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REVLON, INC. v. CARSON PRODUCTS CO.

January 30, 1985

REVLON, INC., a Delaware corporation, Plaintiff
v.
CARSON PRODUCTS CO., a Georgia corporation, Defendant



The opinion of the court was delivered by: COOPER

COOPER, IRVING BEN

Plaintiff, an international company engaged in the business of beauty and health products and services, brings this action for a judgment pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, declaring that two patents issued to defendant, U.S. Patnet No. 4,304,244 ("'244 patent") and U.S. Patent No. 4 4,373,540 ("'540 patent") for a hair straightening and curling process are invalid, unenforceable and not infringed. Defendant, a company based in Savannah, Georgia manufactures cosmetics for the black ethnic market, and counterclaims for injunctive relief and damages, alleging that two hair straightening products made by plaintiff sold under the trademarks "FABULAXER" and "CREME OF NATURE" infringe defendant's patents. *fn1" The case was tried to the Court on January 3 to January 13, 1984 and was bifurcated (the issue of liability to be determined first); damages reserved pending our decision thereon. At the conclusion of the trial decision was reserved. Post trial memoranda and proposed findings of fact and conclusions of law were filed on March 7 and 8, 1984; replies were filed on April 2 and 3, 1984.

FACTS

 A prerequisite to a determination of the issues presented by this conflict requires at least a brief analysis of the structure of human hair and the chemistry of formulas created to treat it.

 A. The Structure of Human Hair

 The molecules of human hair are composed of keratin, a natural fibrous protein containing 18 amino acids which are organic compounds that compose protein molecules. (Ex. 25) *fn2" A vertical strand of the keratin molecule is called a polypeptide; the polypeptides are cross-linked by hydrogen bonds on one plane and by two sulphur atoms on another, the latter creating very tough disulfide bonds called cystine. (Tr. 69-70; Ex. 34 at 1156; Ex. W) The strength of the cystine is responsible for maintaining the natural configuration of a person's hair. It follows that in order to permanently change the hair's characteristics, the cystine must be broken down. The application of highly alkaline substances accomplishes this goal, making the hair malleable. At that point, it may be reset into a new configuration; the broken disulfide bonds will reform either by leaving single sulfur bonds with excess unattached sulfur atoms in the hair, or the excess sulfur atoms will reconnect with the bond sulfur atoms in new places, forming new disulfide bonds in the new hair shape. (Ex. 2461, Hendrix, at 30) In this manner, one with naturally curly hair is able to get straight hair and one with naturally straight hair obtains a permanent wave. The challenge centers upon the substances which most effectively bring about the desired result.

 B. Chemistry of Formulas that Treat Hair

 In the early 1970's several methods were employed to straighten curly hair. One approach involved the application of pressing oil an a hot comb to the hair; this resulted in steaming and stretching hair. (Tr. 57-58; 307) Since this formula lacked alkalinity, it broke only the hydrogen bonds (Ex. 34 at 1156) not the cystine, causing only a temporary alteration along with some damage to the hair. (Tr. 58).

 Asecond formula called "Vigorol" contained ammonium thioglycolate or sulfite as its key ingredient. *fn3" Its main drawback was that a few days after application the hair often reverted to its original curly state. (Tr. 307-08).

 The most effective hair straightening formula used at that time was sodium hydroxide, commonly referred to as "lye." Sodium hydroxide has a very high "pH" -- meaning the measurement of the acidity of alkalinity of a substance on a scale from one to fourteen in which one is the most acidic and fourteen is the most highly alkaline. (Tr. 63) The pH of sodium hydroxide approaches fourteen (Tr. 43), and is very successful in breaking down the tough disulfide bonds, changing the configuration of the fibers when stress (by combing) is applied to the hair. The two main competitors in the sodium hydroxide hair straightening market in the early 1970's were plaintiff and Johnson Products Company.

 Cognizant of the problem of scalp irritation that resulted from applying sodium hydroxide to the head and desirous of competing in the hair straightening market, Mr. Mario de la Guardia, president of the defendant corporation, envisioned introducing a straightening product with a neutral pH. To that end, he contacted the Southern Researchg Institute ("SRI") in Birmingham, Alabama a non-profit research organization doing research and development for defendant over 20 years. (Tr. 1147-48). The three year research effort at SRI to develop a non-alkali sulfite relaxer similar to compounds used for hair waxing proved unsuccessful. (Tr. 309-11; 1039-45).

