Rosen v. Lawson-Hemphill, Inc., LAWSON-HEMPHIL

• Decision Date: 21 December 1976
• Docket Number: INC,No. 76-1069,LAWSON-HEMPHIL
• Citation: 549 F.2d 205
• Parties: Karl Isac Joel ROSEN et al., Plaintiffs, Appellees, v., Defendant, Appellant.
• Court: U.S. Court of Appeals — First Circuit

Page 205

549 F.2d 205

193 U.S.P.Q. 193

Karl Isac Joel ROSEN et al., Plaintiffs, Appellees, v. LAWSON-HEMPHILL, INC., Defendant, Appellant.

No. 76-1069.

United States Court of Appeals, First Circuit.

Argued Sept. 8, 1976.

Decided Dec. 21, 1976.

William W. Rymer, Boston, Mass., with whom John N. Williams, Frank P. Porcelli, Gregory A. Madera and Fish & Richardson, Boston, Mass., were on brief, for defendant-appellant.

Richard G. Lione, Chicago, Ill., with whom James P. Hume, Peter E. Heuser, Hume, Clement, Brinks, William, Olds & Cook, Ltd., Chicago, Ill., Carl H. Amon, Jr., David S. Mortensen, Hale & Dorr, Boston, Mass., Elliot A. Salter and Salter & Michaelson, Providence, R. I., were on brief, for plaintiffs-appellees.

Before COFFIN, Chief Judge, CLARK, ^* Associate Justice, U.S. Supreme Court (Ret.), and CAMPBELL, Circuit Judge.

COFFIN, Chief Judge.

Karl Isac Joel Rosen, the inventor, and AB-Iro, the co-owner of the patent in suit (hereinafter we will refer to the plaintiffs collectively as "Iro"), instituted this action to enjoin Lawson-Hemphill, Inc. (Lawson) from infringing U.S. Patent No. 3,648,939 (Rosen patent) and to obtain an accounting. The district court found that the Rosen patent was valid and had been infringed, and it granted the requested relief, staying the questions of an accounting and of attorney fees pending appeal. 399 F.Supp. 532 (D.R.I.1975). Lawson now appeals, alleging that the district court committed reversible error in making the determinations that gave rise to the finding of liability. We affirm. In considering the issues raised on appeal, we will frequently simply refer to the careful, well reasoned opinion of District Judge Pettine. Many of the arguments presented to this court are identical to those presented below, and where we agree with the district court's analysis, we will simply say so.

Before discussing the facts and the legal issues, there is a preliminary matter that requires discussion. A recurring theme in Lawson's appellate brief and in its prosecution of this appeal generally is that the voluminous record that was prepared below is somehow not adequate to permit the correct resolution of the issues raised in this case. Lawson now attempts to supplement that record by making factual representations as to matters not in the record. We, of course, must disregard all such representations. It is elementary that the rights of the parties are, for purposes of this appeal, determined on the basis of the materials that constitute the record on appeal. See Fed.R.App.P. 10(a). Although nothing further need be said, we note that Lawson had every opportunity below to test and challenge Iro's evidence and to present whatever evidence it thought relevant to the issues at hand.

I.

The Rosen patent, which was granted in March, 1972, is for a "yarn storing device" that ensures that the yarn that is fed to a knitting machine has a low and uniform tension. The production of such yarn tension is critical in the fabric knitting industry. Knitting machines employ a plurality of needles to form loops and stitches of yarn, and the quality of the fabric produced is greatly affected by the uniformity of these loops or stitches. A knitting machine will knit fabrics containing loops and stitches of the desired length only if the yarn tension is very low and constant. When the tension is not low, the needles will "rob" yarn back from previously formed loops and stitches. When the yarn tension is not constant, each loop or stitch will not have substantially the same length. To control yarn tension in knitting machines, the industry developed automatic yarn feeders which, as technology improved, developed into devices which stored the yarn at a station between the yarn packages and the machine and these achieved the proper tension control for plain knitting. But these proved inadequate for pattern knitting, which is done on circular knitting machines and in which the knitting needles at the different knitting stations have varying or intermittent demands for yarn.

The Rosen invention essentially solves the problem of achieving low, constant yarn tension on the knitting machines that are "The embodiments of the invention in which an exclusive property or privilege is claimed are defined as follows:

used to knit patterned fabrics. It contains eleven claims, eight of which were allegedly infringed by Lawson's device. The first claim is independent, and it is the focal point of this suit. It reads:

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."

Figure 1 of the patent, which is reproduced as an appendix to this opinion, illustrates the various embodiments of the invention. We cannot improve upon the district court's description of the manner in which the preferred embodiment of the Lawson invention works:

"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 drum 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." 399 F.Supp. at 536 (footnote omitted).

Iro's commercial embodiment of the invention operates in precisely this manner. The alleged infringing device of Lawson differs in no significant respect from Iro's except that the Lawson device omits the shoulder (13) and instead uses a supporting ring.

The key witness below was a Dr. Harry K. Wignall, who appeared as Iro's Relying upon Dr. Wignall's testimony, the district court found that the Rosen shoulder had no effect on the yarn tensioning and was simply a device to keep the retarding ring from being drawn off the storage drum. Since the Lawson supporting ring was found to be simply an alternative means of holding the retarding ring on the drum, the district court found infringement, applying the doctrine of equivalents. 399 F.Supp. at 550-52. The district court also rejected Lawson's claim that the file wrapper estopped Iro from relying upon the doctrine of equivalents. Id. at 553. Lawson attacks these findings on appeal, raising what appear to be the same arguments that were rejected below. We have considered the record and are satisfied that the district court was correct in finding that, if valid, the Rosen patent was infringed.

                expert and whom Lawson stipulated to be a "well-known knitting expert".  Dr. Wignall had conducted elaborate tests on the Rosen device, the Lawson device, and devices based upon the prior art, and these tests were introduced into evidence without objection.  1  The tests revealed that only the yarn storage devices which employed the Rosen retarding ring produced the desired yarn tension and that there was no difference of any significance between the Lawson and Rosen devices.  At trial Dr. Wignall explained his tests and then offered his expert opinion as to how the Rosen device worked and why it produced results superior to the prior art
                

II.

The substantial issue on appeal concerns the validity of the Rosen patent. Below Lawson maintained that the patent in suit was invalid, arguing that it was simply a combination of old elements and, alternatively, that the one arguable contribution to the art the Rosen retarding ring itself was an obvious improvement over the prior art. The district court rejected both arguments. Lawson now maintains that the...