Rokap Corporation v. Lamm

• Decision Date: 01 March 1935
• Docket Number: No. 2163.,2163.
• Citation: 10 F. Supp. 219
• Parties: ROKAP CORPORATION v. LAMM et al.
• Court: U.S. District Court — District of Maryland

10 F. Supp. 219

ROKAP CORPORATION v. LAMM et al.

No. 2163.

District Court, D. Maryland.

March 1, 1935.

Joseph Wase, of Baltimore, Md., and A. D. Caesar and C. W. Rivise, both of Philadelphia, Pa., for plaintiff.

Emanuel E. Ottenheimer, of Baltimore, Md., Samuel E. Darby, Jr., of New York City, and Herbert J. Jacobi (of Jacobi & Jacobi), of Washington, D. C., for defendants.

CHESNUT, District Judge.

This case presents a suit in equity for alleged patent infringement in the usual form. The patent involved, No. 1,830,768, was issued November 10, 1931, to Isaac M. Rod, of Dublin, Pennsylvania, on application filed January 5, 1927, and has been assigned to the plaintiff corporation, which was formed by the patentee, Rod, and one Kaplan. The patent is a method and product, and not a machine, patent. It contains nine claims of which Nos. 4 and 8 are selected by the plaintiff as illustrative of all, No. 4 being a claim for the product and No. 8 for the method of producing it. It is of exceedingly limited scope, comprising a particular method of stitching the inner lining of the waist band of trousers to the outside cloth and the intermediate canvas, which constitutes a stiffening fabric. The particular stitch which is used to accomplish this result is applied by a machine and is known as a "zig zag" stitch. This form of stitch is, however, old in the art of garment making generally and also particularly in the making of waist bands for trousers. The alleged novelty of the plaintiff's invention is, therefore, even more limited than the use of the zig zag stitch itself, and is said to consist in the special application of said stitch to the fabrics whereby one stroke of the needle of the machine pierces all three layers of the fabric, to wit, the exterior cloth, the intermediate canvas and the interior lining, while the succeeding or alternate stroke of the needle pierces only two layers of the fabric, that is, the cloth and the canvas but not the lining. The result is that the loop of the thread formed by the alternate stitches of the needle is shown only on the inside of the waist band of the trousers and extends from a point near the top of the lining into the overturned edge of the cloth. The peculiar advantages claimed for this particular application of the well-known zig zag stitch is said to be that it simulates a hand sewn garment and also has certain advantages in utility and wearing qualities.

The individual defendant, Jacob C. Lamm, is also the chief proprietor of the defendant corporation which is successor to the individual business. The defendant corporation is engaged in Baltimore in a large and substantial way in the manufacture of trousers and the business as conducted formerly by the individual and now by the corporation has been continuously in existence for twenty years or more. It is alleged in the bill that the corporation was formed for the evasive purpose of escaping the liabilities of the individual arising from an infringement of the patent but the evidence fails to support the charge. The plaintiff corporation is not itself engaged in the business of manufacturing trousers, but has extensively canvassed such manufacturers to accept licenses under its patent for annual charges, and many have done so. The plaintiff offered a license to the defendant on the basis of an annual payment of $100, which the defendant declined to accept. The defendant does not deny that it produces garments made in accordance with the method described in the plaintiff's patent but contends that the patent is invalid for the following reasons: (1) anticipation and want of invention; (2) that it is a mere aggregation; and (3) prior use by the defendant.

After a consideration of the testimony and arguments of counsel, I have reached the conclusion that the plaintiff's patent is invalid for all these reasons. To be entitled to receive a patent the inventor's discovery must be of something new and useful and not previously known or used by others (35 USCA § 31). The testimony in the case convinces me that the plaintiff's alleged invention does not meet these requirements.

