Eastern Venetian Blind Co. v. Acme Steel Co., 6176.

• Decision Date: 05 April 1951
• Docket Number: No. 6176.,6176.
• Citation: 188 F.2d 247
• Parties: EASTERN VENETIAN BLIND CO. v. ACME STEEL CO.
• Court: U.S. Court of Appeals — Fourth Circuit

188 F.2d 247 (1951)

EASTERN VENETIAN BLIND CO. v. ACME STEEL CO.

No. 6176.

United States Court of Appeals Fourth Circuit.

Argued January 8, 1951.

Decided April 5, 1951.

John Vaughan Groner, New York City (Fish, Richardson & Neave, New York City, William H. Webb, Morton Burden, Jr., Pittsburgh, Pa., and Morton M. Robinson, Baltimore, Md., on the brief), for appellant.

Glen E. Smith, Harold Olsen, and Edward R. Johnston, Chicago, Ill. (R. Dorsey Watkins, Baltimore, Md., on the brief), for appellee.

Before PARKER, SOPER and DOBIE, Circuit Judges.

DOBIE, Circuit Judge.

Acme Steel Company (hereinafter called Acme) instituted in the United States District Court for the District of Maryland, against The Eastern Venetian Blind Company (hereinafter called Eastern) a civil action for patent infringement. The four patents in suit, owned by Acme and all covering slats for Venetian blinds, were in chronological order: (1) Wilson, No. 2,294,434, (1942) (hereinafter called First Wilson); Morse, No. 2,315,640, (1943); Hunter, No. 2,337,047, (1943); and Wilson, No. 2,338,678, (1944) (hereinafter called Second Wilson).

Infringement of all four patents was admitted by Eastern, but Eastern attacked the validity of all the patents and interposed other defenses. The District Court held all the patents valid and infringed, and decided against Eastern on all the defenses interposed by Eastern. The case is before us on Eastern's appeal.

We first consider the inherent validity of the four patents in suit, apart from the defenses interposed by defendant — Acme's alleged misuse of the patents to secure a monopoly of unpatented material and the defense that Acme is foreclosed from any relief on the ground of laches and estoppel.

First Wilson, No. 2,294,434, presents, we think, the clearest case of validity of any of the patents in suit. This is a method and apparatus patent for forming Venetian blind slats and material therefor. This patent is described as follows in the District Judge's opinion: "As stated in this patent, the invention which it is alleged to embody involves the discovery that metal Venetian blind slats, having a concave cross section, may be quickly and economically formed by a rolling and bending process which is carried out in two stages, in the first of which the metal strip is stretched in the region between its edges, leaving the edges substantially unstretched; while in the second stage the metal is bent transversely and the edges are stretched, thus producing a properly concave straight strip having parallel edges." 93 F.Supp. 234. We think that the two-step process of first deliberately producing the buckling of the slat by center stretching and then removing the buckle by edge stretching, and the mechanism for carrying out this two-step process was entirely new. Its commercial success should also be considered to resolve any doubts as to its novelty and utility.

There is not merit in Eastern's contentions that this patent is a mere aggregation of known elements or that there is insufficient disclosure in the claims and specifications of the patent. Nor is this patent invalid under the prior art. There is nothing in Potter, Westaway, Bailey or Ainsworth which in reality could be said to read on First Wilson.

We think the Morse patent, No. 2,315,640, is invalid for lack of invention. There are two claims in this patent which are very brief and which we think are too broad. These two claims read as follows:

"1. A metal Venetian blind slat comprising a strip of material having a single convex-concave curve from edge to edge, the curve being about a single center, the material being normally substantially straight in a longitudinal line, and the material having sufficient resilience to be coiled upon itself and when released to resume its original, substantially straight form by its inherent resilience.

"2. A metal Venetian blind slat comprising a strip of material of single thickness from edge to edge and continuously and gradually curved from edge to edge, the material being normally substantially straight in a longitudinal line and of sufficient resilience to be coiled upon itself and when released to resume its original, substantially straight form by its inherent resilience."

