Petition for Writ of Certiorari — J. C. Penney Co. v. Marston

Supreme Court brief1966

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_ PETITION FOR A WRIT OF CERTIORARI

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Constitutional’ Provisions and Statutes. involved PARSE ANE aa

Appendix B ets ae fe ae ae “

“Opinion of the Court‘of Appeals a ce OE eae _

Judgment of the Court of Appeals in No. 9691 ....... B+25 : : <i ee rear Se =

Judgment of scl Ws of 7, in No. 9692 °...'. “ge Be: se

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. - Brenner Vv. Manson, 383 U.S. 519 CC Serer Seale ‘

_ Calmar.Inc. v. Cook Chemical°Co., 383 U.S. 1 (1966)... .2,6,8,90 © or)

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_/¢ : Colgate Palmolive Co} v. Cook Chemical Co., fy hp how S|

. 383 U.S. 1 (1966) sss acesceccecretececseces 2 “eg

Graham v. John Deere Co., 383 U.S. 1(1966) ...... »2,-6, 8, eee

Gravér Mig. Co. v. Linde Co., 33 339-8; 665 (1950)...1....9

"United States v. Adams, 383 U.S. 39 (1966)... eee 2, 6,9

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OCTOBER, TERM, 1966 —

_. No.

re PENNEY COMPANY,

Fae enters 5 : , Petitioner,

We ;

“OLIVER F. MARSTON, sete

_ Respondent, a3

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS -

" FOR THE FOURTH CIRCUIT .

; Petitioner. prays that’ a writ OF ¢ rtiorari. issue to re-

_view-the judgments of the United ates Court of Appeals

* for the Fourth Circuit, entered Det ember 7, 1965, in the

“cross-appeals of the named parties, docketed under that

Court's Nos. 9691 and 96922. =

CITATIONS TO OPINIONS BELOW

“The memorandum: opinion of the District Court is un- - 3

reported, but is printed in Volume II of Penney" Ss append- —

ix, PA 1. The opinion of the Court ‘of Appeals is reported

at 353 F.2d 976 (4 Cir. 1965) and is —— in ——— B

e2 abit infra, P- B-1.

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\ JURISDICTION. |

‘The judgments ‘of the Court iof Alpeata were’ vatern”

on December 7, 1965. Rehearing was denied on June 20,

1966. On September, 19,1966, the Chief Justice ordered —

the time for filing this petition be extended to October 19,

1966. The jr sdiction of this Court is invoked under fad

QUESTIONS PRESENTED

Early this year- this Court, in three cases, Graham, :

- “Calmar, and Adams" again focused its attention on the

_ patentability of inventions. . Shortly thereafter this Court,

in Manson,’ held that practical utility for the end product .

'* « of.a new process was an essential ‘ingredient for a patent- ~ -

able invention. This petition presents again the perennial

—_—

problem of the standard of patentable invention and de- of

serves consideration for certiorari only because, in sus-

taining the District Court holding of-validity made before,

_ Graham, Calmar, and Adams, the Court of Appeals acted’

- ‘ona petition for rehearing filed aftev/Graham, Calmar, .

-. jand Adams, and thus permits the —_ question —

ioe to, be properly stated: ‘cate |

e e/

Were this Court's recent Graham, Calmar, and Adams

decisions reaffirming the strict standard of patentable in-

vention: ignored by the Court of Appeals' adherence to the |

. Old Patent Office standard of mere novelty ?.

“More compelling, this petition presents for the. first

time the question of whether the practical utility.-which

‘this Court in manner found to be an essential of — ,

1 Graham v. John Deeve Co.; Calmar Inc: v. Cook Chemical

: Co.; Colgate Palmolive Co. v. Cook Chemical Co., 383°:U.S. 1

: (1966) and United States v. Adams , .383 U.S. 39 (1966).

* Brenner 0. Manson, 383 U.S. 519 (1966). .

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bility, must ‘ie0 be fide in an accused inbvtacenbiint: in

'*. ‘order for the lawful scope ofthe patentee's monopoly to.

be invaded. In terms of the facts of this case; the « second .

“or question presented’ may be propery, stated: -. 2

; ok:

‘Isa patent claiming "a buoyant, flexible filler pad” ape eee

fringed by a chaise longue which is not, and does not con-...

_ tain, a buoyant filler pad: ‘and which cannot be used: for any ~

purpose for. which the’ patented pad is stated to-be useful? ...

Or, more generally tated, the second question could be :

posed alternatively:

. baile er “I, First Alternate. . CaS aN

Do the cimen laws grant monopolies toe devices. the

“ patentee never. invented ?

ne oe “ MES ‘Second Alternate. -

inventor’ s disclosed practical utility?

‘CONSTITUTIONAL. PROVISION AND

] STATUTES INVOLVED ,

The questions presented involve Article I, Section 8,

Clause 8 of the United States Constitution and certain sec-

‘tions of the Patent Act of 1952, namely 35 U.S.C. §§ 101,

102(a) and (b), 103, 112, 154, 271(a),° and 282 (1) and-(2).- <i

‘These provisions are set ea in Appeals, “i infra, we

‘STATEMENT OF THE CASE —

"Since the actual facts of a case do not walk into : :

Court, but happened outside the court room the task

. of the: ... « Court is to reconstruct, fromwhat are at

‘best second hand ee " Frank, Courts on Trial,

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Is, ‘the scope of : the granted monopoly ‘exioe than the be .

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This case is an cncdaitinti to Judge Frank's observation, |

because the two principal facts of the case are pictured”

here and are physically available.

In 1952, Oliver F. Marston, a retired Army colonel

(MA 23), ° was.an officer in a company making hassocks, -

seat covers, summer. goods, auto supplies, and leather -

goods (MA 21). At about that time he ern a new

4 a product: (MA 20),

His first: model, or that portion*which he eee ss See

As the "filler part" (MA 20) is pictured below and the ac- -

“tual exhibit is on view in the Marshal's office. The com-

plete article contained a fabric cover and was used to sit

on PA, ans In seins English, it was a‘cushion.

_ The Model (Pl. Ex. p)="A buoyant, flexible filler pad..."

8 the certified récord of this case is in three vohdined. Vol.

I is' Maraton's Appendix,fereafter MA __-, Vol. Il.is Penney's—

Appendix, hereafter RA __, and Val. Hl is is the Record below,

hereafter R:__. Nine additional copies ef the ep heacnnadl have

, been filed. | |

’ The inventor sent this actual model.to his patent attor-

ney in Canada (PA 122) and a patent application entitled

"Flexible Buoyant Article” was: filed September | 3, 1953

(MA 47). ‘1 Bae

_ - In due course, the application’ was examined and re-

\ jected, four narrower claims were submitted and allowed

¢: (PA 19- =24), and it issued as U.S. Patent No. 2,715,231

August ‘16, 1955 (MA 47). Bach allowed’ claim begins "A .

buoyant, flexible filler pad. - -'' and goes on to describe a

plasti¢ lattice of tubes and strips (MA 50).

‘Colonél Marston attempted to interest several firms in

his device (MA 21- -22), but his article has met with no

commercial success (F 20).4

About.1959 Penney. began ‘oheatine from of aS (MA

_23) a chaise longue with a metal frame and a plastic, web-.

bing or lattice slung. on the frame to sup rt the user (PA

134). Colonel Marston purchased one ina Ri#@hmond store

of Penney (MA 23), and this chaise is both pictured below

- and in the Marshal's office.

_ The Accused Article (Pl. Ex. K) - A Chaise Longue .

