Chicopee Mfg. Corp. v. Columbus Fiber Mills Co.

• Decision Date: 27 June 1958
• Docket Number: Civ. A. No. 631.
• Citation: 165 F. Supp. 307,118 USPQ 53
• Parties: CHICOPEE MANUFACTURING CORPORATION, Plaintiff, v. COLUMBUS FIBER MILLS CO., Inc., Defendant.
• Court: U.S. District Court — Middle District of Georgia

165 F. Supp. 307

118 USPQ 53

CHICOPEE MANUFACTURING CORPORATION, Plaintiff, v. COLUMBUS FIBER MILLS CO., Inc., Defendant.

Civ. A. No. 631.

United States District Court M. D. Georgia, Columbus Division.

June 27, 1958.

Morgan, Finnegan, Durham & Pine, New York City, William D. Denson, Washington, D. C., Charles A. Harris, New Brunswick, N. J., Foley, Chappell, Kelly & Champion, Columbus, Ga., for plaintiff.

Keith, Bolger, Isner & Byrne, New York City, Wilkinson, Mawhinney & Theibault, Washington, D. C., Swift, Pease, Davidson & Chapman, Columbus, Ga., for defendant.

BOOTLE, District Judge.

By the complaint as amended, the plaintiff alleges that the defendant has infringed four patents issued to and owned by the plaintiff and seeks an accounting and judgment for profits and injunctive relief. The defendant denies the validity of all of the patents upon various grounds, and denies infringement except only as to one of the design patents. The defendant also, by way of counterclaim, prays for a declaratory judgment to the effect that all of the said patents are void and that three are not infringed.

The Court, having tried the case without a jury and having given careful consideration to the great volume of testimony adduced orally and by depositions and to the written and oral arguments of able counsel on both sides, now makes and incorporates in this memorandum opinion its findings of fact and conclusions of law.

Plaintiff and defendant are textile companies presently competing with each other and with a large number of other companies in the field of manufacturing and selling plastic fabrics for use as automobile seat covers.

Of the four patents involved, two are mechanical or product patents and two are design patents. On August 7, 1956, Letters Patent No. 2,757,437 were issued to plaintiff upon the joint application of Harold P. Faris and Bernard R. Koenig (herein called the Faris patent), and on the same day Letters Patent No. 2,757,436 were issued to plaintiff upon the application of Jonathan Ferrell Nicholl (herein called the Nicholl patent). Both the Faris patent and the Nicholl patent were applied for on March 31, 1955 and each was for an alleged invention in puffed fabrics. U. S. Letters Patent Nos. Des. 178,456 and 178,462 were also issued to plaintiff on the same date the product patents were issued, August 7, 1956. These patents will be discussed in the order above named, much of what is said as to the Faris patent being also applicable to the Nicholl patent and the two design patents being discussed jointly.

Patentability of Faris Invention

The Faris patent is being discussed first because it has a longer history than the others. Both it and the Nicholl patent relate to woven fabrics having puffed portions. It is claimed that the puffs are both useful and ornamental, useful in that they provide space for air circulation thus imparting "breathing" qualities and coolness to the fabric, and ornamental in that they provide an attractive three-dimensional appearance. The patent contemplates a fabric made predominantly of thermoplastic material, the fabric to be puffed and made three dimensional in that certain loosely attached or "floater" threads or filaments are used on the under side of the fabric which floaters have a higher shrinkage propensity upon the application of heat than do the threads in the main body causing those floaters to shrink to a greater extent than the main body and thereby causing the main body to buckle or puff. The specifications say in part: "The thermoplastic, heat shrinkable floats, on heating, deform where they intersect the main body of the fabric, which helps to retain the puffs in their desired form. The retention of the puffs is further enhanced wherein the main body is also thermoplastic, due to the setting or hardening of the main body of the fabric on cooling", and again "the puffs are retained in the fabric body in use, due to the setting of the main body, including the puffed portions after the shrinking operations, by the formation of crimps in the floats or shrinkers where they intersect the main body and by the adhesion of the floats to the main body where they intersect said body at points."

The claims set out in the Faris patent are:

"1. A woven fabric comprising a main body consisting predominantly of interwoven thermoplastic warp and weft filaments and having sharp and accentuated puffs which are retained during use of said fabric, and filaments heat-shrunken from thermoplastic heat-shrinkable filaments having higher shrinkage characteristics on the application of heat than the filaments forming the main body of the fabric, said heat-shrunken filaments being floated predominantly on the back of the main body of said fabric and across the puffs.

