# Petition for Writ of Certiorari — Shelco, Inc. v. Dow Chemical Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1030%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1972 - **Citation:** 409 U.S. 876 ## Text iy = - U e scat 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 Se 5 ong. 0s sie eide a siete vcvevedscegeveesss 2 Questions Presented ........-..++e-seseereeeeees 2 Cait TROUIIEE 6 S65 hos bee es Soca se sk cae sees 2 ee MeN Bid bn Che Ke eeSs cee aon ene 3 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 Pt TY is bans 6 HR RR Deis de nH 0 <0 12 I iowa aiek see ctanehdadaneeenesan 13 IE ikke xtisaectsPihdibks ca cieeas kes neeans la 1. Opinion And Order Of The Court Of Appeals CRE Fie SE bith tdicew de vince ceweescne : la 3. Potithom Wwe Teeaeteey 3... see can cscs lla 3. Decision On Petition For Rehearing (June 5, SE 5 shes dod ee ds RSA be eee Ke Ueda es sais 22a . Findings And Conclusions Of The District “ee ee weer eee eee eee weer eeeeee eee eeeee li 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, UR CII ho bck S bk nb cen s Le edweccbecemeeen 4 STATUTES ers a ED oc Sees ca ky cesecuagseeamenen 2 Be, OE kk sh ok a nes vs 0b4 4 ok 3, 12 MG es OE 55 fb UN a sd ks or ba Cae 2, 3, 7, 12, 13 OO OE ac. oso vik. vd cceee 2, 3,7, 12 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 => oS = & "Re se Tt 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 i i re 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. PSBRRES EMSs BFFs. Se hss t ceeal a se BRESGSeRSEPSESS SE 7 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). i a | o ao rT Nm Pe eS ae OH 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 oP sav PR XS BEB Ew -EBS&2 2S R&S PFPA BAS aS ESEQPT SR SRR SS ll 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). Ta eS oF eo eo ae ST ae TM aaeese FeTrt aes Fs SA & w 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 aoe = aS ™~ ee ol — 3a 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 aI SS NOS” — VT eS I i a a et tl i J y D i / r . t . " 5a 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 _— Ff = = ~~ ee Fr = SV Sr FF EF EU ee i el - 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. arm” e aes ST lUTCUC COrCrOUCrRrlCUhNNrUCUCU OC OCC]! UL C8 ll eR SES TO Se ee ..4 “— aeen se © f& B® * 9a 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1030%3A1. Public record. Not legal advice.