 In 1975, the Federal Trade Commission ("FTC") issued an order that altered the balance of competition in the hair straightening field. The order required that all hair relaxers containing either sodium hydroxide or potassium hydroxide be labeled as containing lye. *fn4" (Stipulated Fact 23, Tr. 312) As should have been expected, consumer reaction to products with that label was negative in the extreme. (Stipulated Fact 24) Intent upon obtaining a competitive advantage in the market of hair straighteners, Mr. de la Guardia sought an effective alkaline formula that did not contain sodium or potassium hydroxide. (stipulated Fact 25)

 The president of the defendant company was successful in his endeavor. After a weekend of experimentation in October 1976 (Tr. 453), he discovered that a formula combining a guanidine salt, an extremely alkaline salt, such as guanidine carbonate and a water soluble hydroxide such as calcium hydroxide would create the desired objective. Irritation, efficacy and stability tests using Mr. de la Guardia's formula were conducted at SRI and elsewhere, and attained positive results. (Tr. 328-31) On June 9, 1977, defendant filed its first patent application for the product; in May 1978, the hair straightener "Dark and Lovely" was introduced on the market. (Stipulated Fact 3; Tr. 330). The label affixed to the box of the product read "contains no lye." On December 9, 1981, and '244 patent was issued to defendant. (Amended Complaint P4).

 "Dark and Lovely" achieved a high sales rate (Ex. LL) which negatively impacted consumer sales of plaintiff's products containing sodium hydroxide. Consequently, before any patent had issued on defendant's product, plaintiff and several other competitors in the market began selling hair straighteners with formulas similar to that produced by defendant. (Ex. 246II, Goldberg, at 95-97; Ex. 246II, Bottner, at 18-19; Ex. 246II, Roppolo, at 10-11) Revlon's competitive products are called "FABU-LAXER" and CREME OF NATURE." Johnson Products' relaxer is named "Gentle Treatment," *fn5" and one put out by Posner is called "Perfect Performance." (Ex. 246II, Roppolo, at 10)

 C. Defendant's Patents

 Mr. de la Guardia created his formula by combining guanidine carbonate, a commercially available salt, with calcium hydroxide in water. He discovered that under proper conditions, the two chemicals break apart and reform into guanidine hydroxide and calcium carbonate. As a salt, calcium carbonate precipitates out of the solution leaving guanidine hydroxide in solution. As a practical matter, however, the reaction between guanidine carbonate and calcium carbonate which (the newly formed guanidine hydroxide and calcium carbonate) in turn quickly break apart and reform into guanidine carbonate and calcium hydroxide. Therefore, the reaction must be driven toward completion; the right conditions must be employed to ensure as much precipitation of the calcium carbonate as possible, leaving more guanidine hydroxide. (Ex. 234, col. 3, lines 54-59; Ex. 235, col. 3, lines 56-61)

 According to defendant, proper conditions include: (1) reaction temperatures between 35F and 140F (Ex. 234, col. 4, line 33; Ex. 235, col. 4, lines 35); (2) use of the solution within 48 hours (Ex. 234, col. 4, line 38; Ex. 235, col. 4, line 39); (3) the presence of hydroxide in at least a stoichiometric *fn6" amount, even up to two to five times the stoichiometric amount, even up to two to five times the stoichiometric amount (Ex. 234, col. 4, lines 41-45; Ex. 235, col. 4, lines 42-46); (4) the reaction product should contain one to fifty percent guanidine hydroxide by weight, most preferably between four to seven percent by weight (Ex. 234, col. 5, lines 36-49; Ex. 235, col. 5, lines 39-52); (5) the guanidine salt should contain 1.2 to 40 percent by weight, preferably 5 to 8 percent by weight (Ex. 234, col. 5, lines 52-64; Ex. 235, col. 5, lines 55-67); (6) a pH value in the reaction product above 11.8 preferably about 12.5 to 13.5 (Ex. 234, col. 6, lines 42-45; Ex. 235, col. 6, lines 45-48); (7) a treatment time of 5 to 45 minutes, preferably 20 to 30 minutes (Ex. 234, col. 6, lines 46-58; Ex. 235, col. 6 lines 49-61); and (8) use of a neutralizing agent (such as a shampoo) after treatment (Ex. 234, col. 6, lines 64-66; Ex. 235, col. 6, lines 67-68).

