Southern Textile Machinery Co. v. Fay Stocking Co.

• Decision Date: 07 January 1919
• Docket Number: 3189.
• Citation: 259 F. 243
• Parties: SOUTHERN TEXTILE MACHINERY CO. v. FAY STOCKING CO.
• Court: U.S. Court of Appeals — Sixth Circuit

259 F. 243

SOUTHERN TEXTILE MACHINERY CO. v. FAY STOCKING CO.

No. 3189.

United States Court of Appeals, Sixth Circuit.

January 7, 1919

Obed C Billman, of Cleveland, Ohio, for appellant.

Hull Smith, Brock & West, of Cleveland, Ohio, and A. V. Groupe and Cyrus N. Anderson, both of Philadelphia, Pa., for appellee.

Before WARRINGTON and DENISON, Circuit Judges, and KILLITS, District judge.

DENISON Circuit Judge.

The appellant, as owner of patent No. 1,050,432, issued January 14, 1913, to Davis, for a machine for uniting knit fabrics brought suit against the appellee for infringement.

The court below dismissed the bill, on the theory that, so far as the claims were valid, they were not infringed.

The defendant was using, in its factory, two styles of machines One, the Hepworth; the other, the Beattie. On plaintiff's theory of construction of the patent, all the claims sued upon were infringed by Beattie, and part of them by Hepworth. As to the alleged infringement by Hepworth, we agree substantially with the reasoning, and wholly with the conclusions, of the District Judge. Claim 11, in order to be distinguished from the other claims must be treated as directed broadly to the setting of the chaining needle in parallel relation to the impaling pins, instead of at a slight angle thereto. When this change is made with a straight needle, as is done by Hepworth--assuming that there is parallelism, instead of inclination-- we see no room for invention; indeed, if the straight needle were set close enough to the pins to get the benefits of parallelism claimed for Davis, the device probably would not operate. If the needle were bent toward the point, to get parallelism near the point in spite of inclination elsewhere, we would then have essentially the 'offset' of the other claims.

As to infringement of claims 7 and 10, set up against Hepworth, appellant's chief criticism of the opinion below is that it construed the 'offset' of the claim as calling for a bend or shoulder near the point of the needle, and that this was erroneous, because in the interference proceedings the Patent Office tribunals had construed 'offset' as referring to the projection of the needle itself from its carrying bracket or shank, and therefore the same meaning must now be given to the word. Appellant is partly right and partly wrong. It was decided that the term 'offset,' as found in Davis' original claims, included this type of shank or bracket shoulder, and, since this type was old, it was held that Davis could not make the claim, and the interference was dissolved. Thereupon the claims were modified, so as to refer only to the specific type of offset or shoulder shown and described, which was located near the point. In this way, Davis became estopped now to claim that broader meaning for 'offset' which he then abandoned. If it might be that a new claim, formulated after the interference, was capable, on its face, of the broader construction, the consideration just stated would make this result impossible.

This consideration does not reach claim 1, which had a different history; but we are not satisfied that the 'offset depressed tapered portion' of this claim is not the same thing as the 'offset pointed free end' of claim 7, or as the 'tapered offset portion' of claim 10; nor does the Hepworth stitch-carrying guide arm have the 'yielding' function and operation which characterize this claim. To interpret 'yielding' liberally enough to reach Hepworth would make it reach, also, the earlier art.

The Beattie machine was so constructed that it would carry either a straight and inclined needle, like the old art, or a parallel and offset needle, like Davis. We see no reason to doubt-- and it must be conceded--that, if the Beattie machine were equipped with the Davis needle, it would be an infringement of claims 1, 7, and 10 of the patent.

It is equally clear that, if equipped with a straight needle, the Beattie machine would not infringe, for the same reasons that the Hepworth does not. The Beattie machines used by defendant at the time of the trial, and one of which was produced as an exhibit, and the Beattie machines used in another factory, and with which alone the witness Vine was familiar, used the straight needles only. Appellant's president visited the defendant's factory just before the filing of the bill, and testifies that the Beattie machines he there saw were using a 'humped' needle. He further testifies that he asked a dealer in this class of supplies to order for him from the manufacturers of the Beattie machine a needle such as they were furnishing the users of their machines, and he produces and identifies the needle which he received from the dealer as having been furnished to the dealer by the Beattie Company in response to the order which the witness had caused to be sent in. The exhibit so produced was essentially the Davis needle, and its use would complete an infringing combination. We cannot think that the state of the proof in this respect justifies dismissing the bill for lack of evidence of infringement. Appellant's witness failed to say, in so many words, that the exhibit produced by him was a duplicate of the needle which he saw in use in defendant's factory; but we think this is the unmistakable purport of his evidence. His inspection was hasty; but, if he were mistaken, it would be easy for defendant to say so; on the contrary, defendant offered no proof on this point.

