United States District Court, Eastern District of Illinois
July 12, 1955
THE UNIVERSITY OF ILLINOIS FOUNDATION, PLAINTIFF,
BLOCK DRUG CO., AMM-I-DENT, INC., F.W. WOOLWORTH CO., AND CHESTER J. HENSCHEL, DEFENDANTS.
The opinion of the court was delivered by: Platt, District Judge.
The plaintiff, The University of Illinois Foundation, has filed
a suit against F.W. Woolworth Co., Amm-i-dent, Inc., and Chester
J. Henschel, alleging that the defendants have infringed upon
their two patents for "ammoniated" dentifrices. Personal service
was obtained only upon F.W. Woolworth Co. The suit was dismissed
as to the defendant Henschel. A Stipulation was entered into
between the parties whereby this court obtained jurisdiction of
Amm-i-dent, Inc. and Block Drug Company.*fn1
Woolworth has sold Amm-i-dent dentifrices, both in powder and
paste form, within this district since the issuance of the
plaintiff's patents. The formula for Amm-i-dent Tooth Paste is as
Diammonium phosphate*fn2 3.00%
Liquid excipient 40.16%
pH adjusted to 7.0
Amm-i-dent Tooth Powder consists of:
Diammonium phosphate 5.00%
Detergent .5 %
Flavor 2.2 %
Bentonite 5.0 %
These dentifrices were manufactured by Amm-i-dent, Inc. and
distributed by Block Drug Co. as their licensee.
The plaintiff, by virtue of an assignment, is the owner of the
Kesel Patent,*fn3 No. 2622058, hereinafter referred to as Kesel,
and the Wach Patent, No. 2542886, hereinafter referred to as
Wach. Amm-i-dent, Inc. is the licensee of Patent No. 254218,
issued to Chester J. Henschel, (formerly defendant in this suit)
hereinafter referred to as Henschel.
Kesel claim 1 reads as follows:
"1. A dentifrice comprising a non-toxic carrier
adapted for oral administration and dibasic ammonium
phosphate in proportion to provide under conditions
of use in the mouth a concentration in the saliva
sufficient to inhibit lactobacilli and being not
substantially less than 2% of the composition, and a
flavor masking ingredient." Wach claim 6 provides:
"6. A dentifrice comprising a major portion of a
non-toxic, non-sugary carrier adapted for oral
administration, containing from 1 to 10 parts by
weight of urea and from 1 to 7 parts by weight of a
dibasic ammonium phosphate, there being at least 1%
by weight of urea and at least 1% by weight of the
phosphate present in said dentifrice." Henschel
"1. A powdered dentifrice including the following
ingredients in substantially the following
proportions by weight:
Urea ........................ 15 to 50
phosphate ................. 7 to 4
Abrasive .................... 71 to 34
"3. A dentifrice having as active ingredients, urea
and diammonium hydrogen phosphate, the urea being by
weight between 15 and 50 per cent by weight of the
dentifrice and the diammonium hydrogen phosphate
being 4 and 7 per cent by weight of the dentifrice."
These dentifrices are intended to reduce dental decay.
The cause of dental caries (dental decay) has been studied for
a good many years. It has generally been an accepted theory that
a bacterium, called lactobacillus acidophilus, is found in the
saliva and is associated with decayed teeth. Dr. Robert Kesel
began a study of the individuals whose teeth were decay resistent
and those who were not. He graduated from the College of
Dentistry of the University of Illinois in 1926, with a degree of
D.D.S. and from the University of Illinois Medical School in
receiving an M.S. in Bacteriology. Since 1936 he has been head of
the Department of Applied Materia Medica and Therapeutics of the
College of Dentistry of the University of Illinois. From this
study it was determined that there was an amount of ammonia in
the saliva of caries inactive individuals which had the ability
to inhibit lactobacilli, and that the amount was greater than
normally produced by the breaking down of urea in the saliva.
