

interpreted § 103 in view of Black Rock and Sakraida.

The Sixth Circuit has stated that in a combination of

10

known elements, the “synergistic result” constitutes the

“key requirement” of patentability. Phillips Industires,

Inc. v. State Stove Manufacturing Co., 552 F.2d 1137,

1141 (6th Cir. 1975). The Fifth Circuit has similarly

stated “‘only where a combination of old elements pro-

duces a ‘synergistic result’, i.e., results ‘in an effect greater

than the sum of the several effects taken separately’ is the

device patentable.”’ Parker v. Motorola, Inc., 524 F.2d

518, 532 (Sth Cu. 1975).

In “That Clumsy Word ‘Nonobviousness’,” 60 Journal

of the Patent Office Society 3, Judge Edwards of the Court

of Appeals for the Sixth Circuit has explicitly stated that

the requirernent for synergism is a test of patentability in

addition to the nonobvious requirement of § 103. There

Judge Edwards stated:

“I also suggest that in dealing with combina-

tion claims, if no new element is added, the

elements combined must produce a result great-

er than its parts added together and one which

would not have been obvious to one skilled in the

art involved.”

60 Journal of the Patent Office Society at 13 (emphasis

supplied).

In contrast to these holdings, the Seventh Circuit

recently squarely considered this issue in Republic Indus-

tries, Inc. v. Schlage Lock Co., 592 F.2d 963 (7th Cir.

1979), and concluded that the concept of synergism plays

no proper part in the determination of nonobviousness

under § 103, but that instead patentability must be deter-

mined solely by the criteria of Graham. Id. at 967-972.

The Court of Customs and Patent Appeals has similarly

held that the test of patentability under § 103 is nonobvi-

ousness, not synergism, and that these two concepts are

1]

not necessarily the same. Jn re Kollman, 595 F.2d 48,55,

fn. 6 (C.C.P.A., 1979).

There is thus a clear conflict between the various

Circuits as to the proper test of patentability under § 103

of a combination of known elements. This conflict justifies

the grant of certiorari to review the judgment below.

2. The Decision Below Raises Significant And

Recurring Problems Concerning The Stand-

ard Of Patentability Of A Combination Of

Known Elements.

Probably no issue in patent law in recent years has been

the subject of more controversy or heated comment than

the question of whether synergism is a requirement for

patentability of a combination of known elements. Most of

the commentators have sided strongly against the syner-

gism test, viewing it with an alarm that frequently ap-

proaches ill-disguised panic. See, for example, Dula,

“Sakraida v. Ag Pro, Inc.: Combination Patents Now

Require Synergistic Effects,’ 15 Houston Law Review

157 (1977); Mintz, ‘‘The Standard of Patentability in the

United States — Another Point of View,” 1977 Detroit

College Law Review 755 (1977); Rich, ‘“‘Escaping the

Tyranny of Words — Is Evolution in Legal Thinking Pos-

sible?” 60 Journal of the Patent Office Society 27 (1978);

Schneider, ““ Nonobviousness, the Supreme Court, and the

Prospects for Stability,’ 60 Journal of the Patent Office

Society 304 (1978). These commentators frequently end

with conclusions such as: ““The Court’s insistence upon

clinging to the ill-advised phraseology of Black Rock, A & P

and Lincoln represents a serious threat to the continued

success of the patent system.”’ Dula, op. cit. p. 171, and

“The statute holds out the promise of enforceable rights

for inventions which exceed the knowledge and skill of the

12

art, as the American people would expect our laws to do,

while the Court has dashed the promise without acknowl-

edgment or explanation.” Mintz, op. cit., p. 793.

One of the few commentators to approve of the syner-

gism test and to assert that the synergism test is undoubt-

edly required by Black Rock and Sakraida is Sears,

“Combination Patents And 35 U.S.C. § 103,” 1977

Detroit College Law Review 83. However, to explain the

furor created in the profession by the synergism test, Sears

feels compelled to invent an elaborate conspiracy theory

involving a group which she terms the “patent coalition,”

which includes the Patent Office, the preponderance of the

organized patent bar, the Court of Customs and Patent

Appeals, the Commissioner of Patents, and the American

Patent Law Association. /d. at 83, fn. 3. In order to defend

her view of this Court’s rulings, Sears feels compelled to

launch virulent attacks upon Judge Conner of the Southern

District of New York, Chief Judge Markey and Judge Rich

of the C.C.P.A. and even the late Judge Learned Hand,

along with various panels in the Second Circuit and the

Ninth Circuit which have committed the grievous sin of

holding combination patents valid. Jd., at 103, 104, fn.

103.

Indeed, the Sears attack was so strident that the Detroit

College of Law Review published Mintz, op. cit., as a

direct response thereto.

In this arena of shrill attack and counterattack, the

Seventh Circuit’s opinion in Republic Industries is like

balm upon an open wound. Republic Industries calmly

and rationally analyzes Black Rock and Sakraida against

the backdrop of § 103 and Graham, and concludes “‘that

Sakraida and Black Rock, rather than establishing an

additional, different, or substituted test for nonobvious-

ness under section 103, reaffirmed the continuing vitality

13

of Graham.”’ 592 F.2d at 969.

Next, Republic Industries observes that virtually all

inventions are combinations of previously known ele-

ments and that there can be no such thing as synergism ina

mechanical arrangement, whether that term means that a

whole has a result greater than the sum of its constituent

parts or that some element in the combination functions

different than it functions outside of the combination. Jd.

at 969, 970.

The court then observes:

“To the extent that some combination of

elements appears synergistic, it is a function of

our imperfect knowledge of the properties of the

parts. If one could truly get more out of a

combination than was put into it, it would

amount to a creation of something out of nothing,

and would contravene the basic laws of nature as

we understand them. If these laws remain valid,

the appearance of synergism merely indicates

prior ignorance instead of creation. Ignorance or

lack of knowledge is, however, but part of the

question of obviousness. Thus, at best, appear-

ance of synergism is subsumed within the ques-

tion of nonobviousness under section 103 and

the Graham criteria”

_Id. at 970, fn. 21.

Republic Industries next observes that, under the

Synergism test, one is required to look solely at the

operation of the elements after they are combined, and that

such an analysis suffers from two defects. The first is that

this test must necessarily be premised on the assumption

that it is always obvious to take known elements and

combine them. The court found this bootstrap argument to

14

be unsound and not based in fact. The second and more

basic defect which the court found with synergism is that §

103 expressly provides that the nonobviousness of the

invention be at the time the invention was made, whereas

synergism centers exclusively on the performance of the

elements after combination and without regard to the

obviousness or unobviousness of making the combination.

Synergism thus does not comport with the Graham

mandate to apply § 103. Jd. at 971.

In concluding its analysis of synergism, Republic

Industries states:

‘However, because synergism has prevented

the development of a consistent, predictable

body of law under section 103, and because the

concept does not bear any logical ipso facto

relationship to obviousness, the term has little, if

any, utility. Therefore until Congress shall

otherwise legislate or the Supreme Court shall

otherwise specifically hold, this court will con-

tinue to apply the Graham analysis as the

exclusive means by which to measure nonob-

viousness under section 103.”

Id. at 972.

The issue of the presence or absence of an additional

synergism test for the patentability of a combination of

known elements is accordingly seen as probably the

leading question in patent law today. It is a question which

should be answered definitively by this Court at this time.

Of course, the petitioners urge this Court to affirm the

lucid holding of the Seventh Circuit in Republic Industries,

but in any event the issue should be clearly resolved. This

clearly justifies the grant of certiorari to review the

judgment below.

15

As To The Second Question

The Decision Below Conflicts With The Deci-

sions Of This Court And The Other Courts Of

Appeal.

The trial court found as a finding of fact that the hair

brushes sold by respondents contained all of the elements

of claims 1, 3 and 4 of the Herschensohn patent and thus

infringed the Herschensohn patent under the tests set by

this Court in Graver Tank & Manufacturing Co. v. Linde

Air Products Co., 339 U.S. 605, 607 (1950).

The Court of Appeals, without finding that the trial

court was clearly erroneous, reversed the finding of

infringement and substituted its own holding of nonin-

fringement. In so doing, the Court of Appeals was clearly

functioning as a trial court, and not as an appellate

tribunal. The Court of Appeals held that the accused brush

(1) does not have a flexible spine but a spine which will

not bend on use; (2) does not have tufts of bristles, but one

single monofilament folded to form two bristles; (3) which, .

by the trial court’s Memorandum of Decision and Finding

of Fact No. 22, had a purpose (‘to be pulled through the

hair with remarkable ease’), a purpose not listed in the

patent and entirely different from the listed objects of the

alleged invention.”’ Appendix, page A-19, 592 F.2d at

898.

