Jones Knitting Corporation v. Morgan

• Decision Date: 18 May 1966
• Docket Number: No. 15360.,15360.
• Citation: 361 F.2d 451
• 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, v. John E. MORGAN and John E. Morgan Patents, Inc., Appellants.
• Court: U.S. Court of Appeals — Third Circuit

361 F.2d 451 (1966)

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, v. John E. MORGAN and John E. Morgan Patents, Inc., Appellants.

No. 15360.

United States Court of Appeals Third Circuit.

Argued December 7, 1965.

Decided May 18, 1966.

Rehearing Denied July 7, 1966.

Robert B. Frailey, Philadelphia, Pa. (Henry N. Paul, Jr., Stuart S. Bowie, Philadelphia, Pa., Paul & Paul, Philadelphia, Pa., of counsel, on the brief), for appellants.

Roberts B. Larson, Washington, D. C., and Ernest R. von Starck, Philadelphia, Pa. (William R. Hinds, Andrew E. Taylor, Larson & Taylor, Washington, D. C., Morgan, Lewis & Bockius, Philadelphia, Pa., on the brief), for appellees.

Before KALODNER, Chief Judge, and MARIS and FORMAN, Circuit Judges.

KALODNER, Chief Judge.

Plaintiffs, a group of manufacturers of knitted goods, instituted this declaratory judgment action seeking a declaration of the invalidity of patent No. 2,839,909 issued for a knitted fabric, method and process of manufacture to the defendant John E. Morgan on June 24, 1958. Morgan, who had made the application on May 16, 1957, assigned his patent rights to the corporate defendant, John E. Morgan Patents, Inc.

The defendants denied invalidity and asserted a counterclaim, in Count I, for damages for infringement by all but one of the plaintiffs, and, in Count II, for treble damages by reason of a group boycott by all plaintiffs in violation of the Sherman Act, 15 U.S.C. § 1.

The district court held the patent invalid. 244 F.Supp. 219 (E.D.Pa. 1965). It found that the plaintiffs had engaged in an illegal group boycott, but concluded that since the patent was invalid, the patentee suffered no damage. 244 F. Supp. 235 (E.D.Pa.1965).

This appeal followed.

On review, we are of the opinion that the patent involved is valid, except claims 14-18 insofar as they relate to a process for finishing the knitted fabric. As to those claims, it is admitted that the process described was already known in the prior art.

The patent involved, called the "Morgan Patent", is for a knitted fabric which because of its light weight and warmth is particularly suited for use in the production of such winter garments as "thermal underwear". It is for a broad rib fabric knitted on "weft" (circular) knitting machines as opposed to "warp" knitting machines and is identifiable by the multitude of air-entrapping cells which are on both sides of the fabric. It is claimed that these cells keep their shape despite prolonged wear. By providing dead air spaces, it is claimed that the fabric achieves an enhanced insulating quality.

The sides of the air-entrapping cells are formed by the longitudinal ribs of the fabric; multiple tuck stitches form the bottom and top walls of these cells. These tuck stitches are utilized to break up the valleys and ribs of the broad rib fabric into individual air-entrapping cells.¹ In the words of the patent claim "when these tuck stitches are `knitted off' the loops so formed are stretched between adjacent longitudinal ribs and function to draw these ribs together at spaced apart points along the length thereof. This serves to accentuate the cellular construction which is produced. At the same time, the tuck strands underlie the ribs and function to brace and maintain the height of these ribs when the fabric is stretched or subjected to prolonged wear." Additionally, the patent teaches that by knitting a tight fabric with heavy yarn this will aid the cells in keeping their three-dimensional character.

Prior to the Morgan patent the only fabric to gain consumer acceptance as possessing the "thermal" qualities of light weight and warmth in cold weather was the "Raschel" fabric earlier developed by the Navy. This fabric, however, could only be produced on warp knitting machines. Consequently, knitters such as Morgan who had weft knitting machines which made circular knit fabrics had to buy their requirements from others. Morgan thus undertook the experimentation that resulted in his patent with the hope of developing an imitation of the Raschel fabric that could be made on a circular knit machine.

Insofar as the law of patentability is concerned, we only note the decisions of the Supreme Court in Graham v. John Deere Co., 381 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545, and United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572, both decided February 21, 1966, for exposition and application of currently effective principles. These, because of their recency and completeness, need not be reiterated here.

We turn, then, to the determination of the validity of the Morgan Patent.

