Milliken Research Corp. v. Dan River, Inc.

• Decision Date: 29 December 1982
• Docket Number: Civ. A. No. 70-C-13-D.
• Citation: 641 F. Supp. 4
• Parties: MILLIKEN RESEARCH CORP., Plaintiff, v. DAN RIVER, INC., Defendant.
• Court: U.S. District Court — Western District of Virginia

641 F. Supp. 4

MILLIKEN RESEARCH CORP., Plaintiff, v. DAN RIVER, INC., Defendant.

Civ. A. No. 70-C-13-D.

United States District Court, W.D. Virginia, Danville Division.

December 29, 1982.

Roger W. Parkhurst, Parkhurst & Oliff, Alexandria, Va., James H. Michael, Jr., Charlottesville, Va., for plaintiff.

Roger L. Tuttle, Dan-River Mills, Danville, Va., David Rabin, Greensboro, N.C., for defendant.

MEMORANDUM OPINION

TURK, Chief Judge.

Plaintiff instituted this action on February 17, 1970 when it filed a complaint alleging that defendant had infringed two patents of which plaintiff was assignee. Defendant denied infringement and countered that the patents were invalid. Edward S. Graves, Esq., was appointed Special Master pursuant to Fed.R.Civ.P. 53, on June 17, 1970. Defendant's Motion for Summary Judgment was overruled by the Master and United States District Judge Ted Dalton on February 25, 1972. Thereafter, three hearings were held before the Special Master, and he filed Reports after each one, all three times finding that the patents were valid and that defendant had infringed them. Defendant has filed Objections to each of the Master's Reports, and those are now before this court for ruling.

After reviewing the many volumes of testimony,¹ the exhibits, and the briefs of the parties, the court concludes that, while most of the factual findings and statements of law made by the Special Master are sound, some of the conclusions drawn in applying the facts to the law are erroneous and must be rejected. Specifically, the court concludes that the patents in suit are invalid for "obviousness" under 35 U.S.C. § 103.

Plaintiff has brought to the court's attention the very germane remarks of Judge Learned Hand in Kohn v. Eimer, 265 F. 900 (2d Cir.1920), concerning the expert's role in cases such as these. "When the judge has understood the specifications, he cannot avoid the responsibility of deciding himself all questions of infringement and anticipation, and the testimony of experts upon these issues is inevitably a burdensome impertinence."² The plaintiff emphasizes that the Special Master heard the evidence and read the briefs, and so his opinions are somehow inviolable. But this court would be remiss in its duties were it to blindly accept all of the Master's conclusions without critically examining them. Beckley National Bank v. Boone, 115 F.2d 513, 515-16 (4th Cir.), cert. denied, 313 U.S. 558, 61 S.Ct. 835, 85 L.Ed. 1519 (1940); Carter Oil Co. v. McQuigg, 112 F.2d 275, 279 (7th Cir.1940); Bullard v. General Electric Co., 234 F.Supp. 995 (W.D.Va. 1964), aff'd, 348 F.2d 985 (4th Cir.1965).

On the other hand, the court agrees that defendant's "shotgun" approach to its attack on the Master's reports is not particularly helpful insofar as it is embodied in defendant's objections and proposed findings after each of the three reports. Cf. Electronic Memories & Magnetics Corp. v. Control Data Corp., 188 U.S.P.Q. 449, 450 (N.D.Ill.1975) (reaching same conclusion). But the parties' briefs have been very helpful in crystallizing and organizing the issues so that this court can address them in a comprehensible manner.

The court agrees, with defendant, that the Special Master made very few findings to which the "clearly erroneous" standard of review applies. In reading the record it becomes clear that the issues involved are relatively few, when the record's bulk is considered, and not particularly complex. The number of true factual disputes is remarkably low. Most of the testimony relates to the numerous experts' opinions as to the proper interpretation of facts relatively undisputed. See note 2, supra. Further, "although the underlying factual decisions ... are entitled to great weight, the ultimate question of obviousness under § 103 is one of law." Kabushiki Kaisha Audio-Technica v. Atlantis Sound, Inc., 629 F.2d 978, 980 (4th Cir.1980).

I. THE PATENTS IN SUIT

The patents, acquired by Bascum G. Lesley and assigned to plaintiff, relate to a method for producing warp knit fabrics and the fabrics thereby produced. Patent No. 3,277,673³ (sometimes referred to herein as "Lesley-2"), which issued on October 11, 1966, relates to the method and claims the following:

1. The method of forming a raised pile surface 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 while affecting 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 said other 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 looppulling 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.

Patent No. 3,254,510⁴ (sometimes referred to as "Lesley-3"), which issued on June 7, 1966, relates to the fabric and claims the following:

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 elongation 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.

Application No. 804,418 (sometimes referred to as "Lesley-1"), the parent application to Lesley-2 and 3, was filed on April 6, 1959, and abandoned in 1965.⁵

Defendant has expended much effort in attempting to prove what it contends is the meaning of the patents. It will be helpful to note at the outset what the court believes is disclosed by the Lesley patents.

Much of defendant's argument is premised on the view that certain terms are unambiguous and, to the extent that is so, the claims should be read in isolation, viz., without reference to the specifications. Relevant in this respect is United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966): "While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly ..., it is fundamental that the claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention...." 383 U.S. at 48-49, 86 S.Ct. at 713. See also City of Grafton, W.Va. v. Otis Elevator Co., 166 F.2d 816, 819 (4th Cir.1948). Further, the parties do not contest the general notion that a patentee may be his own lexicographer. Long Mfg. Co. v. Holliday, 246 F.2d 95, 99 (4th Cir.1957), cert. denied, 355 U.S. 926, 78 S.Ct. 384, 2 L.Ed.2d 357 (1958). The court, in formulating this opinion, has attempted to construe the patents at issue in a realistic and logical manner, and has sought to avoid any of the "patent nonsense" spoken of in Ex Parte Tiemann, 157 U.S.P.Q. 158, 159 (Pat.Off.Bd.App.1967). Unfortunately, the record is filled with witnesses testifying, and attorneys insinuating, that certain words mean quite the opposite of what they say. The court can only hope that it has not been unduly influenced by these endeavors.

Without reviewing all of the defendant's detailed contentions, it should be noted that defendant maintains that the patents call for a warp or weft⁶ knit fabric with a loop side pile, that is, a pile on the technical face.⁷ Another contention critical to defendant's case is that, when Lesley calls for a "balanced" construction, that term is well-understood in the art to refer to a fabric with straight wale lines, i.e., ones that are not zig-zagged. Thus, there is no need to refer to Lesley's definition of "balanced fabric" as one "in which the amount of yarn fed to and lying in the fabric is the amount required to equally accommodate all of the movements of the yarn guides and needles during fabric formation."

With these contentions in mind, ...