The opinion of the court was delivered by: CAMPBELL
CAMPBELL, District Judge.
This is a suit in equity brought by the plaintiff against the defendant for relief by injunction and damages for the alleged infringement of patent No. 1,411,376, issued by the United States Patent Office to Roland B. Respess, assignor by mesne assignments to Respro, Inc., for process of making a leather substitute, dated April 4, 1922.
The corporate status of the parties, plaintiff's title to the patent, and the receipt by the defendant of notice of infringement, are admitted.
The defendant interposed an answer setting up the defenses of invalidity and noninfringement.
Prior to the invention of the patent in suit, manufacturers of shoes had, for a great many years, been sorely troubled and suffered considerable losses in the use of real leather for quarter linings and the like.
To overcome this condition one substitute after the other was tried and abandoned, but when Durakalf, made by the process of the patent in suit, made its appearance on the market, this problem of long standing was solved.
The witnesses are all in agreement that the Durakalf product was a new product and unlike anything which had preceded it, and among them is Lewis, the technical superintendent of the defendant, who had been associated for many years in the production of artificial leather with some of the most prominent manufacturers, to wit, Du Pont of Wilmington, the Harts Company of New Haven, and Van Clief Brothers of Chicago.
The patent in suit requires the use of woven fabric; it does not include unwoven felt or cotton batting. It requires the woven fabric to be subjected to a process of napping, and does not include unnapped woven fabric.
The use of the napping machine is for the purpose of pulling a part of the twisted fibers from the threads or cords comprising the fabric to form a fibrous surface on each side of the woven fabric, with a part of such loose fiber attached to the twisted threads of the sheet.
The prepared fabric is then wound in a machine upon a core to form a tightly wound roll.
Such rolls of fabric are then placed in a machine similar to a doubling or facing machine, having two pressure rolls which travel at the same speed.
As the fabric is unwound under tension it is saturated with an adhesive agent which is pressed into the fabric between the pressure rolls. It then passes to a drying chamber and the solvent in the adhesive agent is evaporated. After that, the fabric is subjected to tension and again passed between rollers and pressed. The fabric is then ready for use for some purposes. If it be desired to introduce an additional quantity of adhesive agent, the process may be repeated.
The patentee in the specification expresses a preference for the use of a rubber compound containing a vulcanizing agent as the saturating adhesive agent, but does not limit the patent thereto, but says that any other suitable adhesive agent may be used. If a rubber compound is used, the next step is to vulcanize the sheet to set the rubber. If desired, the sheet may thereafter be again passed between the pressure rolls. If other adhesive saturating agent be used, the treatment may be varied in accordance with the mixture used.
The adhesive agent must be of a more or less viscous nature, and because of that fact the patent requires the application of pressure to bring about a thorough combination between the rubber and the napped woven fabric.
If a thin bodiless solution be used, it might well penetrate the napped sheet, and the application of pressure would result in partially squeezing out or removing the binding element which it is necessary to retain in the sheet to produce the qualities designed to be produced by the patented process.
The patent does not teach the use of the saturated adhesive agent as an adhesive surfacing agent, which, when applied to a woven napped fabric, would penetrate deeper than when applied to an unnapped woven fabric, but teaches the complete amalgamation by pressure of the saturating adhesive agent with the napped woven fabric, so that, when the solvent is evaporated, the yarns of the weave will still remain completely surrounded with the saturating adhesive agent, while each napped fiber on the surface is also surrounded with a thin film of the saturating adhesive agent.
The purpose of the application of pressure under tension following the drying step is to lay down the filmed napped fibers to form a matted surface upon the impregnated interior structure of the fabric, and the amount of tension or of pressure applied may vary, provided it be sufficient to accomplish said purpose. Such application of pressure under tension will also obscure the appearance of the weave of the fabric and cause the surface to assume the general appearance of undressed leather.
The pressing under tension of the patent in suit differs from a process in which the product might be dried on a loop dryer or festoon and then vulcanized, the surface of the product of which would consist of myriads of loose fibers positioned and held in that state by the vulcanized rubber surrounding the fibers, whereas in the product of the process of the patent in suit, the fuzz condition in the rubber-filmed, dried, napped fibers is by the application of pressure under tension brought into a smooth surface condition.
