# Appendix — Graham v. John Deere Co. of Kansas City > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386411_0210%3A06 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1966 - **Citation:** 383 U.S. 1 ## Text wn ape “ 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) 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? 122 2 was meant to carry a different meaning than its ordinary meaning? A. I don’t think particularly so, no, although it might not mean that it was restricted to that, that there might not be something else within this context that would be the equivalent. I think they had in mind there the common meaning. Q. Now, is the word “periphery” which is used in the claim, does it appear anywhere in the specification of the patent? A. Well, I don’t recall it. There again it would save time if there is, if you can point it out to me, I don’t recall it. Q. As far as I know, Mr. Shipley, there is no use of that [267] word in the specification with reference to the so-called segment. I am very sorry. I don’t know why I have that name in mind so much. I was dealing with a man last week up in New York, and it sort of has an euphonious sound. A. I had that same man the week be- fore down in Memphis and they did the same thing. Q. They probably did. The Court: .You gentlemen had better be pretty sure. Mr. Conrad: We have been traveling the same circuit. Q. (By Mr. Conrad) Mr. Fishleigh, I want you to di- rect your attention again to page 32 of the file history of the Scoggin Patent. A. 32? Q. Yes, sir, and since you don’t have it I will read a portion of the statement made on 32 about which I just questioned you: “These new patents were carefully studied during the interview and agreement was reached between the Honorable Examiner and applicant’s attorney relative to limitations which must be in the claims in or- der to define novelty over the previously applied disclosure of Lohse when considered in view of the newly cited patents of Mellon and Darley, Jr.” Now, Mr. Fishleigh, I think you will find that the appli- cant had just cancelled Claim 18 and had substituted [268] for it Claim 25 which eventuated in Claim 1 of the patent and these remarks which I just read to you refer to these changes that were made when you convert Claim 18 into Claim 25. Now, do you recall that that is the case from your study? A. Well, I can recall that with this supplemental amendment which was made following the 123 previous amendment and without formal office action that the Claim 18 had been cancelled and 25 had been added. I am not as sure as you appeur to be that the differences between 18 and 25 were necessarily reflecting what was talked about here, at least not into its entirety. Q. I see. A. It doesn’t say that here at all that that was what was decided. Q. Well, let’s get set up in a matter so we can talk about the thing I have in mind in this respect. We will say that the applicant had submitted Claim 18? A. That is right. Q. After that he had an interview with the examiner? A. That is right. Q. Following that he presented Claim 25? A. Yes. Q. There are some differences between 18 and 25? A. That is correct. [269] @. And sometime after the interview he also wrote the following to the Examiner: “These new patents were carefully studied during the interview and agree- ment was reached between the Honorable Examiner and applicant’s attorney relative to limitations which must be in the claims in order to define novelty over the previ- ously applied disclosure of Lohse when considered in view of the newly cited patents of Mellon and Darley, Jr.”. Now, can you see any reason why the applicant would have changed Claim 18 in any respect if the Examiner had found it was in satisfactory condition during this in- terview? A. I am merely speculating, of course. I don’t know what happened, but I have seen other instances where similar changes were made, where allowed claims had been amended to, well, more properly in the eyes of the counsel would describe the invention. I don’t know that, but certainly I have seen that sort of thing in many file wrappers. Q. Yes. Now, in those situations to which you refer, was there also a statement made by the applicant to the effect that the agreement was reached with the Examiner relative to the limitations that must be in the claims in order to define novelty? A. Not in the one I happen to have in mind. 124 [270] Q. Well, in any event, Mr. Fishleigh, there were some changes made? A. That is right. Q. And on the whole you can recognize by an examina- tion of Claim 18 and Claim 25 that Claim 25 was the amended version of Claim 18? A. Oh, there are certain portions of it certainly which are identical. Q. The majority of the language in the two claims is identical, is that not true? A. That is correct. Q. Now, I want to point this out to you, Claim 18 con- tained the following limitation— A. (Interrupting) Will you wait a minute until I locate that? Q. Yes, sir. Mr. Fishleigh, for your convenience I will have marked in evidence a paper on which Claim 18 and Claim 25 are written side by side. (Plaintiff's Exhibit F marked for identification.) Q. By handing you that paper it may be a little more convenient for you to use. Now, will you please look at Claim 18 as you have it written there and about ten lines down you will notice it states, “The combination with said spray unit of an annular retainer secured to and surround- ing the extension above said cap.” Do you see that? [271] A. Yes, I note that. Q. Now, directing your attention to Claim 25 which later became 21 of the patent, do you see that the corre- sponding portion of the claim was changed to read, “The combination with said spray unit of an annular