JR Clark Company v. Murray Metal Products Company

Decision Date04 February 1955
Docket NumberNo. 14836.,14836.
PartiesThe J. R. CLARK COMPANY, Appellant, v. MURRAY METAL PRODUCTS COMPANY, Inc., Appellee. MURRAY METAL PRODUCTS COMPANY, Inc., Appellant, v. The J. R. CLARK COMPANY, Appellee.
CourtU.S. Court of Appeals — Fifth Circuit

Andrew E. Carlsen, Douglas L. Carlsen, Minneapolis, Minn., James F. Weiler, Houston, Tex. (Fulbright, Crooker, Freeman, Bates & Jaworski, Houston, Tex., of counsel), for appellant.

Joe E. Edwards, B. R. Pravel, Houston, Tex. (Vinson, Elkins, Weems & Searls, J. V. Martin, Houston, Tex., of counsel), for appellee.

Before BORAH, RIVES and TUTTLE, Circuit Judges.

RIVES, Circuit Judge.

This appeal is from a judgment of the district court holding appellant's combination patent No. 2,276,981, for a "ventilating metal ironing table top" invalid and not infringed, and that appellant's device had acquired no secondary meaning which would justify granting any broad relief against appellee for unfair competition, though it was entitled to limited injunctive relief prohibiting appellee's use of advertising confusingly similar to that of appellant. The main appeal is from the trial court's holding as to invalidity, non-infringement, and lack of unfair competition in appellee's sale of the accused ironing table, while appellee has cross-appealed from the holding that its advertisement is so confusingly similar to that of appellant as to justify injunctive relief, as well as its allocation of one-fourth costs against appellee and refusal to award it attorney's fees.

Appellant is a Minnesota corporation organized in 1889, and is extensively engaged in the manufacture and sale of ironing tables. Appellee is a Texas corporation which, though never having manufactured the accused table structure, has sold the device for its manufacturer, Smithville Metal Products Company of Smithville, Texas, which company is not a party to this suit.1

The patent in suit was issued March 17, 1942 to appellant, as assignee from the inventor-applicant, Edward T. John. Claim 1 thereof, which is the only claim in issue, reads as follows:

"1. An ironing table top, comprising a framework formed of longitudinal and transverse members and a peripheral frame member united with the longitudinal and transverse members, and a surface member consisting of a single sheet of flat expanded metal resting upon the longitudinal frame members and having edges thereof secured to the peripheral member."

On the initial issue of Claim 1's validity, appellant insists that its use of flat expanded metal2 as an ironing table top involved patentable invention because the prior art reveals that no one, prior to the advent of its patent, had recognized that this type metal had inherent properties and characteristics which peculiarly adapted it for unusual efficiency as an ironing table top, viz.: the required strength to support an iron during the ironing operation and still provide the desirable smooth surface and open area for ventilation and steam escape, as well as the desirable characteristic of absorbing the high temperatures to which an ironing table top is subjected in localized areas without bulging, buckling or undergoing other structural distortion. Appellant further insists that Claim 1 is valid because it embodies an invention which remedied many problems theretofore unsolved by the prior art in the trade; that its validity is further reinforced by its due issuance by the Patent Office after consideration of all pertinent prior art references, as well as by its extensive commercial success and the recognition of appellant's statutory monopoly by its largest competitors in the field; that the structural variations in appellee's table are insufficient to avoid infringement under the doctrine of equivalents; and finally, that the testimony reveals appellant's table has acquired such secondary meaning and significance in the trade as properly entitled it to prevail also on its charge of unfair competition.

Appellee insists that the trial court properly held Claim 1 invalid because, when viewed in the light of more pertinent prior art references not considered by the Patent Office before issuance of the patent, the mere substitution of flat expanded metal for other ironing table top materials already known did not involve patentable novelty or invention, but was only a logical extension of prior existing knowledge readily apparent to any skilled artisan in the trade, particularly since its use as a table top was suggested in numerous trade circulars and publications issued prior to the patent in suit; alternatively, and solely in the event this Court considers Claim 1 valid, that appellee's ironing table exhibits substantial structural differences sufficient to avoid infringement; that appellant is entitled to no relief on its theory of unfair competition because of its own acts in permitting the patented structure to be sold under different names and trade-marks through various other outlets, which fact effectively refutes the contention that its product had become so identified with appellant as to acquire secondary significance in the trade.

