Talon, Inc. v. Union Slide Fastener, Inc., 15714.

• Citation: 266 F.2d 731
• Decision Date: 23 April 1959
• Docket Number: No. 15714.,15714.
• Parties: TALON, INC., Appellant, v. UNION SLIDE FASTENER, INC., Appellee. UNION SLIDE FASTENER, INC., Appellant, v. TALON, INC., Appellee.
• Court: U.S. Court of Appeals — Ninth Circuit

266 F.2d 731 (1959)

TALON, INC., Appellant, v. UNION SLIDE FASTENER, INC., Appellee.

UNION SLIDE FASTENER, INC., Appellant, v. TALON, INC., Appellee.

No. 15714.

United States Court of Appeals Ninth Circuit.

April 23, 1959.

Lyon & Lyon, Charles G. Lyon, Leonard S. Lyon, Los Angeles, Cal., McCoy, Greene, & TeGrotenhuis, William C. McCoy, William C. McCoy, Jr., Cleveland, Ohio, for appellant.

Delavan Smith, Edwin S. Shapiro, Smith & Auslander, William J. Graham, New York City, Alan D. Mockabee, Los Angeles, Cal., for appellee.

Before FEE, CHAMBERS and JERTBERG, Circuit Judges.

JERTBERG, Circuit Judge.

Talon, Inc., a Pennsylvania corporation, hereinafter designated Talon, instituted this action for a patent infringement against Union Slide Fastener, Inc., a California corporation, hereinafter designated Union, seeking relief by way of injunction and damage. Union denied the validity of Talon's patents, and by counterclaim Union charged Talon with an unlawful combination and conspiracy to restrain and monopolize trade. Union prayed for treble damages and attorney's fees against Talon.

The district court found and concluded that Talon's patents were invalid and void and not infringed by Union. The district court adjudged that Talon take nothing, and that its complaint be dismissed. The court further concluded that Union take nothing on its counterclaim, and adjudged that the counterclaim be dismissed. The district court further adjudged that Union have and recover from Talon the sum of $20,000 for attorney's fees. Talon appeals from the judgment of the district court dismissing its complaint, and from the judgment of the district court awarding attorney's fees to Union. Union appeals from the judgment of the district court dismissing its counterclaim, and denying relief thereunder.

We will first consider the merits of Talon's appeal. The district court concluded that claims 1 through 4 and 16 and 17 of the United States Patent Number 2,078,017 to one Poux, and claims 1 through 4, 13, and 32 through 40 of the United States Letters Patent 2,437,793 to one Silberman were invalid and void. Talon has appealed to this Court only on the issue of the validity of the patent it acquired from Silberman, and the award of attorney's fees to Union.

Validity and Infringement.

The Silberman patent in suit relates to zipper manufacturing machinery and describes a machine which takes a strip of metal at one point, fabric tape at another point, forms from the metal the individual metal zipper elements, attaches them to the side of the tape, and delivers the completed zipper tape or stringer at a third point. The machine accomplishes this by feeding the strip of metal into a punch press which forms the strip into the shape of a zipper element, cuts it from the strip, and by the use of a pair of jaws squeezes the element in the same operation onto the appropriate portion of the tape which is being drawn between the jaws. The operation is continuously repeated and the zipper elements are serially placed upon the tape forming a zipper chain. When two of these zipper chains are combined with a slider they make a conventional zipper — the slide operating over the zipper chains, locks and unlocks each individual element depending on which direction the slide is moved.

Each of these interlocking zipper elements which serve to lock the two zipper chains together has a projection on one side and a recess on the other. The projections and recesses of the zipper elements on one chain interlock with the recesses and projections on the other chain, to hold the two chains together when the zipper is closed. These zipper elements must be made with great precision, be equally spaced a precise distance from each other, and be firmly clamped in perfect alignment on the edge of the fabric tape, at high speed and very low cost, in order to have a commercially acceptable product. Faulty spacing of the elements on the tape, failure to align all elements of the tape, or failure to firmly clamp each element in place produces unsatisfactory zippers. The requirement for precision, both in the making of these minute zipper elements and in their attachment to the tape, has long been recognized as one of the major problems in the zipper industry. This is reflected in the prior art which indicates the many zipper-making devices or combination of devices which have been patented in the zipper field.

