Milliken Research Corp. v. Dan River, Inc., No. 83-727

CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit
Writing for the CourtBefore SMITH and NIES, Circuit Judges, and KELLAM; NIES; EDWARD S. SMITH
Citation222 USPQ 571,739 F.2d 587
Docket NumberNo. 83-727
Decision Date05 July 1984
PartiesMILLIKEN RESEARCH CORPORATION, Appellant, v. DAN RIVER, INC., Appellee. Appeal

Page 587

739 F.2d 587
222 U.S.P.Q. 571
MILLIKEN RESEARCH CORPORATION, Appellant,
v.
DAN RIVER, INC., Appellee.
Appeal No. 83-727.
United States Court of Appeals,
Federal Circuit.
July 5, 1984.

Page 588

Tom Arnold, Houston, Tex., argued for appellant. With him on the brief was Jack C. Goldstein, Houston, Tex.

Roger W. Parkhurst and James A. Oliff, Alexandria, Va., of counsel.

Lewis T. Booker, Richmond, Va., and David Rabin, Greensboro, N.C., argued for appellee. With them on the brief were H.H. Huntley and L.A. Goodson, Jr., Danville, Va.

Before SMITH and NIES, Circuit Judges, and KELLAM, Senior District Judge. *

NIES, Circuit Judge.

This appeal is from the judgment of the United States District Court for the Western District of Virginia, Danville Division (Turk, C.J.), in a patent infringement suit brought by Milliken Research Corporation against Dan River, Inc. for infringement of Milliken's U.S. Patents Nos. 3,254,510 and 3,277,673, to Lesley. The district court held both patents (the Lesley patents) invalid for obviousness under 35 U.S.C. Sec. 103. We affirm.

I.

This litigation has been determinedly pursued and defended, virtually without surcease, since the filing of the complaint in 1970. We are advised that other cases are suspended pending its resolution. The case was assigned to a special master who attended depositions and held approximately six weeks of hearings during the period from November 1972 through May 1973. In a thorough and detailed report, dealing with numerous defenses, the special master concluded that, while the Lesley inventions were "narrow", the patents were valid and infringed. Particularly pertinent to our decision here is the special master's analysis therein of a prior art reference, U.S. Patent No. 3,069,885 issued to Cooper (Cooper '885), under which both parties to this appeal were licensed. Subsequently, the district court ordered reopening of the trial for consideration of additional evidence including a published article written by Alfred Reisfeld dealing with the state of the knitting art in early 1958. A supplementary report was filed by the special master, again concluding that the patents were valid. A third and final trial before the special master was conducted in October 1980, at which Dan River presented, inter alia, certain fabric samples and construction sheets of a third party, Celanese Corporation, (identified herein as Celanese 7182) as additional evidence of obviousness, if not a complete anticipation of the Lesley inventions. The special master again upheld the patents, finding that the Celanese fabrics were not proved to be prior art under 35 U.S.C. 102(b) 1 and also holding that the Celanese fabrics appeared to be "of a different structure", "in a different category" and to have been produced "by methods different from those of Lesley."

The case again came before Chief Judge Turk on Milliken's motion under Fed.R.Civ.P. 53(e)(2), for acceptance of each of the three master's reports, and Dan River's objections thereto. No additional evidence

Page 589

was presented, but extensive argument and briefing was received by the court. It is readily apparent that Chief Judge Turk's decision was the result of a most careful and thorough, indeed exhaustive, study of the record and of the numerous legal issues advanced by the parties at that time. As far as this appeal is concerned, we need only address the court's conclusion that the Lesley inventions would have been obvious within the meaning of 35 U.S.C. Sec. 103. 2

In reaching its conclusion on obviousness, the district court relied on the findings of fact of the special master, denominating as "clearly erroneous" only the special master's conclusion that the evidence was insufficient to establish Celanese 7182 as prior art.

In accordance with the analysis required under Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 693, 15 L.Ed.2d 545, 148 USPQ 459, 467 (1966), the district court delineated the scope and content of the prior art, the differences between the prior art and the claims of the patents in suit and the level of skill in the art. Referring specifically to the teachings of Cooper '885, and the Reisfeld article, the court concluded that both the Lesley method and fabric claims failed to satisfy the statutory requirements of 35 U.S.C. Sec. 103.