The district court found, 114 F.Supp. 224, that no patentable novelty or invention existed in appellant's mere use of flat expanded metal for an ironing table top; that such metal and its inherently advantageous properties were well known prior to the advent of the patent in suit; specifically, that the use of woven wire, perforated metal, and expanded metal lath for ironing table tops, as suggested by the prior art, reveals them as fully equivalent materials to flat expanded metal, and the mere substitution of the latter material for the former did not constitute patentable invention, but was "a logical step for a skilled man designing an ironing table and involved only engineering or mechanical skill"; that, irrespective of its finding of invalidity, appellee's accused device did not infringe the patent in suit because, whereas the disclosure of Claim 1 is expressly restricted to "a framework including more than one longitudinal member which is united to the peripheral frame member", appellee's table had a different framework, in that it exhibits "only a single partial longitudinal member";3 finally, that appellant "has not established that the appearance of its ironing table top has acquired a secondary meaning", but since "the general appearance and arrangement, as well as certain descriptive phases in defendant's advertisement, are confusingly similar to many of plaintiff's advertisements," it created "the possibility that plaintiff's prospective purchasers might be misled, and * * * the likelihood of confusion to the public," so as to warrant the court's grant of limited injunctive relief to restrain appellee's further use of advertising "confusingly similar" to that adopted by appellant.

On the primary issue of Claim 1's validity, appellant concedes in brief that we are confronted with the comparatively simple proposition of "whether or not the use of flat expanded metal for this particular purpose (ironing board top) involved invention". It further concedes that flat expanded metal, as such, did not originate with the patentee, John, but that this type metal, as well as ironing board frames, were old long before issuance of the patent in suit.4 Furthermore, appellant does not deny "that the qualities and characteristics of flat expanded metal that enabled it to so effectively solve these problems5 are `inherent'" in the material itself. Appellant insists, however, that such concessions are immaterial and in no way affect the validity of its patentee's invention because:

"In not one of these earlier disclosures will be found the remotest suggestion of John\'s discovery that flat expanded metal will absorb or dissipate heat without buckling; in not one of them is there even a hint that flat expanded metal has properties that peculiarly adapt the material for an ironing table top; nowhere will be found the problems of localized heat application, the necessity for maintaining a perfectly flat ironing surface condition, the problem of surface condensation to prevent rotting, or the problem of adequate open ventilating space to permit steam escape, while also maintaining adequate smoothness of surface and strength to effect efficient operation.
* * * * *
"The one and only person to discover that flat expanded metal had these latent or inherent characteristics, so badly needed in the ironing table art, was Edward T. John, the inventor in the patent in suit, and if this Court so finds, as it should, then the claim in issue should be sustained."

With specific reference to the advantageous "latent or inherent characteristics" of flat expanded metal for use as an ironing table top, appellant further insists:

"Its greatest advantages, however, reside in the two facts (1) that it has a free open area of about sixty per cent so as to provide ample ventilation for the downward escape of steam without any condensation forming on its upper surface, and (2) that it had the very important function or property of being able to absorb and/or dissipate the locally applied heat without bulging, buckling, or otherwise distorting the plane or flat surface condition of the sheet. These were essentially the new advantages, functions and results that were found to have so much merit and great value to the Clark Company, and which were recognized as an inventive contribution by the Patent Office."

We have carefully considered each of appellant's contentions in the light of the prior art, the physical exhibits, and the record testimony; yet we remain thoroughly convinced that none of them may be sustained.

Whether, assuming Claim 1's validity, appellant might be entitled to prevail on the closer issue of infringement,6 we think it unnecessary for us to decide. Expressly pretermitting any holding upon that issue, we prefer to predicate our decision on what appears...

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