Earnshaw Knitting Co. v. William Carter Co.
| Decision Date | 31 January 1935 |
| Docket Number | No. 3680.,3680. |
| Citation | 9 F. Supp. 910 |
| Parties | EARNSHAW KNITTING CO. v. WILLIAM CARTER CO. |
| Court | U.S. District Court — District of Massachusetts |
Francis J. V. Dakin and James D. Colt, both of Boston, Mass., for plaintiff.
Emery, Booth, Varney & Townsend, Frederick L. Emery, and Irving U. Townsend, all of Boston, Mass., for defendant.
In this suit infringement of United States letters patent No. 1,852,993 is alleged. The defendant attacks the validity of the patent on the sole ground of lack of invention. It also denies infringement.
Statement of Facts.
1. On April 5, 1932, United States letters patent No. 1,852,993 were issued to the plaintiff as assignee of George F. Earnshaw upon his application filed January 16, 1928. The invention relates to an infant's garment commonly known as a "play suit." Its principal object is to provide a garment suitable for use as a play, romping, or bathing suit which exposes the body of the child to the air and sun so far as consistent with the dictates of modesty.
2. Four claims are involved. It will be sufficient to give the first claim, which is stated in the following terms:
The second claim embraces an additional element, namely, a fastening strap, secured to the back portion of one of the shoulder straps, and means for detachably securing the free end to the other shoulder strap.
The third and fourth claims differ from the first claim only by adding that the area not covered by the front panel and straps shall be completely (claim 3) or substantially (claim 4) open to leave the body exposed.
3. The elements, or features, common to all the claims are: A trunk portion; a pair of shoulder straps, each secured at one end to the trunk portion at the waist line and adjacent one side thereof and at its other end to the back of the trunk portion, said straps diverging downwardly at the front; a neck portion connecting the straps at the front thereof near their shoulder engaging portions; and a front shield or panel filling in the space between said straps, neck portion and trunk portion, said shield or panel being of a mesh formation sufficiently close to conceal the front upper portion of the body from view and yet leave the same exposed to the influence of sunlight.
4. The history of the proceedings in the Patent Office is pertinent. In the original application, five claims were made which were rejected on cited patents, whereupon these claims were canceled and claims 6, 7, 8, and 9 were filed covering the same invention. Of these four claims, claim No. 9 was allowed, the others rejected, and another reference to prior patents was noted. Applicant then filed another claim as No. 10, and amended claims 8 and 9.
The next Office action was a rejection of all the claims other than claim 9. This was followed by a communication from the applicant's solicitor under date of June 5, canceling claims 6, 7, and 10, amending claim 8, and adding a new claim as claim 11. At the same time, he submitted to the patent officials affidavits showing the sales that had been made between January, 1928, and June, 1929, of the garment disclosed in the application. In this letter the solicitor particularly stressed as novel features, patentably distinguishable from the prior art, the shoulder straps secured at each end to the trunk portion at the waist line thereof, a front shield or panel separated by said shoulder straps and neck portion "substantially free from trunk supporting strain and being of a mesh formation sufficiently close to conceal the front upper portion of the body from view and yet leave the same exposed to the influence of sunlight"; the other areas between the straps above the trunk portion being completely open to leave the body of the wearer above the trunk portion fully exposed except for said straps, neck portion, and front panel. And, of course, the solicitor laid particular emphasis upon the extraordinary commercial success of the garment.
Shortly after receipt of this communication, claims 8, 9, and 11 were allowed, and interference was declared between these claims and three claims taken from an application for a patent filed by one Redmond, an employee of the defendant. These interference proceedings were finally determined in favor of Earnshaw. In the meantime he had moved to add three additional claims, of which claim 12 was added as the fourth count in the interference proceedings. This claim covered the invention in somewhat broader terms than any of the other claims. During the course of the interference proceedings motions to dissolve, with supporting affidavits, were filed by Redmond. The ground alleged was want of patentable invention in all counts. The Examiner of Interference refused to entertain the motions, and his decision was upheld by the Board of Appeals. The interference proceedings were terminated on March 4, 1932, and the patent issued, as stated, on April 5, 1932.
5. Within the last two decades the effect of ultra violet rays upon the human body has engaged the attention of medical science. By 1925, physicians, nurses, and teachers were unanimous in proclaiming the benefits of sun rays directly upon the bodies of children, especially in the earlier years. In that year, the director of the Child-Hygiene Division in the Department of Agriculture pointed out in a published article that the value of sunlight for the treatment of children's diseases had been recognized since 1903 when Rollier opened his first clinic for heliotherapy in Switzerland.
In 1926, 1927, and 1928 the Home Economic Bureau issued bulletins in which information was disseminated relative to the beneficial effect of sun baths for children, and in these bulletins various types of rompers were illustrated, some of which were made of fabric more or less transparent. These bulletins and the activities of the Bureau contributed to the creation of a demand in the trade for garments for children's wear which would leave as much of the body exposed to sunlight as could be attained without offending the dictates of modesty.
6. In order to deal with defendant's contention that the patent in suit did not involve invention, it is necessary to consider the state of the art when Earnshaw entered it in May, 1927.
The first to enter the field seems to have been Jantzen Knitting Mills of Portland Ore., manufacturer of swimming suits. In 1926, this company manufactured and sold in small quantities bathing suits for small children which they advertised under the name of "sun suits." They were the conventional one-piece swimming suit with abbreviated trunks, no sleeves, low neck and with holes under the arms. They were modeled after the "speed suits," so called, manufactured by the company which had for its principal object greater freedom of movement by the swimmer when in the water. The company discontinued manufacturing these suits in 1927 because it found that the line was unprofitable.
During 1926 and 1927, government employees in the Bureau of Home Economics made and demonstrated certain styles of play suits, or rompers, which exposed to the sun generous portions of the infant's body. These had both a front and back panel with short straps buttoning on the shoulder. Some of them were made of semi-transparent material, such as voile. These garments were only used for illustrative purposes.
Evidence was offered regarding a product put on the market by another manufacturer of swimming suits, the Swim Easy Knitting Mills Company. The evidence is conflicting and does not come up to the required degree of proof necessary to enable the court to determine whether this product was before or after Earnshaw's invention. It is not unreasonable to infer that later types of the garments manufactured and sold by this concern imitated, rather than anticipated, Earnshaw.
A third manufacturer of swimming suits, the Climax Company, in the latter part of 1927 introduced into the trade a swimming suit which was advertised as a sun suit for children. There is evidence in this case tending to show that this concern had benefited by Earnshaw's work.
It does not appear that any of these attempts to supply the demand for sun suits succeeded in making any substantial impression upon the art. It is, moreover, significant that during the interference proceedings the activities of the Home Economics Bureau and these various manufacturers of knitted one-piece swimming suits were urged upon the Examiner in support of the motion to dissolve the interference referred to in paragraph 4. The Examiner was of the opinion that: "It is not apparent that it would lack invention to cut away all but the front panel, shoulder strips and neck portion and to substitute open mesh fabric in the front panel for the particular purpose of the present invention." He further observed that: "Assuming that the separate details of the counts as stated therein are old, it is not apparent that their adaptation and combination into a garment answering the counts is obvious or suggested."
7. Earnshaw's entrance into the art came about in this way. While in California in the spring of 1927, he visited a nursery school where he was advised of the increasing demand for sun suits for children, and immediately upon his return to plaintiff's factory he set about devising a play suit which he...
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