retainer telescoped over and secured to the extension above said cap”? A. Yes. Q. Now, you notice therefore that what happened was that the words “telescoped over” were inserted before the word “secured” in Claim 18, and the words, “and surround- ing” in Claim 18 were cancelled out, it would thereby bring about the language as it now appears in Claim 1? A. I see that difference, certainly. Q. Now, what is your explanation of the significance of that change in language whereby “telescoped over” was added to the claim which was allowed by the Ex- aminer? A. I have no explanation of what was in their minds or what they did or why. Q. And have you no explanation of the meaning of that change? Didn’t you take in account when you were in- 125 terpreting the claim the fact that the language in this re- spect had been changed and that the claim was only al- lowed after the language was changed in this manner? Can you tell us right off if you took that into considera- tion when you were testifying a moment ago? [272] A. I think I hadn’t paid too much attention to that particular sentence. Q. Now, will you suggest to us the significance of the change which would, ef course, take into account what is said about the manner in which this retainer and the barrel extension are assembled in the specification itself and also in the amendments which were filed in the Patent Office? A. Well, it perhaps is a little more specifically accurate as a description of the precise form shown in the drawings. Q. That explanation doesn’t take into account what is said about the relationship between these two parts in the specification nor does it take into account what is said about the relationship between these two parts in the course of the arguments made to the Patent Office. Now, can you give us an explanation which takes those factors into con- sideration? A. No, I don’t see any myself, any substan- tial necessity for the change. The Court: Let’s take a recess. (Whereupon, a short recess was taken.) Q. Mr. Fishleigh, you explained to us just before we recessed that you attach no particular importance to the change in this language from “secured through and sur- rounding” to “telescoped over” in the description of the manner in [273] which the retainer was mounted on the barrel extension. I am going to suggest to you that is a significant change and is one of the changes the applicant referred to when he said he and the Examiner had agreed upon certain changes that must be made in order to define novelty. I suggest to you, Mr. Fishleigh, that in the speci- fication of the patent with respect to the description of the barrel extension and retainer secured thereon, it is said that one of the purposes of not having the skirt of the overcap touch the cap collar is that so that the re- tainer will not be stripped off the barrel extension when the cap is screwed down. Do you recall that? A. Yes, Q. I also remind you that in the course of the argument of the claims before the Patent Office the applicant stated 126 that the importance of this clearance at the bottom of the cap skirt was to prevent the hold-down member, meaning the retainer, from being forced against the cap whereby the retainer would be pulled upwardly into the hold-down member and the retainer dislodged from its position on the cap, which in turn would result in the barrel being dropped from its position of retention by the retainer 19? Do you say that that appears at pages 15 and 16 of the file wrapper? A. On pages what? [274] Q. 15 and 16 of the file wrapper, at the bottom of 15 and the top of 16. A. Yes. Q. Now, isn’t it a fact that what the applicant is telling the Patent Examiner there is that the reason for this clearance is to prevent this retainer from being pulled off of the barrel? A. That is what he is saying there. That is one of the reasons. Q. That is also, is it not, the only reason given in the specification itself for having the clearance at the bottom of the cap skirt? A. Well, I think that may be true. Q. I refer you to Column 2 of the Scoggin Patent be- ginning at line 58, and direct your attention to the follow- ing where it says: “A downwardly-facing shoulder 50 within the cap 40 engages the upper surface of retainer 18, thereby preventing engagement between cap 40 and closure 14 to prevent forcing of the retainer 18 from its tight press-fit engagement with extension 22.” A. That is correct. Q. Now, is there any other reference in the specifica- tion to any other function of that clearance at the bottom of the cap skirt other than what I have just read which relates to the retainer not being stripped off of the bot- tom? [275] A. I don’t believe it is specifically referred to, no, sir. Q. Mr. Fishleigh, I therefore suggest to you that the change in the description of the manner in which the re- tainer was secured to the extension from “secured to and surrounding” to “telescoped over” as it appears in Claim 25, was to bring out the fact that the functional limitation which appears as the last clause in the claim was meaning- less unless it was included in a description of the device in which the retainer was capable of being stripped off 127 of the barrel extension by contact between the top skirt and the bottle cap. Do you accept that suggestion as a reasonable one explaining the significance of this change from “telescoped over”? A. I have no question as to whether or not you suggested. That doesn’t impress me of being of any particular importance, no, sir. Q. Well, it is an explanation which does make refer- ence to what is said about the relationship of the retainer in the barrel extension in both the specification and in the amendments that were made to the original applica- tion, does