* Finding 20 of the District Court-Opinion, page PA 8°

ae has never denied that the Chaise’ seaside like

the Marston filler pad, contains .a plastic lattice of tubes —

and strips. However, umlike the Marston filler pad, the

chaise webbing is not a filler pad (F ss and has no use-- : ae

- buoyancy (F 24), NR.

* Suit was brought in the Eastern District of t Virginia |

Sapbenibes 19, 1962 and was tried before Hon. John D.

Butzner, Jr. July 31, 1963. He held that the patent, while

valid, was not infringed because “The differences between

the articles are basic . . .," App. B, mfra, p. PA 11. ,

Marston appealed from this decision and, as the hold- ._—*

ing of validity was incorporated in the Judgment (MA 11),

hase cross-appealed.

" The Court of Appeals for the rs Circuit, on Pn

ber 7,:1965, affirmed the holding of validity and reversed

the holding of non-infringement. because, in its view, the

‘claim preamble "A buoyant, flexible filler pad..." did

not limit the scope of Matston's monopoly (App. B, infra,

p. B 23) and because the bagic differences were, — |

fore, irrelevant (App. B, infra,. p. B 24).

The Court of Appeals extended the time for. petition -

_ for rehearing until this Court decided Graham, Calmar,

Adams, and Manson, Penney then fileda Petition for - |

hearing (R 52) pointing out how neither this Court's stri

- patentability test nor its practical utility test had been

_ followed. That petition was denied on June 20, 1966.

aed

REASONS FOR GRANTING THE WRIT”

| As to Question II and Alternatives...

This writ ought to be granted uccosion ‘the lowe

‘Court's decision is in conflict with this Court's decision

in Brenner v. Manson, supra. This Court there held

that practical utility was necessary before a discovery .

became patentable. An important stated reason was that” ea

_ only by disclosing this would "the metes and bounds...

* be capable of. precise delineation." Id, at 534.°

Here the patent disclosed an article: which admittedly |

practical, if commercially unproved, utility. That

_ practical utility was as a buoyant filler pad or stuffing —

for a canoe cushion, The Court of. Appeals however held

this patent infringed by an article which had no useful

buoyancy (F 24) and was not a filler pad (F 22). It thus

possessed none of Marston's practical utility.

e The Manson ruling made explicit that an invention, to

be patentable, must have a practical utility and that that

utility must be stated in the patent document. It thus |

gave a specific content to the word "useful" appearing in

. the Constitution and in 35 U.S.C. § 101. It made that con- |

‘tent an integral part of the meaning of the word "inven-

tion" as, applied by the Patent Act of 1952 to the claims ~

of an application, 35 U.S.C. § 112, to scope of the patent

grant, 35 U.S.C. § 154, and to the ‘acts evacenasi an, its:

infringement, 35 U.S C. § 271(a).:

.’ . Since Penney's chaise has none a Marston's stated

‘or implied practical utilities, Manson is clear authority

‘that Penney‘s Chaisevis not a part of Marston's invention

and the decision below is in’direct conflict with _—

in holding that Penney's chaise infringes. ©

Marston's and Penney's devices, of course, have’ :

- some similarity. They were both lattices of heat-sealed -

plastic tubes and strips. However, plastic lattices alone

do not have practical utility.

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Particular tines of plastic lattices may hn yarious

practical utilities, for example, as ¢ushion stuffings, —

2 ria webbings, fly swatters, window screens, or fish

nets. But mere plastic lattices | as-such do not nae a.

practical paility.

ing ’

Defining the proper scope of the’ Sardhen maneae is ae: :

an issue, per se worthy of this Court's attention. How- ~

- ever, the fatilty legal standard applied by the lower Court

raises ani issue of. great importance. There are today™

780,000 current patents, each a separate monopoly. In

five years, there will be in excess of one, million current —

_- patents. It is a matter of great importance whether these

monopolies are to be limited to the inventor's actual

- °. contribution or are to include broadly all later inven- ,

tions in the field concerned — here the field of plastic

lattices — though of completely new and —

practical utility.

Last term, this Court-in Graham and Calmar directed

‘its a attention to patentable standards and saw the burden >

commerce that was imposed by the issuance of un-

worthy patents. In those cases, at least, the burden of °

orthy plow shank or pump Sprayer patel patents was lim

ited to later plow-shank-or pump sprayer’ "ayer *manufacturers.

< “Here, the’ Patent ‘Office thought Marston's invention

was in the field of Buoyant Boats and Buoys, Class 9,

‘ subclass 17 (PA 130). The Court of Appeals' decision ef-

_ fectively extended this monopoly to chairs and chair bot-

toms, Class 155, subclasses 178-187 (since reclassi-

fied)(PA 132- 133): eich eee

If the Court of Pel rule that the only similarity .

required is the verbal abstract similarity of useless ar-

ticlés, then no article of commerce, new or ‘old; will be

safe from possible claim of infringement, However, if

_ this Court takes this.opportunity to announce that the -

' scope of any patent, however meritorious or minor, must

. be limited to the practical utility therein fairly disclosed,

this-Court will have performed an equal or greater serv-

— everett . ry in

“Se

ice to American industry ind free competition than it did .

. in its decisions of last year.

- The simple rule of law that Manson expounds — that

a stated practical utility is an essential part of every

"patentable invention — is not a new rule. It was followed

by the District Court below in different words.when it

‘ held, citing authority (PA 11) that, where there are “basic

" differences" between the products, there is no infringe-

_ment. The basic differences which impressed Judge Butz-

‘ner are precisely these divergent practical utilities.

This Court in Graver. Mfg. Co. v.- Linde Co., 339 U.S.

665 (1950) went outside the wording of.a patent claim to

hold one liable who clearly appropriated the inventor's

practical utility. However, Mr. Justice Jackson stated:

"The wholesome realism of this doctrine is not —

always applied in favor of the patentee but is some-.

times used against him. Thus where a device is

so far ehanged in :principle . . . the doctrine of.

‘equivalents may be used to restrict the claim-and

. defeat the patentee's action for infringement." 7

This urt should now draw t these atv se threads of

basic differences, new result, ‘unique de es and changed

principles together into a definition of a patent monopoly °

‘limited to embodiments making use of.a acne ceorau

eal utility, * 228.

As to Question I

Penney is aware that this Court exercises its super-

visory powers reluctantly and, indeed, not even inevery _

case where detailed factual analysis shows governing

staridards have-not been followed. meter: the very .

wording of the Gourt of Appeals opinion, announced be-_

fore, but adhered to after the Graham - Calmar - Adams ou

decisions of this Court, shows a consciously applied, ins.

' consistent and minimal, if not negiigmle,. standard. of

patentable invention, fa

Qs .

"This Court found the Graham patent invalid because

greater shank flexibility will obvioysly result from less -

confinement and the Cook patent invalid because the nov-

elty asserted before the Patent Office was. disclosed in =

- prior art cited only in the litigation. The Adams bat-

tery, in contrast, had truly ynexpected: characteristic

- superior results,

Here the en goer of Appeal's own descripiion tape. B . as

infra, p. B supports -Penney' s tabulation (R' ) that

of fifteen elements of Marston's filler pad every one e is - “i

disclosed at least twice in five references and nine are

disclosed in all five. One refe ference, the Court of Ap-

peals rian era ped everything (App. B, infra, p. -

B 11) exc it has a sheet connecting the tubes (PA

80) rather than strips connecting pinched partions. _

No unexpected ‘characteristics or superior results~

are found. Rather every change in every eleinent, in |

_Marston's combination produces the expected result.

