The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit for the alleged infringement of two patents.
1. Patent No. 1,964,911, issued to Earle C. Haas, for catamenial device, granted July 3, 1934, on an application filed May 22, 1933, of which Claim 1 is in suit.
2. Patent No. 2,024,218, issued to Earle C. Haas, for catamenial device, granted December 17, 1935, on an application filed June 2, 1934, of which Claims 1, 2 and 3 are in suit.
The first patent aforesaid, No. 1,964,911, in the specification states "This invention relates to a catamenial device, and the process of manufacturing the same. It relates more particularly to a catamenial device of the type illustrated in copending application, Serial No. 776,179, Patent No. 1,926,900 of which this application is a continuation in part."
The second patent aforesaid, No. 2,024,218, in the specification states "This invention relates to a catamenial device and to means for manufacturing, packing and using the same. It relates more particularly to a catamenial device of the type illustrated in applicant's Patent No. 1,926,900 and copending application, Serial No. 672,145 now Patent No. 1,964,911, of which this application is a continuation in part."
The plaintiff Tampax Sales Corporation is a Colorado corporation and the owner of the patents in suit.
The plaintiff Tampax Incorporated is a Delaware corporation and the exclusive licensee of the patents in suit.
The defendant Personal Products Corporation is a New Jersey corporation and the manufacturer of the alleged infringing devices. It is a subsidiary of Johnson & Johnson of New Brunswick, New Jersey.
The defendant Isidore H. Schwartz, trading as Highland Pharmacy, conducts a drug store at 3079 Fulton Street, Brooklyn, New York, in this district and has sold some of the alleged infringing articles at retail.
There being no occasion for continued reference to the defendant Schwartz, I shall hereinafter in this opinion use the term defendant as referring to the Personal Products Corporation alone.
The defendant interposed an answer and is now defending on the defenses of invalidity and noninfringement as to both patents and as to Patent No. 2,024,218 that the precise device of the claims was on sale in this country and was described in printed publications more than two years prior to the application for the patent.
The alleged infringing articles comprise vaginal tampons known as "Meds", and combined containers and applicators in which those tampons are sold.
I will consider the patents in their order.
This patent is directed to a vaginal tampon, or catamenial device. In Fig. 4 there is disclosed an applicator for such device of a particular form the use of which by any body is not disclosed in the record. The only claim in suit is Claim 1 which is for the tampon itself and there is no mention of an applicator in that claim nor in any claim of said patent in suit.
The patentee in the patent in suit speaking of catamenial devices of this character says, "Such devices comprise an absorbent member to be placed in the vagina with a depending, flexible withdrawing member by means of which the absorbent member may be withdrawn."
The patentee then states reasons why prior vaginal tampons were objectionable including that they were unsanitary and inconvenient to insert, difficult to withdraw, and "liable to separate in the vagina so as to leave fibers or a portion of the pad remaining therein."
The patentee in the specification of the patent in suit says, "The principal object of the invention is to provide a catamenial device of this character which will have a maximum of expansion when in use; a minimum of size when not in use; which will insure the removal of all of the fibers of the catamenial pad when the pad is withdrawn; which will straighten and elongate itself to a minimum diameter during withdrawal; which can be conveniently inserted."
To impart the last two attributes to the tampon the patentee says, "In the strips 10 the fibers naturally extend laterally so that the strips could be easily pulled apart in a longitudinal direction, but would resist pulling apart in a lateral direction. To increase the longitudinal strength of the strip, a thread seam 11 is stitched throughout the length thereof. This seam firmly ties all of the lateral fibers together and produces a strip which resists separation both laterally and longitudinally." See Fig. 1.
The patentee further said, "The next step in the manufacture of the device is to fold in the pad 11 into convolutions such as shown in Fig. 2 to reduce the length thereof." The designation of the pad, at that point in the patent, by the No. 11 is an error, and it should be by the No. 10, as that is the number designating the pad, and 11 is the number designating the stitching in the other portions of the patent in suit.
The withdrawing member 12 is formed by continuing the stitching beyond the extremity of the strip 10.
The patentee then describes the completion of the tampon by saying, "This folded convoluted pad is then placed into a die and pressed under high pressure from both the sides and the end to form a hard cylindrical core 13 with the withdrawing member 12 extending therefrom."
Claim 1, the only claim of that patent in suit, reads as follows: "1. A catamenial device comprising: a highly compressed, self-sustaining, absorbent core; and a flexible member secured to and depending from said core to form a withdrawing member, said core comprising a compressed, convoluted strip of absorbent material, said core being considerably shorter than said strip."
The defendant offered in evidence the following prior art patents.
Patent No. 582,926 to Robert W. Johnson, for surgical absorbent dressing, granted May 18, 1897 which discloses a substitute for sponges used by surgeons in surgical operations, or in the treatment of wounds in the form of a compressed tablet of sterilized absorbent cotton having one or more of its faces protected by other material. The patentee in that patent says, "The sterilized cotton tablets can also be obtained by packing the absorbent cotton in a die and subjecting it to heavy pressure, and thus bunching it in the form of tablets having substantially the consistency of blotting paper."
Patent No. 749,220 to Edmund Morse Pond, for medicated tampon, granted January 12, 1904 which discloses an improved tampon particularly useful for internal medication of the uterine system or the rectum.
The defendant in the manufacture of its tampon, of which complaint is made in this case at bar, essentially follows the disclosure of that patent in contrast to the first patent in suit.
That patent starts with a strip of absorbent cotton whose fibers run longitudinally not transversely.Then it ties a withdrawal cord about the middle of the strip instead of sewing a thread longitudinally of the strip, and extending it beyond to provide a withdrawal cord. Next it reduces the length of the strip to about one half by doubling it over about its corded middle to reduce the length of the strip in preparation for the compression of the material to its final size and shape, instead of convoluting the strip. After having doubled the strip over upon itself the doubled strip is compressed to its final size and shape, instead of being convoluted. The result being that the strip is merely creased haphazardly as a necessary incident to the compression operation itself. By the use of the withdrawal cord the tampon is withdrawn in double thinkness and not in a single thickness. In that patent it is not specifically stated that the contemplated compression is sufficient to render the pad self-sustaining, but as is shown by the prior art cited it was old to do that. It is true that the applicator is of a different form, but that does not require atention at this time as the claim in suit of the first patent in suit deals with the tampon, and not the applicator. There is an additional factor in Pond which suggests the use of a separate medicated capsule but that does not require consideration.
Patent No. 1,074,245 to Henry Casevitz for hygienic textile sponge, granted September 30, 1913 discloses a sponge of textile material and the patentee says, "In forming my hygienic sponge of cotton for example I preferably take a piece of hydrophil cotton of rectangular form, Fig. 1, and give it a double fold as shown in Fig. 2. The piece of cotton thus folded is then placed in a tubular matrix, and subjected to pressure by a picton working in the cylinder, sufficient to compress the cotton to the form of a circular disk or cylinder as shown in Fig. 3." This would produce a self-sustaining cylinder, and of course that compression would produce incidental transverse folds, but there is no mention in that patent of the sponge being ...