Forchheimer v. Franc, Strohmenger & Cowan, Inc.

MOORMAN, Circuit Judge. This appeal from interlocutory orders of the District Court for the Northern District of Ohio involves validity and infringement of the Langsdorf patent for neckties, No. 1,447,-090, issued upon an application filed April 12, 1922. There are five claims in the patent, the first four of which wore held valid and infringed and the fifth hold invalid. They are set out in the margin.1 Langsdorf’s tie consists of a body or outside portion of silk cut on the bias, a woven fabric resilient lining cut on the bias, and loose stitching connecting the body portion with the lining. These elements are embraced in the claims that were uphold. Claims 1, 2 and 4 specify “a woven fabric resilient lining,” which would seem to include any woven fabric that was resilient, whether cut on the bias or not, and the third claim specifies a woven fabric cut on the bias, apparently covering any woven fabric cut on the bias, whether resilient or not. In the specifications Langsdorf said that his lining was made of woven fabric “cut on the bias,” which is true, though claims 1, 2, and 4 are not so limited, as was decided at the supplemental hearing against the Stern-Merritt [554] Company, involving the later product of that company, in which it used a lining not cut on the bias but almost as resilient as the lining it had previously used. The invention, if there is any, resides in claims 2 and 3, which cover the body portion, a woven fabric resilient lining (the resiliency being acquired, if necessary,. by cutting the fabric on the bias), and loose stitching by which the lining and body are connected. The function of the loose stitching is to permit the body portion and lining to stretch and yet to hold them loosely together. The silk material from which the body portions of ties are constructed has been cut on the bias for many years for the purpose, or at least the partial purpose, of adding to the attractive appearance of the tie. When so cut it has an extensibility that lends itself to the functions of a resilient lining, but it is not claimed that Langsdorf discovered its utility or is entitled to anyo preference in its use. The resilient lining is an element of greater importance and is said to be entirely new in the art. It is mentioned in four of the five claims of the patent and may be said to be implied in the reference in the other to cutting on the bias. Langsdorf claims that he discovered its utility and was the first to use it in neckties. His specifications say that theretofore, in an effort to relieve the tendency to distort the body of the tie, which, because the silk was cut on the bias, was more or less elastic, “inelastic lining had been employed and stitched to the folded portions of the tie particularly throughout the neck portion thereof;” and he claimed that the lining that he proposed'to use, and which he does use, elastic or resilient in its nature, was an innovation in the tie-making art which, when combined with other elements making for utility, would result in a new kind of tie, which when pulled would stretch without breaking the threads and when released would return longitudinally and transversely to its original shape. The lower court interpreted the patent as covering a lining less elastic than the body of the tie, finding some merit in its functions as so limited. Further than what was referred to in the specifications, as we read them, as á lining certainly as elastic as the body material 'and perhaps more elastic, nothing was said about the degree of resiliency. Resiliency is a relative term, and undoubtedly none of the ties formerly used possessed so much resiliency, either when cut straight or on the bias, as the Langsdorf ties. We are equally sure that some of them did possess a degree of resiliency — enough to come within the phrase “a woven fabric resilient lining.” The ties of Tremmett, Keys and Lockwood and other manufacturers possessed resiliency in the knot-forming part brought about by several folds of the diagonally cut outer portion, or by separate linings of the same material placed in the tie. If the term “woven fabric resilient lining” means something different from the body fabric itself, having distinct and useful qualities, these ties would clearly not anticipate Langsdorf; but if it means any woven resilient fabric inside the outer layer of the tie, there would, we think, be anticipation. Langsdorf does not say in terms, either in his claims or specifications, that he had in mind a lining fabric separate and different from that of the body of the tie, and yet the implication may be fairly said to be found in the detailed description of the specifications. Prior to Langsdorf many different fabrics had been used for linings — among them nap cotton, or what is known as canton flannel. Heath, No. 335,071, issued January 26, 1886, speaks of an interlining piece of “comparatively stiff, yet soft and pliable material —such as fine linen canvas — which because of its extended form is longitudinally elastic.” There is evidence, without doubt, that the material that Heath used possessed some resiliency, certainly that it was his idea to use a lining which would accommodate itself to the resiliency of the outer part or what he refers to as the “scarf strip * * * cut bias.” If Heath had only supposed that the lining that he described possessed a resiliency that would accommodate itself to the same quality in'the body when in fact it would not, his product could not be considered an anticipation; but the evidence shows that the material that he used was resilient, sufficiently so, we think, to read upon the claim descriptions of that quality in Langsdorf. Canton flannel had been widely used as a lining and was undoubtedly resilient. The plaintiff’s witness, Dyer, said that a canton flannel lining, if subjected to a pull of ten pounds, would stretch three inches or more— probably as much longitudinal stretching as desirable in a tie — but that a month afterward it would remain stretched about two inches; and while he said that when cut straight it had little or no plastie stretching, we think his evidence, with that of others, shows that when so cut it possessed some degree of resiliency. One of the exhibits in evidence shows a canton flannel lining in one end of the tie running up to the side of the neck and in the other