Marston v. JC Penney Company
| Decision Date | 07 December 1965 |
| Docket Number | No. 9691-9692.,9691-9692. |
| Citation | 353 F.2d 976 |
| Parties | Oliver F. MARSTON, Appellant, v. J. C. PENNEY COMPANY, Inc., Appellee. Oliver F. MARSTON, Appellee, v. J. C. PENNEY COMPANY, Inc., Appellant. |
| Court | U.S. Court of Appeals — Fourth Circuit |
J. Hanson Boyden and Alfred P. Ewert, Washington, D. C. (Herndon P. Jeffreys, Jr., Richmond, Va., on the brief) for appellant in No. 9691 and appellee in No. 9692.
W. Brown Morton, Jr., Washington, D. C. (Edward A. Marks, Jr., Richmond, Va., and John T. Roberts, Washington, D. C., on the brief) for appellee in No. 9691 and appellant in No. 9692.
Before HAYNSWORTH, Chief Judge, BOREMAN, Circuit Judge and CHRISTIE, District Judge.
This is a patent infringement suit in which Oliver F. Marston, owner of United States Letters Patent No. 2,715,231, claims that J. C. Penney Company, Inc. (herein called Penney), infringed Claims 1 and 2 of his patent by selling1 in its Virginia stores a chaise longue manufactured in West Germany which embodied his inventive concept. As relief Marston sought an injunction against further infringement, an accounting and damages for past infringement and attorney fees. Penney in defense asserted that Claims 1 and 2 were invalid and denied infringement. The District Court held that Claims 1 and 2 of the patent were valid but were not infringed by the accused article. Each side has appealed from the holding adverse to it.
The patent in question was issued to Marston on August 16, 1955, and is titled "Flexible Buoyant Article." The specifications of the patent state that "this invention relates to flexible, waterproof, buoyant structures, and articles made therefrom, such as cushions, mattresses, life preservers, pillows, floats, bumpers, insulation units and the like." Claim 1 of the patent reads as follows:
Claim 2, the only other Claim with which we are here concerned, differs from Claim 1 in three respects. First, the strips of individually sealed cells or sections are to be arranged in "parallel laterally aligned relation"; second, the tube walls are continuous in cross section; and, third, the tube walls are to be united together by heat sealing and the connecting strip overlying each row of these aligned sealed parts is to be united to the sealed parts by heat sealing. For these reasons the District Court concluded that Claim 2 was somewhat narrower in scope than Claim 1.
The construction process used in making the flexible buoyant filler pad described in Claims 1 and 2 is more easily understood from the patent's specifications and drawings. Compressed air or nitrogen is introduced into tubing, preferably of extruded flexible thermoplastic resin composition such as polyethylene. The opposed walls of the tubing are then pinched together and sealed (Claim 2 specifies heat sealing) at spaced intervals to form a chain of airtight cells resembling sausage links or, in other words, the tube walls are united together in fluid sealing relation. The pinching is done in such a manner that the sealed areas form flat surfaces. The tubing is then cut into strips of a predetermined length depending upon the desired dimensions of the completed article. The cut is made at any one of the sealed parts, each such sealed part being of sufficient width so that a sealed area remains on either side of the line of severance to prevent the air or gas from escaping from the cell on each side of the cut. The numerous strips of airtight cells are arranged, as stated in Claim 1, in laterally disposed relation or, as stated in Claim 2, in parallel laterally aligned relation so that the sealed parts of the several strips of airtight cells form laterally disposed rows of aligned sealed parts. Strips of a thermoplastic resin composition are then placed over each row of aligned sealed parts and united to each said row (Claim 2 specifies heat sealing) with the result that the individual rows of airtight cells have been connected together and form a single unit.
The finished product has openings between each row of airtight cells which permit the free circulation of fluid or air. This feature is a result of the particular arrangement of the sealed parts in relation to each other and the manner in which the tubing is sealed. The flat area where the opposed walls of the tubing are sealed together is greater in width than the airtight cells; consequently, the sealed parts of the various strips can be contiguous and still leave openings between the rows of airtight cells for circulation. A pad constructed in the described manner is waterproof, self-ventilating, sanitary and inexpensive to manufacture; it has individual permanently inflated airtight cells which make the structure buoyant and comfortable to sit on with openings between the cells which provide for drainage and air circulation so that the pad dries rapidly and remains cool. The amount of buoyancy depends upon the size of tubing used in the construction process, the length of each airtight cell and the width of the sealed portions.
Marston's original application was filed in September 1953 and set forth sixteen claims. Each claim was largely based upon a single element of the particular combination described in the patent in suit. The Patent Office, after making an examination which revealed twelve patents in similar or related arts,2 rejected all sixteen claims. The grounds for rejection and the patents primarily relied on are stated in a portion of the Examiner's report set out in the margin.3
Marston responded to this official action by filing an amended application on October 1, 1954, in which he requested the cancellation of prior claims and the substitution of four new claims. Each of these four claims was a combination of the individual elements contained in Claims 1-16 which had been rejected. Marston's attorney stated in the amended application:
"Each of new claims 17, 18, 19 and 20, define the sealed parts or portions of the tubular strips as being arranged in a plurality of laterally disposed rows of aligned sealed parts or portions, and a connecting strip overlying each such row and united to each sealed part in the row, each of the link sections being in spaced relation to adjacent link sections of laterally disposed strips to provide fluid circulation openings therebetween extending perpendicularly through the pad."
Referring to the Drepper and Saiac patents cited by the Examiner, the attorney stated that Drepper, while disclosing a tube divided into cells by joining portions of the tube walls together, did not disclose the use of a thermoplastic resinous material and did not disclose the specific structure referred to in the above quoted paragraph. As to Saiac, he stated that it disclosed the use of rubber only, made no disclosure of the specific arrangement of tube strips as stated above, and was distinguishable for the same reasons as Drepper. The Patent Examiner determined that the amended application disclosed patentable invention and the four new claims were approved, the first two of which are here involved.
At the time Marston made the claimed invention he was an officer of the B. T. Crump Company of Richmond, Virginia. This company manufactured a diversified line of merchandise, including furniture items such as hassocks, seat covers and outdoor furniture. Marston attempted to interest this company in taking a license under the patent. The company took a six months' option for a license which was renewed for an additional six months, but at the end of this period company officials elected not to exercise the option. Since that time Marston has attempted to interest others in becoming licensees but so far has been unsuccessful.
In its effort to have Claims 1 and 2 declared invalid, Penney introduced in the lower court twenty prior patents consisting of the twelve cited in footnote 2 and eight patents discovered by an independent search.4 The lower court examined all of this prior art and made specific findings relating to the eight patents not considered by the Patent Office and to Saiac, French Patent No. 955,651, the patent which the court found most nearly anticipated Marston's claimed invention. The court concluded, however, that Marston's claims differed from the teachings of Saiac and the cited prior art, stating:
While admitting that none of the prior patents identically discloses Marston's combination,...
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