Texas-Miller Hat Corp. v. Switzer Bros.

• Decision Date: 23 April 1953
• Docket Number: No. 13915.,13915.
• Citation: 201 F.2d 824
• Parties: TEXAS-MILLER HAT CORP. et al. v. SWITZER BROS., Inc., et al. SWITZER BROS., Inc. et al. v. TEXAS-MILLER HAT CORP. et al.
• Court: U.S. Court of Appeals — Fifth Circuit

201 F.2d 824 (1953)

TEXAS-MILLER HAT CORP. et al. v. SWITZER BROS., Inc., et al.

SWITZER BROS., Inc. et al. v. TEXAS-MILLER HAT CORP. et al.

No. 13915.

United States Court of Appeals Fifth Circuit.

February 13, 1953.

Rehearing Denied April 23, 1953.

George B. Finnegan, Jr., Morgan, Finnegan & Durham, New York City, James J. Laney and Locke, Locke & Purnell, Dallas, Tex., for appellant and cross-appellees.

Albert L. Ely, Jr., Ely, Frye & Hamilton, Cleveland, Ohio, Carlisle Blalock, of Carrington, Gowan, Johnson & Walker, Dallas, Tex., for appellee and cross-appellants.

Before HOLMES, RUSSELL, and STRUM, Circuit Judges.

HOLMES, Circuit Judge.

This suit for damages, for an accounting, and an injunction, was instituted by the Switzers in August, 1951, under the Patent Laws of the United States, Section 1338, Title 28 U.S.C., against various customers of Arthur Kahn, Inc. It alleged infringement of two patents owned by Switzer, each relating to articles dyed with fluorescent dyes; one, the Switzer patent, being entitled "Daylight Flourescent Signalling and Display Devices," the other, the Gantner patent, entitled "Improvement in Swimming Suits." Arthur Kahn, Inc., was allowed to intervene on the ground that it had agreed to indemnify the defendants and was the real party in interest. The court overruled a motion of defendants to stay proceedings on the ground that a prior suit had been filed by Kahn in the District Court of Ohio, involving the same parties and issues, and also overruled a motion by defendants for a continuance. The case proceeded to trial, and the court below entered judgment for the Switzers, disallowing any damages but holding that the patents were valid and infringed, and granting an injunction against any further violation.

The appeals and cross-appeal involve primarily the validity of the patents; but Kahn and his customers also contend that the court erred in overruling the motions for a continuance, for stay of proceedings, and in failing to consider evidence offered during the trial. In support of the argument against invalidity, Kahn claims that modern understanding of fluorescence dates from 1852, and contends that the fluorescent devices involve only ordinary skill to persons familiar with the art, and wholly lack patentable novelty. This complex litigation has been going through the courts since February, 1950, involving suits in New York, California, and Ohio.

The court below found that the plaintiffs declared upon the Switzer patent No. 2,417,384 and certain assignment rights under the Gantner patent No. 2,450,085, and that the Gantner patent "goes into a little more detail with reference to a single garment." The court found further that there was no anticipation of this particular device for the purpose set out in certain claims of the Switzer patent; that a device means a combination of what people previously do, so placed together as to create a new and different result, which is patentable under the laws of the United States; that this device was a commercial success; that, in addition to its presumption of validity, its validity was proven by "vitality" and the acceptance by the government of the United States as one of its royalty payees; but that there was no proof upon which the court should sustain any right to recover damages.

The gist of the court's holding was that the allegedly new use of the fabric in clothing (not the fabric itself) was the vitalizing element of patentability. To the same effect was the opening statement of plaintiff's counsel wherein it was stated that one matter to be kept in mind, and which was essential to this case, was that the patent covered "the devices themselves, and not the materials from which the device may be made." In other words, counsel continued, the patent does not cover the paint, the printed paper, the fabric, or the other materials from which the finished, completed display device may be made. Again, he said, "that the patents in suit do not cover the daylight fluorescent materials from which the devices are made, namely, the fabric."

We agree with the appellants (defendants below) that the prior art is a complete defense to this suit, and that the patents have not been infringed, because to call a hat, coat, sweater, bathing suit, or any other garment worn by a child, a signalling device is unreasonable and threatens the validity of the patent. Moreover, all the fabrics that are made into garments, and alleged to be infringed by the appellees, are old fabrics and described in art as far back as 1901: as such they have been available to the public. The argument that there can be no more obvious use of cloth than to make garments out of it appeals to us very much. Therefore, a patent cannot be predicated upon the transferring of cloth into garments such as hats, pants, and swimming suits. It is well settled in patent law that, if a known process produces an article, that article cannot be patented. A new use for an old product is not patentable. Hotchkiss v. Greenwood, 11 How. 248, 52 U.S. 248, 264, 266, 13 L.Ed. 683; Tucker v. Spalding, 13 Wall. 453, 80 U.S. 453, 455, 20 L.Ed. 515; Gardner v. Herz, 118 U.S. 180, 192, 6 S.Ct. 1027, 30 L.Ed. 158; ...