This indicated there was some source of ammonia in the mouth in
addition to the salivary urea. Dr. Kesel's method was unusual. As
early as 1941 or 1942 he and two of his students, Berry and
Orland, all three being caries inactive, placed the incubated
saliva of caries active individuals in their mouths. They found
that the microorganism in the saliva they placed in their mouths
disappeared. Even when sugar was added these organisms
disappeared in 24 hours. This indicated there was something in
their saliva which overcame this bacteria. They found this to be
aerogenes bacteria which were capable of producing ammonia. A
great deal of experimental work in vitro (in test tubes) with
saliva was performed. The problem was then presented as to how to
raise the ammonium content of the saliva of caries active
individuals. Dr. Kesel had working with him Drs. Wach, Kirch, and
O'Donnell, all of whom were connected with the College of
Dentistry of the University of Illinois. They found that alkaline
salts of ammonium when added to the saliva stimulated the
aerogenes bacteria inhibiting lactobacillus, but that acid salts
did not. They selected dibasic ammonium phosphate (hereinafter
referred to as dibasic) as the preferred ammonium salt. From time
to time in 1944 and 1945 patients with decayed teeth were
referred to the group at the University of Illinois Dental
School. It was found, with few exceptions, that patients who were
administered dibasic had a lower lactobacillus count after three
or four months use.
Sometime before the fall of 1945, Dr. Wach suggested the
addition of urea to dibasic. In the fall of 1945 or early winter
of 1946 tests were made using the combination of urea and
dibasic. Their experimental work disclosed the supporting action
between dibasic and urea. In the early part of 1948 in Peoria,
Illinois began study on school children which lasted for about
two years. The tests were made with a combination of dibasic and
Dr. Kesel appears to have been the spokesman of the group. He
reported the findings to the Chicago Dental Society on February
13, 1946, including the test with dibasic dentifrice on some 55
individuals. This report was awarded the annual prize of the
Chicago Dental Society for research investigation. He next read a
paper October 9, 1946 at Palm Springs, California on the subject
of "Ammonium Production of Oral Cavities and the Use of Ammonium
Salts with Control of Dental Caries." In this paper printed in
the Journal of Oral Surgery, Dr. Kesel explained the experiments
using urea and dibasic. He gave further lectures before Dental
Societies and wrote various articles on the experimental work
that had been done.
Dr. Chester J. Henschel, a practicing dentist in New York City,
delivered a paper in May, 1945 before the Westchester Dental
Society and printed in the New York Journal of Dentistry in
March, 1946 entitled "Caries Control by Chemical Prophylaxis" in
which he submitted a formula containing urea for use in a liquid
dentifrice. Dr. Henschel had been doing some work using a
dentifrice with a very high urea content but found it irritating.
The defendants maintain:
A. That the plaintiff's patents are invalid for the
1. Henschel patent is entitled to priority over the
2. Kesel is invalid on the law of the case.
3. Both of the plaintiff's patents were anticipated
by prior art.
4. The plaintiff's patents lack utility.
5. Kesel is invalid on the ground of double
patenting or illegal extension of monopoly.
6. Wach lacks evidence of synergism of any such
combination of urea and dibasic ammonium phosphate.
B. Defendants do not infringe.
There are certain applicable principles of law which must be
recognized. A patent once issued is presumed to be valid. As to
the defense of invalidity it is said,
"`[T]he burden of proof to make good the defense'
is `upon the party setting it up' and `every
reasonable doubt should be resolved against him'."
Radio Corporation of America v. Radio Engineering Laboratories,
Inc., 293 U.S. 1
, 7, 55 S.Ct. 928, 79 L.Ed. 163. The presumption
is strengthened where the prior art relied upon to invalidate the
patent was considered and rejected by the patent office, but this
is not conclusive. Lewyt Corporation v. Health-Mor, Inc., 7 Cir.,
181 F.2d 855
, 857. It is, therefore, plain that the burden of
establishing the invalidity of the plaintiff's patent is upon the
defendant. On the other hand the burden of proving infringement
by a preponderance of the evidence is upon the plaintiff. Harries
v. Air King Products Co., Inc., 2 Cir., 183 F.2d 158; Kalo
Inoculant Co. v. Funk Bros. Seed Co., 7 Cir., 161 F.2d 981
reversed on other grounds 333 U.S. 127
, 68 S.Ct. 440, 92 L.Ed.
588; 69 C.J.S., Patents, § 326, p. 1001.
The first question with which this court is confronted, is
priority of patent rights. This must be determined as a matter of
fact. Sarnes v. Morley, D.C., 56 F. Supp. 735; Kislyn Corporation
v. Eastman Kodak Co., D.C., 43 F. Supp. 552. It requires
consideration of (1) the dates of the patents, (2) the dates of
the applications, (3) the dates of actual reduction to practice,
and (4) the dates of conception. Automatic Weighing Mach. Co. v.