it not? A. Yes. Again what? Q. I say it is an explanation of the change which was made from “secured to and surrounding” as it appeared in Claim 18 over to “telescoped over” as it was pled and allowed in [276] Claim 1 which does take into account what is said about the relationship of those two members, that is the retainer and the barrel extension in both the specification and in the amendments filed in the Patent Office? A. Well, frankly, I don’t see that one is particu- larly different than the other; both of them in the light of the specification and the drawings to me they are sub- stantially the same thing. Q. Mr. Fishleigh, don’t you agree that “telescoped” gives the connotation of being able to pull apart or extend like you extend a telescope? A. Oh, it has been, not that it necessarily can any more, but “surrounding” does, too, so far as that is concerned. Q. But “telescoped” is more specific and describes the relationship of two elements which may slide in respect to one another? A. It has slid at some time, perhaps. Q. What would be the point as stated in the specifica- tion of having a clearance at the bottom of the cap skirt in order to prevent the retainer and the barrel extension from pulling apart if they could not in fact telescope in that manner? A. Probably none, but I don’t read into that other language in Claim 18 that that describes the structure which could not pull apart and whether or not it would telescope. [277] Q. Now, with respect to what is disclosed in the specification, would there be any meaning whatsoever in the last limitation of Claim 1 calling for the clearance, 128 if that clearance weren’t in connection with a structure where those two elements could pull apart? A. As to just the specific thing which you have referred to as specifically set forth in the specification, no; from the standpoint of the sealing, yes. Q. Exactly. Now, in your interpretation of the me- chanical elements of the claim I gather from what you said earlier that you did not take this suggestion which I have made into consideration? A. Well, I think I could agree with that because I still see no substantial difference between the two. Q. I see. But you yourself can offer no other explana- tion which takes into account what is said about the re- lationship of those two elements in the specification and in the amendments? A. Well, perhaps the telescoping may be a little clearer to use if it were out in the open but in the light of what was here, the other language in that respect, it certainly is quite specific so far as I am concerned. Q. Let me ask you just one more thing on this whole matter. I pointed out to you tha’ ‘ne specification ex- plains that this clearance at the bottom of the cap skirt is for the [278] purpose of avoiding stripping the retainer off of the barrel extension. You agree with that? A. That is stated in the specification; you reo it. Q. There is nothing in the specification which states that the purpose of that clearance at the bottom of the cap skirt is for permitting you to make a more effective seal? A. It is not specifically set forth, no, sir. Q. Mr. Fishleigh, I direct your attention to Defendant’s Exhibit 120, which is mounted on the board to your right, particularly to the four small figures in the lower, right- hand corner of that exhibit. Now, I also direct your atten- tion to the fact that in each of those four small figures, the sealing ring 90 is shown as being disposed at a slight angle with respect to the element which you have marked 80? Do you see that? A. Yes. Q. Now, in your opinion would you find the mechanical elements of 1 and 2 in which the ring 90 was parallel to the axis of the element 80? A. And with a sharp corner at the bottom. 129 Q. Let’s assume that these figures showed 80 coming down into the groove 88, coaxially of that group rather than at the slight angle, would you consider such a struc- ture as being described by the mechanical elements of Claims 1 and 2? [279] A. As long as it had the circular formation on the bottom, I think it perhaps would. Now you say it would be moved over coaxially so that it never contacted it. Q. Yes, it would go straight down into the groove 88 rather than approaching it at an angle as it does in these four figures. A. Well, but the critical part as far as I am concerned is that they do come in contact rather than as you have been talking before telescoping without con- tact. Q. I see. Well, let’s assume that it came in coaxially, that element 80 came in coaxially with the groove even though it may contact the groove on one side or the other, would that structure in your opinion be met by the me- chanical or be within the scope of the mechanical elements of Claims 1 and 2? A. I can’t see where it could come in coaxially if it did contact it. Q. Mr. Fishleigh, perhaps I can make it clear if I point it out. You see the 90 here. You see it disposed at a slight angle with respect to the outer wall of the groove 88? A. That is right. Q. Let’s assume rather than being disposed at that angle, that element 90 came straight down into the groove 88. A. Well, as far as that particular point, possibly not. [280] However, if it came down so that there was this contact such as there, if it was in the relationship there, but then went straight up, I think it would still come within the element of the claim. Q. There is something that I want to ask specifically. The element 90 defines a cylinder with vertical walls and also the groove 88 is provided with vertical walls and that the ring 90 or the cylinder 90 comes straight down into the groove 88. Do you understand? A. Yes. So there is no contact between the two. Q. Now, there might be