Lewis I. Stitch Mach. Co. v. Columbia B. Mach. Mfg. Corp.

• Decision Date: 17 December 1937
• Citation: 22 F. Supp. 705
• Parties: LEWIS INVISIBLE STITCH MACH. CO. v. COLUMBIA BLINDSTITCH MACH. MFG. CORPORATION (three cases).
• Court: U.S. District Court — Southern District of New York

22 F. Supp. 705

LEWIS INVISIBLE STITCH MACH. CO. v. COLUMBIA BLINDSTITCH MACH. MFG. CORPORATION (three cases).

District Court, S. D. New York.

December 17, 1937.

Victor D. Borst, of New York City (S. George Tate, of Washington, D. C., of counsel), for plaintiff.

Henry L. Burkitt, of New York City, for defendant.

WOOLSEY, District Judge.

I hold that the single claim of the table patent No. 1,764,573 is invalid as not involving any inventive act over the prior art.

I hold that claims 1, 3, 8, and 10 of the automatic disc patent No. 1,905,291, on which the plaintiff relies in the first cause of action, are valid but not infringed.

I hold that claims 1, 19, 20, 21, and 22 of the automatic disc patent No. 1,989,602, on which the plaintiff relies in the first cause of action, are valid and infringed by what we have called the defendant's earlier disc.

I hold that claims 1 and 19 of the automatic disc patent No. 1,989,602, on which the plaintiff relies in the second cause of action, are valid and infringed by what we have called the defendant's later disc.

In both the first and second causes of action, I find that the defendant has sustained its charge of some unfair competition on the part of the plaintiff.

I hold that in the third suit, involving the Dearborn automatic patent No. 1,964,381, the patent is valid and infringed.

I hold that, balancing the equities on the facts before me, the proper disposition of the matter is to allow the plaintiff the usual injunction against further infringement by the defendant of the claims of the patents which I have found valid and infringed, and to allow the defendant an injunction on the ground of unfair competition as hereinafter indicated, but I will not allow the plaintiff any damages or accounting for profits, and I will not allow the defendant any accounting for damages on its counterclaim for unfair competition.

I hold that neither party shall have costs.

I. These three suits have been tried together most appropriately because they are to a large extent intertwined in their evidence and in their implications. All of them involve the sewing machine art and the subdivision of that art containing what are known as blindstitch sewing machines.

The first case, equity No. 80/86, founded its claim for infringement on three patents, namely, what we have called during the trial the table patent No. 1,764,573, which was issued to Mueller on June 17, 1930, what we have called during the trial the manual disc patent No. 1,905,391, issued to Mueller April 25, 1933, and what we have called during the trial the automatic disc patent No. 1,989,602, issued to Mueller on January 29, 1935.

In the first case there is a counterclaim for unfair competition filed by the defendant, which, after an appeal to the Circuit Court of Appeals on an interlocutory matter which was dismissed, was revamped in pursuance of the dicta contained in the opinion of that court. See Lewis Invisible Stitch Machine Company v. Columbia Blindstitch Machine Manufacturing Corporation, 2 Cir., 80 F.2d 862.

This first suit, equity No. 80/86, was aimed at a device of the defendant which it claims that it no longer makes.

The second suit, equity No. 82/365, is founded on two patents, the so-called table patent, and the so-called automatic disc patent No. 1,989,602. That second suit also contains a counterclaim for unfair competition, similar in essence to the counterclaim in the first case.

The third case, equity No. 83/361, is founded on patent No. 1,964,381, granted to the American Blind Stitch Machine Company as assignee of one Dearborn on July 26, 1934. This patent, which is referred to hereinafter as the Dearborn automatic patent, was purchased as a result of a settlement of a controversy between the American Blind Stitch Machine Company and the Lewis Invisible Stitch Machine Company by an agreement dated the 10th day of September, 1936, which was followed by delivery of an assignment to the Lewis Company by the American Company dated September 9, 1936, which carried with it not only an assignment of the Dearborn automatic patent No. 1,964,381, but also all past claims for damages due to any infringement thereof. It is from this latter clause contained in the assignment that the plaintiff gets its locus standi to sue the defendant for any infringements prior to the date of the assignment, September 9, 1936.

