United Mattress Mach. Co. v. Handy Button Mach. Co., 11020.

• Decision Date: 29 July 1953
• Docket Number: No. 11020.,11020.
• Citation: 207 F.2d 1
• Parties: UNITED MATTRESS MACHINERY CO., Inc. v. HANDY BUTTON MACHINE CO.
• Court: U.S. Court of Appeals — Third Circuit

207 F.2d 1 (1953)

UNITED MATTRESS MACHINERY CO., Inc. v. HANDY BUTTON MACHINE CO.

No. 11020.

United States Court of Appeals Third Circuit.

Argued June 17, 1953.

Decided July 29, 1953.

As Amended October 16, 1953.

Henry N. Paul, Jr., and Robert B. Frailey, Philadelphia, Pa., Cedric W. Porter and Nathan Heard, Boston, Mass., for appellant (Paul & Paul, Philadelphia, Pa., Heard, Smith, Porter & Chittick, Boston, Mass., Berl, Potter & Anderson, Wilmington, Del., on the brief).

Dugald S. McDougall, Chicago, Ill., for appellee (Thomas Cooch and Connolly, Cooch & Bove, Wilmington, Del., on the brief).

Before MARIS, McLAUGHLIN and KALODNER, Circuit Judges.

McLAUGHLIN, Circuit Judge.

Appellant, a Maine corporation engaged in the manufacture of mattress making machinery and mattress tufting buttons, seeks the reversal of an adverse judgment in this patent infringement suit brought by it against appellee, a Delaware corporation which, among other things, also manufactures mattress tufting buttons. The subject of the litigation is Mathewson patent No. 2,421,280, granted May 27, 1947, and subsequently assigned to appellant. Infringement having been conceded the sole question here presented is whether the Mathewson patent is valid. Appellee offered no testimony, but introduced into evidence two earlier patents which it claimed anticipated Mathewson.

Since the district court opinion, D.C.Del.1953, 108 F.Supp. 899, was rendered after January 1, 1953, although the trial was held before that date, the 1952 Patent Act¹ governs this case. See Sec. 4 of the Act, supra Note 1, 66 Stat. 815, 35 U.S.C.A. note preceding section 1, and Stanley Works v. Rockwell Mfg. Co., 3 Cir., 1953, 203 F.2d 846, 849.

As may be surmised, the patent in question relates to a mattress tufting button. The background on this patent is briefly this. In order to keep the stuffing material in mattresses from shifting around inside the cover, or ticking, mattress manufacturers have for many years tufted the mattresses. This process consists of drawing cords through the mattress from top to bottom. The cords were fastened to the ticking in several different ways, an early method having been to pass the cord over the outside of the ticking and back through the mattress at another point so as to form a large loop. Leather tabs or cotton wicking was used under the cord where it passed over the ticking. This method was unsatisfactory because as the mattress was compressed the cord became loose. To solve this problem cotton balls or tufts were placed on the outside of the mattress and tied to single strands of cord which had been passed through the stuffing.

In 1933 plaintiff patented an automatic button tufting machine which used fiber buttons having a U-shaped shank to which the cotton cord was fastened. Both this button and a later-developed metal head button, which was used because it would not chip when fed through plaintiff's button tufting machine, were unpatented. Although both are, to a certain extent, still in use today, they were not entirely successful because of a tendency to "pop out" upon pressure being put on the mattress or when the tufting cord was broken. Once they popped out it was difficult to replace them in the mattress. Several attempts to eliminate this condition were made but none was completely satisfactory until the development in 1944 of the Mathewson button. The latter is described in the application as "having a substantially flat head which seats against the outer surface of the mattress and an inward centrally projecting shank secured in the head, said shank having a short neck section to extend through the mattress covering, and a loop section presenting shoulder portions extending from and transversely of the neck section toward the rim of the head and adjacent the covering-engaging surface of the head at a distance therefrom sufficient to receive the covering and acting to prevent the shank from working out of the covering * * *." The heart-shaped shank made the insertion of the button into the mattress easy and its withdrawal difficult, thus solving the popping out problem which had perplexed the industry.

Appellant is the sole manufacturer of automatic tufting machines. The Mathewson button is designed for use in these machines, as is defendant's. There was evidence at the trial that if buttons of a type unlike Mathewson or that manufactured by defendant are used it necessitates making adjustments to the tufting machine which are both costly and time-consuming.² It is thus understandable that there is a demand in the trade for these two types of buttons.

After the Mathewson patent application was filed it was placed in interference by one Williams on the ground that prior art had anticipated the patent. The prior art relied on by Williams was, among others, Churchill patent No. 2,055,427 and Place patent No. 2,197,590, known as the second Place patent. Both patents involve spring fasteners for securing molding strips to automobile bodies and are similar in appearance and function to the Mathewson patent. The Examiner of Interferences, however, denied Williams' motion to dissolve the Mathewson application. While, insofar as we have been informed, he did not refer to the second Place patent, he distinguished the Churchill patent on the ground that it did not call for the shank to be embedded in the head. Similar distinctions were made with respect to other patents considered by the Examiner which Williams claimed anticipated Mathewson.

It is true that a patent is presumptively valid and that the burden of establishing its invalidity is on the party asserting it. 35 U.S.C. § 282. Further, we agree with appellant that this presumption is strengthened in cases where, as here, the Patent Office has allowed the patent after interference proceedings in which prior art was considered and rejected. Container Co. v. Carpenter Container Corp., D.C.Del.1951, 99 F.Supp. 167, 170, affirmed 3 Cir., 1952, 194 F.2d 1013, certiorari denied 344 U.S. 826, 73 S.Ct. 26. Nevertheless, an examination of the prior art relied on by defendant — the Churchill patent and the first Place patent, No. 1,992,093, also involving a spring fastener used in the automobile trade — convinces us that the trial court properly found that Mathewson was anticipated by Churchill and Place.

The one readily ascertainable difference between the prior art and Mathewson is in the shape of the outer portion of the patented article.³ This, however, was not claimed by Mathewson to be novel, nor could it have been. Indeed, the shape of the head presently used on the Mathewson button is not the same as that shown in the patent application.

The sole substantial distinction between the prior art and Mathewson pertinent to our inquiry, and the only one urged by appellant, is that the former does not have the shank affixed to the head. As noted above, it was this feature of Mathewson which led the Examiner to uphold the patent in the Williams interference proceedings. We are of the opinion that patent-wise this is a distinction without a difference. Because of the nature of the materials on which the respective patents are used the Churchill and Place inventions, unlike Mathewson, do not have a fixed shank, Mathewson requiring a fixed device which is self-locking upon being inserted into the soft mattress whereas the Churchill and Place patents, inserted as they are in rigid material, need a flexible outside part which can be tightly locked by twisting it with pliers. The district court found with respect to this alleged difference in the Mathewson patent that it is the mere adaptation of the arrowhead principle, as found in Churchill and Place, to the quality of the material engaged, an application of the teachings of the prior art to the tufting button. We cannot say that these findings constitute reversible error. In arriving at this conclusion we are aware of the rule that "where, with all the evidence before the court, it appears that no substantial dispute of fact is presented, and that the case may be determined by a mere comparison of structures and extrinsic evidence is not needed for purposes of explanation, or evaluation of prior art, or to resolve questions of the application of descriptions to, subject-matter, the questions of invention and infringement may be determined as questions of law." United States v. Esnault-Pelterie, 303 U.S. 26, 30, 58 S.Ct. 412, 414, 82 L.Ed. 625, and cases there cited.

Appellant does not in so many words contend that its button is patentable because it involves a new use of prior art,⁴ nor does it unequivocally...