Rooted Hair, Inc. v. Ideal Toy Corp.

• Decision Date: 31 March 1964
• Docket Number: No. 194,Docket 27858.,194
• Citation: 329 F.2d 761
• Parties: ROOTED HAIR, INC., Plaintiff-Appellant, v. IDEAL TOY CORP., Defendant, and A & B Wig Co., Inc., et al., Defendants-Appellees.
• Court: U.S. Court of Appeals — Second Circuit

329 F.2d 761 (1964)

ROOTED HAIR, INC., Plaintiff-Appellant, v. IDEAL TOY CORP., Defendant, and A & B Wig Co., Inc., et al., Defendants-Appellees.

No. 194, Docket 27858.

United States Court of Appeals Second Circuit.

Argued November 21, 1963.

Decided March 31, 1964.

Robert W. Fiddler, New York City (Martin G. Reiffin, New York City, on the brief), (Harry Rosenblatt and Arthur T. Fattibene, New York City, of counsel), for plaintiff-appellant.

Maxwell James, New York City (James & Franklin, New York City, on the brief), for defendants-appellees A & B Wig Co., Inc. and A & B Wig Co.

Thomas J. Byrne, Jr., New York City (Keith, Isner, Byrne, Des Marais & Chandler, New York City, on the brief), for defendants-appellees Horsman Dolls, Inc., and others.

Before MEDINA, WATERMAN and MARSHALL, Circuit Judges.

MARSHALL, Circuit Judge:

This suit was brought by plaintiff, assignee of United States Letters Patent Nos. 2,670,570 (issued to Morris Gnaizda) and 2,698,019 (issued to Bernard Sotzky), against the named defendants, for infringement of its patents. The action against defendant Ideal Toy Company was discontinued by stipulation and proceeded against the appellants, who are manufacturers of dolls and doll wigs. The defenses relied upon were, with regard to Gnaizda, anticipation by British patent No. 17,013 to Fairweather, and, with regard to Sotzky, prior invention, knowledge and use by others before Sotzky made his invention and public use more than one year before the date of the application. (35 U.S.C. § 102(a), (b), (g).)

I The Gnaizda Patent

The trial court found that the Gnaizda patent No. 2,670,570, containing a single claim, was wholly anticipated by British patent No. 17,013 to Fairweather, issued in 1908, which contains two claims. The claims of the two patents are set out below.¹ The Patent Office initially rejected Gnaizda's application, which then contained ten claims, on the basis of Fairweather. The claims were rewritten into three new ones, which were again rejected. After Gnaizda's attorney requested reconsideration, the examiner ultimately allowed one of the claims, which became the subject of the patent. The chief difference between the rejected claims and the one ultimately allowed is that the latter calls for the looped ends of the stranded material to be "in tight interlocking relationship" and to extend "along the inner surface of said base in a plane generally parallel therewith and forming a continuous chain of linked loops." The court below determined that these distinctions are really no distinctions, because, under Fairweather's teaching, the loops which engage each other would naturally be in a tight interlocking relationship and would extend along the base of the doll's head. At any rate, employing the Fairweather teaching, it would be obvious to one skilled in the art that mere pulling on the free ends of the hair would tighten the loops.

Appellant attacks these findings on the grounds that Fairweather does not in fact call for the same type of stitch as Gnaizda.² It relies heavily on the presumption of validity of the patent, strengthened by the examiner's consideration of the allegedly anticipatory reference, and on the fact that the industry did not employ Fairweather's teaching despite its forty years' standing but immediately adopted Gnaizda. See Georgia-Pacific Corp. v. United States Plywood Corp., 258 F.2d 124 (2 Cir.), cert. denied, 358 U.S. 884, 79 S.Ct. 124, 3 L.Ed.2d 112 (1958). But cf. Lorenz v. F. W. Woolworth Co., 305 F.2d 102, 105 (2 Cir. 1962). Plaintiff also argues that the drawings of United States patent No. 1,000,525 to Kubelka, which it contends relates to the same invention as Fairweather, show that what was contemplated was not the drawing of a loop through a perforation in the doll skull, but drawing one end through the base and then out again, in the manner of a conventional stitch. However, the assertion that the American patent to Ludmilla Kubelka and the British patent to Fairweather (who was administrator of the estate of Josef Kubelka) and one Theodor Friedmann relate to the same invention is not supported. Indeed, the American patent does not disclose that the hair is to be drawn in loop form through the holes in the skull.

