Timely Products Corp. v. Arron

Decision Date26 August 1975
Docket NumberNo. 933,D,933
Citation187 USPQ 257,523 F.2d 288
PartiesTIMELY PRODUCTS CORPORATION et al., Plaintiffs, Raphael J. Costanzo, Plaintiff-Appellant, v. Stanley ARRON et al., Defendants-Appellees. ocket 74-2455.
CourtU.S. Court of Appeals — Second Circuit

Arthur T. Fattibene, Fairfield, Conn., for plaintiff-appellant.

Edward Kunin, Bridgeport, Conn., for defendants-appellees.

Ernest M. Junkins, Bridgeport, Conn., for defendants-appellees.

Before MULLIGAN and GURFEIN, Circuit Judges, and CONNER, * District Judge.

CONNER, District Judge:

This patent suit involves subject matter to warm the feet, if not the judicial heart. It is primarily an action for infringement of a patent of plaintiff Costanzo on an electrically heated sock in which defendants counterclaimed for infringement of two patents of defendant Stanley Arron covering alleged improvements on such socks, with the parties adding a welter of additional claims and counterclaims. The District Court (Thomas F. Murphy, Senior Judge ) evenhandedly dismissed every claim and counterclaim. We affirm in all respects but two.

Factual and Procedural Background

Judge Murphy's painstaking and detailed memorandum is referred to for a fuller exposition of the factual background; for present purposes, the following brief summary will suffice:

Plaintiff Raphael Costanzo, an experienced electrical designer, though not a graduate engineer, and defendant Stanley Arron, whose background was in retail sales and merchandising, had been principals in a corporation formed to manufacture and market an electric boat stove. The effort aborted and the corporation was dissolved about September 1966. In connection with that enterprise, Costanzo and Arron had entered into an agreement which provided that the corporation would acquire no rights in any ideas or inventions of Costanzo.

During that association, and beginning about February 1964, Costanzo developed the heated sock which is the subject of his patent and disclosed it to Arron. They agreed to cooperate in exploiting it, initially by approaching potential manufacturers and disclosing it to them in confidence in an attempt to interest them in taking licenses.

On September 13, 1965, Costanzo filed the patent application which matured, on December 20, 1966, into his U.S. patent No. 3,293,405 (the Costanzo patent).

A little over a month later, on October 23, 1965, Arron filed an application for patent on asserted improvements in the Costanzo sock. When the Patent Office cited the Costanzo patent among the prior art on which his application was rejected, Arron overcame this reference by filing an affidavit under Rule 131 "swearing back" of the filing date of the Costanzo application, and on July 9, 1968 he was granted U.S. patent No. 3,392,264 (the Arron '264 patent) on this application.

On November 29, 1966 Arron filed a second application on a further asserted improvement; a continuation-in-part of this application, filed March 4, 1969, resulted in the grant, on August 18, 1970, of U.S. patent No. 3,524,965 (the Arron '965 patent).

On December 27, 1965, Costanzo entered into an exclusive license agreement with plaintiff Benjamin Hines, who organized Timely Products Corporation (Timely), to make and sell electric socks. Costanzo thereupon severed his relation with Arron, and revoked Arron's authority to promote the socks. Shortly thereafter, Arron granted to Seneca Knitting Mills (Seneca) a non-exclusive license to sell socks incorporating his alleged improvements. This license was soon terminated because, according to defendants, of a threat by Timely to involve Seneca in litigation. Thereupon, in about March, 1966, Arron, with his mother and father, defendants Anna and Max Arron, formed defendant Visa-Therm Products, Inc. (Visa-Therm) to make and sell the socks. Timely and Visa-Therm have been active competitors since that time.

In addition to their patent infringement claim, plaintiffs charged that Arron's agreement with Seneca and defendants' subsequent production and sale of electric socks violated Arron's obligation of secrecy. Plaintiffs further charged defendants with violation of the antitrust laws by lowering the prices of their socks for the purpose of destroying Timely and eliminating it as a competitor. Defendants counterclaimed not only for infringement of the Arron patents but also for plaintiffs' alleged tortious interference with their contractual relations with Seneca, and for unfair competition in falsely charging their customers with infringement of the Costanzo patent.