INDEFINITENESS OF THE CLAIMS

The district court found the patent to be invalid because of the indefiniteness of the claims made by the patent. The court reached this conclusion because it found that the term "heat-insulating" as used in the patent specifications and claims was a relative and comparative term which did not meet the statutory requirement.²

Regardless of the fact that the term "heat-insulating" may be one of degree, there is abundant evidence on this record taken as a whole that when one skilled in the art reads the Morgan Patent, he would be capable of producing the patented fabric and of determining the limits of the patent. As we interpret the statutory standard, this is all the inventor need show. 35 U.S.C.A. § 112.

As succinctly stated by the Second Circuit in Georgia-Pacific Corporation v. United States Plywood Corporation, 258 F.2d 124 (2 Cir. 1958), cert. den. 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112, the requirement of 35 U.S.C.A. § 112 serves two primary purposes:

"* * * those skilled in the art must be able to understand and apply the teachings of the invention and enterprise and experimentation must not be discouraged by the creation of an area of uncertainty as to the scope of the invention. On the other hand, the policy of the patent statute contemplates granting protection to valid inventions, and this policy would be defeated if protection were to be accorded only to those patents which were capable of precise definition. The judicial function requires a balancing of these competing considerations in the individual case." (258 F.2d, at 136).

In performing this balancing, Georgia-Pacific teaches that:

"* * * patentable inventions cannot always be described in terms of exact measurements, symbols and formulae, and the applicant necessarily must use the meager tools provided by language, tools which admittedly lack exactitude and precision. If the claims, read in the light of the specifications, reasonably apprise those skilled in the art both of the utilization and scope of the invention, and if the language is as precise as the subject matter permits the courts can demand no more." (258 F.2d, at 136)

The cases cited by the plaintiffs, General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 58 S.Ct. 899, 82 L. Ed. 1402 (1938); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 63 S.Ct. 165, 87 L.Ed. 232 (1942); Fisher & Porter Co. v. Brooks Rotameter Co., 107 F.Supp. 1010 (E.D.Pa. 1952), aff'd 211 F.2d 400 (3 Cir. 1954), cert. den. 348 U.S. 871, are not inapposite to the teachings of Georgia-Pacific. It is clear that each case presents a different question, and the rule is not a technical one, but one made to protect the public.

Plaintiffs' witness Carroll Anderson testified that he believed the fabric put out by his company, Munsingwear, would infringe the Morgan Patent if the patent were upheld. We can assume that Anderson's willingness to make such a statement is based on his ability to determine the limits of the Morgan Patent. Plaintiffs' expert witness, Professor Shinn, also demonstrated ability to recognize the Morgan fabric. So also defendants' expert, Robert H. Lawson, was able to clearly identify an infringing fabric.

The testimony of Professor Shinn on the issue of invention also supports a finding that one skilled in the art can read the patent so as to know that in addition to the stitch structure a knitter would utilize a tight knit and a heavy yarn.³

Anderson testified that he had no difficulty in understanding the Morgan Patent and that he could identify the Morgan fabric as well as infringements.

The testimony of Mr. Lawson also illustrated that one skilled in the art can read the teachings of the patent without any reliance on the term, "heat-insulating".

These references suffice for us to state, in summary, our conviction that the evidence shows that the patent teaches with sufficient conciseness how the invention might be put into use and also gives sufficient warning to the would-be infringer of the patent's limits. The fact that the patent also uses a term capable of only relative definition is not fatal. See Eibel Process Company v. Minnesota & Ontario Paper Company, 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923); Chicago Pneumatic Tool Co. v. Hughes Tool Co., 97 F.2d 945 (10 Cir. 1938), cert. den. 305 U.S. 643, 59 S.Ct. 242, 83 L.Ed. 436.

THE PRIOR ART

The district court concluded that the Morgan Patent was anticipated in the prior art primarily on the basis of a fabric claimed to have been made by Carroll Anderson in 1933. But assuming similarity, more is required to constitute prior art under the statute.⁴ The Reviser's Notes to Section 102, 35 U.S. C.A., make clear that the interpretation of "known" by the courts assimilated it to "publicly known". See Pennock v. Dialogue, 27 U.S. (2 Pet.) 1, 7 L.Ed. 327 (1829).

The district court concluded that there was such a public knowledge and use because garments made from this Anderson fabric had allegedly hung on display racks in the Munsingwear Designs Division and that these racks were accessible to the public. Assuming that such a use is sufficient to meet the requirements of "publicly known," we conclude...