Petition for Writ of Certiorari — Shelco, Inc. v. Dow Chemical Co.
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3 MICBAEL RODAK, oR.cLERK |
, ty
Supreme Court of the United States
OCTOBER TERM 1971
No.
SHELCO, INC. ana THE SHELCO COMPANY, ©
Petitioners,
vs.
THE DOW CHEMICAL COMPANY and
HARRY G. SCHIERHOLZ & CO.,
Respondents.
SHELCO, INC. and THE SHELCO COMPANY,
“. Petitioners,
VS.
BOYLE-MIDWAY, INC., and
AMERICAN HOME PRODUCTS CORPORATION,
Respondents.
PETITION FOR WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT
W. PHILIP CHURCHILL
RONALD F. BALL
Fiso & NEAVE
277 Park Avenue
New York, New York 10017
EDWIN M. LUEDEKA
ROBERT B. JONES
Fircu, Even, Tasin & LuepeKa
135 S. LaSalle Street
Chicago, Illinois 60603
Attorneys for Petitioners
__—
INDEX
Opinions Below .......--+-+eeeeseeeeeeeeceereees 1
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Questions Presented ........-..++e-seseereeeeees 2
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Reasons for Granting the Writ ...............+45- 7
I. The Action Of This Court Is Needed To Set
Proper Standards For Determination As To
What Constitutes A Proved Defense Of
Fraud On The Patent Office .............. 7
Il. Claims 31 and 32 Should Be Held Valid ... 11
III. The Court Of Appeals Decision Regarding
§§ 184 And 185, If Allowed To Stand, Could
Have Far-Reaching Adverse Effects On The
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1. Opinion And Order Of The Court Of Appeals
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3. Decision On Petition For Rehearing (June 5,
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. Findings And Conclusions Of The District
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CITATIONS
CasEs
PAGE
Armour & Co. v. Wilson & Co., 274 F. 2d 143, 148 (7
RG ES hb hen ae dhe os 038 LR q
Beckman Instruments, Inc. v. Coleman Instruments,
Inc., 356 F. 2d ST3 (7 Cir. 1964) 2.0.0.6. cs enccees 12
Corona Co. v. Dovan Corp., 276 U.S. 358, 373-4 (1928) ig
Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322
pe IE Ks Fin ks Sod Cascade b a ead we ek 8
Kingsland v. Dorsey, 338 U.S. 318 (1949) .......... 8
Monsanto Company v. Rohm & Haas Co., 456 F. 2d
592 (3 Cir. 1972), cert. denied June 19, 1972 ...... 89
Norton v. Curtiss, 433 F. 2d 779, 791-7 (CCPA, 1970) 9
Precision Instrument Mfg. Co. v. Automotive Main-
tenance Machinery Co., 324 U.S. 806 (1945) ...... s
Smith v. Snow, 294 U.S. 1, 11 (19385) .............. ll
Umited States v. El Paso Gas Co., 376 U.S. 651, 656-7,
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STATUTES
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IN THE
_ Supreme Court of the United States
OCTOBER TERM 1971
No.
d SueEtco, Inc. and THe SHELco Company,
Petitioners,
vs.
Tur Dow CHEemicaL CoMPANy and
) Harry G. ScurerHouz & Co.,
Respondents.
of Suetco, Inc. and Tue SHetco Company,
g Petitioners,
vs.
BoyLe-Minway, Inc. and
oF American Home Propucts CorPoraTIoN,
4 Respondents.
PETITION FOR WRIT OF CERTIORARI
y TO THE UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT
Petitioners Sheleo, Inc. and The Sheleo Company
(hereafter ‘‘Shelco’’) pray that a Writ of Certiorari issue
4 to review a Judgment of the United States Court of Appeals
for the Seventh Circuit in this action.
Opinions Below
The Opinion and Judgment Order of the Court of Ap-
peals is reported at —— F. 2d —; 173 U.S. P. Q. 401;
printed in the Appendix hereto at pp. la-10a. The Order
2
2
3
2
2
of the Court of Appeals, filed June 5, 1972, denying Peti.
tioners’ Petition for Rehearing En Bane is printed in the
Appendix hereto at p. 22a. The Findings and Conelu.
sions adopted by the District Court are reported at 322 F
Supp. 485 and are printed in the Appendix hereto at pp.
23a-92a.
Jurisdicti
The Judgment of the Court of Appeals was entered op
April 5, 1972. The jurisdiction of this Court is invoked
under 28 U.S. C. § 1254(1).
Questions Presented
1. Can the «alleged fraud on the Patent Office by a
patentee (not a party to the action and not an officer or
employee of the plaintiffs) be imputed to the plaintiffs who
took no part in and had no knowledge of the prosecution of
the applications resulting in the patent in suit? —
2. Is it proper as a matter of law to imply a conclusion
of fraud when the evidence is at most only ‘‘persuasive”
that the patentee had knowledge of a prior use by others,
and there is no evidence as to the materiality of such prior
use?
3. Should a patent be declared invalid under the provi.
sions of 35 U.S. C. §§ 184 and 185 when the first application
filed abroad was filed more than six months after the filing
in the United States, and differed from the original U. §.
application merely by including broader claims?
Statutes Invoived
35 U.S. C. §§ 184 and 185 read as follows:
‘*§ 184, Filing of application in foreign country
Except when authorized by a license obtained
from the Commissioner a person shall not file or
a5 Pw es
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3
cause or authorize to be filed in any foreign country
prior to six months after filing in the United States
an application for patent or for the registration of a
utility model, industrial design, or model in respect
of an invention made in this country. A license shall
not be granted with respect to an invention subject
to an order issued by the Commissioner pursuant to
section 181 of this title without the concurrence of
the head of the departments and the chief officers of
the agencies who caused the order to be issued, The
license may be granted retroactively where an appli-
cation has been inadvertently filed abroad and the
application does not disclose an invention within the
scope of section 181 of this title.
The term ‘application’ when used in this chapter
includes applications and any modifications, amend-
ments, or supplements thereto, or divisions thereof.
“4185. Patent barred for filing without license
Notwithstanding any other provisions of law any
person, and his successors, assigns, or legal repre-
sentatives, shall not receive a "'nited States patent
for an invention if that person, or his successors,
assigns, or legal representatives shall, without pro-
curing the license prescribed in section 184 of this
title, have made, or consented to or assisted another’s
making, application in a foreign country for a patent
or for the registration of a utility model, industrial
design, or model in respect of the invention. A United
States patent issued to such person, his successors,
assigns, or legal representatives shall be invalid.’’
Statement of the Case
These two actions for infringement of Perry patent No.
3,335,092 were consolidated for trial on the issue of validity.
The patent, entitled ‘‘Oven Cleaner and Method of Using
Same,’’ describes and claims a highly successful water
based caustic home oven cleaner packaged in an aerosol con-
tainer which is used to apply a clinging foam to the roof
and walls of a heated oven to effect excellent cleaning in a
matter of minutes. No prior art home oven cleaner achieved
these results,
4
The District Court wrote no opinion but simply me
chanically adopted the findings proposed by the respond.
ents (App. p. 23a), a practice criticized by this Court jp
United States v. El Paso Gas Co., 376 U. S. 651, 656-7, 6623
(1964).
Kenneth E. Perry, who developed this oven cleaner, had
his own company, Winfield Brooks. Perry treated his oye
cleaner invention as a trade secret and, with his own attor.
ney, handled the entire prosecution of his applications jp
the Patent Office. The patent in suit was assigned to plain.
tiff, Shelco, Inc., only a few days before the patent issued,
Shortly before trial, Shelco, Inc. sold its business to plain.
tiff, The Sheleo Company. Thus, Shelco had no dealings
whatsoever with the Patent Office and no control over the
Patent Office proceedings.
District Court Findings 168 through 195 (App. pp. 76a.
85a) are entitled ‘‘Fraud’’ and deal with the following four
points :
1. The evidence was said to be ‘‘ persuasive”? that
a prior art oven cleaner called ‘‘Beam’’ was known
to Perry (FF 179), but not disclosed by him to the
Patent Office.
2. Perry did not disclose to the Patent Office a
single sale of his own oven cleaner called ‘‘ Winbro
403’’ which was sold in bulk form in a 30-gallon
drum more than one year before his first applica-
tion (FF 108, 192).
3. Perry did not disclose to the Patent Office a
Foster D. Snell report dealing with tests of his prod-
uct on the shaved skin of rabbits (FF 187-9).
4. An affidavit filed in the Patent Office dealing
with comparative tests with certain prior art Perl-
man patents was allegedly misleading (FF 191).
The only Findings relating to acts of Shelco, as dis-
tinguished from Perry, are 180 and 194. FF 180 (App.
5
p. 80a) states erroneously that the existence of Beam was
kept from the Patent Office by Shelco and its predecessors.
The evidence is undisputed that Perry and his own at-
torney, not Skelco or its predecessors, handled the entire
prosecution in the Patent Office.
FF 194 (App. p. 85a) concludes that this suit was
brought in bad faith because ‘‘Shelco knew or reasonably
should have known’’ that material misrepresentations
knowingly and deliberately had been made to the Patent
Office.
Under section V (App. pp. 9a-10a), the Court of Appeals
opinion even goes beyond the conclusions of the District
Court which were written by the respondents, and does so
without discussing the evidence.
ao Se Fr FF
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There is simply no evidence in the record, and the Dis-
trict Court Findings do not support, the imputations of
bad faith to Shelco in bringing these actions.
As for Perry’s alleged knowledge of the prior use Beam
oven cleaner, the evidence is not even ‘‘persuasive’’. A
salesman named Hannon, who worked for Perry for a few
months, did know about Beam, but the Finding (FF 178;
App. p. 79a) that Hannon testified on deposition that he
“could have’’ talked to Perry about Beam is a complete
misquotation of Hannon’s testimony and, admittedly,
clearly erroneous. Both Perry and his attorney testified
flatly that they had never heard of Beam until after these
lawsuits started.
All claims in the patent in suit specify an oven cleaner
and method of cleaning ovens consisting essentially of water
and a small amount of alkali metal hydroxide packaged in
an aerosol container so that the product is forced out of
the container by a propellant (FF 13, 17). The more spe-
cific claims include also a glycol (humectant) and a foam-
ing agent (surfactant). Claims 31 and 32 specify approxi-
mately 3% of sodium hydroxide as the cleaning agent, and
that the humectant shall be propylene glycol.
Neither Beam nor Perry’s Winbro 403 was in
an aerosol container with a propellant. Respondents’ oye,
cleaner expert testified at the trial that because of this dif.
ference, Beam, when squirted on the oven walls, failed ag ap
oven cleaner because the liquid ran off before it could do any
effective cleaning. He further admitted that such materials
packaged in plastic squeeze bottles, or in bottles with 4
finger-actuated pump spray, would always drip and run iz
the same manner. Thus, aerosol packaging in which the gas.
eous propellant under pressure ejected the material in the
form of a clinging foam made the difference between succes;
and failure for this type of oven cleaner.
The use of propylene glycol as a humectant, which js
required by claims 31 and 32, permits Perry’s oven cleaner
to be used without rubber gloves, even though it contains 3%
of caustic soda. The evidence shows that Dow rediscovered
the ‘‘safening’’ effect of this same composition after Perry's
oven cleaner had been on the market for two years, and
respondent Dow even filed a patent application on it in 1966,
extolling the safening effect of propylene glycol in such ap
aqueous caustic soda solution. The Court of Appeals opinion
expressly ignored Shelco’s contention about this combina.
tion, which was not taught by the prior art, and dismissed it
as ‘‘an inconsequential difference.’’
The evidence is undisputed that neither Beam nor Win.
bro 403 was substantially identical in structvre or funetion
to the invention claimed.
The failure to disclose the Snell report to the Patent
Office could not have been material in the Patent Office prose.
cution because the record shows that the Examiner already
knew that millions of cans of Perry’s oven cleaner Jifoam
had been sold, and patentability could not turn on the ques-
tion of the degree of its safety anyway. A second Snel
report, which Perry also did not disclose to the Patent Office,
covered tests by a number of women using the product as
directed, and this report shows the product to be completely
safe and non-irritating. The evidence further shows that
Perry’s product had been approved by Food and Drug and
the FTC.
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The affidavit relating to the Perlman patents spelled out
in complete detail the exact procedures which were followed
in making the comparative tests, and no information was
withheld from the Patent Office Examiner. The fraud charge
here is based solely on the assumption that the Examiner
was either very stupid or could not read the affidavit and the
Perlman patents for himself. Nothing was withheld.
In section IV (App. pp. 8a-9a), the Court of Appeals
has held for the first time that a foreign application, filed
more than six months after the filing of the application in
the United States, violates 35 U.S. C. §§ 184 and 185, merely
because the foreign application as filed contained broader
claims than were presented in the U. S. application as
originally filed.
Perry’s original application was filed December 4, 1963
(FF 10; App. p. 25a). On April 20, 1964, Perry filed an
amendment which added new claim 11 of broader scope than
the original application claims 1 to 10 (FF 28; App. p. 33a).
A license to file foreign applications was obtained from the
Commissioner on January 8, 1964 (FF 167; App. p. 76a),
and Perry filed his first foreign application in Canada on
August 18, 1964 (FF 166; App. p. 76a). The Canadian
application included a broadened claim corresponding to
claim 11 which had been added by the amendment of April
20.
Thus, there was no disclosure of any scientific or tech-
nical information in the Canadian application which had not
been contained in the U.S. application filed more than six
months earlier.
Reasons For Granting The Writ
The Action Of This Court Is Needed To Set Proper
Standards For Determination As To What Constitutes A
Proved Defense Of Fraud On The Patent Office
In the last few years it has become more and more fash-
ionable for defendants to plead fraud on the Patent Office,
unsupported by proof. As a result, many of the lower
courts tend to substitute their own personal impressions for
clear and convincing proof of the elements of a fraud, sud
as a wrongful intent or the materiality of information with.
held.
This Court in Hazel-Atlas Glass Co. v. Hartford-Empir:
Co., 322 U. S. 238 (1944), Precision Instrument Mfg. Co, y,
Automotive Maintenance Machinery Co., 324 U. 8. a
(1945) and Kingsland v. Dorsey, 338 U. S. 318 (1949) has
correctly emphasized in the past the uncompromising daty
of parties dealing with the Patent Office to report all facts
concerning possible fraud or inequitableness underlying the
applications in issue. There is no doubt that persons prose.
cuting applications in the Patent Office should be candid and
scrupulously honest in their dealings with the Examiner
In these older cases, either the wrongful intent or the repre.
hensible nature of the acts which constituted the fraud was
fully proved.
In many present-day situations, however, an intent to
mislead has been inferred where information known to the
applicant was not disclosed to the Patent Office merely be
cause it seemed to the lower court that the undisclosed infor.
mation might have been relevant. One such recent case is
the decision of the Third Circuit Court of Appeals in Mos
santo Company v. Rohm & Haas Co., 456 F. 2d 592 (1972),
cert. denied June 19, 1972, in which Judge Kalodner cor
rectly pointed out in a dissenting opinion that there was no
clear and convincing proof that information not disclosed
to the Patent Office would have made any difference in the
granting of the patent in suit. Both lower courts in Mo
santo, without any proof of the fact, concluded that the
withheld information would have been material to patent
ability, and then implied an intent to defraud the Patent
Office. This conclusion was reached in spite of testimony by
the patent solicitor explaining why he did not consider it
pertinent to include in the affidavit filed in the Patent Offic
all of the 899 tests which had been made.
As aptly stated in Armour € Co. v. Wilson & Co., 274 F.
9d 143, 148 (7 Cir. 1960) :
“It is easy to make charges of fraud, but the law
rightfully insists that before legal rights may be
based upon such charges, they must be established by
oe autien aoe evidence. The burden is on the
ig charges of fraud to establish same by
as and definite proof.’’
The Court of Customs and Patent Appeals, in its only
decision dealing with fraud on the Patent Office, has also
followed this ‘‘clear and convincing evidence’’ rule. See
Norton v. Curtiss, 433 F. 2d 779, 791-7 (1970). Some lower
courts, however, have overlooked or ignored these require-
ments, including the Third Circuit Court of Appeals in
Monsanto and the Seventh Circuit Court of Appeals in this
case.
In the present case, both lower Courts have brushed
aside the requirements of clear and convincing evidence to
prove a fraud in the following respects.
The Court of Appeals first concluded (App. p. 9a) that
“(1) Perry’s purported invention was copied from the
Beam oven cleaner.’’ Even the District Court Findings
failed to support this conclusion. The District Court found
that the evidence was ‘‘persuasive’’ that Perry knew about
Beam, but, even that ‘‘persuasive’’ evidence was based on
a clearly erroneous finding (FF 178) which misquoted
Hannon’s deposition testimony (supra, p. 5).
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In addition, this conclusion ignores the undisputed fact
that Beam was not packaged in an aerosol container, and
because of this difference failed as a home oven cleaner
when tested by respondents’ oven cleaner expert.
Next, the Court concluded (App. p. 9a) that ‘‘(2) Perry
had deliberately withheld information from the patent exam-
iner which was relevant to the application.’’ This can only
refer to the undisclosed Snell report indicating that Perry’s
oven cleaner was irritating on the shaved skin of rabbits.
Neither the District Court Findings nor the evidence in the
case reveal how this could possibly have been material to
Sl i ee ee, ee
10
the patentability of the oven cleaner. The Court of A
in concluding this report to be ‘‘relevant’’, was substituting
its own impressions for proof.
The Court next concluded (App. p. 10a) that ‘‘(3) Perry
had deliberately misrepresented to the patent examiner
facts which were relevant to the application.’’ This cay
only refer to the affidavit covering tests relating to the cited
Perlman patents. The procedures used in these tests were
accurately and completely stated in the affidavit. The By.
aminer was technically trained and fully capable of reading
and understanding the teachings of the Perlman Patents,
Neither the District Court Findings nor the Court of Ap
peals decision suggests how these circumstances could
possibly constitute a misrepresentation of relevant faets
to the Examiner.
