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DYKEMA v. LIGGETT DRUG CO.

April 2, 1937

DYKEMA
v.
LIGGETT DRUG CO., Inc.



The opinion of the court was delivered by: KNIGHT

KNIGHT, District Judge.

This is a patent suit which charges infringement of claims 2 to 9, inclusive, of Dykema reissue patent No. 19,520, granted April 9, 1935, for which application was filed January 29, 1935. The original patent No. 1,843,812 was granted February 2, 1932, upon an application filed February 7, 1931. Claims 2 and 4 in issue are identical with the same numbered claims of the original patent. Claim 3, as amended, and claims 5 to 7, inclusive, were included in the application for the reissue and claims 8 and 9 were added in the proceedings in the Patent Office for the reissue patent.

The invention relates to a "bottle closure and liquid dropper" referred to throughout the trial as a "fitment." The complaint charges the unauthorized sale of this fitment and also of the combination of such fitment with the bottle. The answer alleges invalidity by reason of anticipation by prior patents, lack of invention, lack of disclosure, and supporting oath and noninfringement.

 The ordinary medicine dropper of bulb and tube has been known for many years. It its early use the cork of the bottle was removed, the tube of the dropper inserted, filled or emptied by squeezing the bulb of the dropper, and then removed from the bottle and the cork replaced. It is apparent that there are certain disadvantages in such use. Among these are liability to loss of parts, damage to the tube, contamination, and unnecessary disorder in the use. The art has developed in the direction of overcoming these disadvantages, and today devices such as described in the patent in suit and somewhat similar ones are in common use.

 The plaintiff claims he conceived the idea of his invention in 1928, and that it was developed from the so-called "Barnes" combined dropper and stopper in use since about 1916. Other patented devices showing a dropper in combination in use with and insertible through a bottle cap top were disclosed prior to 1928.

 The invention claimed is said to lie in a fitment in which the cap and dropper are frictionally engaged whereby they move together as a unit upon removal from the bottle. All of the elements of plaintiff's device are set up in claim 9 of the reissue. That claim reads:

 "A combined bottle closure and liquid dropper comprising a rigid cap having a central opening in it and adapted to fit over and form a cover for the top of a bottle and a liquid dropper consisting of an externally flanged elastic bulb having a dropper tube engaged in an open neck forming the bottom of the bulb, the diameter of said opening in the cap being at least approximately as great as the external diameter of the upper or squeezing portion of the bulb, one of said tube and neck being provided with a groove and the other thereof being provided with a flange interengaging said groove, the external flange of the bulb being disposed substantially at the bottom of the bulb so that no substantial portion of the bulb extends down into the bottle and about the region of the interengaging portions of the tube and neck to enhance the engagement therebetween and being of such diameter as to seat on the bottle to seal the same upon application of the cap thereto, said bulb being extended upwardly through the opening in said cap with the dropper tube projecting there below and the body of the bulb frictionally engaging the cap whereby adapting the dropper to move with the cap as a unit."

 Plaintiff's original application contained a single claim. It included no claim to frictional engagement or unitary structure, but it did state that the tube and bulb flange were interengaged by a groove in the periphery of the flange and a bead on the upper end of the tube. Before action in the Patent Office, claim 2 was added. This was identical with claim 1, except that it provided for alternative methods of interengagement between the bulb flange and the upper end of the tube. Both of these claims were rejected as unpatentable over Rodiger No. 463,215 issued in 1891, in view of Fitzsimmons No. 726,038 issued in 1903. The Patent Office also gave Kerner No. 328,122 issued in 1885 as a reference. There can be no doubt that original claims 1 and 2 were unpatentable over these references. Fitzsimmons taught the seating of the bead of the dropper in a groove of a flange of a bulb, and Kerner taught the seating of the bead of the dropper in the bulb immediately above the flange of the bulb. It would require only mechanical skill to change from the teaching of the last two mentioned patents to the engagement shown in claim 2. Rodiger shows every other essential element of claims 1 and 2 as they were in their original forms.

