Appendix — Graham v. John Deere Co. of Kansas City
Supreme Court brief1966
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United States Court of Appeals
FOR THE EIGHTH CIRCUIT
No. 17,540.
CIVIL.
CALMAR, INCORPORATED,
Appellant,
Vs.
COOK CHEMICAL COMPANY,
Appellee.
No. 17,541.
CIVIL.
COLGATE-PALMOLIVE COMPANY,
Appellant,
vs.
COOK CHEMICAL COMPANY,
Appellee.
APPEALS FROM THE UNITED STATES District Court
FOR THE WESTERN DISTRICT OF MISSOURI.
INDEX
Volume I
Proceedings in United States District Court in the Case of
Calmar, Incorporated, v. Cook Chemical Co. ~~... a
Complaint
1
Answer and Counterclaim - 3
II INDEX
Answer to Counterclaim _~ EEE LPO ee a
Amended Answer to Counterclaim. 5
Proceedings in United States District Court in the Case of
Colgate-Palmolive Co. v. Cook Chemical Company
Complaint . 9
Answer to Complaint and Count I of Counterclaim __________ 12
Reply of Plaintiff to Counterclaim of Defendant, Section I 14
Order Sustaining Motion to Consolidate Cases 15
Order Admitting into Evidence Plaintiff’s Exhibits ZZ and
AAA __ 16
Memorandum Opinion; Findings of Fact and Conclusions of
Law of District Court 17
Judgment, July 31, 1963 36
om Admitting in Evidence Plaintiff's Exhibits AB, AC and -
Notice of Appeal of Calmar, Inc., and Colgate-Palmolive Co. 39
Docket Entries in District Court in No. 12349-3 _.--. 40
Docket Entries in District Court in No. 13006-3 _____________ 45
Transcript of Evidence 49
Caption 49
Colloquy between Court and Counsel 49
Testimony for Defendant ; 50
Ralph G. Martin ; 50
Defendant Wise Deposition Exhibit 5, Recital As to - 2 ee
Defendant’s Exhibits ___. ae
“ 24, Recital As to 57
42, Recital As to __-.. a 57
30, Recital As to __ ical a
28, Recital As to 58
44 and 46, Recital As to 59
48 and 50, Recital As to 59
Plaintiff's Exhibits A and B, Recital As to 61
Plaintiff's Exhibit C, Recital As to 65
Defendant’s Exhibit 34, Recital As to 65
Plaintiff’s Exhibit D, Recital As to 66
Statement to Court by Mr. Gordon Schmidt —_-...- 70
a ee 71
Defendant’s Exhibit 26, Recital 5 ere oer 74
Defendant’s Exhibits 152, 154, 156, 158, 160, 162, 164,
Recitals As to ‘ 76
Defendant’s Exhibit 166, Memorandum from John F.
Boehm to Robert Wise, August 29, 1958, Excerpt
et 77
-Defendant’s Exhibit 150, Recital Yo Fh” een Raat Ree 2 78
INDEX
Defendant’s Exhibit 198, (Reproduced in Exhibit
Volume)
Clarence T. Fishleigh
Defendant’s Exhibit 10, Patent in Suit, Recital As to
(Reproduced in Volume of Exhibits) -— ....
Defendant’s Exhibit 54, Recital As to ~~...
Defendant’s Exhibit 72, Recital As to ~~...
Defendant’s Exhibit 90, (Reproduced in Exhibit
Volume)
Defendant’s Exhibits 74, 76, 78, 80, 82, 84 and 86,
Recitals As to
Defendant’s Exhibits 88 and 90, Recitals (a
Defendant’s Exhibits 102, 104, 106, 108, 110 and 112,
Recitals As to (Exhibits 110 and 112 in Vol. of
Exhibits)
Defendant’s Exhibits 114, 116 and 118 (Reproduced
in Volume of Exhibits)
Harry G. Austin, dr. -—
Defendant’s Exhibits 31 and 33 (Reproduced in
Exhibit Volume)
Defendant’s Exhibit 35 Seepenteeee in Exhibit
Volume)
Clarence T. Fishleigh, Recalled
Defendant’s Exhibit 120, (Reproduced in Exhibit
Volume)
ie Exhibit F, (Reproduced in Exhibit Vol-
ume
— Exhibit G, (Reproduced in Exhibit Vol-
ume
Plaintiff's Exhibits H and I, Letters Patents, (Repro-
duced in Exhibit Volume) ue
Baxter I. Scoggin
Plaintiff's Exhibits J and K, Recitals As to
Plaintiff’s Exhibits L and M, (Reproduced in Exhibit
Volume) -_..
Plaintiff's Exhibit N, Recital As to
Plaintiff's Exhibit O, Recital As to
Defendant’s Exhibits 136 and 138, Recital As to __.
Testimony for Plaintiff
Colloquy between Court and Counsel
Recitals As to Exhibits, P to Z, and AA to CC
Chester Ti. Former os
Ralph G. Martin, Recalled .
Robert Wise, Recalled ———_____.
Defendant’s Exhibit 82, Recital As to —-—--.......
Plaintiff's Exhibits —..
106
107
109
111
111
124
130
140
143
159
160
161
162
173
173
173
173
175
179
180
182
183
INDEX
DD, (Reproduced in Exhibit Volume) ——..___._. 183
EE, (Reproduced in Exhibit Volume) — 183
FF, (Reproduced in Exhibit Volume) — _ 184
HH-1 to HH-15, (Reproduced in Exhibit Vol-
ume) 186
Joseph McCormack 194
Plaintiff's Exhibit II, (Reproduced in Exhibit Vol-
ume) _ 196
Plaintiff’s Exhibits JJ and KK, (Reproduced in Ex-
hibit Volume) 198
Plaintiff's Exhibit LL, (Reproduced in Volume of
Exhibits) 199
Plaintiff's Exhibits MM, NN and OO, (Reproduced
in Volume of Exhibits) Geode 199
Douglas F. Corsette 200
Plaintiff's Exhibits 201
PP, (Reproduced in Exhibit Volume) — 201
QQ, (Reproduced in Exhibit Volume) —_______. 202
Defendant’s Exhibits __ 224
121, (Reproduced in Exhibit Volume) —...____. 224
122, Recital As to -_... 224
Lawrence C. Kingsland 239
Plaintiff's Exhibit VV, Recital As to _..._-___»____ 244
Plaintiff's Exhibits 262
WW and XX, Recitals As to 262
Offer of Exhibits in Déposition of Mr. Scoggin —_______. 262
26 and 27, Recitals As to ‘ 264
16, Recital As to Pe 264
17 and 18, Recitals As to __ 265
Testimony for Defendant in Rebuttal 271
Baxter I. Scoggin SNS e 271
Defendant’s Exhibits ae —
124, Recital As to - 272
210, (Reproduced in "Exhibit Volume) . oS
Clarence T. Fishleigh - acinar aulabiaisbntins 272
Defendant’s Exhibit 222, Recital As to . aie at 279
Defendant’s Exhibit 224, (Reproduced in Volume of
SR SS SRS SERS SAIS SPAS Lal aS a 282
Deposition of Richard High, Excerpts from ——
Ex. LL) — ree line eoniemnnsar ee
Deposition Exhibits 125 and. 126, Recitals As to. a eee eee 287
Deposition of Anthony J. Ratichek, arn from ween
pi RAR eC ei a . 289
Deposition Exhibits E ie ea Mets” Re eee Ee 291
130 ard 131, Recitals As to —.......-----... . 291
INDEX
132, Recital As to
133, Recital As to
134 and 135, Recitals As to
Deposition of Robert D. Wise, Excerpts from (Defend-
ant’s Ex. 206)
Deposition Exhibit
1, Recital As to
Deposition of E. G. “Pat” O’Reilly, Excerpts from (De-
fendant’s Exhibit 138)
Deposition of James A. McNeill, Excerpts from (Defend-
ant’s Exhibit 134) ae
Deposition of Lee E. McIntyre, Excerpts from (Defend-
ant’s Exhibit 130) ——
Deposition of Andrew M. Martin, Excerpts from (Defend-
ant’s Exhibit 136)
VOLUME OF EXHIBITS
Index to Exhibits
Plaintiff's Exhibits
313
319
328
334
341
C, (Scoggin Deposition Exhibit 67), Defendant’s Circular
to Trade, November, 1959
E, (Scoggin Deposition Exhibit 13), Application for
Scoggin Patent in Suit _.._..__
F, Claim 18 of Scoggin Application ‘Viz-a-Viz Claim 25
(Claim 1 of Patent in Suit) HS
G, Photograph of Large Scale Model of Device of Patent
in Suit, Scoggin Patent No. 2,870,943 —
G-1, Photograph of Model (Exhibit G) with Pump Plunger
Removed
H, Letters Patent No. 2,715,480 to J. G. Livingstone,
August 16, 1955 - Hi
, Letters Patent No. 2, 763, 402 to rt G. “Livingstone,
September 18, 1956
J, Preliminary Sketch of Bakan 2 Sprayer Parts —_.__.
L, (Scoggin Deposition Exhibit No. 40), Memorandum
M
—
from Chester M. Turner to Baxter I. Scoggin et al. __
, (Scoggin Deposition Exhibit No. 37), Preliminary
Sketch of Bakan 2 Sprayer, February 11, 1957 ___.___
P, Drawing of Bakan 1 Sprayer eae
Q, Drawing of Bakan 2 Sprayer
S, Drawing of Bakan 3 Sprayer _-
T, Letters Patent No. 2,119,884 to F. W. Lohse, June 7,
1 : betes eeineocauee MEE ORS a oC a
U, Letters Patent No No. 2, 586, 687 to R. “Mellon, February
19, 1 fe eee
341
. 347
379
381
383
407
410
VI INDEX
V, Letters Patent No. 2,861,839 to R. Mellon, November
25, 1958 _ 414
Y, Letters Patent No. 2,434,875 to F. M. Turnbull et ai.,
January 20, 1948 _._ i
DD, Defendant’s Adverticing—Bakan 2 Sorayer —. 429
EE, Defendant’s Advertising—Bakan 2, Modified Sprayer 431
FF, Defendant’s Advertising (1961) Omitting Reference
to Bakan 2 Sprayer 433
GG, Defendant’s Advertising—Bakan 3 Sprayer —....___. 438
HH 1-13, Photographs of Physical Exhibits Illustrating
Various Packaging Methods 440
Hi, Summary of Sales in 1958 of Colgate’s Insecticide with
Sprayer on Side of Bottle _._.___. PONCE ae |
JJ, Enlarged Drawing of Livingstone Patent No. 2,751,480 455
KX, Enlarged Drawing of Mellon Patent No. 2,586,687 _. 457
MM, Letters Patent No. 2,844,290 to W. J. Slade, July 22,
1958 . 459
NN, Letters Patent No. 2,118,222 to O. G. Nilson, May 24,
nears eA atte Narn aoe 2 ane ean See _ 462
OO, Letters Patent No. 1,447,712 to J. W. Darley, ‘Jr.
March 6, 1923 - Seti 468
PP, Photograph of Large Scale. “Model of “Accused “$s40
TR ENE EE NRE MD 471
PP-a, Photograph of ‘Large ‘Scale Model of Accused SS40
Sprayer sien Sede! 473
QQ, Drawing of Accused SS40 Sprayer .... -....) =. 478
VV, Drawing of SS40 Sprayer 477
YY, (Scoggin Deposition Exhibit No. 27) Drawing of
PB a ern 479
ZZ, Stipulation Concerning Commercial Sprayers pare 5 ae 486
AB, Letters Patent No. 3,064,865 to B. I. Scoggin et al.,
November 20, 1962 .. _. 496
AC, Excerpts from Scoggin et al. ieee 835, 680
(Patent No. 3,064,865) . _- 501
AD, Excerpts from Forfeited 1 Scoggin et ‘a - Application
No. 789,902 —_ ~ ws - 504
Defendant’s Exhibits ____. . 510
10, Letters Patent No. 2,870, 943 (Patent in Suit), ye
B. I. Scoggin, Jr., January 27, 1959 510
31, Photograph of Austin Window Cleaner with Bakan 3
Sprayer : 513
31-A, Photograph of Austin Window Cleaner with Bakan 3
Sprayer-Overcap Removed .. _ _.._.._. . 514
33, Photograph of Austin Window Cleaner—Earlier Pack-
age Without Sprayer ... _.. Fears _ 515
35, Summary of Sales by Austin (1957- 1962) Saceiosa
90, Drawing of Bakan 2 Modified Sprayer ..._... __ _ 517
INDEX VII
94, Chart #1—Fishleigh 519
110, Photomicrograph of Defendant’s Exhibit 102 —.......... 521
112, Photomicrograph of Defendant’s Exhibit 104 —...._- _. 522
114, Photomicrograph of Defendant’s Exhibit 106 _....... 523
116, Photomicrograph of Defendant’s Exhibit 108 _...___ .._ 524
118, Drawings Prepared from Defendant’s Exhibits 110,
112, 114 and 116 __. 525
120, Chart #2—Fishleigh 527
121, Letters Patent No. 2,956,509 to R. C. Cooprider and
Douglas F. Corsette, October 18, 1960 529
150, Sketch of Boot for Sprayer -_....... 537
160, Memorandum by Davis (Calmar)—March, 1958 _. 538
162, Memorandum by Davis (Calmar)—May, 1958 _...... 540
198, Notes on Calmar sdihiatiai Committee Meeting,
December 18, 1957 _....._-... 541
200, Memorandum—Wise ‘to Depattment Heads, November
Se SIE cnoaisbcdendsicmsbindioscabiicaten 544
202, Memorandum by Wise to W. H. Harnage, March 31,
SOO8 in 550
210, Photograph of ‘Scoggin Experimental Closure Cap _... 551
224, Chart #3, Fishleigh Pe 553
Original Print
Proceedings in the United States Court of Appeals
for the Eighth Circuit 55D 555
Opinion, Mehaffy, J. Pi capieibwad 555 555
RE SRR ERT IRC Me FDR ORC eR 565 564
Petition of appellants for rehearing en bane under
I 566 565
Order denying petition of appellants for rehearing
en banc : 578 577
Order denying motion of appellants to recall and
stay issuance of mandate = ainintiles 579 577
eee CN ei ee 580 578
Orders allowing certiorari === 581 579
[1] COMPLAINT
(Filed in United States District Court April 27, 1959)
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI,
WESTERN DIVISION
CALMAR, INCORPORATED, )
a
‘ mana | Civil Action
No. 12349
COOK CHEMICAL COMPANY, =
Defendant. ‘
1. Plaintiff, CALMAR, INCORPORATED, is a corpo-
ration of the State of California, having a place of business
at Los Angeles, County of Los Angeles, State of California.
2. Defendant, COOK CHEMICAL COMPANY, is a
corporation of the State of Missouri, having a place of
business at Kansas City, County of Jackson, State of Mis-
souri.
3. This is an action for Declaratory Judgment under
Title 28, U.S.C., Section 2201, and the jurisdiction of this
Court is predicated upon the Patent Laws of the United
States of America.
[2] 4. This action arises from an actual justiciable contro-
versy now existing between Plaintiff and Defendant with
respect to the charge by Defendant of infringement by
Plaintiff of the following United States Letters Patent, on
information and belief owned by Defendant, and with
respect to Plaintiff's denial of infringement and of the
validity of said Letters Patent:
No. 2,870,943, in the name of Baxter I. Scoggin, Jr.,
patented January 27, 1959, for ~Pump-Type Liquid
Sprayer Having Hold-Down Cap”. re
5. Plaintiff has made and sold, and intends to continue
to make and sell pump-type liquid sprayers having hold-
down caps for dispensing liquids from containers.
6. Defendant has asserted, and Plaintiff has denied,
that the manufacture, sale and use of the said liquid
sprayers is an infringement of and is within the valid scope
of the claims of the aforesaid Letters Patent, and Plaintiff
has informed Defendant that said Letters Patent are in-
valid.
[3] WHEREFORE, Plaintiff prays:
__..1._That this Court grant and enter.a judgment declaring
that said United States Letters Patent No. 2,870,943 are
invalid and void.
2. That this Court grant and enter a judgment declaring
that said United States Letters Patent No. 2,870,943 are not
infringed by Plaintiff.
3. That this Court gran’ and enter a judgment declaring
that it is the right of Plaintiff to continue to make, use
and sell its liquid sprayers without let or hindrance from
Defendant, whether asserted against Plaintiff or against
customers of Plaintiff.
4. That the costs of this action be assessed against
Defendant.
5. That Plaintiff have such other and further relief as
justice may require.
Morrison, Hecker, Buck, Cozad & Rogers
Attorneys for Plaintiff
Of Counsel:
Francis G. Cole
Watson, Cole, Grindle & Watson
815 - 15th Street, N.W.
Washington 5, D. C
[4] ANSWER TO COMPLAINT
(Filed in United States District Court on August 14, 1959)
COMES NOW Defendant, Cook Chemical Company, and
for answer to the complaint states as follows:
1. Defendant admits the allegations of paragraphs 1 to
6 inclusive of the complaint
COUNTERCLAIM
As to its counterclaim, Defendant states:
2.-That--Defendant-is~a~corporation~ of the State of
Missouri, having a place of business at Kansas City, County
of Jackson County, State of Missouri.
3. That Plaintiff, Calmar, Incorporated, is a corporation
of the State of California, having a place of business at Los
Angeles, County of Los Angeles, State of California, and is
before this court as Petitioner in the complaint against
Defendant.
4. That this court has jurisdiction of this counterclaim
and of the parties because the cause arises under the patent
laws of the United States, and U. S. Code, Title 28, Section
1338 (a); and Title 28, Section 1400 (b), as more fully
hereinafter appears.
[5] 5. That United States Letters Patent No. 2,870,943
was duly and legally issued to Defendant on January 27,
1959, in the name of Baxter I. Scoggin, Jr., for a “PUMP-
TYPE LIQUID SPRAYER HAVING HOLD-DOWN CAP”,
and that Defendant retains all rights and title to said patent.
6. That Defendant is informed and believes, and on
information and belief alleges, that Plaintiff, within six
years prior to the filing of this counterclaim, within the
district of this court and elsewhere in the United States,
infringed and is still infringing said patent by manufactur-
ing, using and selling sprayers embodying the inventions
patented by said Letters Patent unlawfully and without
license from Defendant, and will continue to infringe unless
enjoined by this court.
