Oelbaum v. Lovable Company
| Decision Date | 07 December 1962 |
| Citation | 211 F. Supp. 594 |
| Parties | Freda OELBAUM, Plaintiff, v. The LOVABLE COMPANY, Defendant. |
| Court | U.S. District Court — Southern District of New York |
Poletti, Freidin, Prashker & Harnett, New York City, for plaintiff, Martin C. Seham, New York City, of counsel.
Levisohn, Niner & Levisohn, New York City, for defendant, Edwin Levisohn, Henry R. Lerner, New York City, of counsel.
This is an action brought by the plaintiff-patentee Freda Oelbaum for infringement of United States Patent No. 2,817,089 issued to her on December 24, 1957 (hereinafter "Oelbaum patent"). The defendant is The Lovable Company (hereinafter "Lovable"), a manufacturer of brassieres and other ladies' undergarments. Defendant denies infringement and validity of the Oelbaum patent and has counterclaimed for a declaratory judgment to this effect. By stipulation of counsel, only claim 4 of the Oelbaum patent is in issue.
After hearing the testimony of the parties, examining the exhibits, the pleadings, the briefs and proposed findings of fact and conclusions of law submitted by counsel, this court makes the following Findings of Fact and Conclusions of Law.
1. On December 24, 1957, United States Patent No. 2,817,089 (Pl. Ex. 2) was issued to plaintiff Freda Oelbaum on an application filed January 9, 1956, and since the date of issue plaintiff has been and still is the owner of Patent No. 2,817,089. (5, 87)1
2. Plaintiff has given written notice on December 30, 1957 to defendant charging infringement of the Oelbaum patent (Def. Ex. Z) and defendant has received said notice. (Stipulation of counsel, 87)
3. Claim 4 of the Oelbaum patent No. 2,817,089 is the only claim in issue.2 (88)
4. Claim 4 of the Oelbaum patent relates to a horizontal or lateral adjustment feature for a woman's brassiere in which the shoulder strap may be detachably secured in a series of positions accommodating the wishes of its wearer. This is accomplished by means of a series of laterally displaced hooks, called "fastening elements," located entirely below the upper marginal edge of the inside surface of the breast cup portion of the brassiere. Loops on the shoulder straps enable the wearer to engage the hooks on the cup portion at the desired position. (Pl. Ex. 2)
5. The invention of claim 4 of the Oelbaum patent, as explained by the plaintiff's expert, is the placing of the fastening elements or hooks below the upper edge. (530-31, 542, 544)
6. Claim 4 of the Oelbaum patent reads as follows:
(Pl. Ex. 2)
7. The Oelbaum application as originally filed on January 9, 1956 contained ten claims. (Def. Ex. A, pp. 8-10; 216) There is no reference in any of these claims to the fastening elements being located at the "upper edge" or "below the upper edge" or "entirely below the upper edge" of the breast cup. (148, 217) Nor is there any reference to the words "creases" or "folds." (149, 217)
8. On May 29, 1956 Oelbaum filed a "Petition to Make Special" seeking the Patent Office to preemptorily treat her application in view of the alleged infringement by the defendant. (Def. Ex. A, pp. 13-17; 218) In support of this petition and forming a part thereof, the plaintiff filed an affidavit dated May 18, 1956 in which she stated that she purchased and examined the accused garment. (Def. Ex. A, pp. 14-15) The Petition to Make Special was granted on June 12, 1956. (Def. Ex. A, p. 18; 219-20)
9. Plaintiff purchased and examined the defendant's garment sometime in April or May, 1956. (56-61; Def. Ex. A, pp. 14-15)
10. Giving the Oelbaum patent preemptory consideration, the Patent Examiner on June 21, 1956 rejected all ten claims as originally filed. (Def. Ex. A, pp. 19-20)
11. On July 30, 1956, the plaintiff amended her application by cancelling all ten originally filed claims and introducing new claims 11 through 14. (Def. Ex. A, pp. 21-25; 150) Claim 14 introduces for the first time into the Oelbaum application a reference to the location of the fastening elements in relation to the upper edge of the breast cup by the language: "* * * a plurality of fastening elements mounted side by side upon an inner surface of the cup portion adjacent to the upper edge thereof and attached to the inner surface at a distance from said upper edge * *." (Def. Ex. A, p. 23; 151)