contact, Mr. Fishleigh, depend- ing on the width of the ring 90 as compared to the width of the groove 88? A. Well, I think there might be some 130 question under those circumstances as to that additional element in Claim 2. I believe that probably the first of the elements of the first claim would be met. Q. I see. The point is that with respect to Claim 1, the mechanical elements would be met even if the ri 90 were perfectly cylindrical? A. Provided they do en- gage as it calls for. Q. And that one wall of that cylindrical ring engaged the element 80? A. I think that perhaps is true. Q. Now, in that structure last described by me there would, [281] of course, be no wedging action between those two elements, would there? A. Well, I suspect not until you got to the bottom of it. (Plaintiff's Exhibit G marked for identification.) Q. Mr. Fishleigh, I am setting up before you where you can see it now a model which we have marked as the Plaintiff's Exhibit G, which purports to represent the de- vice shown in the Scoggin Patent in suit and in which there are certain parts that are made movable with re- spect to one another so that the manner in which the seal is made between the retainer and the overcap can be demonstrated. Will you examine that, please, and tell me if you think that fairly represents what is wn in the drawing of the Scoggin Patent? A. Well, near as I can tell in a quick glance, it seems to follow son.ewhat close to it. I don’t know about this movable business or what happens. Q. Now, Mr. Fishleigh, while we are here together, I wonder if you would point out to me on this model the portion of the overcap which you regard as the shoulder which was mentioned in Claims 1 and 2? A. Well. yes, I would say the portion here which would include the horizontal surface, that is, it is bounded by the horizontal surface and extends up some part, a rather indefinite part, but extends up into the wall. [282] Q. On the basis of what you have pointed to me, I am going to attempt to place a piece of white tape over the portion of the overcap which you have specified. Now, have I placed the tape over the area with respect to which you have testified? A. Oh, very, very roughly. 131 [283] Q. Well, I will give you an opportunity, if you will please do it for me, after we recess for the evening, to do that more exactly, but that does roughly indicate the area you have indicated? A. Generally speaking, that area or portion of the structure. Q. Yes. Now, that is what you regard as the shoulder 50, which is referred to in the specification of the patent? A. Well, I think 50, yes, goes to and is pointed out as the bottom surface of that shoulder. Q. I see. Now, will you poirit out to me the portion of the retainer which you regard as the segment in the Scoggin structure? A. Well, this little part above the horizontal surface of the main—top of the main body. Q. I see. I will now attempt to cover the portion of the retainer which you have pointed out as being the seg- ment, with yellow tape. Now, have I done that in con- formity with your directions? A. Yes, I would say gen- erally. Certainly it is this portion from the horizontal line up to the top (indicating). Q. Now, Mr. Fishleigh, I noticed in connection with your designation of the so-called shoulder that you have included an area which is bounded by that inner wall of the upper part of the cap. Is that correct? A. As a part of it, yes. [284] Q. I notice that the—I notice that that area of the shoulder would not be a downwardly facing surface, would it? A. Well, but that area of the shoulder has a downwardly facing surface. Q. To the extent that that shoulder includes this inner wall of the cap right in here (indicating), that is not a downwardly facing surface, is it? A. That is correct. Q. Yes. Now, how do you reconcile your designation of what you have designated as the shoulder when in the specification in the patent it refers to a downwardly facing shoulder 50? A. Well, I still say it is a downwardly facing shoulder, just as my shoulder is an upwardly facing shoulder, but it isn’t limited to just this line (indicating). There is more to it, but still it is an upwardly facing shoulder. Q. Well, following that example along, do you regard any part of your arm, which is hanging down from your 132 shoulder, as part of your shoulder? A. Well, not neces- sarily the arm, but certainly my shoulder and shoulder blade goes more than just the upper surface of my coat. Q. Well, Mr. Fishleigh, referring to column 2, line 58 of the Scoggin patent, were you under the impression when [285] you read the statement that the shoulder 50 was downwardly facing, that it also included a portion of the inwardly facing inner wall of the cap? A. Well, I am Under the impression that it is not limited to the surface. Q. Yes. A. The surface of it is, and he later speaks about the edge between that lower surface and the inner cylindrical wall, but in my understanding of it, the shoulder itself is a structure rather than a surface. Q. Well, have you taken into consideration in making that answer that beginning at line 77 the specification says, “In addition to the seal provided between shoulder 50 and the top surface of the retainer 18 there is estab- lished an additional seal, additional annular seal, between the annular rib 56 and the annular surface of cap 40 im- mediately adjacent to the shoulder 50.” Now, if we take your definition of shoulder, as you have illustrated on this model, then we can’t make any sense at all out of that part of the specification which I just read, can we? A. Well, I’m sorry, I can if you can’t. Q. Well, perhaps you can explain this to me, Mr. Fish- leigh: It tells here that an additional seal is established