In re Yarn Processing Patent Validity Litigation

• Court: U.S. Court of Appeals — Fifth Circuit
• Writing for the Court: JONES, THORNBERRY and COLEMAN, Circuit
• Citation: In re Yarn Processing Patent Validity Litigation, 498 F.2d 271, 183 USPQ 65 (5th Cir. 1974)
• Decision Date: 29 July 1974
• Docket Number: No. 73-2420.,73-2420.
• Parties: In re YARN PROCESSING PATENT VALIDITY LITIGATION. SAUQUOIT FIBERS COMPANY, Plaintiff-Appellee, v. LEESONA CORPORATION et al., Defendants-Appellants. KAYSER-ROTH CORPORATION (in its own name and d/b/a Kayser-Roth Hosiery Company and Kayser-Roth Hosiery Co., Inc.), Plaintiff-Appellee, v. LEESONA CORPORATION, Defendant-Appellant. LEESONA CORPORATION, Plaintiff-Appellant, v. The DUPLAN CORPORATION et al., Defendants-Appellees.

498 F.2d 271 (1974)

In re YARN PROCESSING PATENT VALIDITY LITIGATION.

SAUQUOIT FIBERS COMPANY, Plaintiff-Appellee, v. LEESONA CORPORATION et al., Defendants-Appellants.

KAYSER-ROTH CORPORATION (in its own name and d/b/a Kayser-Roth Hosiery Company and Kayser-Roth Hosiery Co., Inc.), Plaintiff-Appellee, v. LEESONA CORPORATION, Defendant-Appellant.

LEESONA CORPORATION, Plaintiff-Appellant, v. The DUPLAN CORPORATION et al., Defendants-Appellees.

No. 73-2420.

United States Court of Appeals, Fifth Circuit.

July 29, 1974.

COPYRIGHT MATERIAL OMITTED

Willis H. Flick, Miami, Fla., James H. Wallace, Jr., Nolan E. Clark, Washington, D. C., Robert F. Conrad, Ft. Lauderdale, Fla., William Schultz, New York City, for Leesona Corp.

L. A. Schroeder, Miami, Fla., for Warren Seem.

James L. Armstrong, III, James W. Crabtree, Miami, Fla., John J. McAleese, Jr., Plymouth Meeting, Pa., for Permatwist Co. et al.

William W. Beckett, Washington, D. C., Richard G. Schneider, Philadelphia, Pa., Henry Burnett, Miami, Fla., for Sauquoit Fibers Co.

Anthony F. Phillips, New York City, William K. West, John W. Malley, Washington, D. C., Paul B. Bell, Charles B. Park, Charlotte, N. C., for Duplan Corp. and Kayser-Roth Corp. et al.

David Klingsberg, New York City, Hugh Latimer, Washington, D. C., for Kayser-Roth Corp. et al.

Edward S. Irons, Mary Ellen Sears, Washington, D. C., for Celanese Co. and Fiber Industries, Inc., amicus curiae.

Before JONES, THORNBERRY and COLEMAN, Circuit Judges.

THORNBERRY, Circuit Judge:

The principal issue in this consolidated litigation is the validity of U.S. Patents numbered 2,803,105, 2,803,108 and 2,803,109, collectively called the "false twist" or "single heater" patents, which are presently owned by Leesona. The patents disclose both an apparatus and an efficient, economical means of texturizing synthetic thermoplastic yarns. The teachings of the patents laid the technological foundation for the development of double-knit fabrics. On a motion for summary judgment the district court, 360 F.Supp. 74, held the patents invalid. We find that there existed genuine issues of material fact which should have precluded summary judgment and therefore reverse.

The applications for these patents culminated many years of work on the part of the inventors, Nicholas J. Stoddard and Warren A. Seem. The men had extensive experience in the throwing industry, which is the business of processing yards consisting of continuous filament fibers. They conducted their first joint experiments in the mid-1930's, when Stoddard was working under Seem at the Georgetown Silk Company. They were separated in 1938 by Stoddard's promotion and transfer to another plant, although they continued to communicate. They were reunited in Philadelphia in 1944, where they resumed their experiments and formed a loose partnership between themselves as inventors and two others who acted as financiers, Fred Tecce and Harold Berger. Those loose arrangement was later formalized as the Permatwist Company, a partnership registered to do business in Pennsylvania.

With the financial support of Tecce and Berger, the inventors were able to construct and operate two successive bench models in 1944 and 1947. Experimentation with the latter model continued for several years. Then in 1950 Berger and Tecce purchased a throwing mill called Marionette Mills in South Coatsville, Pennsylvania, and the inventors moved their equipment from their basements to an enclosed space in the Marionette Mills plant. Seem and Stoddard then borrowed a forty-spindle demonstration model Fletcher uptwister, moved it to the plant, and converted ten of the spindle positions to single heater false twisters, completing the conversion in July, 1950. They experimented with this model until November, 1950, when they restored it to its original condition and returned it to its owner.

