Ab Iro v. Otex, Inc., Civ. A. No. 77-2114-0.

CourtUnited States District Courts. 4th Circuit. United States District Court of South Carolina
Writing for the CourtRalph Bailey and Cort R. Flint, Bailey, Dority & Flint, Greenville, S.C., for defendants
Citation566 F. Supp. 419
PartiesAB IRO and Wesco Division of Torrington Company, Plaintiffs, v. OTEX, INC. and Roj Electrotex, s.p.a., Defendants.
Docket NumberCiv. A. No. 77-2114-0.
Decision Date18 April 1983



Clinch H. Belser, Jr., Belser, Baker, Barwick, Ravenel, Toal & Bender, Columbia, S.C., Richard G. Lione, Hume, Clement, Brinks, Willian & Olds, Ltd., Chicago, Ill., for plaintiffs.

Ralph Bailey and Cort R. Flint, Bailey, Dority & Flint, Greenville, S.C., for defendants.

William C. Hubbard, John L. Choate, Nelson, Mullins, Grier & Scarborough, Columbia, S.C., Francis J. Murphy, John M. Calimafde, Hopgood, Calimafde, Kalil, Blaustein & Lieberman, New York City, for involuntary plaintiff Wesco.


MATTHEW J. PERRY, Jr., District Judge.

Plaintiff AB Iro (hereinafter Iro), a corporation of Sweden, is the owner by assignment (Plaintiffs' Exhibit 3) of United States Patent No. 3,796,386 (P. Exh. 1), which issued on March 12, 1974, to Karl Tannert, a citizen of West Germany. Iro brought this action against Otex, Inc. (hereinafter Otex), a corporation of South Carolina, and Roj Electrotex s.p.a., (hereinafter Roj), a corporation of Italy, for infringement of the Tannert patent. Plaintiff Iro initiated this action in October, 1977. Subsequently, Roj and Otex filed a counterclaim against Iro and Iro's United States distributor, Wesco Division of the Torrington Company (hereinafter Wesco), alleging numerous antitrust violations. Wesco was joined in the action as an involuntary plaintiff. Trial was held on December 3 through 7, 1979. Subsequently, the Court has received from all parties voluminous briefs arguing the various positions.

The contentions of the parties can be grouped under three general headings: (1) Defendants' claims that the Tannert patent is invalid because of obviousness; (2) Plaintiffs' claims that the defendants, by manufacturing and marketing the West 840 and West 1000 model yarn feeders, have infringed the Tannert patent, U.S. Patent 3,796,386; and (3) defendants' counterclaims that the plaintiffs by bringing their action, have violated sections 1 and 2 of the Sherman Antitrust Act, 15 U.S.C. §§ 1 & 2. In like manner, this opinion consists of three parts, the first addressing the question of obviousness, the second dealing with infringement, and a third dealing with the antitrust counterclaim.


At the outset, I confess no expertise in the field of patent law, and further acknowledge that this is an area which demands considerable expertise. In order to make my course of reasoning clear, I will include matters which patent experts may consider obvious. The disdain of the experts notwithstanding, I prefer the cautious course of reciting the obvious, in the hope of resolving the complex questions this case raises.

To begin, the Tannert patent, U.S. Patent 3,796,386, the subject of this case, is embodied in a documentary exhibit, plaintiffs' Exhibit 1, which consists of 18 sheets, contained fifteen intimidatingly technical drawings, or "figures," followed by a 22-column written explanation of the invention. Beginning at column 16, line 48 are 41 Claims of the patent, that is, to quote the jargon of the exhibit "what it is desired to secure by Letters Patent of the United States."

It is the plaintiffs' contention that the West 840 and West 1000 yarn feeders infringe Claims 1, 9, 10, 11, 12, 28 and 39 of the Tannert patent. Defending against this claim, the defendants press two arguments: obviousness and noninfringement.

In order to explain these claims and defenses, it is necessary that I undertake an admittedly lengthy discussion of yarn feeders and patents.


The specification and drawings of the Tannert patent (P. Exh. 1) disclose a "Thread Feeder for Textile Machines." The specification of the Tannert patent at col. 1, lines 10-25 describes the type of thread feeders which the inventions of the patent in suit comprise. Such thread feeders are described as devices which are disposed between a thread storage spool (or the like) and an operating point of a textile weaving or knitting machine. Such thread feeders have a coiling or winding body, sometimes referred to as a drum. The feeder withdraws thread from the storage spool and coils, that is, winds the thread onto the stationary winding body. The feeder includes means for moving the thread coils along the length of the winding body. The textile weaving machine takes thread from the winding body as it needs thread by pulling it off overhead; i.e., over one end of the winding body. With a weaving machine, the thread is withdrawn by the weaving machine in a rapidly varying pattern alternatingly withdrawing thread and not withdrawing thread.

As the specification points out, such apparatus is generally known and the primary purpose of it is to eliminate variations and fluctuations in tension caused by different factors such as thread size, coil size, and the like. The end result is to enable the textile machine to receive thread at a continuous, although not necessarily constant, rate without problems occasioned by tension variation, thread breakage, and depletion of the storage spool of thread. For example, when a storage spool has been emptied a sensing device turns the textile machine off. There is a normal momentary delay until the machine actually stops. The presence of a number of thread turns in the coil store on the thread feeder during this momentary delay enables the textile machine to continue for that moment without damaged fabric being produced.

