Rosen v. Lawson-Hemphill, Inc.

• Court: U.S. District Court — District of Rhode Island
• Writing for the Court: PETTINE
• Citation: Rosen v. Lawson-Hemphill, Inc., 399 F.Supp. 532 (D. R.I. 1975)
• Decision Date: 06 August 1975
• Docket Number: Civ. A. No. 5362.
• Parties: Karl Isac Joel ROSEN, AB Iro v. LAWSON-HEMPHILL, INC.

399 F. Supp. 532

Karl Isac Joel ROSEN, AB Iro v. LAWSON-HEMPHILL, INC.

Civ. A. No. 5362.

United States District Court, D. Rhode Island.

July 24, 1975.

Addendum July 29, 1975.

As Corrected August 6, 1975.

Elliot A. Salter, of Salter & Michaelson, Providence, R. I., Richard G. Lione, James P. Hume and Charles E. Quarton of Hume, Clement, Brinks, Willian, Olds & Cook, Ltd., Chicago, Ill., for plaintiffs.

DeWitte T. Kersh, Jr., of Tillinghast, Collins & Graham, Providence, R. I., Robert B. Frailey of Miller, Frailey & Prestia, Haverford, Pa., for defendant.

OPINION

PETTINE, Chief Judge.

This is an action charging the defendant with infringement of United States Patent No. 3,648,939 granted March 14, 1972 for a "yarn storing device"¹ and seeks an injunction and an accounting. The defense is predicated on non-validity, non-infringement, and patent misuse.

Jurisdiction of the Court is based on 28 U.S.C. § 1338(a).

Karl Isac Joel Rosen is a citizen of Sweden and the inventor of the patent in suit. AB Iro, co-owner of the patent,² is a manufacturing company located in Sweden engaged in the business of manufacturing and selling yarn feeding mechanisms in Europe and the United States.

The defendant is a Rhode Island corporation with its principal place of business in Central Falls, Rhode Island.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

The object of the invention in question is to adjust the tension on yarn being fed to a knitting machine. This is a most important goal because in knitting the quality of the fabric produced is greatly affected by the uniformity of the loops or stitches which will vary in length unless the length of the yarn per stitch is uniform. In order to accomplish such uniformity it is necessary that the knitting needles receive the yarn from the source under a very low and constant tension. It appears that throughout the history of textile manufacturing this has been an elusive trick never precisely solved,³ especially in pattern knitting requiring varying or intermittent demands for yarn.⁴

In simplest terms, in the past the yarn delivered to the weaving and knitting mills in large conical wrappings, referred to as "cones of yarn" or "cheeses", was threaded through an eyelet, then along a path to the knitting or weaving machine. The energy to feed this yarn to the knitting needles was supplied by the knitting needles themselves, and as a consequence the needles in the process of knitting had to overcome the drag or friction generated by the path the yarn traveled. This led to jerking and an uneven feed of yarn. Because knitting requires a very closely controlled tension — that is, the yarn strand as it is being knitted must be kept sufficiently and evenly taut — the industry developed automatic feeders which, as technologically improved, developed into intermediate yarn storing devices. However, proper tension control still was not grasped. The invention at issue relates to the combination of this storing device and a ring designed to create the required retarding or tension of the yarn.

The novelty alleged by the plaintiffs is the intermediate storage feeder with the retarding ring of the construction described in the patent.

The Rosen Patent⁵ No. 3,648,939 — March 14, 1972

Though there are eleven claims, the plaintiffs are charging infringement of claims 1, 2, 3, 4, 6, 7, 8 and 9. All these except "1" are dependent claims. Accordingly this opinion will deal with the issues of claim 1 which reads:

"The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:

1. In a yarn storing device having a storing drum adapted to have yarn wound tangentially thereon and a retarding ring surrounding the drum and adapted to have the yarn passed thereunder for removal axially from the drum, comprising the improvement wherein said retarding ring includes a base ring surrounding the periphery of the drum and spaced a small distance therefrom and a plurality of thin elongated resilient fingers extending from the base ring toward the surface of the drum, the resilient fingers being inclined inwardly from the base ring along an imaginary conical surface, said resilient fingers extending in the direction of relative rotation of the yarn during its withdrawal from the drum and disposed so as to overlap one another in the direction of the periphery of the drum, and said drum having a shoulder thereon disposed in engagement with the free ends of said resilient fingers."⁶