But in Graver Tank this Court held that in determining

infringement:

**Like any other issue of fact, final determina-

tion: requires a balancing of credibility, pursua-

siveness and weight of evidence. It is to be

decided by the trial court and that court’s

decision, under general principles of appellate

16

review, should not be disturbed unless clearly

erroneous.’

339 U.S. at 609.

The “‘clearly erroneous” standard of review, required

by Graver Tank and by Rule 52(a), Federal Rules of Civil

Procedure, is followed by the other circuits in reviewing

determinations of patent infringement. Hadco Products,

Inc. v. Frank Dini Co., Inc., 401 F.2d 462 (3rd Cir.

1968); Porter-Cable Machine Co. v. Black & Decker

Manufacturing Co., 402 F.2d 517 (4th Cir. 1968);

Marvin Glass & Associates v. Sears Roebuck & Co., 448

F.2d 60 (Sth Cir. 1971); United States Plywood Corp. v.

General Plywood Corp., 370 F.2d 500 (6th Cir. 1967);

Independent Pneumatic Tool Co. v. Chicago Pneumatic

Tool Co., 194 F.2d 945 (7th Cir. 1952); and McCullough

Tool Co. v. Well Surveys, Inc., 343 F.2d 381 (10th Cir.

1965).

The Court of Appeals apparently did not base its

reversal on a finding of clear error, but instead based it

upon the trial court’s refusal to adopt certain findings of fact

which were proposed by the respondent after the trial court

had entered its Memorandum of Decision and Order.

Specifically, the Court of Appeals apparently based its

finding that the spine of the brush is not flexible on the trial

court’s refusal to make an independant finding that the

spine is flexible. The Court of Appeals said that the

District Court was “apparently convinced that the spine

was not flexible.” 593 F.2d at 897. Similarly, the Court of

Appeals said that the trial court refused a request trom

respondents for a specific finding that the single filament of

their brush “‘constitutes tufts of relatively stiff material,

apparently convinced to the contrary.” Jd. at 898.

The error of these conclusions by the Court of Appeals

17

is obvious from a reading of Judge Waters’ finding number

7 (see Appendix p. A-24) which states:

7. The subject brushes and the “VENT” brush

all contain all of the elements of claims 1, 3 and 4

of the ‘292 patent, which claims are reproduced

above. Polypropylene, which is utilized in both

the subject brushes and the “VENT” brush is a

flexible material as is defined in the patent.

Further, the change in the number of bristles in

each tuft is not significant, since a “tuft” of

bristles is still a tuft whether it contains a number

of bristles or simply one bristle folded over into

two bristles, such as is the case in both “VENT”

brushes and the subject brushes. The subject

brushes thus contain all the elements of claims 1,

3 and 4 of the ‘292 patent. .. .

Thus, the trial court had already entered an express

finding of fact that the respondents’ hair brush contained a

flexible spine, tufts and a// of the elements of the claims of

the Herschensohn patent, which of necessity included the

specific elements just discussed. Thus, far from being

convinced that respondents’ brush did not contain these

elements, the trial court merely refused to add redundant

findings of fact (which were included with numerous other

requested findings of fact by respondents).

The trial court and the Court of Appeals both correctly

noted that the hair brush in question turned ouf"to have

utility beyond that recognized by the inventor at the time

he filed his patent application. Indeed, petitioners have

always conceded that the primary utility of their hair brush

turned out to be a use which was not contemplated at all by

the inventor at the time he made his invention. But the trial

court correctly held that the patentee is entitled to rely

upon subsequent events which render his device more

18

valuable, and that an inventor is entitled to whatever

merits his invention has, even though they may be greater

than he supposed. A patent is not invalid because all of its

advantages or possibilities were not understood or known

to the inventor at the time of the invention. 4 Deller’s

Walker on Patents, Second Edition, Section 238; Tapco

Products Co. v. Van Mark Products, 446 F.2d 420, 429

(6th Cir. 1971), cert. denied 404 U.S. 986 (1971);

Triangle v. National Electric, 149 F.2d 87 (3rd Cir.

1945), cert. denied 326 U.S. 744 (1945).

Thus, far from the trial court’s finding of infringement

being “‘clearly erroneous” (which the Court of Appeals did

not even hoid it to be), it is clear that it was the holding of

the Court of Appeals that was based upon erroneous legal

or logical standards. Because this Court and all other

Courts of Appeal who have considered the issue have held

that a finding of infringement by a trial court can only be

reversed if it is clearly erroneous, these conflicts justify the

grant of certiorari to review the judgment below.

CONCLUSION

For these reasons, a writ of certiorari should issue to

review the judgment and opinion of the Ninth Circuit.

Respectfully submitted,

RONALD WILLIAM REAGIN

STEPHEN LOWELL KING

Reagin & King

10960 Wilshire Boulevard

Suite 1220

Los Angeles, California 90024

(213) 478-2506

June 1979 Counsel for Petitioners

NO Re

-

APPENDIX

United States Court of Appeals

For the Ninth Circuit

No. 77-1718

No. 77-2638

ARTHUR M. HERSCHENSOHN and

CORONA HAIR NET CORPORATION,

Plaintiffs-A ppellees,

v.

ROBERT M. HOFFMAN, individually;

ROBERT M. HOFFMAN, dba IMAGE PRODUCTS

CO. and ADVANCED DESIGN LABORATORIES;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.,

dba IMAGE PRODUCTS CO. AND ADVANCED

DESIGN LABORATORIES,

Defendants-Appellants.

APPEAL FROM THE UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

OPINION

Before: CARTER and WRIGHT, Circuit Judges, and

CRAIG, District Judge.!

CARTER, Circuit Judge:

This is an action for infringement of Patent No.

3,253,292 (hereafter No. 292), wherein the district court

entered a Judgment that the patent was valid and infringed

and awarded damages. This is Appeal No. 77-1718.

Thereafter, a Judgment was entered holding defendants

in contempt for offering to sell their devices during the

'Hon. Walter E. Craig, Chief U.S. District Judge, District of

Arizona, sitting by designation.

A-1

period between the receipt of a Memorandum of Decision

and the entry of Judgment for the plaintiffs. The appeal in

this proceeding is No. 77-2638. We reverse both Judg-

ments.

FACTS

On May 15, 1964, Herschensohn, one of the plaintiffs

herein, filed an application for letters-patent. The patent,

No. 292, was issued on March 31, 1966.

Prior to 1971, plaintiffs sold a brush made from a

flexible copolmyer plastic with tufts of bristles, including 7

or 8 slender strands folded to form 14 to 16 bristles.

Exhibit 3, in evidence, is an example of this brush. In

1971, the design was changed by the plaintiffs so that each

tuft was formed from a single heavier monofilament folded

to form two bristles, one longer than the other.

In 1974, the handle, spine and fingers were made from a

plastic material which was less flexible than the original

copolmyer plastic material. Exhibit 2, in evidence, is an

example of this second brush.

Defendants admittedly copied the latter brush, Exhibit

2, by having an organization in Hong Kong make the

brushes and import them to the United States. They were

literally ““Chinese copies” of plaintiffs’ second brush,

Exhibit 2. Exhibit 5, in evidence, is an example of the

defendants’ alleged offending brush.

Patent No. 292 has four claims, of which #1, #3 and

#4 are alleged to be infringed. Claim #1 is the only

independent claim. Claims #3 and #4 are merely minor

variations of Claim #1. ,

Claim #1 reads as follows:

1. In a hair brush of the character described, a

A-2

handle, a brush back comprising a flexible spine

element extending as a cantilever from said

handle, a first series of closely spaced fingers

extending laterally from one side and a second

series of closely spaced fingers extending lateral-

ly from the opposite side of said spine element

and tufts of relatively stiff bristles extending

downwardly from at least the fingers of said

brush back whereby when the brush is pulled

through hair through which a comb can pass,

said spine will bend so that the distal ends of the

fingers on the trailing side of the brush will

approach each other.

The appeals raise three questions:

1. The validity of the patent claims, #1, #3 and #4.

2. Whether the patent claims were infringed.

3. Was there a valid injunction in the Memorandum

of Decision which can sustain the Contempt Judgment.

VALIDITY

The patent sets forth a combination of old elements, four

in number: a handle, a flexible spine, laterally extended

fingers, and tufts of relatively stiff bristles. All of these

elements are old in the art and no discussion of this art is

necessary. The patent, therefore, is a combination patent

and is controlled by the Supreme Court decisions on such

patents. One of the latest such cases is Sakraida v. Ag Pro,

Inc., 425 U.S. 273 (1976). There a unanimous Court

reviewed the earlier cases and reversed the Fifth Circuit

decision which had held the patent valid.