Finally, the Court concludes (App. p. 10a) ‘‘(4) Perry
and Sheleco, Inc. brought this lawsuit in bad faith becanse
they knew or reasonably should have known that the patent
was invalid.’’ This conclusion is again wholly unsupported:
by any proof. Perry obviously is not a party to this action
and did not bring this lawsuit. Shelco, Inc. had nothing
whatever to do with the prosecution of the applications in
the Patent Office, and there is simply no evidence in the
record suggesting that Shelco, Inc. knew the patent was
invalid when it brought this lawsuit. Furthermore, if Sheleo,
Inc. ‘‘reasonably should have known”’ that the patent was
invalid, that is insufficient as a matter of law to satisfy the
‘‘clear and convincing evidence’’ requirements of the law
for proving a fraud.
The patent bar and the lower courts urgently need the
guidance of this Court on what should constitute proof of
unclean hands or fraud on the Patent Office, a subject whieh
this Court has not ruled upon directly since Corona Co. v.
Dovan Corp., 276 U. S. 358 (1928) at pages 373-4. Is knowl-
edge of a prior use by a patent applicant proved by evidence
which is merely ‘‘persuasive’’? Should a Court, without
proof, impute allegedly fraudulent acts to a plaintiff who
_had no knowledge of the prosecution in the Patent Office!
Is it proper for a Court to substitute its own impressions
for proof as to whether withheld information is material
to patentability? 4
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Until these questions are answered by this Court, the
patent bar bas no other choice than to inundate the Patent
Office with all of the information they know about a sub-
ject, no matter how trivial or immaterial it may be, in order
to avoid a possible later charge of fraud by inference.
Il.
Claims 31 And 32 Should Be Held Valid
Claims 31 and 32 require the combination of propylene
glycol in a dilute water based sodium hydroxide solution
packaged in an aerosol container including a propellant.
No prior art employs or suggests this combination. This
claimed combination, as pointed out in the patent specifi-
cation, permits the oven cleaner to be used by the house-
wife without wearing rubber gloves. There is no prior art
in the record from which this unexpected safening effect
could have been predicted. Respondent, Dow, more than
_ two years after Perry’s invention, rediscovered the ‘‘safen-
ing” effect of this combination and even filed its own patent
application on it. Naturally, the District Court Findings,
written by respondents, are silent on this evidence in the
record.
The Court of Appeals committed serious error in ex-
pressly ignoring the limitations of these claims (App., p.
8a). In doing so, both lower courts confused the different
functions of the claims and of the specification of a patent.
It is fundamental that it is the claims which ‘‘measure the
invention.’’ Smith v. Snow, 294 U. S. 1, 11 (1935). The
patent specification, as its only example, gives a formula
including 20% of propylene glycol. The patent specifica-
tion states that propylene glycol is ‘‘highly preferred’’ as
the humectant. The patent specification further points out
that such a combination is surprisingly less irritating to a
normal person’s skin, thus making it possible for this caustic
oven cleaner to be handled without rubber gloves.
It follows from the foregoing that if claims 31 and 32
are @valid, there can have been no fraud on the Patent
Office by Perry or anyone else.
12
The Cou OF Appeals Deion Rerrdng $8184 Aa
185, If Allowed To Stand, Could Ha
Dhaeinaetes the Peete
For the first time in any Court, this case holds that the
filing of a foreign application violates 35 U. S. C. § 1%
merely because it differed from the original U. S. applica.
tion by having one or more broader claims added to it.
The purpose of §4 184 and 185 was to prevent inad.
vertent disclosure of information which might prove detri-
mental to the safety and welfare of this country.* The
six-month period provided in § 184 before foreign appli-
cations could be filed without a license was designed tp
permit the Atomic Energy Commission, the Secretary of
Defense, and other governmental agencies to invoke %
U. S. C. § 181 and place the patent application under a
secrecy order, if it contained information, the disclosure
of which abroad might be detrimental to the national secur.
ity. The Commissioner of Patents was authorized by the
statute to grant licenses to file foreign applications ina
shorter period if he determined that the information in the
application was not detrimental to the national security.
The Court of Appeals in this case relies upon its ow
decision in Beckman Instruments, Inc. v. Coleman Instrv-
ments, Inc., 338 F.2d 573 (7 Cir. 1964). In that case, the
applicant had filed two successive applications, the second
application plainly including in its specification subject mat-
ter which was not disclosed in the first application. The
Court held that the two applications represented two differ-
ent inventions, and that it was improper to file a foreign
application corresponding to the second application withont
obtaining a license or waiting the prescribed six months
after the filing of the second application.
* See the hearings before Subcommittee No. 4, Committee on
the Judiciary, House of Representatives, 81st Congress, Second
Session, on HR 6389 (1950).
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13
The Court of Appeals in this case now goes further, say-
ing, in effect, that the slightest change in wording in the fil-
ing of the foreign application, i.e., any amendment or change
whatsoever, is a violation of § 184. Here again, the Court
has confused the specification and claims of the patent.
There is no dispute that the newly added claim which was
included in the Canadian application reads on the specifi-
cation of the original U. S. application as filed. The addition
of this broader claim did not include any information which
was not already included in the original application. In fact,
it has been the common practice of patent attorneys for a
great many years to redraft claims when filing foreign
applications. Indeed, this is necessary in most foreign coun-
tries because their patent laws require different forms of
claims than are used in the United States.
The impact of this decision, therefore, can only mean, if
it is allowed to stand, that the Commissioner of Patents will
in the near future receive a veritable flood of applications
for retroactive licenses permitted by § 184. This decision
should not be allowed to stand for this reason alone.
CONCLUSION
The Petition for Writ of Certiorari should be granted to
resolve these questions important to the patent system.
Respectfully submitted,
W. Puuip CuurcHiy
Ronatp F. Bau
Fish & Neave
277 Park Avenue
New York, New York 10017
Epwin M. Luepexka
Rosert B. Jones
Fitch, Even, Tabin & Luedeka
135 S. LaSalle Street
Chicago, Illinois 60603
Attorneys for Petitioners
Seid mG
tO FOTO
SMCS
Appendix
Opinion and Order of the Court of Appeals
IN THE
UNITED STATES COURT OF APPEALS
For THE SEventH CIiBcuir
Nos. 71-1061 and 71-1062
SgpreMBER TERM, 1971 SgepTeMBER Session, 1971
Suexco, Inc., and THe Sretco Company,
Plaintiff s-Appellants,
vs.
Tue Dow CuemicaL Company and
Harry G. ScuierHouz & Co.,
Defendants-A ppellees.
Suetco, Inc., and Tae SHELCo Company,
Plaintiffs-Appellants,
vs.
Boyte-Mivway, Inc. and AMERICAN
Home Propucts CorporaTION,
Defendants-Appellees.
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR
THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION.
Nos. 67-C-1393, 67-C-2190
Ricnarp B. Austin, Judge
April 5, 1972
Before Swycert, Chief Judge, Kirxy and Fatrcuip,
Circuit Judges.
Swycert, Chief Judge. This is an appeal from a final
judgment in a patent infringement action which held that
2a
Opinion and Order of the Court of Appeals
the patent in suit, United States Patent No. 3,335,092
was invalid and which also awarded attorneys’ fees ang
costs to the defendants. The only issues raised are
whether the district court committed reversible errors
in holding the patent invalid and in awarding attorneys’
fees to defendants. We affirm the district court in both
respects.
The patent at issue relates to the purported invention
by Kenneth E. Perry of a chemical composition and a
method for its use for the cleaning of baked-on soil from
ovens. Although the patent contains thirty-two claims,
Shelco, Inc., the plaintiff and assignee of the patent, asserts
only the validity of Claims 5, 19, 31 and 32 on this appeal,
Reduced to its essential elements, the invention claimed
in Claim 19 amounts to an oven cleaning product that is
an aqueous solution at least 50 per cent water by weight
containing 3 per cent sodium hydroxide by weight as well
as an unspecified quantity of any compatible surfactant
and an unspecified quantity of either a glycol or glycerol
humectant, which soluticn is to be applied from an aerosol
container to a hot oven or grill. Claim 32 is the same except
that it specifies propylene glycol in an unspecified amount
as the humectant to be included in the product. Claim 5
claims the invention of a method of use of the produet
described in Claim 19 in which the product is to be aerosol-
sprayed upon an oven or grill which is ‘‘at an [unspecified]
elevated temperature,’’ leaving the product on the hot oven
for an unspecified time interval and then removing it. Claim
31 describes the same method for using the product set
out in Claim 32.
The district court held that Claims 1 through 6, 14, 16
through 19, 26 and 28 through 32 of the patent were invalid
on grounds of anticipation (35 U. S. C. § 102), obviousness
(35 U. S. C. § 103) and indefiniteness (35 U. S. C. § 112).
It further held that the patent was void in its entirety under
35 U. S. C. §§ 184 and 185 (filing application in a foreign
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Opinion and Order of the Court of Appeals
country without a proper license to do so). Since Sheleco,
Inc, does not challenge the propriety of the district court’s
determination of invalidity as to any claims other than num-
bers 5, 19, 31 and 32, we limit our discussion to those
enumerated claims.
It is settled that, as a general rule, a purported inven-
tion is not anticipated ‘‘unless all of the same elements
are found in exactly the same situation and united in the
same way to perform an identical function’’ in a previously
known product. Illinois Tool Works, Inc. v. Sweeheart
Plastics, Inc., 436 F. 2d 1180, 1182-83 (7th Cir. 1971);
Amphenol Corp. v. General Time Corp., 397 F. 2d 431,
438 (7th Cir. 1968). However, when the only features
distinguishing the purported invention from a prior art
product are insubstantial, the earlier may properly be said
to anticipate the later product. As we said in Deep Weld-
ing, Inc. v. Sctaky Bros., Inc., 417 F. 2d 1227, 1234 (7th
Cir. 1969), ‘‘{I]t is sufficient for anticipation ‘if the gen-
eral aspects are the same and the difference in minor mat-
ters is only such as would suggest itself to one of ordinary
skill in the art.’ ”’ tat
The record here reveals the existence of three prior art
products which, we believe, justify the district court’s find-
ing that Perry’s purported invention was anticipated.
The first such product which anticipated Perry was an
oven cleaner made and sold by Capitol Packing Co. of
Melrose Park, Illinois to Bissell, Inc. of Grand Rapids,
Michigan. The unpatented oven cleaner bought and dis-
tributed by Bissell was first sold in November 1962, some
eleven months prior to Perry’s December 4, 1963 applica-
tion. The formula pursuant to which the Bissell product
was made from its beginning was expressed as follows
(in percentages of its weight) :
Sodium orthosilicate ...... T%
Sole-terge 325 ...........
SHHCHeCCOCEC HOCH LOE 8
4a
Opinion and Order of the Court of Appeals
The evidence before the trial court established tha}
sodium orthosilicate is a physical mixture of sodium
hydroxide and sodium metasilicate in a proportion of 40-6
respectively by weight so as to generate a concentration
of 2.8 per cent free sodium hydroxide by weight in the
foregoing formula. It was also established that the remain.
ing ingredients of the Bissell product included compatible
surfactants and a glycol humectant. According to the ip
structions for its use, Bissell was sprayed from an aerosol
can upon a cold oven. However, the district court specif.
cally found that Bissell was suitable for use on a hot oven
We agree that Bissell anticipates Perry. The only dif-
ferences between Bissell and the Claims 5 and 19 produet
and method are a miniscule difference in the amount of
free sodium hydroxide (2.8 per cent in Bissell and 3 per
cent in Perry) and the recommended application to a cold
oven in Bissell and to a heated oven of unspecified tempers-
ture in Perry. Those differences were inconsequential, and
Bissell anticipated Perry’s broader Claims 5 and 19. The
use of propylene glycol as specified in Claims 31 and 32 as
the humectant is an inconsequential difference which does
not survive the anticipatory aspects of Bissell.
Perry’s purported invention is also anticipated by an
unpatented oven cleaner made and sold by Beam Chemical
Company from 1957 to the present. Beam was sold with
a glass or plastic spray bottle and with instructions to
apply it to a warm oven. The formula used by Beam o
April 8, 1960 and for some time before and after that date
produced a solution containing more than 50 per cent water
by weight, about 2.8 per ceni sodium hydroxide by weight,
compatible surfactants and a glycol or glycerol humectant
which, occassionally during the period 1957 through 1962,
was sometimes propylene glycol. Thus, the only real dis
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Opinion and Order of the Court of Appeals
tinction between Beam and Perry was that Perry was
aerosol-dispensed while Beam was dispensed by a so-called
Windex-type sprayer. That difference is inconsequential
as the district court found and as evidenced by Perry’s
statement in his patent that, ‘‘The same results were
achieved by spraying the cleaner of the example on a hot
oven with a conventional pressure atomizer.’’ Beam there-
fore anticipated the patent in suit.
Finally, Perry’s product was sold and used more than
one year prior to the application, thereby calling into
effect the statutory bar of 35 U.S. C. § 102(b). In October
1962 Perry made and sold a 30 gallon drum of the oven
cleaner claimed in the patent without including the furfuryl
alcohol ‘‘catalysts’’ required by some claims of the patent.
The solution was more than 50 per cent water by weight
and contained 3 per cent sodium hydroxide, a humectant
and a surfactant. Also, not later than December 1962,
Perry made a 20 gallon batch of the same oven cleaner
which was placed in plastic squeeze bottles and used for
testing purposes, except for one such bottle which was
given to a home economist with Vaugn Electric Co. of
Somerville, Massachusetts, to cultivate future orders for
the oven cleaner. No confidentiality restrictions were im-
posed. The sale of this oven cleaner (called ‘‘Winbro 403”’
at the time of the sale) and the giving of one bottle to
Vaugn Electric’s home economist constituted a public use
or sale of the invention more than one year prior to the
application. That transaction barred the granting of the
patent pursuant to section 102(b). Frantz Mfg. Co. v.
Phenia Mfg. Co., Nos. 18975 and 71-1069 (7th Cir., March
16, 1972).
Il
Had the applicable prior art described in the foregoing
not anticipated the Perry oven cleaner, t.e., had it not been
sufficiently identical to anticipate, it is clear that Perry’s
6a
Opinion and Order of the Court of Appeals
purported invention would have been obvious by the teach.
ings of the above described oven cleaners. Given a prior
art which included Bissell and Beam, the obviousness of
Perry cannot be questioned. Moreover, the prior art tend.
ing to establish obviousness is even more extensive than
that which established anticipation.
The oldest example of the prior art which renders Perry
obvious is a paragraph in a home reference work entitled
Hen ey’s Formuuas, Processes anp TraDe Secrets (1948)
which stated:
To Clean A Gas Stove—An easy method of remoy-
ing grease spots consists in immersing the separable
parts for several hours in a warm lye (sodium
hydroxide], heated to about 70°C. (158°F.), said lye
to be made of nine parts of caustic soda and 1
parts of water [5% sodium hydroxide and 95%
water]. These pieces, together with the fixed parts
of the stove, may be well brushed with this lye and
afterwards rinsed in clean, warm water. The grease
will be dissolved, and the stove restored almost to its
original state.
Several prior art items were patented in the United
States, of which only two were considered by the patent
office. Those two were United States Patents Nos. 3,031,488
and 3,031,409 issued April 24, 1962 to one Perlman. They
covered an anhydrous, reduced caustic oven cleaner which
contained 2 to 3 per cent of sodium or potassium hydroxide,
surfactants and glycol humectants. The *409 patent also
taught that spraying some such compounds from an aerosol
package produces a foam. Although the °408 and "408
patents du not require application to a heated oven, the
products described by both patents were suitable for such
application.
At least two other patents not considered by the patent
office properly constitute relevant prior art with regard
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7a
Opinion and Order of the Court of Appeals
to the Perry patent. United States Patent No. 3,079,284,
issued February 26, 1963 to one Boucher, disclosed an oven
cleaner more than 50 per cent water including sodium hy-
droxide in amounts as low as 5 per cent which was to be
applied to an oven which was then heated for catalytic
effect. United States Patent No. 2,992,995, issued July 18,
1961 to one Arden, disclosed an aqueous cleaning solution
with sodium hydroxide in as low an amount as 4 per cent
where items to be cleaned were dipped in the solution heated
to temperatures over 200°F. The latter patent also divulged
the use of glycols and glycerols as humectants.
The district court also found that the separate work of
John J. Sullivan and John W. Seljan constituted prior art
which was relevant to Perry and rendered it obvious. We
agree, but we do not discuss those items of prior art since
their effect is cumulative.
Based on the prior art described above, one skilled in
the art of liquid oven cleaners would know or could easily
discover that aqueous solutions for such purposes can be
effective at concentrations of caustic less than 10 per cent
by weight, that surfacants and humectants are useful in-
gredients therein, that glycol and glycerol humectants are
common in such solutions, that they may be sprayed from
aerosol cans or plastic or glass atomizers of various types,
that some such solutions spray as a foam from aerosol cans
and that heat is a useful catalyst in the cleaning reaction
produced by the application of such products to burned-on
oven soil. We believe, as did the district court, that a person
ordinarily skilled in the art of liquid oven cleaners would
find Perry’s product and method obvious.
Il
A review of the patent office file relating to the applica-
tion which became United States patent No. 3,335,092,
together with a reading of the patent itself, justifies the
district court’s determination that the patent is void for
8a
Opinion and Order of the Court of Appeals
indefiniteness under 35 U.S.C. $112. The patent states
no invention over the prior art. We believe that the reason
no such statement can be found in the patent is because there
was no invention involved. Conflicts between Perry’s testi
mony herein and the claims and specifications of the patent
make clear that what it is that was supposed to have been
invented remains unclear. Perry’s patent states that the
method of application of the oven cleaner as between con.
ventional atomizers and aerosol cans is unimportant ag to
the result. At trial, however, Shelco, Inc. claimed that soly-
ing the problem of aerosol packaging of caustic oven cleaner
solutions was the invention. But the patent neither describes
the nature of such a problem nor its solution and therefore
fails for indefiniteness since no other invention has been as-
serted or identified in the patent. Shelco has also half-
heartedly asserted that the invention consists of the use of
20 per cent propylene glycol as a humectant in the cleaning
solution. We ignore that contention since the patent does
not identify the use of propylene glycol as the invention, nor
does it specify the amount of propylene glycol to be used,
and it specifically states that the ‘‘invention’’ it encom-
passes includes compositions similar to the example which
contain no humectant at all.
IV
35 U.S. C. § 184 prohibits the filing of an application for
a patent in a foreign country prior to six months after the
filing of an application in this country where the subject
matter of the application is the same and the invention was
made in this country except when authorized by a license
from the commissioner of patents to apply for a foreign
patent. 35 U.S.C. §185 provides that « United States
Patent shall be invalid where a foreign application for the
same invention was made without the proper license. The
district court determined that the instant patent was invalid
pursuant to 35 U.S. C. §§ 184 and 185. We agree.