 Prior to the filing of his original application, plaintiff had been advised by his attorneys, who did subsequently file the application, that in their opinion Rodiger anticipated the then proposed invention. In September, 1931, plaintiff amended his application to strike out the word "removably" in claims 1 and 2 and insert, following the word "associated," the words "removably as a unit" and also striking out the word "and" last appearing in each claim and inserting "to be frictionally engaged by said cap, and said flange."

 As amended, claim 2 read, in part: "said bulb passing upwardly through the aperture in said cap with sealing flange surrounded by said skirt and engaging the top of said cap to be frictionally engaged by said cap, and said flange forming with lip of said neck the sole seal for the container when the neck is engaged by the cap."

 As so amended, the claim appears in the reissue patent. Plaintiff asserts that amended claim 2 calls broadly for the bulb as being frictionally engaged by the cap. Defendant asserts that it calls for frictional engagement only between the periphery of the flange and the interior of the skirt of the cap. It seems to me that this particular claim calls for engagement between the flange and the cap and that the engagement referred to is at the point of contact of the periphery of the flange and the skirt of the cap. However, it will make no change in the result whichever interpretation is adopted. Rodiger does not show a unitary structure or interengagement between the head of the bulb and the rim of the aperture in the cap or a flange frictionally engaged by the cap.

 Claims 3 and 4 were added to the original application in the Patent Office. They differed from claims 1 and 2 with respect to the description of the frictional engagement between the members of the combination in this respect. Claim 3 then read: "The body of the bulb frictionally engaging the cap whereby adapting the dropper to move with the cap as a unit." Claim 4 describes the flange of the bulb as being "adapted to frictionally engage the skirt of the cap in such a way as to cause the cap and dropper to move as a unit when the cap is removed from the bottle." Claim 3, as amended in the reissue application, discloses the alternative method of interengagement between bulb, flange, and tube included in claim 2 and also discloses another feature not theretofore specifically described or claimed. The latter is found in this language: "The external flange of the bulb being disposed about the region of the interengaging portions of the tube and neck to enhance the engagement therebetween."

 Claim 5 limits the thickness of the flange of the bulb by describing it as "disposed substantially at the bottom of the bulb so that no substantial portion of the bulb extends down into the bottle." This limitation appears only in claims 5 and 9. Claim 6 adds this new limitation in describing the dropper tube as "grippingly engaged in an open neck forming the bottom of the bulb." Enhancement of engagement between tube and neck is here claimed, as in claims 3 and 9. Claim 7 contains no element not found in one of the prior claims. Claim 8 defines a structure with a cap opening "approximately as great as the external diameter of the upper squeezing portion of the bulb." Here we find the first limitation of the size of the opening in the cap. This claim sets out the alternative methods of engagement between flange and tube. Claim 9 is more limited than claim 8. It fixes the diameter of the opening of the cap. It describes the alternative method of engagement between tube and flange, limits the thickness of the flange of the bulb, and, as in claims 3 and 6, describes enhancement of the engagement between tube and neck.

 In the foregoing references to elements of the various claims, I have included only such as are claimed to be new and novel. Each claim describes a combination of a dropper and bottle cap, in which the squeezing portion of the bulb of the dropper is extended upwardly through an opening in the cap and in which the said bulb has a flange at its lower end which seats on the top of the bottle to cover the opening and in which flange a glass tube, extending down into the bottle opening, interengages.

 "Frictional engagement," as it is to be construed here, means such contact between surfaces of two bodies so placed that in the separation of them one surface will necessarily be drawn across the other thus creating a rubbing effect which requires the exertion of some force to separate the two bodies. Claim 4 definitely fixes the point of engagement as between the flange of the bulb and the skirt of the cap. Claim 2 fixes the engagement as being between the flange and the skirt of the cap. Each of the other claims is limited to frictional engagement between the body of the bulb and the cap.

