Jones Knitting Corp. v. Morgan

• Decision Date: 10 April 1964
• Docket Number: Civ. A. No. 25348.
• Citation: 244 F. Supp. 219
• Parties: JONES KNITTING CORPORATION, the Russell Manufacturing Company, Inc., Union Underwear Company, Washington Mills Company, West Knitting Corporation, Oneita Knitting Mills and P. H. Hanes Knitting Company, Plaintiffs, v. John E. MORGAN and John E. Morgan Patents, Inc., Defendants.
• Court: U.S. District Court — Eastern District of Pennsylvania

244 F. Supp. 219

JONES KNITTING CORPORATION, the Russell Manufacturing Company, Inc., Union Underwear Company, Washington Mills Company, West Knitting Corporation, Oneita Knitting Mills and P. H. Hanes Knitting Company, Plaintiffs, v. John E. MORGAN and John E. Morgan Patents, Inc., Defendants.

Civ. A. No. 25348.

United States District Court E. D. Pennsylvania.

April 10, 1964.

COPYRIGHT MATERIAL OMITTED

Roberts B. Larson and William R. Hinds, of Larson & Taylor, Washington, D. C., and Ernest R. von Starck, of Morgan, Lewis & Bockius, Philadelphia, Pa., for plaintiffs.

Henry N. Paul, Jr., Robert B. Frailey and Harold S. O'Brian, Jr., of Paul & Paul, Philadelphia, Pa., for defendants.

CALEB M. WRIGHT, District Judge.

This is a Declaratory Judgment action arising out of a single patent No. 2,839,909 issued to John E. Morgan on June 24, 1958 on an application filed May 16, 1957, for a "Knitted Fabric". The court has jurisdiction since the defendants reside in the Eastern District of Pennsylvania, and the action arises under the Patent Laws of the United States, Title 35 U.S.C., 28 U.S.C. § 1338.

On August 22, 1958, Morgan assigned his patent, together with all claims, demands and causes of action for past infringement to John E. Morgan Patents, Inc., a Pennsylvania corporation, having its sole place of business in Tamaqua, Pennsylvania. The business of the defendant corporation consists of offering and granting licenses and collecting royalties under the patent in suit.

Morgan is president of the defendant corporation and J. E. Morgan Knitting Mills, Inc. He and his wife own virtually all of the stock in both corporations.¹

The plaintiffs and the following named companies (all of which are hereinafter referred to as the "Plaintiff Group") are manufacturers of knitted goods:

Atlas Underwear Corporation Bennett Textile Company Pannill Knitting Company, Inc. Roanoke Mills, Inc. Standard Knitting Mills

The announcement of the issuance of Patent No. 2,839,909 (Morgan Patent) caused concern among manufacturers of circular knit winter underwear. Conferences were held in New York City by representatives of the companies including the plaintiff group. The conferences resulted in this suit being brought by the named plaintiffs with all of the plaintiff group helping to defray the expenses of the litigation.²

The plaintiff group by the Declaratory Judgment action seeks to have the patent declared null and void. The defendants assert a counterclaim for infringement of the Morgan patent which is denied by the plaintiffs.

There are 18 claims in the patent but the defendants have charged plaintiffs with infringing only claims 1, 2, 4-13.

In short, the issues raised by the pleadings are (1) Validity of the patent, and (2) Infringement. Infringement is not discussed because the patent is found to be invalid due to indefiniteness of the claims, existence of prior art, and lack of invention.

DISCUSSION

I. Indefiniteness of the Claims

The claims of the Morgan patent may be broken down as follows:

Claims 1-4 directed to a fabric;

Claims 5-13 directed to a method of knitting a fabric;

Claims 14-18 directed to a method of processing a knitted fabric.

The patent application was filed on May 16, 1957 and the patent was issued on June 24, 1958.³ The title of the Morgan patent is "Knitted Fabric". The specifications recite that the patent relates to the knitting of "air entrapping fabrics which are suited for use in the production of garments such as underwear and which, because of the cellular configuration or shape of the fabric is particularly adapted to provide warmth." It is also stated that "the invention is particularly directed to the production of light weight knitted fabrics * * * which have a multitude of air-entrapping cells formed therein, these cells being retained to continue the insulating excellence of the fabric dispite sic prolonged wear."⁴ At column 6, line 44 it is stated "These fabrics are, therefore, particularly adapted for underwear intended for arctic use. However, the utility of the knitted fabrics of the invention is not limited in this regard and these fabrics can also serve as the basis for sweaters, dresses and other articles of knitted outerwear."