7. That Defendant is informed and believes, and upon
information and belief alleges, that Plaintiff has committed
the aforesaid acts of infringement in knowing, wanton and
deliberate disregard of the rights of Defendant.
8. That Plaintiff had actual knowledge of said patent at
the time of commencement of said acts of infringement.
WHEREFORE, Defendant prays:
1. That the complaint be dismissed with costs to Plain-
tiff.
___2. That a judgment be entered that said patent is valid.
3. That a judgment be entered decreeing that Piaintiff
infringes said patent.
[6] 4. That Plaintiff be ordered to account to Defendant
for damages suffered by reason of the infringing acts
herein complained of.
5. That Defendant have judgment against the Plaintiff
for its reasonable attorneys’ fees incurred in this action.
6. That Defendant have judgment against Plaintiff for
the costs and disbursements incurred herein by Defendant.
7. That the Defendant have such further and other and
different relief as this court may deem meet and proper.
Hovey, Schmidt, Johnson & Hovey
By Donald E. Johnson
1816 Federal Reserve Bank Bldg
Kansas City 6, Missouri ;
Attorneys for Defendant
[7] ANSWER TO COUNTERCLAIM
(Filed in United States District Court on August 20, 1959)
Plaintiff, Calmar, Incorporated, for answer to the counter-
claim states:
1. Plaintiff reasserts that United States Letters Patent
2,870,943 are invalid and void and are not infringed by
Plaintiff.
2-4. Plaintiff admits the allegations of paragraphs 2, 3,
and 4 of the counterclaim.
‘5. Plaintiff denies that United” States Letters Patent
2,870,943 were duly and legally issued, but admits that said
Letters Patent were issued to Defendant on January 27,
1959, and that Defendant retains title thereto.
6-8. Plaintiff denies each and every allegation of para-
graphs 6, 7, and 8 of the counterclaim.
[8] WHEREFORE, Plaintiff prays:
1. That the counterclaim be dismissed.
2. That Plaintiff have its costs and attorneys’ fees and
also such other and further relief as may be just.
Morrison, Hecker, Buck & Cozad
1701 Bryant Building
Kansas City 6, Missouri
Attorneys for Plaintiff
[9] AMENDED ANSWER TO COUNTERCLAIM
(Filed in United States District Court on September 18,
1961)
| Plaintiff, Calmar, Incorporated, for amended answer to
> the counterclaim states:
1. Plaintiff reasserts that United States Letters Patent
2,870,943 are invalid and void and are not infringed by
plaintiff.
2-4. Plaintiff admits the allegations of paragraphs 2, 3
and 4 of the counterclaim.
5. Plaintiff denies that United States Letters Patent
2,870,943 were duly and legally issued, but admits that said
Letters Patent were issued to Defendant on January 27,
1959, and that defendant retains title thereto.
6-8. Plaintiff denies each and every allegation of para-
graphs 6, 7 and 8 of the counterclaim.
9. United States Letters Patent 2,870,943 are invalid
and void for each of the following reasons:
1. (a) No invention was required to devise the alleged
improvements described and claimed in said Letters Patent,
in view of the state of the art, and the subject matter
thereof was obvious to a person with ordinary skill in the
art at the time the alleged invention of said Letters Patent
was made.
[10] (b) The disclosure and claims of said Letters Patent
are vague, indefinite, ambiguous, uncertain and incomplete,
and are not in such clear, concise, and exact terms as to
enable persons skilled in the art to make and use the
alleged invention.
(c) The claims of said Letters Patent are not based
on the disclosure of the application for Letters Patent as
originally filed, and are invalid and void because of the
overclaiming of the alleged invention.
(d) Patentee Baxter I. Scoggin, Jr. failed to make with
respect to the claims of said Letters Patent the oath required
by the Patent Act of 1952, 35 U.S.C. 115 and Rule 67 of the
Rules of Practice of the United States Patent Office.
(e) The result produced by the association of elements
described and claimed in said Letters Patent is not a product
of the combination of said elements but is a mere aggre-
gation of several effects, each and all of which several
effects as well as the elements necessary for their production
were matters of common knowledge among those skilled
in the art to which said Letters Patent relate before the
alleged invention thereof by said patentee and more than
7
one year prior to the date of the application for said Letters
Patent and do not represent patentable combinations but
only aggregations of old and well-known elements.
(f) The said Baxter I. Scoggin, Jr. was not the original
and first inventor of the alleged improvements described
and claimed therein, but the same, in all of their material
and substantial parts, were invented by others, were known
to and used by others, and were communicated to the said
Baxter I. Scoggin, Jr. by others before his alleged invention
and discovery thereof, [11] were patented and described in
printed publications in this and foreign countries before
his alleged invention or discovery thereof, and more than
one year prior to his application for patent, and were in
public use and on sale in this country for more than one
year prior to his said application.
2. The patents and printed publications referred to, in-
sofar as they have presently been ascertained, are as
follows:
Number Date Patentee
U.S.P. 1,714,874 May 28, 1929 Hothersall
U.S.P. 2,024,570 December 17, 1935 Fischman
U.S.P. 2,119,884 June 7, 1938 Lohse
U.S.P. 2,362,080 November 7, 1944 Martin
U.S.P. 2,434,875 January 20, 1948 Turnbull et al
U.S.P. 2,568,057 September 18, 1951 Cotter
U.S.P. 2,586,687 February 19, 1952 Mellon
U.S.P. 2,684,182 July 20, 1954 Gey
U.S.P. 2,715,480 August 16, 1955 Livingstone
U.S.P. 2,763,402 September 18, 1956 Livingstone
U.S.P. 2,844,290 July 22, 1958 Slade
U.S.P. 2,846,124 August 5, 1958 Stewart et al
U.S.P. 2,861,839 November 25, 1958 Mellon
U.S.P. 2,956,509 October 18, 1960 Cooprider et al
British 737,210 Published September Universal Metal
21, 1955 Products, Ltd.
Modern Packaging October 1947, Vol. 2, No. 2 - Pages 126,
127.
3. The instances of prior invention, prior knowledge and
use by others, and prior public use and sale, above referred
to, insofar as they have been ascertained at present, are as
follows:
(a) By the patentees of the patents and by the author
of the publication set forth above, at the place set forth
in the patents and publications listed therein, and else-
where in the United States.
(b) By plaintiff and its affiliated companies and their
officers and employees at Los Angeles, California, [12]
and elsewhere in the United States.
(c) By Paul A. Marchant, a resident of Kansas City,
Missouri, at Kansas City, Missouri.
(d) By others presently unknown to plaintiff whose
names plaintiff asks leave to add to this answer when it
shall have ascertained the same.
4. Plaintiff further avers that by reason of the proceed-
ings in the United States Patent Office during the prose-
cution of the application which resulted in the Letters
Patent in suit, and the admissions and representations made
by or on behalf of the applicant in order to induce the grant
of said Letters Patent, the defendant is estopped to claim
for the Letters Patent in suit a construction such, were the
same otherwise possible, as to cause it to cover any act of
plaintiff.
5. The claims of said Letters Patent are ambiguous and
if such ambiguity can and shall be truly, correctly and law-
fully resolved by reference to the specification of said patent,
the proceedings in the Patent Office leading to the grant of
said patent, and to the art existing at and prior to the alleged
invention of the subject matter of said claims by the said
patentee, said claims and each of them will be legally
susceptible only of such narrow interpretation, meaning
and scope that no act done or intended to be done ry plain-
tiff can justly and lawfully be held to constitute infringe-
ment of any of said claims.
WHEREFORE, plaintiff prays:
1. That the counterclaim be dismissed.
[13] 2. That plaintiff have its costs and attorneys’ fees
and also such other and further relief as may be just.
Morrison, Hecker, Buck & Cozad
By W. H. Curtis
1701 Bryant Building (VI 2-5910)
Kansas City 6, Missouri
Attorneys for Plaintiff
Of Counsel:
Francis G. Cole
Watson, Cole, Grindle & Watson
815 Fifteenth Street N.W.
Washington 5, D.C.
[14] COMPLAINT
(Filed in United States District Court on October 5, 1960)
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
COLGATE-PALMOLIVE COMPANY.
intiff
+ taintitt, Civil Action
i No. 13006
COOK CHEMICAL COMPANY -
Defendant.
Plaintiff, complaining of defendant, respectfully alleges:
1. Plaintiff, COLGATE-PALMOLIVE COMPANY ,isa
corporation duly organized and existing under the laws of
the State of Delaware, and has offices at New York City,
in the County of New York and State of New York.
2. Defendant, COOK CHEMICAL COMPANY, is a
corporation organized and existing under the laws of the
10
State of Micsouri, having a place of business at Kansas City,
County of Jackson and State of Missouri.
3. This is a suit brought for a declaratory judgment in
reference to a United States patent under 28 U.S.C. Section
22(1, and the jurisdiction of this court arises under the
Patent Statutes of the United States and 28 U.S.C. Sections
1338 and 1391.
[15] 4. This action arises from an actual controversy now
existing between plaintiff and defendant as to the alleged
infringement by plaintiff of the United States Letters Patent
No. 2,870,943, granted January 27, 1959, upon an application
of Baxter I. Scoggin, Jr., for “Pump-Type Liquid Sprayer
Having Hold-Down Cap.”
5. Defendant has represented itself to be the owner of
the entire right, title and interest in and to said Letters
Patent.
6. Defendant has, by a letter dated August 3, 1960, a
copy of which is hereto annexed and marked “Annex A,”
charged plaintiff with infringement of defendant’s alleged
rights under said Letters Patent by reason of plaintiff's
use of plastic sprayers and dispensers in connection with
plaintiff’s “Kan-Kil” products which plaintiff has sold.
7. Plaintiff has purchased plastic sprayers and dispen-
sers from Calmar, Inc., and has used them in connection
with plaintiff’s “Kan-Kil” products which plaintiff has sold,
and intends to continue to purchase such plastic sprayers
and dispensers from Calmar, Inc., and to continue to use
them in connection with its “Kan-Kil” products which
plaintiff intends to continue to sell.
8. Plaintiff denies that it has infringed said Letters
Patent No. 2,870,943, or any rights of defendant thereunder
by its use of the liquid sprayers and dispensers, which it has
purchased from Calmar, Inc., in connection with plaintiff's
“Kan-Kil” products, and its sale of said products, or other-
wise.
[16] 9. Plaintiff alleges that said Letters Patent No.
“870,943 are not good nor valid in law, and that the same
are invalid and void.
11
10. Plaintiff has denied to defendant the existence of
any liability on the part of plaintiff to defendant based on
said Letters Patent 2,870,943, wherefore by reason of the
notice of infringement which defendant has served on
plaintiff, and the resulting commercial and financial un-
certainty incident to the manufacture, use and sale by
plaintiff of its accused products aforesaid, an actual con-
troversy has arisen and exists at the present time between
plaintiff and defendant.
WHEREFORE, Plaintiff prays:
~~}. ‘That this Court grant and enter a judgment or decree
declaring said United States Letters Patent No. 2,870,943
to be invalid and void.
2. That this Court grant and enter a judgment or decree
declaring that the said Letters Patent No. 2,870,943 are not
infringed by plaintiff.
3. That this Court grant and enter a judgment or decree
declaring that it is the right of plaintiff to continue to make,
use and sell products including sprayers and dispensers of
the type and structure heretofore used and sold by it as set
forth herein, without any threats or interference whatso-
ever by or from defendant, its assigns or successors in title
to said Letters Patent, based on or arising out of the owner-
ship of satd Letters Patent or any interest therein, either
directed against plaintiff or its suppliers or customers.
{17] 4. That defendant, its agents, officers and employees,
temporarily during the pendency of this action and perma-
nently after final hearing, be enjoined from charging or
asserting as to plaintiff or its suppliers or its customers
that the manufacture, use or sale of said sprayers and
dispensers, either as such or as part of a product, is in
violation of or infringes upon defendant’s patent rights
under said Letters Patent.
5. That the costs of this action be assessed against
defendant.
12
6. That plaintiff have such other and further relief as
justice may require.
/s/ Lathrop, Righter, Gordon & Parker
Attorney for Plaintiff
By /s/ Howard A. Crawford
Of Counsel:
Trenton Meredith
Colgate-Palmolive Company
300 Park Avenue
New. York 22, New York
George H. Mortimer
Colgate-Palmolive Company
300 Park Avenue
New York 22, New York
[18] ANSWER TO COMPLAINT
(Filed in United States District Court on November 30,
1960)
COMES NOW defendant, Cook Chemical Company, and
for answer to the complaint, states as follows:
1. Defendant admits the allegations of paragraphs 1 to
7 inclusive, of the Complaint.
2. Answering paragraph 8 of the Complaint, defendant
alleges that plaintiff has infringed U. S. Letters Patent No.
2,870,943 by its use of liquid sprayers and dispensers which
it has purchased from Calmar, Inc., in connection with
plaintiff’s ‘“Kan-Kil” products, and its sale of said products
and otherwise.
3. Answering paragraph 9 of the Complaint, defendant
alleges that said Letters Patent No. 2,870,943, is good and
valid in law.
4. Answering paragraph 10 of the Complaint, defendant
alleges that plaintiff is liable to defendant for infringement
13
of said Letters Patent No. 2,870,943, but admits that an
actual controversy has arisen and exists at the present time
between plaintiff and defendant.
[19] COUNTERCLAIM AGAINST PLAINTIFF
For counterclaim against the plaintiff, Colgate-Palmolive
Company, the defendant, Cook Chemical Company, says:
COUNT I
1. Defendant is a corporation of the Stateof Missouri
having-a~ place of business at Kansas” City, County of
Jackson, State of Missouri.
2. Plaintiff is a corporation of the State of Delaware,
having a place of business at New York City in the County
of New York, State of New York, and is before this Court
as petitioner in the Complaint against defendant.
3. That this court has jurisdiction of this Counterclaim
and of the parties because the cause arises under the patent
laws of the United States, and U. S. Code, Title 28, Section
1338 (a); and Title 28, Section 1400 (b), as more fully
hereinafter appears.
4. That United States Letters Patent No. 2,870,943, was
duly and legally issued on January 27, 1959, to defendant
as assignee, for a “PUMP-TYPE LIQUID SPRAYER
HAVING HOLD-DOWN CAP”, and that defendant retains
all rights and title to said patent.
5. That defendant is informed and believes, and on in-
formation and belief alleges, that plaintiff, within six (6)
years prior to the filing of this Counterclaim, within the
District of this court and elsewhere in the United States,
infringed and is still infringing said patent by manu-
facturing, using and/or selling sprayers embodying the
inventions patented by said Letters Patent unlawfully and
without license from defendant, and will continue to in-
fringe unless enjoined by this court.
[20] 6. That defendant is informed and believes, and upon
information and belief alleges, that plaintiff has committed
14
' the aforesaid acts of infringement in knowing, wanton
and deliberate disregard of the rights of defendant.
7. That plaintiff had actual knowledge of said patent
at the time of issuance thereof and during the commission
ot said acts of infringement.
[21] PLAINTIFF’S REPLY TO DEFENDANT'S
COUNTERCLAIM
(Filed in United States District Court on February 18, 1961)
I
Comes now plaintiff Colgate-Palmolive Company and for
its reply to Count I of defendant’s counterclaim, alleges
and states:
FIRST DEFENSE
Said Count I fails to state a claim against plaintiff upon
which relief can be granted.
SECOND DEFENSE
1. Plaintiff admits the allegations of paragraphs 1, 2,
and 3 of Count I of defendant’s counterclaim.
2. Plaintiff denies each and every allegation of para-
graphs 4, 5, 6, and 7 of Count II of defendant’s counterclaim.
WHEREFORE, plaintiff prays:
1. That Count I of said counterclaim be dismissed.
2. That plaintiff have and recover its costs and attorneys’
fees and also for such other and further relief as may to the
Court seem just and proper.
[22] ORDER SUSTAINING MOTION TO CONSOLI-
DATE THE CASE OF CALMAR, INCORPO-
RATED vs COOK CHEMICAL COMPANY, NO.
12349 WITH THE FIRST COUNT OF THE CASE
OF COLGATE-PALMOLIVE vs COOK CHEMI-
CAL COMPANY, No. 13006.
(Filed in United States District Court on December 28,
1961)
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
CALMAR, INCORPORATED,
Plaintiff,
v. No. 12349
COOK CHEMICAL COMPANY,
Defendant.
COLGATE-PALMOLIVE COMPANY, }
Plaintiff,
v. > No. 13006
COOK CHEMICAL COMPANY, .
Defendant. |
Defendant’s Motion to Consolidate the above entitled
causes coming on for consideration, is by the court sus-
tained, and the case of Calmar, Incorporated vs Cook
Chemical Company, No. 12349, is consolidated with the
first count of the case of Colgate-Palmolive Company vs
Cook Chemical Company, No. 13006, for the purposes of
trial.
A trial upon the issues raised in the remaining counts of
the case of Colgate-Palmolive Company vs Cook Chemical
Company, No. 13006, will be deferred until the question
of the validity of the patent involved in the cases has been
determined.
[23] The cases are hereby set for trial on Monday, March 5,
1962, upon the issues involved in the consolidated cases.
Richard M. Duncan
Judge
Dated: December 28, 1961
16
[24] ORDER ADMITTING INTO EVIDENCE PLAIN-
TIFF’S EXHIBITS ZZ AND AAA.
(Filed in United States District Court on April 4, 1962)
Come now the attorneys for plaintiffs in the above action
and present to the Court their Motion for an order reopening
the hearing in the above case and confirming admission of
evidence, and it appearing that defendant agrees to the
granting of said motion and that all parties to the above
action agree that the Stipulations attached to plaintiffs’ Mo-
tion and marked Plaintiffs’ Exhibits ZZ and AAA should be
in evidence and were treated and referred to by the parties
and the Court as a part of the trial record at the time
evidence was being presented to the Court; and it further
appearing to the Court that the said Stipulations became
a part of the record upon being filed with the Clerk of the
Court but that it may be desirable to confirm that the said
Stipulations are in evidence and are a part of the trial
- record in this matter;
[25] THEREFORE, it is hereby ordered as follows:
1. That the trial of the above matter is reopened solely
for the purpose of confirming the admittance of Stipulations
marked Exhibits ZZ and AAA into evidence;
2. That said Stipulation marked Plaintiffs’ Exhibit ZZ
be admitted into evidence as Plaintiffs’ Exhibit ZZ and is
a part of the trial record of this matter;
3. That said Stipulation attached to plaintiffs’ Motion
and marked Plaintiffs’ Exhibit AAA be admitted into
evidence as Plaintiffs’ Exhibit AAA and is a part of the
trial record of this matter.
