In re Yarn Processing Patent Validity Litigation

Decision Date25 April 1973
Docket NumberM.D.L. Docket No. 82,72-641 and 72-691.,Civ. No. 72-563
Citation360 F. Supp. 74
CourtU.S. District Court — Southern District of Florida


Henry Burnett, Fowler, White, Humkey, Burnett, Hurley & Banick, Miami, Fla., local counsel for Kayser-Roth. William K. West, Jr., and John W. Malley, Cushman, Darby & Cushman, Washington, D. C., counsel for Kayser-Roth.

William W. Beckett and Gene W. Stockman, Schuyler, Birch, Swindler, McKie & Beckett, Washington, D. C., and George W. F. Simmons, Rohm & Haas, Philadelphia, Pa., for Sauquoit Fibers Co.

Willis Flick, Blackwell, Walker, Gray & Powers, Miami, Fla., local counsel and Nolan E. Clark, James H. Wallace, Jr., Kirkland, Ellis & Rowe, Washington, D. C., general counsel for Leesona Corp.


ATKINS, District Judge.

Two motions for partial summary judgment of patent invalidity have been filed in this consolidated proceeding by the parties opposing United States Letters Patent 2,803,105, 2,803,108, and 2,803,109, and they have been the subject of thorough discovery and briefing almost from the time these cases were consolidated.1 The grounds upon which the motion is based are derived entirely from Section 102(b) of Title 35, United States Code, wherein it is provided:

A person shall be entitled to a patent unless—
* * * * * *
(b) the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States, . . . .

While this section reads simply enough, there is much case law both construing and applying these two standards that must be discussed before the Court can intelligently decide the question at hand. Fortunately in this instance the question presented is a relatively narrow one with most of the essential facts being either stipulated to or admitted. The real contest lies in the application of the patent validity and summary judgment standards to those essentially non-disputed facts. Based on the reasons more fully set out below, the Court is of the opinion that summary judgment must be granted in favor of Sauquoit and the New York "plaintiffs"2 declaring these "single heater" patents invalid.


It is appropriate at this point to detail the facts surrounding this critical period in the history of yarn processing, not so much for the purpose of showing that they are not in dispute, but rather to put the material facts in perspective.

Although Leesona now owns these patents, the applications for the three patents listed above hereinafter referred to as '105, '108, and '109 patents were filed by Warren A. Seem and Nicholas J. Stoddard on January 4, 1954, with the patents themselves issuing on August 20, 1957. Jointly characterized in many instances as the "single heater" patents, they disclose both an apparatus and various methods for processing thermoplastic yarns (i. e., polyamide substances such as nylon, orlon and dacron) to impart of the fluffiness, crimp, and elasticity characteristic of "false twist" yarns in a single, continuous, rapid fashion.3 A detailed discussion of the precise language of the various claims in each patent, and how that language would withstand the other tests of patent validity, is unnecessary at this juncture. When the charge of invalidity centers on the "public use" or "on sale" provision of § 102(b), as this summary judgment motion does, most of the technical ramifications of patent law are pretermitted, making this grossly simplistic explanation of false twisting sufficient for the Court's purposes.

The applications for these patents were the result of many years of work, both part and full-time, by Mr. Seem and Mr. Stoddard. The two men had extensive experience in the throwing industry4 prior to their work together on what finally culminated in the patents in suit. At one time in the middle 1930's Stoddard worked under Seem at the Georgetown Silk Company, and it was during this period that their experiments in this area were first conducted jointly. In 1938 they became separated because of Stoddard's promotion and transfer to another plant, although Seem has testified that communication between the two continued. They were reunited in Philadelphia six years later, at which time the experiments resumed and a loose partnership was formed between Seem and Stoddard, the inventors, and Fred Tecce and Harold Berger, the financiers. With this partnership arrangement set up, the two inventors were able to construct and operate two successive bench models between 1944 and 1947, the latter of which incorporated "the entire apparatus as a first step toward construction of a full-scale commercial size machine."5 Experimentation on the scale model continued for the next several years, during which time Berger and Tecce sold their hosiery mills and started a throwing operation called Marionette Mills.

