Town v. Willis (85 F. Supp. 483, 1949)

DUNCAN, District Judge.

This is a suit for the infringement of Patent No. 2,392,513 issued on January 8, 1946 to Edward W. Town for an invention in cushions for “artificial” dentures. The application was filed April 8, 1942. The plaintiff Town- is the patentee, and the plaintiff Ezo Products Company is a co-partnership composed of plaintiff, Julius Hollander and Harry Hollander. They are the exclusive licensees under said patent. A stipulation was entered into in which it was stipulated that: “Plaintiff manufactures' and sells a device for insertion between the gums and a denture, made by impregnating a piece of sheet material with paraffin and cutting the sheet material to the form oí the denture. Such paraffin is a non-soluble wax which is plastic but does not melt at body temperatures.”

It was further stipuated that: “There is a distinct need for devices to. be placed between the gum and the denture of the wearer thereof and Plaintiff’s such devices are highly useful, 'have been commercially successful, have met with the approval of the public and serve to satisfy such need. Since June, 1944, Plaintiff has sold more than five million (5,000,000) of such devices.”

It was further stipulated that at the time of the filing- of this suit on December 22, 1947 the .defendant George H. Willis was making and selling dental cushions as represented by piaintiff’s Exhibit “C.”

The patented device is horseshoe-shaped, cut so as to fit into the mouth, between the plate and the gum. It is made of a light cotton flannel with nap on each side, impregnated with paraffin,-a nonsoluble plastic that does not melt at body temperatures. The cloth out of which the device is made is colored pink to conform to' the natural color of the gums 'and to the color of. dentures, dippeid in paraffin, and thereafter stamped out- on a die to the shape in. which they are sold to the consumer. - The -accused device is practically identical, except that it contains a heavier coating of paraffin. i

Plaintiffs began manufacturing their device in the early part of 1943. Plaintiffs allege that during a period beginning shortly after they went into production and continuing • to the time of the filing of this suit, the defendant has been making an almost exact copy of the device, which is an infringement of the patent sued on.

The defendant in his answer alleges that the said patent in invalid and void because:

“* * * said Town was not the original and first inventor of the alleged improvements described and claimed therein, but that the same in all material and substantial parts were invented, known to, and used by Others in this country before the alleged invention or discovery thereof, were patented and described in printed publications in this and foreign countries before his alleged invention or discovery thereof, for more than one year prior to his applit cation for patent, and were in public use and on sale in this country for more than one year prior to his said application.” In ■ his answer -the defendant has listed fourteen patents as representing the prior art.

Defendant further alleges:

“a. That the matter covered by said Letters Patent was not a statutory subject of a patent.

“b. Because no invention was required to devise and perfect the alleged invention described and claimed in said patent in view of the state of the art existing prior to the alleged invention.

“c. Because the claims of the patent are indefinite, ambiguous and uncertain, and do not particularly point out and distinctly claim the part, improvement or combination which the patentee claimed as -his invention or discovery; and that the claims of the patent are not distinct.

“d. Because the description of the alleged invention in the specification of the patent sued on, contains less than the whole truth relative to the invention or discovery alleged therein, or more than is necessary to produce the desired effect; and because the specification and claims are not in such full, clear, concise and exact terms as are required, by the statute.”

Defendant further alleges that by reason of the proceedings in the United States Patent Office during the prosecution of the application for said patent, that plaintiffs are estopped to claim for said patent a construction such as would cause said patent to cover or include the acts of the defendant of which the plaintiffs complain.

Defendant also alleges that the product manufactured and sold by the defendant and the process of manufacturing that product by the defendant are so substantially different from the claims of the Town patent, that the defendant is not guilty of infringement.

Defendant further alleges that plaintiffs have never manufactured and sold any cushions for dentures embodying the structures of the Town patent in suit.

Plaintiff Town, a resident of Philadelphia, Pennsylvania, has been a dental technician since 1928, and for the past twenty or more years has been interested in the problems relating to the manufacture of dental pads.

It is undisputed that the problem arising from the wearing of dentures is one that has never been quite fully solved, either by the dental profession, or by independent patents designed to alleviate pain and other problems incident to dentures. The gums change in contour, shape and size following the extraction of teeth, thus causing those interested in the problem some difficulty in arriving at a solution. Numerous patents have been granted on various types of devices intended to solve the problem.