Based on their experience with the 1950 model, the Permatwist partners decided to build eight full-sized machines and operate them in a basement that was to be dug under the Marionette Mills plant. When it developed that sufficient supplies of nylon yarn would not be available, the partners decided to build only one machine instead. In early 1951 they began converting a 220-spindle Atwood uptwister, completing the job early in 1952. The machine was installed in the Marionette Mills basement and operated in secret.

On May 20, 1952, four representatives of Synfoam Yarns, Inc., visited the Marionette Mills plant and, after signing agreements not to divulge what they saw, were shown the 220-spindle machine in operation. After a few months of negotiations, Permatwist and Synfoam entered into an agreement on December 15, 1952, granting Synfoam a license to use the false twist process. More than a year later, on January 4, 1954, Seem and Stoddard filed applications for the patents in issue. On December 14, 1954, Leesona acquired the patent applications from the Permatwist Company, and the patents themselves issued on August 20, 1957.

The Four Phase Model

The points of American and Canadian patent law presented here are not altogether unambiguous. As an invention passes through different stages of development, from initial concept through patenting, the legal rights and duties of the inventor change. Although there exist legal terms of art to describe the various phases in the chronological development of an invention, their usefulness for analysis has been diminished both by their somewhat inconsistent application in the cases and by the secondary meanings and connotations they have acquired through long usage. Since we must not only analyze the American law but also compare it to Canadian, we find it useful to start by establishing a simple four phase model generally describing, in nonlegal terms, the relevant steps in the development of a typical invention.¹ We stress that we use this model for heuristic purposes only: we do not intend to create more legal doctrine but only to analyze existing doctrine as clearly as possible.

The earliest phase in the development of any invention is its mental conceptualization by the inventor, the time when the idea first dawns. This is typically followed in short order by the second phase, in which the inventor attempts to embody his idea in a working model or prototype. Phase two ends when he has succeeded in rendering his idea a reality by constructing a working model that substantially embodies the claims later to be patented. Then begins the third phase, in which the inventor experiments with his model so as to satisfy himself that it needs no further refinement and to prove its fitness for the intended purpose. Once this is completed the inventor is free to initiate the last phase of concern to us, in which he secures a limited legal monopoly to himself under the patent laws. This last phase is initiated by his application for the patent and terminates when the patent is finally issued. This is the general factual context of the legal issues before us.

The Canadian Litigation

The Canadian counterparts of the patents under review were attacked in the Exchequer Court of Canada by Ernest Scragg & Sons Limited. Scragg sought a declaration that Leesona's Canadian patents were invalid and also a declaration that Scragg's "Crimp Spin" machine and its use in the processing of textile yarns did not infringe any of Leesona's rights under the patents. Leesona denied Scragg's claims and counterclaimed for a declaration of validity and infringement, an injunction restraining the infringement and damages or an account of profits.

That suit was tried before President Thorson of the Exchequer Court. His approach was first to determine the precise extent of the monopoly granted by the patents, a task which involved a careful construction of their claims. He explained the principles of construction of the claims of a Canadian patent as follows.

It is a cardinal principle that the claims in a patent should be construed in the light of the common knowledge which a person skilled in the art to which the invention defined in the claims relates is assumed to have had as of the date of the invention for which the patent was granted, for the specification of the patent, including the claims with which it ends, is deemed to be addressed to such a person.

The state of the relevant art immediately prior to the date of the invention is part of the common knowledge which the addressee of the patent is assumed to have had. It is important, therefore, that the date of the invention should be determined.

President Thorson then proceeded to discuss the term "date of invention" as used in Canadian patent litigation. One definition was offered by Viscount Cave L.C. in The Permutit Company v. Borrowman, 1926, 43 R.P.C. 356, 359:

It is not enough for a man to say that an idea floated through his brain; he must at least have reduced it to a definite and practical shape before he can be said to have invented a process.

In Christiani & Nielsen v. Rice, 1930 S. C.R. 444, the Supreme Court of Canada states that

by the date of discovery of the invention is meant the date at which the inventor can prove he has first formulated, either in writing or verbally, a description which affords the means of making that which is invented. There is no necessity of a disclosure to the public.

Id. at 456. President Thorson then explained the term more fully.

It was not intended, in my opinion, that the test laid down in Christiani should be all-inclusive. It is clear, of course, that if an inventor can prove that he formulated a description of his invention, either in writing or verbally, at a certain date then he must have made the invention at least as early as that date. It is also clear that the requirement that there must be proof of the formulation of a description of the invention, either in writing or verbally, is neither apt nor necessary in the case of an invention of an apparatus where the

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