Pneumatic Scale Corp., 1 Cir., 166 F. 288; Corley v. Robinson,
D.C., 3 F. Supp. 176; 69 C.J.S., Patents, § 87, page 383. The
dates of the patents are: Henschel February 20, 1951; Wach
February 20, 1951; and Kesel December 16, 1952. The dates of
application, as shown on the patents are: Henschel February 27,
1947, Wach October 1, 1948, and Kesel July 7, 1952. However, Wach
and Kesel both stem from the original application of Kesel,
Joseph F. O'Donnell, Ernest R. Kirch, and Wach filed January 9,
1947. It was agreed between this group as shown by the file
wrapper, that Wach was the sole inventor of a dentifrice using
the combination of dibasic and urea, and that Kesel was the sole
inventor of the dibasic dentifrice. After several amendments and
narrowing of claims both Wach and Kesel issued on the original
application of Kesel, et al. In this original application are two
broad claims which fully cover the claims finally allowed in the
patents: (a) "A dentifrice comprising as an essential ingredient
dibasic ammonium phosphate." (b) "A dentifrice comprising urea,
and a non-toxic, non acid salt of ammonia."*fn4 In a situation
where the later applications refer back and are a continuation of
the first application, the patent dates back to the time the
original application was filed.*fn5
The defendants lean upon the law applied in the patent office
they claim does not permit Kesel to rely on the filing date of
the original application of January, 1947. The Board of Appeals
did reject the Kesel claim in May and June of 1952. July 7, 1952
the final application was filed. The Examiner in his
discretion*fn6 granted the patent and did not stand on the
theory of the cases*fn7 cited by the defendants that the claims
that were originally made were res adjudicata. Kesel did file a
suit in equity under R.S. § 4915, 35 U.S.C.A. §§ 145, 146, but
this was dismissed without hearing. Kesel was entitled to the
filing date of his original application. Overland Motor Co. v.
Packard Motor Co., 274 U.S. 417, 47 S.Ct. 672, 71 L.Ed. 1131;
Keyes Fibre Co. v. Chaplin Corp., D.C., 97 F. Supp. 605, 609. Also
see American Anode, Inc., v. Lee-Tex Rubber Products Corporation,
7 Cir., 136 F.2d 581.
Both Kesel and Wach are entitled to priority over Henschel.
Kesel was adopted to practice prior to the filing of the
application. Wach's formula for dibasic and urea was used by Dr.
McElroy, a practicing dentist in Chicago, in January, 1946. The
dentifrice was supplied to him and prepared by Dr. Wach. This was
prior to Dr. Henschel's application and his use of the
In addition there is evidence that Dr. Wach conceived the
combination prior to January 16, 1946. Dr. Henschel attended the
meeting in Chicago, Illinois, where Dr. Kesel delivered his paper
before the Chicago Dental Society on February 13, 1946. Dr.
Kirch, who was on the platform with Dr. Kesel, was approached
after the meeting by Dr. Henschel who inquired whether work had
been done using urea and dibasic. Dr. Kirch informed him that it
had. After this date Dr. Henschel prepared a dentifrice of
dibasic and urea and prescribed it for patients. There is no
question but what Wach diligently reduced his conception to
practice. Under such facts even if Dr. Henschel had reduced his
dentifrices to practice prior to Dr. Wach, Dr. Wach was the first
inventor. Marconi Wireless Telegraph Co. of America v. United
States, 320 U.S. 1, 34, 63 S.Ct. 1393, 87 L.Ed. 1731; Scharmann
v. Kassel, 179 F.2d 991, 37 C.C.P.A., Patents, 903; 69 C.J.S.,
Patents, § 86(b) and cases cited therein.
This brings forward the next defense that the plaintiff's
patents were anticipated by prior art. The defendants have cited
13 patents and 41 publications.*fn9
Against Kesel the defendants rely principally upon the patents
of McCall (1929), Detrie (French 1936, No. 803,161), Cross
(1934), and Janota (1946). McCall and Detrie were cited by the
patent office in Kesel, Wach and Henschel. McCall uses less than
1% of ammonium carbonate in a dentifrice to reduce mouth
acidity. Detrie used 80 parts of ammonium sesqui carbonate in a
dentifrice to dissolve salivary tartar and mucin by restoring the
alkalinity of the saliva. The defendants claim the Examiner was
misled to believe that the ammonium sesqui carbonate in Detrie
had an acid reaction. Before the same Examiner in Henschel it is
plainly shown that the Examiner knew it had an alkaline
reaction.*fn10 McCall disclosed insufficient amounts of ammonium
carbonate to anticipate Kesel. Cross used less than 4.2 of sodium
phosphate in a dental preparation. Sodium phosphate may be
distinguished from the more stable phosphate, dibasic ammonium
phosphate. Sodium phosphate-Monobasic consists of
NaH2PO4,*fn11 whereas, the formula for dibasic ammonium
phosphate is (NH4) 2HOP4. There is also disodium phosphate and
trisodium phosphate. No suggestion is made in the patent as to
which of these is to be used. Janota speaks of using sodium
potassium and ammonium.*fn12 It also speaks of pyrophosphates.