The exceedingly narrow scope of the plaintiff's claimed invention will be seen from a brief statement of the prior art and examination of the file wrapper of the patent. For many years the construction of waist bands for trousers has included three plies of material, consisting of the cloth of the garment, a layer of canvas which acts as a stiffener, and a thin lining material. There have been two well-known methods of uniting these three materials to form the edging of the topmost portion of the waist band. One method is to sew the edges together by machine stitching and the other consists of an initial sewing together by machine or by hand, but finishing the sewing of the lining to the cloth by hand. The "machine finish" method is relatively inexpensive but produces less satisfactory results in appearance and wear than the hand finished garment. In the machine method the usual operation is to separately superimpose the lining and the canvas upon the outer surface of the cloth, with the edges of the three plies aligned with each other and the three layers of material were then stitched together along the edges; and then the three layers were reversed so that the canvas was positioned between the cloth and the lining with the result that the seam caused by the machine stitching was concealed from view, and the waist band then pressed to make as thin an edge as possible. The disadvantage of this method was that in result the top edging was relatively thick and bulky and not always with a well defined and uniformly straight edge due to the fact that the edge of the garment so formed comprised six layers of material, each of the three plies having been once folded over in the operation. The resulting relative bulkiness was due largely to the fact that the stiffening material was necessarily folded over along with the cloth and lining. This doubling of the thickness of the canvas was avoided in the hand sewn method in which the operation consisted in first turning over the edge of the cloth, then superimposing the single ply of canvas and inserting the free or unturned edge thereof under the overlapping edge of the cloth, sewing together the canvas and the cloth at the edge on so that the stitches would not appear on the outside of the garment when finished, then placing the lining with an inturned edge on the cloth and canvas so that the inturned edge of the lining would be placed only very slightly below the top of the inturned edge of the cloth, and then sewing by hand the lining to the inturned edge of the cloth so that the loops of the thread formed by the stitches of the needle would not be visible on the outside of the finished trousers. In the use of either method the canvas and the lining were also stitched together at a lower point for neatness and durability. It will be noted that in the hand sewn operation the edge of the waist band thus formed is composed of five and not six plies of material, as the canvas is at no place overlapped but consists of a single thickness of the material, overlapped by the cloth and underlying the lining.

The stated object of the plaintiff's patent was to provide a method whereby the advantages of the hand sewn garment could be preserved in the less expensive machine operation. The plaintiff's method of accomplishing this result as indicated in the patent is to feed the three layers of material to a "zig zag" sewing machine, in such arrangement that the overturned edge of the cloth, overlapping the free (that is, unturned) edge of the canvas, with the inturned edge of the lining superimposed on the overlapping edge of the cloth will be all three stitched together by the zig zag machine in one operation. The characteristic feature of the zig zag stitch is that the loops of the thread resulting from the alternate strokes of the needle give a diagonal effect in relation to the union of the lining with the cloth, similar in appearance to hand sewing.

It is not claimed by the plaintiff that there is any novelty in the use of the zig zag sewing machine in the construction of garments generally or waist bands for trousers particularly. And it is also apparent that there is no novelty in the final arrangement of the materials constituting the waist band in the plaintiff's method. The latter differs from the hand sewn method only in omitting the first operation of sewing the cloth to the canvas, and a zig zag sewing machine is substituted for the manual operation of sewing the lining to the cloth. The machine itself is not patented, and it is very doubtful indeed whether the elimination of the first sewing operation could constitute a patentable invention either in a method patent or a machine patent. But however that may be, the claims of the plaintiff's patent are not based on this difference between the hand sewn method and the plaintiff's machine method, but, as was initially pointed out, on the particular form of application of the zig zag stitch to the combined materials. This will appear more clearly upon examination of the file wrapper of the patent.

Claim 4 of the plaintiff's patent reads as follows:

"4. A garment edging comprising a body fabric ply and a lining fabric ply having inturned juxtaposed edges, the edge of said body ply extending slightly beyond the edge of said lining ply, a ply of stiffening fabric between said body and lining plies, and extending under and supporting the inturned edge of said body, and a row of zig zag stitches connecting the inturned portion of the edge of said body ply with said stiffening ply and the inturned edge of said lining ply, said row of zig zag stitches being visible from the lining side of edging and invisible from the outside thereof and stitches aforesaid alternately engaging one of said inturned edges to said stiffening fabric and both of said inturned...