Congress in 1952 enacted 35 U.S.C. § 103, “as a

codification of judicial precedents . . . with congres-

sional directions that inquiries into the obviousness of the

A-3

subject matter sought to be patented are a prerequisite to

dmonition in Great A. &

patentability.” Graham v. John Deere Co., 383 U.S. 1,17 property followed our admonition in Grea

P. Tea Co. v. Supermarket Corp., supra, at

— 152: ‘Courts should scrutinize combination

Section 103 provides: patent claims with a care proportioned to the

‘“‘A patent may not be obtained though the difficulty and improbability of finding invention

in an assembly of oldelements. . . . A patent

invention is not identically disclosed or described

as set forth in section 102 of this title, if the

differences between the subject matter sought to

be patented and the prior art are such that the

subject matter as a whole would have been

obvious at the time the invention was made to a

person having ordinary skill in the art to which

said subject matter pertains. Patentability shall

not be negatived by the manner in which the

invention was made.”

In Sakraida, supra, the Court said (at 280):

The ultimate test of patent validity is one of

law, Great A. & P. Tea Co. v. Supermarket

Corr., 340 U.S. 147, 155 (1950), but resolution

of the obviousness issue necessarily entails

several basic factual inquiries, Graham v. John

Deere Co., supra, at 17.

‘Under § 103, the scope and content of

the prior art to be determined; differences

between the prior art and the claims at issue

are to be ascertained; and the level of

ordinary skill in the pertinent art resolved.’

Ibid.”

“Indeed, respondent admitted at trial ‘that the

patent is made up of a combination of old

elements’ and ‘that all elements are individually

old ... .’ Accordingly, the District Court

A-4

for a combination which only unites old elements

with no change in their respective functions

. . . Obviously withdraws what already is known

into the field of its monopoly and diminishes the

resources available to skillful men... . ”

Sakraida, supra, pp. 280-1.

““We cannot agree [with the appeals court

below] that the combination of these old ele-

ments . . . can properly be characterized as

synergistic, that is, ‘result[ing] in an effect great-

er than the sum of the several effects taken

separately.’ Anderson’s-Black Rock v. Pave-

ment Co., 396 U.S. 57, 61 (1969). Rather, this

patent simply arranges old elements with each

performing the same function it had been known

to perform, although perhaps producing a more

striking result than in previous combinations.

Such combinations are not patentable under

standards appropriate for a combination patent.

Great A. & P. Tea Co. v. Supermarket Corp.,

supra; Anderson’s-Black Rock v. Pavement

Co., supra. Under those authorities this assem-

bly of old elements. . . falls under the head of

‘the work of the skiilful mechanic, not that of the

inventor.” Hotchkiss v. Greenwood, 11 How.., at

es Cars

“. . . . [DJesirable benefits ‘without inven-

tion will not make patentability.’ Great A. & P.

A-5

Tea Co. v. Supermarket Corp., 340 U.S. at 153

... . Sakraida, supra, pp. 282-3.

Counsel for the plaintiffs apparently never understood

fully the requirement that a patent based on a combination

of elements old in the art must produce a new and unusual

result. Counsel stated: “‘These defendants have asserted

that these cases require a patent to have a synergistic result

. . . . Intheir trial brief they said they had to make 2 plus

2 equal 5, which was the expression they used. This

appears to be an assertion of one of two things:. either 1, an

assertion that the Supreme Court has overruled the patent

system, or, 2, a requirement that you have to violate or at

least disprove a known law of nature before you can have a

valid patent. Because obviously 2 plus 2 never equals 5

[sic] . . . .” Plaintiffs failed to identify a synergistic

result.

The trial court, in Finding of Fact #22, stated:

“22. The brush of the ‘292 patent does

produce an unusual or surprising result which

would not be expected by the man having

ordinary skill in the art. The flexibility of the

brush’s spine element, when coupled with the

plurality of bristle carrying fingers extending

laterally on each side of the flexible spine, with

the vents between the finger members, allows the

brush to be pulled through the hair with remark-

able ease. This is an unusual or surprising

consequence from the unification of the elements

concerned. It is an unusual or suprising result. It

is not merely the sum of the results of the

individual elements of the brush but is instead an

effect greater than the sum of the effects of the

several elements of the brush taken separately.”

The trial court’s Memorandum of Decision was similar.

A-6

We conclude that Ciaims #1, #3 and #4 of the patent

are invalid. Claim #1 recited that the bending of the distal

ends of the fingers on the trailing side of the brush ““would

approach each other.” The patent lists various purposes:

(1) Mechanical action to penetrate thick tresses, dig

into the scalp and cause drag on the hair and scalp to

accomplish the effects of massage.

(2) To agitate the root of the hair and its associated

muscle tissue and bring additional sebum to the hair and

increase the luster of the hair.

(3) To automatically pinch and tug the hair and thus

exercise the hair roots and their environments.

(4) To provide a hair brush which is easily cleanable,

simple in construction, reasonable in cost, and efficient in

carrying out the purposes for which it was designed.

(5) Finally, since the tips of the fingers in the patent

all come towards each other, causing the bristle tufts to

pinch the hair between them, the bristles are generally of

stiff material. The attendant movement of the brush will

cause the pinched hair to be tugged, dragged on and pulled.

None of these listed “‘purposes”’ of the patent produce a

“*new or different function” (Andersons’s-Black Rock v.

Pavement Co., 396 U.S. 57 at 60 (1969) ) from that

produced by the old elements in the combination.

The result claimed by plaintiffs as synergistic, “pulling

the brush through the hair with remarkable ease” (Mem-

orandum of Decision) is contrary to the teachings of the

patent. The use of two bristles in each tuft, as shown in

Exhibit 2, may assist in allowing the brush to be pulled

through the hair with ease. The use of such a bristle to

accomplish ease of pulling through the hair would be

obvious.

A-7

Certainly, the two results referred to by the court in its

Memorandum of Decision — (1) allowing the brush to be

pulled through the hair with remarkable ease, and(2) the

vents allowing the hair to be easily blown dry — are not

new or unusual results.

It is obvious from the above that the patent is not valid,

having no new, unusual or synergistic result? and having

no beneficial use other than uses already old in the art of

brushes and combs. We also hold Claims #1, #3 and #4

of the patent are invalid for obviousness.

INFRINGEMENT

We have examined closely Exhibits 2, 3 and 5. Exhibit

5 is the offending device and a copy of Exhibit 2. Exhibit 3

was the brush made and sold by plaintiffs prior to 1971.

The parties stipulated that Exhibit 3 was within the scope

and claims of Patent No. 292.

Claim #1 of the patent was limited to a brush “‘compris-

ing a flexible spine element extending from the handle.”’ It

provided: “‘Said spine will bend so that the distal ends of

the fingers on the trailing side of the brush will approach

each other.” The claim also was limited to “tufts of stiff

bristles.”

None of these elements are found in the accused

structure, Exhibit 5. Examination shows the spine will not

2 Late cases in the Ninth Circuit are in accord with our holding. A

combination patent (ie., an accumulation of old devices) is valid

“only when the whole in some way exceeds the sum of its parts

... . Astro Music, Inc. v. Eastham, 564 F.2d 1236, 1238 (9 Cir.

1977).

Austin v. Marco Dental Products, Inc., 560 F.2d 966 (9 Cir. 1977)

also involved a combination patent and is in accord with our holding

herein.

A-8

bend so as to be flexible enough to bend while the brush is

run through the hair. The brush will not function as

described in the patent, 7.e., the fingers will not “come

towards each other, causing the bristle tufts to pinch the

hair betweenthem. . .’’ (Patent, p. 1, column 2, lines 56-

63), nor, as described in Claim #1, will “said spine

. . . bend so that the distal ends of the fingers on the

trailing side of the brush . . . approach each other.”

(Patent, p. 2, column 2, lines 4-6.)

The plaintiff-inventor testified that the term ‘“‘flexible”’

requires sufficient bending to bring the bristles together to

grab or clamp the hair between tufts instead of merely

floating through the hair. Examination shows that Exhibit

2 or Exhibit 5 cannot cause the above actions.

The trial court, although requested to find as a fact that

the spine of the accused device, Exhibit 5, was flexible

(R.T. 213), refused to do so, apparently convinced that the

spine was not flexible. Likewise, the court, although

requested to find that the mode of operation of Exhibit 5

was as set forth in the patent at Column 2, lines 56-63,

refused to do so, apparently convinced that it did not.