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Opinion and Order of the Court of Appeals
The basis for the district court’s determination that
Perry violated 35 U.S. C. § 184 was its specific finding of
fact that the only license applied for with respect to the in-
vention claimed was issued in January 1964. At that time
Perry’s application for a United States patent, upon which
the license was based, claimed that the presence of a furfuryl
alcohol catalyst was essential to the invention. The license
specifically stated that subsequent amendments to the
original United States patent application were not author-
ized by it for filing abroad. Not until April 20, 1964 did
Perry file any claim with the U.S. Patent Office which did
not require the presence of the catalyst. However, Perry’s
original foreign application claimed invention in oven-clean-
ing compositions which did not include the catalyst and thus
exceeded the license.
It is clear to us, therefore, that Perry violated the pro-
visions of 35 U. S. C. § 184 and that the district court’s
declaration of the invalidity of the patent pursuant to 35
U. S. C. § 185 was justified. Beckwith Instruments, Inc.
v. Coleman Instruments, Inc., 338 F. 2d 573 (7th Cir. 1964).
V
35 U. S. C. § 285 authorizes district courts to award
attorney’s fees to the prevailing party in ‘‘exceptional
cases.’ The basis for the district court’s determination
that this was an exceptional case was its finding that
Perry had practiced fraud on the patent office in several
respects and that he and Shelco had otherwise acted im-
properly in that:
(1) Perry’s purported invention was copied from the
Beam oven cleaner;
(2) Perry had deliberately withheld information
from the patent examiner which was relevant
to the application;
10a
Opinion and Order of the Court of Appeals
(3) Perry had deliberately misrepresented to the
patent examiner facts which were relevant to the
application ;
(4) Perry and Sheleo, Inc. brought this lawsuit ip
bad faith because they knew or reasonably should
have known that the patent was invalid.
Fraud on the patent office or bad faith in asserting
the validity and infringement of a patent is ample justifi.
cation for holding that a patent case is an exceptional
one within the intendment of 35 U. S. C. § 285. Monolith
Portland Midwest Co. v. Kaiser Aluminum € Chem. Corp,
407 F. 2d 288, 294 (9th Cir. 1969); see Townsend Co. y,
M.S.L. Indus., 359 F. 2d 814 (7th Cir. 1966). Our inquiry
must therefore be directed to whether the district court's
determinations of fraud and bad faith were clearly errone-
ous. Fev. R. Crv. P 52(a); see Townsend Co. v. MSL.
Indus., supra at 817.
After reviewing the evidence upon which the district
court based its findings, we conclude that the findings of
fraud and bad faith on the part of Perry and Sheleco, Ine.
cannot be said to be clearly erroneous. That being the case,
the district court acted properly within its discretion in
declaring this case to be ‘‘exceptional’’ and thereupon
awarding attorneys’ fees to the defendants.
The judgment of the district court is affirmed.
A true Copy:
ee
Clerk of the United States Court of
Appeals for the Seventh Circuit.
lla
Petition for Rehearing
IN THE
UNITED STATES COURT OF APPEALS
For THE Sevents Crrovuir
Nos. 71-1061 and 71-1062
Sxuetco, Inc., and Taz SHetco Company,
Plaintiffs-Appellants,
vs.
Tue Dow CHemicaL Company and
Harry G. Scurernorz & Co.,
Defendants-Appellees.
Sue co, Inc., and Toe SHEetco Company,
Plaintiffs-Appellants,
vs.
Boyie-Mmway, Inc. and AMERICAN
Home Propucts Corporation,
Defendants-Appellees.
APPEALS FROM THE UNITED STATES DISTRICT COURT FOR
THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION.
The Honoraste Ricwarp B. Austin, Judge
PETITION FOR REHEARING AND
FOR REHEARING EN BANC
Shelco, Inc. and The Sheleo Company, Appellants, peti-
tion for a rehearing of the following issues:
1. Did the lower Court err as a matter of law in
holding that Shelco brought this lawsuit in bad faith?
2. Did the lower Court err as a matter of law in
holding that Perry (the inventor who was not and is
12a
Petition for Rehearing
not a party to this lawsuit) practiced fraud on the
Patent Office in obtaining the patent in suit?
3. Did the lower Court err as a matter of law ip
holding invalid claims 31 and 32 of the Perry patent
in suit?
This Court’s affirmance on these first two issues lets stand
an award against Shelco (not Perry) of attorneys’ fees and
expenses which the defendants assert are over $400,000
(App. 132-137). It also exposes Shelco (not Perry) to pos.
sible treble-damage liability on defendants’ anti-trust coun-
ter-claims which are premised on averments of Sheleo’s
purported bad faith in bringing this suit and Perry’s pur-
ported fraud on the Patent Office (App. 14-16 and 25-27),
Sheleo also petitions for a rehearing en banc of these
issues under Rule 35 of the Federal Rules of Appellate Pro.
cedure, which authorizes rehearing en banc ‘‘when consider.
ation by the full court is necessary to secure or maintain
uniformity of its decisions.’’ This Court’s decision on these
first two issues is in direct conflict with and overrules, sub
silentio, this Court’s previous decision in Scott Paper Com-
pany v. Fort Howard Paper Company, 432 F. 2d 1198 (7 Cir.
1970).* In Scott Paper, this Court held:
1. ‘‘A finding that a patent was procured by fraud or
unclean hands must be based on ‘clear, unequivocal and con-
vineing’ evidence’’ (432 F. 2d at 1204) ;-and
2. No finding of fraud or unclean hands in the procure-
ment of a patent will be made unless ‘‘the non-disclosed
prior art is almost identical with the patentee’s invention”.
(432 F. 2d at 1205).
We respectfully submit there is no credible evidence, let
alone clear and convincing proof, to support a finding of bad
* See also this Court’s decision in Wen Products, Inc. v. Port-
able Electric Tools, Inc., 367 F. 2d 764 (7 Cir. 1966).
13a
Petition for Rehearing
faith on the part of Shelco, or a finding of fraud on the part
of Perry, findings restated on pages 8 and 9 of this Court’s
opinion. The opinion does not discuss the evidence on those
findings, notwithstanding that Dow’s brief admits that key
finding 178, as to whether or not Perry had knowledge of
Beam in 1962, is based upon evidence that ‘‘is not clear’’
(p. 18, footnote).
Furthermore, even if the evidence here supported the
charge that the patentee, Perry, had been guilty of fraud,
the decision holding Shelco liable for attorneys’ fees (alleg-
edly over $400,000), despite the complete lack of any pro-
bative evidence that Shelco knew or even could have known
of the alleged fraud by Perry, is completely without prece-
dent and totally unjust.
If this decision is allowed to become the law of this Court,
the floodgates will be opened to claims for recovery against
patent owners based on charges of fraud by a patentee even
if the patent owners, at the time of bringing the suit, were
completely unaware of the asserted facts on which such
allegations of fraud are based.
I.
Shelco Did Not Bring This Suit In Bad Faith
There is no evidence that Shelco had any knowledge of
the fraud charged against Perry. Charge ‘ (4)’’ on page 9
of this Court’s decision incorrectly states that Perry and
Shelco, Inc. brought this lawsuit in bad faith. Shelco is
erroneously equated with Perry throughout Section V of
this Court’s opinion. The Court appears to have overlooked
the fact that Perry, the patentee, is not one of the plaintiffs
and is not a party to this suit. Perry is not, and never was,
an officer or employee of Shelco. The record is entirely clear
that the plaintiff, Sheleo, Inc., and its predecessor, The
l4a
Petition for Rehearing
Sheleo Company had no part in the preparation or prosecn.
tion of the applications which resulted in the patent in suit
(App. 488-490). There is not one scrap of evidence to sug.
gest that Shelco or its President, Carpenter, had any knowl.
edge in 1967 when Shelco brought these suits either
(a) that the patent was invalid as stated in this
Court’s decision, or
(b) that the patent was obtained as a result of
fraud or material misrepresentations.
The undisputed facts are that from 1963, Shelco had a
contract (App. 1082-96) with Perry’s company, Winfield
Brooks, which treated Perry’s oven cleaner invention as a
trade secret even from Shelco. The Patent Office proseen-
tion was handled by’Perry and his own attorney, Sewell
Bronstein (App. 489). The commercial Jifoam oven cleaner
was made up in bulk by Winfield Brooks who shipped it to
aerosol packagers who, in turn, packaged and labeled the
product in aerosol containers for Shelco. Shelco’s part of
the operation was purely a matter of advertising, promotion
and sales (App. 486-7, 580-1). The patent in suit was as-
signed to Shelco only a matter of days before the patent
issued.
Of the 195 findings of the District Court (which were
written by defendants’ counsel), only FF 168-195 relate to
the fraud issue. Of these, FF 180 and 194 are relevant to
Shelco, as distinguished from Perry and Winfield Brooks.
FF 180 incorrectly says the existence of Beam was kept
from the Patent Office by Perry, Shelco and its predecessors.
Shelco had no dealings whatever with the Patent Office and
no control over the Patent Office proceedings (App. 489).
Points (1), (2) and (3) at pages 8 and 9 of this Court's
opinion in no way relate to Shelco.
FF 194 is not really a fact finding but a conclusion, totally
unsupported by the other findings of the District Court or
15a
Petition for Rehearing
by the evidence. Further, even if Shelco ‘‘reasonably should
have known’’ (as stated in FF 194), this is not sufficient as
a matter of law to prove by clear, unequivocal and convinc-
ing evidence that Shelco brought this suit in bad faith.
Therefore, Shelco, when it brought suits in 1967 against
Dow, et al and against Boyle-Midway, et al, did not act in
bad faith. Even if Perry had been guilty of fraud, which
he was not, there is no basis whatever for imputing such
fraud to Shelco here so as to charge them with over $400,000
in attorneys’ fees and expose Shelco to possible treble-dam-
age anti-trust liability for allegedly bringing this suit in
bad faith.
Il.
Perry Did Not Obtain The Patent In Suit By Fraud
This Court’s decision relies on three prior uses as ‘‘anti-
cipations’’ under 35 U.S.C. § 102(b). The first, a Bissell oven
cleaner, was used only on a cold oven and was packaged in
a container which instructed the housewife to ‘‘Be sure oven
is cool.’”’ (PX 68, DX 106). Bissell, therefore, clearly was
not an anticipation of the method claims (this was flatly ad-
mitted in Dow’s brief at page 26). Furthermore, it came to
light immediately before trial and after discovery in this
litigation was closed (App. 171), and there is not even
a contention that it was previously known to Perry. Thus,
Bissell could not be involved in the fraud charges.
The second prior use relied upon by the Court as an
‘anticipation’? was Beam, which was never packaged in an
aerosol container as required by the patent claims until
after the patentee’s product was on the market. In fact,
Beam was never successfully packaged in an aerosol con-
tainer. This was tried in 1964 after plaintiffs’ Jifoam was
on the market, but the Beam cans leaked, burst their seams
and even exploded (App. 189-190, 199-203). The evidence is
16a
Petition for Rehearing
undisputed that the use of an aerosol dispenser, because jt
resulted in a foam, made the difference between success and
failure in a home oven cleaner, even though this Court's
decision dismisses this difference as ‘‘inconsequential”’,
The third prior use called an ‘‘anticipation’”’ was the
sale by Perry’s company, Winfield Brooks, of 30 gallons of
‘*Winbro’’ cleaning solution packaged in bulk in a drum and
sold to a local government cafeteria with no instructions
how to use it (FF 108, DXs 83A-B, App. 1543-4, 280-1),
Some unidentified man gave Mrs. Hall of Vaughn Electric
some oven cleaner to experiment with prior to December
1962, but in a plastic bottle without any spray applicater
(App. 205-6). There is no finding and no evidence of any sale
of any ‘‘Winbro”’ oven cleaner packaged in an aerosol con-
tainer as required by the patent claims until after December
4, 1962, the cut-off date for any statutory bar (4 102(b)) to
the Perry application, filed December 4, 1963.
The decision recognizes (p. 3) that an invention is not
anticipated ‘‘ ‘unless all of the same elements are found in
exactly the same situation and united in the same way to
perform an identical function’ in a previously known prod-
uct’’, and yet dismisses aerosol packaging as ‘‘insubstan-
tial’? and ‘‘inconsequential’’. The undisputed evidence is
that aerosol packaging for a home oven cleaner with the
resulting foam makes the difference between success and
failure. Boyle-Midway tested Beam in a Windex-type
(non-aerosol) bottle in 1958 and concluded that it ‘‘fails
as an oven cleaner because it is a very mobile liquid. It
runs off vertical and inverted surfaces before it has much
chance to react .. .’’ (emphasis added; DX 579, App. 1660).
Boyle-Midway’s oven cleaner expert at the trial admitted
that oven cleaners sprayed from squeeze bottles would
always drip and run:
“*Q. And you mean that no matter what you spray from
them, they are going to run?’’
‘*A, They will, sir, yes.’’ (App. 474)
ae
17a
Petition for Rehearing
Boyle-Midway’s brand manager, Treumann, testified
that in 1963-64 the major threat to Easy-Off paste oven
cleaner was ‘‘the true aerosol’’ product (App. 555).
Two years ago in the Scott Paper case, this Court held
that failure to reveal prior art which was held by the Court
to invalidate the patent in suit for obviousness, but was not
‘almost identical with the patentee’s invention’’, did not
constitute the required proof of fraud by clear, unequivocal
and convincing evidence.
The decision here is now saying that, contrary to the rule
of Scott Paper, a failure to reveal prior art to the Patent
Office is automatically fraud, even when the prior art is not
substantially identical in structure and function.
Heretofore, this Court has held that each element of the
fraud, including intent to deceive and materiality of the
withheld information, must be proven by clear, unequivocal
and convincing evidence. The present decision ignores this
requirement.
The claims of Perry’s patent were allowed by the Patent
Office on the argument that aerosol packaging was an impor-
tant feature of the invention. This Court may differ with the
Patent Office and with appellants as to the importance of
this feature which turned failure into success. But Perry
believed in the importance of aerosol packaging, and the
Court is not justified in its inference that Perry intended
to deceive the Patent Office by not revealing his prior bulk
sale of Winbro 403. Perry did not even make the invention
claimed in his patent until the early part of 1963, less than
a year before he filed.
The Conclusion That Perry Copied His Invention From
Beam is Contrary to the Evidence
The charge on page 8 of the Court’s opinion that Perry’s
‘invention’? was copied from Beam is not even supported
18a
Petition for Rehearing
by the fact findings in this case and is contrary to the
evidence. One does not have to be a chemist to see froms
comparison of Perry’s original oven cleaner formula with
the alleged 1962 formula of Beam (Addendum B, our maiz
brief) that one was not copied from the other. Perry's
claimed invention was an oven cleaner ‘‘consisting essen.
tially’’ of certain stated ingredients and packaged in ap
aerosol container, with the important and vital result that
it sprayed a foam. Beam was not such a product (FF 62).
Further, there is no evidence, much less clear and con-
vineing proof, that Perry even knew about Beam in 1962
or 1963, and the evidence is to the contrary.
Perry testified that he had never heard of Beam until
after this lawsuit started (App. 357, FF 177).
Perry’s patent attorney, Bronstein, swore that he had
never heard of Beam until after this lawsuit started (App.
627).
There is no doubt that Hannon, a salesman who worked
briefly for Perry in 1962-63, knew there was an oven
cleaner called Beam. There is equally no doubt that
Hannon, who in this period had all of the dealings for
Winfield Brooks with Mrs. Hall and Vaughn Electric, fur-
nished to Mrs. Hall in February 1963 a data sheet that had
instructions which had been copied from a Beam label.
However, there is no evidence whatsoever that Hannon
ever revealed the existence of Beam to Perry. The only find-
ing of fact on this point, FF 178, states Hannon “‘testified
that he ‘could have’ talked to Perry about Beam.’’ Dow has
admitted this finding to be erroneous (Dow brief, footnote
p. 18). In the portion of Hannon’s deposition to which this
finding refers (App. 234; see also the full deposition testi-
mony at 648), Hannon was not even being asked about
Beam. Finding 179 concludes the evidence is ‘‘persuasive”
that Hannon revealed Beam to Perry, but the evidence to
such effect is not only not persuasive, it is completely
19a
Petition for Rehearing
jacking. A fortiori, it is not ‘‘clear, unequivocal ond con-
yincing’’ as the law requires to prove fraud.
IV.
Claims 31 and 32 Should Be Held Valid
A. The Court’s opinion expressly ignores Sheleo’s con-
tention about the importance of using propylene glycol as
required in claims 31 and 32, stating at page 7: ‘‘ We ignore
that contention since the patent does not identify the use
of propylene glycol as the invention, nor does it specify the
amount of propylene glycol to be used, and it specifically
states that the ‘invention’ it encompasses includes compo-
sitions similar to the example which contain no humectant
at all.”’
This statement fatally confuses the functions of the
specification of a patent and the patent claims. It is the
daims which ‘‘measure the invention’’, Smith v. Snow, 294
U.S. 1, 11 (1935). It is the function of the specification of
the patent to describe the invention so that ‘‘any person
skilled in the art . . .”’ can ‘‘make and use the same’’ and
“set forth the best mode contemplated by the inventor of
carrying out his invention’’, 35 U. S. C. § 112.
The Perry patent fully complies with these respective
requirements. Claims 31 and 32 specify propylene glycol as
the humectant and the specification of the patent gives a
complete example of the preferred embodiment, containing
20% propylene glycol. The patent also states that ‘‘the use
of propylene glycol is highly preferred”’ (col. 3, lines 44-45).
In ignoring the requirement of these claims for the use
of propylene glycol because the patent states in the specifi-
cation that humectants can be omitted, the Court has com-
mitted a serious error of law.
20a
Petition for Rehearing
Claims 31 and 32 specify the combination of propylene
glycol and dilute aqueous sodium hydroxide in an aerosol
container with a propellant. No prior art uses or suggests
this combination. This claimed combination permits th
oven cleaner to be used without rubber gloves. Dow re
discovered the ‘‘safening’’ effect of this same
and even filed a patent application on it in 1965 (App. 1187.
93). Dow’s accused oven cleaner copied this feature of
Perry’s invention, together with all of the other elements
of the claimed combination. This combination is patentable
and these claims should be sustained.