between annular rib 56 and the annular surface of the [286] cap 40. A. Yes. Q. Now, is that something distinct from the seal which is established by the shoulder 50 and the top surface of the retainer 18? A. Well, it is described as distinct, and you might have that at a time that you didn’t have the previous one. They are very closely allied. One is the bottom surface itself, and the other is the rim at the edge of the bottom surface. Q. Let’s follow this language through, Mr. Fishleigh. It says, first, “The downwardly facing shoulder 50 within the cap 40 engages the upper surface of the retainer 18.” A. That is correct. — 133 Q. And that is this portion (indicating)? A. That bottom surface is engaging the upper surface where you are now pointing. Q. Which is outwardly of the segment? A. That is correct. Q. Now, it says, “in addition to the seal provided be- tween shoulder 50 and the top surface of retainer 18.” A. That is correct. Q. Now, that is the seal we just described, isn’t it? A. That is right. Q. “There is provided an additional seal between the annular [287] rib 56 and the annular surface of the cap 40.” Now, that would be the seal between this part here and the rib here, would it not (indicating)? A. Well, going on, yes, immediately adjacent at the point where that contacts. Q. Yes. Well, the specification then speaks of this part in here, which you have designated as part of the shoulder (indicating), as an annular surface of the cap 40 immediately adjacent to the shoulder? A. Yes. Q. So you are referring to something which is said to be adjacent to the shoulder as part of the shoulder, are you not? A. Oh, I don’t think so. Q. Well, Mr. Fishleigh, from the testimony you gave in the last few minutes here, I don’t see how you can make that statement. A. Well, I have no confusion about it other than we can twist the language if we want one way or the other. The first seal he is talking about is the lower surface of that portion as shown on your model and the top portion here ( indicating). The next one is between this inner surface and the inclined portion of the segment. Now, that is what he is talking about. Q. Yes, exactly. [288] A. And there is no misunder- standing on my part as to that, and it is perfectly con- sistent, in my mind at least, with my position that there is something more than a mere surface when - talks about the complete definition of the shoulder. Q. Yes. Now, Mr. Fishleigh, you will grant me this, will you not: That in this portion of the specification about which we have just been talking, “the annular sur- 134 face of the cap 40 immediately adjacent to the shoulder 50” is something which you refer to as part of the shoulder 50, is it not? A. It is the surface of the part, the annular surface of the part—the surface of what I refer to as the shoulder, yes. Q. In other words, the answer to the question is “yes”? If it is, that will terminate this discussion on this point. What is your answer? A. It is the surface of what I~ part of the surface of what I refer to as the shoulder, that is correct. Q. Well, I think this is rather important, Mr. Fishleigh. I would like to have the question read again, and, if pos- sible, I would like to have you give me a “yes” or “no” answer, and any explanation which you wish to make. (Question at line 6 read.) A. Well, if you insist on a “yes” or “no”, I guess I will have to say “no”, because in one case I am referring [289] to a surface, and another case I am referring to a structure. Q. Now, in the event that you referred to the shoulder 50 as a surface, then I assume the answer would be “yes”? A. No, I think in that case the answer would necessarily still be “no”, rather clearly so. If I limit the shoulder to the lower surface 50, then it would be still definitely no. Q. Mr. Fishleigh, will you direct your attention to claim 2 of the patent, and you will notice that it says in that claim, “A closure assembly as set forth in claim 1 wherein one of the normally inter-engaged surfaces of the shoulder and segment, respectively, is substantially con- ical to present an inclined annular face,” et cetera. Now, what I am interested in is the statement in the second line of the claim where it refers to “normally inter-engaged surfaces of the shoulder and segment, respectively.” You will notice that that refers to claim 1? A. Yes. Q. Now, what are the normally inter-engaged surfaces which are referred to in claim 1? A. Well, for one, I be- lieve that they are referring to the one side, the outer side of what has been referred to as the segment. And on the other side, that portion which [290] interchanges with that—it may at some time be rather a line contact and some other time somewhat more than that. ~ 135 Q. Mr. Fishleigh, what I was getting at was where in claim 1 at all does it refer to any inter-engaged surfaces? A. I think it does in element 4. Q. What is the language there? A. “An internal cir- cumferentially extending, continuous shoulder disposed to engage said segment around the entire periphery thereof.” Q. The word “surface” isn’t used there, is it? A. Oh, no, not specifically. Q. Where do you find in the specification any reference to a surface of the shoulder 50 being in contact with any- thing other than the top of the retainer 18? A. Well, I find that particularly in the drawings, where it is shown there, and in the reference that you read me a little while ago to the—well, the second seal, which it refers to. Q. Now, with respect to your finding it in the draw- ings, that depends on interpreting the shoulder as you have on Plaintiff’s Exhibit G, does it not? A. As I have where? Q. As we have it marked on Plaintiff’s Exhibit G? A. Well, interpreting it as a part