EH TATE COMPANY v. Jiffy Enterprises, Inc.

• Decision Date: 21 July 1961
• Docket Number: Civ. A. No. 25486,25504.
• Citation: 196 F. Supp. 286
• Parties: E. H. TATE COMPANY, Plaintiff, v. JIFFY ENTERPRISES, INC., Defendant. JIFFY ENTERPRISES, INC., Plaintiff, v. SEARS, ROEBUCK & CO. and E. H. Tate Company, Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

196 F. Supp. 286

E. H. TATE COMPANY, Plaintiff, v. JIFFY ENTERPRISES, INC., Defendant.

JIFFY ENTERPRISES, INC., Plaintiff, v. SEARS, ROEBUCK & CO. and E. H. Tate Company, Defendants.

Civ. A. Nos. 25486, 25504.

United States District Court E. D. Pennsylvania.

July 21, 1961.

Arthur H. Seidel and Marvin Comisky, Philadelphia, Pa., for Jiffy Enterprises, Inc.

Cedric W. Porter and John J. Moss, Boston, Mass., and Henry N. Paul and Robert B. Frailey, of Paul & Paul, Philadelphia, Pa., for E. H. Tate Co.

These cases were consolidated for trial. E. H. Tate Company is plaintiff in one case and intervening defendant in the other. Tate in C.A. 25,486 seeks a declaratory judgment that Margulis patent No. 2,809,001 (October 8, 1957) owned by Jiffy Enterprises, Inc., for a hanger is invalid. Jiffy in C.A. 25,504 sued Sears, Roebuck & Co. for infringement. Sears is one of Tate's customers and it is defending on behalf of Sears. The issue in the two cases is the same: the validity of Margulis '001.¹ It appears infringement is conceded, since the device sold by Tate is a "Chinese copy" of the device in suit.²

The device in suit is a nail-less picture hanger adapted to be supported on a wall without the application or use of a nail, screw, or other element which penetrates the supporting surface.³ The picture hanger "comprises a strip of fabric which is provided with an adhesive coating on one side, a flat supporting bar juxtaposed to a fold line on the strip of fabric, with its major faces juxtaposed to a face of the fabric. A line of stitching is provided to enclose the supporting bar. There are aligned apertures in the faces of the hem on the strip of fabric and the support bar. A hook having an integral tubular flange is provided with the flange extending from one side of the shank of the hook through the aligned apertures. The end of the tubular flange remote from the shank is swaged over so as to provide a completely operative and assembled picture hanger, whereby the hook can be swiveled in a plane parallel to the plane of the support bar."⁴ Plaintiff Jiffy so describes the structure in suit.

Defendant Tate describes the structure substantially the same but with, perhaps, more specificity: Margulis '001 is for an Adhesive Coated Cloth Picture Hanger which, as shown in the patent,⁵ shows a cloth strip 11, rectangular in shape, coated on its rear with a water activated glue, and folded to form a front flap 14 and a rear flap 15,⁶ and an intermediate hem defined by the fold line 13 and a transverse line of stitching 16. A metal bar 17 is positioned within the hem, and the bar 17 is provided with a central opening 18. The hook 19 provided with an integral flanged eyelet 20⁷ is the asserted inventive feature and is described in the patent⁸ as:

"A hook 19 which may be of metal or the like, such as brass, is pivotally secured upon support bar 17, by having a perpendicular integral tubular flange 20 inserted through hook-receiving opening 18 of support bar 17 and mating openings 26 and 27 on the juxtaposed faces of the hem. The rear end of flange 20 which projects somewhat beyond the rear opening 27 of the hem is flared, swaged or peened so as to retain hook 19 on hanger 10. This is readily accomplished, as tubular flange 20 is of relatively thin cross-section compared with the shank portion 21 and bight or bill portion 22 of hook 19. Hook 19 is secured in position by the flared outwardly turned rear portion of tubular flange 20 and the rear face of shank portion 21 adjacent the flange. The outside diameter of tubular flange 20 is smaller than the diameter of hook-receiving opening 18 and the flared portion of flange 20 does not engage strip 11 so tightly as to prevent pivotation of hook 19."

The purpose of providing the hook 19 with an integral flanged eyelet 20 is to permit the picture hanger to be more easily assembled and manufactured on a machine. This advantage is described in the patent:⁹

"This invention has as an object the provision of an improved wall hanger in which all of the advantages possessed by the construction set forth in my Letters Patent 2,647,711 are secured, yet which is of simpler construction and easier to manufacture."

