Australian Knitting Co. v. Gormly

• Decision Date: 23 May 1905
• Citation: 138 F. 92
• Parties: AUSTRALIAN KNITTING CO. v. GORMLY.
• Court: U.S. District Court — Northern District of New York

138 F. 92

AUSTRALIAN KNITTING CO. v. GORMLY.

United States Circuit Court, N.D. New York.

May 23, 1905

Action in equity brought by the Australian Knitting Company against Robert W. Gormly, a manufacturer of knitting machinery, for alleged infringement of United States letters patent No 424,314, granted March 25, 1890, to Peter S. Kinsey, assignor to the complainant, for burr-wheels for knitting machines. These burr-wheels are adapted for knitting machines adapted to produce figured or pattern knitting. In the specifications the patentee says:

'Burr-wheels of the kind referred to have been previously made which comprised blades set obliquely on the periphery of the burr-wheel hub, and so secured upon the hub that spaces are left between the blades. After the blades have been secured upon the hub, certain of them have had the spaces between them filled up by means of solder, lead, or similar soft metal run in in a molten state, where it becomes a fixture and secures together the blades between which it is run. Burr-wheels thus constructed, when once the spaces between the blades have been filled in by the soft metal, cannot be used for any pattern other than that for which they were originally constructed, for which reason it has been necessary to construct separate burr-wheels for each separate pattern which was desired. By my improvement I obviate this difficulty, for I so construct certain of the burr-wheel blades that their positions may be changed in any desired manner to produce any given pattern, thus making it possible to produce a great number of patterns with the same burr-wheel. The invention consists in making certain of the blades of which a burr-wheel is composed with enlargements upon one side thereof, which enlargements form part of, or are integral with, the blades upon which they are formed, and which enlargements are of such thickness that when the blades are arranged upon the burr-wheel hub the enlargements will substantially fill the spaces between the blades upon which they are formed and the next adjacent blades upon one side. It is, of course to be understood that the object of filling certain of the spaces between the burr-wheel blades is that, when the knitting machine cylinder containing the needles is revolving, such of the needles as come in contact with the closed spaces of the burr-wheel will have their barbs pressed in, so that a stitch will be cast off. Such of the needles, on the contrary, as come opposite the open spaces between the burr-wheel blades will mesh into such spaces without pressing in the barbs, and from such needles the stitches will not be cast off.'

The claim is as follows:

'The combination, with a hub having obliquely-extended slots upon its periphery and provided with a recess in its upper face, of blades made to enter said peripheral slots and said recess in the hub top, certain of said blades each having thickened portions or enlargements upon one of its sides, and a cap constructed to be passed down over the hub and upper ends of the blades and secured to the hub, substantially in the manner as and for the purposes set forth.'

About April, 1900, the complainant here learned, as he claims, that the patent in question was being used without license by the manufacturers of knitted goods, and that the alleged infringing burrs came from Tompkins Bros., of Troy, N.Y. The defendant, Robert W. Gormly, was then employed by Tompkins Bros. The complainant caused notices to be sent these manufacturers, calling attention to the patent in suit. It is alleged that notice was given Tompkins Bros. and the present defendant. Gormly had referred the question of the validity of the patent in question to Mosher & Curtis, and that firm had given an opinion that the patent in suit here was invalid. Their communication said:

'Positively, the only thing that Kinsey did was to take one of Swits Conde's thickened blades and insert it in a Kavanaugh burr, which involved no invention, and was clearly unpatentable, and it may be said with absolute certainty that no court would ever sustain such a patent.'

Mosher & Curtis also informed Mr. Preble by letter that the communication of the complainant to Mr. Gormly had been handed to them for reply. They said:

'We will look the matter up and report to you the result of our investigation as soon as we can conveniently do so.'

