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February 27, 1985

S.C. JOHNSON & SON, INC., Plaintiff, against CARTER-WALLACE, INC., Defendant

The opinion of the court was delivered by: KEENAN

JOHN F. KEENAN, United States District Court:



 The Parties

 Plaintiff S.C. Johnson & Son, Inc. ("Johnson") is a corporation organized and existing under the laws of the State of Wisconsin. It has its principle place of business in Racine, Wisconsin and is engaged in the business of making and selling consumer products, personal care products and, more importantly so far as this case is concerned, gel shaving products.

 Defendant Carter-Wallace, Inc. ("Carter") is a corporation organized and existing under the laws of the State of Delaware. It has its principal place of business in New York, New York and is engaged in the business of making and selling consumer products, personal care products and shaving products.

 Nature of the Case

 This is an action brought by Johnson against Carter for alleged infringement of United States Letters Patent No. 3,541,581 ("the Monson Patent") and for alleged unfair competition and false advertising. The Carter products accused of infringement are RISE Super Gel-Regular and RISE Super Gel-Lime.

 Johnson's claim for patent infringement is based on its ownership of the Monson Patent, issued November 17, 1970 to inventor James A. Monson, the patent which protects Johnson's Edge brand post-foaming shaving gel products, and on Carter's manufacture and sale of the accused RISE Super Gel post-foaming shaving gel products.

 Johnson's claim for unfair competition is based on its use of its allegedly distinctive trade dress for shaving gel products sold under the Edge brand and Carter's use of an allegedly similar trade dress for shaving gel products sold under the RISE Super Gel brand.

 Johnson's claim for false advertising is based on use by Carter of allegedly false or misleading advertising claims that the RISE Super Gel products are preferred by consumers two to one over the Edge products.

 Carter's Answer denies the material allegations of the Complaint.

 As affirmative defenses and counterclaims raised in the Answer and Pretrial Order with respect to the patent issues, Carter claims that it does not infringe the Monson Patent and that the asserted claims are limited by file wrapper estoppel; that the patent is invalid or unenforceable because (i) the subject matter was obvious to a person of ordinary skill in the art, (ii) the patent does not contain sufficient disclosure to enable a person of ordinary skill in the art to practice the invention, (iii) the asserted claims are overly broad and embrace inoperable gel post-foaming compositions and (iv) Johnson committed a fraud on the United States Patent and Trademark Office or breached its duty of candor and was guilty of inequitable conduct during the proceedings which led to the grant of the Monson Patent.

 In response to the unfair competition and false representation claims, Carter alleges that the shape, configuration, appearance and some colors of the Edge packages are functional; that Carter's use of the RISE trademark and logo was prior to the Edge trade dress; and that Johnson's claims are precluded by unclean hands, estoppel, waiver or other equitable grounds because, Carter alleges, Johnson's own conduct has been inconsistent with the standards which it seeks to impose.

 Carter counterclaims for a declaration that the Monson Patent is invalid and not infringed and Johnson's Reply denies the material allegations of the counterclaim.

 Johnson further seeks an accounting for damages, injunctive relief and an award of attorney fees and Carter seeks an award of attorney fees.

 By agreement of the parties, approved by the Court, the liability issues set forth above are to be resolved prior to any accounting on damages.

 Pursuant to Judge Goettel's Orders of July 27, 1981 and August 27, 1982, the antitrust-related issues raised by Carter in its affirmative defenses and second counterclaim are reserved for a separate, subsequent trial, is such were necessary.

 THE FACTS AS THEY RELATE TO THE PATENT ISSUES Background and State of the Art Before the Monson Patent

 In ancient times beards were generally considered as signs of strength and manhood. The beard was carefully cherished and its removal was viewed as degrading punishment. However, early Egyptians commonly shaved their beards except while in mourning and, with the Jews, an unkempt, neglected beard was viewed as indicative of grief. It is reported that in Greece the beard was universally worn until the 4th century B.C. Then Alexander the Great ordered his soldiers to shave as a precaution against being seized by their beards in combat. *fn1"

 The historian, Pliny, writes that the first Roman to shave on a daily basis was the great 3d century B.C. general, Scipio Africanus. Over the span of history great men opted both ways. Most biblical figures, e.g., Christ, Moses are depicted as bearded. Caesar and Napoleon apparently shaved. Washington was clean-shaven; yet Lincoln, while President, was bearded. Grant and Lee were bearded. Wilson and Pershing were beardless.