The Court. states "one might easily conclude that the

by ‘claimed invention . . . was obvious" (App. B, infra, p.

B 16) but later let the statutory presiimption of validity

.(35 U.S.C. § 282) overcome its doubts.

Penney urges this reasoning of the Court of Appeal’s !

is so clearly contrary to this Court's. recent reaffirm-

ance of the strict standard of patentable invention that —

grant of this writ would serve as an appropriate vehicle

to reiterate the’ Court's determination to Semaeee this

standard.

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CONCLUSION. ee pains os bia

This Petition of z on Penney Company for Cortioveri

. Should be GRANTED.

See Respectfully submitted, 2 pany

id eth) ete anaes W. BROWN MORTON, JR.

. JOHN T, ROBERTS

425 Thirteenth Street, yo Ww.

ie Washington, D.C. f

Attorneys jor Petitioner

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APPENDIX

THE CONSTIT UTIONAL PROVISION.

Art. 1, Sec, 8. ‘The Congress Shall. have power. ows

To romote. the progress of science and useful arts, by «

securing for limited times to authors and inventors. ‘the

exclusive right to their reapertive welinge and discov- | ;

eries. ou $ eras

§ 1017 Inventions patentable me

Whoever invents or digcovers any new ‘and useful”

process, machine, manufacture, or composition of that-—

‘ter, or any new and useful imprpvement thereof, may ‘

obtain’ a patent therefor, subject to the conditions and

requirements of this title.

« § 102. ' Conditions for patentability; novelty and loss of

3 ‘right to patent 0°

A person shall be entitled toa patent unless ey

(a) the invention ‘was known or used by others in this os

‘ country, or paténted or described in a printed’ SS

- tion in this or a foreign country, before the inventiof

thereof by the applicant tdt patent, Ee |

- (b) the invention was patented or deseribed in a -

| ‘printed publication in this or.a foreign country or in -

public use or on sale in this) country,-more than one year ~—

_ prior to the date of the ce yer for’ patent ie

"United States,

§ 103, Conditions for patentability; non-obvious ‘subject —

; amatter mone : ¢

a patent may not be obtained theccit the savention is.’

not identically disclosed or described as.set forth in

section 102. of this title, . the differences between the

‘ subject matter sought to be patented and the prior-art

are such that the subject matter as a whole would have ;,

been obvious atthe tipfe the invention was madé toa- ©

person inving ordinary ‘skill. ‘‘ the art to which said gub-

ject matter pertains. Patentability shall not be nega-

tived by the ‘manner in which the invention was made. a

. § 112.. Specification - at

Tie specification shall contain a wittted description

of the invention, and of the manner and process of mak-

ing and using it, if‘such full, clear, concise, and exact

terms as to enable any person skilled in the art towhich

it pertains, ‘or with which it-is. most nearly connected, to

_ take and use the same, and shall set ‘forth the best mode a

contemplated by the inventor of sanrine out his inven-

tion. "es

The specification shall conclude with one or more ”

claims. particularly pointing ‘out and distinctly claiming os

- the subject matter which the applicant regards as ‘his”

_ inventiom, A claim may be, written in independent or de- |

‘ © pendent*form, and if.in dependent form, it shall-be con-

porated by feference into the dependent claim,

An element in a claim'for a combination may be ex-

funétion without the recital of structure, material, or.

in support thereof, and such claim shall be con- ~

‘strued to- cover the corresponding structure, -material,

or.acts described in the Byecificajjon and equivalents,

thereof.

7 154. Contents and term of patent .

Every patent shall contain a short title of the m-

on and;a grant to the patentee, his heirs. or. assigns,

for the ts

of issue fees as provided for in this title, of the right to

_ exclude others from making, using, or-sélling the inven-

= as a means or step for performing a specified -

tion throughout the United States, referring to the speci- :

ficatign for the particulars thereof. A copy of ‘the speci-

fication and drawings shall be annexed to the ae and

be a part thereof. | 7

a i

° ~~ . ’ j al

. o

erm of seventeen years, subject to the payment...

° ‘ a A- 3

s°271. Infringément of patent =| oe |

(a) Except as otherwise ‘provided in this’ ‘title, who-

ever without. ‘authority makes, uses or sells any ‘patented.

invention, within the United States during the term of the

patent therefor, infringes the patent. ° |

- § 282. Presumption of validity; defenses

' A patent shall be presumed valid. Each claim of a

patent whether in independent or dependent form shall _

be presumed valid independently of the validity of other -

‘claims; dependent claims shall be presumed valid even

‘though dependent upon an invalid claim. The burden of .

establishing invalidity of a patent or any claim thereof

‘ shall rest on b os party asserting it.

_ The following. shall be defenses in any actioii involv-

the validity or ahr ci of a patent and shall be

pleaded: voter ———

(1) Nonintringe ment: absence of lability for ‘shins ;

‘ment, or unenforceability, -

a»

‘ (2) Invalidity of the patentor any claiin in suit on any

ground specified in eee of this title as a condition for ~

: pelrarnery aa : :

Filed and Entered, December ¥; 1965.

“UNITED STATES COURT OF APPEALS

FOR ‘THE FOURTH CIRCUIT —

No, 9691.

OLIVER F. MARSTON,

es Appellant, —

versus.

| i ea PENNEY COMPANY, INC,

_ Appeliée.”

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| j

OLIVER F. MARSTON,

Appellee,

versus

ed ‘PENNEY COMPANY, INC.,

x Nes Fae ‘

? ——_—_—__—_

" APPEALS FRDM THE UNITED States District COURT FOR

THE EASTERN DIsTRICT OF VIRGINIA, AT RICHMOND.

Joun D. Butzner, Jr., District JuDGE.

‘

" Bee

(Argued February 5, 1965. Decided December 7, 1965.) .

~ Before Havwewonrn,. Chief Jude, BorEMAN,” ‘Circuit

Judge, : and CHrisTIE, District Judge.

J. Sileiaia ‘Bondek and Alfred P. ure Statin P.

- Jeffreys, Jr., on brief) for: Appellant in No. 9691 and

_ Appellee in No. 9692, and W. Brown Morton, Jr.,

(Edward A. Marks, Jr., and John T. Roberts on brief)

for Appellee in No. 9691 and Appellant in-No. 9692.

Heieas, Circuit Judge. : ) =

" This is a sabia sitsincinnant sait: in which Oliver " ‘

' Marston, owner of United States Letters Patent’ No.

' -2,715;231, claims that J. C. Penney Company, Inc. (herein

called Penney), ‘infringed Claims 1 and 2 of his patent by.

selling’ i in its Virginia stores a chaise longue manufactured ~ _

in West Germany which embodied his inventive concept. .

As relief Marston sought .an injunction against further ,

infringement, an accounting and damages for past in-

fringement and attorney fees. Periney in defense asserted

that Claims 1 and 2 were invalid and denied infringement.

135 U.S.C. § 271 provides in part: ne i. | mee,

“(a) *.* * whoever: without authority.makes, uses or sells any patented x j

SN, SnOiy ne aie one Caene Se Ween OE ee Sage Hares, 5

infringes the patent.’ (Emphasis added.) - ace

B-3 |

The District Court held that Claims 1 and 2 of the patent

_ were valid but were not infringed by the accused article.

Each side 7 appealed rm: the ot adverse to it.