The fact as to whether the defendant did or did not use these infringing needles can hardly be a matter of dispute, and must be easily ascertained. While we think the bill should not have been dismissed for this defect in proof, yet we are not inclined to direct a decree for appellant. The subject should be followed up, on motion of the court, if necessary, far enough to develop the facts. The case should be set down for a further hearing, at which defendant may offer proof to meet, and plaintiff may offer proof to strengthen, the prima facie, though vague and unsatisfactory, case already made. Butterfield v. Miller (C.C.A. 6) 195 F. 200, 210, 115 C.C.A. 152; Ferrell v. Prame (C.C.A. 6) 206 F. 278, 124 C.C.A. 342.

We think these claims, 1, 7, and 10, are valid. Owing to the contest in the Patent Office over their validity, and the action taken there by successive tribunals, the claims have more than the usual support in the presumption of validity arising from issue. The improvement made seems, theoretically and apparently, to have utility, and its considerable use in the Davis machine, and its now supposed adoption by Beattie and defendant, confirm its utility. We cannot adopt the view that it was merely an improvement in the needle, and therefore-- perhaps-- not rightly protected by being claimed in combination with the machine. Langan v. Warren Co. (C.C.A. 3) 184 F. 720, 107 C.C.A. 631. True, the only substantial change was in the form of the needle; but this required corresponding changes in the form and adjustment of co-operating parts, and the offset permitted this needle and the other parts to unite in producing a chain of stitches and delivering it from the needle in a way that would not otherwise have been possible.

However, the fact that the patented improvement has directly to do only with the shape of the needle has another bearing. The patentee cannot be entitled to recover the profits of using the entire machine, other parts of which have been properly, though unnecessarily, put into claim combination with the needle. The profits to be recovered must therefore be confined to those resulting from using the Davis needle, as compared with the use of a straight needle. We cannot foreclose an inquiry into the existence of some intelligible basis for such comparison, but we think that before any accounting is ordered for profits, as distinguished from those damages which might be shown by any of the accepted measures (e.g., see U.S. Frumentum Co. v. Lauhoff (C.C.A. 6) 216 F. 610, 617, 132 C.C.A. 614), the trial court should be satisfied that there is some theory of recovering profits plausible enough to justify an effort to establish it (Ludington v. Leonard (C.C.A. 2) 127 F. 155, 62 C.C.A. 269; Merriam v. Saalfield (C.C.A. 6) 198 F. 369, 371, 117 C.C.A. 245; Rushmore v. Badger Co. (C.C.A. 2) 198 F. 379, 381, 117 C.C.A. 255; Gaines v. Rock Spring Co. (C.C.A. 6) 226 F. 531, 543, 141 C.C.A. 287).

It is not important to pass upon the validity of the other claims sued upon. They are not broader than 1, 7, and 10, and cannot affect the scope of injunction or accounting.

The opinion of the court below (Westenhaver, District Judge), except with reference to the Beattie machine, follows:

Complainant's bill charges infringement by defendant of claims 1, 5, 6, 7, 8, 9, 10 and 11 of letters patent No. 1,050,432, issued January 14, 1913, to Edwin O. Davis. The answer denies infringement, and also sets up the invalidity of complainant's patent. The defendant is using what is known as the Hepworth machine, which, it is claimed, infringes claims 1, 7, 10 and 11 of said patent, and also what is known as the Beattie machine, which, it is said, infringes claims 5, 6, 8 and 9 of said patent.

The Davis patent was issued on application filed April 22, 1909 serial No. 491,511. The specifications and accompanying drawings describe the invention as relating to improvements in machines for uniting knit fabrics, the machine being adapted to unite or connect the meeting edges of two pieces or portions of knit fabric by joining the loops of the adjacent edges thereof by means of an elastic seam or chain of stitches. There are three pages and seven figures of illustrative drawings. The specifications comprise five pages. Apparently the application, when made,...