American Hatters & Furriers Co. v. Danbury & Bethel Fur Co.

• Decision Date: 05 February 1931
• Docket Number: No. 1989,2035.,1990,1989
• Citation: 47 F.2d 268
• Court: U.S. District Court — District of Connecticut
• Parties: AMERICAN HATTERS & FURRIERS CO., Inc., v. DANBURY & BETHEL FUR CO. SAME v. EASTERN FUR PRODUCTS CO. et al. SAME v. GEBERT et al.

47 F.2d 268 (1931)

AMERICAN HATTERS & FURRIERS CO., Inc., v. DANBURY & BETHEL FUR CO.

SAME v. EASTERN FUR PRODUCTS CO. et al.

SAME v. GEBERT et al.

Nos. 1989, 1990, 2035.

District Court, D. Connecticut.

February 5, 1931.

Robert S. Blair, William T. Knieszner, and George Crompton, Jr., all of New York City, for plaintiffs.

Victor D. Borst, of New York City, for defendants.

THOMAS, District Judge.

In these three patent cases brought by the same plaintiff the patents in each suit are identical, and the alleged infringing material is identical. The cases were tried together, and they will be discussed and decided in one opinion.

The bill of complaint in each case is in the usual form and charges the defendants with infringement of the Parks patents Nos. 1,507,891 and 1,507,892, the former upon an application filed June 30, 1923, and the latter upon an application filed the same day and both issued on September 9, 1924. As all formal matters have either been stipulated or conceded, the questions presented are whether the patents in suit are valid, and, if so, whether the defendants infringe them.

The patents in suit relate to the art of carroting fur for the purpose of manufacturing felt hats made for and used by both ladies and gentlemen. A logical outline of the facts requires that we get a clear understanding of what these alleged inventions are in order to properly test the validity and scope of the corresponding patents. It should be noted that, although there are two patents in suit, and strictly speaking two inventions and that they deal with different statutory classes of invention, nevertheless, for the sake of brevity, they may be referred to as a single invention.

Nearly all felt hats are made from the fur of small animals, chiefly rabbits. In the manufacture of felt hats it is the common practice to subject the fur to a preliminary treatment known as "carroting." As to the precise chemical or structural changes brought about in the fibers of the fur by this treatment, there is a lack of agreement among the experts. What these changes are does not seem to me to be of real importance. Some marked change is wrought. The raw fur, feltable with great difficulty, if at all, becomes "carroted" and then felts with ease. This admitted alteration of the character of the fur is important. The molecular or microscopic actions by which it is brought about are not.

At the time of the Parks inventions, "carroting" of fur was accomplished by brushing on the fur while still on the skin a solution containing mercury. This solution is poisonous and mercuric poisoning among the workmen has occurred to a deplorable extent, a fact dwelt upon in certain of the defendants' exhibits. The parties agree that the mercuric solution stains the fur, and consequently seriously hampers its use on fur of light color. Notwithstanding this, the use of the mercury carrot was universal when the Parks invention was made and had been for a half century or more prior thereto, save for two or three sporadic and short-lived attempts to use caustic soda. Defendants' proofs of these efforts to employ caustic soda are of questionable force, but if we give them a probative value, which they do not possess, the evidence shows that caustic soda as a carrot was a failure. It cannot be seriously argued that the entire hatting industry, which was forced to employ a chemical that endangered the workmen and stained the fur, thrice completely rejected a nonpoisonous, cheap, colorless, and unpatented substitute, if the substitute could be made to do the work.

The patents in suit are No. 1,507,892 on a process of carroting and the product of that process, and No. 1,507,891 for a composition of matter or solution suitable for use as a carrot. The first of these prescribes, as a preferable use of the invention, the brushing on the fur of caustic soda and hydrogen peroxide. The claims range from broad definitions of the solution and its application to specific mention of the above constituents and even to prescription of the strength of the solution. This is some times expressed as sodium peroxide in water, but the parties agree that this instantly forms a solution of sodium hydroxide (caustic soda) and hydrogen peroxide.

The second patent describes the above solution and its making and claims it as a composition of matter in claims of varying scope. The details of these claims are not here of interest, as infringement is not contested.

That the Parks carrot works, and that it does away with the poisonous and staining effects of the mercury carrot, is not denied. Plaintiffs urge several marked advantages over mercury. Defendants appear to question only one, namely, whether the Parks carroted fur makes a hat of the strength of the mercury-carroted fur. Even if it were lacking in this particular and its field were restricted to hats of the lighter type, there still remain points of superiority sufficiently potent to more than compensate for such a deficiency. However, defendants' proofs of this alleged defect are based mainly on the opinions of interested witnesses better qualified to pass on fur than on hats. These proofs are refuted by the testimony of the witness Hodgson, a hat manufacturer, who used the Parks carrot for years, turning out large quantities of mens hats of high quality and sold at high prices with full satisfaction to the purchasers. Mr. Hodgson's testimony, substantiated by the production of actual hats of high quality which had seen some years of service, was practically conclusive on this point. It would follow, therefore, that defendants have shown no particular in which the Parks carrot is inferior to mercury.

Defendants argue that Parks made but one invention for which he was entitled to a single patent. On the face of the patents in suit, Parks invented a novel and useful composition of matter. He applied for his two patents on the same day; they were issued on the same day and both are here in suit. The statutes recognize these as inventions of different classes, and the Patent Office, by issuing separate patents without objection, evidently found the filing of separate applications to be in accord with its practice and would, presumably, have disapproved of an attempt to consolidate them into a single application and patent. Whether the invention which Parks made in carroting processes can be mentally...