Kolmes v. World Fibers Corp.

• Decision Date: 24 February 1997
• Docket Number: No. 96-1046,96-1046
• Citation: 107 F.3d 1534,41 USPQ2d 1829
• Parties: , 46 Fed. R. Evid. Serv. 740 Nathaniel H. KOLMES and Harold F. Plemmons, Plaintiffs-Appellees, v. WORLD FIBERS CORPORATION, Defendant-Appellant, and World Elastic Corporation, Dean R. Andrews and Gregory V. Andrews, Defendants.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1534

107 F.3d 1534

41 U.S.P.Q.2d 1829, 46 Fed. R. Evid. Serv. 740

Nathaniel H. KOLMES and Harold F. Plemmons, Plaintiffs-Appellees, v. WORLD FIBERS CORPORATION, Defendant-Appellant, and World Elastic Corporation, Dean R. Andrews and Gregory V.

Andrews, Defendants.

No. 96-1046.

United States Court of Appeals, Federal Circuit.

Feb. 24, 1997.

Howard A. MacCord, Jr., Rhodes, Coats & Bennett, Greensboro, NC, argued for plaintiffs-appellees. With him on the brief was James L. Lester.

Malcolm E. Whittaker, Ralph H. Dougherty, P.A., Charlotte, NC, argued for defendant-appellant.

Before LOURIE, Circuit Judge, FRIEDMAN, Senior Circuit Judge, and RADER, Circuit Judge.

LOURIE, Circuit Judge.

World Fibers Corporation appeals from the judgment of the United States District Court for the Middle District of North Carolina holding that U.S. Patent 5,177,948 is not invalid and that it was not obtained by means of inequitable conduct. It also appeals from the court's ruling denying entry into evidence of documents that it offered in an attempt to prove invalidity. Kolmes v. World Elastic Corp., No. 4:93CV00719 (M.D.N.C. Sept. 18, 1995). World does not appeal the court's added finding of infringement. Because the district court did not err in its holding concerning validity, and did not abuse its discretion on the issue of inequitable conduct and in its evidentiary ruling, we affirm.

BACKGROUND

The '948 patent concerns a cut-resistant yarn for use in making, inter alia, cut-resistant gloves. The prior art cut-resistant yarns typically used wire, which was undesirable because it restricted movement and was readily breakable. The '948 invention improved upon this material by using non-metallic components. Figure 1 of the patent, reproduced below, illustrates an embodiment of the yarn of the patent (10). It includes two core strands (12, 14), and two covering strands (16, 18) wrapped around the core strands in opposite directions relative to each other. One of the core strands comprises fiberglass. The other core strand and the covering strands typically comprise nylon, extended chain polyethylene, aramid, or polyester.

NOTE: OPINION CONTAINS TABLE OR OTHER DATA THAT IS NOT VIEWABLE

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Claim 1 reads as follows.

1. A non-metallic composite cut-resistant yarn for use in making strong flexible cut-resistant products comprising:

(a) a non-metallic core including at least one strand of fiberglass, said at least one strand having a denier in the range of 375-1,000 and being substantially parallel to (b) a non-metallic covering wrapped on said core, said covering including at least tow [sic, two] strands unbraided and spirally wrapped in opposite directions relative to each other around the core, said composite cut-resistant yarn having a composite denier between about 2,000 and about 5,000;

and untwisted with another strand in said core;

(c) said two strands in said covering being spirally wrapped about said core at the rate of 8-12 turns per inch;

whereby said composite yarn may be formed into fabric on conventional knitting or weaving machines.

Nathaniel H. Kolmes and Harold F. Plemmons (collectively "Kolmes") filed their first application for patent relating to this subject matter on June 13, 1989. They filed a continuation-in-part application on March 2, 1990, and a continuation application on January 15, 1992. This latter application, filed under 37 C.F.R. § 1.62 and using the same specification as the 1990 application, properly claimed the benefit of the filing date of the 1990 application under 35 U.S.C. § 120. It was accompanied by additional claims which became part of the granted patent. It eventually became the '948 patent. In denying Kolmes' motion for a preliminary injunction, the district court found that the continuation application, and hence the '948 patent, was not entitled to the benefit of the filing date of the 1989 application and that finding has not been challenged on appeal. Thus, the additional claims of the patent have an effective filing date of March 2, 1990, and a critical date of March 2, 1989 for purposes of 35 U.S.C. § 102(b), if they are adequately described in the specification.

Before the critical date, sample gloves made from the new yarn were sent to certain of Kolmes' customers for testing. In particular, the district court found that these activities were documented by six "sales" records, two dated September 11, 1988 and four dated February 21, 1989. A typical use of the yarn was in making cut-resistant gloves for use in meat-packing plants, and Kolmes thus sent the gloves out for testing in order to see whether they would work in that environment and withstand repeated laundering.