The district court found, and Talon does not dispute, that each element in the Silberman device was known to the prior art. The court rejected Talon's argument that the Silberman patent was a true combination disclosing a new, additional and different function from any machine described in the prior art. The court held specifically that no new result was accomplished and that the patent was a non-patentable aggregation and not a combination.

Talon, on the other hand, claims that nowhere in the prior art is there described the same function which permits the simultaneous forming of the zipper elements and their attachment to the zipper tape while the element is kept under complete control. Talon claims that this is a new, additional and different function giving life to its patent and making it a true combination.¹ Specifically this function is described in Talon's brief as lying "in the fact that the ram which forms the projections and recesses on the strip of metal while the end element is being clamped on the tape, also is the means which cuts off the end-most element as it actuates the closing jaws to attach the element to the tape which moves in a fixed path past the end of the strip. Thus the element is always under complete control while it is being clamped on the tape. There is a new cooperative relationship in the Silberman patent between the ram and the tools carried by or actuated by it which produces the new result of holding the strip and the end element in a vise-like grip to securely position the same as the legs are being closed about the tape and as the end element is being severed from the strip. Nowhere in the prior art do we find this cooperative relationship or this result."

Union contends that this control function of Silberman is not a part of the patent as it was not claimed or otherwise referred to in the Letters Patent. This contention is without merit. All the uses or functions of an invention are covered and secured by a single patent for that invention, and this includes even those not known to the inventor at the time the patent is granted and must be considered in determining the validity of the patent.²

The essential difference between Silberman and its predecessors in the prior zipper art is that in Silberman the metal strip from which the zipper element is cut remains intact and uncut until it has been moved into a position where, without further movement, the element is formed, and then with the same ram, cut from the strip and attached to the zipper tape. All of these functions are described in the prior patents either as part of one or two different machines. But nowhere in the prior art cited is there described a method by which all these functions are all accomplished while the zipper element is securely held in one place without its having to be moved while these functions are performed. All the previous methods require that the element be moved at least once while being formed, severed, or attached to the tape. The zipper element produced by the Silberman patent is held in what Talon calls a "vise-like grip" until it is attached to the tape. This Talon claims keeps the element under complete control. Control then is the essence of what Talon claims to be new and different about its patent. But at least one patent cited by Union, Sundback, Patent No. 1,331,884, which preceded Silberman, combined in one machine both the production of the zipper element and its attachment to a tape and also kept the element under control. Even though not held in the grip of the cutting ram, the Sundback element, during the steps from the time it is formed until attached to the zipper tape, is held in a framework consisting of the unused portion of the metal strip from which it has been cut. Possibly this does not give the complete control of Silberman, but it is control nonetheless.

It may be true that Silberman has improved on the prior art, and more particularly on the Sundback method. But the fact remains that all Silberman describes is a rearrangement of known elements in such a way that even though there is a "new cooperative relationship," the result is still only a form of control, slightly better than described in Sundback perhaps, but at best representing only mechanical skill, not invention. Improvement alone is not enough. Here each element performs the same mechanical function it has heretofore been known to perform. This fact distinguishes Stearns v. Tinker & Rasor, supra, relied on by Talon. In that case where this Court found a combination patent valid, it was specifically pointed out that the elements of the patent in suit "do functionally operate differently in the combination than they did in their old surroundings". 220 F.2d at page 57. The Stearns invention also filled a long felt need in its field. Here there is no evidence Silberman filled any need, any more than other machines already in use or disclosed.

The machine described here does not produce a new, unusual or surprising result, or even any additional or different function to come within the applicable standard of invention required for a valid patent.³ To merely accomplish the same result as had been obtained before in a different way through the aggregation of known elements, even though it might be with some improvement in efficiency, is not invention. The machine here produces what any mechanic skilled in the art would expect the same combination of the elements to produce.⁴ It is no more than a slight step forward which results almost...