Plaintiffs’ expert, Mr. Walsh, in describing the opera-

tion of plaintiffs’ brush, Exhibit 2 (copied by defendants as

Exhibit 5) testified that Exhibit 2 was not flexible in the

sense used in the patent and that the brush creates no drag

or pull.

Also missing from the accused brush, Exhibit 5, are

“tufts of relatively stiff bristles.” The court refused a

request for a finding that the single filament of Exhibit 5

constitutes tufts of relatively stiff material, apparently

convinced to the contrary. The substitutions of one

filament making two bristles insured the floating move-

ment of the brush, but the elimination of any pulling or

grabbing of the hair.

A-9

In our case we have an accused device, the brush,

Exhibit 5 (a copy of the plaintiffs’ brush, Exhibit 2), which

does not have the structure or the function described in the

patent. It (1) does not have a flexible spine but a spine

which will not bend on use; (2) does not have tufts of

bristles, but one single monofilament foided to form two

bristles; (3) which, by the trial court’s Memorandum of

Decision and Finding of Fact #22, has a purpose (“‘to be

pulled through the hair with remarkable ease”’), a purpose

not listed in the patent and entirely different from the listed

objects of the alleged invention; (4) which has no new or

unusual or synergistic result; and (5) in toto, a device or

brush having a different structure and a different mode of

operation and effect than that described in the patent.

It is clear that Exhibit 2, the plaintiffs’ device which

defendants admittedly copied, and Exhibit 3, the device

made by plaintiffs prior to 1971, are different brushes in

structure and operation. We have held that the patent

claims, #1, #3 and #4, are not valid. But even if valid, it

was not Exhibit 3 which was copied but Exhibit 2. Exhibit

2 does not infringe the patent.

THE CONTEMPT JUDGMENT

The trial court’s Memorandum of Decision was entered

on January 20, 1977. On February 28, 1977, the final

Judgment was entered. The plaintiffs moved to hold

defendants in contempt of court for allegedly violating an

injunction against infringement which plaintiffs claim was

included within the Memorandum of Decision. After a

hearing, Findings of Fact, Conclusions of Law, and a

Judgment of Contempt were entered on April 4, 1977,

against defendants. Defendants have appealed the Con-

tempt Judgment in Appeal No. 77-2638.

A-10

ce

The general rule is that an unpatented object may be

copied and sold. Sears, Roebuck & Co. v. Stiffel Com-

pany, 376 U.S. 225 (1964) and Compco. Corp. v. Day-

Brite Lighting, Inc., 376 U.S. 234 (1964).

Since we have held the patent invalid, the sole question

presented on Appeal No. 77-2638 is whether, after

January 20, 1977, there was in effect a valid injunction

against infringement by defendants of the plaintiffs’ al-

leged patent.

The Memorandum of Decision ended with an order:

“It is therefore Ordered that judgment be

entered for plaintiffs in the amount specified

above and that the defendants be permanently

enjoined from further infringing plaintiffs’ pat-

ent. Counsel for plaintiffs is directed to prepare

proposed findings of fact, conclusions of law

and judgment pursuant to local Rule 7. (Judg-

ment shall be set forth as a separate document as

required by Rule 58, F.R. Civ. P.)

Dated January 17, 1977

Laughlin E. Waters

United States District Judge”’

(Emphasis added)

There are various reasons which demonstrate plaintiffs

are in error in their contention that the Memorandum and

Order constitute an injunction.

(1) The Memorandum and Order speak of the future.

It does not state that defendants are enjoined, but, instead,

““be’’ permanently enjoined. We read the language as a

direction — the defendants [wi//] be enjoined, after the

proposed Findings and Judgment are prepared by plain-

A-11

tiffs’ attorney and signed by the court. The Final Judg-

ment, dated February 28, 1977, stated that the defendants

and their agents “are forever enjoined and restrained.”

(2) Rule 58, F.R. Civ. P. requires —

‘‘Every judgment shall be set forth on a separate

judgment. A judgment is effective only when so

set forth, and when entered as provided in Rule

79(a).”

A recent Supreme Court case, Bankers Trust Co. v.

Mallis, 435 U.S. 351 (1978), decided after the Contempt

Judgment, may have pulled some of the teeth in Rule 58,

supra, by providing that in certain cases the rule may be

waived by the parties. Regardless of the effect or retroac-

tivity, if any, of that case, Rule 58 must be viewed as

having a bearing on the intent of the court and the parties as

to whether an injunction was intended. The Memorandum

directed counsel for the plaintiffs to prepare findings of fact

and conclusions of law and judgment pursuant to local

Rule 7 and Rule 58, F.R. Civ. P. Local Rule 7 of the

Central District of California requires findings of fact and

conclusions of law and implements Rule 58, F.R. Civ. P.

(3) Plaintiffs argue that there was an injunction

pendente lite in the Order. However, the Order speaks of

preparation of a permanent injunction.

(4) Rule 65(c), F.R. Civ. P. requires security or a

bond, unless the court directs otherwise, and findings of

fact to support the injunction.

(5) Rule 65(d), F.R. Civ. P. requires that an injunc-

tion **. . . shall describe in reasonable detail, and not by

reference to the complaint or other documents, the act or

acts to be restrained ....” The Memorandum of

A-12

Decision signed by the court did not comply with Rule

65(c) or (d).

(6) Plaintiffs cite no authority that the Memorandum

of Decision can be an injunction, and defendants could

find none.

It is true that an injunction must be obeyed while

objections and questions are presented on appeal. But

plaintiffs assume that an injunction was issued. We find

that no injunction was issued, but only direction for the

entry of a permanent injunction against infringement. The

rule of law above does not apply.

The judgments are reversed and the case remanded to

the district court for entry of a judgment on non-validity

and non-infringement.

A-13

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

CV No. 75-2009-LEW

ARTHUR M. HERSCHENSOHN and

CORONA HAIR NET CORPORATION,

Plaintiffs,

v,

ROBERT M. HOFFMAN, individually;

ROBERT M. HOFFMAN, dba IMAGE PRODUCTS

CO. and ADVANCED DESIGN LABORATORIES;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.,

dba IMAGE PRODUCTS CO. and

ADVANCED DESIGN LABORATORIES,

Defendants.

MEMORANDUM OF DECISION AND ORDER

Plaintiff Corona Hair Net Corporation, doing business

as the Bobby Company, is the assignee of a patent issued

to plaintiff Arthur M. Herschensohn on May 31, 1966, as

U.S. Patent 3,253,292 (the “292” patent). Plaintiffs

allege that their patent, entitled ‘‘Hair Brushes,” has been

infringed by defendants Hoffman Beauty and Barber

Supply Company, Advance Design Laboratories Inc.,

and Robert M. Hoffman, the latter being President and

sole stockholder of the two defendant corporations. By

way of counterclaim, defendants assert that the patent is

invalid. This court has jurisdiction over these claims pur-

suant to 28 U.S.C. § 1338 and 35 U.S.C. §§ 28 and 29.

A-14

The “292” patent describes a hair brush which inciudes

a handle, a flexible spine extending from the handle, a first

series of fingers extending laterally from one side of the

spine, a second series of fingers extending laterally from

the opposite side of the spine, and tufts of stiff bristles

extending downwardly from the fingers. The object of this

invention is “to provide novel and improved hair brushes

affording mechanical action to penetrate thick tresses, dig

to the scalp and cause drag on the hair and scalp to

accomplish the effects of massage and which brushes by

their automatic manipulations give users a new hair-

brushing sensation.” See attached Exhibit A. The claims

which are alleged to have been infringed are claims |, 3,

and 4. These claims assert the following:

Claim 1: “In a hair brush of the character

described, a handle, a brush back comprising a

flexible spine element extending as a cantilever

from said handle, a first series of closely spaced

fingers extending laterally from one side and a

second series of closely spaced fingers extending

laterally from the opposite side of said spine

element and tufts of relatively stiff bristles

extending downwardly from at least the fingers

of said brush back whereby when the brush is

pulled through hair through which a comb can

pass, said spine will bend so that the distal ends

of the fingers on the trailing side of the brush will

approach each other.”

Claim 3: ‘A hair brush as defined in Claim,

1, wherein the handle is elongated and said spine

element extends from an end of said handle.”

Claim 4: “A hair brush as defined in claim |,

wherein the fingers of the first series and those of

the second series extend from opposite regions of

the spine element respectively.”