 Doubt is sought to be thrown around the meaning of the words "body of the bulb." Plaintiff asserts that it refers to the entire rubber portion of the structure. Defendant contends that it is to be construed as including only the flange. The "frictional engagement" in all claims must be either at the point of contact between the periphery of the flange and the side or skirt of the cap, or at the point of contact between the upwardly extending portion of the bulb and the periphery of the opening of the cap. If the "body" of the bulb means the "flange," certain of these claims do describe frictional engagement between the body of the bulb and the cap. Further, in so far as certain of the claims give the diameter of the opening in the cap as at least approximately as great as the external diameter of the upper or squeezing portion of the bulb, frictional engagement is sufficiently described.This is particularly true when the claims are read in the light of the specifications and the drawings. The specifications and drawings of the original patent support the granting of such claims in the reissue patent.

 Defendant admits the sale of the structures claimed by plaintiff to infringe.The defendant has made proof of numerous patents ante-dating Dykema. With the exception of a few, they have been offered to show the development and state of the art. Reliance is placed mainly on Rodiger, Steiner, and Fitzsimmons, supra, as anticipating Dykema. For the purpose of clarity, diagrams of the Barnes stopper, the Dykema, Rodiger, and Steiner devices and defendant's admitted structures are here shown:

 [See Illustration in Original]

 In the Dykema drawing numeral 1 shows the elastic bulb; 2, the opening in the lower end of the bulb; 3, the outwardly extending flange; 4, the grooved periphery in the inner surface of the flange; 5, the bead head on the glass dropper; 6, the glass dropper; 7, the skirt of the bottle cap; 8, the bottle neck; 9, the bottle; 10, the flange at the top of the cap.

 Rodiger shows a bulb, b' extending through and above and below the bottle cap; a dropper, b connected with the bulb; bottle neck, a', screw cap, E, and e, an inwardly extending flange on the cap, and an outwardly extending flange on the bulb at the lower end, being part of the bulb and extending no substantial depth into the bottle neck. No frictional engagement between bulb or flange and the cap is shown. Rodiger does not disclose a tube interengaged with the bulb flange. The bead of the tube is seated above the flange. Barnes, Kerner, and Fitzsimmons, supra, however, clearly teach an engagement which is the equivalent of that shown by Dykema as regards such interengagement.

 Barnes shows a dropper comprised of a rubber bulb and a glass tube suspended from its interior. The bulb has a flange at its midsection which seats over the top of the bottle. The bulb below the flange extends into the bottle neck. The tube is held in place at its upper end by its bead which is engaged in a groove in the flange of the bulb. The bulb acts as a stopper. It shows no separate cap.

 Defendant's structure No. 1 is Exhibit No. 1 in evidence; No. 5 is Exhibit No. 2 in evidence; No. 4 is Exhibit No. 3 in evidence; No. 7 is Exhibit No. 4 in evidence; No. 3 is Exhibit No. 5 in evidence; and No. 6 is Exhibit No. 6 in evidence.

 Defendant's structure, shown above as No. 1 (Plaintiff's Exhibit No. 5 in evidence), does not infringe any of the claims. It discloses no frictional engagement between the periphery of the flange and cap or between the squeezing portion of the bulb and the flange of the cap to make a unitary structure. Such engagement as is found is between the flange and the thread of the cap. This is not a frictional engagement. Plaintiff's specifications recite that the flange of the bulb engages the bead of the dropper and each of plaintiff's claims shows one of such parts grooved and the other flanged to secure them in the proper relation to each other. Like Kerner and Rodiger, defendant shows a bead above the rubber flange. The patent examiner correctly said that: "To seat the bead of the dropper member in a groove as taught by Fitzsimmons would require only mechanical skill." The same expression is applicable to a device showing interengagment between a groove in the dropper tube and a flange in the neck of the bulb.