 Conventional additives may be added to defendant's formula (Ex. 234, col. 4, line 63; Ex. 235, col. 4, line 65), as well as thiourea as an accelerator where there are lower levels of guanidine hydroxide in the reaction product (Ex. 234, col. 6, lines 26-36; Ex. 235, col. 6 lines 29-39). Additionally, according to defendant's patent specifications, lithium, barium or strontium hydroxide may be used as a starting ingredient instead of calcium hydroxide; other guanidine salts, particularly guanidine sulfate, may be used in place of guanidine carbonate. (Ex. 234, col. 3, lines 46-49 and col. 4, lines 12-14; Ex. 235, col. 3, lines 48-51 and col. 4, lines 14-16)

 Defendant's product is sold in the form of a kit which includes two containers. The relaxer container stores calcium hydroxide in a creme base and the activator container holds guanidine carbonate in liquid form. (Tr. 606, Ex. 64) The two are mixed, the solution then is applied to the hair. After 5 to 45 minutes, depending upon the coarseness of the user's hair and the amount of straightening desired, the solution is removed, and the hair is washed with water, followed by a neutralizing shampoo, then treated with a protein conditioner to make the hair more manageable and return the oils to it. (Tr. 292) Combing completes the effort. (Ex. 234, col. 2, lines 57-68 and col. 3, lines 1-2 and 18-25; Ex. 235, col. 2, lines 59-68 and col. 3, lines 1-4 and 19-27).

 Defendant's '244 patent 9 (Ex. 234), issued on December 9, 1981, contains 23 claims. Claim 1 is representative of the process claims:

 
A method of treating hair to cause the hair to maintain a desired configuration, said method comprising contacting the hair while in said desired configuration with an aqueous comp- sition comprising, as the principal active in- gredient, guanidine hydroxide, wherein said guanidine hydroxide is formed by reacting cal- cium hydroxide and guanidine carbonate, and thereafter removing said composition from the hair.

 Ex. 234, col. 19, lines 9-16. Claim 7 is representative of the composition claims:

 
A composition for treating hair when applied thereto, comprising a water-soluble inorganic hydroxide ingredient and a water-soluble guani- dine salt ingredient, said ingredients being selected such that reaction products thereof are guanidine hydroxide and a substantially water-insoluble inorganic salt formed by the cation of said inorganic hydroxide ingredient and the anion of said guanidine salt ingredi- ent whereby the reaction producing said guani- dine hydroxide will be driven towards com- pletion, and said inorganic hydroxide ingredient being present in at least a stoichiometric amount relative to said guanidine salt ingredient.

 Ex. 234, col. 20, lines 1-12.

 None of the claims of the '244 patent recite time or temperature parameters; only claim 6 sets forth an operating range of concentration of 1 to 50 percent guanidine hydroxide. The remaining claims constitute process or article claims reciting the product guanidine hydroxide and/or the ingredients that may be used to bring about the reaction product.

 The second patent, '540, was issued to Mr. de la Guardia on February 15, 1983. (Ex. 235) It recites a hair treating composition to relax hair, and, according to Mr. de la Guardia, broadly covers guanidine hydroxide regardless of how it is made. (Tr. 469)

 The '540 patent contains two claims. Claim one recites:

 
A composition for treating hair comprising an effective amount of guanidine hydroxide as the active ingredient, the pH of said composition being at least 11.8, and said composition being applied to said hair and being removed there- from after a predetermined amount of time.

 (Ex. 235, col. 20, lines 4-10) Claim two further specifies that the concentration of guanidine hydroxide ranges form 2 to 20 percent by weight. (Ex. 235, col. 20, lines 11-13)

 ISSUES

 (1) Whether defendant's '244 and '540 patents are invalid under 35 U.S.C. § 102 (anticipation), 35 U.S.C. § 103 (obviousness) or 35 U.S.C. § 112 (indefiniteness)?

 (2) Whether defendant fraudulently procured the patents, rendering them invalid?

