96 F. 435 | U.S. Circuit Court for the District of Southern New York | 1899
The questions herein are presented at final hearing on a hill alleging infringement of patent No. 374,888, issued December 13, 1887, to complainant’s assignor, Levi Bywater, for a knitted fabric. The inventor states as follows:
“My Invention consists of a new and improved textile fabric having the face yarn Thereof looped on the stitches of the back yarn, as hereinafter set forth, the said face, which is formed of mohair, worsted, or other yarn, being beat up so as to present a wavy or curly surface, and the hack, which is formed of woolen or other yarn, brushed, so as to present a smooth surface, the fabric having the appearance of looped or Astrakhan cloth.”
Prior to this suit, other suits for infringement of this patent were brought by this complainant in the Second and Third circuits. The suit in the Third circuit against E. H. Godshalk et al., hereafter referred to as the “Godshalk Case,” was heard on bill, answer, and proofs by Judge Dallas. The.defenses therein interposed were: (1) Anticipation; (2) public use and sale in the United States more than two years prior to the application; (3) abandonment; (4) noninfringement. The learned judge, upon an elaborate investigation and discussion, ordered a decree in favor of complainant on the ground that the patent was valid, and had been infringed, and that the proofs of prior use or sale and of abitndonment were insufficient. Thereafter, upon a rehearing and reargnment, Judge Dallas reconsidered his conclusions upon the issue of anticipation, and dismissed the hill on the ground that the patent in suit was anticipated by the British patent to James Booth. 78 Fed. 811. An appeal from this decision was heard in the circuit court of appeals by Mr. Justice Shiras and Judges Acheson and Butler. A majority of said court reversed the decree
“A knitted fabric composed of face and back yarns of different materials, the face yarn being looped at regular intervals and on alternate stitches of adjacent rows of the back yarn, and being matted and curly, and having a smooth back, whereby the said fabric has the appearance of looped or Astrakhan cloth, as described.”
The fact that the learned judge who originally heard the Godshalk Case allowed a reargument and thereafter reversed his first opinion, and that one of the judges in the court of appeals dissented from the opinion of a majority of the court in reversing Judge Dallas, shows that, the question of patentable novelty presented by the Godshalk record was a very close one. It is not claimed that Bywater, the patentee of the patent in suit, invented either a new machine, or a new art of knitting, or Astrakhan cloth. Counsel for complainant says:
“We find Bywater does not claim any novel mechanism, or any novel process, but does claim to be the first to make a new and improved textile fabric by such a wise choice of parts and yarns as to produce a knitted fabric which has the appearance of looped or Astrakhan cloth. What a knitter had to do to carry out the Bywater idea was to buy a piece of looped or Astrakhan cloth, or, lacking that, real Astrakhan, and, with that before him, set up his circular knitting frame with a view to having the mohair or worsted yarn which forms the face show a wavy or curly appearance such as the knitter found on the face of the Astrakhan -cloth or the Astrakhan skin. This had never been done before.”
These statements are denied, and it is further contended that, even if they were true, such changes would be immaterial, because the selection of a well-known thread to produce a well-known woven Astrakhan effect on a well-known knitting machine could not involve invention. The prior Booth patent and the Bywater patent in suit are each for an improvement in fabrics knitted in each case on the same kind of machine, and by the use of the same wool yarn for the back of the fabric. Bywater describes his face yarn as “mohair, worsted, or other yarn.” Booth’s face yarn is described as “worsted, or long fiber yarn, which will not felt with back or body.” Bywater produces a looped material which has “the appearance of looped or Astrakhan cloth.” Booth produces a material which projects from the “fabric in the form of loops, thereby producing a very ornamental appearance.” Each material is afterwards fulled and dyed and finished in the same way. The Booth patent antedated the patent in suit some six years, and the Booth fabrics had been on the market for two years before Bywater came to this country, in 1883. Coarse,
“If the second claim of the patent in suit had left out the words ‘matted and curly’ and ‘Astrakhan,’ the claim would have set forth nothing except what was common in large varieties of knitted fabrics which had been made on circular knitting machines for a great many years. It is only the use of those words which makes the Bywater patent differ from all older patents.”
The question now to be considered is whether, upon the newly-introduced evidence, the court of appeals would have reached a different conclusion as to the anticipation of Bywater by Booth. Judge Balias, in the case against Godshalk, stated his conclusions as follows :
“The ‘ornamental appearance’ produced hy Booth is not the Astrakhan-like appearance created by Bywater; and that Booth did not suppose it to be so is evident upon the face of his patent, and from the fact that neither he nor any one else had ever made any material having the curly and matted features which pertain to Astrakhan cloth tutor to the application of Bywa-ter. It cannot he said that either Kent and Beeson or Booth described the peculiar fabric in question so as to enable those skilled in the art to make it, for neither ot’ them described it at all, and that they may have come near doing so is no1 enough. Knitted Astrakhan was created by Bywater, and this he accom-X>lished, not by merely api>lying the skill -of the knitter to effect a change in either of their products, hut hy the exercise of his own inventive faculty.”