12. The Examiner rejected claim 14 on August 20, 1956 as unpatentable over the disclosure in the U.S. patent to Davis, No. 2,714,211. (Def. Ex. A, p. 27)
13. On October 10, 1956, claim 14 was amended by, inter alia, defining the fastening elements as "* * * a plurality of separate fastening elements mounted side by side at a distance from each other upon * * *" and "* * * said fastening elements being located below and at a distance from said upper edge * * *." (135-136; Def. Ex. A, pp. 28-31)
14. The Examiner on November 21, 1956 rejected amended claim 14 as unpatentable over the reference to Davis, U.S. No. 2,714,211. (Def. Ex. A, pp. 32-33)
15. On December 14, 1956, plaintiff sought to further amend claim 14 by introducing the phrases "below the upper edge," "being located entirely below said upper edge" and "which are located in their entirety below said upper edge" to describe the position of the fastening elements. Also, there was introduced for the first time the clause "whereby pulling forces exerted by the straps upon the cup portions are distributed throughout the surfaces of the cup portions without creasing or folding the cup portions and whereby directions of said pulling forces may be effectively varied without such creasing or folding." The Examiner, as permitted under Patent Office Rules, refused to admit the proposed amendment. (151-52; Def. Ex. A, pp. 34-37)
16. The plaintiff on March 8, 1957 took an appeal from the final rejection of amended claim 14. (259; Def. Ex. A, pp. 38-39) While the appeal to the Patent Office Board of Appeals was pending and prior to any action thereon, the plaintiff proposed to enter a new claim 15 into the case. (263, 265; Def. Ex. A, pp. 56-60) The case was then remanded to the Examiner for consideration in light of the new claim 15. (263) 17. Claim 15 was allowed by the Examiner and issued in the patent as claim 4. (265, 270, 275)
18. The specification of the Oelbaum patent filed on January 9, 1956 as part of the patent application was never amended. (513; Def. Ex. A, pp. 1-7)
19. There is no reference in the specification to the fastening elements as being below or entirely below the upper edge. (146, 214, 305) The only references to the location of the fastening elements in the specification are at column 2, lines 32-34 and column 2, lines 57-62 of Pl. Ex. 2. Column 2, lines 32-34 states: "The pockets 9 and 10 have upper edges carrying on the inside hooks 17 securely connected to the undergarment." Column 2, lines 57-59 states: "* * * a row of hooks 27 positioned and secured in the top of the cup portions 20 of the undergarment." Column 2, lines 60-62 states: "* * * series of hooks 27 secured to the top of the body or cup portions 20 of the undergarment * * *." None of these references supports the location of the fastening elements as being "below the upper edge" or "entirely below said upper edge" or "in their entirety * * * below the upper edge." (142, 213-14, 310-13)
20. There is no reference in the specification as to the formation or elimination of "creases" and "folds" in brassieres. (146, 215) There is no support in the specification for the material contained in the "whereby" clause of claim 4 relating to the elimination of creases and folds. (145-46, 237) Nor was it one of the stated objects of the Oelbaum patent to avoid creases and folds. (531, 533)
21. No supplementary oath was ever filed by the plaintiff in the patent application. (Def. Ex. A)
22. The drawings filed on January 9, 1956 as part of the patent application were never amended during the prosecution of the case in the Patent Office. (169)
23. The drawings do not clearly point out the exact location of the fastening elements in relation to the upper edge of the breast cup. (239, 307, 331; Pl. Ex. 2) Figure 1 is blurred and unclear. Figure 2 is unclear on this feature because of the perspective from which it is drawn. The same problem arises as to Figure 3. (Pl. Ex. 2)
24. The drawings of the Oelbaum application as filed disclose only two hooks on the upper portion of the breast cups of the brassiere. (Figs. 1-3 of Pl. Ex. 2) Plaintiff presently claims as her invention the...
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