Kolmes sued World for infringement. The district court conducted a bench trial, concluding that the '948 patent was not invalid. It found that the 1990 application adequately supported the claims added in the 1992 continuation application. With respect to the on-sale and public use bars, the court found that gloves distributed before the critical date were marked "sample," and were sent with a "sample sheet" free of charge. They were in experimental use and thus did not create a statutory bar.

The court also found that the patent was not invalid on the ground of obviousness over U.S. Patent 5,119,512 ("the Dunbar patent") and U.S. Patent 4,886,691 ("the Wincklhofer patent"), which it found to be most pertinent. The Wincklhofer patent discloses the use of wire in yarn, which the court found was different from the claimed non-metallic yarn of the '948 patent. The court found that the inventors proved they made their invention before the filing date of the Dunbar patent, thereby removing it as prior art. The district court found that no inequitable conduct occurred in the failure of the patentees to submit to the Patent and Trademark Office ("PTO") the Wincklhofer patent, the Dunbar patent, and evidence of pre-critical date sales activity. Finally, the district court found that World infringed the '948 patent and awarded damages based upon a reasonable royalty of ten percent. World now appeals certain of these conclusions to this court.

DISCUSSION

On appeal from a bench trial, we review a district court's decision for errors of law and clearly erroneous findings of fact. Fed.R.Civ.P. 52(a); see Interspiro USA, Inc. v. Figgie Int'l Inc., 18 F.3d 927, 930, 30 USPQ2d 1070, 1072 (Fed.Cir.1994).

A. New Matter

World argues, with respect to claim 1, that the 1990 application failed to disclose the The patent statute requires that the "specification shall contain a written description of the invention." 35 U.S.C. § 112, p 1 (1994). Section 132 requires that no new matter be added to the disclosure of an application. 35 U.S.C. § 132 (1994). The question raised here is whether the claims added by the preliminary amendment to the 1992 continuation application find adequate support in the 1990 application sufficient to meet the description requirement of section 112, p 1. See In re Winkhaus, 527 F.2d 637, 640, 188 USPQ 129, 131 (CCPA 1975) ("Claims added by amendment and drawn to an invention not so described in the specification are drawn to 'new matter' and prohibited by § 132.").

desirability of using a wrapping rate of 8-12 turns per inch with a two strand core, rather than with a one strand core. It asserts that this subject matter was new matter because, according to World, it was first added with the new claims when the 1992 continuation application was filed. World argues that the inventors were therefore not entitled to the 1990 filing date and the claims were therefore barred by a public use. Kolmes responds that the newly added claims did not constitute new matter and were entitled to that filing date, precluding a public use bar.

Whether a patent satisfies the description requirement of section 112, p 1, is a question of fact, which we review for clear error on appeal from a bench trial. Ralston Purina Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575, 227 USPQ 177, 179 (Fed.Cir.1985). We agree with Kolmes that the specification contains a written description of the invention of claim 1. With respect to claimed element (a), the specification discloses a core having two parallel untwisted strands in Figure 1 and at col. 3, lines 9-20. It discloses a denier in the range of 375 to 1,000 for the core at col. 5, lines 48-49. With respect to element (b), the specification discloses the spirally-wrapped two strand covering in Figure 1 and at col. 3, lines 21-27, and it discloses the claimed denier range at col. 5, lines 63-65. The specification discloses several non-metallic materials for the core and covering strands at col. 3, lines 15-20 and 23-27.

Element (c) requires that the covering be wrapped at a rate of 8-12 turns per inch. At col. 5, lines 38-40, the specification states that the coverings or wrappings are formed "at the rate of 4-12 turns per inch, with 8 turns per inch being preferred." All the claimed limitations including the 8-12 turns per inch are thus well supported by the specification. Although the text of the specification only discusses the claimed wrapping rate with reference to a figure showing a one strand core, the specification discloses a two strand core with a two strand covering. World has not shown that the specification as a whole would have failed to convey to one skilled in the art the use of the claimed wrapping rate with a two strand core. See In re Alton, 76 F.3d 1168, 1172, 37 USPQ2d 1578, 1581 (Fed.Cir.1996) (stating that in order to satisfy the written description requirement an applicant must convey as of the filing date that he or she was in possession of the invention). Claims to subject matter disclosed in the specification are not new matter. Accordingly, the district court did not clearly err in finding that the claims were supported by the 1990 application, thus satisfying the description requirement of section 112, p 1.

B. The On-Sale and Public...