II. The nature of blindstitching and skipstitching has been set forth with his accustomed felicity of phrase by Judge Learned Hand in the case of Buono v. Yankee Maid Dress Corporation, 2 Cir., 77 F.2d 274, at page 275. His description I hereby incorporate at this point by reference.

III. I will now endeavor to give in a brief way what I have gathered from the record of the history of the demand in the trade for what is known as blindstitching and skipstitching.

We were so fortunate as to have the president of the American Blind Stitch Company, Mr. Rivers, testify, and he is a man whose business experience in this trade goes back to the first part of the century and covers, at least for our present purposes, all of the changes therein.

Of course, it was always known that you could blindstitch any material by hand. The great problem in this machine age was to find out some kind of sewing machine that could make blind stitches, and Mr. Rivers states that Mr. Dearborn, who is the inventor for the American Company, was the originator of the blindstitching machine which was first applied to men's clothes, on which, of course, the seams would be thicker than on women's clothes. That was something like 35 to 38 years ago, even before Mr. Rivers had gone into the business.

The first machine which was made by Mr. Dearborn was for sewing the bottom seams of trousers, and by degrees the desire arose for using blindstitching for thinner material, and as a result people began to use blindstitching machines or to experiment with blindstitching machines, which were intended for heavy work, for work of a more delicate and daintier quality, and began to use them sometimes for women's clothes. For many years, however, the use was principally in men's clothes, and then it began to be used for women's tailored skirts, jackets, and other types of women's clothes, which may fairly be described as suits rather than frocks.

Then by degrees a demand began to arise for the use of blindstitching in light fabrics for women's frocks, like silk dresses, cotton dresses, and so forth.

The pressure of the demand for this was felt, according to Mr. Rivers, about 6 or 8 years ago, or in the beginning of 1929.

The demand for skipstitching became strong, particularly for the bottoms of the skirts of women's frocks, about 4 or 5 years ago, say in 1932 to 1934.

The reason for this was that it was expensive to have skirts hemmed by hand, and the desire was to get a machine which could deal properly with such delicate fabric as silk, rayons, or thin cottons, and succeed in making an anchorstitch and then a skipstitch or an anchorstitch and two skipstitches, which would hold the material and, at the same time, would not show much on the outside of the hem.

Thus a machine-made silk dress would look, at least to the casual observer, much like the handwork of expensive dressmakers, and it was with this in mind, so far as I can make out from the evidence, that the various persons interested in this branch of the needle trade began to get interested in skipstitch mechanism.

There was also a demand for speed in operations, and machines of more refined adjustments were made, and these machines were used for women's wear.

It is against this matrix of commercial demand that I want to approach the consideration of these patents.

IV. Now, we have to focus our attention on the precise matters that are the subject matter of the patents, and I think perhaps I can, without attempting to describe the machines in any detail, say that the actual sewing of these seams is accomplished within what perhaps I might for convenience call the upper and lower jaws of the machines. The upper jaw is made up of a head which carries the needle and, usually, but not always, the feed mechanism, to feed the material through the machine, and a presser-foot.

The lower jaw, which engages with the upper jaw when the machine is operated, contains devices called platens to keep the material pressed up against the presser-foot, sometimes provisions for feeding the material, and always a node or ridge-former to raise the material to the needle. In a slot between the platens is, what I have called throughout the case, a saddle, up into which the ridge-former, which we have called a disc during the trial, operates to raise the material which runs between the saddle and the ridge-former over the platens and under the presser foot.

The needle is arcuate or scimiter-shaped and operates at right angles to the material which is being sewn, and, in most of the high speed machines at least, the needle makes a chain-stitch instead of a lockstitch, which involves the use of a bobbin.

It is obvious that when the actual sewing occurs it is necessary that the material sewn should be held tautly, and this is achieved by the proper timing and cooperation of all the elements that I have mentioned here, the needle, the presser-foot, the platens, and the ridge-former, and also the saddle, which is subject, usually, to the pressure of a spring pressing it down towards the material. The combination of all these devices when properly timed results in what appears to an inexperienced observer like myself extraordinary speed in the feeding of the material. The arcuate needle goes at a regular beat and bites deep into the material when the node-former or disc, as we have called it, is at its high point, and skips some of the material, if skipstitching is desired, when the node-former is at its low point, whether that be in contact with the material or not.

This somewhat sketchy...