There is nothing definite in these terms which would teach the
use of dibasic ammonium phosphate. It must be observed that Kesel
taught the inhibition of lactobacillus and the stimulation of the
aerogenes bacteria to get a natural production of ammonia to
maintain tooth integrity. All of these patents were referred to
by the same Examiner in either Kesel, Wach, or Henschel.
The publications relied upon principally as anticipating Kesel
are Lichtenstein, Grove and Grove, Kesel, and Stephan. Dr. Edith
Lichtenstein published a thesis in 1924 in which she found a
relationship between the ammonia content of the saliva and dental
caries. The defendants urge that this thesis suggests the
introduction of neutralizing salts in the saliva. This court
comes to no such conclusion. All Lichtenstein does is to confirm
the relationship between the ammonia content in the saliva and
immunity from dental caries.
Grove and Grove conducted experiments on immunity and
susceptibility to dental caries and published papers on the
subject between 1934 and 1942. As early as 1934 Groves' paper
emphasized that where the pH of saliva is above 7 there are
alkaline ammonium salts present capable of being an immunizing
force against caries.*fn13 Grove and Grove recommended .006% of
1% of ammonium. It was proven that such amount has no effect. The
defendants have also relied upon the Kesel paper of 1945 as an
anticipation of Kesel. "Deamination of Amino Acids by the Human
Oral Flora; Its Role in Dental Caries Immunity." Defendants'
Exhibit 4D-20. This was cited, as was Grove, before the same
patent examiner. It does not disclose a formula for a dentifrice.
Dr. Stephan et al. published an article in February, 1944 on
the effect of urea upon lactobacilli.*fn14 He experimented from
.01% to 50% of urea and reported on the pH of placques material
in 1943. The defendants claim this is anticipatory as urea breaks
down in the mouth to ammonia. The Examiner was familiar with
Stephan's work. Nowhere does Stephan suggest the use of urea to
stimulate the aerogenes bacteria, nor does he teach the use of
dibasic. Dr. John B. Lewis, Director of Research of Amm-i-dent,
Inc., recognized that the use of both Kesel and Wach dentifrices
promoted the growth of an organism
which had an inhibitory effect referred to as bacterium lactic
As against Wach the defendants press these patents as
anticipatory: Meiser (1934) 9,951,581; Jones (1948) 2,452,054,
(using a priority of 1944). Jones was cited. Meiser was referred
to by the same Examiner in Henschel.*fn16 It is for a
fertilizer. It certainly is not analogous art and could not be
anticipatory of a dentifrice. See Copeman Laboratories Co. v.
General Plastic Corp., 7 Cir., 149 F.2d 962; General Metals
Powder Co. v. S.K. Wellman Co., 6 Cir., 157 F.2d 505, certiorari
denied 329 U.S. 812, 67 S.Ct. 632, 91 L.Ed. 693; Nordberg Mfg.
Co. v. Woolery Machine Co., 7 Cir., 79 F.2d 685. See also 69
C.J.S., Patents, § 23, p. 202, and cases cited therein at note
83. For the same reason Jones may be equally discarded as it
pertains to a fire extinguisher.
The publications upon which main reliance is placed to
anticipate Wach is Stephan and Grove & Grove. The 1944
publication of Stephan was cited and discarded. The Examiner was
familiar with all of Stephan's publications as shown by the file
wrapper of Kesel, Wach, and Henschel. It has been discussed as to
its anticipatory effect upon Kesel. For the same reasons it is
not anticipatory of Wach. Dr. Henschel cited Grove & Grove in his
paper of 1945. It had not suggested to him the use of dibasic.