 With some notable exceptions, most western men abandoned the custom of wearing beards after World War I. The manufacture of razors and razor blades became big business in the United States. The Court well remembers how, in youth, he sat close by the radio, with the male elders, listening to the live blow-by-blow accounts of the great world heavy-weight championship bouts just before our entry into World War II. They were brought to the living room, directly from ringside, by a razor blade manufacturer.

 But, no matter how great the man, or how sharp the blade, be it straight, safety or disposable, the shaving of the male beard is an excruciatingly painful task unless the face is abundantly moistened and lathered. (The Court notes that electric razors are an exception to this rule.)

 Just as razors and razor blades became big business so too did the preparation of shaving soaps and shaving creams. That is what this case is about -- two shaving creams, Edge and RISE Super Gel.

 In 1967, Johnson became interested in entering the shaving cream field because it sought new products to help the company grow. Continued growth was considered important by Johnson management.

 Till then Johnson had been active in the areas of floor waxes, furniture polishes, automotive waxes, insecticides and industrial products. Johnson had not sold any personal care products in the United States.

 Work toward the development of a shave cream product was initiated at Johnson on March 14, 1967 by the issuance of a new product proposal approved by the Vice-President of Household Products, a Group Product Manager, the Vice-President of Research and Development and Samuel C. Johnson, President of the company.

 The initial proposal specified a product "that goes on the face as a liquid for maximum wetting and then turns to a foam under its own power." When the proposal was made, it was only a concept, since Johnson had not done any development work on the idea.

 A research project was started at Johnson in response to the new product proposal. The project number 480 was assigned for accounting and informative purposes. The objective of the project, i.e., a liquid shaving composition with delayed foaming properties, was reflected in the research and development project in the same language used in the new product proposal form.

 James A. Monson, a 27-year old chemist in Johnson's development group, was put in charge of the project. Prior to his assignment to that project, he had been authorized to devote large portions of his time to other exploratory projects of his own choice in the personal care field, such as creams and lotions.

 State of the Art in 1967

 In the 1960's, a number of companies were active in the shaving cream market, including Gillette, Carter-Wallace and Colgate-Palmolive, among others. All of the aerosol shave products offered by those companies were basically the same. They were of the instant-foaming type. In those products, the propellant was a liquid which would separate out in the can. To dispense the product, the user had to shake the can to disperse the propellant, then press the button on the can. The liquid propellant provided the force to push the product out of the can. Then, as the product emerged, the liquid propellant would rapidly change to a gas and make the foam. None of those products was "post-foaming" and none was a gel.

 In attempting to meet the project objectives, Mr. Monson first tried to prepare slow-foaming liquid compositions by replacing the conventional fast-boiling propellants with ones that boiled more slowly. The liquid products he obtained gave poor foams, caused burning of the skin, did not shave well, started foaming before they were applied to the face, and were too runny. To combat the runniness problem, he tried thickening up the liquid compositions. These products had less severe runniness problems if they were thickened a great deal, but the lather produced was dry and flaky and not good for shaving. They did not meet the objectives of the project. After about six or seven weeks of working with various modifications, Monson concluded that liquid products were not going to work. He then considered the approach of working with gels. It was approximately May 11, 1967 that Mr. Monson decided to abandon the project objective of a liquid composition and purposely explore gels.

 A gel is a colloidal system that does not flow until stress is placed on the system. As a practical matter, a gel does not flow. After deciding to explore the idea of producing a gel product, Monson did a great deal of exploratory work learning about soap gels and how to form them, using shaving cream ingredients. He found that he could make gels using soap, water and a propellant, or an oil-type material which simulated the propellant.