At the trial, in support of their infringement claim, plaintiffs relied only upon Claim 2 of the Costanzo patent; in opposition, defendants relied principally on a defense of non-infringement. Perhaps not surprisingly in view of the Arron patents, defendants did not aggressively pursue their defense of obviousness. Nevertheless, Judge Murphy ruled the entire Costanzo patent invalid under 35 U.S.C. § 103 (Section 103) on the ground that the invention was obvious in view of the prior art; he thus found it unnecessary to reach the issue of infringement.

In support of their patent infringement counterclaim, defendants asserted all four claims of the Arron '264 patent and all ten claims of the '965 patent. Plaintiffs did not seriously contest infringement of these claims, but asserted that they are all invalid on the ground of obviousness, that the '264 patent is unenforceable on the ground of fraud in connection with the affidavit under Rule 131, and that the '965 patent is invalid on the further ground that the claimed invention was on sale in this country more than one year prior to the effective filing date of November 29, 1966. The District Court sustained both the obviousness and "on sale" defenses and ruled the Arron patents invalid; it also concluded that there was not fraud but unclean hands in connection with the Rule 131 affidavit and that the '264 patent is unenforceable for this additional reason. It also dismissed plaintiffs' trade secret and antitrust claims and defendants' counterclaims for interference with contractual relations and for unfair competition. Finally, it denied applications by both sides for their costs and attorneys' fees under 35 U.S.C. § 285.

Costanzo appealed from the ruling as to his patent and alleged trade secret, and from the denial of costs and attorneys' fees. Defendants appeal from all the rulings adverse to them.

Validity of the Costanzo Patent

The claimed invention

Claim 2 of the Costanzo patent, which is set forth in full in the margin, 1 covers in general terms, a heated sock having in the toe portion of its sole a heater consisting of a flat ribbon of resistance material connected in heat transfer relationship to a radiation means consisting of a pair of heat conducting strips having the resistance ribbon sandwiched between and electrically insulated from them, with the electrical heating current being supplied by a low voltage battery (e. g., a 11/2-volt flashlight cell) carried in a fabric pouch formed at the upper edge of the cuff and electrically connected to the resistance ribbon by fine wires secured to the leg and foot portions of the sock. The elements or features which Costanzo now asserts to be new are the localization of the heating element at the toe portion of the sole of the sock and the use of a "low-voltage battery of less than 6 volts," which is sufficiently small to be carried in a pocket at the upper end of the leg portion of the sock.

The prior art

The principal items of prior art relied on by the District Court in concluding that the Costanzo invention was obvious are:

1. The battery heated socks produced and sold by Northern Electric Company from 1953 to 1972. The Northern Electric sock was powered by a 6-volt battery of the size used for electric lanterns, which was suspended from the wearer's belt and was connected to fine, insulated resistance wires in the sole portion of each sock by insulated wires running down inside the wearer's trouser legs.

2. The prior Winchell U.S. patent No. 3,079,486, which discloses, Inter alia, an insulated oversock adapted to fit over a regular sock, the oversock having heating wires embedded in it, with a small battery of undisclosed voltage contained in a pocket at the upper edge of the ankle portion. There is no evidence that this device was ever commercialized, and there is considerable question about the practicability of the proposal to heat the entire foot and ankle by means of a battery of the size shown.

3. The prior Carrona U.S. patent No. 3,084,241, which discloses a heated vest or jacket with an interliner consisting of a thin ribbon resistance element sandwiched between thin sheets of electrical insulating material adhesively joined together.

The differences from the prior art

Even when considered together, these items of prior art do not specifically disclose the concept of confining the heating means to the toe portion of the sole of a sock, thereby reducing the power required and allowing the use of a battery so small that it is practical to support it on the cuff of the sock, eliminating the need for bothersome wires running down the wearer's leg and the attendant difficulties in putting on and removing the socks, as well as substantially reducing the cost of the socks and of the batteries.

The obviousness of the invention

Judge Murphy found these differences "insubstantial" and "obvious to anyone with ordinary skill in the art." The conclusion that the differences are "insubstantial" is questionable in view of the significant advantages in cost and convenience which these differences afford; moreover, the test of validity decreed by Section 103 is not the substantiality of the differences but the obviousness of the invention as a whole. In re Buehler, 515 F.2d 1134 (C.C.P.A.1975).

However, we are constrained to agree with Judge Murphy's conclusion that the...

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