# Petition for Writ of Certiorari — J. C. Penney Co. v. Marston > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385603_0038%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1966 - **Citation:** 385 U.S. 974 ## Text ‘ Sage a o. Cm ie ° “7 wes Be ee se ae E 7 ‘5 > x . a 7 - . s ‘ - ot i ‘ ; » . ow! oe oe ; : o 2 * E : cas t f « Dee . . . s . 2: = +e . . ‘ . ‘ . : J 4 . ? 7 “ s x sa" = a * i Paces 5 *O ‘ isk soe ; Oy . = be . * ; tg a8 ; CONSTITUTION AND STATUTES: DM Caagtiiabiiac det: § betes. 5s. 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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. : gente 4 °o . e ‘ “ 5 . : ; or . : ; a& e . F : ss - . ¢ rs rage ‘ ‘ : \ . ’ » ; ‘ : te ¥ Daa Cea ee ene Cb RENIN Bite ik Bet pit im ste % ¥ : . : . ’ : | : * . . ee . ve . : “es : > . bd . a . oo ; ® “te : } , . e . . . * ong s , . . . be | APPENDIX . ag & 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- | ; ~ i = 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 Pe (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- © strue@ to include all ¢he lirhitations’ of the claim incor - 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 9% s 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.” 3 a, eae oo oes: | = | 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.) . es ~ 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 > * 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.” ow : : F . Me ; ° wy 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 a ve Oo @ 9 ‘ ° 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 \ \ 4 ~ 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 fe ‘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 3 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: a po “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 & a) . . 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 — lower court Penney elected not to call any expert witnesses © 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 _ . 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 - J ws e ee 4 “a i ‘ " . 9 é ’ > . o ¢@ “ ie ° oe p > ; ° ° e. 39 de wae ! . Q: . . ay ; A ‘ wr - 4 - be - 5 F 2 a ee 4 BS ] oy bie BY ae “2 ie @ ed 5 te 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 | - eB it am. " abe fe . 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 y 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 — Eastern — District of — Virginia. © This cause came on to be heard on the recordfrom the United States District Court for the — Eastern — District © 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, a 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 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385603_0038%3A1. Public record. Not legal advice.