"2. A woven fabric in accordance with claim 1, wherein at least about 75% of the total lengths of said heat shrunken filaments are floated on the back of the main body of said fabric.

"3. A woven fabric in accordance with claim 1, wherein the heat-shrunken filaments intersect said main body to define the borders of said puffs.

"4. A woven fabric in accordance with claim 3, wherein short lengths of the heat-shrunken filaments are floated over the face of the main body of the fabric.

"5. A woven fabric in accordance with claim 1, wherein the main body is heat set."

Plaintiff makes no pretension to being the first to discover puffed fabrics, or even puffed fabrics containing thermoplastic threads or filaments. Moreover, the Faris patent itself says that "* * the main body of the fabric is of a well known woven structure, wherein, looking at the face of the fabric as in Fig. 3 the filler or weft threads are alternately woven under two and over one of the warp threads." In plaintiff's brief furnished to this Court, plaintiff's able counsel with commendable frankness and in order to arrive at the heart of the issue, says, "Three-dimensional fabrics and specifically puffed fabrics as such were old and well-known long before the Faris invention. The creation of puffs by shrinking treatments, including shrinking by heat, also was known. Moreover, the various types of weaves shown in the patent and exemplified in various embodiments of the patented fabrics are old and well-known."

For the validity of the Faris patent, therefore, the plaintiff relies upon a combination of old and well-known elements and says that such combination constitutes an improvement of the old and well-known fabrics.

The specifications state in part: "In order to overcome the foregoing difficulties in producing puffs sharp and accentuated and in retaining the puffs when the fabric is in use through shrinkage, wearing, tearing, etc. confronting the user of the prior puffed fabrics, we have discovered the present invention. Our novel puffed fabrics possess sharp and accentuated puffs and the patterns produced by said puffs have a highly attractive three-dimensional appearance. Advantageously, the puffs of our fabrics are permanently retained so that the desired pattern design is preserved after a long period of use." Thus plaintiff's position in a nutshell is that the result of the Faris invention can be summed up as the production or the achievement of a puffed fabric having sharp and accentuated puffs which are truly permanent in and of themselves.

In studying the Faris patent we are studying a cloth, the nature of its weave, the threads from which it is made and the properties of those threads which cause the cloth to have a puffed form. The claims of the Faris patent are to a product and not to a method of weaving or puffing or making a cloth.

I make the following specific findings of fact and conclusions of law, the findings being numbered and the conclusions being lettered.

1. Faris and Koenig made the development here alleged as the invention of the Faris patent in the second quarter of 1947.

2. The development of Faris and Koenig was a puffed fabric having a body of saran filaments with polyethylene shrinker threads so that heat after weaving would cause a puff by reason of the relative difference in the shrinkage of polyethylene and saran, polyethylene having the greater shrinkage.

3. There is no substantial evidence that the industry or any part thereof had at the time of the development of Faris and Koenig any pronounced problem before it or had made any effort to solve any problem which had long defied it. Such proof as exists is limited to experiments of the patentees.

4. The puffed fabrics of Faris and Koenig did not meet any unsatisfied wants or create any immediate commercial interest despite plaintiff's efforts to create such interest.

5. The weave and general thread arrangement of the fabrics of Faris and Koenig was not original with them or new in 1947, but was a routine adaptation of known textile construction.

6. The use of shrinker threads or yarns floated across the back and across the face of the body of a fabric was old prior to 1947 and was a well-known device at the time Faris and Koenig made their alleged invention.

7. The use of shrinkers "floated predominantly" on the back of the main body and across the puffs (Claim 1) and having "at least 75% of their total length floated on the back of the main body of the fabric" (Claim 2), "said shrinkers intersect(ing) said main body to define borders of said puffs" (Claim 3) and having "short lengths" "floated over the face of the main body of the fabric" (Claim 4) was old prior to 1947 and prior to any alleged inventions made by Faris and Koenig. (See the puffed fabrics of Posselt, (Fig. 715, page 143, Item 24 of D-14), and Watson (Fig. Q, page 97, Item 23 of D-14) and D-88 and D-89, Lucien Forestier Corporation fabrics. The testimony of Goldberg (pages 1100-1101) establishes that the rayon shrinkers on D-88 and D-89 "float predominantly" on the back of the main body and across the puffs, and "at least 75%" of their total length on the back of the main body "int...