 (3) Whether defendant misused the '244 patent?

 (4) Whether plaintiff infringed any of defendant's claims?

 (5) Whether plaintiff and/or defendant is entitled to attorneys fees and expenses?

 LAW

 Before addressing substantive legal issues in this case, we must decide several evidentiary matters. *fn7"

 A. Admissibility of the "Eiermann Affidavit"

 In August 1977 defendant unsuccessfully petitioned the Food and Drug Administration ("FDA") for trade secret status for its calcium hydroxide and guanidine carbonate ingredients in "Dark and Lovely." Thereafter, defendant sued the FDA in the United States District Court for the Southern District of Georgia for review of its administrative determination. The government submitted a motion for summary judgment which was supported by the affidavit of Heinz J. Eiermann (verified February 23, 1979), then Director of the Division of Cosmetic Technology, Bureau of Foods, FDA. (Ex. 60 for identification) The affidavit set forth Mr. Eiermann's expert qualifications and responsibilities, his familiarity with defendant's request, the procedures followed by the FDA during its official inquiry, and the agency's findings as they relate to a review of relevant scientific literature. Defendant objects to the admission of this exhibit before us on the grounds of hearsay and the mental processes of a quasi-judicial officer.

 Fed. R. Evid. 803(8)(C) allows the admission of "[r]ecords, reports, statements, or data compilations, in any form, of public offices or agencies, setting forth . . . factual findings resulting from an investigation made pursuant to authority granted by law, unless the sources of information or other circumstances indicate a lack of trustworthiness." The burden of showing that the proof is untrustworthy falls on the party opposed to it. See United States v. Paducah Towing Co., Inc., 692 F.2d 412, 421 (6th Cir. 1982). Admissibility under this provision is within the broad discretion of the district court, see Miller v. New York Produce Exchange, 550 F.2d 762, 769 (2d Cir.), cert. denied, 434 U.S. 823, 54 L. Ed. 2d 80, 98 S. Ct. 68 (1977) and courts have interpreted it quite liberally. Baker v. Elcona Homes Corp., 588 F.2d 551, 557 (6th Cir. 1978), cert. denied, 441 U.S. 933, 60 L. Ed. 2d 661, 99 S. Ct. 2054 (1979).

 We find that the Eiermann affidavit satisfies the requisites of Rule 803(8)(C). It is clear that the affidavit was a statement by one who was in a public office, acting on behalf of the office, giving findings in accordance with an investigation conducted in determining the trade secret status of a product on the market. We disagree with defendant's argument that Mr. Eiermann's statement's were not factual or trustworthy. "Factual findings" as used in the rule encompass evaluative reports of public agencies, Zenith Radio Corp. v. Matsushita Electric Industrial Co., Inc., 505 F. Supp. 1125, 1145 (E.D. Pa. 1980); Weinstein's Evidence, P 803(8)[03], at 803-250, and inferences drawn from facts. United States v. Paducah Towing Co., Inc., supra, at 420. Indeed, conclusory statements do not even render an item of evidence ipso facto inadmissible. Miller, supra, at 769. We conclude that Eiermann's analysis of the chemistry of "Dark and Lovely" and his comparison to the chemistry of other relevant arts fall within the Rules's expanded definition of "factual findings."

 We also find that the Eiermann affidavit meets the test of trustworthiness for which the Advisory Committee on Proposed [FRE] Rules suggested four indicia: (1) the timeliness of the investigation; (2) the special skill or experience of the official; (3) whether a hearing was held or whether all sources were examined; and (4) possible motivational problems, e.g., impartiality. See Baker, supra, at 559; In re Multi-Piece Rims Products Liability Litigation, 545 F. Supp. 149, 151 (W.D. Mo. 1982); see also Zenith Radio Corp., supra, at 1146-47 (additional seven factors named).

 With rs espect to the instant disputed document, timeliness is not an applicable factor for us to consider. (Cf. Baker, supra, where police officer who wrote report arrived at scene of accident minutes after its occurrence.) We find that Mr. Eiermann, as director of one of the divisions of the FDA, was an experienced and impartial official *fn8" who made a statement under oath; indeed, in its brief on the issue of trade secret status, defendant identified him as an expert in the field of cosmetology. 9 Ex. 50 at 8).

