Appeal from the District Court of the United States for the Southern District of New York.
Before L. HAND, AUGUSTUS N. HAND, and CHASE, Circuit Judges.
Although as tried below this case involved three patents, the appeal is concerned only with claims 2 and 4 of Patent No. 1,903,960 which was granted to Camille Dreyfus on April 18, 1933, for Fabric and Sheet Material and the Manufacture Thereof. It is owned by the plaintiff and is the same patent which we have held in the case of Trubenizing Process Corporation v. Ferdinand Jacobson et al., 98 F.2d 899, in an opinion to be handed down with this one, to anticipate certain claims of the Liebowitz Patents Nos. 1,968,409 and 1,968,410. The defendant herein manufactures the fabric claimed to infringe under licenses granted under the Liebowitz patents. This appeal was consolidated for hearing with that taken by the Trubenizing Process Corporation in its suit and that record, so far as material, has been by stipulation of the parties made a part of the record on this appeal.
For a description of the accused fabric reference is made to the opinion just mentioned which also gives a general idea of the material covered by the claims of the Dreyfus Patent in suit though in respect to both some amplification and perhaps repetition will be necessary.
The application for the patent in suit was filed December 15, 1925 and followed an application for a British patent filed on January 23d of the same year. The patent was granted on April 18, 1933, after considerable controversy in the Patent Office and after review by the Board of Appeals. The usual presumption of validity is therefore entitled to great weight though, of course, it may be overcome by clear proof. See J. A. Mohr & Son v. Alliance Securities Co., 9 Cir., 14 F.2d 799.
Dreyfus disclosed "a fabric or sheet material * * * made by uniting under appropriate conditions of temperature and pressure, woven, knitted or other fabric composed of or containing filaments or fibers of thermoplastic cellulose derivative or derivatives with woven, knitted, or other fabric composed of or containing filaments or fibers of non-thermoplastic or relatively non-thermoplastic material". He suggested the use of knitted or other fabric made of yarns composed of fibers or filaments, for example, of such thermoplastic cellulose derivatives as cellulose acetate, ethyl-menthyl or benzyl-cellulose, nitro cellulose or other ester or ether of cellulose, either alone or in mixtures in association with fabric made from yarns composed in whole or in part of non-thermoplastic, or relatively non-thermoplastic material such as silk, cotton, linen, and wool, to name some of them. He said two fabrics each made to fall within one of the two classes, one having thermoplastic attributes and the other relatively non-thermoplastic, could be united "or the respective fabrics may be disposed in any desired relative number in alternation with each other". The fabrics when assembled as desired are, so he said, to be "subjected to heat and pressure, with or without employment of plasticizing or softening agents or solvents of the thermoplastic cellulose derivative or derivatives; in this way the fabrics are united together and composite sheet material is obtained in which the pores or interstices are reduced to extremely minute dimensions, or closed completely, by the melting or softening effect produced by the heat or pressure upon the filaments and fibers of the thermoplastic cellulose derivative or derivatives and by the uniting of the fabrics under the heat and pressure". He further says that the degree of impermeability of the compound fabric or material produced may be made to vary "with the degree and duration of the heat and pressure employed, and with whether plasticizers, or softeners or solvents are employed, and with the number of fabrics united together, or other circumstances".
Thus it is readily to be seen that although the invention of Dreyfus concerned, as he said, "the manufacture of new fabrics or sheet materials having waterproof to gas-proof properties or capable of other applications", the waterproof or gas-proof features, being dependent upon the degree of permeability of the finished product either by water or gas, were in fact variables. The finished product was not necessarily either waterproof or gasproof in an absolute sense, for the moment assuming that to be possible in respect to a product in part made of textile material, but on the contrary resistant to penetration by water or gas to a greater or less degree as desired. That is made perfectly plain by his statement that "one may even, though with less advantage, employ only such mixed fabrics for making the compound material under the effect of heat and pressure, with or without application of plasticizing or softening agents or solvents, the heat and pressure causing more or less melting or softening of the thermoplastic yarns, filaments or fibers and uniting the component fabrics together to form a compound material possessing greater or less degrees of resistance to penetration by water or even gases, according to the temperature, pressure and duration of pressure or other conditions". And finally he pointed out that, "The compound materials made according to the invention may be employed more particularly for applications where resistance to penetration by water or gases is desired, for instance as waterproof materials for garments, coverings, etc., or as materials for airships or other gas containers, but materials made according to the invention may be employed for any other technical or industrial applications".
He secured two process claims and two product claims, the latter only being now in suit. They are numbers 2 and 4 and are alike with the single exception that number 2 covers a product made of a plurality of fabrics of which at least one contains yarns "comprising a thermoplastic derivative of cellulose" while in number 4 at least one of the fabrics contains yarns comprising cellulose acetate. Number 2 reads:
"2. A composite sheet material comprising a plurality of fabrics, at least one of which contains yarns comprising a thermoplastic derivative of cellulose, which fabrics have been united into a single sheet of relatively increased impermeability by the application of heat and pressure."
The qualifying phrase "of relatively increased impermeability" was required by the Patent Office before the patent would be issued. Under familiar principles the claims are no broader than such limitation permits and in the present instance no attempt is made to broaden them though there is a dispute as to infringement because it is said the accused compound materials are not of relatively increased impermeability when properly tested to determine the fact.
However that may be, on the question of validity the defendant seriously relies only upon two prior patents, one American and one British. The American patent is No. 1,538,858 granted to William G. Lindsay on May 19, 1925, for a "Fabric and Process of Making Same". He said he had discovered a new and improved way to make a more flexible variety of "celluloid" without using castor oil and disclosed how to do it to obtain a highly flexible celluloid-like substance when it was molded.It could also be rolled into sheets and by using a large amount of solvent could be liquified and brushed upon fabric or other surfaces like a varnish to make artificial leather, among other things. The composition was not only highly flexible but waterproof and non-inflammable as well as inexpensive. His drawings show textile fabric coated with it. This could be done, so Lindsay says, by the application of heat and pressure. The Lindsay Patent has so little in common with Dreyfus that discussion seems hardly necessary. Instead of two or more textile fabrics being cemented together as in Dreyfus to get the finished product Lindsay merely coated one either by flowing the liquid celluloid preparation onto one side or by pressing on a heated sheet of that material. There is no reason to believe that the compound sheet could have been relatively more impermeable than the celluloid-like sheet used as one of the units in one method of making it. Nor was it a material comprising any yarns. And when the liquid was used as a coating there was no uniting of a plurality of fabrics within any reasonable construction of the claims in suit.
The British patent was granted to William Green in 1889. It also had to do with cellulose and textile fabric but there comparison fairly ends. Green was primarily concerned with making textile fabrics, and some other materials, look like silk. And he showed how to make cellulose gelatinous and capable of being made into filaments "in a suitable state to be used in the manufacture of fabrics and for other threads". But he disclosed no compound sheet material made of what may reasonably be called "a plurality of fabrics" as that phrase is used in the claims in suit. And so neither of these patents are anticipations. We, therefore, hold the claims valid.
On the issue of infringement we agree with the defendant that only a product which is "of relatively increased impermeability" can be held to infringe. This would be so had the claims filed originally been so limited and is certainly so when they were so narrowed to meet objections during their progress through the Patent Office. ...