Conmar Products Corp. v. Universal Slide Fastener Co.

• Decision Date: 11 January 1949
• Docket Number: No. 71,Docket 20960.,71
• Citation: 172 F.2d 150
• Parties: CONMAR PRODUCTS CORPORATION v. UNIVERSAL SLIDE FASTENER CO., Inc., et al.
• Court: U.S. Court of Appeals — Second Circuit

172 F.2d 150 (1949)

CONMAR PRODUCTS CORPORATION v. UNIVERSAL SLIDE FASTENER CO., Inc., et al.

No. 71, Docket 20960.

United States Court of Appeals Second Circuit.

January 11, 1949.

Davis, Hoxie & Faithfull, James & Franklin and William H. Davis, all of New York City (Maxwell James, John Hoxie and Harold James, all of New York City, of counsel), for appellant.

Pennie, Edmonds, Morton & Barrows, Morris Kirschstein, and George E. Middleton, all of New York City, for Universal Slide Fastener (Serval, Inc.) and another.

Before L. HAND, Chief Judge, and AUGUSTUS N. HAND and CLARK, Circuit Judges.

L. HAND, Chief Judge.

The plaintiff appeals from a judgment so far as it dismissed its complaint for the infringement of Claims 43, 44, 45, 47, 48, 49 and 52 of Patent No. 2,201,068, issued to George Wintritz on May 14, 1940, for the infringement of Claims 1, 2, 4, 9, 10, 11, 17, 21, 22 and 23 of Patent No. 2,221,740, issued to Frederick Ulrich on November 12, 1940; and upon a third cause of action for inducing the plaintiff's employees to divulge its trade secrets. The art to which both the patents and the trade secrets belong was that of "slide fasteners," or "zippers." These date from the invention of a Swede, named Sundback, who in 1914 filed his first application in this country, which issued in Patent No. 1,219,881 on March 20, 1917, a patent which substantially dominated the art until it expired in 1934; and although improvements appeared from time to time before that date, nearly all those relevant to this action were filed about that time. The "zipper" is in such widespread use that we shall assume an acquaintance with it, and confine our statement to the processes which are the subject of this action. Two methods of making the metal parts — "elements" — and of fastening them to the tapes to make "stringers," had been in use before Wintritz filed his application in October, 1934. One of these was to make the "elements" separately and feed them from a hopper to the tape to which they were to be attached; the other was to "coin" or to "stamp" the "elements," feed them to the tape, and attach them — all in a single machine. Wintritz's patent was a variant; one machine "coined" or swaged out of a piece of wire the "elements" as "embryos" in a continuous strip; another machine fed the wire so "coined" to the tape where at one stroke a punch finished the fabrication of that "element" which was next to the end, and cut from the strip the end "element," which was at the same time clamped upon the tape. Ulrich was a later inventor; his disclosure was of a method and a new "strip"; it was an improvement upon Wintritz, the chief purpose of which was to eliminate waste metal. The cause of action for inducing the betrayal of the plaintiff's trade secrets we defer for the moment.

Wintritz's Patent

Claims 43, 44 and 45 of the Wintritz patent were for the machine which feeds the partially formed "elements" to the tape, completes, cuts and attaches them. They depend, not upon the details of the mechanism which does this, but upon the succession of steps which begins with "a connected series of embryo fastener elements" and ends with the "elements" clamped upon the tape. The "rolling machine," which is not a part of these claims, has already completed the "embryos," except for the metal which remains between the "jaws"; and the "elements" remain all in a continuous strip. The strip is intermittently advanced, pausing as the end "element" straddles the edge of the tape, which is set vertically in its path. At that moment a punch descends upon the strip, and with a single stroke cuts off the end "element" and punches out the metal left between the "jaws" of the "element" just behind it. The "jaws" of the end "element," astraddle of the edge of the tape, are then pressed together, and that "element" is clamped in position. By a separate mechanism the tape is then moved one step upward; and the "strip" is moved one step forward, the "jaws" of the "element," which have just been freed of its intervening metal, now straddling the tape. This completes the cycle.

