Full opinion text
THOMSEN, Chief Judge. Plaintiffs have now moved for an order holding defendant Colgate-Palmolive Company in contempt of the injunction issued against Colgate pursuant to Judge Coleman’s decision herein, D.C., 130 F. Supp. 557, as affirmed by the Court of Appeals, 4 Cir., 230 F.2d 855, certiorari denied 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed. 2d 59. See also 4 Cir., 243 F.2d 163 and D.C., 151 F.Supp. 427. Plaintiffs Spitzer and Small are the owners of U. S. Patent No. 2,655,480, issued to Spitzer, et al., for a lather producing composition. Plaintiff Carter Products, Inc. is the holder of an exclusive license under that patent and manufactures and sells a pressurized shaving cream known as “Rise”. The injunction with which we are dealing enjoined Colgate (a) from making, using, or selling, or from actively causing or inducing others to make, use or sell pressurized lather compositions covered by the claims of the Spitzer patent for the remainder of its term; and (b) from making or offering for sale a pressurized lather shaving cream utilizing one of plaintiffs’ trade secrets held to have been wrongfully appropriated by Colgate. Plaintiffs claim that Colgate has violated the injunction (I) by continuing to induce the sale by retailers of the adjudicated products after it was served with the writ of injunction, and (II) more importantly, by manufacturing a new, altered product and advertising and selling it under the same names as the old, adjudicated products, Palmolive Rapid Shave and Colgate’s Instant Barber Shave. Colgate uses as a propellant in the altered product a combination of two hydrocarbons, propane and isobutane, instead of the Freons listed in the claims of the Spitzer patent and used by Colgate in the adjudicated products. The altered product is sometimes referred to in the record as the “H” product. Plaintiffs do not contend that the' altered product infringes the literal language of the claims of the Spitzer patent; plaintiffs contend (II-A) that the hydrocarbons Colgate now uses are equivalent to the Freons claimed in the Spitzer patent, particularly in claims 16 and 19. Plaintiffs also contend (II — B) that Colgate is still using one of the trade secrets which it wrongfully appropriated. Colgate (I) denies that it violated the injunction in connection with the adjudicated products. (II-A-1) It denies the equivalence of the propellants, and contends (II-A-2) that plaintiffs are 'estopped to claim such equivalence by reason (a) of file wrapper estoppel, and (b) of judicial estoppel, by positions taken by plaintiffs at the previous trial in this court and on appeal. (H-B) Colgate denies that it is using the prohibited trade secret in manufacturing the altered product, and (III) claims misuse of the Spitzer patent by plaintiffs. The Prior Proceedings The original complaint in this action charged patent infringement by all of the defendants and wrongful appropriation by Colgate of plaintiffs’ trade secrets. Plaintiffs claimed infringement of eight of the twenty claims of the patent. Defendants admitted infringement if those claims were valid, but denied their validity and prayed for a judgment declaring all claims of the patent invalid. After a long trial Judge Coleman held the patent valid and decreed that an injunction should issue enjoining infringement thereof. He also found that Colgate had unlawfully misappropriated three of plaintiffs’ trade secrets. Only one secret, dealing with superfatting, is involved in the present contempt proceeding. Judge Coleman decreed that the use of that secret should be enjoined, ordered Colgate to assign to plaintiffs its rights under certain patent applications, and referred the case to a special master to determine and report on the damages resulting from infringement and the damages and profits for which Colgate should be required to account because of its misappropriation of plaintiffs’ trade secrets. The question whether increased damages should be awarded was reserved for future determination. An index to Judge Coleman’s opinion, 130 F.Supp. 557, is set out below in note . The Court of Appeals affirmed the decree, 230 F.2d 855; an index to that opinion is set out below in note. The Supreme Court denied certiorari, 352 U.S. 843, 77 S.Ct. 43, 1 L.Ed.2d 59. This court then issued the injunction called for by Judge Coleman’s decree, as so affirmed, enjoining Colgate (a) from making, using, or selling, or from actively causing or inducing others to make, use or sell pressurized lather compositions covered by the claims of the Spitzer patent for the remainder of its term, and (b) from making or offering for sale a pressurized lather shaving cream utilizing the trade secret which was described as follows: “By combining in a pressurized lather-generating composition a soap solution superfatted with petrolatum, carbowax and excess stearic acid * * [230 F.2d 863.] Thereafter Colgate filed a motion in the Court of Appeals seeking to be relieved of its stipulation admitting infringement. Colgate contended that the decision of the Court of Appeals had limited the effect of the claims as to which infringement had been admitted and had limited the invention to which the claims relate. Colgate’s motion was denied, the court stating that there was no basis for the contention that it had intended to limit or did limit the scope of the invention or the claims of the patent in any way. 243 F.2d at page 164. Colgate then sought, unsuccessfully, to have this court “clarify and amplify the decree” by changing the accounting period for damages and profits. See 151 F.Supp. 427, 428. Meanwhile, on April 3, 1957, plaintiff had filed the motion now under consideration, for an order holding Colgate in contempt of the injunction. The issues raised are set out in the second and third paragraphs of this opinion. The facts with respect to each issue will be found and stated separately. Definitions Certain terms were used by some of the witnesses in different senses. I am therefore stating the definitions of those terms as they will be used in this opinion. In true solutions, the molecules of the dissolved substance, called the solute, are dispersed among those of the solvent. The single independent molecules are the unit. In colloidal solutions, ultramicroscopic particles of one substance are in permanent suspension in another. In emulsions microscopically visible droplets of one liquid are suspended in another. Soap micelles are aggregates of soap molecules in colloidal suspension in water. McBain defines solubilization as a mode of bringing into solution substances that are otherwise insoluble in a given medium. So defined, it involves the complete disappearance of the original solid particle or liquid droplet, as it is taken up, molecule by molecule into the organized colloidal particles of the stable colloid itself. Some of the witnesses used the term solubilize in a different sense, to mean the taking up or envelopment of droplets, or groups of molecules, of a compound in liquid phase by the organized particles of a stable colloid, in this case the soap micelles. In such solubilization the liquid droplets of the compound propane-isobutane do not completely disappear, but remain in droplets or groups of 50 or 100 or more molecules of isobutane in association with the soap micelles. To avoid confusion, I will use the words absorb and absorption to describe the latter phenomenon. The organic compounds