A-15

Prior to 1971, The Bobby Company made and sold a

hair brush within the scope and claims of the “292”

patent. The handle, spine, and fingers were made from a

flexible copolymer plastic and each tuft of bristles includ-

ed seven or eight slender strands folded to form fourteen or

sixteen bristles. In 1971, the design of the brush was

changed such that each tuft was formed from a single,

heaver monofiliment folded to form two bristles, one

longer than the other. In approximately 1974, the original

copolymer plastic was no longer available to The Bobby

Company, and thereafter the handle, spine, and fingers

were made from a plastic material that was somewhat less

flexible than the original copolymer plastic material. This

hair brush is the principal product of The Bobby Company

and is marketed under the designation “Vent” brush.

Defendant Advanced Design Laboratories, Inc. im-

ports and markets a hair brush which it has sold at different

times under the designation “Image Movement”’ brush

and ‘‘ Image Air Flow” brush (hereinafter referred to as the

“subject brushes’’). The subject brushes are mold copies

and thus identical to The Bobby Company’s “Vent”

brush. Advanced Design Laboratories, Inc. arranged with

a manufacturer in Hong Kong to have The Bobby

Company’s “‘Vent” brush duplicated, and imports the

copies of this brush into the United States. Advanced

Design Laboratories, Inc. distributes the subject brushes

through many distributors and dealers, including defend-

ant Hoffman Beauty and Barber Supply Company.

This court’s analysis begins with the statutory presump-

tion that a patent issued by the United States Patent Office

is valid. Section 282 of Title 35, United States Code,

provides in pertinent part:

‘A patent shall be presumed valid. The bur-

A-16

den of establishing invalidity of a patent shall

rest On a party asserting it.”

See also: Park-In Theatres v. Rogers, 130 F.2d 745 (9th

Cir. 1942) and Patterson-Ballagh v. Moss, 201 F.2d 403

(9th Cir. 1953). This presumption of validity is weakened

when it is shown that pertinent prior art was not before the

patent examinees. Norwood v. Ehrenreich Photo-Optical

Industries, Inc., 529 F.2d 3, 9 (9th Cir. 1975), Hewlett-

Packard Company v. Tel-Design, Inc., 460 F.2d 625,

628 (9th Cir. 1972). In the instant case, the record

discloses that the patent examiners did consider four prior

patents.! Defendants have cited four additional prior

patents in support of their contention that plaintiff's brush

does not represent a new invention.2 This court has

carefully examined this prior art and is unable to conclude

that it suggested plaintiffs’ invention to a man of ordinary

skill in the art. This court finds that plaintiffs’ brush, while

incorporating many existing features of brushes, is signifi-

cantly different from that which preceded it, and therefore

concludes that the patent is not invalid for lack of invention

within the scope of 35 U.S.C. § 103.

'The four prior patents considered were:

(1) U.S. Patent No. 831,493 (Wilcox patent);

(2) U.S. Patent No. 1,860,924 (Cooke patent);

(3) U.S. Patent No. 2,185,050 (Chiraello patent);

(4) U.S. Patent No. 2,796,620 (Bressler patent).

?The four aaaitional patents cited are:

(1) U.S. Patent No. 2,003,243 (Campbell patent);

(2) U.S. Patent No. 2,196,812 (Kreutzig patent);

(3) U.S. Patent No. 2,661,007 (Bauer patent);

(4) Italian Patent No. 474,383.

3Section 103, added to the patent laws in 1952, provides:

“A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102 of this

A-17

In further support of this conclusion this court notes that

plaintiffs’ brush has enjoyed a great deal of commercial

success. While such consideration does not overcome a

lack of invention, it does strengthen further the presump-

tion of patent validity. Great Atlantic and Pacific Tea

Company v. Supermarket Equipment Corp., 340 U.S.

147, 153 (1950). This court also notes that plaintiff was

forced to bring three infringement actions prior to the

instant action and that all three actions ended in settle-

ment. While these settlements are far from conclusive

since they could have been settled for a variety of reasons,

they are at least some evidence of the fact that plaintiffs’

brush represented something new in the field and worthy of

‘imitation.

Since the “292” patent is in large part a combination

patent, this court must apply the principles of patentability

with “special strictness.”’ Jeddeloh Brothers Sweed Mills,

Inc. v. Coe Manufacturing Co., 375 F.2d 85, 88 (9th Cir.

1967). In examining combination patents, the Supreme

Court has indicated that a device is not an invention unless

there are ‘unusual or surprising consequences from the

unification of the elements . . . concerned.” Great Al-

lantic and Pacific Tea Company v. Supermarket Equip-

meni Corp., supra, at 152. The Ninth Circuit has

formulated the test in a similar fashion, stating that the

combination of old elements must produce an “unusual or

surprising result.”” Hewlett-Packard Company v. Tel-

Design, Inc., supra, at 629.

title, if the differences between the subject matter sought to be

patented and the prior art are such that the subject matter as a whole

would have been obvious at the time the invention was made to a

person having ordinary skill in the art to which said subject matter

pertains. Patentability shall not be negatived by the manner in which

the invention was made.”

A-18

Turning to the “*292” patent, this court finds that the

patent does produce such an unusual or surprising result.

The flexibility of the brush’s spine element when coupled

with the vents allows the brush to be pulled through the

hair with remarkable ease. These vents further allow the

hair to be more easily blown dry, and while the use of blow

dryers was not widespread at the time the patent was

issued, plaintiff nonetheless can rely upon subsequent

events which render his device more valuable. See 4

Deller’s Walker on Patents, 2d Ed., § 238; Tapco

Products Company v. Van Mark Products Corporation,

446 F.2d 420, 429 (6th Cir. 1971). All in all, while

plaintiffs’ brush at first glance apears to be a rather simple

device, it is in fact a truly novel device which possesses

great value.* Accordingly, this court finds that plaintiffs’

patent is valid since it meets the tests of validity, namely,

utility, novelty, and nonobviousness.

Finally, this court concludes that the changes made by

plaintiffs in their brush are not substantial enough to place

the brush outside the scope of the original patent. The

change in the plastic material utilized does not render the

brush significantly less flexible. Further, the change in the

number of bristles in each tuft is also insignificant since a

“tuft” of bristles is still a tuft whether it contains a number

of bristles or simply one bristle folded over into two

bristles. Since the brush manufactured and sold by

defendants is virtually an exact copy of the patented brush

sold by plaintiffs, this court concludes. that plaintiffs’

patent has been infringed by defendants.

In conclusion, this court finds that plaintiffs’ patent is

valid and has been infringed by defendants. Accordingly,

*During the trial, plaintiffs presented expert testimony in support of

this conclusion. Defendants failed to offer any testimony in rebuttal.

A-19

this court finds that plaintiffs are entitled to damages in the

amount of $25,000.00, plus interest, said figure represent-

ing the profits realized by defendants as a result of their

infringing activities. The court notes that this figure is

derived from the Pre-Trial conference Order filed in this

case. As such, there was no evidence presented at the trial

to contest the accuracy of this figure.

IT IS, THEREFORE, ORDERED that judgment be

entered for plaintiffs in the amount specified above, and

that defendants be permanently enjoined from further

infringing plaintiffs’ patent. Counsel for plaintiffs is direct-

ed to prepare proposed findings of fact, conclusions of law,

and judgment pursuant to Local Rule 7. (Judgment shall

be set forth as a separate document as required by Rule 58,

F.R.Civ.P.)

DATED: January 17, 1977.

LAUGHLIN E. WATERS

United States District Judge

A-20

United States District Court

Central District of California

Civil Action No.

CV 75-2009-LEW

ARTHUR M. HERSCHENSOHN and

CORONA HAIR NET CORPORATION,

Plaintiffs,

v.

ROBERT M. HOFFMAN, individually;

ROBERT M. HOFFMAN, dba IMAGE PRODUCTS CO.

and ADVANCED DESIGN LABORATORIES;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.;

HOFFMAN BEAUTY AND BARBER SUPPLY CO.,

dba IMAGE PRODUCTS CO. and

ADVANCED DESIGN LABORATORIES,

Defendants.

FINDINGS OF FACT

AND

CONCLUSIONS OF LAW

1. This is an action for patent infringement. This

Court has jurisdiction pursuant to 28 USC 1338. Venue is

properly laid in this Court pursuant to 28 USC 1400.

2. Plaintiff ARTHUR M. HERSCHENSOHN (hereinaf-

ter called ““Herschensohn’’) is the inventor of United

States Patent 3,253,292 entitled“ HAIR BRUSHES”, which

issued on May 31, 1966. This patent, which is hereinafter

called ‘292 patent, is the patent in suit. Herschensohn is

president and a principal shareholder of plaintiff CORONA

HAIR NET CORPORATION. CORONA HAIR NET COR-

A-21

PORATION does business under the fictitious name ‘‘The

Bobby Company” and is hereinafter referred to as The

Bobby Company.