The defendants next insist that the plaintiff has failed to
show that either Kesel or Wach have utility.*fn17 Neither of
these patents claim to be a cure-all for tooth decay but both
show a progress in solving a health problem. Kesel experimented
with dibasic dentifrice on some 55 individuals who were referred
to him. With a few exceptions these patients were aided by the
use of dibasic dental compound. Defendants insist that dibasic
has no effect on lactobacillus and it is most doubtful that
lactobacillus has any relationship with dental caries. This is a
strange argument inasmuch as Henschel also teaches the inhibition
In 1948, the University of Illinois appropriated $50,000.00 to
study the effect of ammoniated dentifrices on the teeth of
children in Peoria and Aurora.*fn18 The dentifrice used in the
Peoria study contained 3% urea and 5% dibasic. The clinical
survey was conducted by the Department of Public Health, State of
Illinois. Statistics were tabulated by reputable statisticians
employed by this Department. The results showed a 16 to 17%
reduction in caries among children using the ammoniated
dentifrice. The defendants have attacked the validity of these
statistics and the method used, but this evidence is not
convincing. The defendants have offered ex parte experiments to
show the non utility of Wach. Such experiments have little
weight.*fn19 If partial success was obtained, and this
was certainly proven by plaintiff, it is sufficient evidence of
utility. Emery Industries, Inc., v. Schumann, 7 Cir., 111 F.2d 209.
The defendants argue that since Kesel issued after Wach there
is double patenting or the illegal extension of monopoly. Where,
as here, there are two separate inventors even if the two patents
were assigned to the plaintiff there is not double patenting.
Federal Telephone & Radio Corp. v. Associated Tel. & Tel. Co.,
D.C., 99 F. Supp. 535; Waterbury Buckle Co. v. G.E. Prentice Mfg.
Co., D.C., 294 F. 930.
The defendants stress that Wach consist of a combination of two
old elements, dibasic and urea, and that it is invalid because
there is no evidence that these elements have cooperating effect
in the mouth to merit invention. First, it is questionable
whether synergism must be proved to obtain a patent on such a
chemical compound. Our Supreme Court indicated this in Great
Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.,
340 U.S. 147, 152, 71 S.Ct. 127, 130, 95 L.Ed. 162.
"The conjunction or concert of known elements must
contribute something; only when the whole in some way
exceeds the sum of its parts is the accumulation of
old devices patentable. Elements may, of course,
especially in chemistry or electronics, take on some
new quality or function from being brought into
concert, but this is not a usual result of uniting
elements old in mechanics."
Also see Diversey Corporation v. Mertz, D.C., 13 F. Supp. 410.
But the evidence here discloses that there is synergistic
action.*fn20 Both Henschel and Wach*fn21 indicated that dibasic
acts immediately and urea latently.
Arnold J. Singer, D.D.S., employed by Block Drug as Director of
Research in their laboratories stated under oath:
"Much less activity exists with lower
concentrations of urea. A solution containing 5%
diammonium hydrogen phosphate and 3% urea has only
slightly more activity than diammonium hydrogen
phosphate alone and the pH of the tooth returns to
its normal level within 20 to 40 minutes whereas the
high urea concentration keeps the pH elevated for
more than 2 hours." (Henschel file wrapper at page
Dr. Singer here admits there is some synergism in Wach and more
so in Henschel or Amm-i-dent. Dr. Lewis also found synergistic
action in the use of 4% urea and 1% dibasic. (Page 41 of Henschel
file wrapper.) This was within the Wach claim.
This court concludes there is invention and utility in the
plaintiff's patents. If there were doubt, the plaintiff has shown
commercial success. Licenses were issued by the plaintiff to
Colgate, Pepsodent, the manufacturers of Ipana, Dr. Lyon's,
Kolynos, Walgreen's, Rexall, and McKesson and Robbins. Commercial
success is evidence of utility and invention. See on invention
— Smith v. Hall, 301 U.S. 216, 233, 57 S.Ct. 711, 81 L.Ed.1049.
On Utility — Flintkote Co. v. National Asbestos Mfg. Co., 3
Cir., 52 F.2d 719, 721.
The final proposition is then presented. Does Amm-i-dent
Wach and Kesel? The issue of infringement is a question of fact.