 What has been said with reference to defendant's structure No. 1 is equally applicable to structure No. 4 (Exhibit No. 7). Indeed, much less question of infringement can arise, since the diameter of the upwardly extending portion of the bulb throughout its length is much less than the diameter of the opening in the cap. What has been said with reference to structure No. 1 is likewise applicable to structure No. 5 (Exhibit No. 6). In addition, this structure as well as structures Nos. 6, 7, and 8, shows an interlocking between the bulb and the cap by means of a shoulder on the upwardly extending portion of the bulb, which finds its equivalent in Steiner. Structure No. 7 (Exhibit No. 8) is equivalent in all material respects to structure No. 5 (Exhibit No. 6), except that the flange of the cap closely engages that portion of the bulb between the sealing flange and the locking flange. The use of the locking flange takes the structure without the scope of the claims of the patent.

 The record discloses no physical exhibit of structures Nos. 2 and 8.It is apparent that structure No. 8 shows all of the features of structure No. 6 (Exhibit 10) and No. 7 (Exhibit 8).

 Steiner shows a screw threaded cap mating with a screw threaded bottle neck and with a central opening in which a rubber bulb is mounted. This bulb has a flange which serves as a "sole seal for the container when the neck is engaged by the bottle." It shows a dropper tube mounted in the bulb and depending below into the bottle. The lower part of the bulb extends below its flange and the tube is held in place in this lower part of the bulb below the flange. Steiner shows a combination of a screw cap bottle closure and a liquid dropper. Its unitary quality results from the engagement of the top of the cap between the top of the flange and a bead or rib on the bulb just above the cap hole. These parts are thus interlocked. Steiner does not show frictional engagement between bulb and cap as a necessary feature in the unitary structure. With respect to this method of interlocking, Steiner is the equivalent of defendant's structures 5, 6, 7, and 8. None show frictional engagement as disclosed by Dykema.

 Assuming, as is here found, that Fitzsimmons anticipates as regards interengagement between the tube and the flange, the defendant does not infringe as respects these four structures. The main claim for Steiner is that it shows a unitary structure. The patent so specifically describes it, but the method of construction to make it unitary is entirely different from Dykema. There is another Steiner patent No. 1,304,115, but, because of the closeness in comparison with No. 1,362,053, it has not been deemed necessary to describe it. Structure No. 3 (Exhibit No. 9 in evidence) shows all of the elements of each of the claims in suit, except claims 2 and 4.There may be some doubt about this, but it appears that it does not show frictional engagement between the flange of the bulb and the cap. It does disclose frictional engagement between the body of the bulb and the cap at the point where they contact each other at the opening of the cap. It is the frictional engagement at this point which makes the structure unitary. The structure discloses interengagement between the tube and the flange, since the diameter of the opening in the cap approximates the external diameter of the upper or squeezing portion of the bulb. Structure No. 2 infringes all claims except 8 and 9 differing from structure No. 3 (Exhibit 9) in that it discloses frictional engagement between the periphery of the flange and the side of the cap and not between the bulb and the periphery of the top flange of the cap. These two structures Nos. 2 and 3 infringe, provided plaintiff's device is patentable. Indeed, the defendant makes the issue of infringement a secondary one. Several reasons are urged against the patentability of the plaintiff's structure. The most persuasive of the reasons given against patentability is that it required only mechanical skill to change Rodiger into Dykema. The only physical things necessary to accomplish this are the extension of the bulb flange out against the side of the cap and the narrowing of the opening in the top of the cap to the approximate size of the upwardly extending part of the bulb. The fact that the upward extending portion of the bulb is not of uniform diameter may not be material. The difference in the methods by which the tube is held in place is material. Either method may be said to be so devised as to "enhance" the engagement between the parts.

 The evidence establishes the fact that Dykema conceived the idea of his device in the latter part of 1928, and that in 1930 he was active in experimenting and procuring material for such device; that during that year he made a drawing of and produced a fitment substantially as shown in the patent; and took steps directed to the manufacture and sale of such fitments.