3. Defendant ROBERT M. HOFFMAN (hereinafter

called Hoffman) is the president of both defendant AD-

VANCE DESIGN LABORATORIES, INC. (hereinafter called

ADL) and defendant HOFFMAN BEAUTY AND BARBER

COMPANY (hereinafter called Supply Company). Hoffman

owns all of the stock of both ADL and Supply Company.

4. The ‘292 patent describes a hairbrush which

includes a handle, a flexible spine extending from the

handle, a first series of fingers extending laterally from the

opposite side of the spine, and tufts of stiff bristles

extending downwardly from the fingers. In the brush

described in the ‘292 patent, the handle, the flexible spine

and the first and second series of fingers extending

laterally from opposite sides of the spine are formed as a

unitary member which the patent specifies may be made of

any suitable flexible plastic, such as polypropylene, for

instance. The claims of the patent in this suit are claims 1,

3 and 4. These claims recite as follows:

1. Ina hair brush of the character described,

a handle, a brush back comprising a flexible

spine element extending as a cantilever from said

handle, a first series of closely spaced fingers

extending laterally from one side and a second

series of closely spaced fingers extending lateral-

ly from the opposite side of said spine element

and tufts of relatively stiff bristles extending

downwardly from at least the fingers of said

brush back whereby when the brush is pulled

through hair through which a comb can pass,

said spine will bend so that the distal ends of the

fingers on the trailing side of the brush will

A-22

approach each other.

3. A hair brush as defined in claim 1,

wherein the handle is elongated and said spine

element extends from an end of said handle.

4. A hair brush as defined in claim 1,

wherein the fingers of the first series and those of

the second series extend from opposite regions of

the spine element respectively.

5. Prior to 1971, The Bobby Company made and

sold a hair brush within the scope and claims of the ‘292

patent. The handle, spine and fingers in that brush were

made from a copolymer plastic which was even more

flexible than polypropylene, and each tuft of bristle

included seven or eight slender strands folded to form 14

or 16 bristles. In 1971, the design of the brush was

changed such that each tuft was formed from a single,

heavier monofilament folded to form two bristles, one

longer than the other. In approximately 1974, the copo-

lymer plastic from which the handle, spine and fingers was

made was no longer available to The Bobby Company,

and thereafter, the handle, spine and fingers were made

from polypropylene, which is the material specified in the

patent. This brush is the principal product of The Bobby

Company, and is marketed by it under the designation

“VENT” Brush.

6. In 1975, Hoffman determined to have a copy of

the The Bobby Company’s “VENT” brush added to the

line of hair brushes and hair styling equipment distributed

by his companies. Hoffman caused ADL to arrange with a

manufacturer in Hong Kong to have The Bobby Com-

pany’s “VENT” brush duplicated, and ADL began

importing copies of this brush into the United States. Since

1975, ADL has imported and marketed a hairbrush which

A-23

it has sold at different times under the designation “Image

Movement” brush and “Image Air Flow” brush (hereinaf-

ter called the subject brushes). The subject brushes are

mold copies of and are identical to The Bobby Company's

“VENT” brush. ADL distributes the subject brushes

through many distributors and dealers, including Supply

Company.

7. The subject brushes and the “VENT” brush all

contain all of the elements of claims 1, 3 and 4 of the ‘292

patent, which claims are reproduced above. Polypropylene,

which is utilized in both the subject brushes and the

“VENT” brush is a flexible material as is defined in the

patent. Further, the change in the number of bristles in

each tuft is not significant, since a “tuft” of bristles is still a

tuft whether it contains a number of bristles or simply one

bristle folded over into two bristles, such as is the case in

bothVENT” brushes and the subject brushes. The subject

brushes thus contain all the elements of claims 1, 3 and 4 of

the *292 patent. The sale of the subject brushes by ADL

and Supply Company were acts of infringement of the

‘292 patent. The acts of Hoffman in inducing ADL and

Supply Company to sell the subject brushes were acts of

infringement of the ‘292 patent.

8. The Bobby Company’s “VENT” brush has enjoyed

a great deal of commercial success.

9. Plaintiffs have previously brought three infringe-

ment actions for the ‘292 patent in the Central District of

California prior to bringing the present action. All three of

these earlier actions ended in settlements in which the

defendants in those cases recognized the validity and

infringement of the ‘292 patent and consented to perma-

nent injunctions enjoining them against further infringe-

ment of the ‘292 patent. In each of these actions, the

defendants were also importing and marketing mold

A-24

copies of the “VENT” brush.

10. The hairbrush shown in the ‘292 patent is novel.

11. The hairbrush shown in the ‘292 patent is useful

and has significant utility. The Bobby Company markets

the “VENT” brush exclusively to professional hair dressers,

who have found the brush to be particularly useful in

removing tangles from wet hair without damage to the hair,

and who have also found the brush to be a useful hair

styling tool in blow drying hair. Blow drying is a styling

technique in which the stylist holds the brush in one hand

~ and a hand-held dryer in the other hand and simultaneously

dries and styles the hair of a patron by manipulating the

hair with the brush while directing hot air from the hand-

held dryer at the hair and brush.

12. At the time Herschensohn invented the hairbrush

of the ‘292 patent, blow drying was not common in the hair

dressing field, and he did not foresee that the hairbrush

would be useful as a styling tool in connection with blow

drying.

13. The scope and content of the prior at the time of

the invention of the ‘292 patent is shown by the following

references which were introduced as exhibits during the

trial of this matter:

a. The prior art cited by the Patent Office

during the prosecution of the ‘292 patent:

1. U.S. Patent No. 831, 493 (WILCOX

patent)

2. U.S. Patent No. 1,860,923 (COOKE

patent)

3. U.S. Patent No. 2,185,050 (CHIRAELLO

patent)

4. U.S. Patent No. 2,796,620 (BRESSLER

patent).

A-25

b. Additional patents cited by defendant:

1. U.S. Patent No. 2,003,243 (CAMPBELL

patent)

2. U.S. Patent No. 2,196,812 (KREUTZIG

patent)

3. U.S. Patent No. 2,661,007 (BAUER pat-

ent)

4. Italian Patent No. 474,383.

c. Prior art brushes and combs introduced

by defendant:

1. Empire Brush (Defendant’s Exhibit F)

2. Double Duk Brush (Defendant’s Exhibit G)

3. Flexible Comb (Defendant’s Exhibit H)

4. Williams Brush (Defendant’s Exhibit I).

14. The Bressler patent, cited by the Patent Office

Shows a hair brush which includes a plurality of bristle

Supporting sections which are parallel to the axis of the

brush and which are interconnected by flexible, spring

like members to allow the brush to flex around its axis to

comform to the head of the user of the brush. The Williams

and Double Duk brushes, cited by the defendants, are

brushes of a conventional nature in which the block (the

relatively flat portion of the brush which supports the

bristles) is formed from aluminum, but which include a

plurality of slots extending along a portion of the brush

between the bristles, with the slots also being parallel to the

axis of the brushes. These slots are to enable the brushes to

be cleaned more easily, and the brushes are not flexible at

all. Thus, these brushes are less pertinent to the invention of

the ‘292 patent than is the Bressler patent which was cited

by the Patent Office during the prosecution of the ‘292

patent.

15. The Cooke patent, which was also cited by the

A-26

Patent Office, shows a tooth brush which has a flexible head

to enable the brush to conform more closely to the surface

of the teeth of the user of the toothbrush. The head is made

to be flexible by providing a plurality of notches or recesses

along the head. Similarly, the Campbell patent cited by the

defendants teaches a toothbrush having a flexible head to

enable the toothbrush to conform to the teeth of a user of the

toothbrush. The Campbell patent is thus no more pertinent

than is the cited Cooke patent.

16. The Chiraello patent, cited by the Patent Office,

shows a combined brush and comb which includes a

plurality of teeth which contains bristles on one side thereof.

The Bauer, Kreutzig and Italian patents cited by defendants

all also show combs which include auxiliary teeth or short

brush bristles attached to or adjacent to the teeth of the

comb and pointing away from the direction of the teeth of

the comb, as does the bristles on the Chiraello patent. Thus,

these patents also are no more significant to the invention of

the ‘292 patent than is the cited Chiraello patent.

17. The Wilcox patent, cited by the Patent Office,

shows an old fashioned comb in which teeth are flexible and

longitudinally curved. The flexible comb cited by the

defendants is also a flexible old-fashioned style comb and is

no more pertinent to the invention of the ‘292 patent than is

the Wilcox patent.