referred to in the evidence include: I. Ethers; II. Aliphatic Hydrocarbons, (A) Saturated, and (B) Unsaturated; III. Halogenat'ed Hydrocarbons, which are not true hydrocarbons', since the hydrogen atoms have been completely or partially replaced by halogens; thus we have (A) chlorinated hydrocarbons, (B) fluorinated hydrocarbons, and (C) chlorfluorinated hydrocarbons. Freon is DuPont’s commercial name for the class of chlorfluorinated hydrocarbons. In some of the Freons the fluorine equals or exceeds the chlorine and in some of the Freons the chlorine exceeds the fluorine. In this case, we are principally interested in a few of the Freons and in four saturated aliphatic hydrocarbons, namely, propane, butane, isobutane and cyclobutane. Note sets out a group of saturated aliphatic hydrocarbons with their respective vapor pressures, and the important Freons with their vapor pressures. Various propellants may be combined to secure a desired vapor pressure, which in a pressurized lather shaving cream must be sufficiently high to eject the mixture from the can and form a lather rapidly, but which, under ICC regulations, may not exceed 40 p. s. i. g. I. Inducing Sales of Adjudicated Products Judge Coleman’s decision was suspended by supersedeas pending appeal and application for certiorari. In May, 1956, while the supersedeas was in effect, Colgate discontinued the manufacture of the adjudicated products, and began the manufacture of the altered product. Colgate used the same packages, labels and advertising in connection with the altered product that it had used in connection with the adjudicated products. On November 19, 1956, an injunction issued out of this court enjoining Colgate, inter alia, from making, using or selling or from actively causing or inducing others to make, use or sell pressurized shaving lather compositions covered by the claims of the Spitzer patent. A certified copy of the injunction was served on Colgate and its officers on or about November 20, 1956. Colgate promptly ordered its warehouses to cease shipping the adjudicated products still on hand and to hold for destruction Colgate’s inventory of such products. At that time, however, Colgate’s customers —wholesalers and retailers — were holding for sale approximately 1,600,000 cans of the adjudicated products: Some of these cans were the subject of existing agreements under which Colgate had promised to idemnify certain large retailers against liability for patent infringement. Colgate took no action to prevent sale of the adjudicated products by wholesalers and retailers. It did not advise them of the injunction; it did not even advise its own salesmen and display men of the injunction. Although at various times, for various reasons, Colgate had picked up merchandise from its customers, it made no effort to do so with respect to the adjudicated products. Instead, after November 20, 1956, Colgate continued to advertise Palmolive Rapid Shave and Colgate’s Instant Barber Shave without distinction between the old, adjudicated products and the new, altered product. Its salesmen and display men aided and abetted the distributors in selling their stocks of the adjudicated products in exactly the same manner as before the injunction. Cassidy v. Puett Electrical Starting Corp., 4 Cir., 182 F.2d 604, holds that a manufacturer, against whom such an injunction has been issued, must take reasonable steps to prevent further infringement. Colgate has not only failed in this duty; it has violated the injunction by actively causing, inducing, and participating in, the sale by wholesalers and retailers of 1,600,000 cans of the adjudicated products. The reasons for Colgate’s defiance of the injunction are obvious. Recall of the 1,600,000 cans would have damaged its reputation and that of its products. If Colgate’s advertising had reflected the change in its pressurized lather shaving cream, the altered product could not have been launched with the momentum of good will which Colgate had built up for its adjudicated products in violation of plaintiffs’ rights. Colgate’s “willful and deliberate infringement” with respect to the adjudicated products continued for many months after the injunction was issued and served. Under the terms of Judge Coleman’s decree, plaintiff is already entitled to damages on the sale of the 1,600,000 cans by Colgate to its distributors. Judge Coleman left open the question whether such damages should be trebled. 130 F. Supp. at pages 571, 580; 230 F.2d at. pages 857, 866. Under the facts now found it is clear, and I hold, that those damages should be trebled. Plaintiffs are also entitled to recover reasonable attorneys’ fees for prosecuting this portion of their pending motion. The questions whether plaintiffs are-entitled to enjoin the continued sale of the altered product under the same name- and advertising as the adjudicated products, and to recover damages therefor, are not before this court at this time. The order to be entered herein will be without prejudice to plaintiffs’ right to-prosecute such claims. II. Manufacturing and Selling the Altered Product. A. The Question of Infringement. (1) Equivalents. Shortly after the trial before Judge-Coleman, Colgate decided to alter the-formula of the adjudicated products. In place of the Freon propellants which are-claimed in the Spitzer patent, the inventor Fine, who had previously disclosed plaintiffs’ trade secrets to Colgate, suggested a propellant composed of a mixture of two aliphatic hydrocarbons, propane and isobutane, which are not included in the claims of the patent but. which are described in the specification as suitable propellants for practicing the-invention. Fine’s suggestion was adopted, and Colgate began manufacturing the-altered product in May, 1956. It is still' being manufactured and sold. This contempt proceeding is based' upon plaintiffs’ contention that the altered product infringes Claims 16 and 19 of the Spitzer patent. Claim 16. reads: “A package comprising a pressure-tight container having a valve-controlled opening and containing a composition for use in producing a stable lather consisting essentially of a liquid mixture of an aqueous soap solution and a volatile propellant in liquid phase, the composition being confined in the container under the vapor pressure of the propellant, said soap solution comprising a solution which is non-gelling at room temperatures and which contains from about 0% to about 18% by weight of soap, said propellant comprising at least one compound selected from the group consisting of the substantially water-insoluble fluorinated-chlorinated ethanes and methanes in which all of the hydrogen atoms are replaced by chlorine and fluorine and in which the number of fluorine atoms in the molecule at least equals the number of chlorine atoms, the proportion of propellant being from about .07 to about .025 mole per 100 grams of the composition, said propellant having a vapor pressure in the range of from about 15 to about 65 pounds per square inch gauge at 70° F.” Claim 19 is based on claim 16, and reads: “A package according to claim 16 in which the propellant consists of a mixture of diehlordifluormethane and 1, 2 dichlor 1, 1, 2, 2, tetrafluorethane.” Since propane and isobutane are aliphatic hydrocarbons, and therefore not included among the Freons specified in claims 16 and 19, plaintiffs concede that the altered product does not infringe the literal language of those •claims. Plaintiffs contend, however, that the hydrocarbon propellant of the altered product is an equivalent of the specified Freon propellant, and that all other elements of those claims are literally infringed. The aqueous soap solution in Colgate’s altered product is non-gelling at room temperatures, and contains 8.87% by weight of soap. The molar proportion of the hydrocarbon propellant is .05 mole per 100 grams of the composition. This gives the lather a sustained and uniform bubble structure and a density which falls within the preferred density range •taught by the patent. The hydrocarbon propellant has a vapor pressure of about 44 p.s.i.g., and a water solubility of 7.5 cc. of propellant per 100 grams of water, which is within the preferred range of solubility taught by the Spitzer patent. It is substantially water-insoluble. The altered product is confined under the vapor pressure of its propellant in a container having a valve-controlled opening. When the valve is opened the composition produces a stable lather having substantially the same stability, bubble size, and practical use as plaintiffs’ product Rise and as the adjudicated Colgate products. So much is not seriously disputed. But Colgate denies the equivalence of the propellants and specifically denies that the composition of its altered product in the container is “a liquid mixture of an aqueous soap solution and a volatile propellant in a liquid phase.” (Italics mine.) Colgate contends that Spitzer is not a pioneer patent entitled to a wide range of equivalents. In Graver Tank & Mfg. Co. v. Linde Co., 339 U.S. 605, 609, 70 S.Ct. 854, 856, 94 L.Ed. 1097, the Supreme Court said: “What constitutes equivalency must be determined against the context of the patent, the prior art, and the particular circumstances of the case. Equivalence, in the patent law, is not the prisoner of a formula and is not an absolute to be considered in a vacuum. It does not require complete identity for every purpose and in every respect. * * * Consideration must be given to the purpose for which an ingredient is used in a patent, the qualities it has when combined with the other ingredients, and the function which it is intended to perform. An important factor is whether persons reasonably skilled in the art would have known of the interchangeability of an ingredient not contained in the patent with one that was.” The Spitzer patent falls in the field of pressure packaging and particularly in that portion of the field dealing with the production of lathers. It relates to a composition for use in producing a soap or detergent lather for shaving, shampooing or washing, which maybe applied to the skin, hair or other material. The validity of all 21 claims of the Spitzer patent was determined as between the parties hereto in the prior proceedings herein. Therefore, the prior art may not be re-examined at this time to question the validity of the patent, but it may be re-examined to determine the range of the equivalents which should be allowed. Pressure packaging was not new at the time the subject matter of the Spitzer patent was discovered or invented. Pressure packaging had been previously used for self-generating whipped cream and for aerosol insecticides and other products which emerge from the container in the form of a spray. Rotheim U. S. Patent No. 1,892,750, issued in 1937, disclosed the spraying of liquid soap and other materials with various propellants, including isobutane and other hydrocarbons. But Judge Coleman found that “Rotheim teaches that the ingredients of his soap solution should dissolve in the propellants, whereas it is a basic requirement of the Spitzer patent combination that such ingredient shall not dissolve in the propellants. Thus reliance upon Rotheim would mislead, rather than aid in attaining what the Rotheim patent teaches.” 130 F.Supp. at page 567. This finding was approved by the Court of Appeals. 230 F.2d at page 861. Boe U. S. Patent No. 2,524,590, issued October 3, 1950, discloses the pressure packaging of a wide variety of products, including products containing soap solutions, by emulsifying under pressure the material to be sprayed with a liquefied gas. A sample of the Boe wax emulsion prepared under pressure in accordance with the instructions of the Boe specifications emerges as a lather, although it is not suitable for shaving. The Boe patent, however, does not teach or suggest the creation of a lather, but of a fine mist suitable for spraying. Boe requires that the ingredients dissolve in the propellant, the very opposite of the teaching of the Spitzer patent. Boe points out how foaming may be prevented and cautions against the production of a lather. See 130 F.Supp. at page 567; 230 F.2d at page 861. The context of the Spitzer patent in the prior art was described by the Court of Appeals in characterizing the scope of the invention: “There was, of course, nothing novel in the use of soap to make lather, nor in the use of a can as a container, nor in the use of a gas liquefied by pressure and mixed with another liquid to spray the mixture from the can. What was novel was to get a mixture of the right gases, with the right soaps in the right proportions, confined in a container under the right pressure, so that, a lather satisfactory for shaving purposes would be produced when the mixture was allowed to emerge.” 230 F.2d at page 858. The plaintiffs herein have treated their product Rise as covered by Boe, by securing, before Spitzer issued, an exclusive license under Boe for the production of pressurized shaving cream. That fact, however, does not require-that Spitzer be held to a narrow range of equivalents in the pressurized shaving cream section of the pressurized packaging field. In that section of the field Spitzer is a primary patent. “Whether complainant’s invention be termed a pioneer or not, it unquestionably solved a problem for the solution of which others had' sought in vain and made a substantial contribution to the safety of those who-travel the highways. In such case, the law is well settled that he is entitled to a liberal construction of his claims and a liberal application of the doctrine of equivalents, to the end that he may not. be deprived of the fruits of what he has done.” Oates v. Camp, 4 Cir., 83 F.2d 111, at page 115. See also cases cited therein; Hartford-Empire Co. v. Swindell Brothers, 4 Cir., 96 F.2d 227, at. pages 230, 231; Southern Saw Service. Inc., v. Pittsburgh Erie Saw Corp., 5-Cir., 239 F.2d 339, 345; Long Mfg. Co. v. Holliday, 4 Cir., 246 F.2d 95, 100, 101, certiorari denied 355 U.S. 926, 78 S.Ct. 384, 2 L.Ed.2d 357. One of the features of the altered product which Colgate contends distinguishes it from the teachings of the Spitzer patent is the physical relationship of the propellant to the soap solution. The Spitzer patent teaches that the “ * * * insoluble portion of the propellant is in liquid phase, existing as droplets or in the form of a liquid-liquid emulsion in the soap solution.” Colgate contends that its propellant (a) does not exist in liquid phase, and (b) is dissolved rather than emulsified in the soap solution. (a) The Freons listed in the claims of the Spitzer patent and used by Colgate in the adjudicated products are substantially water-insoluble. When those Freons, in liquid phase, are mixed under pressure with an aqueous soap solution, a very small percentage of the propellant passes into true solution; most of the propellant