 The evidence establishes the fact that Dykema antedated Milburn patent No. 1,870,780, granted August 9, 1932, application filed August 26, 1929; Bowman & Fentress patent No. 1,875,325, granted September 6, 1932, application filed February 25, 1930, and a dropper advertised by Vicks in January, 1931. These two patents relate to dropper and closure devices. On the application for his reissue, Dykema swore back of Milburn. Frictional engagement originally was not claimed by Milburn. In February, 1932, a claim worded in practically the identical words used in Dykema's claim 3 made on December 16, 1931, was included. The Vick dropper of 1931 in outward appearance seems to have generally the form of Dykema.

 For a period, from March, 1934, to April, 1935, Dykema owned both the Milburn and the Bowman & Fentress patents. It is claimed that the failure of Dykema to disclaim Milburn's claim 3 shows such inequitable conduct as might bar relief though the patent were otherwise valid. No such disclaimer was necessary. The failure to file a disclaimer as to Milburn could not affect the validity of Dykema. 35 U.S.C. § 65 (35 U.S.C.A. § 65). The law is well settled that it is not necessary to file a disclaimer until there has been a judicial determination that the claim is invalid.Triplett v. Lowell, 297 U.S. 638, 56 S. Ct. 645, 80 L. Ed. 949; Excelsior Steel Furnace Co. v. F. Meyer & Bro. Co. (C.C.A.) 36 F.2d 447; Ensten v. Rich-Sampliner Co. (D.C.) 13 F.2d 132. It seems to me this rule of law is applicable though the patents involved are owned by a single party. Altoona Publix Theatres, Inc., v. American Tri-Ergon Corp. et al., 294 U.S. 477, 55 S. Ct. 455, 79 L. Ed. 1005, and Ensten v. Simon, Ascher & Co., 282 U.S. 445, 51 S. Ct. 207, 75 L. Ed. 453, cited by defendant, have no application to the facts shown here.

 It is claimed that the patent in suit is invalid for lack of disclosure or supporting oath. The statute requires that the inventor shall make "a written description * * * in such full, clear, concise, and exact terms as to enable any person skilled in the art * * * to make * * * the same." U.S.C., title 35, § 33 (35 U.S.C.A. § 33). It also provides that the applicant shall make an oath that he is the original and first inventor. U.S.C., title 35, § 35 (35 U.S.C.A. § 35). The test of invalidity by reason of lack of disclosure is whether a claim is fairly derivable from the sworn disclosure. Westinghouse Electric & Mfg. Co. v. Metropolitan Electric Mfg. Co. (C.C.A.) 290 F. 661. Claim 2 shows an alternative method of interengagement between the top of the dropper tube and the flange of the bulb, while claim 1 describes a single method of interengagement. It seems to me that claim 2 is fairly derivable from the sworn original disclosure, and, further, as claimed by the plaintiff, plaintiff might have invoked the doctrine of equivalents without amendment. It is claimed that the amended claims including "enhancement" of the engagement between tube and bulb are likewise invalid. Such enhancement necessarily is measured to some extent by the width of the flange. The original specifications together with the drawing show such a combination of flange and tube as to indicate enhancement. Claim 4 in the original patent includes enhancement of such engagement and is fairly derivable in this respect from the original specifications and drawing when taken together.