Conventionally the thread is initially taken from the supply package by a rotating element on the thread feeder. In one basic variation of prior art thread feeders (rotating drum feeders) the winding body is the rotating element. It rotates and, in effect, wraps itself in a coil of thread withdrawn from the thread source.

An alternative basic variation of prior art thread feeders utilizes a non-rotating winding body and a rotating arm or cage encircling the winding body. In this prior art device it is the rotating arm or cage which withdraws thread from the storage spool and coils it onto the winding body.

In either case the coil turns are laid onto the winding body at one end of the body in a fixed location relative to the axis of the body and then are moved down the body toward its other end, as more thread turns are added. As the Tannert specification points out at col. 1, lines 21-25 (P.Exh. 1), thread feeders are conventionally provided with some means for axially displacing the coil progressively along the winding body.

Thread is then pulled off "overhead", i.e., "over ... (the other) end" of the winding body by the weaving machine as it uses thread, as pointed out at col. 1, lines 24-25, of the specification (P.Exh. 1). As it does so the coil store on the winding body is depleted from that end. As is necessary, means are provided to start the coiling operation each time the coil store is depleted to a certain minimum length along the winding body and stop the coiling operation again when the coil store reaches a certain maximum length along the winding body. By the very nature of the thread feeder construction thought necessary for many years, regardless of whether a rotating or non-rotating drum was employed, it was impossible to employ simple and inexpensive, yet accurate and maintenance free, internal thread coil store length measuring devices.

The Tannert patent thread feeder invention eliminates the problems inherent in rotating body feeders by employing a non-rotating body. It also eliminates the problems of complexity, expense, and lack of reliability which was thought to be inherent in non-rotating bodies, as the Tannert patent specification points out at col. 1, lines 51-53 (P.Exh. 1).

The specification of the Tannert patent points out at col. 1, lines 54-67 (P.Exh. 1), that the solution is achieved by assembling thread feeder in a way not contemplated before. First, the coiling body was rigidly mounted on the chassis of the thread feeder so that no complex magnet or weight imbalance system or the like had to be employed to keep the winding body stationary. A stationary drum allowed the use of a simple coil-store length sensing device, a simple mechanical feeler, for example, having a direct connection, without rotating contacts, to the power source for driving a thread laying guide. The rotating thread laying guide was moved to the opposite end of the winding body from that which the prior art had taught; i.e., the end of the winding body toward the weaving machine rather than the end facing the thread storage spool. Thread was then run from the thread storage spool through the center of the winding body and radially outwardly to the thread laying guide (as shown as Embodiment A, pictured below in figure 1, taken from the Tannert patent file, P.Exh. 1), or through a cage-like extension or arm of the thread laying guide and then radially inwardly to the winding body (as shown as Embodiment B, pictured below in figure 2, taken from P.Exh. 1). Thread would then be layed onto the coiling body at the end opposite the storage spool from which it was being withdrawn and would progressively move axially along the winding body toward the end facing the thread storage spool. From this other end the thread would be stripped axially off the winding body in the manner of a spin casting reel paying out fishing line. In embodiment A this stripping would take place axially back in the direction of the one end of the winding body or drum directly toward the weaving machine operating point. In embodiment B the thread is stripped axially away from the smaller end of the winding body, the direction of travel would then reverse and the thread would go axially through the fixed winding body toward the weaving...

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3 cases
  • Darda Inc. USA v. Majorette Toys (US) Inc., 83-353-Civ.
    • United States
    • United States District Courts. 11th Circuit. United States District Courts. 11th Circuit. Southern District of Florida
    • January 13, 1986
    ...may be broader than the specific embodiments disclosed in the specification and illustrated in the drawings. AB Iro v. Otex, Inc., 566 F.Supp. 419, 220 USPQ 239 (D.S. C.1983). See also, General Electric Co. v. United States, 206 USPQ 260 (Ct.Cl., Tr. Div.1979), aff'd on other grounds, 228 C......
  • Scarborough v. Integricert, LLC., CIVIL NO. 6:12-0396
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Western District of Louisiana
    • August 12, 2015
    ...that the original Examiner considered the Duppong Patent, and for whatever reason, didn't expressly cite it. See AB Iro v. Ortex, Inc., 566 F.Supp. 419, 431-432 (D.S.C. 1983). However, there is nothing to suggest that the original Examiner of the 447 Patent or the Examiner of either Patent ......
  • LaRouche v. Webster, 75 Civ. 6010.
    • United States
    • United States District Courts. 2nd Circuit. United States District Courts. 2nd Circuit. Southern District of New York
    • April 18, 1983
    ...For the reasons stated above, this Court finds that plaintiffs' motion to enjoin the Freeman investigation is totally without 566 F. Supp. 419 merit.5 It follows that plaintiffs' motion to enjoin any and all investigations of persons or organizations associated with plaintiffs is also merit......
1 books & journal articles
  • Fixing our broken patent system.
    • United States
    • Marquette Intellectual Property Law Review Vol. 14 No. 1, January 2010
    • January 1, 2010
    ...They may be explained and illustrated by the description. They cannot be enlarged by it") (citation omitted); AB Iro v. Otex, Inc., 566 F. Supp. 419, 457 (D.S.C. 1983) ("the claims of a patent define the patentee's Suggested [section] 106 takes these principles as its starling point. It con......

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