+ ver antl <r *

| The patent in question" Was issued to "Marston en jAdeust

16, 1955, and is titled: “Flexible Buoyant” Article.” The |

specifications of the patent state that “this invention relates’

to. flexible, waterproof, buoyant structures, and articles

made therefrom, such as cushions, ‘mattresses, life pre-

servers, pillows, floats, bumpers, insulation units. and the

like.” Claim 1 of the patent reads as: follows:

“1A oraee ss flexible filler pad comprising a

- plurality ‘of strip portions arranged in laterally dis-

posed relation, each said strip portion comprising a

tube of flexible thermoplastic resinous material having

/ opposed parts of the tube wall completely united. to-

gether ‘in fluid sealing relation at spaced intervals to

form. an individually sealed link section between each

- adjacent pair of sealed parts, each said sealed part of

_ one strip portion being arranged in laterally aligned |

‘ / relation to’a sealed part of an adjacent strip portion

to form a plurality of laterally_-disposed Tows of

aligned sealed: parts in said pad, and a connecting

strip overlying each said row of sealed parts and

united .to each sealed part in said row, each said link

section being in spaced relation to adjacent: link .

' sections of laterally disposed strip portions to provide —

fluid circulating openings therebetween extending per-

pendicularly — said a

Se ee

Oo.

B-4

Claim 2, the only other Claim with which we are here-

concerned, differs from Claim 1 in three Fespects. First,

the strips of individually sediled cells ‘or sections are to be

arranged in “parallel laterally aligned relation”; second,

_ the tube walls are continuous.in cross section; and, third,

~ the tube walls are to be united together by heat sealing and

. the connecting strip overlying each row of these aligned .

sealed parts is to be united to the sealed parts by heat seal-

ing. For these reasons the District Court concluded that -

Claim 2 was somewhat narrower in scope than Claim 1.

The construction process used in making the flexible

biioyant filler pad deseribed in Claims 1 and 2 is’ more

easily understood from the patent’s specifications and draw-

ings. Compressed air or nitrogen is introduced into tubing, .

preferably of extruded flexible thermoplastic resin com-

' position such as polyethylene. The opposed walls of the.

“tubing are then pinched together and sealed (Claim 2 speci-

‘fies heat sealing) at spaced intervals to form a chain of air-

tight cells resembling. sausage links or, ih other words, the

tube walls are united together "in in fluid sealing relation. The

pinching is done in such a manner that the sealed areas

form flat surfaces, The tubing is then cut into strips of a __

predetermined length depending upon the desired’ dimen-

sions of the completed article. The cut-is made at any one

of the sealed parts, each such sealed part being of sufficient

‘width so that a sealed area remains on either side of the. re

line of severance to prevent the air or gas from escaping —

from the cell on each side of the cut. The riumerous strips

of airtight’ célls are arranged, as stated: in Claim 1, in

laterally disposed relation or, as stated in Claim 2, in

parallel laterally aligned relation so that the sealed parts

of the séveral strips of airtight cells form laterally dis- -

B-5 | es eS 5 »

posed rows of aligned sealed parts. Strips of a thermo- —

plastic resin composition are then placed over each row of —

aligned sealed parts and united to each said row (Claim 2

_ specifies heat sealing) with the result that the individual

rows of airtight cells have been’ connected together and

form a single unit.

The finished proiiiiét ra openings between each row ae

airtight cells, which permit the free circulation of fluid =

‘or air. This feature is a result of the particular arrange-

. _ ment of the sealed parts in relation to each other and the

mannet in which-the tubing is sealed. The flat area: where

‘the opposed walls of the tubing are sealed together is -

_ greater in width than the.airtight cells; consequently, the

sealed parts of the various strips can be contiguous: and ~

_ still leave-openings between the rows of airtight cells for

circulation. A pad constructed in the described manner is |

waterproof, self-ventilating, sanitary and inexpensive to

manufacture; it has individual permanently inflated -air-

tight cells which make the structure buoyant and com- ~

fortable to sit on with openings between the cells which -

provide for drainage and air. circulation so that the pad

dries rapidly and remains cool. The amount of buoyancy

depends upon the size of tubing used in the construction

process, the length of each airtight cell and the width of

- the sealed portions. s at fe

PATENT OFFICE HISTORY.

Marston’s original application was filed in September

1953 and set forth sixteen claims. Each claim was largely

based upon a single element of the particular.combination

described in the paterit in suit. The Patent Office, after’ -

making an examination which revealed twelve patents in °

*B-6

sda or related arts, idee all sixteen clainis. The

‘grounds for rejection and the patents primarily relied on

" are stated in a\ portion of ~ Examiner’ 8 report set out

in the margin.’ NR ii: 7 Sloe

: o".

2 UNITED STATES PATENTS _

Nome. . \ Patent No. a clay {as ‘Date’Granted

Kohler 7. 1,990,434 Feb. 5, 1935

’ Picard: -_ \2)171,805 °°. - Sept. 5, 1939

Walters >> * 3,350,654 > June 6, 1944

Baily, - 2,405,484 Aug. 6, 1946

Cart ee mee Le: Feb. 20, 1951

ea ae 2,660,736. Dec. 1, 1953 ..

\ _ FOREIGN PATENTS ;

DuPont (Rrench) # 379,662 > Ke Nov.-15, 1907

Riviere (French) -° 389,972, ' * Sept. 23, 1908

Banks (British) NE XN. July 26, 1944

Johansen (British) ' 657,558 ‘Sept. 19, 1951.

Drepper (Gerthan) | Oct. 9, 1952

Saiac (French)\ , 955,651 - o% , Jan 7, 1950 ©

“Claims 1-3 inclusive are rejected as fully met. by Drepper or Saiac.

“Claims 4-13 inclusive are rejected as unpatentable over Drepper or

Saiac. Drepper shows -a covering 6 for tubes 1 of plastic material and “

sealed at 2.by a heat means. ‘As shown in Figure 2 the tubes are arranged

‘in ‘parallel laterally aligned relation.’ Similarly, Saiac.shows tubes 1 of .

plastic material sealed at 3 to form buoyant chambers. With respect to

claim 11,.attention is. directed to. Biefeld ‘which shows it is’ a comnion

expedient in thie art to use a covering: of fire resistant composition. .

“Claims 14-16 are rejected as unpatentable’ over Drepper taken with

- French 379,662. French 379,662 teaches a cushion wherein the tubes

‘'b are concentric * *:* or in coil form * * *. No invention is involved _

in forming the tubes of Drepper in the form. taught by French 379,662.”

: : F .

Me ; °

Marston responded to this “Official ‘action by filing an

"amended application on, October 1, 1954, in which ‘he re.

quested the cancellation of prior claims and the substitu.

__ tion of four new claims. Each of these four claims was a.com-

_ bination of the individual elements contained in Clainis ;

_ 1-16 which had been rejected. Marston’s attorney stated in

‘the amended application:: . | a

_ “Each of. new claims 17; 18, 19 and 20, define the

_ sealed parts or portions of the tubular strips as being

arranged in a plurality of laterally disposed rows of i

¢ aligned sealed parts: or portions, and a connecting

strip overlying each such row and united to each sealed .

Part in the row, each of the link sections being in ~

spaced relation to adjacent. link sections of Jaterally

disposed strips to provide fluid circulation openings

therebetween fiding perpendicularly through the

pad.” ; ‘ ; | sag

; > . ’ 7° ‘

. Referring to the Drepper and Saiac patents cited by the-

Examiner, the attorney stated that Drepper, while disclos- -

ing a tube divided into cells by joining portions of the.