The fact that no use was made of the Fairweather invention for many years is not particularly relevant here, since it appears that soft vinyl plastic heads suitable for the direct insertion of hair were not developed until 1948. Fairweather intended his invention to be used on heads made of wood pulp before the pulp was fully hardened. However, we believe with the court below that Fairweather's teaching could be applied in connection with vinyl plastic heads suitable for the direct insertion of hair, and that Gnaizda's disclosure does not constitute a patentable advance over Fairweather. It appears from Gnaizda's testimony that the manner of affecting his invention is to use a hook shaped needle which, starting from the inside of the doll's head moves through the skull, engages a strand of hair, pulls the strand through to the inside to form a loop, then moves out again, through another perforation, engages another strand, pulls it into a loop on the inside of the skull and pulls that loop through the preceding loop. This seems to be exactly parallel to what one could do using the teaching of Fairweather's second claim, which in effect describes a chain stitch. Although Fairweather calls for the use of adhesive to secure the hair to the base and Gnaizda does not, if the stitches made in accordance with the former's teaching were pulled tight enough, such adhesive would not be necessary. We cannot accept the view that spelling this procedure out amounted to a patentable invention.³

II The Sotzky Patent

Sotzky patent No. 2,698,019 relates to an "Attachment for a Post Chain Stitch Sewing Machine Mechanism for Injecting Continuous Hair into a Doll's Scalp and Cutting the Projected Hair," and contains five claims. They differ in some details, but for purposes of this appeal it suffices to set out claim 1, which is representative of all.⁴ It will be seen that the critical elements of the suit patent are the presser-foot, designed to hold the head in position for the needle to penetrate; the blade, which cuts the hair material to the desired lengths, and the rotating cross-arms, which carry the hair to the blade, and take it out of the path of the vertically reciprocating needle. The remainder of the machine is admittedly composed of purely conventional elements. Application was filed on September 15, 1953, and the patent issued on December 28, 1954. The judge found that continuous-strand rooting attachments of the type disclosed by the patent were in public use at David & David, a company owned by Gnaizda, in August 1952, and at Sayco Doll Corp. at least as early as July 1952; in both cases more than one year prior to the date of the application. He also found that Sotzky failed to establish a date of invention prior to the filing of his application, and that attachments responsive to the patent claims were invented prior to that date by persons in the employ of David & David, and by Fred Forrest Pease and Daniel Lenoble, who were working for Sayco Doll Corp., and were known, used and sold by David & David, Sayco, Nova Devices Co., Doll Machine Co. (manufacturers of the attachments), Belle Doll Co., Wiggy and A & B Doll Co. (doll and wig manufacturers).

Appellant attacks these findings on the ground that no convincing proof existed for the use or invention of continuous hair rooting machines in 1952, more than one year prior to the application, and that the judge erred in ascribing a date of invention later than January 1953. Obviously, the questions involved here are principally factual, and, despite their method of preparation, the judge's detailed findings cannot be set aside unless clearly erroneous. F.R.Civ. P. 52(b). We have, however, made a thorough independent study of the record on appeal and have concluded that the judge's findings are not only not clearly erroneous, but supported by substantial and convincing evidence. Of course, one asserting that a patent has been anticipated by an unpatented device bears a heavy burden of proof, and must come forward with clear and convincing evidence to support his claim or defense. Barbed Wire Patent Case, 143 U.S. 275, 12 S.Ct. 443, 36 L.Ed. 154 (1892); Anderson Co. v. Trico Prods. Corp., 267 F. 2d 700, 702 (2 Cir. 1959). That burden is not an insuperable obstacle, however, and we conclude that it has been met in this case. Smith v. Hall, 301 U.S. 216, 57 S. Ct. 711, 81 L.Ed. 1049 (1937); Helene Curtis Inds. v. Sales Affiliates, Inc., 233 F.2d 148 (1956).

The testimony of Gnaizda, a stockholder in the plaintiff, lends considerable support to the defendants' case. He first engaged Sotzky in 1950 or 1951, to develop a machine whereby hair might be rooted directly to a doll's head. Sotzky developed what has been termed in this litigation a "pre-cut" hair machine. It was basically a conventional Puritan sewing machine, with an attachment which required the cutting of hair fibres to the desired length, their placement in a container attached to the machine, and their insertion into the doll's head by means of a conventional needle. However, his machine proved less than satisfactory, and Gnaizda took it to two mechanics, one of whom was Lawrence Hall, to have it modified. Hall finally delivered a successful machine in early 1952, and later applied for and received a patent on it.

Gnaizda further testified that his company soon changed to a continuous strand machine. He stated that the difference between the Hall pre-cut machine and the continuous machine was that the container for holding the pre-cut hair was removed, and a stationary blade or cutter was installed, to which a rotating disk (found on the Hall machine) brought the strand of hair for cutting to the desired...