 We further find that defendant has not met its burden of proving Mr. Eiermann failed to consider all relevant sources.

 We also are constrained to find unimpressive defendant's argument against the admissibility of the affidavit on the ground that it constitutes the mental process of a quasi-judicial officer. Even if Mr. Eiermann could be considered a quasi-judicial officer -- a conclusion we find very doubtful -- it is well-settled by law that whether 'the [investigatory] proceedings could also be labeled a 'quasi-judicial hearing' is of no consequence in this regard." United States v. School District of Ferndale, 577 F.2d 1339, 1354 (6th Cir. 1978) (findings of an HEW Hearing Examiner in prior proceeding admissible); see Litton Systems, Inc. v. American Telephone and Telegraph Co., 700 F.2d 785, 818 (2d Cir. 1983), cert. denied, 464 U.S. 1073, 104 S. Ct. 984, 79 L. Ed. 2d 220 (1984) (various FCC decisions admissible as factual findings resulting from investigations).

 Accordingly, we overrule defendant's objection and find the Eiermann affidavit admissible.

 B. Admissibility of the Responses of the Canadian Patent Office to Defendant's Patent Application

 Defendant objects to the introduction into evidence of plaintiff's exhibit 215, the responses of the Canadian patent office to defendant's patent application in that country for "Dark and Lovely." During the prosecution of that application corresponding to the '244 patent herein, the Canadian Examiner cited and relied upon a L'Oreal patent as pertinent prior art and advised the defendant to revise its specifications so as to distinguish its hair relaxing formulation from that of L'Oreal.

 Carson seeks to exclude this evidence under the ruling in Timely Products Corp. v. Arron, 523 F.2d 288 (2d Cir. 1975). In Timely Products, the patent applicant sought to include in evidence nine foreign patents on the grounds that corresponding foreign patents are strong evidence of nonobviousness. This request was denied by our Circuit Court since there is no international standardized inquiry into patentability, and therefore the issuance of a United States patent carries with it a presumption of validity under 35 U.S.C. § 282 that cannot be destroyed by determinations made by foreign patent offices. Id. at 295.

 Similarly, in Esso Research Corp v. Kahn Co., 379 F. Supp. 205 (D. Conn. 1974), aff'd 513 F.2d 1341 (2d Cir. 1975), the district court allowed into evidence certain correspondences between Esso and the German patent office regarding the prior art. In so holding, the Court stated:

 
[I]n considering what Esso submitted to the Patent Authorities in Germany as its claim this Court is primarily concerned just with Esso's own admissions of the scope and con- tent of the prior art and second with its analysis of the difference between the prior art and its claim for a patent, not with the decision made . . . with respect to patent- ability.

 Id. at 213.

 In accordance with the law enunciated in Timely Products, we are compelled to find exhibit 215, which deals with reactions by the Canadian patent office, inadmissible.

 C. Plaintiff's 10-K Form

 At trial, plaintiff objected to the introduction by defendant of exhibit RR, plaintiff's 10-K form covering its business activities, on the ground of irrelevancy. However, defendant sought to admit it only for the limited purpose of setting forth defendant's business activities. (Tr. 1239) We reserved decision on this issue and now conclude that for the purpose for which defendant requests its introduction, exhibit Rr is admissible. See Fed. R. Evid. 401, 402 and 403.

 D. Defendant's Confidential Exhibit

 In defendant's Response to Plaintiff's Post-Trail Memorandum, defendant submitted as Exhibit A a sealed envelope stamped "Confidential--Attorneys Only," containing a document also marked in upper case letters "CONFIDENTIAL." Defendant contends that this document contains admissions by plaintiff of the validity of defendant's patents, estopping plaintiff from making many of its arguments in the instant litigation.

 The confidential nature of the sealed document precludes us from addressing defendant's arguments in this opinion. We have examined the document, the defendant's contentions and the law applicable thereto and find that the document has no bearing whatever on the vital issues this case presents.