R. M. Duncan
District Judge
Approved:
W. H. Curtis
Morrison, Hecker, Cozad & Morrison
1701 Bryant Building (VI 2-5910)
Kansas City 6, Missouri
Attorneys for Plaintiff Calmar,
Incorporated, in Action No. 12,349
Howard A. Crawford
Lathrop, Righter, Gordon & Parker
15 West Tenth Street (VI 2-0820)
Kansas City 5, Missouri
Attorneys for Plaintiff Colgate-
Palmolive Company in Action No. 13,006
Gordon D. Schmidt
Hovey, Schmidt, Johnson & Hovey
1816 Federal Reserve Bank Building
Kansas City, Missouri
Attorneys for Defendant Cook Chemical
Company in Actions Numbered 12,349
and 13,006
[26] MEMORANDUM OPINION, FINDINGS OF
FACT, AND CONCLUSIONS OF LAW.
(Filed in United States District Court on June 19, 1963)
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
CALMAR, INCORPORATED,
Plaintiff,
Vv. No. 12349-3
COOK CHEMICAL COMPANY,
Defendant.
COLGATE-PALMOLIVE COMPANY iy
Plaintiff,
v. > No. 13006-3
COOK CHEMICAL COMPANY,
Defendant. |
This is a declaratory judgment action instituted by the
plaintiff, Calmar, Incorporated, against the defendant Cook
18
Chemical Company, asking this court to declare that U. S.
Patent No. 2,870,943 issued to Baxter I. Scoggin, Jr., on
January 27, 1959, and presently owned by defendant Cook
Chemical Company is invalid and not infringed by plain-
tiffs.
A similar declaratory judgment action was brought by
the plaintiff Colgate-Palmolive Company against defendant
Cook Chemical Company asking for the same judicial
determination relative to the Scoggin patent.
[27] In its answers, defe.idant admitted the jurisdiction of
this court, and the existence of a justiciable controversy.
The defendant also counterclaimed in each action, seeking
a declaration of validity of its patent and a finding of
infringement by plaintiffs’ commercial device.
In the Colgate-Cook case, the defendant’s counterclaim
also alleged unfair competition as well as infringement on
the part of Colgate. The two actions were consolidated
for trial on the issues of validity and infringement only.
Trial of the unfair competition issue raised in Cook’s
counterclaim against Colgate was deferred pending a de-
termination of the issues of validity and infringement.
The patent involves a pump spray device designed to be
inserted into bottles or other containers for the dispensing
of liquid contained therein. The particular device with
which we are concerned here, is a screw cap designed to
hold down the plunger of said spray pump when it is
inserted in a bottle so as to prevent leakage and breakage
while being shipped from processor, or while on the shelves
of stores where such commodities are offered for sale.
The sprayers which were manufactured by Calmar and
later by Bakan, were used by defendant prior to the Scoggin
patent, was a simple device made of rigid plastic. It con-
sisted of seven separate elements; (1) a chamber approxi-
mately 1-3/4” long, and 1/2” in diameter; (2) a disk was
sealed to the top [28] of this element with an opening
therein corresponding in size to the opening in the chamber.
The lower end of the chamber was formed into a bottle
neck design, and the opening at the end thereof was smaller
than the opening in the top of the chamber.
Into this opening was inserted (3) a plastic barrel of
sufficient length to extend to the bottom of the container.
19
The disk at the top of the chamber was so designed and
sized as to enable it to be secured to the inside of the
threaded container cap of metal or plastic material. The
container cap possessed an opening in the top surface to
correspond to the opening in the disk and chamber itself.
(4) A collar smaller than the container cap with an
opening therein corresponding in size to the openings in
the chamber and disk and the container cap was secured
to the top of the container cap. This collar extended
slightly above the container cap.
(5) A small coil spring was inserted into the chamber
and rested upon the shoulder created in the sides of the
opening near the lower end thereof.
(6) <A plunger approximately 2” long was inserted into
the chamber through the openings in the collar and the
container cap to contact the coil spring therein. Upon the
top of this plunger was secured the (7) sprayer head con-
taining an orifice through which the fluid was expelled.
[29] The top of the sprayer head was formed into a “saddle”
to accommodate a finger or thumb of the hand. Thus
assembled, the sprayer pump was inserted into the bottle
and secured thereto by means of the threaded cap. When
the plunger was actuated by being pressed downward by
the finger or thumb, the fluid in the container was drawn
through the barrel and chamber and forced through the
orifice in the form of spray. When the sprayér was at-
tached to the container, the plunger and sprayer head pro-
jected about 1-1/2” above the top of the container.
Defendant Cook Chemical has been engaged in the manu-
facture and sale of household insecticides since 1945, and
sold its product under the trade name, “Real Kill”, Prior
to 1954, the insecticide industry largely was made up of a
number of small packagers scattered throughout the coun-
try.
Plaintiff Colgate was in the market prior to 1958 with
6 and 12 ounce Aersol cans, but did not enter the household
insecticide market with a package including pump sprayer
until 1958, when it came into the market with “Kan Kill”
which immediately came into competition with defendant’s
product, “Real Kill”.
20
Prior to the patented sprayer coming on the market in
1957, most of the manufacturers and distributors of house-
hold insecticide chemicals used the type sprayer which has
heretofore been described, and attached it to their bottles
[30] or containers by means of pasteboard or plastic holder.
This was necessary as the products could not be success-
fully handled with the sprayer in place, due not only to
breakage but leakage in shipment and while the bottles
were on the shelves of the merchants before sale.
With respect to insecticides, the evidence reveals that
the chemicals used by the parties in the manufacture of
these products caused the material to be extremely fluid
and susceptible to leakage. Due to this, a much tighter
seal was required for them than for starch, wave set, leaf
polish and moth spray. The container when in shipment or
displayed for sale had a separate cap which was removed
by the purchaser who then inserted the sprayer.
This practice had also presented problems of breakage
and handling to the manufacturers and merchandisers as
the sprayers were occasionally damaged or lost. This
condition continued to plague the manufacturers of the
sprayer and sellers of insecticides particularly, during all
of the period prior to the Scoggin invention.
Defendant, purchased sprayers for its products from
plaintiff and some time prior to 1956, had urged upon
Calmar the desirability of making a shipping sprayer that
could be put in place before shipment. As early as 1951-’52
Calmar made what has been referred to in the evidence as
its SS 25 LP, the head of which, when depressed and
turned, would lock into the collar attached to the container
cap.
[31] It did not prove to be satisfactory, and did not get
far beyond the experimental stage. It leaked down the
stem and did not solve the breakage problem. (Deft. Ex.
26). During this period plaintiffs had expended consider-
able time, effort and money in an attempt to develop a
successful shipper-sprayer, but had not met with any sub-
stantial success.
In 1956 the defendant organized a company known as
“Bakan” and began the manufacture of its own sprayers.
Sprayers were not a patented device, and defendant’s
sprayer did not differ from the Calmar sprayer.
21
Between the time the defendant began to manufacture
its own sprayers in 1956, and March 4, 1957, the patentee,
B. I. Scoggin, Jr., devoted his time trying to find a solution
to the problem of leakage and breakage. His efforts finally
culminated in the patent that is now in dispute. The ap-
plication therefor was filed on the above date. It was a
simple device, but apparently solved the problem of break-
age in shipping and leakage.
In his patent Scoggin utilized the Bakan sprayers which
were currently being manufactured by it. The only
structural change made in the sprayer was to redesign the
collar attached to the container cap so as to form the lower
portion of the inner seal and to provide threads around
the collar to conform to the threads in the hold-down cap.
By securing the hold-down cap to the collar the sprayer
head was caused to be [32] depressed and covered, and
thus shielded from breakage. An inner seal was also
formed between the hold-down cap and the collar which
prevented leakage.
In his specifications, patentee described his invention as
follows:
“Pump-Type liquid sprayer having hold-down cap.”
“DESIGNATION OF PATENT”
“This invention relates to improvements in structures
for dispensing liquids wherein is provided a spray-type
hand pump mounted within a container for the liquid
through use of the closure cap of such container.
It is common practice, as exemplified for example by
Patent No. 2,362,080, issued November 7, 1944, to dis-
pense various types of liquids such as insecticides,
through use of a finger manipulated spray pump nor-
mally sold as a component part of the container itself.
The pump includes a vertically reciprocable plunger
extending upwardly beyond the top of the cap within
which the pump is mounted and provided with a spray
head or nozzle structure capable of emitting a fine mist-
like spray when the plunger is depressed by engagement
with a finger receiving saddle forming a part of the spray
head.
22
Difficulties have been experienced in the field by
virtue of the inherent nature of such structure since
accidental actuation of the plunger causes dispensing of
the fluid and oftentimes the material is used in part by
store employees prior to sale because of the ready ac-
cessibility to the pump itself.
It is the most important object of the present inven-
tion, therefore, to provide structure for rendering the
pump inoperable during shipment and while in storage,
as well as on the shelves of the retail dealer.
Another important object of the present invention is
to provide structure capable of carrying out the functions
above set forth which is also adapted to enclose the head
of the plunger and thereby protect the same, as well as
handlers of the merchandise by virtue of the fact that
the said plunger is completely enclosed and held at the
innermost end of its reciprocable path of travel.”
[33] The Patentee claimed for his patent in Claims 1 and 2:
“1. In a closure assembly for an open-top container
having a perforated cap over said open top thereof
mounting a spray unit including a barrel provided with
a tubular extension passing coaxially upwardly through
the perforation in said cap, a plunger reciprocably carried
by the barrel and normally extending therebeyond and a
spray head on the upper end of the plunger above said
extension, the combination with said spray unit of an
annular retainer telescoped over and secured to the ex-
tension above said cap and provided with external, cir-
cumferentially disposed screw threads and an annular,
continuous segment at the upper part of the retainer
above said screw threads, and a cup-shaped hold-down
member housing the head and holding the plunger de-
pressed at substantially the innermost path of travel
thereof within the barrel, said member being provided
with internal screw threads complementally engaging
said screw threads on the retainer and having an internal,
circumferentially extending, continuous shoulder dis-
posed to engage said segment around the entire periphery
thereof and thereby present a liquid-tight seal located
between the spray head and said threads on the retainer
23
and said member respectively, said shoulder being
spaced from the lower annular peripheral edge of the
member a distance at least slightly less than the distance
from that portion of said segment normally engaged by
said shoulder, to the proximal upper surface of the cap
whereby said lower edge of the member is maintained
out of contacting relationship with the cap when the
member is on the retainer in a position with said shoulder
in tight sealing engagement with the segment.
2. A closure assembly as set forth in claim 1 wherein
one of the normally interengaged surfaces of the shoulder
and segment respectively is substantially conical to
present an inclined annular face coaxial with the mem-
ber and said retainer and of sufficient diameter at the
largest end thereof to cause the seal effected between the
shoulder and said segment to become tighter as the
shoulder slides on said segment during shifting of the
member toward the cap.”
The purpose of the Scoggin patent is that of converting
the old side-mounted sprayer into a shipper sprayer. In
order to achieve this end, two things had to be accom-
plished. [34] First, the sprayer head and plunger had to
be protected from damage. Second, the unit had to be
sealed to prevent leakage of the contents. . To achieve this
the collar on the top of the container cap was modified and
the hold-down cap was added.
To the existing collar two new elements were added.
First, screw threads were added to the side so that they
would engage those on the inside of the hold-down cap.
Secondly, a circular rib or lip around the top of the collar
was added to establish a seal with a complementary lip
inside the hold-down cap.
The hold-down cap included first. internal screw threads
which would engage those added to the side of the collar,
and secondly, a circular inner shoulder which would en-
gage the rib or lip added to the top of the collar. Finally,
the cap was constructed so that when screwed into place
on the collar it would depress the sprayer, completely
enclosing it, providing the required protection. A space
is provided between the lower surface of the hold-down cap
24
and the container cap so that there is no contact between
such surfaces.
The rib on the collar and the shoulder in the cap provide
the seal. The threads on the side of the collar and those
inside the cap serve to secure the cap to the collar, thus
enclosing, depressing and protecting the sprayer. With the
cover cap secured to the collar, any forces applied to the
cap would be transmitted to the collar and not to the
sprayer head and the plunger.
[35] Defendant’s patent is limited to the combination of the
old sprayer with these modifications and additions.
The file wrapper reveals that numerous claims were filed,
denied, cancelled and amended before Claims 1 and 2,
among others, were finally allowed.
The defendant began to manufacture sprayers embody-
ing its invention in 1956, and at first it encountered some
difficulty with leakage at the seal. Some modifications
were made in the structure, and the evidence clearly and
unequivocally reveals that thereafter the problems, both
of leakage and breakage were solved. It immediately en-
joyed trade and customer acceptance and its commercial
success was assured. The defendant’s product with sprayer
inside of the container was then for the first time marketed
as an integrated unit.
The hold-down cap on defendant’s sprayer was screwed
to the collar by the assembling machinery at the time of
manufacture. This depressed the spray head and estab-
lished the seal. When the products were bottled the
sprayer was inserted and screwed down onto the top of the
container. The merchandise was then ready for shipment.
In following this procedure the seal formed by the collar
and cap were unbroken between the time of final assembly
of the sprayer and the first use by the ultimate customer.
[36] Thus Bakan had produced a sealed and protected
sprayer unit which the manufacturer need only screw onto
the top of its container in much the same fashion as a
simple metal cap.
Plaintiffs’ contention is that defendant’s claims lack
invention, and that every element of the claims in suit is
disclosed in the prior art, and that every combination or
sub-combination recited in the claims can be found in the
25
prior art. Plaintiffs also deny that either Calmar’s patent
or the accused device infringes.
§103, Title 35, U. S. C. A. provides:
“A patent may not be obtained though the invention
is not identically disclosed or described as set forth in
section 102 of this title, if the differences between the
subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have
been obvious at the time the invention was made to a
person having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be nega-
tived by the manner in which the invention was made.”
Therefore, the question is—was the combination of the
admittedly old and known elements employed by Scoggin
in accomplishing the result which he set out to achieve,
invention, or was it merely the result of mechanical skill?
At first glance the mere simplicity of the idea would
seem to present a very close question, but it must be
remembered that we are dealing with a situation that had
long given trouble to those who were engaged in that busi-
ness, and who were familiar with the problem and art.
[37] The manufacturers of sprayers had not been able to
solve the problem of leakage and breakage in the shipment
of the products with which their spray pumps were used.
Numerous ideas had been suggested by Calmar, the experi-
ments were made, but none of them solved the problem.
These facts and circumstances certainly must lead us to
seriously doubt that it was so simple a mechanical prob-
lem as it seems now that it has been solved. However,
simplicity and obviousness after the event do not negative
- invention. Goodyear Co. v. Ray-O-Vac Co., 321 U. S. 275
and cases cited in note 4, p. 279.
Now that it has been solved, one trained in mechanics
and in the art might say, “Well, that was a very simple
problem and should easily have been solved”, but the fact
that many people were thinking about and working on it,
and were unable to come up with the answer, raises it
above the principle of mere simplicity. Hindsight is
generally 20-20.
26
When the application was before the Patent Office, there
were five patents cited, including Lohse, June 7, 1938, No.
2,119,884. Plaintiffs have cited two others that were not
before the examiner.
Certainly there is nothing new about the use of hold-
down caps on bottles. The Lohse patent which employed
a hold-down cap, was dated in 1938, but the evidence
reveals that it was not commercial at that time, has not
been in use for many years. Lohse’s cap would not solve
the problem that was faced by the manufacturers and
sellers of insecticides.
{38} It is true that Lohse’s cap contained threads therein
which corresponded to threads on a collar above the con-
tainer cap, just as there are threads on the collar of the
sprayer with which we are concerned here. But, the
bottom or the skirt of the cap in Lohse forms a seal with a
gasket of some substance, apparently leather, which rests
on the upper surface of the container cap. There are no
seals above the threads and below the sprayer head. This
form of contact between the end of the hold-down cap and
the top of the container would not solve the problem of
leakage.
There is no thought or contention in this case about there
being anything novel or new about the hold-down cap or
the threads therein corresponding to the threads on the
collar. In defendant’s teachings and in its claim it is pro-
vided that:
“* * * said shoulder being spaced from the lower an-
nular peripheral edge of the member a distance at least
slightly less than the distance from that portion of said
segment normally engaged by said shoulder, to the
proximal upper surface of the cap whereby said lower
edge of the member is maintained out of contacting rela-
tionship with the cap when the member is on the retainer
in a position with said shoulder in tight sealing engage-
ment with the segment.” (Emphasis supplied)
Much has been said by the plaintiffs about, this language
in the claim and they insist that such a space is not inven-
tion. In simple language, all that is meant by this rather
complicated language is that there is a space between the
27
lower edge of the hold-down cap and the container cap in
order to permit [39] the hold-down cap to be screwed
down on the collar and form a solid seal between the inner
shoulder of the collar and the inner groove of the cap.
Certainly without a space so described, there could be no
inner seal within the cap, but such a space is not mew or
novel, but it is necessary to the formation of the seal within
the hold-down cap.
To me this language is descriptive of an element of the
patent but not a part of the invention. It is too simple,
really, to require much discussion. In this device the
hold-down cap was intended to perform two functions—to
hold down the sprayer head and to form a solid tight seal
between the shoulder and the collar below. In assembling
the element it is necessary to provide this space in order
to form the seal.
A patent shall be presumed valid. The burden of estab-
lishing invalidity of a patent shall rest on a party asserting
it. 35 U.S. C. A. §282. The Supreme Court applied this
statutory rule in Mumm v. Decker & Sons, 301 U. S. 168,
where it said:
“‘For the grant of letters patent is prima facie evi-
dence that the patentee is the first inventor of the
device described in the letters patent and of its novelty.