II.

The patents in suit are directed to a method of fabricating knit fabrics ('673) and to warp knit pile fabrics ('510). Warp knit fabrics are produced on warp knitting machines by knitting together two or more sets (warps) of yarn. Lesley requires that the yarn of at least one of the two sets of yarn be "capable of substantial elongation", that is, be "elastic" and that the elastic yarn be knitted under greater "tension and extension" than the second yarn during the knitting operation. The claims refer to the required tension and extension as "stretching" or "stretched." Retraction of the elastic yarn causes very tight stitches in the resultant fabric base and forces the other yarn, of the other warp, away from the foundation to form a "raised pile" or "raised nap" effect. The Lesley method has the advantage of producing a raised nap or pile effect economically during knitting, without requiring post-knitting processes such as brushing or scouring of the fabric. The pile effect is on one side only and plates or covers the more elastic yarn.

The claims of Lesley '510 for the fabric itself read:

1. A warp knit fabric having a face side formed from stitches of a first yarn and a back side formed from stitches from a second yarn, said face side stitches being knit such that they contain a length of yarn at least 40% in excess of that required for a balanced fabric construction, said second yarn being capable of substantial elastic elonagtion [sic] and being uniformly closely knit and uniformly raising said face side stitches to form said face side stitches of loosely knit yarn to provide a uniform pile effect on one face of said fabric.

2. The structure of claim 1 wherein said first yarn is capable of elastic elongation.

The method claims 1-4 of the '673 patent specify:

1. The method of forming a raised pile surface knitting [sic] fabric with a knitting machine having two guide bars and a needle bar, comprising forming two loops from two yarns on each of a plurality of needles on said needle bar, one of said two yarns on each said needle being capable of substantial elastic elongation, stretching one loop formed of said one elastic yarn during loop formation on each of a plurality of needles

Page 590

while effecting substantially less stretch on the other said loop during loop formation, and permitting retraction of said substantially stretched loop after casting off thereof to thereby form a raised pile surface of said other loops, with the stretched and retracted yarn loops binding other said loops in place, and permitting the stretching during formation of each succeeding stretched loop to pull the preceding retracted said one loop tighter to thereby force the preceding adjacent said other loop further away from the foundation plane of the fabric as formed by said retracted loop.

2. The method according to claim 1 including maintaining the input tension of said one elastic yarn forming said one loop substantially above that of the yarn forming other said loop and substantially above the tension required for a balanced fabric construction.

3. The method according to claim 1 including permitting the feed of the other said yarn to form a loop thereof of a first size upon the completion of the loop-pulling portion of the needle stroke, while permitting the feed of said one elastic yarn to form a stretched loop thereof of size substantially equal to said first loop size but of substantially smaller effective loop size than said first loop size upon permissive retraction thereof after casting off.

4. The method of forming a knitted fabric having a raised nap surface, comprising successively pulling two yarns into loops on each of a plurality of needles and casting off said loops to form a knitted fabric, one of said yarns being elastically stretchable and being substantially stretched during loop formation while the other of said yarns is at a comparatively light tension and comparatively unstretched during loop formation, whereby the effective retracted length of such said one loop, after casting off, is substantially smaller than the effective length of each said other loop, to thereby yield an elastic foundation knit fabric having a raised nap surface formed of said other loops.

Unlike the claims to the fabric, the above claims do not specify any differential in the lengths of the two yarns, that is, a requirement for "40% overfeed."

Much of the argument of the parties below was directed to the meaning of claims. Chief Judge Turk found the claims considered alone ambiguous in toto. However, from reading the claims in conjunction with the specifications, he concluded, as had the master, that Lesley was claiming a pile on the lap side or technical back of the fabric despite the confusing reference to face side in the claims. We understand the back side of the fabric to be the side with arching floats or laps and it is these floats or laps which form the nap or pile. 3

The court concluded: "When the patents are read as a whole, they disclose a warp knit fabric in which a lap side pile is formed as a result of knitting two warps in which the yarn fed from one warp through the back guide bars is more heavily tensioned or highly stretched than the other yarn." This was the construction asked for by Milliken, and it was on this interpretation that the court based its conclusion of obviousness. No contention has been made by either party on appeal that the court's construction of the claims is error.