associates with the soap micelles to form large emulsion droplets; the rest of the propellant is absorbed by the soap micelles in submicroscopic droplets. The hydrocarbons propane and isobutane are also substantially water insoluble. When those compounds, in liquid phase, are substituted for the Freons, and are mixed under pressure with the soap solution less than 4% of the propellant passes into true solutions; over 50% of the propellant is absorbed by the soap micelles in submicroscopic droplets containing on the average about 100 molecules of the hydrocarbon propellant; the rest of the propellant associates with the soap micelles to form large emulsion droplets. Everyone agrees that the propellant in the large emulsion droplets remains in a liquid phase. Dr. Patrick, Professor Emeritus of Chemistry at the Johns Hopkins University, whose testimony I find the most credible on all disputed points, testified that in his opinion the hydrocarbon propellant in the soap micelles is also in liquid phase. Colgate’s principal expert testified that the droplets or groups of 100 or so hydrocarbon molecules absorbed in the soap micelles are so small that it is impossible to say whether they are in a liquid phase, a solid phase, a gaseous phase, or some other phase not presently known to science. I find as fact, however, that under either the testimony of Dr. Patrick or the testimony of Colgate’s expert, the hydrocarbon propellant in the soap micelles is either in a liquid phase or in a phase which is essentially the same as a liquid phase; upon opening the valve of the container to the atmosphere all of the propellant in the soap micelles changes into vapor and generates tiny bubbles in the same way as the propellant in the large emulsion droplets. It is these tiny bubbles which give stability to the lather and make it suitable for shaving. (b) Colgate’s hydrocarbon propellant is substantially insoluble in the soap solution. If it were not, it would not produce a stable, fine-textured lather; the molecules of the gas would dissolve in the bubble walls, and passing from the smaller to the larger bubbles, would soon reduce the lather to a coarse-textured foam which would run and be unsuitable for shaving. If a propellant such as those used in the products involved in this suit in liquid phase were added to pure water the two would not mix. The surface energy present in the interspace between the two liquids would operate to separate the propellant from the water. Shaking the container would disperse small drops of the propellant in the water, forming an emulsion. Such an emulsion would be unstable, because the surface energy of the propellant drops would tend to decrease the surface area of the propellant by coalescing droplets into fewer and larger drops. When, however, the propellant is added to a soap solution and the container is shaken a different result occurs. Because the “head” of the soap molecule is soluble in water and the “tail” is soluble in the propellant, the propellant droplets become surrounded by a skin of soap molecules, the surface tension of the droplets is reduced, and the emulsion becomes stable. Since the soap and water are in colloidal solution, many of the droplets of the propellant are entrapped or absorbed in the soap micelles; the micelles serve the same function as the “skin” of soap molecules around an emulsion droplet, and create a stable colloidial suspension of the droplets. There is a difference in the size of the droplets involved, the emulsion droplets being generally larger than the micelle droplets; but the practical result in each ease is the same. In both the soap micelles and the emulsion droplets, a liquid droplet of propellant is more or less permanently suspended in the aqueous soap solution and will, upon release to atmospheric pressure, expand into a small soap bubble. It is true that the Court of Appeals found that the invention consisted of “the use of particular propellant gases liquefied under pressure and combined in such way with particular aqueous soap solutions as to produce an emulsion, which, when released from the container, becomes a lather composed of tiny gas bubbles coated with soap and useful for shaving — a product which was new and useful, which the expert chemists of Colgate had tried unsuccessfully to produce, and which achieved at once unqualified commercial success.” 230 F.2d at page 861. It is important to note, however, and I find as a fact, that during the prior trial the terms “colloidal solution” and “colloidal suspension” were not referred to by counsel in their arguments nor by the courts in their opinions. The distinction was drawn between a “solution”, in which the ingredients “dissolve in the propellants”, as taught by Rotheim and Boe, 130 F.Supp., at page 567, and an “emulsion”, as taught by Spitzer. One or two of the early Reich reports referred to colloidal solution or dispersion, but Professor La Mer, the inter partes neutral expert, was the only witness who referred to colloids in his testimony. He equated “colloidal dispersion” generally with “emulsion” for the purposes of the issues then before the court. This is important in considering the issues of equivalents, file wrapper estoppel, and judicial estoppel now before the court. The testimony of Dr. Patrick, cited above, together with other testimony and exhibits produced at the hearing on the pending motion, convince me that the hydrocarbons propane and isobutane enter into soap micelles in the same way as the Freons listed in claims 16 and 19, and form emulsion droplets in the same way as those Freons. They have their vapor pressure reduced by oil additives in substantially the same way. And although most of the Freon propellant forms emulsion droplets and less than half is absorbed in the soap micelles, whereas most of the hydrocarbon propellant used in the altered product is absorbed in the soap micelles and less than half forms emulsion droplets, the difference is unimportant in this case, and does not prevent their equivalence. The most important consideration is that both of the propellants are substantially water-insoluble. Only about 4% of either dissolves into the aqueous phase of the soap solution in true solution. The remaining 96% of both is undissolved in the soap solution. Whether most of the other 96%' is in emulsion or in colloidal suspension, it is in a liquid phase, or in a phase which is essentially the same as a liquid phase. Both propellants generate the tiny bubbles necessary to produce a lather suitable for shaving. The density of the altered product falls within the preferred density range taught by the Spitzer patent. The use of the word “emulsion” in the specification of the patent does not necessarily exclude the situation which exists when most of the propellant is absorbed by the soap micelles. I find as a fact that the combination of aqueous soap solution and propellant in Colgate’s altered product functions in substantially the same manner and under the same physical laws to produce the same result as that of the pressurized shaving lather composition of the formerly adjudicated Colgate products and of plaintiffs’ patented product Rise. That is the real test. Graver Tank & Mfg. Co. v. Linde Co., 339 U.S. 605, 608, 70 S.Ct. 854, 94 L.Ed. 1097. The Spitzer patent discloses that propane and isobutane may be used in place of the preferred Freons. It discloses that out of hundreds of substituted and unsubstituted