The opinion of the court was delivered by: BYERS
This is a suit in equity in which the plaintiff seeks the customary injunction and accounting for the alleged infringement of Letters Patent, namely Reissue Patent No. 18,841 which is a reissue of Reissue Patent No. 17,393, the original Patent having been No. 1,622,957 (application filed March 19, 1925, in the United States, and in Germany April 9, 1924).
The plaintiff corporation is the owner by assignment of the Patent in suit, and the defendant is a dealer in certain devices which are alleged to infringe.
No issue is made on the subject of infringement, and the defenses are invalidity, (a) that there was prior knowledge and public use of the patented process, and (b) that the Patent in suit is invalid for lack of invention over the prior art.
Invalidity is further asserted on the following grounds:
(a) The intervening Reissue Patent No. 17,393 was void on the date of its surrender, May 30, 1933, because no disclaimer had been entered in the Patent Office of certain of its claims which had been held invalid by the Circuit Court of Appeals for the Sixth Circuit on October 12, 1932. (Naivette v. Bishinger, 61 F.2d 433).
(b) Reissue Patent No. 17,393 was invalid because the failure to assert claims like 8, 9 and 10 in the original Patent No. 1,622,957 was not due to inadvertence, the subject matter of those claims having been deliberately surrendered in the prosecution of the original Patent.
(c) Reissue Patent No. 17,393 was invalid and void because there was unreasonable neglect and delay in filing the application therefor.
(d) The Patent in suit, Reissue No. 18,841, is invalid because it does not describe the process which it purports to claim in such manner as to meet the statutory requirements of section 4888, Rev.St. as amended, 35 U.S.C.A. § 33.
These defenses are stated in the order of their importance to this controversy.
The Reissue Patent in suit was filed March 30, 1933, and covers the process of waving hair upon the human head so as to closely simulate naturally wavy or curly hair. The Patent describes the various devices by which the desired result is said to be produced, and the claims in suit are Nos. 3 and 5, reading as follows:
"3. The process of waving hair upon the human head which comprises dividing the hair into flat strands, gripping one strand adjacent the scalp of the wearer with a clamp, winding said strand spirally from its end to near said clamp upon a rod, covering said strand with an absorbent material containing hair treating solution, next covering said strand and material with a moisture retaining envelope, and then applying heat to said strand."
"5. The process of waving hair upon the human head which comprises gripping a flat strand of hair adjacent to the scalp with a moisture-tight clamp, winding said strand spirally from its end upon a rod nearly to said clamp, enclosing said strand together with moisture in a moisture retaining envelope, enclosing said strand and envelope within a heater extending about the same to the clamp, and then causing the heater to supply heat to the strand."
The last-quoted claim was claim 10 of Mayer Reissue Patent No. 17,393, which was adjudicated by the Circuit Court of Appeals of the Sixth Circuit in the case of Naivette v. Bishinger, 61 F.2d 433, 435, and therein upheld as a valid process claim.
Claim 9 of the same Patent was also upheld and is said to be the same as claim 4 of the Patent now before the court, which is not in suit. For ready reference, it is here quoted:
"4. The process of waving hair upon the human head which comprises dividing the hair into flat strands, surrounding one strand adjacent the scalp of the wearer with a clamp, winding said strand from its end to near said clamp upon a rod, treating said strand with a solution and enclosing the strand in a substantially moisture-tight envelope, covering said envelope with a sectional heater extending to said clamp, and then causing said heater to apply heat to said strand."
The opinion in Naivette v. Bishinger, supra, contains such a discussion of the art of hair waving as here involved, that repetition of what is therein said is unnecessary. It will suffice to state that two methods have been known, namely, the spiral or spindle method, and the Croquignole. In the former, the hair was wound helically, that is, like a screw thread, on a spindle, then moistened and subjected to heat; in the latter, the hair was wound spirally, that is, wrapped in overlying layers upon a rod and then heated. In spiral winding, the operation commences at the scalp and is completed at the hair ends, and in the Croquignole method, winding begins at the hair ends and continues to or near the scalp.
In both processes, it is required that tension be applied to each filament of hair during the winding in order that the hair may be stretched, and this tension must be retained while the heat is being applied.
In spiral winding as practised when hair waving upon the human head came into vogue, the operator could protect the scalp of the subject by holding the strand in his left hand at the scalp, and he was enabled to conduct the winding operation under tension supplied by the right hand, and then to tie the strand in its wound condition, and then apply the moisture and the heat.
As the Croquignole process required the winding of the strand from the hair end toward the scalp and as each filament of hair had to be uniformly stretched and curled, the operation could not be performed unless an intervening agency was supplied to relieve the subject of the sensation of pulling while the winding proceeded.
That was the recognized problem in Croquignole winding which existed when it was desired to impress this particular kind of wave upon the human head, but it did not exist when artificial hair was so waved, and thus it follows that, while Croquignole waving was known for many years prior to the granting of the Mayer Patent, it could not be practised except in the treatment of artificial hair.
The problem was solved by Mayer in the introduction of the clamp referred to in the foregoing claims. That was a device which was used so as to admit of the application of tension to the strand between the clamp and the hair ends, and this tension was not communicated to the scalp of the subject; this permitted not only the use of tension during the winding but its retention during the setting of the curl.
This much may be quoted from the opinion in the case of Naivette v. Bishinger, supra, to indicate the authority for what has been stated thus far in this opinion:
"It is true that Popin in his earlier patent, No. 1,447,997, issued March 13, 1923, discloses a flat band, surrounded by a shield intended to function as an insulating device. It is clear that while the desirability of a flat strand is indicated, the strand cannot by Popin's shield be held under tension away from the scalp, nor is the means employed useful in holding the several filaments of the strand in the exact relation to each other now considered so desirable in the art of Croquignole waving. It is also true that in the spindle art tension upon the filaments was thought to be necessary to secure a satisfactory wave or curl, but in the spindle process the obtaining of tension upon the hair is relatively a simple matter. New methods of obtaining and keeping the hair under tension were necessary to be devised in giving the Croquignole wave."
That decision has been followed in other litigation between this plaintiff and other defendants in which some of the questions here involved have been decided in the plaintiff's favor:
The Philad Company and The Realistic Permanent Wave Machine Company v. Florence Frey, U.S. District Court, Southern District of Ohio, Western Division, ...