The patent contains six drawings or figures. Fig. 1 shows a needle setup on a dial and cylinder machine for 2 × 2 rib knitting. Fig. 2 shows the knitting sequence for a particularly preferred "embodiment". Fig. 3 is incorrect since it does not show tuck stitches as described or claimed.⁵ Fig. 4 is an enlarged photograph of an actual fabric. Fig. 5 is the process used in finishing the fabric. Fig. 6 is an enlarged photograph of the fabric after being finished by the process shown in Fig. 5.

The term "heat insulating knitted fabric" appears in the preamble in each of the claims. The term "heat insulating fabric" is used once in the specifications. The term "heat insulating cellular knitted fabrics" is used once in the example. Nowhere in the patent is the term "heat insulating" specifically defined, although Mr. Lawson, Morgan's expert, did testify that Morgan used the term in a special sense. Lawson testified that from the reading of the Morgan patent, Morgan used the term "heat insulating fabric" as definitive of a fabric having air-entrapping cells to provide a construction of high warmth retention character, the tuck strands underlying the ribs of the fabric and functioning to brace and maintain the height of the ribs when the fabric is stretched or subjected to prolonged wear.⁶

The law requires that patent claims be described with such precision as to leave no doubt of the scope of the invention claimed. Whether or not the patent in suit is invalid because the claims are too indefinite depends primarily upon the meaning of the term "heat insulating" as used in the claims of the patent. A claim is indefinite when the line between what is covered by the claims and what is not covered is unclear. Helene Curtis Industries, Inc. v. Sales Affiliates, Inc., 121 F.Supp. 490 (S.D.N.Y.1954), aff'd 233 F.2d 148 (2 Cir. 1956), cert. den. 352 U.S. 879, 77 S.Ct. 101, 1 L.Ed.2d 80. Specifications are indefinite when they do not give adequate instructions to carry out the invention. See, Ellis "Patent Claims" § 313 (1949).

In General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 369, 58 S.Ct. 899, 901, 82 L.Ed. 1402 (1938) the Court stated:

"Patents, whether basic or for improvements, must comply accurately and precisely with the statutory requirement as to claims of invention or discovery. * * * The inventor must `inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.' The claims `measure the invention.' * * * In a limited field the variant must be clearly defined."

As stated by Mr. Justice Jackson in United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165, 170, 87 L.Ed. 232 (1942):

"The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field."

There is little doubt that one skilled in the art of knitting could follow the specifications of the patent and knit the Morgan fabric as disclosed in Fig. 4. But the fabric described in Fig. 4 is not the invention claimed; the invention is any heat insulating knitted fabric having air entrapping cells on both sides formed by a plurality of tuck stitches in the valleys between the ribs. Nor does a fabric knit in conformity with the knitting sequence set forth in Fig. 2 necessarily knit the Morgan fabric as shown in Fig. 4.⁷ Therefore, one must ask when is a cellular fabric knit as described in the patent a fabric within the claims of the invention. The answer to this seems obvious—when it is heat insulating. Both Mr. Lawson, Morgan's expert, and Dr. Shinn, the plaintiffs' expert, testified that practically all fabrics were heat insulating to some degree.⁸ If the term "heat insulating" or "heat insulating knitted fabric" is to mean something other than in its ordinary sense, then the special meaning must be clearly indicated in the patent itself. A patentee may define the terms used in the patent. Universal Oil Products Co. v. Globe Oil & Refining Co., 40 F.Supp. 575, aff'd 137 F.2d 3, (7 Cir. 1943), aff'd 322 U.S. 471, 64 S.Ct. 1110, 88 L.Ed. 1399. But where the term is not defined in the patent it will be taken in its ordinary sense. Chemical Construction Corporation v. Jones & Laughlin Steel Corporation, 311 F.2d 367 (3 Cir. 1962). It is also true that claims must be read upon the specifications, but if a term, as used in the claims, does not have any definitely fixed or determinable meaning in the ordinary sense, the term must be so anchored in the specifications as to leave no doubt as to the special meaning of the term. The court has looked in vain to find in the specifications or in the claims any hint that the term "heat insulating" was ever considered other than in the ordinary sense.

In the art of fabric manufacturing there has been no standard established to define what is a heat insulating fabric and what is not. Mr. Lawson testified that the American Society for Testing Materials does not have a permanent recognized test for this.⁹ In fact, the Navy, and other large customers of the knitting industry set their own standards as to what they deem to be heat insulating fabric.¹⁰ The term "heat insulating" as used in connection with knitted fabrics with air entrapping cells is a relative or comparative term and since there is no clear standard with which it can be...