Buono v. Yankee Maid Dress Corporation

• Decision Date: 06 May 1935
• Docket Number: No. 379-381.,379-381.
• Citation: 77 F.2d 274
• Parties: BUONO et al. v. YANKEE MAID DRESS CORPORATION. SAME v. LOO-ROSE DRESS CO., Inc. SAME v. STRUNG et al.
• Court: U.S. Court of Appeals — Second Circuit

77 F.2d 274 (1935)

BUONO et al. v. YANKEE MAID DRESS CORPORATION.

SAME v. LOO-ROSE DRESS CO., Inc.

SAME v. STRUNG et al.

Nos. 379-381.

Circuit Court of Appeals, Second Circuit.

May 6, 1935.

Knight Bros., of New York City (Ray T. Ernst, of New York City, of counsel), for appellants.

Mock & Blum and Asher Blum, all of New York City, for appellees.

Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge.

This is the usual bill in equity for the infringement of two patents: One for a machine by which to make a kind of "blind stitch"; the other, a product patent, for the stitch itself. A "blind stitch" is one where the needle passes through several plies which are to be fastened together, but does not pass clear through the last or outside one; the stitching does not therefore show on the front, hence the name. Obviously the cloth must be thick enough to allow the needle to take up a snatch of it and still not go through. When plies of thin fabrics are sewn together, no matter how shallow the stitch, the needle will pass clear through the cloth, leaving a dot visible on the outside. Sometimes when the strains are light, the last ply need not be tacked to the others by all the stitches; some may be skipped. The outside of the garment in that case shows a dot, then a length of cloth, then a dot, and so on. The outer ply has been caught to the others only where the dots appear. It is to do this work on a "chain stitch" machine that the patented mechanism was devised. It was only an improvement upon an old machine, called the "Dearborn," which was covered by a number of patents, nearly all of which had expired before the application was filed. The Dearborn machine contained a complicated mechanism for "blind stitching" whose description without the accompanying figures would be nearly, if not altogether, incomprehensible; we shall not attempt it. It is enough to say that among its parts is a rib which pushes the fabric up into the path of the needle at the moment of the needle's traverse in an arc perpendicular to the movement of the seam. The rib runs in the line of that movement; it oscillates in an arc, retiring after the needle has made the stitch and leaving a pucker in the fabric which is retained by side members between which the rib has forced its way. The mechanism which oscillates the rib synchronously with the needle is no part of the patent and need not be described. It is enough that it did not allow for any variation in the height of the rib, by which, though the needle would enter the upper plies, it should miss the under and outer one. The Dearborn machine was for "chain-stitching," that is, for stitching with a single thread; "lock-stitching" is with two threads and requires a somewhat different machine. There were "lock-stitch" machines in which the rib — for they too had a rib — would at predetermined intervals rise to less than its full height, and then the needle pierced only the upper plies and not the lower and outer one. These sewed a skip-stitch for "lock-stitching," as the machine in suit does for "chain-stitching." Machines of this sort were, for example: Arbetter, No. 830,699 (1906); Onderdonk, No. 872,676; Mueller, No. 1,588,135 (1926). Of these Onderdonk is asserted to be applicable also to a "chain-stitch" machine, and arguendo we will so assume, for it makes no difference. In all these the skipstitching was by a mechanism which raised and lowered the rib. So far as appears none of them found a market; but another machine did, Lewis' lock-stitcher, which also skipped stitches by varying the height to which the rib should rise. It was serviceable upon men's clothing, but it did not work satisfactorily upon women's except at the bottom of pleated skirts; and its speed was less than one-half that of the patented machine which apparently drove it out; at least it disappeared soon after that machine began to be sold in quantity.

