Wolff v. Stewart & Co.

• Decision Date: 03 November 1937
• Docket Number: No. 2477.,2477.
• Citation: 21 F. Supp. 135
• Parties: WOLFF et al. v. STEWART & CO.
• Court: U.S. District Court — District of Maryland

21 F. Supp. 135

WOLFF et al. v. STEWART & CO.

No. 2477.

District Court, D. Maryland.

November 3, 1937.

Morton H. Rosen, of Baltimore, Md., and Herbert A. Baker, of Boston, Mass., for plaintiffs.

Barton, Wilmer, Bramble, Addison & Semans, and F. Fulton Bramble, all of Baltimore, Md., and Semmes, Keegin & Semmes, Harry H. Semmes, and S. Warwick Keegin, all of Washington, D. C., for defendant.

CHESNUT, District Judge.

The patent here in suit has recently been held invalid for want of invention in view of the prior art by the Circuit Court of Appeals for the First Circuit in Jordan Marsh Co. v. Wolff, 80 F.(2d) 314, reversing a decree of the District Court reported in 9 F.Supp. 516, which held the patent valid and infringed. It is, however, contended for the plaintiffs here that the present case presents another and different record and requires independent judgment, and this position seems to be clearly correct. The defendants in the two cases are different. Although the manufacturer of the alleged infringement is the same it is not shown that he was a party to the former case, or bound by the decree. There is but one claim in the patent. Triplett v. Lowell, 297 U.S. 638, 56 S.Ct. 645, 80 L. Ed. 949.

There are no other federal cases as to the patent. The decision in the First Circuit is not imperative authority here although it is certainly entitled to great weight as highly persuasive; and it has been generally customary in this district to follow a decision of the Circuit Court of Appeals of another Circuit plainly in point and decisive of the case in the absence of other federal decisions of equal dignity. And this custom, I think, should find particular application in patent cases which are wholly a matter of federal law unaffected by conditions arising from any local law or custom. Beach v. Hobbs, 92 F. 146, 147 (C.C.A.1); Bellows-Claude Co. v. Sun Ray Corporation (D.C.) 39 F.(2d) 907, 913; Mast, Foos & Co. v. Stover Co., 177 U.S. 485, 20 S.Ct. 708, 44 L.Ed. 856; Imbrovek v. Hamburg-American Steam Packet Co., 190 F. 229, 233 (D.C.Md.).

The general nature of the patent is succinctly described by Circuit Judge Morton in his opinion for the First Circuit as follows:

"The patent relates to a kind of underclothing in which the body and leg portions are combined into a single garment, called a `union suit.' Such garments had been in common use for many years before the Wolff application was filed. They must be so fashioned that, for toilet purposes, the seat portion can be let down or pushed aside. The Wolff patent deals with this part of the garment. In his construction the top of the seat portion is loose at the back of the waist and permanently fastened at the sides, and is given such fullness that it can be pulled down when the wearer goes to the toilet. It is retained in normal position by an elastic tape carried in a hem at the upper edge of it and fastened at the sides of the waist. The stretching of the elastic in connection with the fullness allows the seat portion to be pulled down and the pressure of the elastic returns it into position when the pull is removed. There are no buttons. * * *

"The first question is whether the patent shows invention over the prior art. There was little controversy as to the facts. The oral testimony about the prior art was for the most part uncontradicted, and the prior patents speak for themselves."

After reviewing the prior art and particularly the patents to Greenwald in 1914, to Kline in 1916 and to Kassap in 1926, the opinion continued:

"Wolff took the loose baggy seat of Kassap's patent and modified the support for it by running the elastic tape all the way across the top and doing away with the auxiliary buttons. The question is whether this constituted invention. * * * Aside from the great commercial success of the Wolff garment, it would seem too clear for discussion that the change which he made did not involve invention. * * * The weight to be given commercial success on questions of invention depends on the circumstances surrounding it. * * * The recent commercial success of the Wolff garments appears to be due to the improvement in elastic tapes. The change which he made seems to us to have been obvious; not taken by others because owing to the poor quality of elastic then obtainable there was no practical merit in it."