Smith v. Goodyear Dental Vulcanite Co.. 93 U. S. 486;
Lehnbeuter v, Holthaus, 105 U.S. 94’. The issue of the
patent is enough to show, until the contrary appears, that
all the conditions under which a discovery is patentable
in accordance with the statutes have been met. Hence,
the burden of proving want of novelty is upon him who
avers it. Walker on Patents, §116. Not only is the
burden to make good this defense upon the party [40]
setting it up, but his burden is a heavy one, as it has
been held that ‘every reasonable doubt should be re-
solved against him.’ Id., Cantrell v. Wallick, supra;
Coffin v. Ogden, 18 Wall 120, 124; Barbed Wire Patent,
143 U. S. 275, 284, 285; Adamson v. Gilliland, 242 U. S.
350, 353.” (171)
In Ezee Stone Cutter Mfg. Co. v. Southwest Indus.
Prod., 262 F.2d 183 (C.A. 8, 1958), our own Eighth Circuit
28
Court of Appeals quoted Long v. Arkansas Foundary Co.,
247 F.2d 366, 369 (C.A. 8, 1957):
“The issuance of a patent is prima facie evidence of
both novelty and utility (see 35 U.S.C.A. §282), and
when one attacks a patent he must make good his attack
with reasonable clearness. He has the burden of proof,
and every reasonable doubt will be resolved against him.
Doner v. Sheer Pharmacal Corporation, 8 Cir., 1933, 64
F.2d 217, 221, and cases cited; G. H. Packwood Mfg. Co. v.
Louis Janitor Supply Co., 8 Cir., 1941, 115 F.2d 958,
vo4, 965.
In a case where the patentability of a claimed inven-
tion is in issue, evidence of commercial success is admis-
sible and may be forthcoming. In a doubtful case. such
evidence may turn the scale in favor of the plaintiff.
See Donner v. Sheer Pharmacal Corporation, supra, at
page 221 of 64 F.2d and cases cited.
In such a case, evidence that the patent device or com-
bination solved a long-felt want and an old problem
which had baffled those skilled in the art is also admis-
sible. [Citing cases]’”
As heretofore stated, defendant’s patented device met
with substantial and extensive commercial success. This is
evidenced by the fact that Calmar almost immediately set
out to produce an equally successful shipper-sprayer. Com-
mercial success or acceptance is an element that may be
taken into consideration [41] in determining the question
of invention, but is not necessarily determinative of the
issue. Temco Elec. Motor Co. v. Apeco Mfg. Co., 275 U. S.
319; Forestek Plating & Mfg. Co. v. Knapp-Monarch Co.,
106 F.2d 554 (C.A. 6, 1939); Ezee Stone Cutter Mfg. Co. v.
Southwest Indus. Prod., supra.
Another question for determination here is whether or
not defendant’s invention solved the problem of leakage
or breakage in shipment. Unquestionably it did. That is
best exemplified by the fact that the plaintiffs adopted and
used a device with a seal within the cap almost exactly
like that used by the defendant. Thus it meets one of the
requirements necessary to an invention, it was useful.
Was it new? The fact that a patent may be composed
of old and well known elements, if it performs a new and
29
useful purpose does not destroy invention. Parks v. Booth,
102 U. S. 96; Loom Co. v. Higgins, 105 U. S. 580. As a
matter of fact, most of the mechanical patents that come
to our attention now are a combination of old and well
known elements into new form or composition.
Although hold-down caps had been used for many years,
their use on the sprayer was for a special and limited pur-
pose. It was employed in a narrow art, one pertaining
primarily to the sealing, shipping and use of insecticides
by means of liquefying sprayers.
[42] Several years of study and experimentations had been
spent in an attempt to solve this problem; designs had been
submitted to the manufacturers and sellers of insecticides.
None had been satisfactory. May it not then be said that
the design of a sealing element or joint that solved the
problem, although it was simple, would be new? Certainly
it was new in the ari which the problem presented.
By the same reasoning, may it not also be said that if it
solved a long-sought need, it was likewise novel? If it
meets the requirements of being new, novel and useful.
it was the subject of invention, although it may have been
a short step, nevertheless it was the last step that ended
the journey. The last step is the one that wins and he who
takes it when others could not, is entitled to patent protec-
tion. The Barbed Wire Patent, 143 U. S. 275.
It is my conclusion that the defendant’s patent is valid.
Following the introduction into the market of its Bakan
2 sprayer pump, the pressure upon Calmar from its cus-
tomers to produce a better shipper pump than it had
theretofore been able to supply, became acute. Calmar’s
president testified that either he or some member of his
organization had seen the Bakan 2 sprayer when it came
upon the market in the fall of 1957.
[43] In the early part of 1958, Calmar employed Douglas
F. Corsette, who, at the time he testified in this case, was
vice-president in charge of engineering and development
for Calmar. He had Bachelor and Masters degrees in
engineering from Purdue University. Immediately prior
to the time he was employed by Calmar he had been
in the employ of a company engaged in the construction of
an automatic assembly machine for sprayer devices.
30
In the early part of 1958, he was given the special assign-
ment of designing a sprayer that would meet Calmar’s
customer requirements. These requirements apparently
specified something comparable to that which had been
produced by Bakan.
As a result of their study and experiments, Douglas F.
Corsette and Rex C. Cooprider produced the accused device
and filed an application for a patent on September 9, 1958,
which was granted October 18, 1960. While the validity of
the Corsette-Cooprider patent is not in issue here, I think
for the purpose of understanding plaintiffs’ commercial
device, it may be well to describe it.
The patent was assigned by Corsette and Cooprider to
the Drackett Company of Cincinnati, Ohio. The Drackett
Company acquired Calmar, Inc., and Calmar Company was
thereafter organized as the sales agency for Drackett
Company. The question of the identity and relationship of
the respective companies was settled before trial by
stipulation of the parties.
[44] The application is entitled, “Fluid Dispensing Pumps”
and it stated:
“This invention relates to new and improved fluid
dispensing pumps of the class in which the pump plunger
is immobilized in a predetermined position for packing
and shipping purposes to avoid inadvertent actuation and
discharge of the liquid contents of a container to which
such a pump may be applied.
In liquid dispensing pumps adapted for application to
and sale with containers for various commercially dis-
pensed liquids, it has been heretofore known, as exempli-
fied by the Lohse U. S. Patent 2,119,884, to utilize a
protective cover for immobilizing the pump plunger in a
predetermined depressed condition and also for trapping
and retaining any liquid that may be inadvertently dis-
charged from the pump. * * * It has been found, how-
ever, that in practice a very appreciable amount of liquid
may be discharged into such a protective cap due to
inversion of the container and/or expansion of its con-
tents. In such case, the liquid may escape either through
the usual liquid discharge passage of the plunger and the
3]
plunger head, or between the plunger and the barrel in
which it works.
(* * * this is the same patent which was referred
to in Scoggin).
It is, accordingly, a primary object of the present in-
vention to provide an improved form of fluid dispensing
pump having means for retaining the plunger in im-
mobilized position and including additional means ren-
dered operative by immobilization of the plunger for
closing off the plunger discharge passage and at the
same time providing a fluid seal or block preventing
egress of the liquid between the pump plunger and its
associated barrel.
The preferred means for retaining the plunger thus
immobilized is a protective hold-down cap which is
threaded or otherwise secured to the container over the
plunger head to depress the plunger to its immobilized
position against spring pressure.
The invention further contemplates that the discharge
opening or orifice of the plunger head will be surrounded
by a frusto-conical sealing surface for cooperation with
a similar frusto-conical interior surface [45] of the pro-
tective cap whereby to prevent discharge of fluid from
the plunger head into the cap incident to application of
the cap and depression of the plunger to its immobilized
position, as well as subsequent thereto.”
(This designated frusto-conical sealing surface or cap
is the same cap that is referred to in Calmar’s SS 25 and
40).
The description of plaintiff's patented device is quite
lengthy and requires 5-1/2 pages of soft copy.
Calmar’s specifications then proceeded to describe the
sprayer pump and certain improvements made thereto for
the purpose of preventing the fluid from escaping into the
cap when the plunger or head of the sprayer head is de-
pressed. With that particular description I am not con-
cerned. because it is not that element of plaintiffs’ com-
mercial device which is alleged infringed. The description
of this element of plaintiffs’ patented device is designated
as a “Primary Seal”, whereas that portion of plaintiffs’
32
device with which we are concerned, is contained within
the hold-down cap and collar.
There is also fully described in plaintiffs’ specifications
what we have been referring to as the seal between the
threads on the collar attached to the container cap and the
top of the hold-down cap. The specifications are spelled
out in great detail. Significant of this language, I quote the
following:
“In order to effect a liquid tight sealing engagement
between the cap and the collar, the collar is formed
with an upwardly presented groove inwardly of its
threaded outer wall for reception of a depending annular
sealing ring on the cap. The dimensions of the groove
and sealing ring are so related that the sealing ring pref-
erably makes a jamming fit into the groove.
[46] It is preferred that the cap be of resilient material in
order that its conical interior sealing surface may form
a fluid tight sealing engagement with the conical periph-
eral surface of the spray head and also so that its sealing
ring may form a yielding fluid tight fit within the groove.
Where the cap is thus formed of resilient plastic, how-
ever, it is subject to the usual and known difficulty that
excessive tightening of the cap, as by automatic capping
mechanism, may tend to expand the lower edge of the
cap skirt so that the threads of the cap will override and
become disengaged from the threads on the collar. How-
ever, the depending ring or skirt in addition to perform-
ing its sealing function, will resist such expansion
tendency and thus adapt the resilient material caps for
efficient application by automatic capping mechanism.”
There are twenty claims in Calmar’s invention. Its
Claim 11 is particularly significant:
“In a fluid dispensing pump, the combination with a
generally vertical cylindrical pump barrel having at its
upper end a collar having threads thereon, of a plunger
reciprocally disposed in said barrel and having at its
upper end and above said collar a discharge head hav-
ing a discharge orifice for fluid, spring means acting be-
tween said barrel and plunger for urging said plunger
33
upwardly in said barrel, a check valve associated with
said barrel to prevent downward movement of fluid
therein, said plunger being forced to provide a discharge
passage extending therethrough and communicating with
said discharge orifice, a protective cap dimensioned
to embrace said discharge head, said cap having a skirt
for engagement with the threads on said collar to hold
said plunger in a depressed and immobilized position
against the action of said spring means, coacting sealing
surfaces on said plunger and collar, said sealing surfaces
being engaged when said cap is threaded on said collar
to seal said barrel to prevent leakage externally of said
plunger, means operable when said plunger is depressed
and immobilized to seal said discharge passage to prevent
leakage internally of said plunger, said last named
means comprising a sealing ring surrounding said dis-
charge orifice and having a contour conforming with the
contour of the interior surface of said cap and positioned
for sealing engagement with said cap in the depressed
and immobilized position of said plunger, and coacting
sealing surfaces on said cap and collar to contain within
said cap liquid escaping from a defective seal either
externally or internally of said plunger.”
[47] Stripped of the technical language, if I correctly un-
derstand the teaching of the Calmar patent, it simply
means it has made some improvements in its old basic
sprayer by providing seals within the structure of the
sprayer thus preventing the escape of fluid when it is in a
depressed position.
The accused device is the Calmar SS-40. It conforms
in almost all respects to the Corsette-Cooprider patent.
As I have said, it contains modifications of the basic sprayer
in addition to the hold-down cap and collar elements which
are alleged to infringe defendant’s patent. These modifica-
tions are not in issue here, and it is only the problem
solving combination of the collar to cap seal and the hold-
down cap that is alleged to infringe.
Specifically, the Calmar seal is formed by a circum-
ferential groove in the top of the collar secured to the
container cap and a tongue or projection formed in the
hold-down cap to conform to the groove in the collar, so
34
that when the hold-down cap is screwed down on the collar,
the upper tongue is pressed into the lower groove, thus
forming a seal. This, in plaintiffs’ evidence, is designated
a “secondary” seal; also as a “labyrinth” seal, and differs
from Scoggin’s, which described a square shoulder which
comes in contact with the projection or tongue circum-
ferentially formed around the collar.
[48] In the Scoggin patent it may be said that there are
three contacting surfaces formed by a union of the above
shoulder and the below projecting tongue, whereas in the
plaintiffs’ accused device. there seems to be four contact-
ing surfaces that are comparable to ordinary tongue-and-
groove hardwood flooring.
We may assume, as an ordinary principle of mechanics,
that if tongue and grooved objects are precisely scaled,
when they are put together, they will form a perfectly
tight union; the tongue and groove conforming exactly to
each other’s dimensions and the outer portions of the
groove being perfectly dimensioned to the outer edges or
portions of the tongue wil! likewise form a perfect union,
and all coming in contact without any space in any area.
That is not true, I believe with either defendant’s patent
or plaintiffs’ accused device. This may be attributed to
manufacturing imperfections and to the type of material
used, as it is pliable and subject to distortion under pres-
sure. This characteristic of the material is, to a great
degree, responsible for the establishment of the seal.
So far as outward appearances are concerned, plaintiffs’
accused device and defendant’s patented device are iden-
tical, and it is necessary to make a close inspection of the
inner portions of the hold-down caps to determine the
precise form of the seals.
[49] Structurally, the only significant difference between
the collars and hold-down caps of defendant’s patent and
plaintiffs’ accused device is the provision for the shoulder
and tongue on defendant’s, and the labyrinth on plaintiffs.
Infringement is a question of fact. Stilz v. U. S., 269
U. S. 144, Graver Tank and Mfg. Co. et al. v. Linde Air
Products Co., 339 U. S. 605. The burden of proof is on the
party alleging infringement. Cammeyer v. Newton, 94
U. S. 225, Bene v. Jeantet, 129 U. S. 683. The test of in-
35
fringement was set out by the Supreme Court in Sanitary
Refrigeration Co. v. Winters, 280 U. S. 30, at 41-42 where
it said:
“There is substantial identity constituting infringe-
ment, where a device is a copy of the thing described by
the patentee ‘either without variation, or with such varia-
tions as are consistent with its being the same thing’
Burr v. Duryee, 1 Wall 531, 537. * * * Generally speak-
ing, one device is an infringement of another ‘if it per-
forms substantially the same function in substantially
the same way to obtain the same result.’ * * * Authori-
ties concur that the substantial equivalent of a thing, in
the sense of the patent law, is the same as the thing
itself; so that if two devices do the same work in sub-
stantially the same way and accomplish substantially
the same result, they are the same even though they
differ in name, form or shape.’ ”
Plaintiffs’ commercial device, insofar as the sealing in
the hold-down cap and the protection of the sprayer head
are concerned, perform the same function in substantially
the same manner performed by defendant’s.
Upon a close inspection of the devices, it is difficult to
see how they could be much more similar and yet have
any different features.
[50] IT IS THEREFORE my conclusion that plaintiffs’
commercial device infringes Claims 1 and 2 of defendant’s
patent.
Richard M. Duncan
Judge
Dated: June 19, 1963
The parties hereto may submit form of Judgment Entry
in accordance herewith within fifteen days.
JUDGMENT
Executed by Judge Duncan
July 31, 1963
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
CALMAR, INCORPORATED, ‘
Plaintiff
v. > No. 12349-3
COOK CHEMICAL COMPANY,
Defendant )
COLGATE-PALMOLIVE COMPANY, )
Plaintiff
Vv. ' No. 13006-3
COOK CHEMICAL COMPANY.
Defendant
4
The above entitled actions having been consolidated for
trial on the issues of validity and infringement of U. S.
Letters Patent No. 2,870,943, and having come on to be heard
before the court upon the pleadings, including the com-
plaints and defendant’s answers and counterclaims, wit-
nesses having been heard in open court, evidence having
been presented, briefs having been filed in behalf of the
respective parties, the causes having been fully tried
before the court, and the court having entered “MEMO-
RANDUM OPINION, FINDINGS OF FACTS, AND CON-
CLUSIONS OF LAW” dated June 19, 1963, it is now
ORDERED, ADJUDGED, AND DECREED as follows:
1. That Cook Chemical Company, defendant, is the
owner of United States Letters Patent No. 2,870,943, issued
to it on the twenty-seventh day of January, 1959, in the
name of Baxter I. Scoggin, Jr., and entitled “Pump-Type
Liquid Sprayer Having Hold-Down Cap”.
[52] 2. That Claims 1 and 2 of said Scoggin Patent No.
2,870,943, are good and valid in law.
37
3. That the plaintiff, Calmar, Incorporated, has infringed
Claims 1 and 2 of said patent by the manufacture and sale
of its model SS-40 sprayer, and that the plaintiff, Colgate-
Palmolive Company, has infringed said Claims 1 and 2 by
the use and sale of said model SS-40 sprayer.
4. That plaintiffs are not entitled to any of the relief
prayed for in their respective complaints, and that the
same are hereby dismissed upon their merits.
5. That plaintiffs, Calmar, Incorporated and Colgate-
Palmolive Company, and their officers, agents, servants,
employees and attorneys, and all persons in active concert
or participation with them or either of them are hereby
permanently enjoined and restrained from making, using
or selling sprayers of the kind known as Calmar model SS-
40, or any other sprayer or device embodying the inventions
of Claims 1 and 2 of said Letters Patent No. 2,870,943. The
injunctions hereinabove granted in these causes are hereby
suspended for a period of 30 we from the date of entry
of this judgment.
6. That defendant is entitled to recover damages, to-
gether with interest and costs, as provided by title 35 U.S.C.
section 284, and to an accounting to ascertain the amount
thereof, as a result of the acts of infringement adjudged
herein.
7. That these causes may be brought up upon motion
of defendant to proceed with such accounting, and for
determination of the right of defendant to an award of
reasonable attorneys’ fees as provided by title 35 U.S.C.
section 285, either before the court or such special master
as the court may appoint.
[53] 8. This is to certify, pursuant to Rule 54(b) of the
Federal Rules of Civil Procedure, that there is no just
reason for delay in entering this final judgment for defend-
ant on the issues of validity and infringement of said
Letters Patent No. 2,870,943 on Count I of defendant’s
counterclaim against plaintiff, Colgate-Palmolive Company,
on the Complaint of plaintiff, Colgate-Palmolive Company,
on defendant’s counterclaim against plaintiff, Calmar, Inc.,
38
and on the Complaint of plaintiff, Calmar, Inc.; and the
Court hereby expressly directs the entry of such judgment.