hydrocarbons certain Freons having low solubility in water and other specified characteristics are optimum for forming stable shaving lathers which do not cause a burning or smarting sensation on the face. It also discloses that a group of four aliphatic hydrocarbons, including propane and isobutane, are equal to the preferred Freons in lather forming and non-smarting properties. It states: “We have discovered that the straight chain saturated aliphatic hydrocarbons of suitable vapor pressure, which comprise propane, butane, isobutane and cyclobutane are suitable lather-forming propellants and do not cause an undesirable burning sensation. The inflammability of these propellants introduces a fire hazard.” The patent further emphasizes the equivalence in fact between Freon 12 and Freon 114 on the one hand and isobutane and propane on the other, by giving specific examples of the substitution of isobutane and propane for Freons 12 and 114 in stable shaving lather producing compositions in which the same soap solution was used. The specification of the Spitzer patent gives three examples of formulations, using hydrocarbon propellants. All three use triethanolomine (TEA) soap, the preferred soap of the Spitzer patent; none use alkali metal soaps, but the Spitzer patent discloses alkali metal soaps as generally suitable. Colgate’s internal records show that it considered that the hydrocarbon propellants would not work satisfactorily with Colgate’s TEA soap formulation. The soaps of the altered product are steareates and cocoates of potassium and sodium, i. e., alkali metal soaps. The difference in the soaps is not material on the issue of equivalents, but will be considered more fully on the trade secret issue. At the trial before Judge Coleman, Colgate’s expert Smith stated without qualification that the Spitzer patent classifies isobutane as equivalent to the Freons. The equivalence of the specified hydrocarbons with the claimed Freons was urged by Colgate’s counsel and not disputed by plaintiffs’ counsel or witnesses. They based their case on other grounds. Colgate derived its hydrocarbon product directly from the teachings of the patent and the knowledge of the patentees, and not by independent research. When Colgate saw the handwriting on the wall, immediately after the hearing before Judge Coleman, it had only to follow the teachings of the patent to come up with a satisfactory product using an equivalent propellant disclosed by the teaching of the patent. This is an element to be considered. Graver Tank & Mfg. Co. v. Linde Co., 339 U.S. at pages 611-612, 70 S.Ct. at pages 857-858; Long Mfg. Co. v. Holliday, 246 F.2d at page 101. The mixture of isobutane and propane of the stable lather forming composition of the Colgate altered product is the equivalent of the Freon propellant recited in claim 19, and of the fluorinated and chlorinated ethanes and methanes in which all of the hydrogen atoms are replaced by chlorine and fluorine and in which the number of fluorine atoms in the molecule at least equals the number of fluorine atoms, i. e. Freons, recited in claim 16. The Colgate propellants and soap solution are in the physical-chemical relationship required for the invention of the patent in suit. The combination responds to the definition of the invention and functions in substantially the same manner to produce substantially the same results as the package and composition recited in claims 16 and 19. II-A-2(a) File Wrapper Estoppel The basic question on this issue is whether the original claims which included saturated aliphatic hydrocarbons among the claimed propellants were canceled by applicants (a) because the claims were too broad to be valid, or (b) in order to meet the objections of the examiner based upon his understanding of the prior art, right or wrong, or (c) for both reasons. The application for the Spitzer patent was filed on November 2, 1949. The invention was originally described as relating to “a composition for use in producing a soap or detergent lather without resorting to any manual or mechanical whipping or agitating operation, and further includes a method for producing such a lather employing the improved composition”. Certain of the claims of the application as originally filed (Nos. 1, 2, 4, 5, and 12) expressly claimed as propellants compounds from (1) the saturated aliphatic hydrocarbons, (2) the saturated aliphatic partially fluorine substituted hydrocarbons, and (3) the saturated aliphatic partially and wholly chlorine and fluorine substituted hydrocarbons. Each of these classes includes a considerable number of compounds. The specification of the patent as originally filed on November 2, 1949, and as finally issued on October 13, 1953, disclosed that certain of the so-called chlorfluorinated hydrocarbons (Freons) were the preferred propellants. The specification also disclosed that saturated aliphatic hydrocarbons with pressures of about 5 to about 300 p. s. i. g. at 70° F. may be used as propellants with soap solutions to produce a foam or lather, but that the inflammability of these propellants introduces a fire hazard. At the time the specification was drafted the patentees liad decided that propane, butane, isobutane and cyclobutane were the only saturated aliphatic hydrocarbons of suitable vapor pressure “promising enough to be worth covering”, and the specifications listed those four. All of the claims of the patent application as originally filed were rejected by Patent Office action on May 26, 1950, citing as prior art, inter alia, Rotheim U. S. Patent No. 1,892,750. The examiner stated: “Rotheim shows that combinations of liquid soaps and low pressure propellants to be old (sic)”. The examiner mentioned as propellants disclosed by Rotheim dimethyl ether, vinyl chloride and methyl chloride. Rotheim also discloses isobutane and other hydrocarbons as propellants for dissolving material to be sprayed. In response to this first Patent Office action, the applicants amended their claims to require a stable lather and inserted limitations as to molar proportions of all propellants in all claims in which molar proportions were not already specified. Applicants’ attorneys called the examiner’s attention to the range of proportions and the solubilities of the propellants of the invention, and noted that the claims recited a stable lather producing composition, combining an aqueous soap solution and a propellant taken from a defined class, which propellant should be relatively insoluble in water. They argued that Rotheim is not concerned with producing lather and that Rotheim nowhere teaches how to make any composition capable of producing a lather; that the liquid soaps referred to in Rotheim, which contain a substantial proportion of alcohol, may form satisfactory sprays, as contemplated by Rotheim; but that such soaps do not make compositions capable of producing stable lathers, because propellants useful in lather forming compositions dissolve in alcohol. The examiner was not persuaded by these arguments. In a second Patent Office action, the examiner rejected all of the claims of the amended application on Rotheim, together with certain other references, including Getz U. S. Patent No. 2,435,682 and Boe U. S. Patent No. 2,524,590. A prior art article by Fulton listed Freons and hydrocarbons as propellants for soluble insecticide sprays. Getz listed nitrous oxide, dimethyl ether, Freon 12 and cyclopropane (a saturated