end a light cotton lining running up the same way. The canton flan [555] nel part o£ this lining stretches and returns, not of course to the degree that Langsdorf’s lining does, as nothing else in the prior art did, because, if that function had formerly been thought useful, there was no such material as resiline which Langsdorf uses and which, as we shall later see, is largely if not wholly responsible for the success of his ties. Nevertheless there was resiliency, though not so much as in Langsdorf nor in the entire length of the tie;, and the carrying forward of that thought to a greater degree, or the extending of it to other parts of the tie, was not, we think, invention. Railroad Supply Co. v. Elyria Iron & S. Co., 244 U. S. 285, 37 S. Ct. 502, 61 L. Ed. 1136. The lower court seemingly attached more importance to the loose stitching than to the other elements of Langsdorf’s claims. We think the loose stitching was old, even in neckties, although we are not prepared to say that the exact form used by Langsdorf, though not described in his specifications or claims, had theretofore been used. Loose stitching with the bar tacks at the end of the body material had been used, and that form accommodates itself to the resiliency of the lining and body quite as satisfactorily, it seems, as does the unfastened and knotted ends of the thread. The loose stitching is simply what is otherwise known as basting, having- been used from time immemorial, and the most that can be said for it in connection with Langsdorf is that it was the expedient— perhaps new in neckties in the form that he used but not in others equally effective — of reducing to practice his conception of the resilient lining. He cannot, we think, claim a monopoly on its use. It is undoubtedly true that there may be invention in a combination of old elements resulting in an improved construction with new and better functions, Loom Co. v. Higgins, 105 U. S. 580, 26 L. Ed. 1177; and it is equally true that a favorable public reception of such new product is evidence of its patentability. Langsdorf’s ties have been received with unusual favor. That, in our opinion, is mainly if not entirely due to the discovery and use of resiline, which, when cut on the bias, possesses extraordinary qualities for the lining of neckties. We do not mean that there are not other fabrics of both earlier and later origin which possess the same qualities in a lesser degree, but that the extraordinary resiliency of resiline is largely responsible for the success of the neckties that Langsdorf has made. This resiliency prevents wrinkles and creases from permanently forming in the knot-forming portion of the tie, something that is highly desirable and that ¿o other lining had done. It is a woolen fabric, manufactured by Holbrooks & Co., and was discovered shortly before Langsdorf filed his application for a patent. He had seen, he' said, an English fabric which he thought adaptable to his idea; but little of that fabric, if any, beyond the making of a few ties, was ever used, and it was not shown that it possessed the permanent qualities that he desired. Upon seeing resiline he requested his attorney to insert into the application for the patent the term “resilient” in connection with the term “elastic,” and immediately contracted with the manufacturer of resiline for his entire output, taking it for several months. During that period his business was built up enormously under the trade-name “Resillo,” probably suggested by the name of the lining. It cannot, of course, be claimed that his patent covers the newly discovered resiline, nor, in our opinion, does it cover all stretchable or resilient ties. There had been some resiliency in the older ties. The body of the tie had always been made from silk eut on the bias, and linings had been used which were not so resilient as one made from resiline but were sufficiently resilient, we think, to come within that element of the patent claims. Loose stitching was old and had been used from time immemorial. Every one who works in fabrics knows that certain woven materials eut on the bias will stretch and will return to their normal shape, and that to permit fabrics sewn together to stretch cooperatively the stitching must be loose. Langsdorf was, perhaps, the first to think of the utility of greater resiliency in neckties. He did not seek and find something that the art had been striving for, as in Kurtz v. Hat Lining Co. (C. C. A.) 280 F. 277, and Van Heusen Products Co. v. Earl & Wilson (D. C.) 300 F. 922, but thought of the utility of a function never before considered valuable in the art. This conception was made practicable by the simple means of combining body silk eut on the- bias with a woven lining cut on the bias by stitching them loosely together. Every element was old and had, we think, been used in the art of necktie making — never, however, with the result attained by Langsdorf due, as we believe, to the fortuitous discovery and his ability to procure the entire supply of a fabric of greater resiliency than had theretofore been available for lining purposes. It may be true, as we have said, that he first thought of the utility of a tie that would stretch to the extent that his product does without breaking the threads [556] that joined the lining to the body; but that was not invention, and it was not difficult, with the proper materials, especially after the discovery of resiline, to create the tie. Any intelligent sewing- woman with the same objective and having the same materials that he had could have done it, we think, without trouble. Judgment reversed. Footnotes [1] A necktie, comprising a body portion including a knot-forming part and a woven fabric resilient lining connected thereto, said resilient lining extending into the knot-forming part of the tie. 2. A necktie, comprising a body portion, and a woven fabric resilient lining connected therewith by loose stitching. 3. A necktie provided with a lining attached thereto and consisting of woven fabric cut on the bias. 4. A necktie comprising a body having folds, a woven fabric elastic of.resilient lining in the tie body, and loose stitching uniting the folds of the tie body and connecting the woven fabric elastic or resilient lining thereto. 5. A necktie provided with a lining comprising a strip of woven material resilient in the direction of the length of the tie.