Figure 1 of the patent illustrates the various embodiments of the invention:

At this point it should be noted that the retarding ring "comprises a unitary molding of plastics material . . . provided with a base ring as well as fingers extending therefrom". It is nothing more than a simple plastic ring with so-called fingers inclined inwards and extended spirally in the direction of the relative rotation of the yarn. The circumference at the tips of the fingers is less than the circumference of the base. The circumference at the tips of the fingers is slightly less than that of the storing drum. The tension of the fingers holds the ring to the drum by creating pressure. This pressure and the spiral shaping of the fingers as described is, as contended by the plaintiffs, particularly advantageous because it results in a slight braking of the yarn as it passes from finger to finger resulting in the required tension.

Referring to figure 1, the yarn (3) runs off the bobbin (2), through the guide elements (4, 5, 6, 7), onto the storing drum (8); it is wrapped around the storing drum⁷ a number of turns and then removed therefrom by coming down from the storing drum under the retarding ring (10) (11) (12); as a consequence the yarn as it is withdrawn is subjected to the tension of a series of fingers. There is a holding and releasing action as the yarn goes from one finger to the other. The next finger tends to bend slightly sideways. Tension is imparted to the yarn as it passes between the free end of the finger and the drum surface. The amount of sideways bending of the finger is a function of the amount of friction created. Any irregularity in the yarn itself that tends to increase the tension is thus compensated. This tension can be predetermined. The point is, the fingers having a circumference less than that of the drum create a tension on the drum holding the ring on it, and since the base of the ring (as set on the drum it is the upper part of this one-piece construction) has a greater circumference than the drum, the effect is a self-adjusting activity. The fingers respond to the tug of the yarn as it passes under each little tip. These fingers are inclined so they overlap each other in the direction of the removal of the yarn. (For example, the fingers of a comb (teeth) are at right angles from the base and run parallel to each other. If these same fingers were slanted from their base they would overlap—each would overlap the vertical area occupied by its neighbor, and if this same comb was bent to form a circle it would, in a crude way, resemble the retarding ring). The motor driven storing drum pulls the yarn from the bobbin, but from the storing drum to the knitting needles the knitting machine does the pulling. This action is by design so free from tension that a tension imposing device is added so that the yarn can come off as needed at the proper predetermined tension and at the rate the knitting function demands.

Though the ring is held on the storing drums by the fingers, the yarn as it passes under the tips of the fingers creates a downward pull on the ring, and to keep it from coming off the plaintiff has a shoulder on the drum. In a crude way, the shoulder is that bulge at the very bottom of the drum that has a circumference greater than the rest of the drum, fig. 1(13).

The Defendant's Device

The defendant's device differs in no significant way from that of the plaintiffs' excepting in the omission of the shoulder, which the plaintiff claims only acts as a stop, and the use instead of a supporting ring to hold the retarding ring.⁸ (fig. 2).

I need not discuss the retarding rings per se for they are identical. In fact the defendant used the retarding ring manufactured by the plaintiffs.

A multi-facted position is taken by the defense. It claims:

1. Obviousness—the standard for non-obviousness has not been met. (35 U.S.C. sec. 103) The defense argues that

"(a) The plaintiffs' invention is drawn to an old and well known combination, the operation and results of which are unchanged and in which the individual elements all function in the usual manner. The claimed combination produces no new, unusual, surprising nor non-obvious results, but simply attempts to repatent an old combination of elements.

(b) Even assuming the old combination has been improved by defendant's substitution of a self supporting retarding ring, in place of the separately supported retarding rings previously used, such alleged improvement of one element of the old combination confers no right to repatent the old combination. Further, such alleged improvement confers no right to claim the improvement in combination with other old parts which perform no new function in the combination.

(c) In view of the state of the prior art to which the patent pertains, the subject matter of the patent as a whole was obvious at the time it was made to a person of ordinary skill in that art."

2. Non-infringement—it states

"Defendant's yarn storing devices utilizing yarn retarding rings of defendant's own manufacture omit the following construction, specifically required by each of the patent claims in order to render the plaintiffs' retarding rings self supporting:

(i) a shoulder on the drum of the yarn storing device, and

(ii) the free ends of the thin, elongated bristle-like fingers of the yarn retarding ring disposed in engagement with the shoulder to support the ring on the drum."

3. Implied license to use

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