 He found that those gel compositions solved some of the problems he had been having. The gels were not runny. They provided delayed foaming since foam formation did not occur until the gel was spread. However, their shaving properties were not good and it was difficult to control the consistency of the product. The soap gels tended to be either very rigid, and therefore difficult to spread smoothly, or so loose that they were runny.

 Mr. Monson added water-soluble polymers, or gelling aids, to his compositions in an attempt to modify the consistency of the soap gels. He found that by including the water-soluble polymers, he was able to achieve desired consistency and obtain a gel that was easily spread on the face. In addition, he found that lubrication was improved because of the presence of the polymer. The water-soluble polymers were relatively large molecules consisting of a number of repeating units. They had the ability to bind up and hold many of the relatively smaller water molecules.

 On July 10, 1967, Monson prepared a number of experimental samples for placement with Johnson employees to obtain their evaluation of his gel product. The product contained soap, water, the water-soluble polymers Klucel and Carbopol and a mixture of butane and pentane as the post-foaming agent.

 Subsequently, arrangements were made to conduct evaluations among consumers with later prototypes developed by Mr. Monson. On August 31, 1967, he prepared the "First Prototype for Consumer Testing-Outside." It was a post-foaming gel containing water, soap, the Klucel and Carbopol polymers and a post-foaming agent. That formulation was the one to be used for the first consumer testing of the product and was included in the Monson Patent as Example 1. The first actual placements of product with consumers occurred on November 13, 1967, the same day the Monson Patent application was filed.

 Prosecution of the Monson Patent Application

 The Monson Patent Application was filed in the United States Patent and Trademark Office ("USPTO") on November 13, 1967 as application Serial No. 682,479. The application was assigned by the USPTO to be reviewed by Patent Examiner W.E. Schulz in its "Art Unit 165."

 Mr. Schulz reviewed the Monson application and conducted a search of the USPTO collections of prior art on September 16, 1969.

 In the USPTO, all of the patents are classified and organized according to the type of invention involved. They are divided by subject matter into classes which are further sub-divided into sub-classes. All of the patents in the particular class and sub-class are stored together in numerical order. They are broken down into manageable terms that identify materials within those classes. In doing a patent search, a practitioner consults the USPTO Manual of Classification, finds the relevant classes and sub-classes for the particular subject matter and reviews the patents collected in those sub-classes.

 On November 5, 1969, Mr. Schulz issued an "Official Action" in which he made a number of objections to the claims of the Monson application. under heading "I" of that action, he rejected the claims as not defining the invention with sufficient particularity and distinctness, as required by 35 U.S.C. § 112. He objected to some of the technical expressions used in the claims and to the absence of numerical ranges for the separate ingredients. That rejection was directed to the wording of the claims and was not based on patentability over the prior art.

 The November 5, 1969 Official Action also contained, under the heading "II" (at page 48 of the USPTO official record), a rejection of the claims under 35 U.S.C. § 103 (i.e., an "obviousness" rejection) as being unpatentable over Bluard, U.S. Patent No. 2,995,521, in view of Friedenberg, U.S. patent No. 3,240,396. The Examiner stated that the Bluard patent taught post-foaming compositions containing water, soap, post-foaming agents and a "jellifying agent." He contended that it would be obvious to substitute the Monson gelling aids for the jellifying agent of Bluard because Friedenberg showed "said agents are well known for the same purpose in the same type of compositions i.e. foaming shaving compositions." The Examiner also cited Spitzer, U.S. Patent No. 2,655,480 and Colgate, British Patent No. 838,913 "to show the state of the art" and to show that other ingredients were also known in shaving creams and, therefore, obvious.