B. In section IV, this Court now holds for the first time
that a foreign application filed more than 6 months after
the U. S. application violates 35 U. S. C. §§ 184 and 1%,
merely because the foreign application contained broader
claims than the U. S. application. There is no precedent
for such a holding and it ignores the intent of the statutes
as explained in Blake v. Bassick Company, 245 F. Supp.
635 (N. D. Til 1965).
Petition for Rehearing
The Court’s decision in this case, if not modified, will
overrule its prior decision in Scott Paper Company v. Fort
Howard Paper Company, 432 F. 2d 1198, 1204 (7 Cir. 1970),
which required proof of each element of an alleged fraud
to be by ‘‘clear, unequivocal and convincing evidence.’’ It
will also hold liable for attorneys’ fees and possible anti-
trust treble-damage claims a patent owner who had no
knowledge of any alleged fraud.
The Court should grant the requested rehearing.
Respectfully submitted,
Frrou, Even, Tasrw & Luepexa
135 South La Salle Street
Telephone : FR 2-7842
Attorneys for Plaintiff s-
Appellants
Of Counsel :
W. Pani Cuvurcen.
Ronan F. Bau
Fiso & Neave
277 Park Avenue
New York, New York 10017
22a
Decision on Petition for Rehearing
UNITED STATES COURT OF APPEALS
For tae Sevents Crecurr
Chicago, Illinois 60604
Nos. 71-1061 and 71-1062
Monday, June 5, 1972
Before:
Hon. Lutner M. Swycert, Chief Judge
Hon. Rocer J. Kizey, Circuit Judge
Hon. Tuomas E. Famcump, Circuit Judge
On Petition ror REHEARING
Suetco, Inc. and THe SHetco Company,
Plaintiff s-A ppellants,
vs.
Tur Dow Cuemica, Company and
Harry G. Scutrernouz & Co.,
Defendants-Appellees.
Seco, Inc. and THe SHetco Company,
Plaintiff s-A ppellants,
vs.
Boy.e-Mipway, Inc. and AMERICAN
Home Propucts Corporation,
Defendants-Appellees.
On consideration of the petition for rehearing and sug-
gestion that it be heard en banc filed in the above-entitled
cause on April 26, 1972 by plaintiffs-appellants, no judge in
regular active service having requested a vote thereon, nor
any judge having voted to grant the suggestion, and the
panel having voted to deny a rehearing,
Ir Is Onverep that the petition for a rehearing in the
above entitled cause be and the same is hereby denied.
Findings Adopted by the District Court
Judge Austin’s Letter, September 23, 1970
Rnited States District Court
Hor the Northern
District of Blinois
Chesbes of Chicage GOU04
Richard B. Austin September 23, 197
gdwin M. Luedeka, Esquire
anderson, Luedeka, Fitch, Even & Tabin St i Veo, Leb% as 4
135 South La Salle Street wet Acscomg te -
icago, Illinois 60603 ne oe :
ner loocngy svivy | OP
Merriam, Marshal], Shipiro & Klose Form taney | OP
p
Lv
(FFENRZO TO
Chicago, Illinois 60603
36 West Monroe Street j in
oW
Messrs. D. D. Allegretti and
George P. McAndrews
Bair, Freeman & Molinare
135 South La Salle Street
Chicago, Illinois 60603
IN RE: SHELCO, INC. vs. BOYLE-MIDWAY,
et al., Nos. 67 C 1393, 67 C2130
Gentlemen:
The court has reviewed the evidence, exhibits and briefs
of the parties in the above cause and finds the issues
for the defendants.
The findings of fact and conclusions of law tendered by
the Gefendants accord with those which this cecurt would
have entered é€ thet finding of fact #179 has been
deleted and conclusion of law #18 has been amended to
delete therefrom the words “snould be", and as so changed
said findings and ccnclusions are adopted as the Findings
of Fact and Conciusions of Law of the court.
These Findings and Conclusions have this day been signed
and entered. Counsel are requestéd to bring an appropriate
Judgment Order within 20 days from date hercof.
Sincerely, “*
: ad Sg Se
Lf ee
Richard B. Auatijn
24a
Findings Adopted by the District Court
{Entered September 23, 1970}
Tue Parties, Issues, anp JURISDICTION
1. Plaintiff, Sheleo, Inc., is a Massachusetts Corpora.
tion having its principal place of business at Wellesley
Hills, Massachusetts. Plaintiff, The Sheleo Company, is a
Delaware corporation having its principal place of busi-
ness at Wellesley Hills, Massachusetts. The Shelco Com.
pany is a wholly-owned subsidfary of The Clorox Company,
an Ohio corporation authorized to do business in Illinois,
(PL. Pretrial Brief 7)
2. On December 4, 1969, The Sheleo Company acquired
substantially all of the assets of Shelco, Inc., including the
right, title, and interest in U. S. Patent No. 3,335,092 (the
patent in suit). Shelco, Inc. was the owner of the patent
in suit prior to December 4, 1969. (Pl. Pretrial Brief p. 7)
Sheleo, Inc. was the sole plaintiff until January 14, 1970,
when, on plaintiff’s motion, The Sheleo Company was joined
as a party plaintiff on condition that it be bound by all
proceedings in the case with the same force and effect as
they are applicable to Shelco, Inc. (9-10). The Shelco Com-
pany also agreed in open court to assume any liabilities
of Shelco, Inc. arising from this case (18-19). Hereinafter,
unless otherwise indicated, the plaintiffs will be referred to
as ‘‘Sheleo.’’
3. Shelco, Inc. became the owner of the patent in suit
by way of an assignment from Winfield Brooks Company,
Inc., the assignee of the patentee, Kenneth E. Perry (Pl.
Pretrial Brief 7). There is a continuing relationship be.
tween Shelco, Winfield Brooks, and Mr. Perry, as follows:
Mr. Perry is the President of and owns the controlling
interest in Winfield Brooks, and he is a Director of and,
through Winfield Brooks, owns approximately 35% of
Shelco, Inc. (811, 1082, 1127-29). Winfield Brooks makes
and Shelco sells the oven cleaner (‘‘Jifoam’’) which is the
commercial embodiment of the Example of the patent in
25a
Findings Adopted by the District Court
suit. (1087, 1092, 1302; Stipulated Statement of Uncon-
tested Facts p. 3).
4. Defendant, The Dow Chemical Company, (hereafter
“Dow’’) is a Delaware corporation having a regular and
established place of business in Chicago, Illinois. De-
fendant, Harry G. Schierholz & Co. (hereafter ‘‘Schier-
holz’’), is an Illinois corporation having a regular and es-
tablished place of business in Chicago, Illinois.
5. On August 10, 1967, Sheleo, Inc. filed a complaint
(C. A. No. 67 C 1393) charging Dow and Schierholz with
infringement of U. S. Patent 3,335,092, entitled ‘““Oven
Cleaner and Method of Using the Same.’’ Dow is the mannv-
facturer of an oven cleaner (‘‘ Dow All New Oven Cleaner’’)
charged to infringe this patent and Schierholz is Dow’s dis-
tributor for this oven cleaner in the Chicago area.
6. On December 21, 1967, Shelco, Inc. filed a complaint
(C. A. No. 67 C 2190) charging defendants Boyle-Midway,
Inc. (hereafter ‘‘Boyle-Midway’’) and American Home
Products Corporation (hereafter ‘‘AHP’’) with infring-
ment of the same patent by manufacture and sale of Boyle-
Midway’s ‘‘ Easy-Off’’ oven cleaner.
-
7. All defendants have filed counterclaims seeking a
declaration of invalidity of the patent and attorneys’ fees
and Dow has further counterclaimed for treble damages
under the antitrust laws.
8. This Court has jurisdiction of the parties and subject
matter. Venue in this District is proper.
9. By order of October 1, 1969, C. A. Nos. 67 C 1393 and
67 C 2190 were consolidated for trial on the sole issue of
validity of the patent in suit.
Tue Patent in Suit
10. On December 4, 1963, Kenneth E. Perry filed his
original application for the patent in suit (DX 74). A first
26a
Findings Adopted by the District Court
revised application was filed July 6, 1964 (DX 75) anda
second revised application was filed on August 26, 1965
(DX 76). The August 26, 1965 application matured ints
U.S. Patent 3,335,092 on August 8, 1967 (DX 77).
11. The patent relates to a composition for cleani
ovens, grills and similar surfaces and to a method for apply.
ing the composition. Dow and Schierholz are charged with
infringement of composition and method claims, specifically
Claims 1-6, 14, 16-19, 26, and 28-32. American Home Prod.
ucts and Boyle-Midway are charged with infringement of
the same claims with the exception of 31 and 32. (Stipa.
lated Statement of Uncontested Facts, p. 3; PL Pretrial
Brief, p. 10).
12. The sole composition example of the patent in suit
reads :
‘* EXAMPLE
Proportion,
Ingredient : per cent
NaOH (in the form of a 50% solu-
tion or 50° Baume) ............ 13.0
Ammonium salt of the sulfate ester
of an alkylphenoxy polyoxy eth-
ylene ethanol, sold under the
trade name Alipal CO-436 by
Antara Chem. Co. (surfactant) 1.0
Sulfonate surfactant sold under the
trade name Benax 2Al by Dow
0 Eo reer er egree 0.1
Promyprene @tyeel .. 2. be ewes. 20.0
Purcery: SONG. ................ 1.4
Tetrahydrofurfuryl alcohol ...... 0.7
Water (including water of NaOH
SE a Selo de ses ks do cow Ses 73.8
' Exclusive of water in solution.’’
27a
Findings Adopted by the District Court
Mr. Perry, the inventor, summarized his invention as
being:
‘‘the development of the best oven cleaner on the
market that could be—that was basically a safe
aqueous caustic oven cleaner applied to a hot oven
through an aerosol can, gaining the benefits both of
the ingredients and the application through an aero-
sol can,...’’ (1249)
13. The composition claims, broadly, call for a liquid
oven cleaner for application as a spray to a hot oven, con-
‘sisting essentially of water in an amount of over 50% by
weight of the composition, and an alkali metal hydroxide in
an amount of from 1-10% of the composition packaged in
an aerosol container with a propellant (e.g. Claim 16). Both
sodium hydroxide and potassium hydroxide are classified
as alkali metal hydroxides (51, 1254-55).
14. Certain narrower claims specify that the alkali
metal hydroxide be sodium hydroxide in an amount of 3%
and further call for the presence of any amount of a humec-
tant and any amount of a surfactant (e.g. Claim 28).
15. A humectant, in the context of this patent, is a sub-
stance used to retard evaporation of the composition. (DX
77, Col. 3, lines 41-44 ; 59 ; 3358 ; 3385-86). No specific amount
of humectant is specified by any of the claims. The specifi-
cation says the amount of humectant may be as little as 1%
or may be omitted altogether. (DX 77, Col. 3, lines 53-56,
70-73). The humectant can be either a glycerol (a polyhy-
dric alcohol known commercially as glycerine), a glycol (an
alcohol having two hydroxyl groups), or any alcohol having
more than two hydroxyl groups. (DX 77, Col. 3, lines 41-
44; 60-65 ; 1623-24; DX 624; 3351-55).
16. The term ‘‘surfactant’’ is a shorthand term for a
surface active agent (39). In the context of this patent, a
28a
Findings Adopted by the District Court
surfactant is a wetting agent (40; 2373). The surfactant
can be one (or more) selected from the groups classified
as anionic (carrying a negative charge in solution), cationic
(carrying a positive charge in solution), or nonionic (carry.
ing a neutral charge in solution) (65-66; DX 77, Col. 3, lines
62-70). No specific amount of surfactant is called for ip
any of the claims, nor in the specification. (DX 77, Col. 4,
lines 3-6).
17. The method claimed by the patent is to spray the
composition on a hot oven, leave the composition on the
hot oven for an interval of time, and then remove the com.
position (e.g. Claim 1). Some claims state that the oven
should be at a temperature of at least 140°F. (e.g. Claim 6).
18. While both the composition and method claims refer
to the composition as being sprayed from an ‘‘aerogol
container’? by a ‘‘propellant,’’ the patent specification
states that the ““same results were achieved by spraying
the cleaner . . “on a hot oven with a conventional pressure
atomizer’’ ( Dx 77, Col. 3, lines 38-40).
19. In the patent in suit, the reduced caustic (3%) is
said to have the advantage of making the cleaner safer, less
corrosive, and easier to store (Col. 1, lines 48-52; Col. 2
lines 3-5). The spray is said to make the cleaner less messy
to apply and easy to remove (Col. 1, lines 44-48; Col. 2,
lines 14-17). The application to a hot oven is said to be
more convenient in that the oven may be cleaned without
waiting for it to cool (Col. 2, lines 63-67), and the elevated
temperature speeds the reaction to the point where the
cleaning can be done in 5 to 20 minutes, a fractior of the
time required by paste cleaners (Col. 2, lines 50-56; 18-26).
It is to be noted that while the patentee says thaf heat is
essential to his invention (1318; 1325-26) Shelco maintains,
under oath, that the composition is covered by the patent
claims whether used on a hot or cold surface (PI.’s Ans. to
Interrog. 79.10, 805).
_ 29a
Findings Adopted by the District Court
: 20. In written arguments and sworn affidavits submitted
| to the Patent Office during the pendency of Perry’s third
. application, Perry made the following statements:
‘‘This demonstrates the deep-seated opinion of those
| skilled in this art prior to applicant’s invention that
| (1) caustic oven cleaners should, under no circum-
) stances, be applied to a hot oven and (2) the aerosol
packaging of aqueous solutions of sodium hydroxide
3 for oven cleaning was too hazardous to be acceptable,
| two misconceptions which applicant proved to be
untrue.’’ (DX_76, p. 89)
‘‘However, recently, after JIFOAM [Perry’s oven
cleaner] disproved the prevailing belief of those
skilled in the art that (1) aerosol packaging of aque-
ous solutions of sodium hydroxide is too hazardous
and (2) applying a caustic solution to a hot oven is
too hazardous, . . . ’’ (emphasis added) (DX 76,
p. 91)
: ‘Thus, after applicant had disproved the prevailing
beliefs that aerosol packaging of aqueous solutions
of sodium hydroxide for oven cleaners was too haz-
ardous to be practical and that application of alkaline
oven cleaners to a hot oven was also too hazardous,
...’’ (DX 76, p. 94)
sary to overcome the prejudices of those skilled in
this art, as evidenced by the Consumer Reports,
against aerosol packaging of aqueous sodium hydrox-
ide oven cleaners and against application of alkaline
oven cleaners to a hot cven.’’ (DX 76, p. 96)
]
}
| ‘In achieving this commercial success, it was neces-
]
}
“So far as I know, I am the first to have thought of
aerosol packaging a sodium hydroxide-water or so-
dium hydroxide-water-glycol oven cleaner and am the
30a
Findings Adopted by the District Court
first to have thought of applying such aerosol ove,
cleaner to a hot oven at a time when others in this
field were of the opinion that it would be dangerong
and unsatisfactory to do either.’’ (DX 76, p. 94)
21. Although Perry’s testimony, continuing his ap.
proach before the Patent Office, contends for a very broad
scope of invention, the advance over the prior art now
asserted by Shelco is that Mr. Perry was the first to teach
that an aqueous solution oven cleaner with reduced caustic
(less than 10% free alkali metal hydroxide) and a large
percentage (20%) of propylene glycol could be stored in
aerosol metal cans and sprayed on a hot oven to produce a
foam which would achieve quick, effective, and safe cleaning,
(21-32; Pi. Pretrial Brief 3-5, 16-24). This is considerably
narrower than the position urged on the Patent Office and
the patent’s broad assertion that the advance was over
prior art oven cleaners which were applied as thick, messy
pastes having a high (10%) free alkali metal hydroxide
content and which were all applied to cold ovens (Col. 1,
lines 20-43; Col. 2, lines 3-17). It is also considerably nar-
rower than the claim language which, for example, does not
speak of metal aerosol cans, nor foam, nor any proportion
of humectant or propylene glycol, nor, in many cases, even
a reduced caustic.
22. Without a surfactant, an aqueous caustic in an
aerosol container with a propellant will not foam or adhere
to a hot oven wall. (Lover 2165-2166). Most of the claims
of the Perry patent do not call for the use of a surfactant
(the foaming agent). (Claims 1, 3, 4, 7, 8, 9, 11, 12, 13, 14
16, 17, 18, 20, 21, 22, 24, 25, 26, 29, and 30). Mr. Perry, the
inventor, echoing his Patent Office arguments, testified:
‘*@. Then a 3 percent aqueous caustic, with an
acrosol can, applied to a hot oven is within your
invention?
3la
Findings Adopted by the District Court
‘‘A. In the broad claims, it would be so, sir.’’
(Perry 1341).
Hence the term ‘‘spraying’’ found in the method claims is
not limited to the spraying of a foam but was intended to
‘cover any form of spray. That this was the intention of
the inventor is shown by the statement in the patent that
“The same results were achieved by spraying the cleaner
of the example on a hot oven with a conventional pressure
atomizer.’’ (Col. 3, lines 38-40). There are frequent refer-
ences in the patent to ‘‘spray or foam’? (e.g., Col. 5, line
59) which only confirm the broad intended meaning of the
term ‘‘spraying’’ found in the method claims.
23. From the above findings, it is apparent that in its
examination of the prior art the court must look primarily
for art teaching the use of freely flowing aqueous solutions
of free alkali metal hydroxides in amounts not more than
10% by weight that were suitable for spraying on a hot
oven. In view of Finding 21 and 22, the vehicle by which
the spray is dispensed is not critical; nor is the form of the
spray (that is, whether it foams). With respect to the
narrow claims, the Court, in addition, must look for the
presence of a surfactant and a humectant, though the
amount of either is immaterial. With respect to the humec-
tant, the Court must further look for the use of glycols,
glycerols or other polyhydric alcohols as the humectant
and, with respect to two claims (31, 32) it must look for
the use of propylene glycol as the specific humectant, though
in no particular percentage. In view of the absence of any
teaching in the patent that a high percentage (such as 20%)
of propylene glycol functions as a particular safening agent,
or that propylene glycol serves this function better than
any other humectant specified in the patent, the prior art,
contrary to Shelco’s contention, need not be examined for
this teaching. The prosecution history of the Perry patent
also casts light on the scope of inquiry into the prior art
necessary for resolving the issues herein.