 The original claim 1 included no reference to engagement of the body of the bulb with the cap. Reissue claim 2 speaks of the flange as engaging the cap. All the other claims speak of engagement between the "body of the bulb" and the cap. Defendant claims that there is no basis in the original disclosure for interpretation for any of the claims broadly enough to cover frictional engagement between the bulb and cap elsewhere than between the periphery of the flange and the interior of the skirt of the cap. The original application reads: "The stopper-dropper is assembled for use by forcing bulb 1 upwardly through aperture 11 to seat flange 3 within the cap against top 10." Illustrative of this declaration is the drawing of the patent showing the flange of the bulb extending the entire width of the cap and the upwardly extending bulb in close proximity of the edge of the opening in the cap and approximately the size of the opening. It seems to me that the specifications and the drawing are sufficiently comprehensive to entitle the applicant to claim frictional engagement between the upwardly extending portion of the bulb and the opening in the cap. T.H. Symington Co. v. National Malleable Castings Co., 250 U.S. 383, 39 S. Ct. 542, 63 L. Ed. 1045; Miner v. T.H. Symington Co. (D.C.) 238 F. 806.

 All of the amendments in the original application were derivable from the original specifications and claims. The only other new matter to which it is necessary to refer is that shown in claims 8 and 9 wherein it is claimed that the diameter of the upwardly extending portion of the bulb is approximately the same as the diameter in the opening in the cap. Each of these claims reads upon the disclosure of plaintiff's drawing and is fairly derivable from the original specifications. As regards all new matter appearing in the reissue patent, the reissue oath takes the place of supplemental oath under rule 48. Kwik-Set, Inc., v. Welch Grape Juice Co. (D.C.) 14 F.Supp. 137.

 Defendant's structure No. 2 infringes 2 to 9, inclusive, and structure No. 3 (exhibit 9) infringes all of such claims except claims 2 and 4.

 Was the creation of plaintiff's device invention? It seems to me it was. Several reasons support this conclusion. A presumption of patentability arises from the issuance of the patent. The applications herein seem to have had extensive investigation in the Patent Office. The patent is a simple one. Simplicity does not deny patentability. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 22 S. Ct. 698, 46 L. Ed. 968. The vision clears after demonstration. Numerous combination dropper and filler patented devices in evidence demonstrate this. Despite the need, no one devised a combined bottle and closure structure made unitary by frictional engagement for many years prior to Dykema. As said by Judge Hand in H.C. White Co. v. Morton E. Converse & Son Co. et al. (C.C.A.) 20 F.2d 311, 313: "We see in this an invention just because, being so simple, it had not occurred to any one before. The fact that the changes were so slight is quite irrelevant, so long as they were essential to the purpose, as they were. While the statute grants monopolies only for new structures, and not for new uses, invention is not to be gauged by the necessary physical changes, so long as there are some, but by the directing conception which alone can beget them. * * * That was certainly absent before it came to White's mind."

 Nothing in the prior art shows a combined dropper and closure structure of this form made unitary by frictional engagement. The patentability over Rodiger is not denied. Dykema shows new, novel, and useful uses for which Rodiger and prior patents or devices were not suited. Dykema satisfied a want not met theretofore by those skilled in the art. This is strong evidence of patentability under the facts in this case. Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 55 S. Ct. 449, 79 L. Ed. 997. While the prior art shows certain of the elements or parts of the Dykema combination combined in the same general way as Dykema, all lack the element of "frictional engagement" as shown by Dykema in a unitary structure.

 That patentability appears to be recognized by the makers of combination droppers and fillers, is shown by exhibits of their products in evidence and also by numerous types of defendant's structures. The drawings herein show the defendant's varieties. The Mistol, Pureco, Dolph's Sabalol, Lilly, Abbott, UpJohn, and other combined droppers and closures in evidence, disclose combinations made in slightly different forms from Dykema. Certain of these are patented and certain are not. E.R. Squibb & Son, Parke Davis & Co., UpJohn Company, Abbott Laboratories, Stanco, Inc., McKesson and Robbins, large manufacturers of nasal preparations, use the Dykema device. This bespeaks a measure of supremacy. Plaintiff's device has had a great measure of commercial success. The record discloses that in five years upwards of 27,500,000 of plaintiff's devices were sold. This is evidence of invention.Washburn & Moen Mfg. Co. v. Norwood, 143 U.S. 275, 12 ...


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