Page 591

An issue not before us on appeal is whether the two Lesley patents in suit are entitled to the filing date of an earlier...

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24 practice notes
  • Constant v. Advanced Micro-Devices, Inc., MICRO-DEVICE
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 9, 1988
    ...and infringement in the context of motions for summary judgment, and have often done so. Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 222 USPQ 571 (Fed.Cir.1984); D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed.Cir.1983). See Williams & Thierstein, Use o......
  • Gottlieb v. Barry, Nos. 93-1316
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • December 9, 1994
    ...Henry A. Knott Co. v. Chesapeake & Potomac Tel. Co., 772 F.2d 78, 85 n. 11 (4th Cir.1985); Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 592 (Fed.Cir.1984); Potucek v. Cordeleria Lourdes, 310 F.2d 527, 530 (10th Cir.1962), cert. denied, 372 U.S. 930, 83 S.Ct. 875, 9 L.Ed.2d 734 ......
  • Loctite Corp. v. Ultraseal Ltd., Nos. 84-1687
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • December 17, 1985
    ...this court has often said that the test of Sec. 103 is not "obvious to try." See, e.g., Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 593, 222 U.S.P.Q. 571, 576 (Fed.Cir.1984). Third, "[p]atentability shall not be negatived by the manner in which the invention was made." 35 U.S.......
  • Transclean Corp. v. Bridgewood Services, Inc., No. Civ. 97-2298 RLE.
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • November 12, 1999
    ...invention, see, Title 35 U.S.C. § 282, and that each claim must be evaluated separately. See, Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 593-94 (Fed.Cir.1984). However, Claim 1 is the sole independent claim and, therefore, all of the disputed claims must include its limitatio......
  • Request a trial to view additional results
24 cases
  • Constant v. Advanced Micro-Devices, Inc., MICRO-DEVICE
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • June 9, 1988
    ...and infringement in the context of motions for summary judgment, and have often done so. Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 222 USPQ 571 (Fed.Cir.1984); D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 219 USPQ 13 (Fed.Cir.1983). See Williams & Thierstein, Use o......
  • Gottlieb v. Barry, Nos. 93-1316
    • United States
    • United States Courts of Appeals. United States Court of Appeals (10th Circuit)
    • December 9, 1994
    ...Henry A. Knott Co. v. Chesapeake & Potomac Tel. Co., 772 F.2d 78, 85 n. 11 (4th Cir.1985); Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 592 (Fed.Cir.1984); Potucek v. Cordeleria Lourdes, 310 F.2d 527, 530 (10th Cir.1962), cert. denied, 372 U.S. 930, 83 S.Ct. 875, 9 L.Ed.2d 734 ......
  • Loctite Corp. v. Ultraseal Ltd., Nos. 84-1687
    • United States
    • United States Courts of Appeals. United States Court of Appeals for the Federal Circuit
    • December 17, 1985
    ...this court has often said that the test of Sec. 103 is not "obvious to try." See, e.g., Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 593, 222 U.S.P.Q. 571, 576 (Fed.Cir.1984). Third, "[p]atentability shall not be negatived by the manner in which the invention was made." 35 U.S.......
  • Transclean Corp. v. Bridgewood Services, Inc., No. Civ. 97-2298 RLE.
    • United States
    • United States District Courts. 8th Circuit. United States District Court of Minnesota
    • November 12, 1999
    ...invention, see, Title 35 U.S.C. § 282, and that each claim must be evaluated separately. See, Milliken Research Corp. v. Dan River, Inc., 739 F.2d 587, 593-94 (Fed.Cir.1984). However, Claim 1 is the sole independent claim and, therefore, all of the disputed claims must include its limitatio......
  • Request a trial to view additional results

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