Margulis '001 has five claims. Claim 1, which may be regarded as typical, reads:

"1. A nail-less hanger for pictures and the like including a flexible strip coated on its rear face with an adhesive coating and being overlapped upon itself along a transverse line of fold to provide a hem extending across the width of the strip, aligned openings in both faces of said hem, a transversely extending support bar positioned within the hem with its major faces juxtaposed with the faces of said hem, an opening in said support bar aligned with the aligned openings in the hem, a hook, said hook having an integral tubular flange extending generally perpendicularly from its upper end portion through the aligned openings in the hem and support bar, the end portion of said tubular flange remote from the remainder of the hook being flared outwardly and juxtaposed to its neighboring hem face, said tubular flange having an outside diameter sufficiently less than the diameter of said aligned openings in the strip and support bar, so that said hook may be swung in a plane closely paralleling the plane of the strip."

The patent in suit refers to previous Margulis patent No. 2,647,711 (August 4, 1953) which is likewise for an Adhesive Coated Cloth Picture Hanger. In earlier Margulis '711, the hook was swivelly mounted on the metal support bar 16 by means of a separate hollow rivet or eyelet 23.¹⁰ In the earlier patent, it is thus described:¹¹

"The metal hook 19 is secured in position by means of a hollow metal rivet 23 which extends through the hook opening 21, the opening 17 in the bar 16, and appropriate openings in the strip 11. The size of the opening 21 in the shank 20 and the inside and outside diameters of the rivet 23 are arranged so that the hanger hook is free to pivot to different positions as indicated by the broken line position of the hook in Figure 1."

Tate argues the sole significant difference between prior Margulis '711 and later '001 is that in the former the hook 19 is swivelled on a separate rivet or eyelet 23, inserted through the hole 17 in the metal support bar 16, while in '001 the hook 19 is provided with its integral flanged eyelet 20 which, in turn, is swivelly mounted in the hole 18 in the metal support bar 17. Thus, defendant Tate claims the function of the separate rivet 23 in the first patent and the integral flanged eyelet in the patent in suit ('001) is exactly the same: To provide a swivelled mounting for the picture-supporting hook in the metal support bar.

LEAHY, Senior District Judge.

1. The sole perceptible difference between Margulis '711 and Margulis '001 is the substitution of a hook with an integral flanged eyelet for a hook which swivels on a separate rivet or eyelet. This combination or integration of two separate pieces, a hook and eyelet, into one, a hook with an integral flanged eyelet, is the alleged invention embodied in the patent in suit. Jiffy claims that by combining the hook and eyelet into an integrated part certain advantages are achieved in the manufacture and assembly of the type of nail-less hanger in suit. Jiffy emphasizes it is these assembly problems that the alleged invention is intended to solve.¹² But, the patent in suit is a product patent, not a patent on a process of manufacture. It appears '001 attempts, in effect, to patent a process of manufacture by patenting the end product of that process. Slight changes made on the product which result in advantages in the process of manufacturing will not, alone, confer patentability on the product. Additional advances in the character or utility of the product itself are required.¹³ To test the validity of defendant's patent, e. g., additional advances in the character or utility of the product itself, it must first be determined if the patented device embodies any advances over the prior art and, moreover, if such advance passes the test of invention whether the subject matter would not have been obvious to one skilled in the art to which the invention pertains at the time it was made.^13a

2. Principal prior art for the patent in suit is the nail-less adhesive picture hanger of Margulis '711. Defendant asserts that the '001 picture hanger may be structurally distinguished from the '711 hanger because:

"(1) It is simpler since it includes only two metal members.

"(2) It does not include a rivet.

"(3) The wall thickness of the integral flange is less than the wall thickness of the shank of the hook.

"(4) The hole in the shank of the hook must be smaller than the hole in the bar and need not be present at all.

"(5) The integral flange extending from the shank of the hook rotates relative to the bar and acts as a bearing for the hook whereas the rivet in the prior art did not rotate.

"(6) The picture hanger of the present invention is lighter in weight.

"(7) The picture hanger of the present invention is thinner in transverse cross-section through the integral tubular flange.

"(8) There are no metal rubbing surfaces in the picture hanger of the present invention."¹⁴

These structural differences, it is claimed, result in the following advantages:

"(1) The hook is now easier to rotate.

"(2) The overall thickness of the picture hanger has been decreased so that now it is easier to interlock an eye of one picture hanger with the bill of the hook of another picture hanger in the manner shown in Figure 7 of patent 2,647,711 while having the eye and bill of the hooks identical in size.

"(3) It is now possible to mechanize the manufacture of the picture hanger of the present invention by use of automation thereby increasing the speed of production. Prior to the present invention, eighty picture hangers were manufactured per minute with four girls working on the production line. After the

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