Richard M. Duncan
United States District Judge
[54] ORDER ADMITTING IN EVIDENCE CERTAIN
DOCUMENTS and OVERRULING MOTION
FOR NEW TRIAL
(Filed in United States District Court on November 4,
1963)
These cases were filed in this court on April 27, 1959,
and October 5, 1960, respectively, and thereafter came on
for trial beginning March 5, 1962. Following trial before
the court, it was taken under advisement, briefs and re-
ply briefs were filed, and finally, on June 19, 1963, the
court entered Findings of Fact and Conclusions of Law.
On June 31, 1963, judgment was entered determining
the ownership of the Patent involved in the controversy.
[55] Thereafter, on August 9, 1963, Motions were filed by
each of the plaintiffs, “For a new trial under Rule 59 of
the Federal Rules of Civil Procedure or, alternatively, to
reopen the record for the purpose of admitting in evidence
certain documents attached hereto.”
It was contended by the plaintiffs that they had no
knowledge or information of the forfeited patents prior
to the entering of the judgment in this case, and that they
had made timely demand on the defendant for the pro-
duction of all documents pertaining to the patented de-
vice, and that the information, although in the possession
of the defendant Cook Chemical Company, was not pro-
duced by it.
It is further the contention of the plaintiffs that had
these documents been before the court at the time the
case was tried, they likely would have changed the re-
sults of the court’s Findings of Fact and Conclusions of
Law. It is defendant’s contention that such documents
are cumulative.
I have examined the documents attached to plaintiffs’
motions, and have re-read the Findings of Fact and Con-
clusions of Law.
It is my conclusion that had the documents been be-
fore the court at the time of the trial, and at the time of
the court’s findings, that they would not have changed
the court’s Findings and Conclusions.
[56] It is defendant’s further contention that due dili-
gence was not shown by the plaintiffs in bringing these
matters to the attention of the court.
I do not believe it is necessary to pass upon that ques-
tion, and the documents will be admitted.
The court having duly considered plaintiffs’ Motions
for New Trial, and the briefs in support of and in opposi-
tion thereto, said motions are now here overruled.
Richard M. Duncan
Judge
Dated: November 4, 1963
[57] NOTICE OF APPEAL TO THE UNITED STATES
COURT OF APPEALS FOR THE EIGHTH
CIRCUIT
(Filed in United States District Court on November 14,
1963)
IN THE UNITED STATES DISTRICT COURT FOR
THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
CALMAR, INC., q
Plaintiff,
vs. F No. 12349-3
COOK CHEMICAL COMPANY,
Defendant. J
COLGATE-PALMOLIVE COMPANY,
Plaintiff,
VS. - No. 13006-3
COOK CHEMICAL COMPANY 3
Defendant. |
Notice is hereby given that Calmar, Inc., and Colgate-
Palmolive Company, Plaintiffs above named, hereby ap-
40
peal to the United States Court of Appeals for the Eighth
Circuit from the final judgment entered in this action on
the 3lst day of July, 1963, on the record as amplified by
the Order of the District Court filed November 4, 1963.
Morrison, Hecker, Cozad & Morrison
Attorneys for Plaintiff, Calmar, Inc.
By William H. Curtis
1701 Bryant Building
Kansas City 6, Missouri
[58) Lathrop, Righter, Gordon & Parker
Attorneys for Plaintiff, Colgate-Palm-
olive Company
15 West Tenth Street
Kansas City 5, Missouri
Of Counsel:
Francis G. Cole
Robert F. Conrad
Watson, Cole, Grindle & Watson
815 Fifteenth Street, N.W.
Washington 5, D. C. 20005
[59] (DOCKET ENTRIES IN UNITED STATES
DISTRICT COURT IN No. 12349-3)
IN THE DISTRICT COURT OF THE UNITED STATES
FOR THE WESTERN DISTRICT OF MISSOURI
WESTERN DIVISION
CALMAR, INCORPORATED,
Plaintiff-Appellant.
vs.
COOK CHEMICAL COMPANY,
Defendant-Appellee.
Apr. 27, 1959 Complaint filed
Aug. 14, “ Answer and Counterclaim filed.
Aug. 20, “ Answer to Counterclaim filed.
Nov. 16,
May 25,
June 19,
July 7,
1960
“
1962
41
Interrogatories by plaintiff to defendant
filed.
Defendant’s answers to interrogatories
filed.
Defendant’s Motion for leave to amend
with suggestions in support filed.
Plaintiff's Memorandum in opposition to
defendant’s Motion for leave to amend;
supporting affidavits of Bruce S. Shan-
non and Francis G. Cole filed.
Respective parties appear by counsel be-
fore the Honorable Richard M. Duncan,
Judge, at Kansas City, Missouri, for hear-
ing on motion of defendant for leave to
amend answer by adding counterclaim for
declaratory judgment. Arguments are
made on the motion and submitted to the
Court, which takes the matter under ad-
visement.
Order overruling Motion for leave to
amend filed.
Amended answer to counterclaim (with
consent of defendant) filed.
Motion to consolidate this cause with
cause #13006-3 with memorandum in
support thereof filed by defendant.
Parties appear by counsel for hearing on
defendant’s Motion to consolidate with
causé #13006. Evidence is heard and
thereafter the defendant’s motion to con-
solidate is by the court taken under ad-
visement.
Order filed. (Motion to consolidate this
cause with the first count of case #13006
is by the court sustained.)
Stipulation filed.
Stipulation filed.
Respective parties appear by counsel and
announce ready for trial. Trial is to the
Court. Defendant presents testimony—
Mar. 6, “
me ec
eee? GF
[60]
Mar. 9, 1962
bee 4.”
ae
said testimony not being completed at the
hour of adjournment, trial to be con-
tinued tomorrow, Tuesday, March 6, 1962,
at 10:00 A.M.
Trial is continued. Defendant continues
testimony.
Defendant’s testimony not being com-
pleted at the hour of adjournment, fur-
ther proceedings are postponed until to-
morrow.
Tria! is resumed. Defendant continues
testimony and rests. Plaintiffs make open-
ing statement. Plaintiffs present testi-
mony. Plaintiffs testimony not completed
at the hour of adjournment—Trial to be
continued tomorrow.
Trial is resumed. Plaintiffs continue tes-
timony. Plaintiffs testimony not com-
pleted at the hour of adjournment—Trial
to be continued tomorrow.
Trial is resumed. Plaintiffs complete
testimony and rest. Defendant presents
rebuttal testimony and rests. Upon com-
pletion of all the evidence the case is sub-
mitted to the Court which takes the mat-
ter under advisement. The Court directs
that defendant’s brief be filed within
thirty (30) days from this date. Plain-
tiffs’ brief to be filed fifteen (15) days
thereafter, and defendant’s reply brief
thereto be filed within fifteen (15) days
thereafter. Richard M. Duncan, Judge.
Motion for order reopening hearing and
confirming admission of Evidence filed.
Order filed. (granting the admission of
evidence)
Defendant’s Proposed Finding of Fact and
Conclusions of Law filed.
Stipulation filed.
June 19, 1963
July 31,
Aug. 9,
“
43
Plaintiffs’ proposed Finding of Fact and
Conclusions of law filed.
MEMORANDUM OPINION, FINDINGS
OF FACT AND CONCLUSIONS OF LAW
filed. (Plaintiffs’ commercial device in-
fringes Claims 1 and 2 of defendant’s Pat-
ent—parties to submit form of judgment
entry within 15 days)
JUDGMENT FILED. (Cook Chemical
Company is owner of Letters Patent No.
2870943; claims 1 and 2 of Scoggin Patent
No. 2870943 are good and valid. Plaintiff
has infringed claims 1 and 2 by the use
and sale of model SS-40 sprayer. Plain-
tiff not entitled to relief prayed for in
complaint and complaint is dismissed upon
its merit. Plaintiff permanently enjoined
and restrained from making, using or sell-
ing Calmar model SS-40 sprayer or any
sprayer embodying the inventions of
claims 1 and 2. Defendant entitled to re-
cover damages with interest and costs as
provided by Title 35, U.S.C. Section 284,
and to an accounting. These causes may
be brought up upon motion of defendant
to proceed to such accounting and for de-
termination of the right of defendant to
an award of reasonable attorneys’ fee,
either before court or special Master. The
Court further certifies that pursuant to
Rule 54(b), there is no just reason for
delay in entering this final judgment and
expressly directs the entry of such judg-
ment. Injunction suspended for a period
of thirty days. Judge Richard M. Duncan
Motion by Plaintiff for New Trial under
Rule 59(b) of the Federal Rules of Civil
Procedure or, alternatively, to reopen the
record for the purpose of admitting in
evidence certain documents attached
hereto with affidavits of Robert F. Con-
rad and Francis G. Cole in support filed.
Dec.
“
Affidavit of Gordon D. Schmidt filed.
Order admitting in evidence certain docu-
ments and overruling Motion for New
Trial filed. ;
Plaintiff’s Notice of Appeal filed. (Serv-
ice to counsel for the defendant by Plain-
tiff)
Plaintiff's Motion for Supersedeas under
Rule 62(d) and 73 with suggestions in
support filed.
Motion to suspend injunction pending ap-
peal filed.
Order sustaining Motion to suspend in-
junction pending appeal and fixing bond
at $100,000.00 filed.
Bond for costs on appeal filed.
Order filed. (It is further ordered that
Colgate-Palmolive Company, plaintiff in
Cause No. 13006, be and is hereby not
required to execute a bond pending ap-
peal: Provided that Calmar, Inc., the
Plaintiff in Consolidated Cause No. 12349,
shall execute a bond in the sum of
$100,000.00, and on the further condition
that the appeal be prosecuted expedi-
tiously. )
Bond on Stay of Injunction during appeal
filed.
[61] (DOCKET ENTRIES IN UNITED STATES
DISTRICT COURT IN No. 13006-3)
IN THE DISTRICT COURT OF THE UNITED STATES
FOR THE WESTERN DISTRICT OF MISSOURI
Oct.
Nov.
Feb.
June
July
Aug.
Aug.
Aug.
Aug.
Aug.
Sept.
Sept.
WESTERN DIVISION
COLGATE-PALMOLIVE COMPANY,
Plaintiff-Appellant.
vs.
COOK CHEMICAL COMPANY,
Defendant-Appellee.
5, 1960 Complaint filed.
30,
21,
“c
1961
“
“
Answer to Complaint and Counterclaim
filed.
Plaintiff’s reply to defendant’s counter-
claim filed.
Interrogatories to Plaintiff filed.
Plaintiff's Interrogatories to defendant
filed.
Plaintiff's objections to certain interroga-
tories filed by defendant with suggestions
in support thereof filed.
Answers to interrogatories propounded by
defendant filed.
Order filed. (Plaintiff’s objection to in-
terrogatory No. 5 is overruled, the objec-
tions to interrogatories Nos. 6, 7 and 24
are sustained.)
Objections to certain interrogatories pro-
pounded by plaintiff—suggestions in sup-
port of objections filed by defendant.
Answer to plaintiff’s interrogatories filed.
Order sustaining defendant’s objections to
interrogatories 17(e) and (f) filed.
Plaintiff's answer to defendant’s interrog-
atory No. 5, filed.
Supplemental Interrogatory to defendant
filed.
Nov.
Mar.
és
“
“
Answer to plaintiff’s supplemental inter-
rogatory to defendant filed.
Motion to consolidate this cause with
cause 712349—suggestions in support
filed.
Order sustaining objections to interroga-
tories 45 and 46 filed.
Parties appear by counsel for hearing on
defendant’s Motion to consolidate with
cause No. 12349. Evidence is heard, and
thereafter, the defendant’s Motion to con-
solidate is by the Court taken under ad-
visement.
Order filed. (Motion to consolidate Case
No. 12349 with the first count of this case
is by the court sustained.)
Stipulation filed.
Defendant’s Motion under Rule 34 with
suggestions in support filed.
Respective parties appear by counsel and
announce ready for trial. Trial is to the
Court. Defendant make~ pening state-
ment. Plaintiff reserves opening state-
ment. Defendant presents testimony—
said testimony not being completed at the
hour of adjournment, trial to be continued
tomorrow, Tuesday, March 6, 1962, at
10:00 a.m.
Trial is continued. Defendant continues
testimony. Defendant’s testimony not
being completed at the hour of adjourn-
ment, further proceedings are postponed
until tomorrow.
Trial is resumed. Defendant continues
testimony and rests. Plaintiffs make
opening statement. Plaintiffs present
testimony.
Trial is resumed. Plaintiffs continue
testimony.
[62]
47
Mar. 9, 1962 Trial is resumed. Plaintiffs complete testi-
July 31,
6c
“
1963
“
mony and rest. Defendant presents re-
buttal testimony and rests. Upon com-
pletion of all the evidence the case is sub-
mitted to the Court which takes the mat-
ter under advisement.
The Court directs the defendant’s Brief
be filed within 30 days from this date;
Plaintiff's brief to be filed fifteen (15)
days thereafter, and Defendant’s Reply
brief thereto be filed within fifteen (15)
days thereafter. Richard M. Duncan, Judge
Motion for Order reopening hearing and
conforming admission of evidence filed.
Order filed. (Granting the admission of
evidence)
Defendant’s proposed Finding of Fact and
Conclusions of law filed.
Stipulation filed.
Plaintiffs’ proposed finding of fact and
conclusions of law filed.
Order filed. (Sustaining in part and
overruling in part, defendant’s Motion to
produce)
MEMORANDUM OPINION, FINDINGS
OF FACT AND CONCLUSIONS OF LAW
filed. (Plaintiffs’ Commercial device in-
fringes claims 1 and 2 of defendant’s Pat-
ent—Parties to submit form of judgment
entry within 15 days.)
JUDGMENT FILED. (Cook Chemical
Company is owner of Letters Patent No.
2870943; claims 1 and 2 of Scoggin Patent
No. 2870943 are good and valid. Plain-
tiff has infringed claims 1 and 2 by the
use and sale of model SS-40 sprayer.
Plaintiff not entitled to relief prayed for
in complaint and complaint is dismissed
upon its merit. Plaintiff permanently en-
joined and restrained from making, us-
ing or selling Calmar model SS-40 sprayer
or any sprayer embodying the inventions
of claims 1 and 2.
Defendant entitled to recover damages
with interest and costs as provided by
Title 35, U.S.C. Section 284, and to an
accounting. These causes may be brought
up upon motion of defendant to proceed
to such accounting and for determination
of the right of defendant to an award of
reasonable attorneys’ fee, either before
court or special Master. The Court fur-
ther certifies that pursuant to Rule 54(b),
there is no just reason for delay in en-
tering this final judgment and expressly
directs the entry of such judgment. In-
junction suspended for a period of thirty
days. Judge Richard M. Duncan.
Motion by Plaintiff for New Trial under
Rule 59 of the Federal Rules of Civil Pro-
cedure or, alternatively, to reopen the
record for the purpose of admitting in
evidence certain documents attached
hereto with affidavit of Jack W. R. Head-
ley filed.
Affidavit of Gordon D. Schmidt filed.
Order admitting in evidence certain docu-
ments and overruling Motion for New
Trial filed.
Plaintiff's Notice of Appeal filed. Serv-
ice to counsel for the defendant by Plain-
tiff.
Plaintiff's Motion for Supersedeas under
Rule 62(d) and Rule 73 with suggestions
in support filed.
Plaintiff's Motion to suspend injunction
pending appeal filed.
Order sustaining Motion to suspend in-
junetion pending appeal and fixing bond
at $100,000.00 filed.
Bond for costs on appeal filed.
Dec. 4, ‘“ Order filed. (It is further ordered that
Colgate-Palmolive Company, plaintiff in
49
Cause No. 13006 herein, be and is hereby
not required to execute a bond pending ap-
peal: Provided that Calmar, Inc., the
Plaintiff in Consolidated Cause No. 12349,
shall execute a bond in the sum of
$100,000.00, and on further condition that
the appeal be prosecuted expeditiously.)
[63] TRANSCRIPT OF PROCEEDINGS
IN THE UNITED STATES DISTRICT COURT FOR THE
WESTERN DISTRICT OF MISSOURI WESTERN
DIVISION ‘i
CALMAR, INCORPORATED, 7
Plaintiff,
vs pa
COOK CHEMICAL COMPANY,
Defendant. ;
COLGATE-PALMOLIVE .
COMPANY,
Plaintiff,
vs ‘
COOK CHEMICAL COMPANY,
Defendant. )
* * *
No. 12349
No. 13006
[65] Mr. Headley: Your Honor, we would like to make
one further statement right at the opening of this case,
and I make this on behalf of the plaintiff Colgate: We
would like to have the understanding and the permission
of the Court that any evidence adduced by the plaintiff
Calmar in this case shall also be taken and considered as
evidence of the plaintiff Colgate.
The Court: That is as to the patent?
Mr. Headley: Also on these questions of infringement.
50
The Court: That is what I mean.
Mr. Headley: And any objections made by the plain-
tiff Calmar in this case or stipulations or statements will
also be considered as made by the plaintiff Colgate unless
otherwise excepted to.
The Court: Is that agreeable?
Mr. Schmidt: That is agreeable, your Honor.
The Court: Very well.
* * *
[80] DEFENDANT'S CASE
Whereupon, the defendant, to sustain the issues in
its behalf, offered testimony, oral and documentary, and
made the following admissions, to-wit:
[81] Mr. Schmidt: I will call Mr. Ralph Martin to the
stand.
RALPH G. MARTIN,
being produced, sworn and examined as a witness on
behalf of the defendant, testified as follows:
Direct Examination by Mr. Schmidt.
Q. Will you state your name and address, please? A.
Ralph G. Martin, 221 West 48th Street, Kansas City, Mis-
souri.
Q. You are associated with Cook Chemical Company
as president, is that not correct? A. Yes, and have been
since 1954. Prior to that I was the executive vice-presi-
dent and general manager, beginning in 1944.
The Court: President of what?
A. Cook Chemical Company.
* * *
[82] Q. When did you get into household insecticides?
A. We started household insecticides in 1945, which is
when DDT came on the market. We were the first ones
to put DDT on the market.
Q. How did you market it? A. In pint bottles, quart
bottles and gallon cans.