After moving their equipment to a protected area at the Marionette location in 19506, Seem and Stoddard borrowed a demonstration up-twister for conversion into a full-scale production model and moved it into the plant. Ten of the forty spindle7 positions were converted to "single heater" false twisters with the conversion being completed in July of 1950. This machine was operated on an experimental basis for several months, but was dismantled and returned to its owner when the Permatwist partners decided to build eight full-size machines and operate them in the yet-to-be-constructed basement of Marionette. In fact only one machine was actually built—an Atwood 220 spindle up-twister—and moved to the basement. The machine was not completed until early 1952. About this same time Mr. Seem mentioned to a representative of Synthetic Yarns that he had developed this particular machine and the methods to operate it to produce stretch yarn from thermoplastic yarn in a continuous fashion,8 and a visit from four Synthetic Yarn representatives was arranged for May 20, 1952 at which time Permatwist "made it a point to have the machine covered and running and in real good shape with yarn so that the demonstration would be impressive." Following some further negotiations with Synthetic's owners over the next few months, Permatwist entered into an agreement on December 15, 1952 with Synthetic Yarn that provided Synfoam, Inc. with a license to use this false twist process.9


Before the facts, as summarized briefly above, can be interpreted under the § 102(b) tests, it is necessary to conclude that this early disposition is both possible and proper. Rule 56 of the F.R.Civ.P. provides that after a time period not herein relevant

. . . The judgment sought shall be rendered forthwith if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to a judgment as a matter of law. (emphasis supplied)

The Courts must be wary of granting motions for summary judgment unless both of these requirements are met because it naturally deprives the resisting party of the right to a full "trial" on the merits. However if the requirements are met, the motion should be decided. See Insurance Company of North America v. Bosworth Construction Co., 469 F.2d 1266 (5th Cir. 1972); Burleson v. Mead Johnson & Co., 463 F.2d 180 (5th Cir. 1972). It is admitted that neither of these cases involved the validity of patents, but the application of the rule would not, and should not, vary. Leesona cites Ag Pro, Inc. v. Sakraida, 437 F.2d 99, 101 (5th Cir. 1971), finding on remand rev'd, 474 F.2d 167 (5th Cir. 1973), for the proposition that "summary judgment is the rare exception, see Ronel Corporation v. Anchor Lock of Florida, Inc., 5 Cir. 1963, 325 F.2d 889, and not the rule in patent infringement cases." Of course that decision reversed a summary judgment determination of invalidity based on the test of "obviousness", a much more factually oriented inquiry than the § 102(b) tests. "Thus obviousness is a question of law determined against the factual background of the state of the prior art and the claimed improvement on it." Stamicarbon N.V. v. Escambia Chemical Corp., 430 F.2d 920, 924 (5th Cir. 1970), quoted with approval in Ag Pro, supra. (emphasis added). In the appropriate circumstances even the "obviousness" test may be applied in a summary judgment decision. See Inject-O-Meter Mfg. Co. v. North Plains Fertilizer & Chemical, Inc., 439 F.2d 1138, 1139 (5th Cir. 1971).

With these precautions in mind then, the Court is of the opinion that if summary judgment can ever be justifiable in patent litigation, it is justifiable here where the determination is not made against an uncertain factual background.10 See Strong v. General Electric Co., 434 F.2d 1042 (5th Cir. 1970), aff'g mem. 305 F.Supp. 1089 (N. D.Ga.1969), cert. denied, 403 U.S. 906, 91 S.Ct. 2207, 29 L.Ed.2d 681 (1971).


While the test set forth in § 102(b) is easy to comprehend, a short summary of its parameters is essential before applying it to the particular facts involved in this instance. The date that this decision revolves around is January 4, 1953—the "critical date". The statute allows an inventor one year's leeway following the completion of this invention to file the application for a patent, and in this instance the application was made on January 4, 1954. Prohibited under subsection b are both "sales" and "public uses", and a single instance of either before the critical date may result in an invalid patent. Consolidated Fruit Jar Company v. Wright, 94 U.S. 92, 24 L.Ed. 68 (1877); Hobbs v. United States Atomic Energy Commission, 451 F.2d 849, 857 (5th Cir. 1971); Strong v. General Electric Co., supra, 434 F.2d...

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