32a
Findings Adopted by the District Court
Perry’s Onrerxat Appiication; His Two Revissp
Appiiacations; anp His Canadian anp
Great Brrrarn AppLicatTions
z4. While the scope of the prior art to be looked for has
been defined by Finding 23, the Court must also determing
the effective filing date for the claims in issue; that is, the
cut-off date for ‘‘prior’’ art. The prosecution history of
the Perry patent casts light on this factor.
25. On June 4, 1963, Perry made a disclosure of his
oven cleaner formula to his patent attorney. (DX 63) The
disclosure stated: 4
‘*For the oven cleaner, the ratio of tetrahydrofar.
_furyl alcohol and furfuryl alcohol is essential. It can
be varied somewhat but neither can be eliminated or
replaced with like alcohols.’’ (Emphasis added).
26. On December 4, 1963 Perry’s patent attorney filed
Perry’s first application for patent (DX 74, p. 1-15), serial
328,114. The first seven claims of the ten claims of the
original application, as filed (DX 74, p. 13, 14) were limited
to an oven cleaner composition which included a catalyst
designated as furfuryl alcohol and tetrahydrofurfury] aleo-
hol. The remaining three claims were limited to a method
of using the oven cleaner composition having the catalyst
defined in the first seven claims. In other words, each
claim of Perry’s original application contained the limita-
tion to furfuryl alcohol and tetrahydrofurfuryl alcohol.
The claims were appropriately and necessarily drawn in
this limited way in view of Perry’s communication to his
attorney disclosing his invention.
27. Perry’s disclosure further specified his invention
and taught the necessity of the furfuryl alcohols in his
oven cleaner:
‘*The present invention is based on the surprising
discovery that a mixture of furfuryl alcohol and
33a
Findings Adopted by the District Court
tetrahydrofurfuryl alcohol catalyzes and enhances
the cleaning action of the sodiwm hydrozide, espe-
cially at elevated temperatures, to such a great extent
that the amount required can be reduced to less than
14 and such reduced amount has a markedly greater
and faster cleaning power.’’ (DX 74, p. 3, lines 21-
27) (emphasis added)
28. On April 20, 1964, more than one year after the
sale to Vaughn Electric, Kenneth E. Perry filed an amend-
ment to his original application, Serial No. 328,114 adding
a new Claim 11 which was not restricted to an oven cleaner
composition containing the catalyst. (DX 74, p. 16) Claim
11 reads:
‘| . , Amethod of cleaning ovens comprising spray-
ing on the oven while it is hot, a composition in the
form of a foam and containing as an essential ingre-
dient, an alkali metal hydroxide, leaving said com-
position on the hot oven for an interval of time and
wiping the composition off said oven.’’ (DX 74, p. 16)
This claim was rejected by the Patent Office on April 2,
1965 ‘‘as failing to point out the invention in the methods
claimed, since the necessary furfuryl-tetrahydrofurfuryl
alcoholic mixture has not been set forth’’. (DX 74, p. 19,
paragraph 7). (Emphasis added) Perry abandoned this
original application without response. (DX 74, p. 21).
28a. Perry filed a first revised application (DX 75) on
July 6, 1964 in order to get the broadened disclosure of new
Claim 11 under oath. (DX 75, p. 15). The Patent Office, in
the first revised application, believed that claim 11 was still
faulty :
‘sa
7. Claims 11-13 are rejected as indefinite and as
failing to point out the alleged invention since the
34a
Findings Adopted by the District Court
necessary hydrofurfuryl-tetrahydrofurfuryl aleo.
holic mixture has not been set forth.’’ (DX 75, p. 19,
March 2, 1965).
In response to this rejection, Perry directly misrepresented
a critical fact:
‘Original claim 11 has been incorporated into the
specification. Such original claim was a part of the
original disclosure.’’ (DX 75, p. 33)
29. In subsequent arguments in Perry’s first and second
revised applications before the United States Patent Office
and in companion cases before the Canadian and Great
Britain Patent Offices, Mr. Perry argued that the “‘broad
concept’’ of his invention—not limited to the use of the
catalyst—was first disclosed on the date be filed Claim 11,
April 20, 1964, which was more than one year after the sale
of his oven cleaner. For example, on August 23, 1966 the
Canadian Patent Office rejected all claims in the corre.
sponding Canadian application (originally identical to the
U. S. application, as amended by the addition of Claim 11),
which were not limited to the use of the furfuryl-tetrahy-
drofurfury! alcohol catalyst:
‘* According to the disclosure page 3, lines 21 to 27,
the invention of the present application is based on
the use of a mixture of furfuryl and tetrahydrofur-
furyl alcohols, which catalyzes and enhances the
cleaning action of the sodium hydroxide at elevated
temperatures. (Emphasis added)
Therefore claims 1, 12, and 13 are rejected as not
being supported by the disclosure and must be can-
celled.’’ (DX 608, p. 417)
30. Perry argued that the disclosure of claim 11 (which
was filed with the original Canadian Application but was
not included in the U.S. application until the amendment
of April 20, 1964—more than one year after a sale of
Perry’s invention) provided disclosural support for the
non-catalyst claims:
35a
Findings Adopted by the District Court
“This broad concept of applicant’s invention is
clearly set forth in claim 11 as originally filed with
the application, with no reference being made therein
to the presence of a catalyst in the cleaning composi-
tion. This broad concept of the invention and ap-
plicant’s intent to claim the matter broadly is all the
more clearly realized upon reference to originally
filed claim 12, [not in original U. S. application, until
amendment of April 20, 1964], which is dependent
upon claim 11 but further recites the presence of the
catalyst in the broad cleaning composition of claim
11. This is a crystal clear teaching that the invention
is not limited to the presence of the catalyst. It is
also clearly stated on page 11 of the original dis-
closure that the invention is not limited to the des-
cription of the specification but only to the composi-
tions and methods claimed in the claims, among
which is clatm 11. Thus, when the original disclosure
is viewed as a whole, which it must be, it discloses
that the invention in its broadest aspect does not re-
quire a catalyst and that use of such catalyst is a
narrower aspect of the invention as is the use of the
humectant.’’ (DX 608, pp. 412, 413) (Material in
brackets added) (Emphasis added)
‘Thus the catalyst merely enhances and improves
the overall broad inventive concept. In order to
distinguish between the broad aspect (as per original
claim 11) and the narrower aspect (the use of catalyst
and/or humectant) of the inventive concept this par-
agraph [of the Canadian disclosure] has been
amended to refer to such narrower aspect as a part
of the invention.’’ (Emphasis added) (DX 608, pp.
413, 414) (Material in brackets added)
31. The earliest effective filing date to which Perry is
entitled for the broad non-furfuryl alcohol limited claims
(all of the claims here in issue) is not December 4, 1963, the
36a
Findings Adopted by the District Court
date of his first application, but April 20, 1964, the date on
which claim 11 was added to the first application.
1On June 25, 1969, this Court denied a Motion For §
Judgment under 35 U. S. C. §102 (b) based on the sale of 1200 eans
of Perry’s oven cleaner to Vaughn Electric Company (DX 58; 821;
DX 82) more than one year prior to the April 20, 1964 date. This
Court was of the view, at that time, that Perry wasentitled to the
December 4, 1963 date for all claims in his patent. Evidence sub.
sequently received during the trial of this case shows that the April
20, 1964 date is the correct one.
The Plaintiff, in response to the Motion For Summary Judg.
ment filed by AHP and Boyle-Midway, quoted the sworn testimony
of Mr. Perry taken during his pretrial deposition :
‘*Q. Did you understand at the time you signed this oath
[accompanying the original Perry application filed Decem-
ber 4, 1963] that you had to have a furfuryl alcohol in your
material for your invention?
‘*A. I don’t believe I understood it had to be that. It
was preferred.’’ (Pl’s. brief, p. 12.)
On Motion For Summary Judgment, Mr. Perry’s sworn testi-
mony was entitled to full credit as that of one skilled in the art.
As of the time of the Motion For Summary Judgment, Mr. Perry
had denied under oath that he had made a written disclosure of his
invention to his patent attorney. (1320-1322) Subsequently, under
Order of Court, Plaintiff produced Mr. Perry’s invention disclosure
to his attorney, which reads:
‘*For the oven cleaner, the ratio of tetrahydrofurfuryl al-
cohol and furfuryi alcoho] is essential. It can be varied
somewhat but neither can be eliminated or replaced with
like aleohols.’’ (DX 63, 525).
Mr. Perry’s admissions in the Canadian and Great Britain ap-
plications as to the significance of claim 11 are also highly revealing
and consistent with his disclosure to his patent attorney. In Dever
Corporation v. Houdaille Industries, Inc., 382 F. 2d 17 (7th Cir.
1967), the Court stated:
‘*The fact that he made an admission to the Canadian Patent
Office as to the date of his patent disclosure contrary to that
which he previously made to this Court, in which he now per-
sists, relates to his credibility and presents a matter for con-
sideration by the trier of the facts."’ (At p. 20)
Finding 30 is consistent with the Seventh Circuit's recent de
cision in General Foods Corporation v. Perk Foods Co., 419 F. 2d
944 (7th Cir. 1969) ; 164 U. S. P. Q. 1. The matter is further dis
cussed under the heading ‘*‘ Fraud’’.
37a
Findings Adopted by the District Court
Prior Art Patents
32. The patent in suit relates broadly to the art of
cleaning compositions and, specifically to compositions for
cleaning cooking residue from ovens. Prior art cleaning
compositions have traditionally utilized an alkali as their
active (cleaning) ingredient. (40-41) Alkalis are basic sub-
stances which are characterized by the predominance of hy-
droxyl ions (OH-) when dissolved in water, as opposed to
acidic substances which are characterized by the predomin-
ance of hydrogen ions (H+). The presence of these ions
can be detected and expressed on a scale known as the pH
scale wherein ‘‘7’’ indicates neutrality; ‘‘7’’ to ‘‘14’’, in-
creasing alkalinity; and ‘‘7’’ to ‘‘0’’, increasing acidity.
(47-48) The most commonly used alkali is sodium hydroxide
(NaOH), but other alkalis, such as potassium hydroxide
(KOH) or sodium metasilicate, (alone or mixed physically
with 40% NaOH and sold as sodium orthosilicate) were also
commonly used as the active ingredient in cleaning formu-
lations, including oven cleaners. (40-41 ; 50-52; 55).
33. The cleaning reaction, generally speaking, is the
reaction of the base alkali (frequently referred to as a
“‘eaustic’’ because of its high pH and consequent corroding
effect on skin, eyes, and metals) with the fatty acids and
other compositions which comprise the baked-on residue.
(DX 72, Tab. 1, Col. 2, lines 9-15) This reaction produces
an alkali metal salt commonly known as soap. (1731, 1746-
1747) This soap-making reaction is described by the term,
“‘saponification.’? (DX 72, Tab. 1, Col. 2, lines 9-15). The
soap does not stick to the oven surface and can be wiped off,
leaving a clean surface. (DX 77, Col. 3, lines 34-36).
34. In addition to the alkali cleaning ingredient, it has
also been common in the prior art to add certain other in-
gredients to oven cleaners,‘such as humectants, surfactants,
ammonia, and others, to enhance, in one way or another, the
alkali cleaning action. (DX 2; 358-60; DX 3; DX 556; PX
32; DX 72).
38a
Findings Adopted by the District Court
35. Perlman patents 3,031,408 and 3,031,409,
issued April 24, 1962 are prior art references which
the aerosol packaging of a reduced caustic oven cleaner
(preferably 2-3% sodium or potassium hydroxide). (Dx
72, Tabs. 6 & 7). This cleaner also contained compatible
surfactants and glycols which functioned as humectants,
(1226-31; DX 77, Col. 2, lines 32-41) The °409 Perlman
patent also taught that the spraying of the cleaner as a foam
can be accomplished by, but is not inherent in, aerogo}
packaging. Of the 32 examples disclosed in the patent, 16
produced a non-foaming spray. (DX 85, pp. 14-16) But
Perlman says, the same ‘‘exceptionally good cleansing ae.
tion’’ may be obtained from the spray as from the foam,
(DX 85, p. 12) A similar result was suggested by the pat-
ent in suit wherein it is said the same results were obtained
from a ‘‘conventional pressure atomizer’’ as from a foam.
producing aerosol package containing a composition having
a surfactant. (DX 77, Col. 3, lines 38-40).
36. The Perlman oven cleaning compositions were not
water-based, but were to be applied to an oven surface which
had been wetted with water prior to the application of the
cleaner (DX 72, Tab. 6, Col. 4, lines 18-21, Tab. 7, Col. 3
lines 54, 71-73). The patents per se do not disclose the use
of the compositions on a hot oven, but Dow’s expert, Dr.
Colburn, testified that they are chemically suitable for ap-
plication to a hot oven, and the file history of the ’409 Perl-
man patent, page 30, states that the ‘‘glycol or glycol ether
is utilized to raise the flash point of the mixture and insure
safe use of the cleansing composition upon heated oven
surfaces’’ (99, DX 85; DX 86).? It is thus apparent that
the Perlman cleaners were suitable for use on a hot oven
2 Mr. Perry’s attorney was aware of the ‘‘heated oven surface”
language in the Perlman file wrapper (DX 86) although there is no
evidence that Perry, or his attorney, called this fact to the attention
of the Patent Office when they were attempting to distinguish over
Perlman.
39a
Findings Adopted by the District Court
and were intended to be so used if the housewife desired.
In fact, the file history of the patent in suit disclosed (DX
75, pp. 34-45) that Mr. Perry applied two of the Perlman
compositions and the commercial embodiment of the Perl-
man patents (an oven cleaner known as ‘‘Hep’’) on a
heated oven surface without difficulty and obtained better
results on a hot surface than a cold surface.
37. Boucher patent 3,079,284 (not considered by the
Patent Office), which issued February 26, 1963, is a prior
art reference which discloses an oven cleaning composition
with more than 50% water and containing sodium hydroxide
in an amount as low as 5%, sprayed on an oven which is
then heated to increase the ‘‘efficiency of the chemical re-
action of the cleaning agent with the soil to be removed,
eg., the saponification of charred fats, or the like.’? The
use of heat is said to permit a lower concentration of sodium
hydroxide thereby making the cleaner less irritating to the
skin. Boucher states that the cleaning reaction produces
‘a soapy residue on the surface in which the remaining
-soil is suspended and which may be easily wiped off to leave
the desired clean surface.’’ Boucher also-discloses the use
of ammonia as commonly used oven cleaner additive (DX
72, Tab. 1).
38. Cleveland patent 1,370,188 (not considered by the
Patent Office) which issued March 1, 1921 is a prior art
reference which discloses a 5% sodium hydroxide aqueous
solution which is to be sprayed hot onto a surface to re-
move paint. The function of the sodium hydroxide is ‘‘to
enter into combination with the oil of the paint and convert
it into soap which dissolves and is washed away, thus caus-
ing the pigment to become loose and in turn be washed
away by the water.’’ Thus, the cleaning reaction known
as saponification is common to both oven cleaning and strip-
ping of oil-based paints (DX 72, Tab. 3).
39. Phillips British patent 825,960 which issued Decem-
ber 23, 1959 discloses an oven cleaner containing an aqueous
40a
Findings Adopted by the District Court
solution of sodium hydroxide in an amount as low ag 5%,
This oven cleaner contained a wax-like substance that ep.
abled the packaging of the cleaner in solid stick form. The
patent also teaches the use of surfactants and the inclusion |
of up to 15% propylene glycol (one of the humectantg of
the patent in suit) (DX 72, Tab. 4).
40. Arden patent 2,992,995 which issued July 18, 1961,
is a prior art reference which discloses an aqueous solution
of sodium hydroxide in an amount as low as 4% for cleap.
ing purposes. This cleaner is to be used at temperatures
over 200°F. in the form of a dip (that is, the cleaner js
heated rather than the object to be cleaned). This reference
also discloses the use of glycerol and glycol as evaporation
retarding humectants (DX 72, Tab. 5).
41. Although not a patent, a publication entitled Hen.
ley’s Formulas, Processes, and Trade Secrets (1948) (Dx
611, Tab. 14), a reference book for the home, carries the
following instructions:
‘*To Crzan a Gas Stove—An easy method of remoy-
ing grease spots consists in immersing the separable
parts for several hours in a warm lye, [sodium hy-
droxide] heated in about 70°C. (158°F.), said lye to
be made of nine parts of caustic soda and 180 parts
of water. [5% sodium hydroxide and 95% water]
These pieces, together with the fixed parts of the
stove, may be well brushed with this lye and after-
wards rinsed in clean, warm water. The grease will
be dissolved, and the stove restored almost to its
original state.’’ (Material in brackets added)
42. The prior art patents and the Henley publication
described above illustrate that it was common practice to
use alkalis such as sodium hydroxide as the cleaning agents
for oven cleaning compositions; that aqueous solutions of
sodium hydroxide in the range of 4 to 5% were common
4la
Findings Adopted by the District Court
in oven cleaners; that the use of heat, either applied to the
cleaning composition or the object to be cleaned was known
to be desirable in speeding the saponification and other
chemical cleaning reactions ; that surfactants are commonly
added to oven cleaning compositions; that humectants are
commonly added to oven cleaning compositions; that
glycerols and glycols, including propylene glycol are com-
mon, interchangeably-used humectants in oven cleaners;
and that oven cleaners packaged in aerosol cans were used
in either foam or spray applications.
Oven CLEANER Prion Art Not APPEARING
IN Patent Orrice Recorps
A. John J. Sullivan’s Activities
43. In the early 1950’s, a young chemist, John J. Sulli-
van of Boston did chemical consulting work for a Connecti-
eut concern, the Wolcott Company (1542). The President
of Wolcott, a Mr. Frank Wolcott, had been the original
United States developer and merchandiser of the paste-
type oven cleaner ‘‘ Easy Off’’ which was later acquired by
Defendant Boyle-Midway. After selling his paste oven
cleaner formulation and business to Boyle-Midway, Mr.
Wolcott developed an aerosol valve stem brush type appli-
ecator which would allow the safe, controlled application of
a detergent foam to an oven surface (1542, 1552). (See DX
533.)
44. Mr. Sullivan’s original formulation work with
water-based caustic oven cleaners parallels in time his
working association, first with Mr. Wolcott’s brush appli-
cator, and subsequently with a sponge-type applicator (DX
339) promoted by Mr. Frank Hoar of Essex Laboratories
and a Mr. Frank Sugrue, President of Shield Chemical
Company until 1958* (1566).