51
Q. When it reached the cow, how was it applied? A.
Not at that time, it was applied by tin sprayers they might
have purchased. We had no sprayers at all.
Q. You say “tin sprayers”? A. Tin, chemical spray-
ers.
Q. How were they made? A. There were several
manufacturers. We did not do it.
[83] Q. You did not furnish any sprayers? A. Not in
1945.
Q. At a later date I understand you started to use a
plastic type pump sprayer? A. That is true. In 1945,
we were the first to manufacture, with a full page
two-color ad and raise the price to permit this kind of
promotion. In 1947, we put the first sprayer on the
bottle, attached it with cardboard to the bottle. This was
put on the quart bottle as a sales promotion gimmick. It
became so successful that the following year we had to
put it on the pint bottles. We tried to merchandise with
the quart and the pint with sprayer and without the
sprayer but we found the public would not take the
bottle that did not have a sprayer attached.
* ” *
[84] Q. Mr. Martin, I hand you a plastic type of sprayer
that has been marked for identification as Defendant’s
Exhibit Number 16, and I ask you whether or not you
can identify that sprayer for us? A. Yes, this looks like
the original sprayer that we used in 1947 as a Calmar
sprayer.
Q. You believe that as a matter of fact it is one of
the early sprayers. A. Yes, I think so.
Q. I hand you now an empty bottle marked “Real-Kill”
and identified as Defendant’s Exhibit Number 12 and ask
that you tell us what that is. A. Well, this is similar
to the first product we put out. Our first name was
Cook-Kill. This is a Real-Kill bottle, but this is similar
to the way we attached the sprayer.
Q. Now, that exhibit does show, does it not, a sprayer
hanging on the side of the bottle? A. That is true.
Q. Is that correct? A. That’s true.
52
Q. Will you state for the record the manner in which
it is caused to hang on the side of the bottle? A. Well,
it is a paper holder that has a hole that the sprayer can
fit into, and the hole can be applied over the cap so that
we can fit the neck of the bottle through there.
[85] Q. I notice that that holder is made from card-
board, and I ask you to look at Defendant’s Exhibit Num-
ber 14 and tell us whether or not that device was ever
used for a comparable purpose? A. Yes, we paid for
the molds on this plastic holder, and this was also made
for us by Calmar. I don’t recall the year, but we were
trying to get a better device than what we had.
Q. Now, what was the purpose, Mr. Martin, for hang-
ing the sprayer on the side of the bottle in the first place?
A. Well, so the housewife would have a convenient sprayer
to use rather than go look up the tin sprayer that she
might have used before, or use a paint brush, such as
they did.
Q. Well, could not the sprayer have been sold sepa-
rately from the bottle without having any affixation to
it at all? A. There would be no reason why it could
not have been sold separately.
Q. What advantage, then, did you achieve by using
a device for hanging it on the bottle? A. Well, we sell
through food brokers, and the grocery stores are very
reluctant to buy two different items for the same pur-
pose. In other words, they want a one-package deal,
if they can get it.
Q. Now, did that prove to be satisfactory as a pack-
age? [86] A. Well, it was far more satisfactory, or it stimu-
lated sales greater than when we did not have sprayers
on the bottle. It was a sales stimulant, but, of course,
we ran into a number of problems.
Q. Did you look upon this as the ultimate or the final
answer? A. No, sir, we did not.
Q. What problems, if any, existed because of that ar-
rangement? A. Well, there was a problem that the dip
tube would not extend to the bottom of the bottle because
it could not be packaged and shipped that way.
Q. What do you mean by the dip tube? A. The tube
that extends into the bottle itself.
53
Q. Is that the tube by which the liquid is drawn from
the container by the pump? A. That is right.
Q. Very well, proceed. A. We also found there was
a good deal of pilferage of the sprayer itself because it
was hung on there in a very instable manner, as you can
see.
Q. Where did that pilferage occur? A. At the grocery
store level, mainly.
Q. And what was the reason for such pilferage, if you
knew? A. Well, of course, we have had many people
write in that they use the sprayer for various things, like
sprinkling clothes, [87] and I presume that that was one
of the motivating factors.
Q. Did you experience any other difficulty with the
idea of providing a package having a sprayer hanging on
the side? A. Oh, yes. We had breakage in shipment,
which was quite annoying. That dip tube is very fragile.
We also had problems in packaging. It, as I recall, took
about four girls to put the collar over the neck of the
bottle. It took about four girls to put the sprayer into
the holder of the—of the plastic—
Q. You mean— A. —of the cardboard ring. It also
took an extra girl to put the finished package into a
carton because of the sprayer hanging on in that manner.
Q. Did you find at any time that you had any competi-
tors that utilized much the same manner of packaging a
sprayer with a bottle? A. Later that was the case. In
other words, we were feeling pretty good about the situ-
ation. We had taken a common industry and made some-
thing of it. I don’t think there is any question that we
might say that we made insecticides respectable to
where it was a pleasure for the retailer to handle them
because of the profit, and it was a pleasure for the broker
to handle them because of the profit. This hadn’t been
the case before. They had been sold as cheap fly sprays.
And we had very little competition until 1954.
[88] Q. What was the nature of the competition com-
mencing in 54? A. Well, in ’54 Johnson Wax got into
the market, also Colgate got into the market, and Simoniz
actually run two test markets. We were quite pleased
54
at the time, because educating the public is a very dif-
ficult thing, and we were spending a considerable amount
of our money and running ads, and there was an educa-
tional job needed because of the different types of insecti-
cides, and we welcomed their help as far as advertising
the uses of an insecticide were concerned.
Q. I hand you a bottle of Colgate’s Kan-Kil marked for
identification as Defendant’s Exhibit 18, and ask you
whether or not that is an example of the early competi-
tion that you had in this field? A. No, actually this one
is not. This, of Colgate—Colgate came on the market
with this product in 1958. They had originally come on
the market with an aerosol in 6-ounce cans and 12-ounce
cans only, but beginning in ’58 they put this product on
the market.
Q. Will you compare Defendant’s Exhibit 12 and De-
fendant’s Exhibit 18 and tell us the similarities, if any,
between the two packages?
oa « *”
[89] Q. (By Mr. Schmidt) Do you recall my question,
Mr. Martin? A. Yes. I thought I answered it. They
are attached with a paper collar, but the Colgate product
came on the market in 1958.
Q. Well, now, is it not true that they are attached
in substantially the same manner? A. That is true.
Q. Do you find any difference, substantial difference,
between the collars themselves that are connected to the
neck of [90] the containers? A. None.
Q. Do you find any substantial difference in the man-
ner in which the sprayers are held in place by such collars?
A. No.
Q. Tell us whether or not there were any other in-
stances of competitors adopting the idea of hanging the
sprayer on the side of the bottle in that manner? A.
Well, Raid started in 1954 with the quart and pint, hang-
ing the sprayer on the side in a similar manner that we do.
Q. Raid being the trademark covering a household
insecticide? A. Yes, of Johnson Wax.
Q. Do you recall any other instances? A. There were
some local people that used the sprayer. Prior to 1954
55
the insecticide industry was made up of a multitude of
small packagers scattered all over the United States and
almost every major city had at least one, and there were
a number of those that used the sprayer on the side.
Q. I hand you a sprayer marked for identification as
Defendant’s Exhibit Number 20. Will you tell us what
that is? A. Well, this is the sprayer that we produced
in 1956. That is that Bakan product. I say we.
Q. Now, by Bakan whom do you mean, briefly? [91]
A. Bakan was the corporation we formed to produce spray-
ers and dispensers.
Q. What was the purpose of that? A. Well, the pur-
pose of it, we wanted to find a second source of supply.
In 1954 the Calmar Company had sold their interest to
the Drackett Company. The Drackett Company were
makers of Windex and they had used many millions of
bottles of window cleaner, and they were also buying a
sprayer from Calmar. We could not be sure whether
they would attempt to attach a bottle—a sprayer to the
bottle or not. There was only one substantial supplier
and that was Calmar. We had tried to find other sup-
pliers of sprayers so that we could have a second source.
without success. In other words, we tried to improve
the sprayer through Calmar and tried to find other
sources that would give us a better package than this.
[92] Q. Tell us now, briefly, the attempts, if any, made
either by Calmar Company or by yourselves, Cook
Chemical Company, prior to 1956 to come up with a better
type of package than hanging the sprayer on the side of
the bottle. A. Well, I presume that we tried to induce
Calmar to do something about this situation as early as
1949 because of the problems I have mentioned. Now, it
was either ’51 or 52 when they brought us what I refer
to as a lock-down sprayer that could be shipped directly
in the carton and eliminate some of these problems we
had.
Q. I hand you Defendant’s Exhibit 26 and ask you
whether or not that is representative of the so-called lock-
down sprayer that you just mentioned? A. Yes, it is.
56
Q. Tell us about that sprayer. What do you mean by
lock-down? What was its purpose? [93] A. Well, you
could depress the head into slots and turn it and it would
keep the spring depressed, and the purpose, of course, was
that it could be shipped in the bottle and it wouldn’t be
hung on the side It would make a neater looking pack-
age.
Q. Now, that particular type of so-called lock-down
sprayer was in fact submitted to you as an answer to your
problem by Calmar Company? A. That is true. I’m
sure that it was made at our request.
Q. When you received that as a supposed answer to
your problems, what were your reactions? A. Well, it
never got out of the laboratory actually, because we im-
mediately discovered that the sprayer would leak down
the stem, and we also discovered very quickly that it
would break in shipping, the head would break off.
Q. Do you know of any instance where that type of
lock-down sprayer was actually placed in use by anyone
in the commercialization of household insecticides? A.
Oh, yes.
Q. By whom? A. By Johnson Wax in their product
Raid. Nineteen hundred and fifty eight was the year they
came out with it.
* * *
[94] Q. (By Mr. Schmidt) Do you recall what desig-
nation was given to that type of sprayer by Calmar Com-
pany? A. I believe it was the SS 25, if I remember cor-
rectly.
Q. Now, back to Defendant’s Exhibit Number 24—
* * *
which was originally marked as Defendant’s Wise deposi-
tion Exhibit 5 on May 25, 1960. Identify that exhibit and
explain what it is all about, please. A. Well, this product
came on the market in 1958. This was the answer to our
sealed-in sprayer that we used late in ’57, 1957. Now,
actually the first shipments didn’t come [95] on the market
this way with this cellophane collar or cello-seal cover
over the sprayer. They first came on the market, to my
recollection, with a cardboard cylinder that fitted over here
57
to protect the sprayer head. I think this was done after
they discovered that they, too, had some breakage in ship-
ment of this article, this insecticide.
Q. Now, first off, what is the product in the can that
you are holding, Exhibit 24? A. Well, it is Raid, roach
and ant killer, a liquid insecticide.
Q. All right. Secondly, what is the nature of the
sprayer in the container? A. The nature of the—
Q. Sprayer. A. Well, the sprayer is similar to the
sprayer that we used hanging on the outside of the pack-
age, except with a lock-down feature here in the collar.
Q. Is it in any way comparable to Defendant’s Exhibit
26? A. Yes, I’m sure it is the same sprayer.
Q. Again, we have the so-called lock-down S 25 Cal-
mar sprayer in the Raid container, is that correct? A. Oh,
yes.
Q. Now, you mentioned a hood or cover? A. Yes.
Q. What is it like? What's it for? [96] A. Well,
I think they would call it a cello-seal, and they have it
in a liquid, and when they push it over here it shrinks
down and seals the sprayer and the cap together. Now,
there’s no question that this was an attempt to contain
the liquid that was flowing down the stem, and actually
when products are shipped, shippers sometimes invert the
cases, and when they do the liquid would run down the
stem and discolor the carton. Actually, the cello-seal never
worked on the product at all. It wouldn’t contain the
liquid.
Q. Do you recall when you first saw it on the market?
A. It was in 1958.
Q. And do you know. when it was discontinued and
a substitute shipped? A. Well, I do know this, that Raid
took back thousands of cases and reworked them, and I
would say that sometime in July or August of ’58 they
called these shipments in from the market.
Q. I hand you what has been marked Defendant’s
Exhibit Number 42 and ask you to explain that. A. Well,
this is the same product, Raid’s product, the same type
of product, except it has the Calmar locked-in sprayer
that gives the same appearance as ours, the same function
actually.
58
Q. Now, approximately when did that come on the
market? [97] A. I do not know whether it came to the
market in ’58 or ’59. Insecticides all have been presold
up until recent years. By that I mean they ship several
weeks, actually several months ahead of the consuming
season and when you get to August you are about wound
up as far as business is concerned.
Q. In any event, would you say that Defendant’s
Exhibit 42 immediately followed Defendant’s Exhibit 24
on the market? <A. Oh, yes.
Mr. Headley: Mr. Schmidt, that Raid, what company
is that that puts that out?
The Witness: Johnson Wax.
[98] Q. I think the full name of the company is on this
exhibit? A. Yes, by law it has to be.
Q. Will you read it into the record, please? A. It is
S. C. Johnson & Sons, Inc.
Q. And that appears on both Exhibits 24 and 42? A.
Yes, the S. C. Johnson & Company, Racine, Wisconsin.
Q. Again before leaving Exhibit 42, the nature of the
sprayer, I understand you to say is the Calmar sprayer?
A. That is right.
Q. And which one? Is it again the lock-down type?
A. Oh, no, it is the new sprayer that came out, I don’t
know what they called it, SS-40 or something.
Q. Was it the accused sprayer here in suit? A Oh,
yes.
Q. I now hand you a sprayer that has been marked for
identification as Defendant’s Exhibit 30, and ask that you
examine it carefully. Do you recognize that sprayer? A.
Oh, yes, this is what we called our Model No. 2 sprayer
and is the first integrated sealed-in sprayer that was
manufactured. It came on the market with this in 1957.
Q. You say, “we came on the market”? A. By that
I mean Cook Chemical Company and Bakan.
Q. I hand you a bottle again of Real-Kill, marked for
identification as Defendant’s Exhibit No. 28, with a sprayer
integrated therewith, and ask you to compare that sprayer
[99] with that of Defendant’s Exhibit 30. A. It is the
identical sprayer. The coloring is different but it is the
identical sprayer.
59
Q. Would you say that Exhibit 28 represents the man-
ner which associated the sprayer, Exhibit 30, with a con-
tainer? A. That is true.
Q. Now, when did that association take place? When
does it take place? A. That took place in August of 1957.
Q. I mean when was the sprayer integrated with the
container? A. Oh, after the bottle is filled.
* + *
Q. (By Mr. Schmidt) I now hand you a sprayer
marked Defendant’s Exhibit 46, and a container with a
sprayer associated therewith, as Defendant’s Exhibit 44.
Will you tell us what those sprayers are? A. This was
the second production of our Model 2 sprayer.
Q. Is there any similarity between the two sprayers
of those two exhibits? A. Oh, yes, they are practically
identical in my conception.
[100] @. Approximately when did this type of sprayer
come on the market? A. That sprayer came on the
market I believe in December of 1959.
Q. What did you call it? <A. Still the Model 2.
Q. Now again, Mr. Martin, I hand you an individual
sprayer with a cover cap as before, marked Defendant’s
Exhibit 50, at the same time a Real-Kill container marked
Defendant’s Exhibit 48, and having a sprayer end cover
cap thereon. Will you explain those sprayers and tell
us whether or not they are the same or different? A.
Yes, sir, these sprayers are the same.
Q. Whose sprayers are they? A. They are our
sprayers.
Q. When did they come on the market? A. They came
on the market in 1960.
Q. What did you call them? A. We call them our
Model 3.
* * *
[101] Q. Tell us, Mr. Martin, now generally what these
various sprayers with cover caps attached thereto are de-
signed to accomplish. A. Well, they are designed to ac-
complish several things, to eliminate the problems that I
spoke of, that is, the dip tube extending down into the
60
container to the bottom or approximately the bottom.
They are designed to eliminate breakage in transit. They
are designed to have a better appearance on the shelf,
They are designed to allow piling in a store. They are
designed to allow pricing on the top of the sprayer. They
are designed to effect the seal between the cap and the
sprayer, and the sprayer itself so that it can be placed
on a container and the seal not affected.
Q. You spoke of several difficulties that you had with
hanging the sprayer on the side of the bottle, for example,
pilferage. Is this new package capable of alleviating the
pilfering problem? A. Yes, we have no problem of that
any more.
[102] @. Do you know why? A. Well, I assume when
you take that sprayer out, take the cap off, that you have a
bottle that isn’t sealed. It is a little more difficult for
people to get to that.
Q. You spoke of breakage in shipment with the sprayer
hanging on the side of the bottle? A. That has been
eliminated.
Q. It has been eliminated so far as the dip tube is
concerned? A. That is right.
Q. I think you testified that the dip tube is now in
the bottle at the time of shipment? A. Yes, sir, and
more or less protected.
Q. What about breakage of the rest? A. It is also
protected. The collar is designed to actually give support
to that cover cap so that it becomes a protective cap in
shipping and protects the sprayer itself.
* * *
[103] Q. Mr. Martin, can you tell us whether or not
by virtue of the particular type of the products that your
chemical company is packaging, there were special prob-
lems created insofar as developing this new package is
concerned? A. Oh, yes, there is a problem of containing
the liquid itself because it is very fluid, as you probably
notice, a petroleum solvent which is a carrier for the in-
secticide is a wetting agent in itself and will flow where
water will not. I want to say this, too, while the sprayer
that we hung on the side of the bottle in 47 was a
61
tremendous success, the sprayer when we put it inside
the container was outstanding. We were forced to replace
I don’t know how many thousands of sprayers, when they
put it inside the container. We took back many sprayers
that hung on the side.
Q. You mean to say that the container with the sprayer
hanging on the side at the retail level was returned to
you? A. Oh, yes, we couldn’t sell it at all. We still
take some back occasionally after all these years.
Q. Why is it? A. Well, the public just refused to
buy an insecticide that has a sprayer hanging on the side,
just like they refuse to buy an insecticide without a
sprayer after 1947 and prior to 1957.
Q. Was that peculiar to Cook Chemical Company or
do you know [104] whether it existed by your competitors?
A. Anyone selling insecticides have adopted that idea.
Q. Do you know whether or not the sprayer hanging
on the side of the bottle has been left on the shelves as
far as your competitors are concerned? A. Oh, yes, you
can’t sell an insecticide that way any more. You just
can’t do it.