aliphatic hydrocarbon) as soluble propellants to form whipped cream. Boe listed propane, isobutane and other saturated aliphatic hydrocarbons as well as Freon 12, Freon 114 and other Freons as propellants in various combinations to form sprays in the form of fine mist. None of these taught or suggested the combination of the Spitzer patent. However, the examiner stated that “the use of known propellant gases as propellants for aqueous soap solutions to form brushless shaving cream lacks invention over the art showing the use of these same propellants to expel liquid soaps, dry cleaning soap emulsions and a host of other materials”. The examiner also stated: “Getz discloses Freon and hydrocarbon propellant condensible gases in combination with whipping cream under pressure. * * * Boe is cited to show possible combination of propellants, a list of which propellants is found in col. 3. The list includes the propellants employed in applicants’ preferred combination.” In response to this action, the applicants cancelled the method claims included in the application as originally filed and made certain formal amendments to the product claims. The applicants made an extended argument on behalf of patentability, and submitted affidavits showing the commercial success of the product “Rise” and the unsuitability of products prepared with various propellants shown in the cited prior art patents. The patentees did not, however, submit any data with respect to the use of Rotheim’s “isobutan [e] and other hydrocarbons” with liquid soap, other than a citation of solutions of soap in alcohol from Henley and an affidavit of applicant Reich on the effect of alcohol soaps on lather stability. Applicants said: “Claims 1-17, inclusive, are believed to define a composition that is patentable over the disclosure of Rotheim in view of Getz and Boe. * * * The claims recite a composition for use in producing a stable lather comprising essentially a liquid mixture of an aqueous soap solution and a volatile propellant in liquid phase taken from a recited group, the propellant being present in a stated range of proportions and having a recited low water solubility. No citation discloses a composition in which the essential ingredients of the claims are combined. No citation discloses the range of proportions of ingredients recited in the claims. And no citation discloses any composition capable of producing a stable lather.” Up to this point the examiner had not mentioned Rotheim’s isobutan [e] by name. He had, however, referred to the use of “these same propellants” (i. e., the same as applicants’) to expel “liquid soaps”. The only prior art patent cited up to this point which referred eo nomine to “liquid soaps” was Rotheim. Boe referred to a soap solution as an ingredient of his wax emulsion, and also referred to a dry cleaning soap emulsion which was to be sprayed with Freon 12. The only “same propellants” found in the Spitzer application and in Rotheim were “isobutan [e] and other hydrocarbons”. Claims 1, 2, 4, 5 and 12 of the Spitzer application were still drawn to combinations including propellants selected from the group consisting of (1) the saturated aliphatic hydrocarbons, (2) the partially fluorinated hydrocarbons, and (3) the chlorfluorinated hydrocarbons. All of them then contained limitations as to molar proportions and vapor pressures. After filing their second amendment, applicants’ attorneys had an interview with the examiner and reached an understanding that a further amendment would be filed. This amendment, filed on January 9, 1952, entitled “Supplemental Amendment”, deleted the phrase “the saturated aliphatic hydrocarbons” from all claims in which it occurred. There is nothing in the report of the conference between the attorneys and the examiner contained in the file wrapper to indicate why the deletion was made. Reference to the interview was made in the attorneys’ remarks accompanying the amendment, as follows: “ * * * It was further pointed out at the interview that the claimed invention is not merely the use of a new or better propellant for a material previously propelled by some other propellant. Instead, the claimed invention is a new combination of a particular class of propellants in mixture with aqueous soap solution which produces an entirely new result, namely a composition capable of producing a stable lather. No citation discloses the claimed combination of an aqueous soap solution and a propellant of the class claimed, nor any combination of a soap solution and any propellant capable of producing a stable lather.” The effect of this amendment was that thereafter no claim of the patent application recited the saturated aliphatic hydrocarbons within its literal scope. At no time afterwards did the patent applicants attempt to insert language which would have recited the saturated aliphatic hydrocarbons or any particular saturated aliphatic hydrocarbon(s) within the literal scope of the claims. Another effect of the amendment was that the claims of the application no longer covered any of the propellants disclosed in the Rotheim patent, which had been cited by the examiner as a reference in rejecting the claims of the patent as previously drafted. The applicants stated in the remarks accompanying the amendment that “no citation discloses the claimed combination of an aqueous soap solution and a propellant of the class claimed.” Since Boe disclosed not only the hydrocarbons but also the Freons and other compounds as propellants, the last quoted statement evidently used the word propellant in a different sense from the word compound, intending to include in the word propellant the molar proportions and other limitations which had been inserted in the claims. Those same limitations, of course, would have applied to the saturated aliphatic hydrocarbons if those compounds had not been eliminated from the claims. The examiner, therefore, must have felt that it was necessary to eliminate the saturated aliphatic hydrocarbons, even as so limited. I find, therefore, that the deletion of the “saturated aliphatic hydrocarbons” from the claims of the patent application was an important step in overcoming the examiner’s rejection of the former claims upon the prior art. Following this supplemental amendment applicants’ attorneys had several additional conferences with the examiner. The examiner suggested that the propellant be confined to chlorinated and fluorinated methanes and ethanes. On July 3, 1952, a second Supplemental Amendment was filed in which all of the previously pending claims, 1 through 17 inclusive, were cancelled, thereby canceling the other two classes originally presented in claims 1, 2, 4 and 5, and 12, i. e. “the saturated aliphatic partially fluorine substituted hydrocarbons and the saturated aliphatic partially and wholly chlorine and fluorine substituted hydrocarbons.” All of the claims which formerly referred to the propellants as halogenated hydrocarbons were amended to recite that the propellants were halogenated ethanes or methanes. The exact language suggested by the examiner was used. The attorneys wrote: “In accordance with the Examiner’s suggestion, the definition of ‘propellants’ in such claims as do not recite specific propellant compositions has been changed to ‘the saturated aliphatic partially and wholly fluorine and chlorfluorine substituted ethanes and methanes’. This appears to be more a concise phrase of the same scope as that