*This is the same Shield Chemical Company that first aerosol
packaged Perry’s patented composition (1530-32).
42a
Findings Adopted by the District Court
45. The first caustic cleaner which Sullivan experi.
mentally packaged in an aerosol container (in 1954) wag
a whitewall tire cleaner containing 15 to 16 per cent by —
weight glycol, 34 per cent potassium hydroxide, 4 or 5 per
cent silicate, 4% per cent surfactant, and the remainder
water (1548, 1585, DX 543). This heavy-duty detergent
product was not put on the market in aerosol form becange
aerosol can and valve technology was not at that time suff.
ciently advanced to make the product attractive from either
a technical or price standpoint (1549).
46. By late 1956 and early 1957, Sullivan’s efforts were
again directed toward aerosol packaging of a heavy duty
detergent system (1551, 1552). After several trial and
error approaches to such a product, Sullivan developed an
aerosol-loaded oven cleaner designated as OC No. 1. The
components of this oven cleaner included 91% per cent free
potassium hydroxide, 2.7 per cent by weight of TWEEN
80 and 2.7 per cent by weight of SPAN 80. Tween and
Span are trademarked ingredients which together fune.
tioned in the oven cleaner as a humectant-surfactant sys-
tem. The remainder of the:material in the aerosol package
was water and the propellants Freon 114 and Freon 12
(1553-1555, DX 556).
47. In January 1957, Sullivan placed OC No. 1 (at that
time designated W-6) in an aerosol can and allowed it to
stand at room temperature for a period of eight months.
This test showed the product to be in excellent .condition
with sufficient pressure still in the can to allow a foam to
dispense from the container (1608, 1609, DX 555).
48. The amount of KOH flake (caustic potash) by
weight in OC No. 1 is listed in Sullivan’s lab books as 113
percent. The evidence shows that commercial grade caustic
potash is from 90 to 92 per cent pure potassium hydroxide
(1618).
43a
Findings Adopted by the District Court
49. Thus, Sullivan added approximately 10.1 per cent
by weight of pure potassium hydroxide to his OC-1 oven
cleaner. The evidence also shows that when the potassium
hydroxide is brought into mixture with the water and the
Span 80 and Tween 80, a saponification reaction occurs be-
tween the Span 80 and Tween 80 and the potassium hy-
droxide. After the reaction, which takes only 15 or 20
minutes, there is theoretically an amount of free potassium
hydroxide in the OC-1 solution of approximately 9.6 per
zent (1618, 1619).
50. This theoretical figure of a percentage of potassium
hydroxide less than 10 per cent was supported by inde-
pendent experiment of Dr. Robert M. Lazo, whose expertise
in the chemical field was thoroughly established (3345, 3346).
Dr. Lazo prepared a 600 gram sample of OC No. 1 which
contained 11.3 per cent commercial grade caustic potash,
2.7 per cent Span 80 and 2.7 per cent Tween 80, with the re-
mainder of the solution being water. By actual measure-
ment, the OC-1 formula was determined to contain free
potassium hydroxide in the amount of 9.83 per cent by
weight (3348).
51. Dr. Lazo described the Span 80—Tween 80 surfac-
tant-humectant system as containing polyhydric alcohols,
which means alcohols containing three or more hydroxyl
groups (3353, 3369). Span 80 is a non-water soluble Sorbitan
Mono-oleate. Tween 80 is a water soluble Sorbitan Poly-
oxyethylene Mono-oleate (3362, 3368).
52. By January 9, 1959, Sullivan had shelf-life tested his
OC No. 1 formula in drawn aerosol cans for two years. He
found no leakers whatsoever in the drawn or two-piece can
(with no side seam) (1656-1658, DX 568).
53. Sullivan’s OC-1 oven cleaner was on sale from 1957
up to and including the time Mr. Perry made his alleged in-
vention. Sullivan loaded the OC-1 formulation in sample
44a
Findings Adopted by the District Court
aerosol cans for Essex for subsequent submission to
tential customers, including Bon Ami and others.
this period of time the product was submitted to customers
with Risdon brand break-up buttons for spray foam appli.
cation as well as with the alternate sponge applicator (1660.
1661, DX 569). The OC-1 formula was suitable for applics.
tion to a heated oven surface and, in fact, was so used by
Dr. Terry at Bon Ami (1816-1817).
54. Essex Research, with whom Sullivan had dealt, dis.
solved after having financial difficulties in late 1959. After
that date, Sullivan dealt directly with customers, including
Bon Ami and others in his effort to sell his aerosol loaded
OC No. 1 oven cleaner (1661, 1662). In Sullivan’s words,
his attempts to sell his oven cleaner were thwarted by can.
tious marketing men in the field who wanted a hand lotion
that would do an oven cleaning job (1577).
55. Sullivan personally offered his OC No. 1 product to
the Fuller Brush Company in 1960, 1961 and 1962 (1575),
Sullivan quoted prices to various prospective customers
and employed salesmen and manufacturers representatives
from 1960 through 1962 in an effort to find a customer will
ing to market his oven cleaner (1576). Sullivan’s oral testi-
mony was well corroborated by contemporaneous documents
kept by him in the regular course of business.
56. Sullivan’s records show a price quotation to Arm-
strong Laboratories prior to Perry’s invention date, for up
to a half million pound shipment of the OC-1 formula for
aerosol loading by Armstrong (1686, 1687, DX 576).
57. Contemporaneous with his work on the development
of OC No. 1, Sullivan also formulated a whitewall tire
cleaner suitable for either aerosol spray foam or mechanical
pump application. The product contained one per cent by
weight caustic soda, two per cent D-66, a surfactant, and five
per cent diethylene glycol, a humectant, with the remainder
45a
Findings Adopted by the District Court
of the formula being water (1650-1651, DX 566). A modifi-
cation of this formula was made which contained one per
cent caustic soda, one per cent D-66 ten per cent diethylene
glycol and the remainder water. A test of this formula
showed that the foam generation and stability of the product
were excellent. Fifteen gallons of this whitewall tire cleaner
were sold to a Mr. Ed Devine of Crystal C and C Co. (1652,
1653, DX 567).
58. The activities of John J. Sullivan constitute the
placing of an aqueous caustic surfactant humectant aerosol
oven cleaner, suitable for application to a heated oven sur-
face, in the form of a spray foam, and an aqueous caustic
surfactant humectant aerosol loaded whitewall tire cleaner,
onsale prior to 1962. This was before Perry’s earliest work
on the invention of his patent and more than one year before
the filing date of his first application on December 4, 1963.
There is no evidence that Sullivan, who testified at the trial.
ever suppressed, abandoned, or concealed his products or
his work in this area. On the contrary, there is evidence of
continuous sales activity on the OC-1 oven cleaner, by and on
behalf of Sullivan, during the 1957-1963 period.
B. The Oven Cleaner of the Beam Chemical Company
59. From 1957 to 1961 or 1962, Mr. M. A. Becker was
President and Mr. Ralph Lemorande was Vice President of
the Beam Chemical Company of Oconto Falls, Wisconsin, a
manufacturer of various cleaning compositions. From 1961
or 1962 to 1965, Mr. Lemorande was President and Mr.
Becker was Chairman of the Board of the Beam Chemical
Company (267-68 ; 522-23).
60. Mr. Lemorande’s work at Beam in the period 1957-
65 included formulating compositions, packaging, shipping,
sales, correspondence, and total involvement in the opera-
tions of the company (264; 571-73). Mr. Becker was in-
volved in the distribution, financing, purchasing, and devel-
opment of the company (584-85).
46a
Findings Adopted by the District Court
61. Beginning in 1957 and continuing to the present, the
Beam Chemical Company has manufactured and sold gg
oven cleaner, first under the name ‘‘Beam Oven and
Cleaner”’, and, by 1958, under the name of Beam “Wipy
Away”’ (322-23; DX 24). The name ‘Wipe Away”’ was not
used by Beam after about March 1962 (324-28; DX 26).
62. ‘‘Beam Oven and Grill Cleaner’’ was sold in giag
bottles in 1957-58 and was applied in the form of a
from a ‘‘Windex”’ type dispenser (298-99; DX 17; 427-29).
63. Beginning at least in 1958 and continuing
out the period that the name was used, Beam “Wipe
Away’’ was sold in plastic ‘‘squeeze’’ bottles having an air
space inside the bottle and a dip tube extending through the
air space into the cleaner. The cleaner was applied by
squeezing the bottle, causing the cleaner to be forced up the
dip tube to one orifice of the nozzle and causing the air in
side the bottle to be forced out another orifice of the nozzle,
thereby mixing with the cleaner and causing it to be pro
pelled from the container in the form of an atomized spray
(DX 24, 25; 327-28; 430; 533-35). The Windex-type dis
penser and the plastic squeeze bottle are each examples of a
conventional pressure atomizer (317-18; 1479-81; 1792-93).
64. The glass bottle oven cleaner sold by Beam hada
glue-on label which contained the following directions for
use :
“1. Hold bottle upright and squeeze to spray
liquid on soiled surfaces. Works faster on warm
surfaces. (Non-inflammable)’’
**2. Wipe clean with damp cloth when soil is
soft, time may be 5 to 20 minutes depending on
amount of soil.’’
**3. Can be used for soaking purposes by adding
3 oz. to each gallon of hot water.’’ (DX 19)
4ia
Findings Adopted by the District Court
65. The plastic squeeze bottles in which Beam ‘‘ Wipe
Away”’ was sold in 1958-59 carried the same directions for
use as set out in Finding 64 (DX 24).
66. Prior to 1962, the Beam Chemical Company also sold
its oven cleaner in gallon containers. The label for such
containers in the period 1959-61 contained the following di-
rections :
““Apply on warm or hot surfaces—wipe clean with
damp cloth’’.
For containers such as deep-fat fryers, the directions stated
that ‘Wipe Away’’ could be used as a dip, in which case
it was to be diluted, put in the container to be cleaned, and
“heat to approximately 200° F.’’ (DX 22; 313-15).
67. The label for the gallon containers also stated, how-
ever, that for use on ovens the cleaner should be applied
as a spray by using a ‘‘polyethylene bottle or pressure
sprayer’’; that is, the purchaser could either use the squeeze
bottle (DX 24) which was packed by Beam in each case of
four gallons or purchase a squeeze bottle or some other type
of pressure sprayer to apply the oven cleaner (DX 22; 435-
36; 722-23).
68. Representative sales of Beam oven cleaner in one
area (Boston) in the period 1959-60 are shown by invoices,
packing slips, and bills of lading forming Defendants’ Ex-
hibits 31 A-C and 32 (344-54).
69. Advertisements for sale of Beam ‘‘ Wipe Away”’ ap-
peared in the November 6, 1958 edition of the Green Bay
Press-Gazette and the February 23, 1958 edition of the Mil-
waukee Journal (DX 21, 21A; 309-12).
70. In 1958 Beam ‘‘ Wipe Awav’’ was demonstrated on
live television by Mr. Lemorande, personally. During these
demonstrations Mr. Lemorande would spray the oven
cleaner on warm surfaces to demonstrate its cleaning ability
and method of application (408-09).
4
48a 4s
Findings Adopted by the District Court
71. A printed publication in the form of a circular date
May, 1961, distributed by Cirelli Foods of Brockton, Mass
chusetts, one of the stores in which Beam ‘‘ Wipe Away”
was sold, contains the following statement concerning Beay
**Wipe Away’’ (DX 29; 335-36) :
‘*Beam Wirt Away cuts burnt-on grease and cook
ing deposits of all kinds! It is very easy to use, just
spray it on——and wipe it off with a damp cloth;
it will leave no residual. Wipe Away may be used
on warm surfaces (in ovens and on grills it is better
to allow units to cool to approximately 200°), and
will clean surfaces instantly without having to wait
for them to cool down completely.’’
Mr. Lemorande testified that this digest accurately set forth
the directions for use of Beam Wipe Away (337-38).
72. Mr. Lemorande was familiar with the composition
of the oven cleaner sold by Beam in the period 1957-65 and
personally did the mixing of the ingredients (351-52). On
April 8, 1960, Mr. Lemorande made a typewritten copy of
the formula then being used for Beam oven cleaner (DX 2;
354-55). The formula is as follows:
Per Gallon of Concentrate
4 oz. Sodium Hydroxide ( Wet.)
\% oz. Sodium Metasilicate ”
4 oz. Trisodium Phosphate =
3 oz. Glycerine (Volume)
2 oz. Triethanolamine o
\% oz. Perma Kleer -
3.5 oz. Triton 102 (BM2) o
1.5 oz. Dowfax >
2 oz. CMC Hercules ( Wet.)
1 oz. Tamol N. -
1.5 oz. QS Triton 15* -
* Triton QS 15 was a handwritten addition to the formula made
sometime after April 8, 1960 (360).
49a
Findings Adopted by the District Court
The ‘‘Per Gallon of Concentrate’’ statement in the formula
means that water is added to the formula shown to make
one gallon of oven cleaner (357). Glycerine is a humectant
and Triton 102 and Dowfax are surfactants (358-60; 78-
79). The amount of glycerine exceeds the 1% referred to by
Perry as being satisfactory (76-77; DX 77, Col. 3, lines
53-56).
73. Expressed in terms of weight percent of the Beam
oven cleaning composition, in the period 1957-65, the water
content was in excess of 50%, and the sodium hydroxide
content did not vary outside the range of between 3.5 to 5
ounces per gallon (362; PX 2; 143-44). The 4 ounces of
sodium hydroxide in the formula set orft in Finding 72,
expressed in weight percent of the composition, is about
28% (72-73).
74. In the period 1957-65, the Beam oven cleaner at all
times contained a humectant and a surfactant (DX 2). The
humectant was usually glycerine but on occasion during
1957-62 it was propylene glycol (361). The surfactants
were of the nonionic (e.g. Triton 102) and anionic (Dow-
fax) type (359-60; 78-79).
75. Prior to 1962, the Beam Chemical Company oven
cleaner was a freely flowing liquid which contained sodium
hydroxide and water in the amounts called for by each
claim of the patent in suit in issue.
76. Prior to 1962, the Beam oven cleaner contained a
humectant and surfactant of the types called for in those
claims of the patent in suit which specify either a surfactant
or a humectant.
77. Prior to 1962, the directions for applying the Beam
oven cleaner were to apply it by spraying on a hot surface
as called for by each method claim of the patent in suit.
78. Prior to 1962, the Beam oven cleaner was dispensed
as a spray propelled by air from a conventional pressure
50a
Findings Adopted by the District Court
atomizer in the form of a plastic squeeze bottle or a plunger.
actuated ‘‘ Windex’’ type bottle (298-300; 435-36). The pat
ent in suit calls for the spraying of the oven cleaner from
an aerosol container by a propellant, and states that th
cleaning results are the same whether the cleaner is sprayed
on a hot oven from a conventional pressure atomizer (whid
uses air as the propellant) or from a conventional metal cap
packaged in known manner and containing a conventional
volatile liquid propellant such as butane.
79. The Beam oven cleaner described in Findings 75-78
was publicly used and demonstrated, sold, and offered for
sale on a large scale more than one year prior to December
4, 1963, the date of first application leading to the issuang
of the patent in suit.
80. Aerosol spray-type metal cans and propellants were
well known in the prior art as appears from the patent
(DX 77, Col. 3, lines 29-31). No particular (much less sor.
prising or unobvious) advantage has been shown to result
from the combination of the oven cleaner and a conventional
aerosol spray-type metal can, nor is any problem in making
this combination shown to have existed or to have been
solved by the disclosure of the patent. There is no limita
tion in the claims which would indicate a problem. Ifa
problem relating to the aerosol packaging of an aqueous
caustic composition is alleged to have existed in the art
and to have been solved by the patentee, it must be disclosed
and the best method of solving it then known to the patentee
must also be disclosed pursuant to 35 U. S. C. 4112. No
such disclosure appears in the patent in suit. Instead, the
patent clearly and unequivocally states that the cleaner (in
addition to being packaged and sprayed from a conventional
pressure atomizer) was ‘‘packaged in a known manner”
in a metal can, using a “‘conventional propellant.’’ (em-
phasis added).
81. The testimony shows that the idea of packaging the
Perry oven cleaner in an aerosol can was not Perry’s but
5la
Findings Adopted by the District Court
was suggested by Vaughn Electric Company, a firm that had
been previously supplied with the Perry oven cleaner in
Beam-type squeeze bottles by Mr. Hannon, Mr. Perry’s
salesman (1088-89; 1158; DX 56). There is no evidence that
either Mr. Perry or the aerosol packer, Shield Chemical
Company anticipated or solved any problem, nor that they
were suprised at the result of the aerosol packaging,nor
that the combination performed other than would be the
natural and expected result of the combination of conven-
tional elements.
82. Plastic squeeze bottles and ‘‘Windex’’ pressure
sprayers as used by Beam, were also well known in the
prior art. Perry packaged his oven cleaner in Beam-type
squeeze bottles as well as metal cans prior to his application
for patent (1046-47; DX 54), and it appears from the
patent (Col. 3, lines 29-40) that he obtained the same results
from either type of spray dispenser. Perry was unable to
name any structure other than the Beam-type sprayer which
could have been the basis for his flat representation in the
patent that the same results were obtained with a conven-
tional pressure atomizer as with an aerosol dispenser (2543-
2547).
83. The selection of means by which to apply the oven
cleaner in the form of a spray is a matter of choice, as is
shown by the patent specification (see Finding 22) and the
claims are broad enough to cover both metal cans and
squeeze bottles. The combination of the oven cleaner and
either a conventional metal can or squeeze bottle does not
constitute invention, nor was the combination an invention
of Perry (even if it were inventive).
C. The Work of Seljan
84. John W. Seljan was a man whose background in-
cluded actual experience cleaning grills and ovens. His
first experience with cheniical formulating came when he
was employed by the Cee-Bee Chemical Company in Cali-
52a
Findings Adopted by the District Court
fornia in the 1940’s (836, 838). Among other products, th
Cee-Bee Chemical Company made industrial cleaners fo
metal plating industries and the aircraft industry (84),
85. One such formulation included 5 per cent potassiyn
hydroxide by weight, 1/10 of 1 per cent sodium chroma
employed as a rust inhibitor, and 1% of 1 per cent Tritm |
X-100 employed as a wetting agent (surfactant). The rm
mainder of the solution was water (841-843). This formu,
was used with a steam cleaning spray apparatus with the
formula being sprayed from one nozzle and the steam which
was used to heat and rinse the metal, sprayed from a
adjacent nozzle alternately with the formula (843, DX 516),
The system was used to clean an oily preservative from
the metal (849).