The patented disclosure is of a mechanism not for varying the rise and fall of the rib, but of the "work-table" or "work-support" upon which the fabric rests. By a train of members not necessary to describe, the table, which is pivoted so as to operate like a bell-crank, is periodically oscillated, rising and falling in a period greater than the period of rotary oscillation of the rib. If the table did not move, the rib would have the same movement relative to the needle for each stitch; no stitches would be skipped. But the rib being carried by the table, shares its oscillation; its motion relative to the needle is a composite of its own unvarying reciprocal rotation, and the vertical movement of the table. This conception may not as such have demanded high ingenuity; obviously it was possible to break up the motion of the old lock-stitch rib into two components and to give one part to the table and leave the other with the rib. Again, there was nothing outstanding in carrying over from lock-stitch to chain-stitch machines the notion of skipping stitches. But the Dearborn machine was over thirty years old when the Buonos filed their application; nobody had considered it of importance to rock the table on any machine, lock or chain stitch. Much ingenuity had been devoted to that machine; there are in evidence nine Dearborn patents alone, covering a period of twenty-five years. So far as the lock-stitch art is to be regarded as relevant, it too was crowded with patents, showing many variants of rib raising mechanism. The result when it came was greatly to increase production over that of the Lewis machine, doubling it, as we have said. It does not seem to us that we can properly say that such a change was a mere routine development of skilled workmen. There had always been a substantial prize for him who could so much speed up the work and the art had not called out the winner for a generation, though many were at work on the blind-stitch machines, and skip-stitching had been a desideratum. We should indeed have no question, were it not for the high standard demanded for invention by the decisions of the Supreme Court in recent years. We cannot disregard this disposition and we must follow as faithfully as we can. Still it has not been accompanied by any change in the principles which are thought to determine invention. Indeed in almost the last opinion of that court, Smith v. Snow, 294 U. S. 1, 14, 55 S. Ct. 279, 79 L. Ed. ___, it reiterated its approval of recourse in doubtful cases to the history of the art for the interpretation of claims. It is even more important in ascertaining the existence of invention. "Where the method or device satisfies an old and recognized want, invention is to be inferred, rather than the exercise of mechanical skill." Paramount Publix Corp. v. American Tri-Ergon Corporation, 294 U. S. 464, 55 S. Ct. 449, 454, 79 L. Ed. ___. Hobbs v. Beach, 180 U. S. 383, 392, 393, 21 S. Ct. 409, 45 L. Ed. 586; Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 403, 429, 430, 22 S. Ct. 698, 46 L. Ed. 968; Expanded Metal Co. v. Bradford, 214 U. S. 366, 381, 29 S. Ct. 652, 53 L. Ed. 1034; Dubilier Corp. v. N. Y. Coil Co., 20 F.(2d) 723, 725 (C. C. A. 2); R. Hoe & Co. v. Goss Printing Co., 30 F. (2d) 271, 274 (C. C. A. 2); E. I. Du Pont De Nemours & Co. v. Glidden Co., 67 F. (2d) 392, 395 (C. C. A. 2). We do not understand that the court has ever abandoned that test. We agree with the judge that the patent disclosed an invention.

The issue of infringement turns less upon the differences between the defendants' machine and the disclosure of the patent than upon the invalidity of claims 5 and 6 because of their form. They are quoted in the margin.^* There cannot be the slightest question that if they are valid, they are infringed. The defendant has taken everything which the Buonos contributed to the art, with mechanical variations too trivial to deserve discussion. They skip stitches by tilting the table; they tilt the table by an arm which is rocked by another arm in turn rocked by a cam, the mechanical equivalent of an eccentric. The cam is mounted on a second gear driven by a first gear, which a shaft drives. The parallelism with the disclosure is not complete in detail, but that is never necessary. The only debatable matter is of the language of the claims themselves; it is the old question of how far a claim may safely be cast in terms of function. Of the elements composing claim six we may count out at once those which serve merely to identify the machine of which the patent is an improvement. This covers the phrase, "blind-stitch sewing machine comprising a stitch forming mechanism"; also the concluding element, "means for forming a bight in the material which is being stitched while it is located on said pivoted device." Both of these elements the patent took over from the prior art and the claim need not describe them further. Davis Sewing Machine Co. v. New Departure Mfg. Co., 217 F. 775, 782, 783 (C. C. A. 6). In so far as the last element means that the old stitching mechanism is to stitch the work while it is on the table, that is not expressed in terms of function. The other elements of claim 6 except a single one are in mechanical terms referable to the disclosure, and are clearly not functional. The exception is, "operating means connected to said eccentric device and turning said pivoted device at predetermined intervals." This too is readily enough identified by the disclosure, and though it does speak in terms of function that is inevitable to some degree, if the claim is to have any generality whatever. The very test of equivalency is in terms of function, "the same result by the same means"; and it is only by recourse to that standard that a patentee can pass beyond the very details of his...