 E. Defendant's Objections to Plaintiff's Proposed Supplemental Findings of Fact and Conclusions of Law

 On May 7, 1984, we received a letter from plaintiff dated May 3, 1984 requesting that we disregard all arguments and additional information in defendant's objections to plaintiff's Proposed Supplemental Findings of Fact and Conclusions of Law on the grounds that, inter alia, defendant used the pretext of objections to file excessively additional arguments and introduce supplemental evidence. Defendant's reply thereto dated May 11 (received by us on May 14) stated that defendant merely organized the evidence by cross-referencing to relevant record evidence and that no supplemental evidence was introduced.

 Our review of the objections convinces us that they should not be disregarded. First, we find no supplemental evidence in the objections. Second, defendant's alleged "additional arguments" are no more than explanations of its objections, restating contentions made throughout defendant's papers. Plaintiff also uses its objections to restate some of its previous arguments, albeit to a much more limited degree. Since the evidence presented by defendant in its final post-trial paper offers nothing new, we have no hesitancy in refusing to disregard its objections to plaintiff's Proposed Supplemental Findings of Fact and Conclusions of Law.

 II. THE SUBSTANTIVE LEGAL ISSUES

 A. Burden of Proof in Cases Alleging Patent Invalidity or Unenforceability

 Under our system of government, the inventor of a novel item or process who wishes to monopolize his or her work applies to the United States Patent and Trademark Office ("PTO") for a patent. The office is staffed by qualified experts who determine whether the invention is patentable. See Howes v. Great Lakes Press Corp., 679 F.2d 1023, 1028 (2d Cir. 1982); Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124, 133 (2d Cir.), cert. denied, 358 U.S. 884, 3 L. Ed. 2d 112, 79 S. Ct. 124 (1958). If a favorable disposition is granted after all the research has been completed, the "patent shall be presumed valid. Each claim of a patent (whether in independent or dependent form) shall be presumed valid independently of the validity of other claims; dependent claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting it." 35 U.S.C. § 282. See Merck & Co., Inc. v. Olin Mathieson Chemical Corp., 253 F.2d 156, 164 (4th Cir. 1958).

 This statutory presumption of validity, which generally requires clear and convincing evidence to be overcome, see Raytheon Co. v. Roper Corp., 724 F.2d 951, 220 U.S.P.Q. 592, 599 (Fed. Cir. 1983); Warner-Jenkinson Co. v. Allied Chemical Corp., 477 F. Supp. 371, 382 (S.D.N.Y. 1979), aff'd, 633 F.2d 208 (2d Cir. 1980), is weakened in some circumstances. For instance, if an applicant fails to provide the PTO with the relevant prior art, see Graham v. John Deere Co., 383 U.S. 1, 18, 15 L. Ed. 2d 545, 86 S. Ct. 684 (1966); Raytheon, supra, at 599; Douglas v. United States, 206 Ct. Cl. 96, 510 F.2d 364, 369 (Ct. Cl. 1975); Julie Research Laboratories, Inc. v. Guildline Instruments, Inc., 501 F.2d 1131, 1136 (2d Cir. 1974); Warner-Jenkinson, supra, at 382-83, aff'd, 633 F.2d 208 (2d Cir. 1980); Kahn v. Dynamics Corps., 367 F. Supp. 63, 67 (S.D.N.Y. 1973), aff'd, 508 F.2d 939 (2d Cir. 1974), cert. denied, 421 U.S. 930, 44 L. Ed. 2d 88, 95 S. Ct. 1657 (1975), or if the PTO was given incorrect data, see, e.g., Ansul Co. v. Uniroyal, Inc., 301 F. Supp. 273, 280 (S.D.N.Y. 1969). modified, 448 F.2d 872 (2d Cir. 1971), cert. denied, 421 U.S. 930 (1972), or deceived as to the significance of correct date, see Kahn, supra, at 71, aff'd, 508 F.2d 939 (2d Cir. 1974), cert. denied, 421 U.S. 930, 95 S. Ct. 1657, 44 L. Ed. 2d 88 (1975), the presumption is more easily rebuttable. Furthermore, several courts have taken notice of the huge increase in recent years of the numbers and types of patent applications, leaving the PTO heavily burdened and overworked; consequently, less strength has been attached to the statutory presumption of validity. See Kahn, supra, 508 F.2d at 942, cert. denied, 421 U.S. 930, 95 S. Ct. 1657, 44 L. Ed. 2d 88 (1975); Ansul Co., supra, 301 F. Supp. at 281, modified, 448 F.2d 872 (2d Cir. 1971), cert. denied, 172 U.S.P.Q. 257 (1972). Nevertheless, 35 U.S.C. § 282 assigns the burden of persuasion to the challenger of the patent, in the instant case Revlon, which retains the burden of it on the merits throughout the case. See Stratoflex, Inc. v. Aeroquip Cor., 713 F.2d 1530, 1534 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 773 (Fed. Cie. 1983).