 Mr. Monson's attorney held a personal "interview" (i.e., a face-to-face discussion) with Patent Examiner Schulz on December 19, 1969 to discuss the rejections made in the November 5, 1969 Official Action and the information the Examiner wanted in order to determine the patentability of the Monson claims over the prior art. As required by the Rules of Practice before USPTO, the substance of that interview was recorded and filed in the official record, in the "Amendment" filed May 4, 1970. In the May 4, 1970 Amendment, the attorney introduced into the application a claim (identified as Claim 31) which essentially became claim 1 of the Monson Patent. All of the claims of the Monson Patent are dependent upon claim 1. That claim states as follows:

1. A cleansing or cosmetic composition in the form of a stable, post-foaming gel consisting essentially of about 40-90% by weight water, about 4-25% by weight water-soluble soap, about 0.5-12% by weight volatile liquid post-foaming agent selected from the group consisting of saturated aliphatic hydrocarbons, halogenated hydrocarbons and mixtures thereof, and about 0.01-5% by weight of at least one water-soluble gelling agent which forms in said composition, a gel having a yield value sufficiently high to substantially restrain said composition from foaming for at least 60 seconds, under static ambient conditions.

 Defendant Carter denies that the accused products meet certain requirements of the claims, namely: (1) that at least one water-soluble gelling agent be present which forms in the composition a gel, (2) that the water-soluble gelling agent be present in a concentration within the range of "about 0.01-5%" by weight of the total composition, and (3) that the gel composition so formed must substantially restrain foaming for at least about 60 seconds, under static ambient conditions.

 As recounted in the May 4, 1970 Amendment, during the December 19, 1969 interview the Patent Examiner, having been apprised of the differences between the Monson invention and the Bluard and Friedenberg patents, requested a comparison of the shaving performance of: (i) the product of one of Monson's examples; (ii) the same example modified by eliminating Monson's water-soluble gelling aids and replacing them with Bluard's "jellifying agent," aluminum octoate; and (iii) the product of any one of Bluard's shaving cream examples, with tentative agreement being reached that the comparison should be based on Monson's example 1 and Bluard's example 10. The Patent Examiner suggested the comparisons be made by submitting the formulations to panels of men who would shave with them and indicate their preference.

 Johnson complied with that request and carried out the requested comparisons. insofar as items (i) and (ii) requested by the Examiner were concerned, no difficulty was encountered in preparing the compositions. Mr. Monson did that work. The original Monson composition and the samples modified by using Bluard's agent were given to Mr. Robert Hoffmann, a person qualified to carry out evaluations of shaving creams. As reported in Mr. Hoffmann's declaration dated May 1, 1970, he placed the products with panels of shavers. In all, 22 men compared the original Monson example formulation against the modified version. All 22 preferred the former, the most commonly stated reasons being ease of use and lathering properties.

 It was found that when Bluard's example 10 was carried out, the product became so hard it could not be stirred in a tank. An alternative procedure was worked out involving mixing by hand in an open vessel. The product obtained was so stiff and hard it could not be dispensed from a can and was therefore packaged in a collapsible tube.

 Because of the difficulties with Bluard's example 10, Johnson tried to duplicate his example 11. That preparation work was done initially by Mr. Monson, but the products he obtained caused such severe skin irritation that few of the panelists could keep them on long enough to shave with them.

 After that burning reaction was reported, Mr. Monson checked his procedure, found he had made a minor error in calculating the amounts of three of the ingredients, and repeated the preparation. Mr. Wilder, another Johnson chemist, tried a modification of the procedure followed to see if that might make a difference. Both of those products caused the same intense burning sensation, and were therefore not submitted for panel testing. Those difficulties were reported to the Patent Examiner.

 Finally, Johnson undertook to prepare Bluard's example 12. The preparation was carried out and the product was packaged in Sepro cans. *fn2" However, it became so thick and salve-like in the can that it did not come out when the button was pushed.

 Johnson's attorney explained all of this to the Patent Examiner in the papers filed and during a second personal interview on May 4, 1970. The Examiner stated that he did not disagree with Johnson's interpretation of Bluard, that the content of the declarations was adequate, and that he considered the claims allowable. Moreover, Bluard taught the use of an oil soluble gelling agent whereas in Monson the gelling agent is water soluble.