18. The Empire brush cited by the defendants is a

brush having a relatively rigid plastic handle and block

having no slots or openings therein a‘ all and having a

plurality of monofilament plastic bristles extending away

from the block of the brush. It is of no pertinence to the ‘292

patent since Herschensohn has never at any time claimed to

be the inventor of a monofilament brush. Indeed, as is found

in Finding of Fact No. 7 above, the subject brushes and the

“VENT” brush are not even monofilament brushes, since

A-27

each tuft of bristles includes a single filament folded to form

two bristles in each tuft of bristles, with one bristle being

somewhat longer than the other bristles.

19. None of the references cited by the defendants are

of any more pertinence to the invention of the ‘292 patent

than are the references cited by the Patent Office during the

presecution of the ‘292 patent.

20. The difference in the prior art and the ‘292 patent

is the provision in the ‘292 patent of the block of the brush

including a flexible spine having a first series of fingers

extending laterally from one side of the spine and a second

series of fingers extending laterally from the opposite side of

the spine, with tufts of stiff bristles extending downwardly

from the fingers.

21. The defendants, who have the burden of proof of

invalidity of the ‘292 patent, have failed to present any

evidence whatsoever as to what was the level of ordinary

skill in the art at the time the invention of the ‘292 patent was

made. However, the Court has carefully independently

examined all of the prior art cited above, both the prior art

cited by the Patent Office during the prosecution of the ‘292

patent and the new prior art cited by the defendants, and is

unable to conclude that any of this prior art suggests the

invention of the ‘292 patent to the man of ordinary skill in

the art.

22. The brush of the ‘292 patent does produce an

unusual or surprising result which would not be expected by

the man having ordinary skill in the art. The flexibility of the

brush’s spine element, when coupled with the plurality of

bristle carrying fingers extending laterally on each side of

the flexible spine, with the vents between the finger

members, allows the brush to be pulled through the hair with

remarkable ease. This is an unusual or surprising conse-

quence from the unification of the elements concerned. It is

A-28

an unusual or surprising result. It is not merely the sum of

the results of the individual elements of the brush but is

instead an effect greater than the sum of the effects of the

several elements of the brush taken separately.

23. The brush of the ‘292 patent, while incorporating

many existing features of prior art brushes, is significantly

different than that which preceded it. All in all, while the

brush of the ‘292 patent at first glance appears to be a rather

simple device, it is in fact a truly novel device which

possesses great value.

24. The difference between the prior art and the

subject matter of the ‘292 patent as a whole would not have

been obvious at the time the invention of the ‘292 patent was

made to a person having ordinary skill in the art to which the

‘292 patent pertains.

25. As of the date of the Pretrial Conference Order in

this matter, which was March 15, 1976, the defendants’ had

made profits in the amount of $25,000 by their infringing

activities.

CONCLUSIONS OF LAW

1. A patent is presumed valid. The burden of estab-

lishing invalidity of a patent rests upon the party asserting it.

35 USC 282, Park-In Theaters v. Rogers, 130 F.2d 745

(9th Cir. 1942), Patterson-Ballagh v. Moss, 201 F.2d 403

(9th Cir. 1953).

2. Prior art that is cumulative to art cited by the

Patent Office does not destroy the presumption of validity.

Saf-Gard Products Inc. v. Service Products, Inc., 532

F2d 1266 at 1271, (9th Cir. 1976). The presumption of

validity is strengthened when the defendants are unable to

cite more pertinent references. Neff Instrument Corp. v.

Cohu Electronics, Inc., 298 F2d 82 at 86 (9th Cir. 1961).

A-29

3. However, finding that the presumption remains

applicable does not end the inquiry because defendants

could, by clear and convincing evidence, rebut it. Hayes

Spray Gun Co. v. E.C. Brown Co., 291 F.2d 319 at 322,

(9th Cir. 1961); Patterson-Ballagh Corp. v. Moss, supra;

Saf-Gard Products, Inc. v. Service Products, Inc., supra.

This the defendants have failed to do.

4. In determining the unobviousness of an invention

under 35 USC 103, the trier of fact must make the

following factual determinations: 1) the scope and con-

tent of the art at the time the invention was made; 2) the

difference between the prior art and the claims of the

patent; 3) the level of skill of the man having ordinary skill

in the art at the time the invention was made. Graham v.

John Deere, 383 U.S. 1, (1966).

5. Since the ‘292 patent is in large part a combination

patent, this Court must apply the principles of patentabili-

ty with “special strictness”. Jeddeloh Brothers Sweed

Mills, Inc. v. Coe Manufacturing Co., 375 F.2d 85 at 88

(9th Cir. 1967). In examining combination patents, the

Supreme Court indicated that a device is not an invention

unless there are “unusual or surprising consequences

from the unification of the elements . . . concerned.”

Great Allantic & Pacific Tea Co. v. Supermarket E-

quipment Company, 340 U.S. 147 at 152 (1950). The

Ninth Circuit has formulated the test in a similar fashion,

stating that the combination of old elements must produce

an ‘“‘unusual or suprising result.”” Hewlett-Packard Co. v.

Tel-Design, Inc., 460 F.2d 625 at 629 (9th Cir. 1972).

6. The ‘292 patent meets the standards for invention

set forth by the Supreme Court in Great Atlantic & Pacific

Tea Co. v. Supermarket Equipment Corp., supra. and in

Sakraida v. Ag Pro, Inc., ___, U.S. _____ (1976) and by

A-30

the Ninth Circuit in Hewlett-Packard Co. v. Tel-Design,

Inc., supra.

7. The ‘292 patent is new, useful and not obvious to

one having ordinary skill in the art. As such, it is a valid

patent. 35 USC 101, 35 USC 103.

8. Plaintiffs’ brush has enjoyed a great deal of

commercial success, the ‘292 patent has been recognized

as valid by others, and the defendants in this action have

blatently copied plaintiffs’ brush. While such considera-

tions will not overcome the lack of invention, they do

further strenghten the presumption of patent validity.

Great Atlantic & Pacific Tea Co. v. Supermarket Equip-

ment Corp., supra at 153; Calhoun v. United States, 339

F.2d 665 (Ct. Cl. 1904); Troy Co. v. Products Research

Co., 339 F.2d 364 at 367 (9th Cir. 1964). -

9. Inthis case, the invention of the ‘292 patent turned

out to have uses beyond that envisioned by the inventor at

the time he made the invention. However, a patentee is

entitled to rely upon subsequent events which render his

device more valuable. An inventor is entitled to whatever

merits his invention has, even though they may be greater

than he supposed, and the patent is not valid because all of

its advantages or possibilities were not understood or

known to the inventor at the time of the invention. 4

Deller’'s Walker on Patents, 2nd Edition, Section 238;

Tapco Products Co. v. Van Mark Products Corp., 446

F.2d 420 at 429 (6th Cir. 1971, Cert. denied ___ US.

__— 172 USPQ 1 (1971); Triangle v. National Electric,

149 F.2d 87 (3rd Cir. 1945) Cert. denied 326 U.S. 744

(1945).

10. The acts of the defendant ADL and of the

defendant Supply Company in selling the subject brushes

were acts of infringement of the ‘292 patent. 35 USC

A-31

271(a), Graver Tank & Manufacturing Co. v. Linde Air

Products, Co., 339 U.S. 605, 607 (1950).

11. The acts of defendant Hoffman in causing defen-

dant ADL and Supply Companpy to import and sell the

subject brushes were acts of infringement of the ‘292

patent. 35 USC 271(b).

12. Plaintiffs are entitled to damages equai to the

amount of profits realized by defendants as a result of their

infringing activities, plus interest and costs incurred. De-

fendants profits realized as a result of their infringing

activities up to the date of the Pretrial Conference Order

was $25,000. Plaintiffs are entitled to a Judgment in this

amount plus an accounting for all profits realized by

defendants as a result of their infringing activities since the

date of the Pretrial Conference Order. 35 USC 284.

13. Defendants ROBERT M. HOFFMAN, ADVANCED

DESIGN LABORATORIES, INC. HOFFMAN BEAUTY AND

BARBER SUPPLY CO., their agents, officers, servants,

employees, attorneys and all persons in active concert

with them who receive actual notice of this order by

personal service or otherwise shall be and hereby are

forever enjoined and restrained from infringing plaintiffs

United States Letters Patent 3,253,292. 35 UCS 283.

DATED: February 25, 1977

LAUGHLIN E. WATERS,

United States District Judge

A-32

May 31, 1966

FIG.5

A.M. HERSCHENSOHN 3,253,292

HAIR BRUSHES

Filed May 15, 1964

27

29

3I

| frios =) (FIG?