The gist of the opinion was that the patent clearly lacked invention and could not be made valid merely by success attributable to a later improvement in elastic bands rather than to the intrinsic merit of the patent. After the decision the plaintiff-appellee moved for a re-argument on the ground that the court's conclusion on this point was not justified from the record as a whole, and in support of the motion affidavits of several witnesses were filed to the general effect that the early lack of success of the patent (later followed by marked success) was not due to the poor quality of elastic tape at the time of the issuance of the patent, but rather to the early failure of the trade to realize the merits of the invention; but the petition for re-hearing was denied without further opinion.

The present case has been submitted for decision after full testimony and hearing. Counsel for the plaintiffs have furnished me with a printed copy of the record in the former case, and after reading it and comparing the testimony with that submitted in the present case, I find there is but one difference of importance, and that with regard to this disputed question of the cause for the present commercial success of the patent.

From the testimony in the instant case I find that there has been an important improvement in commercially used elastic bands for underwear which became effective generally in the trade about 1933, two or three years after the issuance of the Wolff patent No. 1,787,098, December 30, 1930. From the testimony of Professor Rice of the Chemistry Department of the John Hopkins University it appears that prior to 1924 chemical scientists had discovered that a slight molecular change in certain substances, including rubber, effected a very material increase in their resistance to oxidation. The nature of the change and its causes at first baffled the chemists and it was not for quite some time thereafter that the discovery could be given practical application in the industrial field. However it was applied in the manufacture of rubber beginning about 1930, and the improved product came into very general use about 1933. It is known to the trade as the anti-oxidation of rubber. The deterioration in the effective elastic properties of rubber bands used in underwear was due largely to the process of oxidation of the rubber. Prior to 1931 this was overcome to some extent by the insulating of the rubber itself by a cotton covering usually in braided form but later somewhat improved when put into woven form although the braided form is still used very largely and satisfactorily. The anti-oxidating process in the manufacture of rubber has materially increased its effective life so that it retains its elasticity much longer now than some years ago. The effective life of elastic bands in undergarments prior to 1930 was hardly more than a year, and if the garments were retained on the shelf for that period before sale many of them would become practically unusable by reason of the almost entire loss of elasticity, and similarly if promptly sold and put into use with the possibly accelerated deterioration from wear and laundering, they soon required replacement. The new process of manufacture has greatly extended the useful life of the elastic bands.

While the plaintiffs in this case do not dispute the fact that the durable quality of elastic bands has been materially improved in recent years, they do vigorously dispute defendant's contention (which was adopted in the First Circuit case) that the present commercial success of the invention is attributable to the recent improvement in the manufacture of rubber; and much testimony has been submitted in this case to the effect that there was no general sales resistance to undergarments containing elastic bands on account of their inherent poor quality prior to 1930; and therefore the inability of the appellee Wolff to interest the manufacturers of undergarments in his patent prior to 1933 was not at all due to the defective quality of the elastic bands then in commercial use but resulted from the failure to appreciate the value of his device. On this point the following facts appear.

Wolff was by occupation a custom shirt maker. For his personal use he preferred union suits for underwear but disliked the then currently used buttons in the back. He experimented on a make of garment which would substitute an elastic band to hold the drop seat back portion of the garment in place for normal wear. He finally hit upon the device which is incorporated in the patent issued to him, and accordingly made a number of garments which he personally wore to his satisfaction. After perfecting his particular type of union suit and applying for a patent he endeavored to interest various manufacturers of underwear in its adoption, but obtained no encouragement from any of them over a period of two or three years. Only one assigned dissatisfaction with the quality of elastic bands as the reason for his refusal.

It will be noted that Wolff's own idea was that his device was suitable for garments for adult men and he apparently gave no thought to its possibilities for very young children. In the meantime a Mr. Craig (now of the Craig-Musgrove Co., the licensee of the Wolff patent) then connected with the underwear firm of Dalby & Co., was experimenting with the development of a buttonless elastic band union suit for young children. He devised a garment on which he secured a patent but which proved entirely unsaleable because too complicated (Patent No. 1,794,349, February 24, 1931). In his patent...