 B. The Anticipation Doctrine

 The doctrine of anticipation prohibits the granting of a patent to an inventor when, inter alia, the invention was known or used by others or was patented or described in a printed publication in this or a foreign country at least one year before the patent applicant invented it. 35 U.S.C. § 102. The statute calls for an identical disclosure or description between the subject matter sought to be patented and the prior art. See 35 U.S.C. § 103. Courts have found identity when a single prior reference, see Connell v. Sears, Roebuck & Co. 722 F.2d 1542, 1548 (Fed. Cir. 1983); Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 771 (Fed Cir. 1983); In re Marshall, 578 F.2d 301, 304 (C.C.P.A. 1978); Soundscriber Corp. v. United States, 175 Ct. Cl. 644, 360 F.2d 954, 960 (Ct. Cl. 1966); Dielectric Laboratories v. American Technical Ceramics, 545 F. Supp. 292, 295 (E.D.N.Y. 1982); Warner-Jenkinson Co., Inc. v. Allied Chemical Corp., 477 F. Supp. 371, 383 (S.D.N.Y. 1979), aff'd, 633 F.2d 208 (2d Cir. 1980), "clearly and unequivocally disclose[s] the claimed compound or direct[s] those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference." In re Arkley et al., 59 C.C.P.A. 804, 455 F.2d 586, 587 (C.C.P.A. 1972)(emphasis in original). In other words, if the claims of the patent application are substantially equivalent to the prior art, the doctrine of anticipation is applicable. See In re Schaumann, 572 F.2d 312, 317 (C.C.P.A. 1978). Specifically with regard to chemical compounds, anticipation requires that the prior art recite means of preparation of the compound as well as a minimum of one significant useful property. Warner-Jenkinson Co., supra, at 383 (Weinfeld, J.), aff'd, 633 F.2d 208 (2d Cir. 1980).

 Judge Simon H. Rifkind, acting in the capacity of Special Master in Helene Curtis Industries v. Sales Affiliates, 233 F.2d 148 (2d Cir. 1956) summed up the doctrine of anticipation when he wrote:

 
It is of course elementary in the patent law that generic claims . . . cannot survive where a species within the claimed genus has been invented, known or used by others prior to the patentee's date of invention. . . . Prior in- vention, disclosure or use of a species anti- ipates the genus . . . . .
 
. . .
 
The question always is whether the in- ventive act is of sufficient magnitude to justify the extension of a legal monopoly for the matter covered by the claims. . . . [I]t is only where, other requisites being present, the patentee has found a point or points at which some result differing in kind -- and not merely in degree -- from the results achieved by the prior art, that an inventive act may be said to exist.

 Id. at 152 (citations omitted).

 Unlike the doctrine of obviousness which we discuss infra, anticipation does not require that the prior references be analogous or even relevant arts to the invention. D. Chisum, 1 Patents § 3.02(3) at 3-9. We now proceed to examine the forms of prior art that plaintiff alleges anticipated defendant's formula.

 1. The Moore Article

 In 1933 E.K. Moore published an article entitled "The Influence of Various Nitrogen Compounds on Unhairing with Calcium Hydroxide Suspensions." It examined ways of removing hair from dead animal skins to make leather. According to the author, when .32 moles (a certain number of molecules) of one of 15 nitrogen compounds is placed in one thousand ccls. of calcium hydroxide at room temperature, the dehairing of the hides is accelerated. One of the 15 compounds Moore discussed was guanidine, and the .32 moles was equivalent to 1.88 percent free base guanidine; the reaction produced 2.43 percent guanidine hydroxide. (Ex. 24 at 249, 258; Tr. 815-17) Moore produced the free base chemical by thoroughly shaking guanidine carbonate in water, then adding as excess amount of calcium hydroxide. He noted ...


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