INVENTOR,

Arthur M. Herschensohn,

BY ‘ bh.

ATTORNEY.

A-33

UNITED STATES PATENT OFFICE

3,253,292

Patented May 31, 1966

3,253,292

HAIR BRUSHES

Arthur M. Herschensohn, 3 Lorraine Place,

Scarsdale, N.Y.

Filed May 15, 1964, Ser. No. 367,767

4 Claims. (Cl. 15-201)

The present invention relates to hair brushes.

An object of this invention is to provide novel and

improved hair brushes affording mechanical action to

penetrate thick tresses, dig to the scalp and cause drag on

the hair and scalp to accomplish the effects of massage and

which brushes by their automatic manipulations give users

a new hair-brushing sensation.

It is to be noted that a hair grows from the bottom of a

little pit or follicle; the part which lies within the follicle

being known as the root. Connected with each follicle are

small muscles of plain muscular tissue. The ducts of what

are known as the sebaceous glands, open into the hair-

follicles and secrete a fatty oily substance (sebum) which

they discharge into the hair-follicles, which action in the

opinion of medical authority occurs upon actuation of said

muscles. The sebum lubricates the hairs and renders them

glossy. All hair, except at the roots, are not alive.

Heretofore, the action of a brush passed through the hair

merely wiped the hair and scratched the scalp. The wiping

of the hair spread any oily substance, evenly therealong.

Only the dead part of the hair got any action from the

brushing. The live part got none.

A-34

It is therefore another object of this invention to provide

a novel and improved hair brush which will agitate the root

of the hair and its associated muscle tissue and environs to

bring additional sebum to the hair and thus, after repeated

brushings, there would be a material increase in the luster

of the hair.

Only if hairs are tightly entwined or knotted, would any

attempt to hrush them cause them to be pulled. Brushing

hair through which a comb can easily be passed, does not

pull the hair. There is nothing to intercept the brush

bristles and there is nothing to make the brush bristles to

tug the hair. There is nothing to bring exercise to the hair

root and its associated muscle tissue.

It is therefore another object of this invention to provide

a novel and improved hair brush which in its normal

manipulation will automatically pinch and tug the hair and

thus exercise the hair roots and their environments.

Still a further object thereof is to provide a novel and

improved hair brush of the character described, which is

easily cleanable, simple in construction, reasonable in

cost to manufacture and efficient in carrying out the

purposes for which it is designed.

Other objects and advantages will become apparent as

this disclosure proceeds.

For one practice of this invention, the brush back

consists of a central resilient elongated spine in extension

of a handle and having a series of closely spaced ribs

extending laterally therefrom in the manner of fingers from

its opposite side edges and there are bristle tufts extending

from the undersides of said spine and its ribs. Said spine is

flexible in the general plane of the fingers and in directions

perpendicular to said plane as well as to some degree in

torsion.

A-35

I will now set forth in detail several embodiments of this

invention, for which T shall refer to the accompanying

drawing forming part of this specification, in’ which

drawing, similar characters of reference indicate cot

responding parts in all the views.

PIG. | is a perspective view of a hair brush embodying

the teachings of this invention

PIGS. 2, J and 4 are pictorial views showing the brush

in use and various conditions assumed by its structure due

to its movement or handle manipulation. These views are

drawn to a reduced scale.

PIG; 5 shows the underside of a modified form of brush

back including the sockets in the spine and ribs in which

bristle tufts are to be mounted.

FIG. 6 shows the upper side of another form of brush

back

FIG. 7 shows the upper side of still another brush back

design

FIGS. 5 7 are drawn to a smaller scale than that of

FIG. |

In the drawing, the numeral 15 designates generally a

hair brush of the type comprising a brush back indicated

generally by the numeral 16 having a handle 17 integral

therewith, This unitary member may be of any suitable

flexible plastic as polypropylene for instance. Said brush

back consists of a spine element 18 which is centrally of

the handle and extends therefrom as a canti-lever having a

series of ribs or fingers which are closely spaced and

extend laterally therefrom from both side faces thereof, All

the elements comprising said brush back and the handle

are generally coplanar. The fingers along one side of said

spine clement 18 are designated by the numerals 19-24

A-36

respectively while the fingers along the other side are

denoted by the numerals 19°-24' respectively, Said spine

and all its fingers, on their undersurface, have closely

spaced sockets as in the manner shown in the modified

embodiment of FIG. 5 and indicated by the numeral 25,

Even the handle part may have some sockets 26, into all of

which sockets are mounted bristle tufts as 27, to extend

therefrom, The numeral 28 denotes a hole which may be

provided through the handle portion, The spine element 18

in bendable and resiliently flexed when moved so its distal

end moves sidewise in either direction, up of down and

even permits some torsional stressing thereof for twisting

movement, This brush of FIG, 1, has its fingers arranged

in pairs which as shown, diverge towards the handle 17, In

the embodiment shown in FIG, 6, corresponding fingers

an indicated at 29, 29° are in alignment and perpendicular

to the spine element 30, In FIG, 7, the fingers as shown,

are arranged in a combination of such relationships with

respect to the spine clement 31 thereof, The several

embodiments are given as examples of various designs the

brush may have, in order to function in accordance with

this invention,

It is evident that the extensive openwork of the brush

back offers easy cleaning of the entire brush structure by

merely allowing a flow of water therethrough, but such

openwork has been provided to allow various other

manipulations and thus accomplish various actions of the

brush, which will be explained by referring to the FIGS. 2,

3 and 4 of the drawing. In FIG, 2, the bristles have been

dug into the hair at the back of the head 33 and the brush 15

is being moved downwardly as indicated by the arrow

“A.” What happens, is that the spine element 18 becomes

bent so it is convex on its leading side whereby the tips of

the fingers of the series 19-24 will spread apart and of

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course, said spine element 18 will be concave at its trailing

side, hence the tips of the fingers of the series 19°-24’ will

come towards each other, causing the bristle tufts to pinch

the hair between them, for the bristles are of generally stiff

material. The attendant movement of the brush will cause

the pinched hair to be tugged, dragged on and pulled. The

thicker the hair mass is, the sharper will be the curvature

assumed by the spine element 18. In FIG. 3, upon upward

movement of the brush as indicated by the arrow “B,”’ or in

any direction for that matter, the tips of the brush fingers

on the trailing side will always approach each other and

hence pull the hair, by the action of their bristles. In FIG.

3, the pinching and pulling of the hair is by action of the

series 19-24. Augmented penetrating action is imparted to

the brush as well as to the pressure of the bristles against

the scalp, by bending the handle 17 away from the head as

in FIG. 4, and further brushing effectiveness can be had by

a twist of the wrist to twist the handle a bit as it indicated by

the rotational arrow “C”’ in FIG. 4. Of course, when the

brush is free of flexing forces, it will assume its normal

Straight condition as is shown in FIG. 1.

This invention is capable of numerous forms and

various applications without depar ing from the essential

features herein disclosed. It is therefore intended and

desired that the embodiments shown herein shall be

deemed merely illustrative and not restrictive and that the

patent shall cover all patentable novelty herein set forth:

reference being had to the following claims rather than to

the specific description and showings herein to indicate the

scope of this invention.

I claim:

1. In a hair brush of the character described, a

handle, a brush back comprising a flexible spine element

extending as a cantilever from said handle, a first series of

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closely spaced fingers extending laterally from one side

and a second series of closely spaced fingers extending

laterally from the opposite side of said spine element and

tufts of relatively stiff bristles extending downwardly from

at least the fingers of said brush back whereby when the

brush is pulled through hair through which a comb can

pass, said spine will bend so that the distal ends of the

fingers on the trailing side of the brush will approach each

other.

2. A hair brush as defined in claim 2, wherein said

spine element is stressible in torsion.

3. A hair brush as defined in claim 1, wherein the

handle is elongated and said spine element extends from

an end of said handle.

4. A hair brush as defined in claim 1, wherein the

fingers of the first series and those of the second series

extend from opposite regions of the spine element respec-

tively.

REFERENCES CITED BY THE EXAMINER

UNITED STATES PATENTS

831,493 O/ISGG WHOM .ncccecccccesecs 132—156

1,860,924 SIRs MD sa cacesrsdceceees 15—167

2,185,050 12/1939 Chiraello ............. 15—160 X

2,796,620 OCIS BD oo vic bi Saedcceaes 15—201

CHARLES A. WILLMUTH, Primary Examiner.

PETER FELDMAN, Assistant Examiner.

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