This is a product patent. All that Morse really contributed was a requirement that the steel should be resilient so that when coiled, it would spring back to its original shape. While none of the prior patents seemed to specify in precise terms that the steel should be resilient, this is rather implied in the prior art and one skilled in the art would conclude that the more resilient the steel, the better it would be suited for Venetian blind slats. As we said in Goldman v. Polan, 4 Cir., 93 F.2d 797, 799: "It is well settled that `it is not invention to substitute superior for inferior materials.'" See, also, Slayter Co. v. Stebbins-Anderson Co., 4 Cir., 117 F.2d 848, 851. In the Farrand product, though it is in a somewhat different field, there is the requirement that the metal be sufficiently flexible to permit its being rolled or coiled, its stiffness and resiliency being sufficient to cause it to remain in, or to return to a straight or unrolled condition, when it is released or free to move. Stiffness and resiliency are characteristics of high carbon steel. Particularly germane in the prior art here is the Moore patent, No. 1,949,653, which discloses a metal slat strikingly similar to Morse. Also might be cited here the Buck, the Ainsworth and the Potter patents. The claims of Morse are not directed to any combination but rather to a single homogeneous article, and see again the Goldman case, where we said: "it is not invention to apply an old material to a new or analogous use or subject." Finally, the very broad claims of the Morse patent are not appreciably limited by the rather brief specifications.

We think the Hunter patent, No. 2,337,047, is valid. This is a method and apparatus patent. Hunter's use of die blocks set at different angles is sufficiently novel to constitute invention. In the prior art, there is nothing similar to Hunter with the exception of First Wilson, and Hunter's mechanism and process present patentable differences from First Wilson. Any conflict between Hunter and First Wilson is academic for the purposes of this suit, since both patents are owned by Acme. Hunter proceeds on the theory of starting with more perfectly formed steel than Wilson and asserts that the Hunter die blocks, compared with the First Wilson crowned rollers, provide an improved method of selectivity stretching as well as easier adjustability of the amount of stretch. We find no merit in Eastern's contentions that Hunter was not really the inventor and that Hunter involves inadequate disclosure.

Claim 3 of Hunter (a typical apparatus claim) and Claim 8 of Hunter (a typical method claim) are here set out:

"3. The combination in apparatus for stretching a longitudinal portion of a long substantially flat metal strip, of a plurality of sets of die blocks each having a longitudinal passage therethrough which is of such non-planar cross section transversely of the strip that said strip may be moved through said passages without affecting the permanent transverse forming of the strip, said passages in said die blocks being relatively inclined longitudinally.

* * * * * *

"8. The method of producing a substantially flat elongated metal strip having its central portion elongated with respect to its edge portions, which consists in feeding the strip endwise and maintaining longitudinal tension therein while moving the strip through a plurality of successive longitudinally straight, transversely bowed confining passages which are relatively inclined longitudinally of the strip, maintaining the transversely acting stresses in the strip during said movement below the elastic limit of said metal, and compelling different portions of the strip which are laterally displaced from each other to follow paths of different lengths in passing from one of said passages to the other."

Second Wilson, No. 2,338,678, appears to us to be a valid patent. This is a method and apparatus patent, designed as an improvement on First Wilson. This improvement consists essentially of adding a third stage to the two-stage process of First Wilson. Under this third stage, the transversely curved strip material, after passing through the forming rolls of the second stage, is flexed in a direction transverse to its line of travel, whereby it becomes buckled or progressively flattened by the removal from its successive portions of a large part of the transverse curvature that had been imparted by the forming rolls. After passing through the flattening operation, the transverse curvature returns, but to a lesser degree, to the strip, due to its resiliency. In this manner a greater degree of curvature is removed from the strip material which has a greater thickness, thus producing the result that the strip material is caused to assume approximately the same transverse curvature. There is nothing in the prior art that anticipates this disclosure. Second Wilson seems to embody a rather clear advance over First Wilson and Hunter, and there is certainly nothing anticipatory in Morse. There is no merit in the defense here again asserted that Second Wilson is a mere aggregation as opposed to a combination. We think the District Judge was right in upholding the assertion that Second Wilson produces a uniformity of the lateral arc in a manner not previously disclosed. Nothing in the prior art discloses that by merely changing the direction of the strip, its gauge would then be flattened, but that when released the strip would snap back with a uniform lateral arc to a straight longitudinal form.

The defendant seeks to escape the effects of its infringement by setting up the contention that Acme has not come into court with clean hands in that it has established a...