+ * *
[105] Cross-Examination by Mr. Conrad.
(Plaintiff's Exhibit A and Plaintiff’s Exhibit B marked
for identification. )
Q. Mr. Martin, towards the end of your direct testimony
you were ielling us that it was nowadays difficult to mer-
chandise insecticides in containers unless the sprayer was
mounted in the container, as illustrated, for example, by
Defendant’s Exhibit 44. A. That’s true.
Q. Now, I understand that the first full year in which
you marketed your insecticides with the sprayer mounted
in the bottle, as illustrated by Defendant’s Exhibit 44,
was the year 1958, is that correct? A. That is true,
1958, that is true. We didn’t have that type of bottle
with the ears on it in 1958.
Q. But you did have the sprayer mounted in the
bottle? A. We did have the sprayer in the bottle.
Q. Now, prior to 1958 you had sold many thousands
of bottles of insecticide that had the sprayer mounted on
62
the side, as illustrated by Defendant’s Exhibit 12, did you
not? A. That’s true.
Q. Now, how did your sales in 1958, the year in which
you first mounted the sprayer in the bottle, compare with
your insecticide sales, say in the previous year? [106] A.
Well, I don’t have those figures before me.
Q. Do you have any reason to doubt that your sales,
total sales of insecticide, dropped by half a million dollars
during the first year that you merchandised your insecti-
cide with the sprayer mounted in the bottle? A. There
was a very good reason for that.
Q. That is the fact? A. I do not know without exam-
ining the records.
Q. Is it your recollection that there was some drop in
sales during the first year you marketed your insecticide
with the sprayer mounted in the bottle? A. I’m sorry,
that isn’t my recollection.
Q. According to your recollection was there any ap-
preciable increase in sales? A. There was none.
Q. Now, Mr. Martin, I have had marked as Plaintiff’s
Exhibit A and Plaintiff's Exhibit B two packages which
I believe were bought locally in a grocery store. I would
like you to examine them, please. Have you had an op-
portunity to look at them? A. Yes.
Q. Can you identify the sprayer units which are in-
serted in those bottles? A. Yes, they’re the Bakan
sprayer, Bakan Number 2 on this one—this is Exhibit A—
and the same appears to be [107] true on Exhibit B.
Q. I noticed in order to make your examination you
removed the caps and then replaced them. A. That is
right.
Q. Now, you noticed the conditions the bottles were in
when I handed them to you. A. Well, the cap on one was
loose.
Q. The cap on one was—you say was loose? A. Yes.
Q. Now— A. Both the container cap on one and the
overcap on one was loose.
Q. Isee. Now, have you returned them to their normal
position? A. I’m not sure that they were returned to
the position they were when you handed them to me.
63
Q. Have you returned them to their normal position?
A. I’m not sure.
Q. Would you like to examine them again? A. These
sprayers are put on, the cover cap, is put on with a marhine
that puts on an extra torque on there and this torque is
supposed to remain constant. We have nothing to do with
putting this fastener on the container itself.
Q. I see. A. So there could be some variances in
that.
Q. Well, do they look normal as you have now fixed
them? [108] A. They appear normal. I haven’t tried to
tighten them to what proper torque they shouid be.
Q. Then you have examined them carefully? A. No.
I haven’t examined them to see what torque they should
possibly be on either the cover cap or on the container.
Q. Are you familiar with the condition of your-sprayers
when the proper torque has been applied to it, to the
cover cap? A. No, that’s a technical question. I wouldn’t
be familiar with that.
Q. I now ask you to examine Plaintiff’s Exhibits A
and B again and tell me if the condition they are now in
is what you regard as representative of the sprayer units
made by you and designated Bakan 2 when they are in
use on a container? A. Whose container?
Q. On this particular container. A. On this particular
container. It appears to me that the cover cap comes down
and hits the container cap before it should, on both of
these models. I don’t know the reason for that.
Q. I see. And you say you regard that as abnormal?
A. Yes, I regard that as abnormal.
* * *
[109] Q. Now, I want you to notice, Mr. Martin, that
I have now fixed one of these caps so that on—on Plain-
tiff’s Exhibit A—so that it does not touch the bottle cap,
does not touch the bottle cap. Now, I understand that you
are telling me that that is more or less a normal position
of the overcap with respect to the bottle cap? A. That
is more or less normal, yes.
Q. I see. Now, I have fixed the other cap, Plaintiff’s
Exhibit B, so that the bottom of the overcap touches the
top of the bottle cap. You see that? A. Yes, sir.
64
Q. Now, I want you to visualize these two units as
they are now fixed sitting on the shelf of a grocery store.
Is it your belief that a housewife would select one
rather than the other on the basis that on the ona the
bottom of the cap was not touching and on the other it
was touching the bottle cap? A. I would think not. I
wouldn’t think it would make any difference.
[110] Q. Wouldn’t make any difference. Thank you.
Mr. Conrad: Your Honor, I might at this time, just
for your assistance, tell you that the purpose of this line
of questioning was the following: The claims of the
patent in suit specify that the sealing arrangement up
inside the cap be such that the bottom of the overcap is
maintained out of contact with the cap of the container.
* * *
[111] Q. I see. Now, by the way, Mr. Martin, your
testimony was directed almost exclusively to insecticides.
Are these pumps made by you and Calmar, the various
pumps you have identified, confined in their use to dis-
pensing insecticides? A. Oh, no.
Q. Now, you also examined Defendant’s Exhibit 10,
which is the Scoggin patent. I will now hand that
to you again. Do you find any reference in that patent to
insecticides? A. I don’t know. If you say there isn’t, I
will take your word for it. I have never read the patent.
Q. I see. Now, Mr. Martin, turning your mind back
to the year 1949, which is, I believe, the time you men-
tioned when you pleaded with Calmar to come up with
some kind of an improved sprayer, do you recall the oc-
casion to which you referred? A. No, I don’t recall the
specific occasion. I do recall the problems we had when
we hung the sprayer on the side.
Q. I see. But nevertheless you did sell many millions
of these insecticide units with the sprayer hung on the
side? A. Many millions.
Q. Could you give us an estimate of how many mil-
lions were sold in that condition, that is as represented
by [112] Defendant’s Exhibit 12? A. Well, I would es-
timate that we sold in excess of 50 million.
* *
*
[117] Mr. Conrad: Please mark this.
(Plaintiff's Exhibit C marked for identification.)
Q. Mr. Martin, I am now handing you a letter consisting
of two pages with four attached pages illustrating sprayers,
and ask you if you can tell us what that is? A. Yes, this
is a letter put out by Mr. Groebe, Senior Vice-President,
undoubtedly to our agents.
Q. What is the date of that letter, please? A. It is
dated here November, 1959.
Q. I see. That would be shortly before you first mar-
keted this sprayer which is exemplified by Defendant’s
Exhibit 46? A. That is true.
Q. Now, will you please read for us, Mr. Martin, the
second [118] paragraph on page 1 of that letter? A.
“This new cover cap is designed so that it makes a per-
fect seal on the collar—which the old one would not do.”
Q. Thank you. Now, the old one referred to I assume
is Defendant’s Exhibit 30? A. We must assume that.
Q. Now, Mr. Martin, are you aware that, and I believe
you testified to the effect that the accused structure
which is called by the plaintiff its SS-40 sprayer was mar-
keted in limited quantities in the late summer of ’58, and
the commercial production began in January of 1959? Is
that in accord with your understanding? A. If the SS-40
is the proper designation of their sealed-in sprayer, over
the cover cap, yes, that is my recollection of it.
Q. That is in accord with your understanding? A.
Yes.
Q. Now, you recall identifying one of those units I be-
lieve as Defendant’s Exhibit No. 34? Do you recall that?
A. Yes.
Q. Are you familiar with the fact that this unit, De-
fendant’s Exhibit No. 34, which is accused structure, is
also provided with what are called inner-seals? A. Yes,
I am familiar with that.
[119] Q. Now, the Bakan 2 sprayers made by you prior
to the time that the Calmar unit came on the market did
not have any inner-seals, did it? A. Well, I think on
some products that you might consider it an inner-seal.
I know in some products such as starch they had no leak-
J
age into the cap. If the material was wiscous, you might
suppose the way that spring pressed against that ball that
it created to some extent an inner-seal.
Q. Was there any actual design and construction of
parts whose purpose was to effect inner-seals? A. Not
to my knowledge.
Q. Now, this is true both with respect to your Bakan
and Bakan 2? A. That is right.
Q. With respect to your Bakan 3, that came on the
market after the Calmar device with the inner-seals was
on the market? A. That is true.
Q. Now, with your Bakan 3 device, it does, however,
have an inner-seal? A. Yes, it has an inner-seal and a
head seal. :
* * ad
[121] Q. You understand, of course, that the plaintiff
company has manufactured many millions of these? A.
I would assume that they would. We have lots of compe-
tition, since we started making it.
[122] Q. Now, I want to get back a moment, Mr.
Martin, to the effect you said that it is virtually impossible
to retail insecticides without having the spray unit in the
container, [123] as more or less illustrated by Defendant’s
Exhibit 44? A. We find it so.
(Plaintiff’s Exhibit D marked for identification.)
Q. Mr. Martin, I want to direct your attention to the
container which I have marked as Plaintiff's Exhibit D,
which has a pump assembly attached to the side. A.
Yes, sir.
Q. Can you identify that for us? A. Yes, that is our
product, Real-Kill with a sprayer on the side.
Q. Is that being marketed at the present time? A. It
is not being successfully marketed.
Q. But it is still on the market? A. I can still make
that same statement.
Q. Let’s say you are still trying? A. We are still try-
ing. I didn’t say we quit trying.
* * *
67
Re-Direct Examination by Mr. Schmidt.
Q. You mentioned, Mr. Martin, on cross-examination
that these sprayers and cover cap units that are being
sold and manufactured by Cook Chemical find use in
fields other than insecticide? [124] A. Oh, yes.
Q. Tell us a few examples of those uses. A. They
use it in window cleaners, in white sidewall cleaners; they
are used in products to clean artificial flowers. I think
there are 18 or 20 different categories. They are used in
starches as we see here. They are used in waxes.
Q. I will hand you again Plaintiff’s Exhibit C, and refer
you to paragraph 2 on page 1 that you read into the rec-
ord, and I will ask you whether you agree with that state-
ment fully? A. You don’t have to agree with that state-
ment from the standpoint that it does not make a perfect
seal in all cases. I don’t think we have reached perfection
in anything yet.
Q. Are you saying then that the original Bakan 2
sprayer assembly did not and could not always effect a per-
fect seal? A. That is true, but it was still a highly satis-
factory item as far as we were concerned.
Q. To what extent by virtue of a certain amount of
imperfection have you had difficulties and complaints? A.
We have had practically none. I suppose we have sold
well in excess of 15 or 20 million, that is, used and sold,
and I would say that we haven’t had 100 complaints that
I am aware of.
Q. Did you find that you had established a perfect seal
when [125] you came out with Bakan 2 modified? A. No,
I would say, no; no, I don’t think we have a perfect seal.
Q. You still have instances of leakage past the seal?
A. Oh, yes.
Q. Is that leakage any greater or any less than in the
Bakan before you changed the scal? A. I am not aware
of it if it is. I don’t think it is.
Q. When you came out with the Bakan ? modified and
subsequently the Bakan 3, were you then force? to com-
pletely discontinue Bakan 2? A. Oh, no, we are stil: zell-
ing many, many Bakan 2’s. Some people prefer it.
68
Q. Did you abandon sales of Bakan 2 modified after
coming on tke market with Bakan 3? A. Oh, no, we still
sell them. I want to correct one statement there. I still
refer to our original Model 2 and the modified 2 as 2.
Q. It is still 2? A. Still 2. Now, the original model
as you know has been modified and we are no longer sell-
ing that for the very reason that we spent $20,000.00 for
a machine just to put this cap on and put it on with a
certain force and we wanted something that we ought to
make and besides that we didn’t want to have too many
inventories, so that was [126] the reason.
[129] Q. (By Mr. Schmidt) Where is the sprayer unit
manufactured? A. It is manufactured at 935 North
Wabash in Kansas City, Missouri.
Q. Where is the cover cap applied to the collar and the
fluid? A. At 935 North Wabash, Kansas City, Missouri.
Q. Where do you bottle your insecticides? A. At the
Baton Rouge plant.
Q. Does that mean that this sprayer assembly with the
cover cap on and with the seal established is shipped from
Kansas City to Baton Rouge, is that correct? A. That is
true.
Q. And that your bottler in Baton Rouge merely ap-
plies the sprayer assembly to the filled container by
screwing the container cap in place? A. Oh, yes, we
used to have two machines, one to put this one (indicat-
ing)—
Q. One to put the cover cap on? A. One to put the
cover cap on. We would put it on lightly but they would
have to tighten it at Baton Rouge and the other put the
container. This eliminates one tightening machine now.
Q. Now, in the home when the housewife has pur-
chased the product, what need she do in order to be able
to use it? A. All she has to do is to take the cover
cap off.
+ * *
[131] Q. And the desirability of the new product is
not peculiar to household insecticide, is that correct? A.
Oh, no, no. It has opened up many doors, many doors.
Starches, waxes, window cleaners.
* *
[132] Re-Cross-Examination by Mr. Conrad.
Q. Mr. Martin, I’m a little puzzled about your last
statement, that this sprayer with the overcap opened up a
lot of new markets, when you indicated a little earlier
that the sales of your product, for example, didn’t jump
when you started to use the overcap. A. I have an ex-
planation for that. Would you like me to give it?
Q. Certainly. A. I said, previously testified, that in
1954 we welcomed the competition of S. C. Johnson and
Colgate and even Simoniz, because we felt that we needed
help in educating the public in the use of a residual in-
seciticide and a space insecticide. As you know, adver-
tising is very expensive. At that time I did not realize
the tremendous, crushing powers of firms with unlimited
resources, and in the spring of 1958, by gimmicks, Colgate
loaded the retail trade with millions of dollars of insecti-
cide, and much of that insecticide is still sitting in the
shelves, because it was insecticide that had the sprayer
hanging on the side of the bottle.
Q. How does this account for the—I don’t quite get the
relationship between what you just told us and the fact
that you said earlier that the advent of the overcap [133]
on your sprayer opened up new markets for this type de-
vice. A. Well, it did open up new markets. However,
a horse can only drink so much water, and if you load a
retailer with 25 or 50 cases of insecticide, it makes it very
difficult for you to sell any or get very much in there
yourself, and this is exactly what Colgate did in ’58.
Q. I’m not certain that I get the significance of your
answer with respect to the question I asked, but let’s go
on to something else, Mr. Martin. ...
Q. I think you mentioned that with respect to the S 25
LP that was manufactured by Calmar that it never got
out of the laboratory. Do you recall making that state-
ment? A. It never got out of our laboratory.
70
Q. I see. You do know, however, that that is sold in
large quantitiey even today, do you not? A. I know that
it is sold in quantities even today. I know that it is not
sold in insecticides today.
* * *
[135] Q. I see. But the matter of how much it cost
to make a sealed-in sprayer is a factor in deciding whether
or not you are going to use it? A. Certainly.
Q. And it is an important factor? A. It is an impor-
tant factor, yes.
* * *
[136] Mr. Schmidt: I have one additional problem I
would like to take up at this juncture. During the lunch
hour we were handed a copy of a subpoena to one of our
people whom I understand is out of town, Chester Turner,
and we do not as yet know when he will be back, perhaps
a little later on in the week, and I am wondering from
my adversaries when they would like to have him here.
He will probably not be back before Wednesday or Thurs-
day.
Mr. Conrad: We certainly don’t want to interfere with
the normal work of that man more than is necessary.
[137] I don’t know how long it will take you to complete
your case but the chances are we won’t be introducing
our evidence until perhaps Wednesday morning and other
witnesses will occupy part of the day and I suppose we
may take Mr. Turner as late as Thursday.
Mr. Schmidt: In the subpoena there is a request for
the production of “all documents of any kind (including
memoranda, correspondence and inter-office communica-
tions) prepared or dated within the period beginning Au-
gust 1, 1956 and ending on the date of first commercial
production of sprayers known as Bakan Model 3 Sprayers,
relating or pertaining to (1) pump-type dispensers or
sprayers having (or designed or intended for use with)
hold-down caps or protective caps or (2) hold-down or pro-
tective caps or (3) parts for use with items (1) or (2)
above, in your custody or in the custody of Cook Chemical
Company, its divisions or subsidiaries.”
71
We feel that this request has come in rather late and
is a substantial duplicate of a request made of Cook
Chemical Company by Calmar in November of 1959, iri-
mediately preceding the taking of the deposition of Bax-
ter R. Scoggin, Jr., the inventor of the patent in suit. At
that time the Cook Chemical Company made every effort
to gather together all such material, presented it to coun-
sel prior to his taking the deposition of Mr. Scoggin. It
[138] was looked at and examined and every bit of ma-
terial that was desired at that time was pulled out and
placed in the deposition and Mr. Scoggin was interrogated
relative thereto. We hardly know what additional mate-
rial they want. We feel this goes far beyond what they
should be requesting and we would like it to be much
more specific and indicate wherein we have not produced
what they already have in the record.
The Court: All right. I do not know anything about it,
gentlemen. I am not going to fool with it now at the
time of trial. You will have to fight it out among your-
selves.
Mr. Conrad: May we discuss that after this afternoon’s
session?
Mr. Schmidt: Very well.
*- + €
[142] Mr. Schmidt: As an adverse witness, your Honor,
I call Mr. Robert Wise.
ROBERT WISE,
being produced, sworn and examined as a witness on be-
half of the defendant, testified as follows:
Direct Examination by Mr. Schmidt.
Q. State your name and address, please. A. Robert
Wise, 6936 Crystal Springs Road, Cincinnati 27, Ohio.
Q. What is your occupation, Mr. Wise? A. I am presi-
dent of Calmar, Inc.
Q. You hold a position as officer in any other company?
A. Yes, I am a vice-president of the Drackett Company
of Cincinnati, Ohio.
72
Q. How long have you been president of Calmar, Inc.?
A. Since April of 1955.
Q. Is that about the time that the Drackett Company
purchased Calmar? A. It was shortly after the purchase
of Calmar by the Drackett Company.