Faulkner v. Gibbs, 9 Cir., 170 F.2d 34, 37, affirmed
338 U.S. 267, 70 S.Ct. 25, 94 L.Ed. 62. The Wach claim covers the
defendants' dentifrice like a blanket. The defendants argue that
Wach calling for 1 to 10 parts by weight of urea and from 1 to 7
parts by weight of ammonia should be read as limiting the claim
to a formula of not more than 10% of urea. The use of the words
"at least 1% by weight of urea and at least 1% by weight of the
phosphate present in the dentifrice" would have to be ignored to
accomplish the defendants' aim. It is clear that Wach claims 1 to
10 parts by weight of urea in proportion to 1 to 7 parts by
weight of dibasic. The defendants use 4 1/3 to 4 1/2 parts by
weight of urea to dibasic which is plainly within the claim of
The defendants further contend that the specifications must be
read into the Wach claim to refute the use of over 10% urea. A
patentee is limited by the express terms of his claims. Resort to
the specifications to narrow or enlarge a claim may not be done
unless the claim is ambiguous. Graver Tank & Mfg. Co., Inc., v.
Linde Air Products Co., 339 U.S. 605, 70 S.Ct. 854, 94 L.Ed.
1097. The Wach claim is not ambiguous.
In any event Wach does not disclaim in his specifications the
use of large percentages of urea. Wach, Col. 6, suggests a
preferred formula for a mouth rinse and a tooth powder. In both
of these he was speaking of 5 parts to 3 parts by weight. In the
same column Wach states:
"The amount of urea, however, should not exceed
substantially the amount of the ammonium compound,
and the amount of the ammonium compound should not be
substantially over three times the amount of the urea
where the synergistic effect is desired. * * *
Obviously if a large proportion of dentifrice is
used, the percentage of the urea and ammonium
compound may be reduced. If the amount of urea is
made too great, however, it is difficult to mask its
taste. It is, therefore, preferred that the amount
of urea should not exceed 10%. * * * The proportion of
ammonium phosphate should not normally be above 6 to
7%. * * In any event the ammonium compound and the
urea are used in therapeutic concentrations in the
dentifrice that are sufficient in a normal dentifrice
dosage to provide a concentration in the saliva of
the mouth that will be inhibitory to the production
of the Lactobacillus Acidophilus." (Emphasis
Clearly defendants have strained and failed to find in these
specifications a disclaimer of more than 10% urea, although it
does state the 5 and 3 proportion is preferred.
Intermingled with other arguments in defendants' brief and
appendix of 290 pages is the contention that Amm-i-dent is a high
urea dentifrice and should not be accused of infringement. This
contention was exploded by Dr. Henschel. He said,
"I would like to see a stop to the phrase `high'
urea right here and now. Just because it is almost
meaningless. * * *
"[T]he human body can easily tolerate up to 5% of
urea all over the body, and the mouth is no
different. * * *
"So that it is not a question of high urea. It is
not high urea. The so-called high urea formula is a
pretty low urea when it is actually used. * * *
"You see, if you analyze the material which is
presented to you, you will see that Dr. Kesel's
published work was with using concentrations which
were quite similar, if not higher, than my
are not low. They are higher if anything."*fn22
The defendants insist that the plaintiff is estopped to claim
infringement of Wach because the claims were contracted as a
result of the Jones and Meiser patents. These patents have been
discussed and discredited as prior art. Wach originally had a
claim which read:
"A dentifrice comprising from 1 to 7 parts of
dibasic ammonium phosphate, 1 to 10 parts of urea and
an inert non-sugary carrier adapted for oral
administration." Page 25 of Wach file wrapper.
This claim in its final form reads as claim 6 and is
sufficiently broad as amended to cover Amm-i-dent.*fn23
and reasonable interpretation of the Wach claim covers
Amm-i-dent. I find nothing in the Wach file wrapper where Wach
was estopped by any arguments made by counsel as against
The defendants have infringed Kesel. It claims:
"A dentifrice comprising a nontoxic carrier * * *
and dibasic ammonium phosphate in proportion to
provide under conditions of use in the mouth a
concentration in the saliva sufficient to inhibit
lactobacilli and being no substantially less than 2%
of the composition and a flavor masking ingredient."
Another claim expressly asserts 2 to 5% dibasic. Amm-i-dent
contains 3% and 5% dibasic. Amm-i-dent is manufactured under
Henschel. Henschel's purpose is expressed in his patent:
"It is among the objects of the invention to
provide a dentifrice which promptly and efficaciously
inhibits the action of the Lactobacillus, * * * and
which dentifrice performs various other functions
looked for in such commodity and has no toxic action
and no objectionable taste."