of the structure rather [291] than just the bottom surface of that structure. Q. Well, finding it in the drawings does depend on that. Now, with respect to the specification, where does it say anything about a surface of the shoulder 50 being in contact with the segment 56? A. Well, specifically it doesn’t, but that passage at the bottom of column 2, particularly when taken in conjunction with the paragraph over in column 3 beginning in line 15 about a compression of one member, would indicate that you would end up with a surface contact rather than line contact. Q. But it doesn’t say that. A. No, it doesn’t say it —doesn’t refer to those words. Q. Yes. Now, with respect to the statement at the bottom of column 2, it says, “The annular surface of the cap 40 immediately adjacent to shoulder 50” is what con- tacts the rib 56, does it not? A. That is what it says, yes, sir. Q. Now, where does it say that the annular surface of the cap 40 immediately adjacent to the shoulder 50 is 136 part of the shoulder 50? Where does it say that? A. Well, it doesn’t say that in so much language. Q. As a matter of fact, it doesn’t up a little earlier indicate that it could not be because the annular surface is a vertically facing surface whereas the rib [292] of the shoulder is described as a downwardly facing shoulder? A. Well, I don’t think that that follows at all. That is, it may be a downwardly facing shoulder. For instance, I have a house which faces east, but it is still—and I might describe my house as an eastwardly facing house, but it still has north-and-south walls and west walls as far as that is concerned. Q. Well, with reference to the description of the direc- tion which your house faces, of course we refer, as every- one would understand, to the front of the house, wouldn't we? A. That’s right, but it wouldn’t indicate that I had merely a front wall standing up; it would indicate that I had a house of some substance. And, at least as I see it, this shoulder business indicates or connotates some- thing more, perhaps, than just the surface itself. Q. I see. Well, that really gets down to the point, doesn’t it, Mr. Fishleigh, that your interpretation of these claims depends on your interpreting the so-called shoulder as involving more than the downwardly facing surface which exists between the inner wall of the cap and the larger diameter which is coaxially spaced from the smaller diameter to the top? A. I think perhaps that is fair, that, at least, I consider it to encompass more than just the surface alone. [293] Q. Now, in that case you consider it to encompass more than what is specifically described as the shoulder in claim 3 of the patent? A. I think that they are again talking specifically about the surface. Q. Yes. In that claim the shoulder is described as a surface? A. In other words, in my judgment they could perhaps better have said—although I don’t think it is in- consistent at all—the surface of the shoulder. Q. I see. But what they actually described was what I have been calling the shoulder, that is the downwardly facing surface right there (indicating)? A. That’s right. 137 Q. And the shoulder as it is described in that claim, at least, certainly does not include any part of this inner wall? A. I think, as I just glance at it quickly here, I think that perhaps is correct. . Q. Yes. And if this is a proper description of the shoulder, it would be at odds with what you have indicated as the shoulder on Plaintiff’s Exhibit G? A. I don’t think so at all, no, sir. [294] Q. Well, Mr. Fishleigh, we get right down to what seems to me to be the logical conclusions, and then in my opinion you refuse to draw the conclusion. Now, didn’t you tell me just a moment ago that claim 3 described a surface as the shoulder? A. Yes, the surface of the— described what I consider to be the surface of the shoulder. They call it the shoulder, and that is quite commonplace, I think. Q. What it does describe there, that is that down- wardly facing surface, is said in the claim to be “said shoulder,” referring to the shoulder mentioned in claim 1? A. Yes, that is correct. Q. And as described in claim 3, it consists only of a surface? A. I think that is— Q. That is the downwardly facing surface on which I— A. I think that is correct, as it is specifically set forth in claim 3. Q. And that is said to be “said shoulder” in claim 3, meaning the shoulder referred to in claim 1, is that cor- rect? A. Well, I think that probably is correct. Q. Yes, and it doesn’t say— A. I haven’t checked to see that it says “said shoulder”, but if you say it does I assume it does. Q. I assure you it does. I direct your attention to the fact that it doesn’t say that what is defined in claim 3 is [295] “a part” of said shoulder. Now, that being the case, that definition is at odds with what you have defined as the shoulder, which must necessarily include some part of that inner wall of the cap. A. Well, again I am right back where I was. I don’t think it is at all. Sometimes one might speak—and in this instance they are clearly talk- ing about—a surface, and in part of the specification they 138 talk about it as the surface. More accurately I believe they should have said the surface of the shoulder. But clearly that is the downwardly facing surface in that in- stance. Q. Well, do you also have in mind, Mr. Fishleigh, that at the top of column 3 of the patent it says—I’m sorry, the sentence to which I want to refer you begins at the bot- tom of column 2 and it says, “The cross-sectional contour of rib 56 is as shown in Fig. 2 to present an upwardly and inwardly inclined annular face which snugly fits against the ‘corner’ or line of juncture between shoulder 50 and the adjacent