The defendant's chief reliance to invalidate these claims is Patent No. 2,169,176 to Noel J. Poux, applied for on December 16, 1933, and issued on August 9, 1939. The claims of this patent were for a method of making a continuous strip of "elements," and for the strips themselves; and the chief difference between its strip and Wintritz's, when Wintritz's emerges from the "rolling machine," is that Wintritz has only struck up the outlines of the "embryo," leaving in place the metal between the "jaws," while Poux in one way or another has almost completely opened the "jaws." As a result, when the "element" next to the end is beneath the punch, all that remains to be cut away is a narrow piece of metal connecting the ends of the "jaws." Poux's punch at once cuts off the last "element," and cuts away this connecting piece in the following "element." Another mechanism clamps the "jaws" to the tape in substantially the same way as Wintritz.

Poux did not describe the machine in detail which was to advance the strip, drive the punch, and clamp the "elements" to the tape; as we have said, his disclosure was only of a method and of the strip. However, it was permissible for him to presuppose as part of his disclosure whatever was within the knowledge of the art at the time; and the examiner must have supposed that there existed accessible mechanical trains to make practical the disclosure as it stood; else he would not have passed it. It is true that Poux was not a part of the prior art when Wintritz filed his application; but he was a prior inventor, and the validity of Wintritz's invention depends upon the same considerations as though Poux had been in the prior art: i. e., whether the steps he took beyond Poux, — his variations upon Poux's theme, — were of themselves an invention. The only change was that in Poux's prefabricated strip the "embryos" had come a little nearer to maturity, so to say; part of the metal between the "jaws" had already been removed. The variant at once strikes an observer as being of a kind which any art throws up in its inevitable proliferation; and, although such impressions are often unreliable, and should always yield to any evidence drawn from the history of the art, here there is no such corrective, for Poux's disclosure did not become public until after Wintritz had filed his application. We should not be justified in ascribing any greater invention to Wintritz's advance beyond Poux than an untutored appraisal gives it.

The only basis for even a plausible argument is that the "jaws" in Poux must be distorted, because he first punches or cuts out part of the metal to form them, and later "coins" or swages the recesses. This stands only upon the opinion of the plaintiff's expert that this must occur because the recesses are so close to the "jaws"; for nobody professes to have observed anything of the sort; and even were the defect demonstrated, the advance would not be great enough to base a patent upon. However, it is an unwarranted limitation upon Poux's disclosure anyway, because in one form of his invention (Figures 30 and 31), he declared that the "jaws" might be formed after the recesses. The plaintiff answers that in this form the specifications disclose a slot made in advance of the recess, and later expanded to make the "jaws." The answer will not serve. The "coining" of the recess may distort the slot, but the plaintiff certainly did not prove that, after the punch, 116 of Figure No. 31, had fashioned the "jaws" out of the slot, any distortion produced in the slot by the formation of the recess would remain in the "jaws." The argument appears to us no more than a bit of expert's ingenuity; and we hold Claims 43, 44 and 45 invalid.

The plaintiff does not seek to support Claims 47 and 48 because they contain those particular elements, which on their face appear to distinguish them from the immediately preceding claims (47, by the single cam shaft and the "counter"; 48, by the lightness, smallness and shortness in stroke of the machine). The argument is that, since Poux did not disclose any machine for making his strip, Wintritz was the first inventor to disclose a complete machine which secured the advantages of the new method. As we have already said, the very grant of Poux's patent presupposes that the examiner thought it practicable as it read; and we are not confined to that presumption. Sundback's patent of 1920 — No. 1,331,884 — shows adequate mechanisms to feed and attach the "elements" to the tape, although these are disclosed in combination with the "coining" or swaging processes which operate upon the wire and form the "embryos." The plaintiff replies that the difficulty is just that: Sundback's machines did combine the two operations, and it is the separation of the two which is the kernel of Wintritz. That argument, even if Wintritz had been the first to divide Sundback's process into two, would be of doubtful validity; but, taken merely as a conception, Poux was the prior inventor, for Poux's disclosure was for a process in two separate steps. A competent workman in the field who wished to follow Poux would have found the means at hand in Sundback's machine. These claims are also invalid.

As to Claims 49 and 52, we have nothing to add to what we said in Metallizing Engineering Co. v. Kenyon Bearing & Auto Parts Co., Inc.,¹ and we take this occasion to reaffirm the doctrine there laid down. In spite of the repeated admonitions of the Supreme Court that the denial of a petition for certiorari is not to be taken as indicating approval of the decision below, we cannot avoid attaching some significance to the denial in that case. We had very frankly overruled at least one of our former decisions, and we had deliberately refused to follow the Court of Customs and Patent Appeals; the petition was presented with the utmost...