previously employed.” In discussing the effect of the amendment the applicants stated that “the combination of ingredients essential to the production of a stable lather is now recited in all of the claims in a manner that clearly distinguishes the applicants’ invention from the citations # * » In a third Patent Office action on July 10, 1952, all claims were again rejected “as unduly broad and indefinite”, and some were rejected as “incomplete” with respect to the soaps and soap solutions. The applicants made a further amendment to meet this objection. Following still another interview with the examiner, an additional amendment was made to correct typographical errors and certain improper forms of expression, and notice of allowance issued on January 23, 1953. On July 16, 1953, a post-allowance amendment under Patent Office Rule 312 was filed in accordance with an understanding reached at a further interview with the examiner. Apart from formal matters, the effect of that amendment was to recast the class designation of propellants and to add new claims. The claims added included claim 60 (present claim 16) and four dependent claims, claims 61 through 64 (present claims 17 through 20). With respect to claim 60 (present claim 16), the patentees stated: “Claim 60 is a combination claim similar in context to claim 1, but wherein each element of the composition is a preferred range or value, disclosed as such, instead of the broader ranges of the allowed claims.” The patentees represented that the scope of the claims was not enlarged and that no new search as to patentability was required. They asserted: “The allowed claims have been amended to define the propellant more clearly in the form of a generic group rather than the Markush group now employed.” The examiner was assured that the amendment was not an attempt to recapture propellant coverage previously given up. Claims 16 and 19 of the patent as issued are narrower than the cancelled claims. Claim 16 gives the preferred limitations for the combination of soap solution and propellant of the Spitzer invention. Even if claim 16 is read to include combinations employing the propane, butane, isobutane and cyclobutane equivalents of the five Freons literally named therein, the scope of claim 16 is still less in scope than the scope of the cancelled claims. If claim 19 is read to include combinations employing the propane-isobutane propellant mixture in place of the Freon 12-Freon 114 propellant mixture literally named therein, the scope of claim 19 remains less in scope than the scope of the cancelled claims. In summary, I find as a fact that the elimination of isobutane and the other saturated aliphatic hydrocarbons was a controlling factor in overcoming the examiner’s rejection of the original claims and in procuring the issuance of the patent. File wrapper estoppel bars recourse to the doctrine of equivalents in cases where the patentee attempts to secure through equivalents what has been rejected by the Patent Office. It prevents application of the doctrine of equivalents to recapture coverage which the patentee has surrendered by amendment whether or not the prior art required the amendment. In the leading case of Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-137, 62 S.Ct. 513, 518, 86 L.Ed. 736. Chief Justice Stone said: “Assuming that the patentee would have been entitled to equivalents embracing the accused devices had he originally claimed a ‘conductor means embedded in the table’, a very different issue is presented when the applicant, in order to meet objections in the Patent Office, based on references to the prior art, adopted the phrase as a substitute for the broader one ‘carried by the table’. Had Claim 7 been allowed in its original form it would have read upon all the accused devices, since in all the conductor means complementary to the coil spring are ‘carried by the table’. By striking that phrase from the claim and substituting for it ‘embedded in the table’ the applicant restricted his claim to those combinations in which the conductor means, though carried on the table, is also embedded in it. By the amendment he recognized and emphasized the difference between the two phrases and proclaimed his abandonment of all that is embraced in that difference. Hubbell v. United States, 179 U.S. 77, 83, 21 S.Ct. 24, 26, 45 L.Ed. 95; Weber Electric Co. v. E. H. Freeman Electric Co., 256 U.S. 668, 677-678, 41 S.Ct. 600, 603, 65 L.Ed. 1162; I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 440, 444, 47 S.Ct. 136, 140, 141, 71 L.Ed. 335; Smith v. Magic City Kennel Club, 282 U.S. 784, 789, 51 S.Ct. 291, 293, 75 L.Ed. 707; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 61 S.Ct. 235, 85 L.Ed. 132; cf. in case of disclaimer Altoona Public Theatres v. American Tri-Ergon Corp., 294 U.S. 477, 492, 493, 55 S.Ct. 455, 461, 462, 79 L.Ed. 1005. The difference which he thus disclaimed must be regarded as material, and since the amendment operates as a disclaimer of that difference it must be strictly construed against him. Smith v. Magic City Kennel Club, supra, 282 U.S. page 790, 51 S.Ct. page 293; Shepard v. Carrigan, 116 U.S. 593, 598, 6 S.Ct. 493, 495, 29 L.Ed. 723; Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 228, 26 L.Ed. 149. As the question is one of construction of the claim it is immaterial whether the examiner was right or wrong in rejecting the claim as filed. Hubbell v. United States, supra, 179 U.S. page 83, 21 S.Ct. page 26; I. T. S. Rubber Co. v. Essex Rubber Co. supra, 272 U.S. page 443, 47 S.Ct. page 141. It follows that what the patentee, by a strict construction of the claim, has disclaimed — conductors which are carried by the table but not embedded in it — cannot now be regained by recourse to the doctrine of equivalents, which at most operates, by liberal construction, to secure to the inventor the full benefits, not disclaimed, of the claims allowed.” Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136-137, 62 S.Ct. 513, 86 L.Ed. 736. Plaintiffs rely upon what they conceive to be a statement of a narrow rule of estoppel in Baker-Cammack Hosiery Mills v. Davis Co., 4 Cir., 181 F.2d 550, at page 563: “When claims are rejected and withdrawn while an invention is pending in the Patent Office the patentee is estopped to contend that the allowed claims should be given the same breadth and interpretation as the abandoned claims. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 218, 61 S.Ct. 235, 85 L.Ed. 132; Exhibit Supply Co. v. Ace Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736.” Plaintiffs say that they are not asking for the same breadth and interpretation as the abandoned claims, but only for some of the compounds which are included in the class of saturated aliphatic hydrocarbons which was abandoned. The quoted sentence, however, must be read in the context of the whole paragraph and of the cases cited, both of which indicate clearly that the Fourth Circuit did not intend to narrow in any way the rule announced in the Schriber and the Exhibit Supply cases. When an amendment is made to meet an examiner’s objection, the applicant proclaims his abandonment of all that is embraced in the difference between the original and the abandoned claim. Plaintiffs cite cases applying the doctrine of equivalents to recover coverage to which the examiner had made no objection; but those cases are clearly distinguishable. In the case at bar, the deletion of the saturated aliphatic hydrocarbons directly met one of the examiner’s objections. Plaintiffs argue that file wrapper estoppel should not be applied in a sitúation where a patentee, having claimed his invention too broadly, either amends his broad claim or substitutes a narrower claim because he had mistakenly claimed more than his invention or inadequately claimed the same. While mistake may not ordinarily be relied on to relieve against the effect of cancellation, “a court of equity * * * should not extend the rule of estoppel beyond what is strictly required, where it is apparent that the claim cancelled is not identical with the one allowed and that to strike down the latter would be to deprive the patentee of the whole benefit of a meritorious invention.” Florence-Mayo Nuway Co. v. Hardy, 4 Cir., 168 F.2d 778, 784. Undoubtedly there are cases where it would be inequitable to bar the patentees recourse to the doctrine of equivalents. But this is not such a case. I do not find as a fact that the patentees in our case mistakenly claimed more than their invention or inadequately claimed the same. They deliberately drafted their original claims to cover the saturated aliphatic hydrocarbons as well as the Freons. The amendment eliminating the hydrocarbons was made after the limitations with respect to molar proportions, etc. had been applied to them as well as to the Freons. To apply plaintiffs’ argument in this case would be contrary to the teaching of Exhibit Supply Co. v. Ace Patents Corp., supra, and the cases cited therein. In Aeration Processes, Inc., v. Lange, 196 F.2d 981, certiorari denied 344 U.S. 834, 73 S.Ct. 43, 97 L.Ed. 649, the Eighth Circuit had before it the Getz patent for pressurized edible cream, referred to above. A divided court sustained the validity of the patent, but refused to find infringement because of the history of the application in the Patent Office. The accused product contained 15% carbon dioxide, which, being acid-forming, took the mixture outside the claims of the patent, even though the remaining 85% of the propellant was nitrous oxide, and carbon dioxide had been mentioned in the specification as usable, with a caveat as to its tastes. In his first application Getz had claimed a mixture of nitrous oxide and carbon dioxide, but that claim was later abandoned. The court stated: “He identified the mixture of the gases as one that he knew of and had considered for his purpose, but he stood on his abandonment of it through all the years of Patent Office proceedings. He shows no right to any monopoly in respect to the mixture to which he unequivocally and knowingly abandoned all claim.” 196 F.2d at page 985. So, in the case at bar, the patentees unequivocally and knowingly abandoned all claims which included the aliphatic hydrocarbons among the propellants. If patentees had intended to retain certain aliphatic hydrocarbons, such as propane and isobutane, limited to the specified molar proportions, they could have presented new or amended claims. They did not do so. Plaintiffs next argue that file wrapper estoppel should not operate as a bar in this case unless it is shown that the prior art precludes the expansion of their claims. However, in applying the doctrine of file wrapper estoppel it is immaterial whether the examiner’s rejection of the amended claim was right or wrong. Exhibit Supply Co. v. Ace Patents Corp., supra. The patentee is estopped not because of the prior art but because of his acquiescence in the examiner’s position as to what the prior art permitted. “If dissatisfied with the rejection he should pursue his remedy by appeal; and where, in order to get his patent, he accepts one with a narrower claim, he is bound by it.” I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443, 47 S.Ct. 136, 141, 71 L.Ed. 335. In the instant case, therefore, the important question is not what the prior art in fact forbade, but the examiner’s position as to what it forbade. In the first rejection it was stated that “Rotheim shows that combinations of liquid soaps and low pressure propellants to be old”. In spite of applicants’ argu- merits that Rotheim was concerned with atomizing, and that “liquid soaps” did not include soap solutions, the examiner repeated the rejection. He asserted: “The use of known propellant gases as propellants for aqueous soap solutions to form brushless shaving cream lacks invention over the art showing the use of these same propellants to expel liquid soaps.” The amendment of the Spitzer claims to remove the Rotheim propellants- — -“isobutan[e] and other hydrocarbons — ” met this objection, and now bars plaintiffs from regaining those propellants regardless of whether the examiner was right or wrong in insisting on his position. Exhibit Supply Co. v. Ace Patents Corp., supra. Instead of appealing or presenting narrower claims listing only propane, butane, isobutane and cyclobutane, in the same molar proportions and with the other limitations which were already in all of the claims, applicants further narrowed the class of claimed propellants and stated to the examiner that “all of the claims which formerly referred to the propellants as hydrocarbons have been amended to recite that the propellants are ethanes or methanes.” Such amendments, following the rejection of general claims, are conclusive, especially where their narrowing effect is emphasized by the applicants themselves. Union Carbide & Carbon Corp. v. Graver Tank & Mfg. Co., 7 Cir., 196 F.2d 103, 109. Finally, plaintiffs argue that file wrapper estoppel does not apply where the claim asserted is narrower than the cancelled claims. They cite dicta by Judge Learned Hand: “While the rejection of a claim does of course forbid any interpretation of those secured which leaves them identical with that rejected, it does not necessarily prevent their being read as equivalent to any species of the rejected claim, which the doctrine of equivalents justifies. It only forbids the patentee from reducing his claim to the rejected claim, simpliciter.” Deitel v. Unique Specialty Corp., 2 Cir., 54 F.2d 359, 360; and “ * * * Of course, the fact that verbal-ly the infringing process is not within the claim is no objection to the application of the doctrine of equivalents; indeed it creates the very occasion that should invoke it. * * * surrender [i. e. cancellation of a generic claim] does not of course result in a dedication of all species of the genus surrendered; but it does surrender any monopoly upon the genus as such: i. e. unless it be restricted to some species of that genus.” Musher Foundation v. Alba Trading Corp., 2 Cir., 150 F.2d 885, 887-888, certiorari denied, 326 U.S. 770, 66 S.Ct. 175, 90 L.Ed. 465. Judge Hand’s dicta are always persuasive, and these might be controlling in a proper case, although they are not supported by any Supreme Court authority and if applied to the facts of this case would be in conflict with I. T. S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443, 47 S.Ct. 136, 71 L.Ed. 335; Smith v. Magic City Kennel Club, Inc., 282 U.S. 784, 790, 51 S.Ct. 291, 75 L.Ed. 707; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220, 61 S.Ct. 235, 85 L.Ed. 132; 312 U.S. 654, 61 S.Ct. 235, 85 L.Ed. 132; Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S.Ct. 513, 86 L.Ed. 736, and Lewis v. Avco Mfg. Corp., 7 Cir., 228 F.2d 919, 923-928. The controlling point is that a patentee may not recover by invoking the doctrine of equivalents anyt