annular inner face ef cap 40.” ly assisting him in that I would be in charge of the production of this model and to work it out where anything that came up could be produced. Q. I see. Now, at this time you were actually manu- facturing the so-called Bakan 1 sprayer? A. I think that is right, yes, sir. Q. Do you know what I mean by the Bakan 1 sprayer? A. Yes. Q. You were manufacturing that, that sprayer, at the time this memorandum was written, is that correct? A. I'm sure we were, yes, sir. Q. Now, do you recall that at some later date you eventually [387] arrived at what you regard as a satis- factory design for a sprayer with an overcap? A. Yes, sir. Q. Now, do you remember any of the events which occurred between the date of this memorandum and the time when you arrived at this satisfactory design for a sprayer with an overcap? A. Well, very little, except I think there were samples made and tested and it went on from there. I don’t know the exact dates. Q. I see. You have, I assume, a fair understanding of how these sprayers work, particularly the Bakan 1? A. Yes, sir, I would say so. Q. Now, were you also plant manager during the time when Bakan 2 was being produced? A. Yes, sir. 178 Q. Now, what were the procedures followed in uniting the retainer to the barrel extension when you first started to make the Bakan 2 sprayer? A. The barrel to the col- Jar, you say? Q. Yes, sir. A. There was a solvent application made and more or less welded together with a solvent applica- tion. Q. A solvent? A. Yes, sir, a solvent application. [388] Q. Oh, a solvent application. A. Which would weld the two pieces together. Q. Then what was done with it after this solvent ap- plication was made? A. Well, then it would be complete other than the addition of the protective cap. Q. Well, to which piece was the solvent applied? A. To the barrel, I believe you referred to it. Q. The solvent was applied to the exterior surface of this barrel extension where it comes up through the collar? A. Yes, sir. Q. And then, as I understand you, the so-called collar was put down or telescoped over the outside of that barrel extension? A. Yes, sir. Q. Now, was this solvent allowed to set up and harden before ycu did anything else with it? A. Well, there was —I wouldn’t say it was allowed to set up and harden. There was a time lag between when that was done and anything else that was done to the sprayer. Q. In other words, that would be a good, firm bond by the time you got around to say putting the cap on? A. I would say so. Q. Now, are you familiar with—do you have any familiarity at all with the strength of the bond you get by this [389] uniting with solvent such as you have described? A. Well, yes, I would say it was very strong. Q. Very strong. Well, suppose I wanted to try to— after this had set up the way you describe—suppose I wanted to try to screw down this collar so that the bottom of the collar would touch down here (indicating)—see what I mean—then, if I screwed it further, then you see that might pull this retainer off or collar off, if it weren't united firmly. You see what I mean? A. Yes, sir. 179 Q. You think I could do that by screwing down the cap? A. In most cases, no. Q. What do you mean in most cases? A. Well, if there was a proper application of solvent. Q. In other words, if you did your job right, then that could not be done? A. I wouldn’t think so. ._ * * [399] RALPH G. MARTIN, recalled as a witness on behalf of the plaintiff, testified as follows: Direct Examination by Mr. Conrad. Q. You are the same Mr. Martin who testified earlier? [400] A. Yes, that is right. Q. This is just for the purpose of the record, Mr. Martin; I have no doubt about it myself. Mr. Martin, you are familiar with the Wilco Company who I believe manu- factured this product identified as Plaintiff’s Exhibit B? A. Yes, sir. Q. Now, if I understood from what was said that you sell them the snrayer? A. That is true. Q. Do you have any business relations with the Wilco Company other than that of supplier and customer of dis- pensers? A. We are both a customer of Wilco and they are a customer of ours. Q. In what respect are you a customer? A. We buy that starch from them. Q. Do you have some arrangement with them where- by you distribute their product? A. That is right. Q. Is there any kind of license agreement? A. Yes, there is a written arrangement with them. Q. I see. And how old is that agreement? A. I don’t think it is a year old yet. Q. And do you recall how long ago you started nego- tiating? A. No. We talked about them distributing west of the Rocky Mountains, generally in the western eight states, and they [401] were very successful in California, and they wanted representation east of the Rocky Moun- 180 tains and we didn’t know whether to get into it or not. We had some other things to do. Q. You say the agreement is about a year old so you say you perhaps started negotiating as far back as six- teen months ago? A. Well, it took us a long time to make up our mind. The actual negotiation didn’t take very long. Q. I see, but a month or more? A. Yes, sir. Q. What kind of stores ——— the best outlet? A. Grocery stores. Q. You mean by that super markets and grocery stores? A. Yes. Q. Do you have any idea how many large super markets there are in the country? A. No, I don’t. I have seen the figures but I don’t remember. Q. Over 10,000? A. Oh, yes, I would say so. * * * [402] ROBERT WISE, recalled as a witness on behalf of the plaintiff, testified as follows: Direct Examination by Mr. Conrad. Q. You are the same Mr. Wise who testified earlier in these proceedings? A. Yes, I am. Q. Mr. Wise, I have the impression from the defend- ant’s pretrial brief and also the opening