 On May 6, 1970, two days after Johnson's attorney filed the arguments and supporting declarations and interviewed him, Patent Examiner Schulz made a second search of the pertinent prior art classifications to ensure that no relevant art had been overlooked.

 In July, 1970, the attorney became aware of an additional patent which he believed the Patent Examiner might wish to consider in connection with the Monson application, Gerstein U.S. Patent No. 3,485,915. He promptly took steps to send the Examiner a copy of that newly-found patent plus copies of all of the other prior art references considered during its prosecution.

 During the prosecution of the Monson Patent application, some forty prior art references were cited by and to the Patent Office.

 The Monson application was then allowed by the USPTO on September 15, 1970 and the patent was granted on November 17, 1970.

 On June 27, 1969 Johnson acquired an exclusive license under the Bluard patent and on June 29, 1971, Johnson acquired full ownership of the Bluard patent. The assignment of the Bluard patent to Johnson was recorded in the Patent Office on September 10, 1971.

 Defendant Carter did not enter the gel shave cream market until after August, 1978, when Bluard expired.

 Alleged Fraud and Inequitable Conduct

 Carter contends that Mr. Monson and the Johnson attorneys were guilty of fraud or inequitable conduct in failing to inform the Patent Examiner of the following:

a. the Pye patent;
b. the Naimark patent;
c. the fact that Johnson purchased a license and option to buy the Bluard patent, the principal reference relied on by the Patent Examiner;
d. the fact that Mr. Bluard demonstrated to Johnson's representative, during the course of the negotiations, a liquid hand soap that formed a good foam; and
e. the fact that another Johnson chemist, Douglas Dill, had made a slow-foaming liquid shave cream product before Mr. Monson started his work, and submitted a "conception sheet" claiming inventorship of that liquid product.

 These five contentions will be taken up in the following three sections of this decision.

 The Pye and Naimark Patents

 U.S. Patent 3,072,536 to Pye was one of a number of references referred to in a literature search conducted by a Mr. Dickerson of Johnson's research library reported to Mr. Monson about April 18, 1967. The Pye patent was referred to in a handwritten note by the patent attorney employed by Johnson who filed the Monson application with the notation "patent on 2-step shaving using CMC." This attorney, Robert White, claimed he could not recall the patent, or the meaning of that note, or whether he considered it relevant to the Monson invention.

 Mr. Monson referred to U.S. Patent 2,833,693 to Naimark in a handwritten note dated February 15, 1968, with the notation "how do we stand w[ith] r[espect] t[o] this patent." He claims not to recall to whom that question was addressed. Mr. Monson was not asked questions about his view at the time of the significance of those two patents. Colgate British Patent 833,913 was a patent expressly cited by the Patent Examiner during the prosecution of the Monson Patent application "to show the state of the art." It describes shaving cream compositions to which water-soluble polymers have been added.

 Dr. Stig Friberg testified as an expert witness for Carter. He is a leading expert chemist in the field of gels. He was asked to compare the cited Colgate patent to the allegedly withheld Pye patent. He agreed both disclosed the same kinds of polymers and ultimately concluded: "I think they are both very similar. I wouldn't be able to place any real difference between them."

 Although the Patent Examiner was certainly aware of the Colgate British Patent, he did not reject any of the Monson claims as unpatentable over it. Accepting Dr. Friberg's testimony that there is "no real difference" between the Colgate patent and the Pye patent, there is no reason to believe that the Examiner would have considered the latter to be any more pertinent or that it would have added any relevant fact to the prosecution. The Court finds, therefore, that the Pye patent was not material to the prosecution of the Monson Patent.

 The other portion of the Pye patent that Carter contends was relevant was the statement that a tendency to run or drip could be prevented by thickening a composition. However, Pye teaches only the formation of thickened lotions, not gels. Mr. Monson testified that he found thickened liquid compositions to be unsuitable as shaving preparations and, in this area, his testimony was not challenged. If such a disclosure were material, an article in the November 1957, Drug and Cosmetic Industry, by one Levy which was cited to the Patent Examiner by Mr. Monson's attorney correlates resistance to dripping with a gel having a sufficiently high yield value. In this respect the Pye patent would have contributed no relevant facts to the patent prosecution record, and was not material.

