234 F. 886 | 2d Cir. | 1916
From the above it will be seen that my invention provides a garment having a permanently closed crotch and a posterior opening extending from a point near the waistline to a point below the crotch in one leg only. By carrying this opening obliquely from a point substantially in the waist line down to a point on the inner side of the leg below the crotch, I provide a construction affording an opening of ample dimensions and not requiring twisting or lateral displacement of the intermediate portion of the garment when in service.”
There are three claims; but, as claims 2 and 3 set forth a detailed specific construction, the real controversy is as to claim 1. That claim reads as follows:
“1. An undergarment having a permanently closed crotch and a posterior opening extending from a point near the waistline to a point below the crotch in one leg only, substantially as described.”
If claim 1 is valid, and the contentions of plaintiffs are sound, it is plain that plaintiffs — and in that event, justly — will either dominate the practical art or exercise a major control over it. The subject, therefore, is one of considerable importance.
We agree with the court below that the patent is addressed, as the drawings show and as the specification sets forth, “to that class of underwear known as union suits” and that the word “undergarment,” when used in the claims, must be construed as referring to the so-called union suit; but we consider the prior art in respect of detachable or two-piece under-garments as relevant to the question of invention. It must also be noted that the patent is not confined to garments of either sex, and therefore the prior art comprehends garments of both'sexes.
The problem, if there was one, was to construct a practical, usable unitary structure to accomplish what Johnson, in his specification, called “the two most essential requisites for comfort and convenience in garments of this character.” It appears from the record that union suits were known for many years; Wilson (vice president of plaintiffs’ exclusive licensee, Wilson Bros., of Chicago) testifying that he was familiar with men’s garments of this kind for 16 or 17 years. Wilson Bros, is a very large (Mr. Wilson thinks the largest) “general men’s furnishing house” in the country. This house “started to put out” woven fabric garments about two years before it “started to make them with the so-called closed crotch,” and these woven fabric garments were well advertised. What, therefore, the commercial art was looking for was a garment possessing characteristics which would make it a better seller than existing merchandise of this kind, and in the state of the art the room for advance was necessarily limited.
Plaintiffs subdivide the art into five classifications, under each of
“It is admitted that a permanently closed crotch undergarment is old. It is shown by the art that the extension of a flap extending below the crotch to the leg is also old. This is made clear by what is called the Austrian patent to Caroline Tichy, of the 25th of January, 1907.”
Defendant’s answer alleged:
“Tbe defendant further avers that said letters patent No. 973,200 is void, because' it discloses a garment which is not novel and the production of which did not involve invention, in view of the state of the a,rt relating to this type of garment and similar garments in common use in the United States at and long prior to the date of the alleged invention by Horace G. Johnson, and more than two years prior to his application for patent, and that therefore the said letters patent do not disclose any invention which is patentable, and the production of the patented device does not represent anything more than the shill to be expected of tfie average workman.”
Plaintiffs did not demand a bill of particulars as to the facts to which this allegation related. The testimony as to the Holmes garment, infra, was not offered as evidence of anticipation, and, of course, could not be so received unless pleaded, but was offered primarily to show the prior state of the art, and incidentally to meet plaintiffs’ claim that its garment was tire first union garment of its kind. Defendant’s counsel offered to show by a witness then on the stand that he bought from the Holmes Knitting Company, of Malden, Mass., and sold to one R. P. McEoughlin, of Utica, N. Y., a garment like Exhibit G, that similar garments were considerably traded in from 1900 to 1913,.that from 1907 to 1913, as shown by the books'of the witness, many such garments, were ordered to fill up stock, that the'
“I do not regard the announced effort of the defense to prove the production of a closed crotch garment by a manufacturer in Massachusetts and its transmission to a gentleman in Utica, a, dealer, for sale, and its actual sale to Mr. McLoughlin — assuming all those things to be true — as properly admissible under these pleadings; and my reason for it is that by no fair construction of the law can such a transaction as that be regarded as anything else but a prior use, and, such prior use not having been pleaded, I will not admit it under the guise of a showing of the state of the art.”
We appreciate that in this case, as in other cases, the practical result may be the same, whether the prior use is admitted as an anticipation or on the state of the art; but we think the ruling was contrary to settled authority. Brown v. Piper, 91 U. S. 37, 23 L. Ed. 200; Dunbar v. Myers, 94 U. S. 187, at pages 198, 199, 24 L. Ed. 34; Stevens v. Rodgers Boiler & Burner Co., 186 Fed. 631, at page 637, 108 C. C. A. 495.
We realize that under the present equity rules requiring open trials, occasionally last minute evidence of this kind may result in delay, if the court, in its discretion, deems it proper to allow an adjournment under such circumstances. But, in addition to the disinclination of the equity bar to spring surprise, we think the remedy, from the standpoint of practical procedure, lies within the power of the District Court, for instance, to require bills of particulars on demand, to impose costs where an adjournment is necessitated, or to take such other appropriate steps as it may be advised in order to afford opportunity to meet unexpected prior use testimony, or to discourage such practice if attempted.
It is but fair to state that no such situation was here presented. There was no contention by plaintiffs that they were surprised; for this same evidence had been introduced in a case in another district and circuit between plaintiffs and another defendant, in which trial counsel, who had just been retained in this case, had represented the defendant in the other case.
Changes with reasonable limits, in many instances, would not affect the probative value of commercial utility; but so many considerations
We conclude that, if Exhibit G for identification is proved to the satisfaction of the court, claim 1 is void, and that claims 2 and 3 are, in any event, not infringed. The case is therefore remanded to the District Court to take proof as to Exhibit G for identification, with instructions to dismiss the bill if prior use of a garment of which Exhibit G for identification is a specimen is proved.
On Hearing as to Form of Mandate.
PER CURIAM. The injunction is suspended, and the cause remanded to the District Court, with instructions:
(1) To take proof as to whether the Holmes garments like, or substantially like, Defendant’s Exhibit G for identification, offered as a specimen of these garments, had been in use or on sale prior to the patent in suit, and
(2) To take such testimony, if any, as it may deem advisable, to explain the construction and mode of operation of Exhibit G or similar garments, and thereupon to return the proofs to this court, with the opinion of the District Court as to (1) and as to (2), if there be any conflict in the testimony as to the manner in which the Exhibit G or similar garments, were actually constructed, and as to the mode of operation of such Exhibit G or similar garments.