" tube walls together, did not disclose the use of a thermo-

Plastic sesinous material and did not disclose the specific *

* structure referred to in the above quoted paragraph. As

to Saiac, he stated that it disclosed the use of rubber only,

made-no disclosure of the Specific arrangement of tube _

Strips as stated above, and was distinguishable for the same —

reasons as Drepper. The- Patent Examiner determined that

the amended application disclosed patentable invention and °

- the four new claims were approved, the first two of which .

are here involved. _ } | | 3

Ue : .

—— . . 7

» ‘

° > o kd

r) 4 ; © ‘ » /

“At thet time Masston made the claimed invention he was’

an officer of the B. T. Crump. Company of Richmond,

‘Virginia. This company manufactured a diversified line |

_ of merchandise, including furniture items such as hassocks,

seat covers and outdoor furniture. Marston attempted to

_ interest this company iin taking a license under the patent.

"The company took a six month’s option for a license which |

was renewed for an additional six months, but at the end

of’ this period company officials elected not to exercise ©

the option. Since that time Marston has attempted to in-

terest others in becoming Ticehsees but so far has been

unsuccessful: °

PRIOR ART

‘ s

In its ‘effort t to have Claims 1 and 2 declared invalid,

Penney introduced in the lewer court twenty prior patents

consisting: of the twelve cited°in footnote.2 and eight .

patents discovered by an independent search.‘ The lower

- court examined. all of this prior art and made specific

_ findings relating to the eight patents not considered by the

Patent Office and to Saiac, French Patent No. 955,651,

the patent which the court found most nearly anticipated

ee -. UNITED STATES PATENTS

‘| Name _* PatentNo, ~ =. ~—SsdDaate Granted ©

5 oi me ce eae Dec. 6, 1892. -

Kopec * . "1,262,358" . April 9, 1918 ,

Frey etaueeses |) ae Dec. 7, 1920

Manson’. | 2,046,335 July 7, 1936.

Romanoff 2,154,640 «April 18, 1939

~ York 2575987 = —*_— © Nov. 20, 1951

- FOREIGN PATENTS

° [deal-Steppdecken'-Fabrik ss : Pa

(German) 608,752 Jan. 31, 1935

; Chalsemarten’ (French) ¢ 784,624 April 29, 1936

ve Oo

‘

° eo?

Marston’s claimed, invention, The court concluded, how-

ever, that Marston’s\claims differed from the teachings of

Saiac. and the cited prior art,’ stating: 7 ae \

» hag. ‘

- . “Sothe ‘of the prior. ‘patents in both groups show

individual features of Marston’s design. Certain ones

disclose tubes sealed at intervals. but none of ‘them ber f,

suggests Marston’s complete combinatior

ment of parts. The primary inventive concept found in

Marston’s article was to provide tubes sealed at inter-

_ ‘vals to form cells and to arrange the sealed portions

in lateral alignment to form rows. Marston achie1

_ alignment by a connecting strip overlying each rowf

sealed parts and united to each ‘sealed By ese

features are not disclosed by thie prior art.

While admitting that none of the prior patents identically

* -discloses Marston’s combi:iation, it is Penney’s position here

that Claims 1 and 2 are invalid because they lack invention

as the patented article described in the claims is an obvious.

; combination of elements which were present.in the prior

d arrange-

art. This argument is merely a restatement of one of the.

statutory tests for determining patentability as contained .

in 35 U.S.C.A. § 103. That section provides in pertinent

ofpartis

“A patent may not be obtained though the invention -

is not identically disclosed or described as set forth

in section 102 of this title, if the differences between |

the subject matter sought to be patented aind the prior

art are such that the subject matter as a whole would

have been obvious at the time the invention was n

to a person having ordinary skill in the art to which

said subject matter pertains. * * *” fife

4, e

pee EIS

inquiry.

9 | eee B-10

To show the Sieg, of Marston’s claims Penney, in .

its brief, relies mainly upon five of the twenty patents

which it introduced in the lower court. Two of the five,

Saiac and French Patent No. 379,662, were censidered by

, the, Patent Examiner. The ‘others three, Kopecp York and

Lee, were discovered by Penney®Even, though Penney does -.

~ not gem to rely. ‘upon the other fifteen ‘patents, we. felt *

‘compelled to examine them. In view of. this apparent lack

of reliance, however, we do not think it-necessary to state. .

here the details of those. patents and their effects upon

Claims 1 and 2 except to tersely say that’ those patents do -

not reveal anything importantly . ecard to the: preserit

‘Before proceeding .to_ briefly dicien the five patents .-

some comment should be made concerning the issue ‘of

whether rubber, as specified in some of ‘the prior aft, is a

“thermoplastic resinous material,” the latter being the type

of material specified in Claims { and 2. In the‘court below —

_ the testimony of the expert witnesses was ‘co

ing and ©

the court failed to make a finding on this issue. Here, the .

parties continue the debate. Resolution of ‘this ‘question

in our’ view. is not crucial to.a decision on validity. We do

- not think Marston was’ granted 4 patent because he used a

. . Plastic material, although the use of it in the combination

made: the resulting product: more practical and less ex-

- pensive to manufacture. Instead, we think the patent was

granted because Marston used a new and different com-

_ bination and arrangement of. various elements to produce a

‘better product. «From. the action ‘taken in approving the

‘amended: claims, that would seem to be the position taken

by the Patent Office and: it was certainly the position taken

7 the District og in n sustaining validity, f waite 3 4

r. ay

- Penney has classified as being the most’ relevant perhaps _. :

eee

B-1l . es : 8

. As the. District Court found and ‘Penney agrees, Saiac é

(French Patent No. 955,651) most nearly anticipates ~

_ Marston’s claimed invention. This patent describes a

' pneumatic mattress. The.mattress is made from a number

of tubes. which are filled with air or a neutral gas. The |

claims of the paterit do not specify the material from which

the tubes are made but the specifications state that they are

: to be made of plastic or- elastic material such as rubber.

The tubes: are juxtaposed and glued together at~their ~

tangential point or line. Then the tubes are pinched together

at intervals dividing each tube into a string of small air-

tight cells or compartments. A sheet of rubber is then glued.

to each Side of the structure and the resulting ‘product is a

lightweight mattress. If a thick mattress is desired, several

- units made in the manner described above can be super-. °

posed with each individual row or tier of the tubes running

in the same or in a- crossed direction. :

From ‘ee above. description it is clear that Saiac does

contain certain elements of Marston’s patent:. It discloses

the idea of. using tubes filled with air or gas and -pinching

the walls of the tubes together. at intervals to form air-

tight cells..On the other hand, this patent does not teach |

’ aligning the sealed parts of the tubes 1 in rows and placing. °

-- @ strip over tach row of aligned’ sealed parts to connect .

_ the individual tubes together. In fact, the tubes in ’Saiac

are glued together at their tangential point or line and no |

strips of any kind are used to hold them. together..Glued in

this fashion and then enclosed ori ‘each side by sheets of

- rubber eliminates any space between the airtight cells for

| circulation, a. particularly important . and ars

° re of Marston’s arrangement: oe ;

B-L

The Lee patent, No. 487, 419, ery elements similar to |

those- disclosed by Saiac but the elements are used for °

,a different pufpose. This patent relates to an india rubber

; ‘tire for bicycles and other velocipedes. The end product is

-a tire with permanently inflated individual airtight cells —

contained within: an outer covering. Like Saiac, Lee dis-

closes certain things which Marston included in his. patent.

Inflated tubes are pinched. together at intervals to form

airtight compartments which remain ‘permanently inflated.