By the pressure for saturation the nap fibers are pressed against the body of the fabric, but as they adhere to the sticky pressure-applying surface, the fibers are pulled out from the body of the fabric and prevent the formation of a solid homogenous mass. These fibers by the application of pressure after drying become a part of the ultimate surface but are left arched and stringy, and thereby give to the product an essential characteristic which makes it valuable as a cushiony quarter-lining.
If desired, the process provides that the prepared fabric may be coated with a surface dressing of one or more coats, and, if it should be further desired, an embossing design may be impressed on the coated fabric by a plate or roller embossing press.
The fabric produced by the process of the patent in suit is compact like leather, with a matted fiber or felted surface under the dressing, and on the undressed side, if only one side is finished, the fibrous surface being firmly attached to the part of twisted threads which originally composed the woven fabric before a part of the fibers were pulled out by the napping machine.
The strength of this fabric may be relatively greater than the original woven fabric.
There is, in the product of the patent in suit, no working against each other of the threads when used, separating them from or straining the surface dressing as in artificial leather before the invention of the patent in suit, but the threads are held firmly in their original position.
There may be used in producing the leather substitute, described in the patent in suit, one adhesive agent for the treatment of the fabric, and another adhesive element may be used for the surface dressing, or the same agent may be employed both for treatment and surface dressing.
If two are used, it is preferable to press the surface dressing into the fabric between pressure rolls, when the first one or two coats are put on, and after that additional coats may be put on in the usual manner by hand or knife-coating machine.
The product of the process of the patent in suit possesses in combination many valuable qualities and attributes, strength, moldability, porosity, plumpness, softness, springiness, resiliency, breathing qualities, nonraveling of edges, and the appearance of leather which are the direct result of the process by which it is produced.
The appearance of undressed leather cannot be foreseen in the early steps of the process of the patent in suit, but the appearance of the fabric changes with the final pressing under tension, and it no longer has the appearance of a napped fabric but assumes that of undressed leather.
There is no attempt in the process of the patent in suit to imitate the structure of leather, but the result is accomplished by the use of woven fabric and an adhesive, and a proper co-ordination of the features of the process.
It is true that plaintiff has no patent for the product, and it is also true, as urged by defendant, that were superiority of plaintiff's product would not be proof of invention; but when, as here, after repeated unsuccessful efforts on the part of others, the plaintiff, solely as the result of applying the process of the patent in suit, has been able to produce a product which entirely fills the long felt want of a leather substitute, especially in the manufacture of shoes, such success may well be considered as evidence of invention in the discovery of the process as opposed to the skill of the mechanic.
The suit is based on claims 1 and 2 of the patent in suit, which read as follows:
"1. The herein described process of making a leather substitute consisting in treating a woven fabric in a napping machine to produce a loose fiber surface on the fabric, saturating the fabric with a binding agent, subjecting to pressure, drying the sheet and pressing under tension.
"2. The herein described process of making a leather substitute consisting in treating a woven fabric in a napping machine to produce a loose fiber surface on the fabric, saturating the fabric with a binding agent, subjecting to pressure, drying the sheet, pressing under tension and coating the product with a surface dressing."
Claim 1 covers the process whether a surface dressing is used or not.
Claim 2 includes the final step of coating the product with a surface dressing.
Defendant offered in evidence the following prior art patents:
British patent No. 178 A.D. 1858, issued to William Kemble Hall, for improvements in the manufacture of artificial leather, which did not proceed to the great seal.
This patent was cited only to show the use of moleskin, which is a cheap twilled manufacture with a napped surface.
This patent teaches the impregnation of a suitably woven or felted fabric with an aqueous solution, a solution of glue, modified grease, the grease modified to change part of the solution into the form of soap to accomplish their combination with water as a solvent, tannic acid and mucilaginous matters by terra japonica, and after the impregnation, which is not described, the dipping of the fabric into a solution of alum or other similar ...