86. Seljan left Cee-Bee Chemical in 1952 and started
his own chemical business called Coast-to-Coast Chemical
Co., located in Gardena, California. From California
Seljan moved his business to Dallas in 1955 and to Green
Bay, Wisconsin in 1957 (854). While in Green Bay, Seljan
became aware of the Beam Chemical Co. and its oven cleaner
product (855, 56). Seljan immediately formulated an oven
and grill cleaner to compete with Beam which he sold in
gallon jugs accompanied by a Windex-type spray bottle
which could be filled from the gallon jug (857, 58; DX 517,
517-A). The formula used for this oven and grill cleaner
was a mixture of 1 Ib. sodium hydroxide in a gallon of water
with approximately 14 per cent Triton X-100, a surfactant,
and 2 per cent ethylene glycol, a water evaporation retard-
ant (858, 859).
87. When Seljan formulated his oven cleaner in Green
Bay, he was aware of the fact that Beam Wipe-Away was
sold for application to warm ovens and grills (863). He
selected a water evaporation retardant (ethylene glycol)
for his formula to prevent its evaporation from the oven
surface (861). His knowledge of the humectant properties
53a
Findings Adopted by the District Court
of ethylene glycol stemmed from his knowledge that it was
commonly used in automobile radiators to prevent evapora-
tion of the hot water (861). Seljan sold his oven cleaner
from July of 1957 through the first part of 1958. In all,
he sold about 400 gallons of the formulation (861, 862).
88. In November of 1958, Seljan returned to California
where he manufactured a product called Dip-Away for oven
cleaning. Seljan mixed his Dip-Away formula in a small
metal drum in his backyard. This formula contained from
15 to 18 per cent potassium hydroxide,® a dye to give color
to the formulation, and ethylene glycol to prevent evapora-
tion of the solution from the surface to be cleaned (864-866).
The ethylene glycol used was between 1 and 3 per cent by
weight of the solution (875). He supplied customers with
directions for use of his oven cleaner which included in-
structions to spray the aqueous caustic solution onto a
heated oven surface. He did this in response to his eus-
tomers’ employees’ experience that spraying was a con-
venient method of appiication (876).
89. During 1959, Seljan personally went to kitchens and
restaurants to demonstrate the use of and sell his product
(875, 876). From August 17 through August 20, 1962,
Seljan demonstrated his product at the National Restaurant
Association Convention in San Francisco attended by some
39,000 people (880, 898; DX 501). During the demonstra-
tion, Seljan used an electric heating element to heat the
encrusted stainless steel pans which were to be cleancd.
The pans were heated to approximately 200°, the Dip-Away
‘The patent sets an upper limit of 10 per cent for the alkali
metal hydroxide. The stated purpose is to avoid stringent labeling
requirements. Mr. Seljan testified that he ‘‘ jacked it up to make it
stronger’’ (928), and improved both the speed and performance
of his product (928). Mr. Seljan seemed to adapt quite readily to
the labeling requirements raising serious questions as to the validit Vv
of the 10 per cent, or any other per cent, limitation as an inventive
feature.
o4a
Findings Adopted by the District Court
was sprayed on the pans and the grease and dirt
served to dissolve in three to five seconds (885, DX
During the demonstration in San Francisco in Augus
1962, approximately 2,000 advertising brochures setting
forth the spray-heated surface method of application werp
distributed to various people there (898, DX 502),
90. Seljan marketed his product Dip-Away (later
changed to Dip-R-Spray) in gallon containers (DX 506, 876,
877). The gallon containers were packaged four one-gallon
containers to a case and each case included a plastic
bottle (877). Prior to the August show in 1962, Seljan had
sold between 1500 and 2000 such cases of Dip-Away, Jp
each of these cases a label instructed the consumer to ag
the product on a warm or hot oven (910). The small cop.
tainer into which the contents could be poured (DX 517)
included a Windex finger action spray member (911).
Seljan was still successfully marketing his product at the
time of his deposition on January 8, 1969 (923).
91. After Seljan had been exposed to the needs of the
industry for an aqueous caustic oven cleaning product and
after he had been exposed to Beam’s answer to these needs
in Wisconsin, he was, within a short time, able to mann-
facture a product with similar components which worked
in a similar fashion. The fact that Mr. Seljan had no formal
education in chemistry but was immediately able to develop
and market a srecessful aqueous caustic, surfactant, humee-
tant, oven cleaher for spray application to & heated oven
surface is strong evidence of lack of invention in the Perry
product.
D. The Bissell Oven Cleaner
92. In November, 1962, Capitol Packaging Co. of Mel-
rose Park, Illinois made and sold to Bissell, Inc. of Grand
Rapids, Michigan, an aqueous caustic oven cleaner which
was packaged in a conventional aerosol spray-type metal
can with a conventional propellant (DX 3, 5, 6, 7, 8).
55a
Findings Adopted by the District Court
93. The formula for the oven cleaner referred to in
Finding 92 was developed at and by Capitol Packaging Co.,
(170-72) and in the time period from the first sale in Novem-
ber, 1962 until 1966 the formula, expressed in weight per-
centage of the composition, was as follows (DX 3; 83-85) :
Sodium orthosilicate
Sole-terge 325
Safrol
94. Sodium orthosilicate is a physical mixture (as op-
posed to a chemical union) of soduim hydroxide (NaOH)
and sodium metasilicate (Na2SiOs) in the respective weight
proportions of 40-60 (55-57; 129-130). This fact is sup-
ported by testimony, calculations and tests performed by
Dow’s chemical expert, Dr. Colburn, and by a recognized
chemical text, The Condensed Chemical Dictionary (Sixth
Edition) (130-31; DX 93). Based on both his formula cal-
culations and his analysis of an aqueous solution of the
product, Colburn testified that a 7% aqueous solution of
sodium orthosilicate contains 2.8% free sodium hydroxide
(58-59).
95. Dr. Colburn further testified that both TS-2S and
Solterge 325 are surfactants, the latter also containing about
one-quarter free diethanolamine which is a humectant con-
taining two hydroxyl groups and therefore a glycol (84; DX
91; 2497-98 ; 3356-57). Safrol is a perfume (84).
96. The formulation of the oven cleaner sold to Bissell
by Capitol Packaging Co., in November, 1962, thus con-
tained over 50% water, 2.8% free sodium hydroxide, a sur-
factant, and a humectant. -
97. The oven cleaner sold to Bissell by Capitol Packag-
ing Co., in November 1962 was packaged in a conventional
56a
Findings Adopted by the District Court
aerosol spray-type metal can containing, as propellants, 64
Freon 12 and 6% methylene chloride (DX 3). Freon 12 and
methylene chloride are and were, in 1962, conventional pr.
pellants. Mr. Perry told the Patent Office that ‘‘the inyep.
tion does not lie in any particular kind of propellant as long
as it propels;...’? (DX 75, p. 31):
98. Contrary to Shelco’s contention that Perry was the
first to overcome the alleged fear in the art that an aqueoys
sodium hydroxide solution could not be stored in a metal aer.
osol can without leakage, it appears from the testimony of
Mr. Burkholder, Bissell’s director of quality control from
1962 to the present, and Mr. Weiner, President of Capitol
Packaging from 1955 to 1966, that no problem of can}
was experienced by either Bissell or Capitol Packaging (246;
3288-89). This testimony is supported by the fact that a
product manufactured according to the formula set out in
Finding 93 was marketed by Bissell in a conventional metal
aerosol can continuously from its introduction in November,
1962 until sometime in 1966, when the formula was modified
(3287-88 ; 3297). It is also supported by Mr. Weiner’s testi-
mony that prior to November 1962, the formulation set ont
in Finding 93 was packaged in a conventional metal aerosol
can and tested for shelf-life for a period of from nine
months to one year without evidence of leakage problems
(227). In addition, Mr. Burkholder identified DX 106 asa
can of Bissell oven cleaner made in 1963 (3290-91). This
ean showed no signs of leakage.
99. Bissell did experience some occasional minor in-
stances of can leakage, but similar can leakage was experi-
enced by Shelco as well (246; 1110-11). There is no testi-
mony that such leakage was due to anything other than
inadequacy in the can’s side-seam soldering or other can
construction defects (1110-11; 3179-80).
100. As demonstrated in Court by Dow, the Bissell oven
cleaner of DX 106, which was made in 1963, but contained
57a
Findings Adopted by the District Court
the same formula and propellants as used in November,
1962, was sprayed from the can and was deposited on a
metal surface in the form of a stable foam (3292). The
Court has evaluated the later spraying from the same con-
tainer by Shelco, again in the form of a stable foam, and
Perry’s characterization of the spraying as ‘‘a classic ex-
ample of a plugged valve,’’ and finds such an attempted
criticism of a seven-year old product to be inconsequential
(3392).
101. Dow also conducted a demonstration in Court of
the foam characteristics of Shelco’s oven cleaner. This
cleaner also sprayed from the can and was deposited on the
metal surface in the form of a foam, but after a short period
of time the foam had slid down the test panel onto the floor
(2174-75).
102. The Bissell directions for use contained on DX 10/3
do call for the oven to be cool and the pilot light to be off.
Nevertheless, Dr. Colburn testified that the Bissell aerosol-
packaged oven cleaner, as sold by Capitol Packaging Co. in
November, 1962, contained nothing, from a chemical stand-
point, which would interfere with its use on an oven heated
to ‘say, 180 degrees Fahrenheit’’ (89; 123). Dr. Colburn
freely admitted that the chemicals methylene chloride and
freon decompose to some degree when exposed to a flame,
and that one of the many decomposition products ‘*may or
may not be a poisonous gas called phosgene’? ( 123-24). He
testified that if this gas were produced, it is in very small
amounts (124). There is no testimony that the Bissell
oven cleaner would produce any poisonous gas if exposed
toa flame. To the contrary, Dr. Colburn testified that he
personally had tested oven cleaners containing propellants
such as methylene chloride on hot ovens (for purposes not
related to this litigation or any cf the defendants in this
case) (126). It should also be noted that the propellant
used in Sheleo’s cleaner (butane) is highly flammable by
58a
Sovast
PORS
ie)
Findings Adopted by the District Court
itself (2542), but apparently this does not prevent its tse
as the propellant in the oven cleaner composition, = —_
103. The court finds that the Bissell cleaner sold by
Capitol Packaging Co. in November, 1962 was suitable for
use on a hot oven. In addition to the supporting testimony
of Dr. Colburn, this finding is also corroborated by My.
Burkholder’s testimony that he knew of no problem or
complaints arising from the use of methylene chloride or
Freon 12 as the propellants in the Bissell cleaner (3289),
and the fact that Perry himself could not name one speeifie
complaint arising from his extensive use of concentrated
methylene chloride solution (up to 70%) in paint cleaners
and degreasers (2494-97).
104. While Shelco now expresses great concern over
the possible production of small amounts of phosgene, the
patent does not warn against the use of either of these
propellants, and the claims were intentionally drafted broad
enough to cover their use. (See Finding 97.)
105. Sheleo’s position, as stated in answer to Dow's
interrogatories is that the composition claims of the patent
in suit are infringed by the manufacture or sale of an oven
cleaner product which comes within the language of its
composition claims, regardless of whether the product is
actually used on a hot or cold surface (804-05). Thus, the
expression ‘‘for application to a hot oven’’, contained in
all of the composition claims, interpreted most favorably
for Sheleo, can mean no more than that the composition
must not contain any material which would make the cleaner
obviously objectionable for application to a hot oven.
106. The Bissell oven cleaner made and sold by Capitol
Packaging Co., in November, 1962 was an aerosol metal
can-packaged oven cleaner containing over 50% water,
2.8% sodium hydroxide, a surfactant, and a humectant, as
called for by the composition claims of the patent in suit
It was suitable for application to a hot oven.
59a
Findings Adopted by the District Court
107. The manufacture and sale of the Bissell oven
cleaner by Capitol Packaging Co., more than one year
before Shelco’s first filing date constitutes a prior public
use and sale of the invention covered by the composition
daims of the patent in suit.
BE. The Winbro 403 Oven Cleaner
108. In October, 1962, the patentee made and sold a
batch of oven cleaner under the designation ‘‘ Winbro 403”’
(DX 54, 55, 82, 83A, 83B ; 821-22). This cleaner was made
from the formula set out as the Example in the patent,
without the furfuryl alcohols. It contained over 50%
water, 3% sodium hydroxide, a humectant, and a surfactant
as called for by all of the claims. This oven cleaner was
sold in bulk form in a 30 gallon drum (821; DX 83A, 83B).
109. In October, 1962, the patentee also made a 20 gallon
batch of the oven cleaner described in Finding 108 (820).
This 20 gallon batch was packaged in plastic squeeze bottles
of the type used to package the Beam oven cleaner (821).
It was used for test purposes, and, in addition, a bottle of
this oven cleaner was given to Dorothy Hall, a home econo-
mist for Vaughn Electric Co., of Somerville, Massachusetts,
prior to December, 1962 (822; 615-16). This bottle was
given to Mrs. Hall without any restriction as to confidenti-
ality (620-21).
110. The October 1962 bulk sale of 30 gallons of Winbro
403 (the cleaner which is the example of the patent in suit
without the furfuryl alcohols), more than one year before
the filing date of Perry’s first application, constitutes a
“public use or on sale’’ of the composition invention
coverel by the non-catalyst claims of the patent in suit,
within the meaning of 35 U. S. C. §102(b). The package
in which the cleaner was sold is immaterial. The combina-
tion of a known package and the cleaner is a matter of
choice which is not only obvious under 35 U.S. C. § 103, but
60a
Findings Adopted by the District Court
which may be disregarded as an inconsequential differeny
under 35 U.S. C. § 102(b). This is particularly true whey
as here, the idea for the aerosol-packaging of the
cleaner originated not with Perry but with Vaughn Electr,
Company (Finding 81).
111. The 20 gallon batch of Winbro 403 packaged »
Beam-type plastic squeeze bottles, constitutes a ‘‘publie ne
or on sale’’ of the composition covered by the non-catalyst
claims of the patent in suit, for the same reasons set out in
Finding 110.
F. The Work of Boyle-Midway
112. Dr. Myron Lover, the holder of a Ph.D. in Chen
istry (954), was employed by Boyle-Midway in its researd
and development department beginning in 1951 (956). This
was prior to the time when Boyle-Midway acquired th
Easy-Off brand paste oven cleaner from Frank Wolcott.
113. Boyle-Midway’s first serious efforts toward de
veloping an aerosol oven cleaner were largely prompted
when the successful marketing of an aerosol caustic spray
foam product under the trademark HEP began to eat into
the sales of Boyle-Midway’s Easy-Off paste oven cleane
(DX 581). This product was the commercial embodiment
of the Perlman patents (2018). Dr. Lover was assigned
the project to develop and did develop a non-caustic aerosd
formula for consumer panel testing against HEP. In May
of 1962, Dr. Lover’s formula 222-97 was tested against the
HEP aerosol bomb (1986, 1987, DX 583). The results of
the test showed that the Boyle-Midway product lost out to
HEP by a score of almost 2 to 1 on all performance char-
acteristics (DX 582, p. 2, 1962). Boyle-Midway manage
ment, who until that time had been reluctant to markets
spray caustic, then concluded, on the basis of HEP’s market
success, that a spray caustic was a necessary answer to the
challenge of HEP-type oven cleaners.
6la
Findings Adopted by the District Court
114. Dr. Lover, who was responsible for oven cleaner
formulation at Boyle-Midway, received a directive from his
~~ management in the early summer of 1962 to develop a
caustic spray-type oven cleaner to compete with HEP (1963,
1964).
115. Within weeks of the instruction, Dr. Lover, as-
sisted by William Ball, a technician working under his
direct supervision, developed a series of formulas contain-
ing sodium hydroxide, water, and a propellant. In addition,
some contained a humectant (glycerin), and some contained
surfactants (1992, DX 584). This work, recorded on July
23, 1962, represented Dr. Lover’s first effort to obtain an
aqueous caustic spray oven cleaner (1992, 1994, DX 584).
116. Shortly thereafter, a formula (262-5C) developed
by Dr. Lover containing sodium hydroxide, a surfactant
(Deriphat 151), a fatty acid (Dresinate TX), another sur-
factant (QS-30), glycol ether (2LM) and water was tested
by Mike Liccione, an employee of Boyle-Midway, at his
home. Liccione reported that the product was satisfactory
for cleaning his oven (DX 585, 1998).
117. On October 1, 1962, some crystallization in formula
262-5C was observed (DX 589). On October 2, 1962, this
problem was solved by lowering the over-all concentration
of the solids and adding more water proportionally (DX 90;
2007).
118. As a result of this solution, a formula was adopted
which showed no crystallization after two months storage
at room temperature (DX 590). This formula, after being
re-labeled 262-91, was assigned the manufacturing standard
number 6-53 (PX 53, 2119). The formula contained 9.07
per cent by weight of a 50 per cent solution of sodium
hydroxide (roughly 4.5 per cent sodium hydroxide), 2.03
per cent of Deriphat 151 (an amphoteric surfactant manu-
factured by General Mills), 79.99 per cent by weight of de-
mineralized water, 2.43 per cent Triton QS-30 (a phosphate-
62a
Findings Adopted by the District Court
type organic surfactant), 1.62 per cent Dresinate TX 4
fatty acid), and 4.86 per cent Ucar 2LM (a di
glycol monomethyl ether) (PX 53, 2092-2098), the latte
being a humectant having but one (OH) group and hepp
not properly identifiable as either a glycol, a glycerol or,
polyhydric alcohol (2160). The same would be true of at.
propylene glycol monomethyl ether (2160).
119. In response to a request by Dr. Lover (DX
2021), a one thousand can plant batch of the formula wy
run on December 12, 1962 (DX 597, 2025). The 1,000 ex
batch was run in tinplate, seamed containers with
solder, as supplied by Continental Can Company. Pr
cision brand valves and buttons were used (DX 599, 2038),
120. By February 26, 1963, Dr. Lover’s formulatig:
work was considered complete and the product was turned
over to the In-line Product Laboratory and taken out of
Dr. Lover’s hands (2042, 2043, DX 601).
