Kurtz v. Belle Hat Lining Co., Inc., 273.

• Decision Date: 10 April 1922
• Docket Number: 273.
• Citation: 280 F. 277
• Parties: KURTZ et al. v. BELLE HAT LINING CO., Inc.
• Court: U.S. Court of Appeals — Second Circuit

280 F. 277

KURTZ et al. v. BELLE HAT LINING CO., Inc.

No. 273.

United States Court of Appeals, Second Circuit.

April 10, 1922

Action is upon patent to Kurtz, 1,216,140, dated February 13, 1917 for 'lining for hats.' The patent contains two claims, both in suit, of which the second is most specific and is as follows:

'A hat lining comprising a crown piece, a side piece, an uncovered cord exposed between said crown piece and side piece, and means for securing said crown piece, side piece and cord together for forming an ornate seam between said crown piece and side piece; said means embodying a single row of stitching passing through said crown piece, side piece, and cord.'

On July 25, 1916, there issued to one Rawak patent 1,191,996, for 'lining for hats,' of which the single claim is 'A hat lining comprising a crown member, an apron member a folded strip having its meeting edges secured between the meeting edges of the crown and apron members, and forming an annular pocket projecting from the juncture of said crown and apron members, and a core inclosed within said annular pocket.'

In Kurtz v. Blatt (D.C.) 263 F. 392, this Kurtz patent was in suit against another alleged infringer. Decision was that patentable invention was displayed by Kurtz over Rawak, there being in the opinion of Mayer, J., 'no prior art worthy of comment except the' lining patented by Rawak. In the present litigation Knox, J., in the court below, held that Kurtz displayed nothing patentable over Rawak, and dismissed the bill for lack of invention. Whereupon Kurtz appealed.

Oscar W. Jeffery, Philip C. Peck, and Tobias A. Keppler, all of New York City, for appellants.

Irving M. Obrieght, Morris Hirsch, and George C. Dean, all of New York City, for appellee.

Before HOUGH and MANTON, Circuit Judges.

HOUGH Circuit Judge (after stating the facts as above).

The record in the cause reported in 263 F. 392, is an exhibit in this case. We have examined it, and are of opinion that, though the cause at bar was tried with more elaboration and at greater length, there is no substantial difference between the two proceedings. In both, defendants wasted much time in fruitlessly endeavoring to show prior uses; but in this case Mr. Rawak himself appeared as the principal witness for the defence. His evidence accentuates the truth stated by Judge Mayer at the earlier trial-- that there was no prior art except Rawak. Yet the question presented by this patent, and also by that of Rawak, and by the litigation over them, is a larger one, viz. whether, in the crowded art of manufacturing clothing and parts of clothing with the needle and needle appliances, either Rawak or Kurtz displayed what it is so easy to name and so difficult to ascertain, invention.

Hat linings, especially for the head coverings of women, are and long have been a separate article of manufacture and commerce. They are made literally by the million, and sold both to hat manufacturers, milliners, and persons intending to make their own headgear. Historically the occupation, as a separate art or trade, begins with a lining something like a bag without a bottom; whereof one edge is fitted to the lower portion of the hat and the top gathered with a 'drawstring' in the crown. This kind of lining required more material than would fit snugly to the interior of the headgear, and was thought to lack, not only economy, but neatness of appearance. A 'piping' or 'edging' is a very old device of the needle trades, and consists essentially in the insertion of a piece of material between the two parts of a seam, in such manner that the inserted material projects at and along the seam, producing (as has been thought) decorative effect as well as strength.

Rawak's patented device exhibits a piping at the seam between the crown and apron or side, which together make up the hat lining of commerce. His piping, being formed by a 'folded strip,' may and does have inserted into its projecting 'annular pocket' any convenient material; e.g., a cord or other stuffing. It is, we think, proven that this device has attained a large measure of success, principally through the efforts of Mr. Rawak himself; he being a very large manufacturer of hats. It is also proved as requiring more material and costing more than other linings. It is in short a rather superior article, grade for grade, of material, and is probably a favorite in the comparatively expensive lines of ready-made hats. What Kurtz did was to wholly abolish the inserted material which makes Rawak's 'annular pocket,' and to take the cord (which may be used as a stuffing for Rawak's pocket) and by one line of sewing unite crown, apron, and cord in such manner as to show the cord and form what he calls an 'ornate seam.'

Any cord that will hold the thread will do, and if the cord used by either Kurtz or Rawak is stiff enough, both or either will tend to strengthen the lining in position and hold it in place. Kurtz's lining has attained great popularity, doubtless assisted by quite modern trade methods; but the proof is ample of enormous production, marked commercial success, and almost complete replacement in the cheaper grades of linings of the old drawstring device in favor of Kurtz.

This patentee obtained his patent over Rawak (cited against him of record) by a very frank statement in the Office, which had objected that no mechanical advantage was pointed out. Kurtz replied:

'It is thought that mechanical advantage, where the filling member is an ornament, and permanently and structurally incorporated in the article, is obvious as compared to the (alleged) anticipating structure (Rawak's), where the ornamental member is covered, and is not permanently or intimately incorporated in the resulting structure.'

Thus is presented the question of invention, admittedly one of fact, yet also one as to which courts, composed of lawyers, have long been anxious to act with uniformity and along lines of thought which will result in precedents, instead of mere incidents. Despite the warning of Justice Brown in McClain v. Ortmayer, 141 U.S. 419, 427, 12 Sup.Ct. 76, 35 L.Ed. 800, that the word 'invention' 'cannot be defined in such manner as to afford any substantial aid in determining whether a particular device involved an exercise of the inventive faculty or not.' the effort still continues. Prof. Robinson analyzed all of these attempts down to his date of publication (1890), which was but a few months before Brown, J., pronounced the effort futile. Rob. Pat. vol. 1, p. 116 et seq. Yet there remains as always worthy of consideration the learned author's dictum that 'the mental faculties involved in the inventive act are the creative and not the imitative. ' Section 78. In comparatively late years efforts at positive statement have been limited to such generalizations as that--

'Invention, in the nature of improvements, is the double mental act of discerning, in existing machines or processes or articles, some deficiency, and pointing out the means of overcoming it. ' General Electric v. Sangamo, 174 F. 246, 251, 98 C.C.A. 154, 159.

What may be called negative definitions or partial descriptions are still and always have been very common. Thus:

'Every result obtained by deliberate reflection and experimentation with well known appliances, or parts thereof, is not necessarily invention within the * * * patent laws. ' Lord v. Payne (C.C.) 190 F. 172.

'Invention involves conception of at least some function, as well as the selection of the means whereby that function can be operatively secured. ' U.S. Co. v. Hewitt, 236 F. 739, 150 C.C.A. 71.

If * * * the mind advances from the known to the unknown by a transition natural to the ordinary instructed intellect, there is no invention. ' Farnham v. U.S., 47 Ct.Cl. 207.

Again a certain device was invention because--

'It was a true discovery. It involved uncovering a thing which, while long capable of being done, was never before thought of. It also afforded a medium or means for bringing the discovery into practical action, and put it into the hands of others, there to be turned to pleasurable and profitable uses. ' Cunningham v. AEolian, 255 F. 897, 900, 167 C.C.A. 217, 220.

The enormous multiplication of improvement patents has produced such sayings as:

'It often requires as acute a perception of the relation between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may be made available in another, as would be necessary to create the device de novo. And this is not the less

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