Most of the patents pleaded by defendant have dealt with various phases of the subject. Apparently none of these patents have met with much success; the device designed by plaintiffs and placed on the market being the first one to be accepted by the public, as shown by the sales. It is not conceded — nor do I think the evidence shows— that the problem has been fully and completely solved by means of this device; but, apparently it satisfies a long felt demand and provides relief that has been long in coming. Plaintiffs’ device may not be the last step, but unquestionably it represents a substantial advance in the use of artificial methods to solve the problem which exists with respect to dentures.

According to his testimony, plaintiff Town’s experiments were prompted 'by his own problems arising from the wearing of dentures, both upper and lower. He ex-permimented with numerous types of devices, including paper, cotton and cloth— none of which were successful. During all of the period of his investigation and experimentation, as a dental technician, he was familiar with the types of materials used in making dentures, i. e., the waxes and other materials used in the taking of impressions and in the construction of dentures, including paraffin.

Plaintiff Town is the patentee of another patent, No. 2,092,097 issued September 7, 1937 (application made October 11, 1935), in which he described a pad “cut and formed to the shape of the gum, said sheet being made of padded, felted, or molded cotton fibers or the like, which are held together by mechanical compression and not by means of any adhesive or sizing, * * This device admittedly was unsuccessful.

Town experimented further with various materials until, as he testifies, he conceived the idea of impregnating a material having a nap on both sides to form a cushion, with a. wax which was plastic, but which would not melt at body heat. He conceived the idea of using paraffin for this purpose, and upon treating the material with the paraffin and shaping it to fit the gum, he found it impervious to moisture and also that it had sufficient, pliability to adjust itself to conform to the shape of the gum and the surface of the denture; and, that the nap formed a cushion which eased the pressure.

I think there are two questions for determination by the court; (1) whether or not the device described in plaintiffs’ patent is a patentable, device; and if it is patentable, (2) whether or not the device being manufactured and sold by plaintiffs is covered by the patent.

First, patentability. Certainly the use of materials of various kinds, cut to the -shape of the gum and the denture was not new. It was described in several prior art patents, including that of the patentee himself in his patent No. 2,092, 097. If we were dealing here solely with the question of the shape of the device, or with the use of fabrics, I should unhesitatingly say that plaintiffs’ patent was anticipated by the pri- or art, and that it was not patentable. But, as stated in a syllabus of an opinion by the late .Judge Sanborn in National Hollow Brake-Beam Co. et al. v. Interchangeable Brake-Beam Co., 8 Cir., 106 F. 693, 694:

“A new combination of old elements, by which a new and useful result is produced, or an old result is obtained in a more facile, economical, and efficient way, may be protected by patent as securely as a new machine or composition of matter.”

We find in the prior art, the use of fabrics of various types cut to the shape of the dentures, but they had not been successful. The use of the fabrics on the one hand, and' the shaping of the’material to conform to the denture and to the mouth on the other, had not been combined with the -use,.of a nonsoluble plastic wax that would not melt at body heat, to constitute a completed device, prior to this patent. Many of the prior patents provided for the impregnation of the cloth with various types of adhesive materials, but apparently none of them taught the impregnation with wax, of a cloth having a nap, so as to enable it to conform to the shape of the denture and to retain its shape and yet not deteriorate. In all of the other patents, the effectiveness of the material used in the impregnation was rapidly lost after it came into contact with the heat of the body and the saliva in the mouth, since they were soluble. To state it more concisely, none of the pther devices were effective in the performance of the function they were intended to perform.

Town’s application was rejected by the examiner on May 21, 1942 as lacking in invention over Rowe, Patent No. 1,917,902 July 11, 1933: Town (one of the present plaintiffs) Patent No. 2,092,097 September 7, 1937; and, Seguier-Brown (British) No. 460,887, January 28, 1937 and on the ground that there seemqd to be no patentable differences disclosed by the application.

The. application remained before the examiner until September 22, 1943 during which time it went through the usual and customary changes of claims and examinations by the examiner. On that date it was finally rejected. Thereafter, on March 17, 1944 an appeal was taken to the Board of Appeals and on January 6, 1945 the Board of Appeals reversed the examiner with respect to claim 6, and affirmed as to claim 5, with a modification. Pursuant to the action of the Board, the patent was granted.

In the opinion of the Board of Appeals, in dealing with the prior art patents before the Board, it was pointed out that in such patents the impregnating material was “gum arabic” or “gum. tragacanth.” The Board further held that “the appealed claims are not met by the art cited.”

In his statement to the Board of Appeals, the examiner who denied the application stated:

“Rebasing materials for artificial dentures are old and specifically a rebasing material composed of a fabric impregnated with a gum. The axrt does not teach the use