After rehearing he stated that this conclusion was erroneous, because the question whether the Booth patent on its face disclosed the Bywater invention was “one which can safely be determined only apon the testimony of those familiar with the art,” and that the un-contradicted expert testimony of the defendants established the identity of the fabric; disclosed by the Booth patent with that of the patent sued on. The following citation from the language of Judge Acheson, delivering the opinion of the court of appeals, shows tin; grounds on which that court reversed the decision of Judge Dallas;
“The contrary conclusion, which the able judge of the court below reached, ■was based upon the effect which he felt constrained to give to the testimony of the defendants’ professional expert, their foreman, and two knitters. We have examined that testimony with the utmost care, and we are obliged to say that, in our opinion, it does not justify a decree adverse to the patent in suit. This testimony strikes us as very meager. It consists of little more than the bare opinions of the witnesses that Booth’s patent discloses the Bywater fabric. The witnesses really give no reason for their conclusions. No detailed analysis of Booth’s specifications is made by any of them. None of them pro-tend that any of the terms employed in Booth’s patent require explanation by an expert. No such elucidation is attempted by any of them. These witnesses called the Booth fabric ‘Astrakhan cloth,’ and say that, hy following the directions of Booth’s patent, without more, Astrakhan cloth can he i)roduced; and one of them states that he has done this. This is the whole substance of their testimony. Ought it to be controlling? We think not. Testifying in 1896, it was impossible for these witnesses to devest their minds of their then knowledge respecting the Bywater fabric and the mode of its production, even if they had been unbiased. But what a willing witness in 1896 might read into the Booth patent is no fair tost. The true question is, what did that patent disclose to the public in 1881? We are well satisfied that the expert testimony of the defendants’ witnesses furnishes no safe aid in the solution of that question. The Booth patent speaks for itself, and its meaning' is to he determined by the court.”
“The defense of two years’ prior use and public sale in the United States rests upon the importation by H. Herman, Sternbach & Co., at the port of New York, in May, 1881, of certain pieces of ‘kyrle’ cloakings. We agree, however, with the learned judge of the court below, that there is ‘room .for very grave doubt’ whether those goods were the knitted Astrakhan of this patent; and we also concur in his view that there is a failure of satisfactory evidence to show that they passed into public use, or were put on sale. The evidence of prior use or sale did not reach the standard of certain proof required to sustain such defense.”'
The additional evidence shows that this invoice consisted of six pieces, and that all of said pieces were on sale, and, with one exception, were actually sold, more than, two years prior to the filing of Bywater’s application on December 22, 1883.
The remaining question is as to the identity of the Sternbach and Bywater fabrics. The courts in the Third circuit thought there was “room for very grave doubt” on this point. The new evidence comprises the following statements by the witness Appleton:
“A. I have examined the samples, and find that they are identical in all respects- with the fabric described in the Bywater patent, and referred to in the second claim thereof, with the exception that, instead of the face and back yarn being made of different materials, they appear to be made of the same material. Q. Is there any difference in the mode of manufacture, whether the face and front [back] are the same or of different material? A. There is not; the mode of manufacture being the same in both cases.”
This evidence is not sufficient to resolve the grave doubt in favor of the defendants. The small samples aré scarcely sufficient to satisfactorily show their mode of construction. They do not look like Astrakhan skin, and they have not the matted and curly appearance which gives the cloth the appearance of Astrakhan cloth. Finally, inasmuch as the new evidence is that the face and back yarn “appear to be made of the same material,” while the claim in suit is for a “fabric composed of face and back yarns of different materials,” it does not strengthen defendants’ case. The essence of the Bywater invention was that the -front and back should be of different materials, in order that the back yarn might shrink, while the face yarn did not shrink. This fabric, therefore, would not disclose to the public a knowledge of the Bywater fabric.
The defendants have proved an importation by Strauss, Kupfer & Co. of Astrakhan cloth with a longer curl than the Sternbach pieces, and sales thereof in May, 1883, prior to the filing of the Bywater application, but subsequent to the invention and commercial introduction of the Bywater fabric in England. If it be assumed that this fabric differs only in degree from that of Bywater, the question is presented whether Bywater can carry the date of his invention back to what was done by him in England prior to his arrival in this country. Judge Dallas discussed this question at length, and expressed an opinion in the affirmative, but found that the evidence
The arguments based upon a consideration of other sections of the statute have been so fully discussed by Judge Dallas that it is unnecessary to state them here. It is not claimed by defendants that the cases decided in the Second circuit, and referred to by Judge Dallas in his opinion, are at variance with his conclusions. I recognize the force of the contentions so clearly presented in the brief of the able counsel for defendants herein, but, after full consideration, I feel constrained to concur in the result reached by Judge Dallas. A decree may be entered for an injunction and accounting.