121. On or about March 5, 1963, 200 cans of formuk
6-53 from the plant production run were distributed &
employees and friends of employees of Boyle-Midway, and
of Whitehall Laboratories, in various parts of the country
(2133-2139). They were used in a blind, paired comparison
test with HEP oven cleaner. There is no evidence that th
panel members were under any injunction of secrecy or that
their use or disposition of the oven cleaner was restricted
in any way.
122. The results of the blind, paired. comparison test
(DX 603) showed that the Boyle-Midway formula 6-53 in
the aerosol container was superior to the HEP aerosd
product marketed at that time (DX 603, p. 3). A mm
agement decision to go to full production for national mar-
keting was made. Arrangements were made to have a
outside contract filler produce the Easy Off spray oven
cleaner (2052).
63a
Findings Adopted by the District Court
123. In the Fall of 1963, while arrangements for pro-
daction were going forward with an outside contract filler,
several cans of the original 1,000 can plant batch run in
December of 1962 were found to be leaking (DX 605, 2061).
As a result, production was ordered halted (PX 39, 1925)
for a reexamination of the product. This reflected Boyle-
Midway management’s cautious attitude in marketing
caustic products for use by a housewife. The evidence is
conclusive that Plaintiff experienced similar leaker prob-
lems. The patent in suit neither describes such a problem
nor suggested any solution (1464).
124. Formula 6-53 was developed prior in time to
Perry’s work; it was publicly used in March 1963 without
injunction of secrecy; and it was never abandoned, sup-
pressed or concealed. Its use was discontinued for reasons
not pertinent to the Perry patent, as indicated by a letter
from C. K. Thompson, a vice-president of Boyle-Midway,
to W. K. Eastham, another vice-president, dated January
16, 1964 (DX 606), in which it was suggested that formula
6-53 be marketed in a seamless can. Only the less-preferred
aesthetics of the 2-piece can (certainly not within Perry’s
invention) prevented this (1972-73). lait
125. Dr. Lover did not participate in any further oven
cleaner formulation work at Boyle-Midway. He left the
field of oven cleaner work in January 1964 and had no
contact with the field since that time until this trial. Sub-
sequent work on oven cleaners at Boyle-Midway was done
by individuals not previously experienced in oven cleaner
formulating. Dr. Lover testified in person at the trial and
his testimony was credible. It is not necessary to determine
whether Dr. Lover qualifies under 35 U.S. C. 4 102(¢) asa
prior inventor of the subject matter of the Perry patent.
(No patent application was filed on Dr. Lover’s 6-53 for-
mula.) In any event, he qualifies as a ‘‘person having
ordinary skill in the art’’ (35 U. S. C. § 103) “‘at the time
the invention was made’’, and his work makes it clear that
64a
Findings Adopted by the District Court
aerosol-packaged, alkali metal hydroxide, water,
humectant formulations for cleaning ovens (suitable for
use on heated oven surfaces) were obvious to him at that
time.
OBVIOUSNEsS
126. The use of humectants (including the interchange.
ability of propylene glycol and glycerine) and surfactants
in cleaning compositions was well known, prior to Perry's
invention, as was the use of aqueous solution oven cleaners
having less than 10% sodium hydroxide.
127. It was well known in the prior art that heat would
speed a chemical reaction, including the chemical reaction
between oven soil and an alkali. (See, e.g., Finding 41,
DX 503; 2064; DX 72, Tabs 1, 3, 5.) It was likewise well
known in the prior art that aqueous alkali metal hydrorid
solutions, in the concentration claimed by the patent, could
be sprayed on a hot oven to speed up the cleaning operation,
as shown by Beam and Dip-Away (DX 19; DX 22; DX
503).
128. It was well known in the prior art that an aqueous
alkali metal hydroxide solution, in the concentration claimed
by the patent in suit, could be packaged in and sprayed
in the form of a foam from an aerosol spray-type metal
can, as shown by Capitol Packaging and Bissell, John Sull-
van, and Dr. Lover (Findings 92-107 ; 43-58; 112-125).
129. In view of Findings 127 and 128, the subject matter
claimed by Perry would have been obvious to one skilled i
the art at the time the alleged invention of the patent in
suit was made. The formulations herein set out were sub-
ject to determination by common analytical methods (61-
82; 88; 531-32; 3347-48).
130. Likewise, it would have been an obvious matter of ,
choice at the time the alleged invention of the patent in suit
65a
Findings Adopted by the District Court
was made to have added or substituted a propylene glycol
or glycerine humectant to the oven cleaners of Bissell, Sulli-
van, or Dr. Lover, and it also would have been obvious to
apply the Bissell, Sullivan or Lover oven cleaner, like Beam
and Dip-Away, to a hot oven, adjusting the type of con-
ventional propellant, if such were considered desirable.
131. When this case first came before the Court at a
pretrial conference in chambers, Shelco stressed the unique-
ness of the application to a hot oven. When the Beam and
Dip-Away products were discovered, the importance of a
foam from an aerosol dispenser was stressed. When the
Sullivan, Bissell, and Lover aerosol oven cleaners were put
before the Court, Plaintiff began to talk of specific con-
centrations of ingredients not found or distinguished. in
the claims and of non-claim attributes such as superiority
against side seam leakage. When Sullivan and Bissell
were shown to have no substantial leakage problems, then
Plaintiff stressed commercial success.
132. There is no claim in the patent which calls for
a foam, nor is there any statement in the patent as to the
superiority of a foam as opposed to a spray. In fact, the
patent repeatedly refers to a ‘‘foam or spray’’ and if any
distinction was intended, every one of the claims is specif-
ically limited to a spray and not to a foam. The use of a
foaming aerosol oven cleaner was not new with Perry. The
Perlman patents (HEP) specifically disclose aerosol oven
cleaners which foam (DX 72, Tabs 6,7). The Bissell, Sulli-
van, and Lover products foamed (Finding 128). Mee is
there language in the patent which states that propylene
glycol (in any amount, much less the 20% used in Jifoam)
isa unique safener. The patent merely states that ‘‘prop-
ylene glycol can be replaced by any compatible humec-
tant”’, and that any such humectant, generally, ‘‘inherently
reduces the irritating effect of the caustic on the skin.”’
(DX 77, Col. 3, lines 41-52). At Col. 2, lines 32-43, the
66a
Findings Adopted by the District Court
patent states that the use of humectants ‘‘such as a glycerg
or glycol’’ reduces the irritating effect of sodium hydroxid
(Emphasis supplied).
133. Where differences, if any, between the subject
matter covered by the patent in suit and the prior art exist,
they are inconsequential, and 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.
ComMeErciaL Success
134. In support of the patent, Shelco has relied heavily
on two separate aspects of commercial success of its oven
cleaner, Jifoam, as evidence of invention. The first is
Shelco’s contention that Jifoam was quickly accepted in the
marketplace and grew from nothing to an important factor
in the market in a short period of time (3138). The second
is Shelco’s related contention that because of Jifoam’s
success in the market, Dow and Boyle-Midway were forced
to switch from the oven cleaners they had previously pro-
duced to products which come within Shelco’s patent (2685).
The activities of Dow and Boyle-Midway in this respect are
also said by Shelco to evidence both long-felt need and m-
successful attempts to produce a satisfactory oven cleaner
prior to Jifoam (2644-47).
135. Commercial success is not relevant where, as here,
the Court determines that there was no invention. Never
theless, the Court, for completeness, makes the following
findings with respect to Plaintiffs’ alleged commercial suc-
cess.
136. Before commercial success can be considered as
evidence of unobviousness, the Court must determine that
the alleged commercial success (here, of the product Jifoam)
was attributable to the invention claimed by the patent
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Findings Adopted by the District Court
—
aheaiiate to be used by defendants and not some other
factor.
137. It is undisputed that Jifoam now does contain and
always has contained, a mixture of furfuryl and tetrahydro-
furfury] alcohols (1242-44; DX 523). Perry’s original pat-
ent application set out the invention as being:
‘‘based on the surprising discovery that a mixture
of furfuryl alcohol and tetrahydrofurfuryl alcohol
catalyzes and enhances the cleaning action of the
sodium hydroxide, especially at elevated tempera-
tures, to such a great extent that the amount required
can be reduced to less than 4% and such reduced
amount has a markedly greater and faster cleaning
power.’’ (DX 74, p. 3, lines 21-27).
All of the claims in that original application were limited
to oven cleaners having a mixture of furfuryl alcohols, and
‘the disclosure of invention to Perry’s patent attorney states
that, ‘‘the ratio of tetrahydrofurfury] alcohol is essential.
It can be varied somewhat but netther can be eliminated or
replaced with like alcohols.’? (DX 63, emphasis added).
138. In the patent as issued, Perry changed the furfuryl
alcohol from a necessary component of his composition to
a desirable one but still emphasizes their importance:
‘“‘The present invention is based in one of its aspects
on the surprising discovery that a mixture of furfuryl
alcohol and tetrahydrofurfuryl alcohol catalyzers
(sic) and enhances the cleaning action of the sodium
hydroxide at elevated temperatures.’’ (Col. 2, lines
27-31).
- Fifteen of the claims in the patent in suit are still limited
to the furfuryl alcohols, sometimes described therein as a
catalyst. None of these are asserted against defendants
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Findings Adopted by the District Court
in this case (Claims 7, 8, 9, 10, 11, 12, 13, 15, 20, 21,2
23, 24, 25, and 27). Plaintiff does not allege that any gf
the defendants in this case use any of the furfuryl aleoho}
in the accused oven cleaner compositions.
139. Shelco introduced Jifoam to the market regionally
in New England with a saturation television, radio, an
other media advertising campaign (1120). Over two million
dollars were spent in so advertising Jifoam between 1993
and 1966 (799-800). Brochures distributed to the trade ip
the course of that carmpaign emphasized the importanee of
the new ‘‘catalyst’’ contained in Jifoam. An example js
contained in DX 523, which reads:
‘<< Jifoam’ is a new and radical departure fron
‘conventional oven cleaners. It derives its almost
instant cleaning ability from the incorporation of a
catalyst that when heated in admixture with the base
to above 140°F. saponifies grease and dirt faster
than the strongest caustic mixtures on the market,”
(Emphasis added).
140. Sheleco now says that the emphasis on the catalyst
in the advertising campaign was merely a ‘‘sales gimmick”,
(1123-24) but it is the frequent use of this type of high
budget sales gimmick that makes undisccrning reliance
on commercial success a dubious test of invention or unoby-
ousness. In this ease, the period of time involved corres.
ponded with an upsurge of housewife demand for conven-
ience packaging of household products generally (3182-83).
The market for aerosol oven cleaners was not created by
Plaintiff’s product, although consumer interest may have
been heightened by Plaintiff’s intense advertising campaign.
[Plaintiff admitted that similar advertising campaign]
Plaintiff admitted that similar advertising campaigns by
the defendants of their products cut deeply into Plaintiff's
sales (1154-56).
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Findings Adopted by the District Court
141. In view of the above findings, the Court cannot
fnd that any commercial success that Jifoam may have
enjoyed was attributable to an inventive feature present
in any claim of the patent asserted in this suit, and there-
fore such commercial success is not relevant to this case.
142. Plaintiff admits that Boyle-Midway does not use
propylene glycol (2646), and since Plaintiff also admits
that it cannot even show that Boyle-Midway ever did a com
plete analysis of Jifoam (2645), there is nothing in the
record to support to [sic] charge that Boyle-Midway
‘eopied’’ Plaintiff’s product.
143. It is undoubtedly true that Jifoam’s early success
in the New England market did not go unnoticed by Dow’s
marketing personnel. As Mr. Foster, Dow’s Brand Mana-
ger, testified, Duw was always seeking to improve its
products and to meet or better its competition (3044-45).
It is also true that Dow modified its oven cleaner after
Jifoam was on the market. This modified cleaner does not
contain furfuryl alcohols and, unlike Jifoam, does contain
ammonia (3042-43). It is not a ‘‘copy’’ of Jifoam.
144. The evidence shows, and Shelco admits, that Dow,
in the common practice of monitoring oven cleaner competi-
tion, knew of Jifoam in late 1963 (PX 102) and had ana-
lyzed Jifoam by early 1964 (PX 104; 2645). Jifoam was
one of several oven cleaners being so monitored (see, e.g.
PX 105). Dow’s modified oven cleaner was put on the
market in 1965 (2645). During the period from 1963 to
1965, as before and after, Dow carried out a systematic
research and development program with respect to im-
provement in oven cleaners (see, e.g., DX 102; DX 103; PX
94-96; Dow’s Answer to Interrogatory 57, 3340-41; PX 117,
119).
145. It is axiomatic that once Dow knew of Jifoam, its
subsequent actions cannot be evidence of ‘‘prior attempts
and failures’’ pertinent to the issue of obviousness. It is
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Findings Adopted by the District Court
also the fact that dozens of the Dow oven cleaning form
tions which Shelco says were unsuccessful fall wi
claim language of the patent in suit, a matter which will
discussed under the issue of indefiniteness.
146. The evidence shows that while the large national
brand companies initially demonstrated reluctance to
market a sprayable caustic oven cleaner, the reluctance way
market oriented—not formulation or method oriented, |
was motivated by consumer concern lest the spray might
be inadvertently directed into the user’s eyes rather tha
onto the oven surface (an event which could cause perm.
nent eye damage) (DX 103-05; DX 107-14; DX 578; 1948
49). The market experience of Beam, Dip-Away, Bisgdl
and, most particularly, HEP, demonstrated the acceptability
of marketing a spray caustic oven cleaner,
147. Sheleo makes much of the fact that Dow criticized
Jifoam as being unsafe (PX 103). The fact is that that
criticism was based on a toxicological test run by Dow (Dx
99) which showed that Jifoam did cause permanent eye
damage to the eyes of rabbits and ‘‘is a rather severe eye
irritant’’ as well as being ‘‘corrosive to the skin.” Be
cause of this test and repeated adverse toxicological tests
on Jifoam (3061-62; 3599-3600; DX 100, 109; PX 126) and
other caustic compositions (DX 102-05; PX 97; PX 115),
Dow steadfastly resisted the temptation to market a caustic
spray, despite pressure from its marketing personnel (362-
21). It was not until Dow developed a product that passed
the eye tests of its toxicological laboratory in 1965 that Dow .
permitted the: marketing of its modified caustic oven
cleaner (PX 115; PX 132; DX 113). This modified cleaner
was not a duplication of Jifoam. Jifoam never passed the
toxicological laboratory eye damage tests at Dow (DX 109).
148. In view of the above findings, the evidence of De
fendant’s ‘‘attempts and failures’’ relied upon by Sheleo
are immaterial to the issue of invention of the patent in
Tla
Findings Adopted by the District Court
suit. The attempts were not related to efforts to duplicate
any inventive feature of Jifoam—at best they were to avoid
shortcomings in the well known spray caustic formulations
then used—including those used by Perry.
OVERCLAIMING
149. The claims of the patent in suit call for the use of
“g propellant—sufficient to force said composition [the
oven cleaner] out of said [aerosol] container as a spray.’’
(DX 77; Claims 1, 16). Perry told the Patent Office, ‘‘—the
invention does not lie in any particular kind of propellant
so long as it propels.’’ (DX 75, p. 31).
150. Methylene chloride was at the time Perry filed his
first application (DX 74) and has continued to be, a pro-
pellant used with aerosol containers (88, 121, DX 3). Freons
such as Freon 12 and Freon 114 are also propellants used
with aerosol containers (86-88, DX 3, PX 32). Therefore
an oven cleaner and method for using the same, otherwise
within the scope of the claims in suit, which has as a pro-
pellant methylene chloride, Freon 12 or Freon 114, falls
within the scope of the claims in suit.
151. Perry asserts that the use of the conventional pro-
pellant ingredient, methylene chloride in the Bissell prod-
uct, makes Bissell unsuitable for use on a hot oven (2378-
83). This unsupported testimony is contradicted by Dr.
Colburn (89-90). If, however, Perry’s testimony is ac-
cepted, the claims in suit, all of which include this pro-
pellant, are invalid for overclaiming since they cover in-
operative subject matter.
152. The same can be said of Plaintiff’s criticisms of
Dr. Lover’s 6-53 formula. The modest leaking problems
encountered with the 6-53 formula when using seamed cans
are precisely the type of leaking problems encountered by
Plaintiff. If Plaintiff's argument that the 6-53 formula
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Findings Adopted by the District Court
(with Freon 12 and Freon 114) was inoperative (due to the
leakers), then the claims in suit, all of which read thereon,
are invalid for overclaiming since they cover inoperatiye
subject matter.
153. A number of the claims in suit (DX 77, Claims 2,
5, 19, 28, <7, 32) call for a ‘‘surfactant’’. Perry told the
Patent Office, ‘‘—nor, does the invention lie in any partic.
lar surfactant, so long as it has the surface active proper.
ties inherent in surfactants.’’ (DX 75, p. 31). Perry noy
asserts that the surfactants in the 6-53 formula would not
perform as good foaming agents (2438-2440).
154. This assertion is contradicted by Dr. Lover (2039.
42). If the assertion is accepted, the claims calling fora
‘*suriactant’’ are invalid for overclaiming since they cover
inoperative subject matter.
155. Other claims in suit call for the presence of a
‘*humectant,’’ which can be a glycerol, glycol or any alcohol
having more than two hydroxyl groups (Finding 15). Sull-
van’s OC No. 1 formula containing Span 80 and Tween
are within this meaning and scope of the term ‘‘humectant”
as it appears in the claims in suit (3369). If, as Perry
contends, the formula would not be suitable for use ona
hot oven, the claims which generically call for a ‘‘humee.
tant’’ or ‘‘polyhydric alcohol humectant’’ are invalid for
overclaiming since they cover inoperative subject matter.
156. Sheleco also contends that dozens of Dow oven
cleaner formulations were tried in the lab, but were unsue-
cessful, for one reason or another (Pl. Pre-trial Brief, p.
33-35; DX 101-102; PX 117). However, these Dow oven
cleaner formulations are within the scope of the claims of
the patent in suit. 1f Shelco’s contention with respect to
these formulations is accepted, the claims read on inopera-
tive subject matter and are therefore invalid for over-
claiming.
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Findings Adopted by the District Court
156A. It follows from the foregoing (Findings 149-156)
that t
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