statement and some of the evidence we have here that the defendant believes that Calmar is taking advantage of it by copying was not developed by copying from the defendant and need not say anything more about that, but what other comment do you have, if any, on this charge of copying that has been made by the defendant with respect to these products? A. Well, I realize that Cook Chemical seems aggrieved, but Calmar a2!so feels that they have been victimized some- what by the events that have taken place, which has pre- viously [403] been placed in testimony, but the first Bakan 1 sprayer was a copy of the Calmar sprayer down to the critical dimensions, but beyond that we introduced 181 our SS-40 sprayer commercially in January of 1959; I be- lieve it was December of ’59, if I remember the testimony correctly, that Bakan introduced their so-called Model 2 or modified Model 2 sprayer with overcap and they copied some of the Calmar features at that time, in our opinion. I wonder if I might have the modified 2 sprayer and SS-40 sprayer? I have the Mcdel 2 of— Q. I now hand you Plaintiff’s Exhibits P, Q and S, which show the Bakan 2 and Bakan 2 modified and also Bakan 3. You also have before you this matter that we have been referring to as the model of the SS-40. Is that sufficient for your purposes? A. Yes. The first overcap on the original Model 2 Bakan sprayer was this cap (in- dicating), and it was made of regular polyethylene. Q. That is which exhibit number that you just held up? A. This is Defendant’s Exhibit No. 30. They sub- sequently changed that, according to this testimony, to a modified Model 2 overcap which has no exhibit number, but I am confident that this represents the sample of it, in certain respects this copying of our SS-40 overcap. Mr. Scoggin may have been misinformed. He said that they [404] wanted to use linear polyethylene such as we had done in our SS-40 overcap instead of regular polyethylene. Q. That was brought out in the Bakan 2. A. He was under the impression that it was not available commer- cially at the time they modified the Model 2. I believe it can be substantiated that linear polyethylene was avail- able in 1955, commercially. Beyond that the original Model 2 overcap as exemplified in this board did not have hanging from the inside a cylindrical seal-in ring which the SS-40 as shown on that board did have. When they ‘modified the Model 2 they placed inside hanging down- wardly a sealing ring which, in the opinion of our people, tended to move the location of this seal closer to that of the SS-40 seal. Furthermore, once again the size was ap- propriated in that this cap can be placed on the threads of the SS-40 sprayer and this can be accommodated, which the first one could not do. This sprayer here (indicating), the original Bakan Model 2 overcap sprayer, the collar had two separate threads inside the overcap with two leads for the threads to start, but on the SS-40, we had one 182 _ continuous thread around the circumference of the collar which our engineers described as a buttress thread. This was copied in the Model 2 sprayer, the modified Model 2 sprayer. Q. Of Bakan? [405] A. Yes, sir. They went through several changes. We noticed they kept changing the depth and height of the cap. I happen to see a picture here which is Defendant’s Exhibit No. 82, and I believe that this represents the change on their collar configuration and the change on the sealing ring and I think there was what we called the short ring. They made it longer there, some- what approximating the length of our sealing ring now. That all happened in relation to No. 2 and it occurred in 1959. We must remember that the SS-40 was introduced in January of 1959. We have never changed the product in over three years. Along in 1960, Bakan once again made a change in bringing out their Model 3 with the inner seal in which the overcap was used to place in position a series of inner seals to contain liquids inside of the container and once again we felt that this had tended to copy us. Now, frankly, we believe that all of these changes have been beneficial to the business of the Cook Chemical Com- pany because it is our belief that their commercial success is somewhat related to the changes that they kept making in the sprayer with overcaps. Following our lead and is they made these changes, they enjoyed greater success in the market and Bakan being a division of Cook Chemical, even Cook has recognized the advantages of the Model 3 because, to the [406] best of my knowledge, all of the Real-Kill insecticide on the market today has the Model 3 sprayer on, even the bottle which Mr. Austin testified about the other day also has the Model 3 sprayer. We be- lieve it would be of great advantage and we believe Cook believes it to be of great advantage. [407] Q. Now, this is their device with the inner seal like your SS-40 had some long time before? A. That’s right. Q. Now, in connection with the advertising of the Bakan products have you noticed anything significant with respect to whether or not the Bakan 3, which you 183 say closely approximates your SS-40, is a better leakproof sprayer than say the Bakan 2 was, which consisted of the —which comprised a seal only between the collar and the overcap? A. We have noticed some unique changes, in our opinion. Our sales force pick up copies of Bakan literature periodically and send it in to the home office, and when they introduced the original Bakan Model 2 with overcap they sent out some literature, of which this is a Thermofax copy. Q. May I have that a moment? I would like to mark that as Plainti [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386411_0210%3A06. Public record. Not legal advice.