269 F.2d 255 (2nd Cir. 1959), 16, American Safety Table Co. v. Schreiber
|Docket Nº:||16, 17, Dockets 24959, 24960.|
|Citation:||269 F.2d 255, 122 U.S.P.Q. 29, 122 U.S.P.Q. 541|
|Party Name:||AMERICAN SAFETY TABLE COMPANY, Inc., Plaintiff-Appellant-Appellee, v. Joseph SCHREIBER and David Goldberg, Individually and as Partners Trading as Schreiber & Goldberg, Defendants-Appellees-Appellants. AMERICAN SAFETY TABLE COMPANY, Inc., Plaintiff-Appellee, v. Joseph SCHREIBER and David Goldberg, Individually and as Partners Trading as Schreiber &|
|Case Date:||June 19, 1959|
|Court:||United States Courts of Appeals, Court of Appeals for the Second Circuit|
Argued Oct. 9, 1958.
Rehearing Denied in No. 16, Docket 24959 Aug. 26, 1959.
[Copyrighted Material Omitted]
Charles Sonnenreich, New York City, for defendants-appellees-appellants and defendants-appellants.
Before CLARK, Chief Judge, and MEDINA and LUMBARD, Circuit Judges.
MEDINA, Circuit Judge.
These are cross-appeals in two companion cases involving questions of patent validity and infringement with reference to two of plaintiff's patents and a charge of unfair competition. The cases were tried together, but separate judgments were entered. Both patents were held valid and infringed, plaintiff was awarded counsel fees in the suit on the second patent, under 35 U.S.C. § 285, and the unfair competition charge was dismissed, but solely on the ground that, in the opinion of the trial judge, plaintiff's machines had not 'acquired a secondary significance in the shirt-manufacturing trade and among users of such machines.'
The trial was a long one and we are confronted with a formidable transcript of testimony and many exhibits, but we have not the advantage of an opinion or detailed findings to guide us through the maze of direct and collateral issues; and we would have sent the case back for adequate and specific findings but for the prospect of further inordinate delay.
Since the questions involved are complex we have decided first to set forth a relatively brief chronological description of the development of the controversy between the parties and the background of prior art, and then later to elaborate upon certain groupings of facts as each separate principal issue is discussed and legal principles applied to its solution.
Both plaintiff American Safety Table Company, Inc. (Amco), a Pennsylvania corporation, and defendants, Schreiber & Goldberg, a New York partnership, are engaged in the manufacture and sale of various machines used in the garment industry; both deal in and make collar shaping and pressing machines. These machines are useful in the shirt manufacturing industry, particularly with respect to soft, multi-ply collars at a stage preliminary to sewing them permanently to the neck-bands of the shirts. Both use a process which involves externally confining the edges of the collar point within a recess formed by specially designed dies, positioning the collar point within the external dies by means of a retractable internal die and then applying heat and pressure to the surface of the collar point within the confined area. Both mount their die assemblies on an inclined table and rely on foot-pedal actuation for exerting pressure and inserting the internal die.
The story of the development of these machines dates back to the late 1920's. It is customary in manufacturing collars to stitch plies of material together with an interliner forming an outer ply and to turn the plies inside out to bring the interliner between the plies. The plies are then moulded and pressed into shape. For a long time these various functions were all performed by hand. It was noticed that these methods not only were time consuming but that they produced undesired results, particularly with respect to the soft collars attached to shirts, in that bulges or lumps formed owing to the large amount of material that had to be turned into the points of the collar. The increased thickness at a collar point is attributable to the bunching of the surplus material at the plies which are necessarily double in number in this region. This bunching gave the collars an undesired convexity which detracted from their intended well-defined shape. Since the collar plays a highly important role in the appearance and saleability of the shirt, this drawback began to attract considerable attention.
Various attempts were made to improve the appearance of the collar points by cutting away the point of the imterliner, by trimming the facing plies adjacent to the point, and by distributing the surplus by small hand tools. 1 But the surplus material was seldom uniformly distributed and these clumped points or 'knobs' still resulted. Many shirts were accordingly rejected or classified as 'seconds' on that account.
