The opinion of the court was delivered by: BYERS
This is a suit for claimed infringement of plaintiff's United States Letters Patent No. 2,236,387, dated March 25, 1941, for a perspiration inhibiting composition called Arrid (application filed May 3, 1938).
The defendant has sold the offending article, known as "Hind's Deodorant Cream", which was manufactured by Lehn & Fink Products Corporation; the latter assumed the defense of the action by the terms of a written stipulation, which also covers the giving of notice to the defendant on April 24, 1941.
The complaint was filed on April 28, 1941. The question litigated is validity, for while infringement is not conceded in so many words, there can be no doubt that, if the plaintiff has demonstrated patentable invention, he is entitled to the customary relief against the defendant.
Of the 16 claims in the patent, all but four (4, 9, 10 and 14) are in suit. Many of these are so drawn as to broadly cover an astringent composition consisting of ingredients classified according to their chemical characteristics, but for present purposes a concrete embodiment of the concept alone need be quoted -- thus claim 12:
"A cosmetic astringent preparation including aluminum sulphate as its essential astringent ingredient together with urea."
The aluminum sulphate and urea are embodied in a non-drying cream for convenient application, but no reaction not otherwise intended is thereby effected.The aluminum sulphate constitutes about 21%, and the urea about 12% of the composition, the base or cream accounting for about 66% of the bulk of the commodity.
The defendant's product contains 17% aluminum sulphate, 11% urea, and 72% cream base. Thus, in the practical sense, the two preparations are sufficiently alike to preclude any issue of infringement.
The theory of plaintiff's patent and its operation, if presently understood, may be stated thus: When the aluminum sulphate is placed upon the human skin, a hydrolysis or decomposition ensues, due to the reaction of the proteins of the skin upon the former; that sets up an excess acidity which, if not modified, would have a deleterious effect, surely upon textile fabrics to which the compound is transferred, i.e., the armpit portions of apparel; and perhaps (although this is debatable) upon the affected area of the skin itself.
It is necessary to pause sufficiently to observe that this primary reaction is a necessary one, as otherwise the astringent properties would not be released, and the output of the perspiration glands would not be restricted, which is the desired result; the proof is that the flow of perspiration is reduced by application of the plaintiff's composition by about 50%, and the urea was not introduced to avoid that achievement, but to mitigate its twofold (if it be that) effect. The urea then combines with the excess acid component then generated, and thereby deprives it of the capacity to destroy the portion of the fabrics of apparel to which the composition in the form of cream is transferred, when at any subsequent time the heat of a pressing iron is applied to remove wrinkles, etc.
It is with reference to the aspect of the controversy thus exposed that the argument against validity is most plausible, for if urea was introduced to promote the conservation of textile fabrics, it is indeed difficult to avoid the conclusion that such an expedient was well known prior to plaintiff's application date. If urea was introduced primarily to ameliorate the astringent reaction of the aluminum sulphate, the evidence is not persuasive that such an expedient was taught in any prior patent or publication. Which is not to say that to devise that new combination would necessarily constitute patentable invention under the present dispensation governing such matters. See Picard v. United Aircraft Corporation, 2 Cir., 128 F.2d 632, decided May 28, 1942, both the opinion of the Court and the concurring meditations. Apparently the restricted monopoly of patent rights is not to reward "the exercise of persistent and intelligent search for improvement". Such is not deemed to "reveal the flash of creative genius" specified as requisite in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84, 62 S. Ct. 37, 86 L. Ed. .
Any yet it must be recalled that genius has once been defined as the infinite capacity for taking pains. The approved approach to most unsolved problems is the studious and often plodding one, and no reliable substitute has been suggested, even though a solution thereby accomplished is not judicially deemed to attain to the status of patentable invention. Such is the minimizing lens supplied to a district judge for scrutinizing a patent submitted for adjudication.
As to the part which the urea plays in arresting skin irritation which would result from application of aluminum sulphate alone, the only direct testimony is by the defendant's witness, Dr. Peck, a practicing dermatologist, who says that, except as to persons having specially sensitive skin, there is no irritation so caused. Since that statement was not contradicted, it must be accepted. It is the only medical as distinguished from chemical testimony in the case, and no reason has been shown for disregarding it.
The utmost that can be said for the contrary theory, as stated at line 10 of page 1 of the specifications of plaintiff's patent, is that skin-irritant property was ascribed to aluminum sulphate (and chloride) in apparent sincerity, and the addition of urea was deemed to be justified, in part at least, to arrest or overcome that tendency. ...