But there the similarity ends for Lee does not disclose the _

-use of connecting strips or the particular arrangement de-

_ scribed i in Claims 1 and y

é Kopec, Patent No: 1,262,358, describes a lifesaving suit.

‘The suit is made from a number of. pneumatic tubes, pref- ;

erably of rubber, arranged in parallel relation. The in- .

' dividual tubes are joined together by a strip of material | -

~ extending across the ends .of the individual tubes. ‘Arranged

on the%two. binding strips are devices such as buttons and:

_ buttonholes for fastening the opposite ends of the structure

* together when it‘is placed around the.trunk portion of the .

body. On the portion of the structuré covering the back

- a protective apron is placed. This apron may be attached to

the top tube and used as. a liner or it may be attached to -

the top tube and wrapped around the adjacent tubes. Straps,

placed on the top and bottom tubes, are used to secure

the suit to the legs and shoulders. Each individual tube

has a valve which permits ‘it to be inflated to any desired

degree, Although Kopec reveals inflated tubes . arranged

in parallel ‘telation and spaced apart so that’ water can-

freely circulate between them, this patented article does

not have tubes pinched together. at spaced intervals to form

B-13

airtight cells, has no connecting strips, and the patent. fails

to disclose the particular arrangement Marston describes

in Claims I and 2. :

French. Patent No. 379,662 (Dupont) describes a

pneumatic or hydraulic cushion which may be made in two

ways. First, one continuous tube of a nonspecified material --

-may be wound in a spiral or, second, several tubes may be —

> arranged concentrically. In the latter case, the individual

tubes are connected together by tubulures which permit the

inside tubes to be inflated by using a valve attached to the

outside tube. If a single tube wound in a spiral.is used,

the tube is simply terminated by: a valve attached to the

end of the tube that is used to inflate the structure. The ies

structure resulting from either method of construction is

attached to a base of sheet rubber or other suitable ma- —

terial. This base may have perforations in it to permit

circulation. The basic similarities between this patent and

Marston’s are that both describe. cushions, both use in--

flated tubes; and both are constructed i in a manner to allow

circulation. This patent, however, does not have per- .

_ manently inflated tubes with opposed parts ‘of the tube

" walls sealed together at intervals to form airtight cells;

it. has no sealed: parts and the manner in which circulation

is achieved is entirely different from. the way Marston

ene this result. * |

Periney insists that York, Patent No..2,575,987. literally

discloses the’ construction process used by Marston and

" contains every element of his patent except that it is not a _

buoyant, flexible, filler pad. York claims invention 6f a

"heating element for an electric blanket. ‘The element is made

from a series of rubber strips which can hardly be called

tubes. Each: of these strips consists of three plies of .vul-

B-14

_ canized rubber and, .in some, wires are embedded which

connect with temperature sensitive devices. These strips

are arranged in grid fashion as some of the strips are

aligned in one direction and others in an opposite or crossed

direction. Where the strips cross each other- they are vul- -

canized together. The resulting grid structure is attached .

to a sheet of loosely woven mesh material such as cheese-

cloth and inserted into a blanket. We adopt the District

Court’s conclusory statement:

“x * * Tt [this patent] does not disclose tubes or

opposed parts of a tube wall completely. united to-.

gether at spaced intervals to form individual sealed

_ link sections. It is designed for electrical heating and

‘makes no reference to individually fluid-sealed cells.”

: lista cto

Where validits is at issue we start. with the basic prop-

osition found in 35 U.S.C.A. § 282 that a properly issued

patent is presumed to be valid and the burden of establishing

invalidity rests upon the party asserting it. This pre-

sumption is strengthened where the principal’ references

urged against the patent were considered: by the Patent

Office, Power Curbers, Inc. v. E. D.Etnyre & Co., 298

F.2d 484 (4 Cir. 1962), and conversely it is weakened or -

destroyed where relevant art was not cited or considered.

Heyl & Patterson, Incorporated v. McDowell Company,

317 F.2d 719 (4 Cir. 1963). In the present case, Penney

_ seems to rély on ‘only ‘threé.of the eight patents. not con-

‘sidered by the Patent Office. We reach the conclusion that

the other five do not have any effect on the presumption.

_ Of the’ three references ‘only two, a and Lee, ees 4

. .

eae tei hAaatee ncaa te ate Ns let el AA te ES ea BH me a ae IB A ohn

B-15

oo! * 9 x

: suggest pertinency. But Lee, as stated earlier, does not

. disclose any element which Marston incorporated in Claims

1 and 2 which was not disclosed by Saiac, a patent which

" was considered by the Patent Office and the one which»

most nearly anticipates Marston’s invention. Under. these

. circumstances we do not think the failure to consider Lee .

would weaken the statutory presumption. Kopec, on the

other hand, does reveal a structure different from other

patents considered by the Examiner but this patent, in our

judgment, does not reveal anything of great significance

and again we conclude that the failure to consider it does

not materially weaken the presumption.

From the prior art and from the action taken by the

_ Patent Office on Marston’s original and amended applica-

tions, it seems clear that Claims 1-and 2 can be sustained,

if at all, only as a combination patent in which the basic

elements were old. But as Penney concedes and the lower

court correctly found, none of the prior patents discloses

Marston’s complete combination and arrangement of parts.

Identical disclosure or the lack of it, however, is not the

test-of patentability. 35.U.S.C.A. § 103. The validity of a

combination patent, as this court has said, depends upon

' whether it was obvious to one possessing ordinary skill in.

the art to piece together the combination in the same way

as did the claiming inventor. Entron of Maryland, Inc.

v. Jerrold Electronics Corp., 295 F.2d 670, 674 (4 Cir.

1961)..See also, Marvel Specialty Company v. Bell Hosiery

Hills, Inc., 330 F.2d 164, 171 (4 Cir. 1964). If such.

obviousness is present the law will not favor granting the ~

- Claiming inventor a monopoly and the resulting privilege

of exacting a tax from industry. Berry Brothers C orpora-

tion v. Sigmon, 317.F.2d 700 (4 Cir. 1963). °

RSE |

aia tad

é te

The obviousness test is a difficult one to apply. As stated

‘by Judge L. Hand in Reiner v. I. Leon Co., 285 F.2d 501,

503-504 (2 Cir. 1960) :

“The. test: laid down is indeed misty enough. It di-

rects us to surmise what was the range of ingenuity

_ of. a person ‘having ordinary skill’ in an ‘art’ with

‘which we are ‘totally unfamiliar; and we do not see |

how such a standard can be applied at all: extept. by.

recourse to the earlier work. in the art, and to the

general history of the means available at the time. TO

judge on our own that this or that new assemblage of

old factors was, or was not, ‘obvious’ is to substitute

our ignorance for the acquaintance with the subject

of those who were familiar with ee

An observation made in Diamond Rubber Co. v. Consol.

Tire Co., 220 U.S. 428, 435 (1911), is pertinent here:

“* * * Knowledge after the: event is always easy,

and problems once ‘solved present no difficulties, in-

deed,.may be represented as never having had any, and

expert witnesses may be. brought forward to show

‘that the new thing which seemed to have eluded the

. search of the world was always ready at hand and

-. easy to be seen by a aan skillful attention. * * *”

On the. present record one might easily conclude that

the claimed ‘invention described in:Claims 1 and 2 of

Marston’s patent was obvious to an ordinary person skilled

in this area of the art and therefore lacks invention. It is

.a fact that Marston has not been successful in his ‘attempt

to exploit the patent and there is,no evidence in the record .

to show 4 long existing need in this industry for such an

} B-17

article. However; lack. of commercial success does not in- -

dicate lack of invention. Edward Valves, Inc: vy. Cameron

Iron Works; Inc., 286 F.2d.933, 939 (5 Cir. 1961). The .