One of the earliest mechanical attempts to solve the problem was devised by an inventor named Morris L. Kaplan for a shirt manufacturing company. In 1926 he conceived a device which attempted to eliminate the bulkiness by stretching the collar. This machine had two oppositely movable pointed die blades which respectively received the opposite points of the collar; by forcing the blades apart, the collar was stretched. This effort, however, proved completely ineffectual, although a patent (No. 1, 619, 939) was granted on March 8, 1927. Amco's chief engineer and the inventor of the machines described in the patents now in issue, Max T. Voigt, was shown this device but he manifested little interest in it.
Later in 1927 Kaplan attempted to improve his machine by associating with each of the die blades a spring-pressed pressing die heated by an electric iron attached to its side. This effort also proved impracticable for various reasons, one of which was that it was too slow, for the collar first had to be stretched and then pressed, one point at a time. By April 1931 Kaplan had evolved a double point machine to speed up the process, using spring-pressed cross bars to apply the pressure from above. His internal die was shuttled into a recessed die by means of a carriage actuated by a pedal. Patent No. 1, 902, 330 was granted on this device on March 21, 1933.
Meanwhile, others were trying to solve the same problem by a variety of different means and devices. On June 21, 1930 Samuel J. McAuley filed application for patents on what proved to be the revolutionary step in the industry. It is he who is credited with being the first to pursue the idea that the application of heat and pressure to a collar within a confined area would distribute the interliner equally throughout the collar. McAuley's machine had a heated bed plate having side walls formed by a matrix plate positioned above the bed. The walls formed a 'V' to correspond to the edges of the collar to be shaped. Pressure was exerted by a spring-controlled plunger and was adapted to fit closely the space between the upstanding side walls. The result was not only to press and smooth the surfaces of the collar but also to impart a definite shape to the edge faces. McAuley's patent No. 1, 910, 849 was issued on May 23, 1933; but it was a crude beginning and without further development it did not offer any practical solution to the problem confronting the industry.
Shortly after McAuley's discovery, on August 11, 1930, an improvement patent was sought by Walter J. Beattie. Still using a single point machine, he demonstrated the value of an internal die-- also adopted by Kaplan-- to position the collar. He used a retractable die blade, which was inserted between the plies of the turned collar. Unlike Kaplan's retractable die the blade apparently remained within the collar in the pressing recess at the time pressure was applied. The internal blade combined with the external continuing walls to give the collars their shape. A carriage arrangement was used to carry the internal die into the recess. While a pedal actuated the pressure, the carriage had to be manipulated by hand to insert the internal die blade into the pressing recess. This patent, No. 1, 896, 934, was granted February 7, 1933. All serious conflict between the McAuley and Beattie patents was avoided by a cross-licensing agreement. The Beattie Manufacturing Company was created and the Beattie-McAuley machine was first marketed around 1929 or 1930 and, as it had obvious advantages over the old hand method, it was used by many shirt manufacturers and obtained a certain popularity.
Another machine was designed by Edward V. McTague in 1932. It applied pressure and heat by means of cylindrical plates and contained a special recess for the part of the collar containing the extra material. The two cylindrical plates were connected by a link which insured a parallel relation between the plates at the starting point to facilitate the insertion and removal of the fabric into and out of the pressure area. Pressure was actuated by a foot pedal. It also had a single point internal die and its die assembly was mounted on an inclined table. A patent (No. 1, 890, 882) was granted on this machine on December 13, 1932; but this machine, for reasons that are obvious upon an examination of the face of the patent, was never in commercial use. Indeed, the only collar forming and pressing machines that became commercially available prior to 1952 were the McAuley-Beattie machines and the Amcos which we shall describe shortly.
In 1931 Kaplan showed Voigt and Amco's president, Louis Frankel, his double point spring-pressed machine and a license agreement was executed contemplating the promotion of Kaplan's invention. Plaintiff then formed a special subsidiary corporation for this purpose called the Automatic Forming Die Corporation. About 100 of the Kaplan machines were manufactured but these had to be withdrawn or scrapped because they failed adequately to accomplish...
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