It is clear that both are ammoniated dentifrices to reduce
tooth decay by inhibiting lactobacilli. Defendants argue that
Kesel does not inhibit lactobacilli and could not be infringed.
The evidence corroborates Kesel. Dr. Arnold J. Singer and Dr.
John B. Lewis in their affidavits*fn25
in the Henschel file
wrapper, and Dr. Henschel in his patent verify that dibasic does
inhibit lactobacilli. Dr. Murray J. Rosenthal, Director of
Research of Block Drug Company, in his experiments made the same
finding. The adding of urea in Amm-i-dent does not radically
change its operation and character to void infringement. Haynes
Stellite Co. v. Chesterfield, 6 Cir., 22 F.2d 635; A.S. Boyle Co.
v. Siegel Hardware & Paint Co., D.C., 26 F. Supp. 217, 226;
Drumhead Co. of America v. Hammond, D.C., 18 F. Supp. 734,
affirmed 3 Cir., 89 F.2d 241; Diversey Corporation v. Mertz,
D.C., 13 F. Supp. 410; I.F. Laucks, Inc., v. Kaseno Products Co.,
D.C., 59 F.2d 811, reversed in part on other grounds, Chas. H.
Lilly Co. v. I.F. Laucks, Inc., 9 Cir., 68 F.2d 175, certiorari
denied I.F. Laucks, Inc. v. Chas. H. Lilly Co., first case,
293 U.S. 573
, 55 S.Ct. 84
, 79 L.Ed. 671, reversed in part on other
grounds, Chas. H. Lilly Co. v. I.F. Laucks, Inc., 9 Cir.,
68 F.2d 190, certiorari denied I.F. Laucks, Inc., v. Chas. H. Lilly Co.,
second case, 293 U.S. 573
, 55 S.Ct. 84
, 79 L.Ed. 671. The
defendants cite American Chemical Paint Co. v. Firestone Steel
Products Co., 6 Cir., 117 F.2d 927, but in that case the elements
added were clearly shown to result in a different compound.
There is additional evidence of infringement. The "Reader's
Digest", February, 1949 issue, carried a condensed article from
"Better Homes & Gardens." The title was "New Brush-off for Dental
Decay." It extols the value of the use of ammoniated dentifrice.
In a footnote it identified "Amurol" as an ammoniated tooth
powder accepted by American Dental Association and manufactured
under license of the University of Illinois Foundation.
Amm-i-dent was then advertised to gain the benefit of this
publicity, by direct reference to the "Reader's Digest" article.
It was stated in advertisements "Amm-i-dent contains carbamide
(synthetic urea) and dibasic ammonia phosphate. Amm-i-dent cuts
down Lactobacillus Acidolphilus, a major cause of tooth decay.
Amm-i-dent is pleasantly flavored." Later advertisements*fn26
were worded. "Amm-i-dent — The Ammoniated Tooth Paste."
"Amm-i-dent Reduces Tooth Decay." Defendants were obviously
commending Amm-i-dent as an ammoniated dentifrice functioning the
same as Wach and Kesel. This manifested infringement. Wheatley v.
Rex-Hide, Inc., 7 Cir., 102 F.2d 940, 942. Gibbs v. Triumph Trap
Co., Inc., 2 Cir., 26 F.2d 312, 314.
The patent office may have made a mistake in not having an
interference hearing. So far as this court is concerned it would
have avoided this litigation. The plaintiff did claim Amm-i-dent
infringed.*fn27 However, in no event is the lack of an
interference hearing conclusive on non-infringement. Herman v.
Youngstown Car Mfg. Co., 6 Cir., 191 F. 579, 586; Ashley v.
Weeks-Numan Co., 2 Cir., 220 F. 899, 903. Also see Frick Co. v.
Lindsay, 4 Cir., 27 F.2d 59, 63; West v. Premier Register Table
Co., 1 Cir., 27 F.2d 653, 656.
The court, therefore, concludes that the plaintiff's patents
are valid and have been infringed, but the plaintiff is not
entitled to treble damages. Since defendants obtained an
assignment of Henschel and acted upon the advice of counsel, the
defendants did not willfully and wantonly infringe. Artmoore v.
Dayless Mfg. Co., Inc., 7 Cir., 208 F.2d 1, certiorari denied
347 U.S. 920, 74 S.Ct. 518, 98 L.Ed. 1075.
Plaintiff may submit findings of fact, conclusions of law, and
order in conformance with the views expressed herein.