 Dr. Friberg "basically agreed" that he believed the Pye and Naimark patents were relevant to the patentability of the Monson invention because they disclosed the use of gelling agents in cosmetic or toiletry formulations. An opinion to Carter by its outside patent attorney, John D. Foley, dated December 28, 1971 similarly listed Naimark as one of several references which teach the use of water-soluble gelling agents to form cosmetic gels such as shaving compositions.

 The April, 1967 "Hercules Chemist" publication, cited to the Patent Examiner in the Monson Patent application as filed, specifically discloses the use of Mr. Monson's water-soluble cellulose gelling agents in cosmetic formulations, and U.S. Patent No. 2,798,503 to Brown, also cited in the Monson application as filed, discloses Mr. Monson's Carbopol-type gelling agents and their use in gel-like applications such as dentifrices, pharmaceutical creams and ointments. U.S. Patent No. 3,485,915 to Gerstein, another patent which Mr. Monson's attorney called to the attention of the Patent Examiner, teaches the use of a combination of Klucel and Carbopol (the combination used in the Monson Patent examples 1-4) to form gels in various cosmetic formulations. The Court finds that the Hercules Chemist publication, the Brown patent and the Gerstein patent, since they referred to the particular gelling agents indicated to be preferred in the Monson Patent application, were more relevant than the Naimark patent in respect to the disclosure of gelling agents used in cosmetic formulations. The Naimark patent would have added nothing of substance to the record before the Patent Examiner and was not material to the patent prosecution.

 Negotiations with Bluard

 In early 1968, Johnson arranged for William Rezac, an attorney in a Paris law firm, to contact Mr. Estignard-Bluard concerning the purchase of rights under his U.S. Patent No. 2,995,521. Johnson took the position that it believed the pressurized gel shaving product it planned to introduce did not fall under the Bluard patent but proposed payment of a sum to avoid the possibility of infringement litigation by Mr. Bluard, who was apparently known to be somewhat litigious. Mr. Bluard at first rejected the offer. Negotiations with Mr. Bluard went on for more than a year. Mr. Bluard reduced his initial asking price but insisted on purchase of the patent because it provided tax advantages to him. The arrangement was ultimately made that Johnson would obtain an exclusive license and an option to purchase the Bluard patent for an initial payment of $7,500, extendable one year by another equal payment, the purchase price to be paid in a lump sum by July, 1971 or in five equal annual installments.

 Johnson's attorney obtained the approval of his management to that arrangement "to protect Edge against any harassment by the patentee or his successor in title."

 Johnson acquired its exclusive license and option under the Bluard patent on June 27, 1969. The exclusive license under an option to purchase the Bluard patent was recorded by Johnson in the United States Patent and Trademark Office on January 15, 1970.

 During the negotiations and after the agreement was signed, Mr. Bluard tried, on several occasions, to interest Johnson in evaluating a liquid hand soap product and other ideas he was developing for products. At one time, in April, 1968, Mr. Bluard demonstrated a liquid hand soap product to the attorney, Mr. Rezac, at a meeting in France, and Mr. Rezac reported it produced a voluminous, rich foam. Johnson never followed up on Bluard's offers. There is no evidence that Johnson learned the composition of the liquid hand soap product.

 Johnson made the payments required to keep its option alive. In June, 1971, Johnson exercised the option to purchase the Bluard Patent and made the first annual installment payment of $25,000 and acquired ownership of the Bluard patent on June 29, 1971. The assignment of the Bluard patent to Johnson was recorded in the United States Patent and Trademark Office on September 10, 1971.

 After making two more of the annual installment payments, Johnson determined it did not wish to continue the agreement. In June, 1974, Johnson notified Mr. Bluard it was terminating the agreement in accordance with its terms, re-assigned the Bluard patent to him, and gave up all rights it had under that patent.