-burden of proving invalidity rested with Penney. In the —

to=testify as to whether the prior art made Marston’s

claims obvious or as to the stage of development in this area’

of the art. Instead it chose to rely on mere argument by

counsel arid directed -most of its evidence to the issue of --

infringement. While admittedly the question is a close one,

we are not persuaded that Penney has overcome the statutory

presumption of validity. The prior art shows that several

inventors have patented buoyant devices, :pads, cushions

and mattresses, by utilizing gas-filled flexible tubes which,

in some instances, ‘have been divided into inlividually sealed

cells or sections. None of the patents whether. cited’by the ~

Patent Office or not disclosed or, in our opinion, mage

obvious the particular combination and arrangement of

- the essential factors Marston incorporated i in Claims 1 and

2 of his patent. . ee

Penney next argues that the elements of the combination

- were old and the combination must produce some new:

result to be valid; that Marston’s s- claimed invention does .

“not accomplish this. The correctness of this basic premise ~

has-been recognized by this court before. Marvel S pecialty

Company v.. Bell Hosiery Hills, Inc., 330 F.2d 164 (4 Cir.

- 1964); Triumph Hosiery Mills, Inc. v. Alamance In-

dustries, Inc., 299 F.2d 793 (4 Cir. 1962) ; Entron of

Maryland, Inc. v. Jerrold Electronics Corp., 295 F.2d 670

. (4 Cir. 1961) ; O. M. I. Corporation of America v. Kelsh

Instrument Co., 279 F.2d 579 (4 Cir. 1960). However,

we are not persuaded that the combination described in

es os

) | 7 ‘B- 18

Claims 1 ‘arid 2 sicidiaai no new, different or additional

result and, therefore, we uphold the. District Court’s deter-

mination of validity.

_ INFRINGEMENT

Marston’s charge of infringement is directed against

the flexible plastic structure incorporated in the chaise.

longue sold by Penney which forms the surface of the chaise

that supports the user. This structure, which Penney calls.

the. webs or webbing, is attached to a folding metal frame

‘~ with adjustable legs. The frame is similar to frames of

other chaises. It is made of metal tubing and consists of

two side members approximately seven feet in, Jength and

two end: members approximately thirty inches in width

which are fitted together in the shape which may be roughly

described as that of a rectangle with rounded, rather than

square, corners. On each of the side members are two ad-

justable hinges which separate the chaise into three: sec-

’ tions, a back, a seat and.a front extension. The legs which

support the frame are connected to the frame at the same -

place where the adjustable hinges are placed. Thé metal

legs, the back and the front extension ca be p positioned so

that the chaise may be used as a chair, a cot, a hassock, or the

frame can be placed directly on the ground and the webbing

used as a pad or mattress. | o-.

~The webbing which: Marston contends REESE Y his:

inventive concept is made from. flexible plastic tubing with

four connecting strips of sheet plastic running through it

- and connected to caps made from sheet plastic which have. -

been drawn tightly over each end of, the metal) frame. Al-

LaA-

\ |» Bel9

* is,

though the-webbing might be said to consist of three sec-

tions corresponding to the sections of the metal frame,

_ these sections are joined together by the connecting strips .

which run lengthwise through the. rectangle and substan- .

tially parallel with the side members of the frame. How-

eve:, the actual construction is\done section by section. .

A piece of sheet plastic is drawn tightly | over each end of

the metal-frame and forms a cap which extends over and.

along the side members a distance of approximately six

‘inches. On the back section a single plastic tube several

yards long is.then wound transversely around the two side

‘members of the metat frame between the edge of the plastic.

cap and the adjustable hinge separating the back and seat .

sections. This’same process is repeated in constructing the

_ seat and the front, extension. When wound around the

_ <sidé members the tubing forms loops.’ Four connecting

-strips run through or. between these loops from the edge of

. the plastic cap on one end of the metal frame to the edge

of the plastic. cap on the other end of the frame. The por>.

tions of each loop which may be said to overlie and underlie »

the four connecting strips are. united to the connecting

strips by heat sealing. The opposed parts of the ttibe -walls

are pinched together and sealed .at the point in each loop

where’ the connecting strips are sealed to the loops. This

process forms, in effect, four rows of aligned sealed parts

with the connecting strips being sealed to the loops - of

tubing along these rows. It also results in the loops of

' ‘tubing having airtight cells or se¢tions between the ueuted

areas.

The District Court concluded that. certain Sihicdians

existed between the webbing constructed jin the above

fashion and the inventive concept described in Claims 1

>B-20

and 2, differences which it felt compelled a finding of non-

infringement. Each section of the accused article is com- |

posed of a single continuous plastic tube which is wound |

around thé metal frame in loops which, form two layers of

plastic tubing. Marston’s patent teaches tubing cut into

lengths or a plurality of strips; it states that there may be

more than one layer of the tubing employed in the con-~—

struction of an: article but contemplates connecting strips

‘ overlying and sealed to eachsindividual layer. In Penney’s

article the connecting strips pass between the two layers of

tubing formed by the loops of the single continuous tube in

each ‘section and the two layers are sealed to the connecting

strips. Penney’s accused article, when constructed by wind-

ing the single continuous-tube around the side members of

the metal frame, forms its own attachment to the frame.

Marston’s patent calls for a plurality of strips which can

be attached to the frame of a chair by tabs or like ap-

paratuses. In Penney’ s article the connecting strips are

- heat-sealed to the caps of sheet plastic placed over the ends.

of the metal frame. Marston’s patent doés not claim or

describe the use ‘of sheet plastic inserted in the structure

-asS Caps.

It appears from the lower court’ s memorandum opinion

that the reason for its conclusion may have been based on

its interpretatiori of a paragraph contained in a case decided’.

by this court. Johnson & Johnson v. Carolina Lee Knitting

Co., 258 F.2d 593, 597 = Cir. 1958). The paragraph reads —

as follows:

“Of course, .if the deltentiin. in fact ‘departs

from the teaching « of the patent, not. making a simulated

departure“merely while copying the essence of the . .

ae os “

patent, it cannot he held. liable for Selita ++

It is equally axiomatic in the law-of patents that the .

addition of a useless or unimportant item cannot avoid : -

infringement, but is recognized as a frequent resort of.

infringers to mask their true purpose. * * *” (Empha- ae

‘sis supplied. ) Aah

ent @ ; A

From’ the latter statement. it appears that the court may

_ Have reasoned that the addition of needed or important

* items does avoid infringement for it stated :

* * * The differences between the articles are basic

and are not arg the: addition of useless and un-

bess eater items.”

One cannot ayoid infringementiby an addition to a patent

even though the addition is important to. the use intended °

for the resulting article. 1° Walker on Patents §§ 409 and

432 (6th Ed. 1929). To determine whether the accused -

article infringes Claims 1 and 2 we must look to the words °

of the claims. If every essential element of the described

combination, or, its equivalent, is embodied in the chaise _

‘ sold by Penney, Marston is entitled to prevail. Power C urb-

ers, Inc. v. E. D. Etnyre & Co., 298 F.2d 484, 494 (4 Cir.