[143] @. What was the business of the Calmar Com-
pany at the time that you became president? A. I didn’t
become president of the Calmar Company. I became
president of Calmar, Inc.
Q. Which was a corporation subsequently formed, is
that correct? A. That is right.
Q. And did Calmar, Inc., continue the business of the
original Calmar Company? A. No, it did not. Calmar,
Inc., was formed as a sales and product development and
engineering corporation. It did not do any manufacturing.
Q. What was the business of Calmar Company then
at the time it was purchased by Drackett? A. Calmar
at the time it was purchased manufactured sprayers and
dispensers and sold them.
* x *
[144] A. Calmar Company was producing a line of
standard sprayers, one of which was the S-25, which has
been mentioned in this dispute. Another was the so-
called RS-10 sprayer, which was a fine mist sprayer that
had been used by the Drackett Company in connection
with a room deodorant. They also had a larger capacity
sprayer called the S-15-L, which was a sprayer that had
a little circle with a top on the head, enabling the house-
wife to use that circle to operate the sprayer, and they
had experimentally a sprayer called the S-25-LP. ~
Q. What was the nature of the S-25-LP? A. The
S-25-LP was a leak-proof sprayer.
Q. In what sense was it leak-proof? A. It was leak-
proof in that it had two collars between which was an
“OQ” ring. The head of the sprayer had two lugs attached
to the sprayer and when it was depressed into the collar
structure and locked it provided a seal to prevent liquids
from coming out of the container.
Q. Is that the so-called bayonet slot-type of a sprayer?
A. Correct.
73
Q. After the formation of Calmar, Inc., did such corpo-
ration continue handling the sprayers of the type to which
you have just referred? A. Yes.
Q. Now, by whom were those sprayers manufactured?
[145] A. They were manufactured by the Calmar Com-
pany, a division of the Drackett Company of Los Angeles,
and by the Marmac Company of Puerto Rico.
Q. For and in behalf of Calmar, Inc.? A. For and in
behalf of Calmar, Inc.
Q. ‘Shen the Calmar, Inc., in turn sells such sprayers?
A. Correct.
Q. Is that today the manner of operation of Calmar,
Inc.? A. Yes.
Q. Calmar, Inc., is not then today a manufacturer of
any sprayers, is that correct? A. No, it is not.
Q. After you became president of Calmar, Inc., were
you presented with any request or was your company
presented with any request for a so-called integral leak-
proof shipper spray? A. We had several conversations,
I wouldn’t say specifically that we were requested. We
had many conversations with customers concerning a leak-
proof sprayer.
Q. Did those requests come in part from Cook Chem-
ical Company, the defendant in this case? A. I remem-
ber having conversation with a Baxter Scoggin concern-
ing leak-proof sprayer and I may have had conversations
with others in the Cook Chemical organization, but I do
not specifically remember their asking for samples [146]
of the leak-proof sprayer that we had availabie experi-
mentally at that time.
Q. I do believe that prior to the formation of Caimar,
Inc., Cook Chemical had received the samples of the
S-25-LP available from the former owners. We have
searched the record and we have been unable to find
where Calmar, Inc., as such, sent samples of the S-25-LP
sprayers to Cook Chemical. Believing that such were in
fact submitted to Cook Chemical Company, can you tell
us for what purpose? A. If they had been submitted to
Cook Chemical, I am sure they would have been submit-
ted for use for insecticides, particularly the—specifically
the Real-Kill line of insecticides.
74
Q. Was the purpose of answering their request for a
sprayer, is that one? A. Yes.
Q. I hand you Defendant’s Exhibit 26, and ask you
whether or not that is the S-25-LP sprayer about which
you have been testifying? A. It is.
Q. Did you receive any request from any customers of
Calmar, Inc., for integrated or shipper sprayer? A. Yes,
we did.
Q. Will you name a few of those customers? A. The
insecticide fields request from the S. C. Johnson [147]
Company. We also supplied them to Colgate-Palmolive,
and we supplied to Esso Standard Oil; in the case of win-
dow cleaners, we supplied them to the Drackett Company;
in the case of hair sprays we supplied them to Dermott,
Inc. There are many others that I am not too familiar
with.
Q. Do I understand your testimony to be that the
S-25-LP sprayer as submitted by you to such customers
in response to their request for a shipper’s sprayer? A.
It was submitted by the people working with Calmar, Inc.,
our organization.
Q. How did it work out insofar as the insecticide field
was concerned? A. We had some very serious difficul-
ties with the S-25-LP in the insecticide field, primarily
due to several reasons. I would like to elaborate upon
this a little if I may.
Q. Yes. A. This bayonet type of joint to make a unit
leak-proof had been made and sold by various Calmar or-
ganizations for several years for use with relatively thick
products such as hand lotions. At the time that I assumed
the presidency of Calmar, Inc., we did have available the
S-25-LP experimentally. There seemed to be something
of a demand for the S-25-LP for use for thin liquids. In
analyzing the product because it had some difficulty with
leakage, we determined that the major difficulty or cer-
tainly one of [148] the major difficulties for usage with
thin liquids had been that the various component parts
had not been made to uniform dimensions. In fact, some
of them needed to be changed, so bit by bit we began to
change the product in an effort to make it more satisfac-
tory. We felt we were pretty largely successful until such
75
time as we transferred the tooling to Puerto Rico and we
encountered serious assembly problems. This joint, point-
ing here to the collar structure, is composed of two dif-
ferent solvent joints. We underestimated, for example,
the fact that the solvents would not evaporate as fast in
a humid atmosphere in Puerto Rico and we locked down
the sprayers too soon, the pressure of the spring in the
locked position tended to cause the collars to lift, thus
permitting some degree of leakage by the opening. That
was an immediate problem, a long-range problem in the
insecticide field and one that in some aspects with a cer-
tain type of insecticide was one of chemical compatibility.
As a result of these serious difficulties, the product was
subsequently returned to Los Angeles for production. We
finally corrected all of the tooling and this product today
is being sold in substantial quantities to satisfied cus-
tomers, if not for insecticides.
Q. And it has never been successful in connection with
insecticides, is that correct? [149] A. I would say per-
haps it has never been successful, perhaps due to the fact
that we introduced a new product at considerably lower
prices than the prices being charged for this product.
This product had a great many parts and required a
rather difficult assembly and it always sold at a higher
price than the prices which you charged for your product.
Q. You mentioned a new product. What did you mean?
A. I am referring to the new SS-40 sprayer which was
developed at the time that we began to encounter serious
difficulties with this product.
Q. About what period of time? A. The development
of the SS-40 sprayer to the best of my knowledge began
early in 1958. I can’t say that I could pinpoint any spe-
cific date because you must remember that our interest
in leak-proof devices went back a great many years and
to pinpoint when you start a specific research on some-
thing is often quite difficult. It seems to me the first
drawings I saw of the SS-40 occurred in around March
or perhaps April of 1958.
Q. Now, you are not intending to have me understand
that the primary reason that the S-25-LP was not satis-
factory in insecticides was because of the cost, are you?
76
A. I would say the cost would definitely be a serious
factor.
Q. It was a factor. Is that the primary reason why
it was [150] not satisfactory, in connection with it? A,
No, the primary reason was the fact that we had serious
manufacturing difficulties almost instantly resulted in a
leakage which, of course, aggravated our customers.
Q. Leakage was the main problem? A. Leakage was
a very serious problem.
Q. I hand you Defendant’s Exhibit 24, and ask you
whether or not, it does not represent an effort on the part
of one of your customers to solve the problem which you
could not solve? A. Mr. Schmidt, I gather that this does
represent an effort on the part of S. C. Johnson to over-
come some of the difficulties that we encountered.
Whether or not this was successful I don’t know. I didn’t
know that it had been done when it was done, and I don’t
know who did it, but obviously it is a type of wrap over
the sprayer and over the container cap.
Q. Do you mean to say that during the time that that
product was being marketed and commercialized by your
company, S. C. Johnson Company, you were not aware of
the cover with the cellulose hood? A. Mr. Schmidt, I be-
lieve I first saw this when I made one of my occasional
trips to Los Angeles and I saw it in our office by virtue
of the fact that it had been picked up by one of our men.
We had had some conferences [151] with Johnson. We
were very unhappy about the products they had on the
shelf which imcorporated the S-25-LP and which were
leaking but I was not aware of the time that they made
the decision to put on apparently this type of overwrap.
I was later informed, after I had seen it, that they had
arranged to have this done.
Q. Then you were aware of that cellulose covering
during the time it was being sold? A. I was.
* * *
[152] Q. Mr. Wise, I hand you what has now been
marked for identification as Defendant’s Exhibits 152, 154,
156, 158, 160, 162, 164 and 166, and ask you whether or
not those letters, memoranda, and other material from
the files of Calmar represent the difficulties which you
77
experienced with the S-25-LP sprayer? A. These exhibits
are all related to the sad difficulties that we were having
in relation to the S-25-LP as outlined in these reports.
Most of these are related primarily to our manufacturing
difficulties. It was our conviction that the method that
we had chosen, or the principle involved in closing off
a sprayer so as to prevent leakage from the container
was and is basically sound.
Q. Nonetheless— A. Nonetheless we had difficulties,
primarily manufacturing difficulties.
[153] Q. I ask you to look at Defendant’s Exhibit 166,
please. This appears to be a memorandum from John
F. Boehm to you, is that correct? A. That is correct.
Q. Dated August 29, 1958? A. Correct.
Q By that date had you not gone a long way in your
development of the accused structure? A. By that date
we were building the production tooling for the SS-40
sprayer.
Q. Will you, please, read these two short paragraphs
of the memorandum into the record? A. “Dear Bob:
The S-25-LP continues to plague us with just about every
order that we receive. I have investigated the Garry
Laboratories complaint and I find that they are entirely
justified in charging us back for the unsatisfactory
sprayers and resulting damage as outlined in the attached
memorandum. Although you may not wish to withdraw
the S-25-LP from the market, I believe that we should
certainly discourage our sales force from pushing this item.
Signed John Boehm.”
Q. Is that the culmination of all the difficulties that
you had had with that sprayer in the insecticide field?
A. I wouldn’t say that represents the culmination. It
is true we had great difficulty, and at the time that this
memorandum [154] was written we were in the process
of correcting the S-25-LP deficiencies. Mr. Boehm was
handling sales orders, and his comment that we might not
wish to withdraw the S-25-LP from the market but that
he thought we should discourage our sales force from
pushing the item entirely represented his own viewpoint.
The S-25-LP was never withdrawn from the market. It
was corrected, it is being sold to this day.
78
Q. For insecticide purposes? A. Not for insecticide
to the best of my knowledge, but I honestly don’t know,
Q. Now, you made other efforts, did you not, to solve
the problem of integrating a sprayer with a container?
A. Yes.
Q. I hand you what has been marked Defendant’s
Exhibit 150, and ask you what that is. A. This exhibit
represents a cross sectional sketch, you might say, of what
we termed as a boot, the boot being made of polyethylene
and looking something like an elongated balloon, with the
thought in mind that this would be inserted in a bottle
and then a standard type sprayer would be inserted in-
side the boot, preventing leakage in this manner.
Q. Did that device ever reach the market? A. I don’t
believe that it did. I know that we made trial tooling,
and I believe we submitted samples made from trial
[155] tooling to you.
Q. To Cook Chemical Company? A. No, to you dur-
ing the depositions.
Q. Oh, has it ever been used, as far as you know?
A. Not to the best of my knowledge.
Q. And do you know why not? A. Well, primarily
because, number one, it was another item that would be
expensive. Number two, it would require an additional
operation on the part of our customers. They would have
to insert this in the bottle, and then they would have
to insert the sprayer inside the boot. Number three, it
would perhaps cause some confusion with the housewife,
who, in order to make the sprayer work, would have to
remove the sprayer and then remove the boot and then
dispose of it. I would say that the combination of mar-
keting and expense considerations dictated its not being
used.
Q. I hand you Defendant’s Exhibit 30, and I ask you
whether or not you recognize that sprayer? A. Yes, I do.
Q. What is it? A. This is the original Bakan model
2 sprayer, to the best of my knowledge.
Q. When was the first time that you ever saw the
original Bakan 2 sprayer assembly? [156] A. I think
it was some time in the Fall of 1957.
79
Q. Who called it to your attention? A. I don’t believe
I recall who called it to my attention as such.
Q. Did you call it to the attention of anyone else in
your company? A. No. Somewhere along the line I think
it was called to my attention. I don’t recall calling it
to the attention of people in our company. I think they
called it to my attention first.
Q. Did you at any time discuss the unit with anyone
in your company? A. Yes, I did.
Q. And when was that? A. Well, I would say late
1957 and all during 1958, possibly part of ’59.
Q. And with whom did you discuss it in 1957? A. Oh,
possibly with Hal Harnage, our production manager, Rex
Cooprider, who is now in our research department, and
Jim Stewart in our sales department, and possibly our
salesmen.
Q. Do you recall having discussed it with Mr. Corsette?
A. Yes, I did.
Q. And when was that? A. I believe that was some
time in 1958.
Q. When did Mr. Corsette first come with your com-
pany? [157] A. Corsette was employed by us I think
in December, 1957.
Q. Did you hire him? A. I hired him.
Q. For what purpose? A. Well, Mr. Corsette had
been employed by a company called Autron (spelling)
A-u-t-r-o-n, who had been building for us an automatic
assembly machine for assembling our standard sprayers.
They had difficulty completing this machine and getting
it to work within the contractual period. We took over
the machine in an uncompleted state. We employed Mr.
Corsette. His first assignment with us was to get this
machine completed, work out the production bugs, and
send the machine to Puerto Rico. When he first came
with us, I know that he spent, I would assume, three
full months working on this machine daily.
1158] Q. Mr. Wise, is it not true that Mr. Corsette’s
first, number one, priority project under your direction
and request was to attempt to produce an integrated
sprayer comparable in appearance to the Bakan Number
2 unit? A. I don’t believe that’s true, Mr. Schmidt.
80
Q. Did you not so testify in your deposition? A. [I
don’t recall that I did testify that way in the deposition,
New products are of major importance, but I’m sure that
that wasn’t his first assignment.
Q. Very well. When do you now say that Mr. Corsette
started to work on that project? A. Yes, he started to
work. Up until the time that Mr. Corsette had been em-
ployed we had never had a research and engineering de-
partment as such. All of the product development in the
entire history of Calmar prior to Mr. Corsette’s employ-
ment had been on something of a semi-schedule or hit-
and-miss basis. It was done by people who normally had
other functions to perform. With Mr. Corsette we started
out to establish an engineering and product development
department, which I believe was the first department in
the history of our industry.
Q. Did the fact that Cook Chemical Company had come
on the market with the Bakan 2 unit influence your think-
ing in so far as setting up that department was concerned?
[159] A. I wouldn’t say that it was particularly significant.
The big problem that those of us who are in the sprayer
and dispenser business have is to meet the big competi-
tion of aerosols. Our industry has not enjoyed the type
of growth that we would like to have seen. For example,
I think in a period of about seven years the number of
sprayers produced has probably gone from 35 million to
maybe 55 million per year, and during that same period
aerosols have grown from possibly 200 million to maybe
800 million.
* * *
Q. Let’s go back to Mr. Corsette. Did he not under-
take the task, at your direction, of developing a satis-
factory [160] integrated sprayer unit subsequent to your
having first seen the Bakan 2 on the market? A. Will
you repeat the question?
Mr. Schmidt: Will you read the question, please?
(Question read.)
A. Mr. Corsette was given the assignment to develop
an adequate shipper sprayer, and that assignment, I be-
lieve, was made after we first saw the Bakan sprayer.
81
Q. Then your answer to my question is “Yes,” is that
correct? A. Because primarily—I don’t think he went
to work for us until December of '57, and I think we
saw the sprayer before that.
Q. But is your answer to my question, yes, he did have
an assignment to produce an integrated sprayer unit? A.
Yes.
Q. And you assigned that to him? A. I assigned the
project to him along with other projects.
Q. What were your instructions with respect to his
assignment in connection with the Bakan 9 ynit? A. I
don’t recall that I gave him any specific instructions.
Q. Did you indicate to him your desire ‘set he should
come up with a unit that simulated in appearance the
Bakan 2 unit? [161] A. No, I did not.
Q. Do you recall whether or not your customers—
Colgate, for example, the plaintiff here in suit—requested
of Calmar, Incorporated that it furnish an integrated
sprayer unit duplicating in appearance the Bakan 2 unit?
A. Colgate did not request any such thing. Colgate sug-
gested to us very definitely in discussing shipper sprayers
that they preferred the appearance of the Bakan overcap
sprayer to that of the S 25 LP. As to the degree of
significance, I can’t say. Some people prefer redheads to
blonds. We have customers today who prefer the appear-
ance of the S 25 LP to the Bakan unit, and buy this
product for that reason. Perhaps I shouldn’t have elabo-
rated, but I don’t think we should put too much emphasis
or importance on the problem of appearance.
(Defendant’s Exhibit 198 marked for identification.)
Q. Mr. Wise, for purposes of identification, the Wise
deposition Exhibit 45 has now been marked Defendant’s
Exhibit 198. It is entitled, “Development Committee Meet-
ing of December 17.” It is dated December 18, 1957, headed
“Calmar, Inc.” Would you please read the encircled para-
graph into the record that appears on page 2 of that docu-
ment.
[162] A. “R. Wise reported that Colgate rejected our
leak-proof boots and expressed preference for Bakan ap-
pearance. Would, however, prefer that item be a true
82
leak-proof sprayer rather than just a shipping closure as
produced by Bakan.”
[184] CLARENCE T. FISHLEIGH,
being produced, sworn and examined as a witness on be-
half of the Defendant, testified as follows:
Direct Examination by Mr. Schmidt.
Q. What is your full name’ A. Clarence T. Fishleigh.
Q. And your age? A. 66.
Q. What is your occupation? A. I am a consulting
engineer, registered as a professional engineer in a num-
ber of States, including Illinois, Ohio, and Michigan and
New York.
* * *
[185] Q. What did you do in 1917 after four years in
the College of Engineering? A. I was graduated from
the College of Engineering, the University of Michigan,
with a degree of Bachelor of Science in electrical engineer-
ing.
* * *
[186] @Q. When did you go into consulting engineer
work? A. In 1930 I became associated with my br
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