 The Bluard patent was considered relevant by the Patent Examiner because of what it disclosed. That disclosure was not affected by who owned the patent or who had rights under it.

 The liquid hand soap product was demonstrated to Mr. Rezac by Mr. Bluard in France, long after the Monson invention was made and several months after Mr. Monson's patent application had been filed in the USPTO. There is no evidence that the hand soap product corresponded to any of the examples of the Bluard patent.

 The Court finds that neither the Bluard negotiations nor the Bluard hand soap demonstration was material to the prosecution of the Monson Patent application.

 The Dill Composition

 Before Mr. Monson's assignment to head up Project 480, Kenneth Duncan, a group product manager at Johnson, showed him a prototype slow-foaming liquid composition prepared by a Mr. Douglas Dill, a Johnson chemist working in the area of carpet cleaners. That slow-foaming composition was a cloudy liquid that separated into two layers. When shaken to disperse the contents and poured out into the back of the hand, bubbles gradually and slowly appeared. The Dill composition was not a gel. It was also not a "post-foaming" composition because it started to foam as soon as it was poured out on the hand. It was not a pressurized composition. Although the Dill composition was the idea that got Project 480 started, there was no proposal to sell it. Moreover, the Dill composition did not meet the objectives of Project 480. It was thin and watery, difficult to apply to the face and shave with. It produced a foam typical of carpet cleaning compositions but was not suitable for shaving.

 Mr. Monson had a subsequent discussion, the date of which he did not remember, with Mr. Dill about the composition of the product in a bottle. He learned that it contained a major amount of water, a synthetic detergent for foaming, and a small amount of hexane or heptane which caused the slow foaming.

 Mr. Monson did not use the Dill composition in his work on Project 480 and he did not ask Mr. Dill to provide more of that composition for him. The Dill compositions were slow-foaming liquids, not gels although the formulation did contain Natrosol, a gelling agent. The Dill composition was not stable, was not a gel, and was not restrained from foaming for any appreciable time after being dispensed from its container. The Dill composition was not a Monson composition and was never considered by anyone to be worth marketing as a shave cream. Since it is not a gel, it is not a composition as defined in the Monson Patent.

 The evidence presented to the Court concerning Mr. Dill's work was directed to the composition referred to at page 92 of his notebook. There is no convincing evidence connecting that composition with Mr. Monson. The Dill page 92 product was, as reflected in contemporaneous documents and as re-created by Carter and demonstrated in Court, a liquid (not a gel) composition that began foaming nearly immediately after being dispensed and continued slowly to foam for some time thereafter. It appeared to be, in its physical characteristics, essentially like the "slow-foaming liquid" composition disclosed in the Spitzer patent which the Examiner was aware of, Johnson having cited it to him. The Examiner did not deem Spitzer sufficiently pertinent to use as a basis for rejecting the Monson claims.

 Mr. Dill referred to his page 92 composition in a conception sheet, in which he claimed to be the inventor of that liquid composition. Mr. Dill never, however, claimed to be an inventor of a post-foaming gel composition. Mr. Monson's uncontradicted testimony was that he abandoned the idea of a liquid product as being unworkable and proceeded on his own (after being told by Mr. Dill and other research personnel they could offer no help) to develop his post-foaming gel invention.

 The Court finds that neither Mr. Dill's work nor his conception sheet was material to the prosecution of the Monson Patent application.

  Technical Witnesses

  Several technical witnesses testified on the patent issues. They were for plaintiff:

1. James Monson, the inventor of the patent in suit.
2. Professor John J. Sciarra, Executive Dean and Professor of Industrial Pharmacy at the College of Pharmacy of Long Island University.
3. Dr. Tim Konicek, a chemist employed by Johnson.
4. Dr. James Kurtz, a chemist employed by Johnson.

  Defense experts were:

1. Mr. Walter C. Beard, an expert in the field of aerosol technology.
2. Mr. Robert James, a chemist employed by Carter.
3. Professor Stig Friberg, Curator's Distinguished Professor of Chemistry at the University of Missouri.