1962); Entron of Maryland; Inc. v. Jerrold Electronics te

“Corp. 295 F.2d 670, 677 (4 Cir. 1961). ' : : FF rea,

When this test is applied to the accused article we are

led’ to the.conclusion that the facts make out a case of

infringement. Except for its contention that: the webbing —

is not a buoyant filler pad, Penney has virtually conceded:

that the webbing does contain other elements described in

Claims" 1 and 2.. In Penney’ s answer to an. original inter- .. ;

ie -

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BY ae “2 ie @ ed 5 te < y » ;

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. “

”

Bee ete se * ae anos Penney stated :

i : < * Bs

ee: sa : “ =; : ~<«

fed | Sa “Thel | chatses . sold. by Defendant as illustrated. in.

ay Plaintiff's Exhibits A, B’and C, had. no ‘cushions: of |

any. sort, seat or back. However, the material forming

ae : - . z oe | *°* the seat, back and. leg- support ‘webs. was. formed of

ee ga plastic v which 3 in each web comprised a plurality of strip |.

\ Be arabe iN i Se ‘portions, arranged in laterally, disposed felation, each

Se CR eae ae said strip portion comprising a tube of flexible thermo-.

. ep ee ~~ each strip portion are, however, arranged in laterally *-

Rm te. Serr RS, — ‘relation to the united parts of adjacent_strips

zy i gn. ee to'form a plurality of ny —" rows of align =

® é Eee a: Xx oe i “united Ports." oe - sa ae

ge fer og Ale ough Penney refed to ‘admit the incorporation i in

ie MB IS a the cused article of other elements .of f_the combination

bar tt Cra ce - described: i in Marston’s ‘patent, a cursory éxamination of

3 |v esis chaises‘which were introduced as exhibits ‘reveals these

iy te mig aS > features.’ ‘The walls of the plastic-tubing. are ‘sealed together

: Vogt forming: airtight cells or, sections. The cénnecting strips .

a ; eae, \ follow ‘the: laterally disposed rows of aligned united parts

aoa. & ae and are heat sealed. to the’-united parts. The sealed pants

S98 | pee b “ofeach Joop are contiguous to each other, yet openings ré-

\ Tet re **. main. between‘thé airtight cells for: circulation, True, the

ONS a ae webbing has certain féatures which Marston does\not de- .

a ae se tt: _. - |$erib€& but’ the webbing itself is practically a “Chinese °

S| Rae Cte x sony 0 of the structure Marston, describes i in Claims 1 and.2.

28 1 Ree SAG |

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a Le ; eee | ‘ ~ ae .

OS Cae seamen 2 Zz

- : hehe ia Pa > x ae

at oP i | a ee : ‘ See cu

2 ros as ee gts a ‘

Pe re “plastic resmous material having. opposed parts, of the

| Ea) ee ea 22 tribe, wall united together. * * * The united parts of |

, eae eae rogatory: filed ho ‘Marston certain of the essential elements ue

te (* 0° ~.:.* which’ we have ‘concluded constitute ew s invention,

‘ ‘4

4 e beige

Paid emphasizes the argument that the Seneen of

, Marston’ s claims calls: for a: flexible’ buoyant filler pad

and that Penney’s chaise is not buoyant and is not a filler

pad. Marston has countered. with. the proposition’ that the

‘ webbing of the ‘chaise is buoyant and that the ‘preamble _

>” of his clainis which specifies a filler pad only suggests a

cae? possible: use for ‘the claimed invention and is not a-limita-

“tion upon: it. The District Court determined ‘that the

-. webbing had no useful buoyancy and that it could not be

" . described as a filler pad, but ‘that the, preamble i in this case

_- did not limit the claims ‘to filler pads.’ The court reached -

- the conclusion that the detérmination of these issues was

not eo of the ultimate i issue of infringement.

~ We agree with, the lower court that the preamble of

these claims does’ not constitute a limitation upon them.

In this connection, the following principles appear’ to us

tobe pértinently applicable. If the preamble merely states

a purpose or intended use and the remainder of the claim ~

-completely defines .the, invention independent of the pre-

- amble, it is not a limitation on the claims. On the’ other

hand, if the claim cannot be, read independently of the -

“preamble. and the preamble must be read to give meaning

to the claim or is essential to point out the ‘invention, it’ -

constitutes a limitation upon the claim. See Kropa v. Robie,

187 F.2d 150 (U.S. Ct. P.A.. 1951). In the present;case

: - the preamble does not describe a° unique article to which

the claim alone is referable, cf. Benoit v. Wadley Co.,

54°F.2d-1041 (7- Cir, 1932), and the preamble is not essen-

. tial to a reading. and understanding of the claim. The in-

ventiop-“Arises from the ‘combination and arrangement of

_-the various elements described in the claims and the por-

sf ; . :

a - |

ad : 2. are *

ie ©

B-24

_ tion of the ‘aint following the preamble is a self-contained

: description of the invention. The fact that’ Penney’s chaise

has no useful buoyancy is’ iminaterial for the evidence

cleatly revealed that. the webbing i is buoyant. Useful buoy-

- ancy of the manufactured article is not the test since the

"Specifications | describe articles where buoyancy in and of a

itself would-be of no Significant value. -. -

The finding of validity is affirmed, but the nding. of

noninfringement will be reversed for the reasons ‘herein

. Stated. As the lower court did not consider the issue as to

" damages atising from. infringement, the case will be re-

manded. for further appropriate proceedings consistent

| with the views herein expres a

| _ Affirmed in eed

ce in part and remanded.

See Ware SOND ee

ac ie Perce x | ea, oo

| DECREE

UNITED STATES COURT OF APPEALS

wee -for’the

: Fourth clreuit

> No. 9691.

Oliver F. Marston,

/ ‘VS. j j

I. c. Penney Company,

| : Appellee.

Appeal mia the United States District Court for. the —

This cause came on to be heard on the recordfrom the

of — Virginia —, and was argued by counsel.

‘On consideration whereof, It is now here ordered, os

judged and decreed by this Court that the decree of the -

‘said District Court appealed from, in this cause, be, and

the sameis hereby, affirmed in part and reversed in part;

. that this cause be, and the same is hereby, remanded to the

‘United States District Court for - the Eastern District of

Virginia, at Richmond, for further proceedings consistent

with the opinion of the Court filed herein, and: ‘that the

yormine bear their own — On appeal.

December 7, 1965. Pew oe Sener ae

/s/ Herbert S. Boremian

FILED "United States Circuit Judge. |

DEC - 7 1965 .

MAURICE S; DEAN _

CLERK

{ ~~, Appellant,

B-26

DECREE

_ UNITED STATES COURT OF APPEALS |

“for the 3

Fourth Circuit:

No. 9692,

Oliver F. Marston, ¥ ie ocd

ee ames ; 3 ) Appellee,

' J. C. Penney Company, } hs

Appellant. -

‘Appeal from the United States District Court for the e

‘Eastern — District of — Virginia.

This cause cameonto be heard on the record from the | )

United States District Court for the — Eastern — District

of — Virginia — , ‘and was argued by counsel.

On consideration. whereof, It is now here ordered, ad- .

_ judged and decreed by this Court that. the decree of the

‘said District Court appealed from, in this cause be,. and

‘the same is hereby, affirmed in part and reversed in

_part; that this cause be, and the same ishereby, remanded

to the United States District Court for the Eastern District

' of Virginia, at Richmond, for further proceedings consist-

- ent with the opinion of the Court filed ee Ne and that the

parties bear their. own costs on ——

December 7, 1965. aa Shy Ss ake ;

_ /s/ Herbert S. Boreman _

United States Circuit Judge.

- , FILED es ep Ste

_DEC - 7 1965 Mie re teas ‘ Bee A

MAURICE 8, DEAN ee:

_ CLERK

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