May 26, 1900, Mosher & Curtis informed Mr. Preble that they had examined the patent now in suit, and had advised their client, Mr. Gormly, that the blades manufactured by him did not infringe the patent, in view of patents to Kavanaugh, no. 117,299, July 25, 1871, and Conde, No. 240,008, April 12, 1881. This letter also contained this statement:

'Mr. Gormly instructs us to inform you that if your clients believe that he is infringing upon any of their rights, he is able and willing to respond to any action they may bring against him for redress; and that he will use every lawful means to prevent interference with or intimidation of his customers.'

June 9, 1900, Mosher & Curtis wrote Mr. Preble that they understood he had sent threatening letters to the users of Mr. Gormly's patented blade for burr-wheels subsequent to the letter of May 26th, and they say in reference to that letter, 'in which we clearly pointed out that the Kinsey patent is void. ' They further say:

'For the purpose of removing every possible excuse for such methods of doing business we hereby notify you that we are authorized to and will appear for Mr. Gormly in any action you may desire to bring against him to test the validity of the Kinsey patent, without putting you to the expense or trouble of serving a subpoena, and we will do everything in our power to expedite matters so that you may be able to have the validity of the Kinsey patent adjudicated in the shortest time possible.'

June 12, 1900, Mosher & Curtis wrote Mr. Preble, referring to his statement that he had no reason to doubt the validity of the Kinsey patent, and expected to bring suit, etc., and Mosher & Curtis say:

'Mr. Gormly has himself, made all the blades which have been manufactured under his patent, the blades being put on the market by Tompkins Bros. Mr. Gormly is perfectly responsible and abundantly able to answer for any damages sustained by your client. As we wrote you before, we will appear for Mr. Gormly on receipt of copy of your complaint, waiving the formality of service by subpoena.'

In the fall of 1900 the Australian Knitting Company, of which said Peter S. Kinsey was president, brought action for the infringement of the patent in question against Wright's Health Underwear Company, a corporation organized under the laws of the state of New Jersey. This action was put at issue by the defendant, and among the defenses it was set forth that the alleged invention covered by the Kinsey patent was in public use and on sale in this country by Kinsey and others for more than two years before the application for the patent, and the the said invention for more than two years prior to the application for the patent had been shown and described in various printed publications and patents-- especially the Kavanaugh patent and the Swits Conde patent-- and that such alleged improvements and inventions had been invented, known, and used by various parties named for more than two years prior to the application for a patent, and also set up the defense that the said letters patent sued upon were invalid for want of invention and for want of patentable novelty. The issues formed were tried before Hon. Hoyt H. Wheeler in the Southern District of New York, and his decision was filed February 19, 1902, in which he found:

'The defenses relied upon in the brief and argument are principally patent No. 240,008, dated April 12, 1881, and granted to Swits Conde, for a burr for knitting machines, which is said to show such a cam on some of the blades for that purpose; lack of adequate proof of infringement; and laches. The Conde patent is said to show some blades with such cams upon them by the drawings. There are drawings of blades which might, if set out by corresponding description, be understood to show such cams upon, and as a part of them. But the description says. ' One of said burrs being of the ordinary construction and filling every needle with thread, while the other has a certain number of the interstices between its thread-lifting teeth or wings filled with a block which presses against and closes the beards of certain needles, and thus causes its thread to skip over the said needles, carrying the single thread applied thereto by the other aforesaid burr;' and the claims include 'the filling-block, c, arranged between the said two series of wings.' What are shown in the description had claim are interstices filled with blocks between, not a part of, the blades or wings. What the patent shows is what it sets forth as a whole; and what appears on a drawing, that might be what is described or something else, would well be taken to be what is described, especially as that was a thing well known. This invention cannot, therefore, be justly said to be described or shown in that patent. The date of use shown by the parol evidence is not sufficiently clear as having been before Kinsey's invention to overthrow a patent, and appears to have been properly omitted from the defendant's points.'

An interlocutory decree was entered March 1, 1902, in pursuance of that decision. An appeal was taken from such interlocutory decree, and same was affirmed, the court saying:

'We are convinced that the proof fails to show prior use beyond reasonable doubt. The defense of laches has not been clearly established. It depends largely for its support upon inference and conjecture....