  All of the experts were able and articulate. Johnson relied mainly on Professor Sciarra and Carter on Dr. Friberg.

  The Monson Patent

  The Monson Patent is owned by Johnson, under an assignment from James A. Monson. The statutory term of the Monson Patent extends to November 17, 1987.

  The relevant claims of the Monson Patent in this litigation are claims 1, 3, 10, 13 and 16. Claim 1 is set forth at pages 9 and 10 supra. Each of claims 3, 10, 13 and 16 is dependent on claim 1 and adds further limitations to it.

  The invention described in the Monson Patent is a stable, post-foaming gel comprising a major amount of water, a soap, a gelling agent and a post-foaming agent.

  The function of the water was to provide the medium in which the gel was formed. The function of the water-soluble soap was to provide the primary gel structure, to produce foaming and lather and to contribute to lubrication during shaving. The function of the volatile liquid post-foaming agent was to provide the force for developing the foam on application to the face and to help make the gel by swelling up the soap structure.

  It is the function of the water-soluble gelling agent which is at issue here. Plaintiff contends that its function was to modify the soap gel structure and provide lubrication. Defendant urges that the claims of the Monson Patent, properly interpreted, require the water-soluble gelling agent to cause the gel to form.

  A "gel" is a material which has properties of the solid state and under certain conditions exhibits properties of the liquid state. It is made up of a somewhat fragile network that gives it the properties of the solid state under normal conditions. When sufficient force is applied to the gel, it breaks down that network and causes the gel to flow. The basic difference between a gel and a liquid is that, in a liquid, the molecules are free to move whereas in a gel the molecules are held in a structure and will not flow until some minimum force is applied. A gel will not flow or pour under reasonable, ordinary conditions. All gels are colloidal systems, meaning that the individual particles, droplets, fibers or sheets contained in them are very small.

  "Yield value", as the term is used in the Monson claims, is the minimum force required to break down the solid-like structure of the gel and cause it to behave as a liquid. This is a characteristic property possessed by gels. It is a measure of the rigidity or strength of a gel. That characteristic was important in the Monson invention.

  A "post-foaming" gel is one that, when dispensed, is relatively free from foaming and remains that way until applied to the face, and them foams upon spreading on application.

  The two main factors which determine whether a composition will be post-foaming are the pressure generated by the volatile liquid post-foaming agent and the viscosity or consistency of the composition.

  Claim 1 of the Monson Patent states that the gel will remain substantially free from foaming for at least 60 seconds under static ambient conditions. The restraint on foaming was important because the object was that the product would not foam until it was applied to the face. Sixty seconds was not a critical time limit but was chosen as a good, practical length of time to permit the product to be dispensed into the hand and applied to the face. Static ambient conditions were prescribed and defined in the patent because foaming would be faster if the gel were spread or exposed to higher temperatures or lower pressures. The patent defines static ambient conditions as one atmosphere of pressure, 63 degrees F, and conditions substantially free from shearing tension.

  Claim 1 of the Monson Patent refers to the patented composition as a "stable" post-foaming gel. The word "stable" means the composition does not separate with time.

  The claim defines the post-foaming agent as a volatile liquid. "Volatile" means a liquid that rapidly evaporates.

  The descriptive portion of the Monson Patent further describes the invention in greater detail. It describes the "Sepro" can, an aerosol container in which the product is contained in an accordion-pleated plastic bag and in which a separate propellant outside the bag and inside the can collapses the bag and expels the product when the button is pushed. The Sepro can was a preferred container for the Monson post-foaming gels.

  The water-soluble gelling agents described in the Monson Patent are water-soluble polymers. There is no distinction between the terms "gelling agent" and "gelling aid" in the Monson Patent; they are used interchangeably. In general the more gelling aids used, the stronger the gel.

  Some ingredients are employed in the gel to modify the esthetics or the purpose for which the gel is used, such as dyes, fragrances, emollients, humectants and preservatives. Those ingredients may also, as a ...

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