Appeal from the District Court of the United States for the Western District of Pennsylvania; Frederic P. Schoonmaker, Judge.
Before WOOLLEY, DAVIS, and THOMPSON, Circuit Judges.
The several patents in suit relate to fasteners of the separable slide fastener type. As embodied in the plaintiff's commercial product they form an interlocking metallic seam familiar to nearly everyone in his tobacco pouch, brief case, golf bag, sport clothes, and a multitude of articles of personal use. The finished product is called a "zipper," the word doubtless being derived from the sound, or speed, in opening and closing it. Although fasteners of this type are widely known, just how or why the thing works has long been a mystery to the casual observer. However, on looking upon the organization on the underside of a model large enough to reveal the movement of its elements, it is simplicity itself.
The fastener is made of two rows of small, thin, flat, metallic, interlocking members spaced apart in relation to one another. Each row is secured along one edge of a tape; the other edge of each tape is stitched to edges of the object sought to be supplied with a fastener. When so attached, the two rows of metallic members face each other. Each metallic member at its facing end is supplied on its upper side with a projection and on the under side of the projection with a recess just large enough to admit the projection of its fellow in the opposite row, and so on to the end. The problem was to engage securely the projection in the recesses of the myriads of members on the two rows and thus effect a fastening. (Security of engagement against transverse flexing will be discussed later). This was accomplished by separating the members in each row a distance slightly more than their breadth and staggering the members of the two rows so that members in one row should go between members in the other row and place their projections in the corresponding recesses. To bring them into this interlocking position a manually controlled guide block called a "slider" is provided. It has Y-shaped channels consisting of two upper channels or guideways through which the two rows of metallic members are fed when the slider is drawn down in closing position. Then (on the slider continuing its closing movement) the rows of staggered members gradually approach one another and converge into a single guideway lower down -- the stem of the Y -- where the members are ultimately brought into parallel, overlapping, interleaving relation and the projections on the upper side of one series of members on one tape fit into corresponding recesses on the under sides of members in the series carried by the other tape, and lock. Thus there is achieved the familiar locked metallic seam, made more complete by "stops" also attached to the tapes which pass into the guideways and arrest the movement of the slider at the end of the seam.
The fastener is unlocked by drawing the slider along the seam in the other direction. This, reversing the operation, draws the rows of members up through the single guideway until they strike a tongue in the crotch of the Y which separates the projections from the recesses of the members. The rows, so separated, then pass up to and out of the first two guideways and the article is unfastened.
We are of opinion that this composite structure involves invention and of a rather high order. In respect to its inventive novelty and utility, the plaintiff says: "The patented fastener was the first operative slide fastener ever manufactured which did not employ hooks and eyes or equivalent elements; it has superseded all others, has had great commercial success, has been manufactured all over the world under Sundback's patents, has been the basis of a small but steadily growing industry."
That may be true, but it should be observed that not all of the elements were contributions or inventions of Sundback. Hence these suits, bringing into issue what inventive contributions, if any, Sundback made to the finished fastener, we have attempted to describe. The learned trial court held all claims of the patents in suit valid and all save one infringed, granting and withholding relief in respect to certain of them. Both parties appealed.
Concurring with the learned trial court, we shall take the Kuhn-Moos British Patent No. 14,358 of 1912 (with a corresponding Swiss patent) as the best example of the art when Sundback entered it. This patent discloses quite clearly that, before Sundback, Katharina Kuhn-Moos had the idea of a hookless fastener composed of dual rows of staggered metallic members so spaced apart that on being drawn through the guideways of a slider and made to converge, the projections of members on one row would fit into recesses of members on the other row, whereby all members would interlock and the metallic seam be formed.
The specific looking means of this invention is a semicircular recess formed in the upper side of each block-shaped member (about as thick as it is wide) and a downwardly projecting rounded pin on its under side. "The arrangement of these pins and recesses is such that the pins of one row enter the recesses formed in the other row on the slider being actuated."
This invention, so far as the record discloses, has never gone into commercial use. Seemingly, it will not work. It tends against safe flexing because, it is urged, the members are too large and the locking means too insecure, with the result that on flexing the seam the pins come out of their recesses and the thing unfastens. This may be questioned. However, it is not disproved; neither is it proved that the invention is capable of practical operation. So far as the record discloses, the Kuhn-Moos patent has stood for more than two decades as a paper patent containing the kernel of an inventive conception not reduced to actual practice.
The substance of the Sundback Patent, No. 1,219,881, issued March 20, 1917, and in this litigation called the first patent, is that, in combination with other elements, it supplies means for making the invention of the Kuhn-Moos patent function. If so, it is invention, with limitations.
All claims of the patent, except claim 5, are in suit. The first three relate to interlocking means of a certain size and shape, the remainder to stopping means. The specification calls for flat or thin interlocking members distinguished from the Kuhn-Moos block-shaped members. Claims 1, 2, and 3 define the shape of the projections and corresponding recesses in different terms, meaning substantially the same thing, as follows: "End surface of the projection of each member meeting in an edge," "a transversely elongated rounded recess on one side and transversely elongated rounded projection on the opposite side, the recess and the transversely elongated end surface of the projection of each member meeting in an edge," and "projections having inclined ends continuous with the recess side of the member." Put into plain words, this means the projections and recesses are rectangular, transversely rounded, and extend from edge to edge of the interlocking members.The theory of the operation of members of this shape is that when a projection enters a recess it will stay there, that is, on transversely flexing the tape it will hold by a kind of binding action. Anyhow, it works. It is a reduction to actual practice of the Kuhn-Moos conception and to that extent is invention and it is so without any expansion of the claims or change of the invention by the disclaimer. The characteristics which distinguish the first Sundback patent from the Kuhn-Moos patent are the shape of the projections and recesses, the thickness of the members, and the presence of stops in Sundback and their absence in Kuhn-Moos. It is the first two of these characteristics that make the conception of Kuhn-Moos operative; the third improves the operation. Taken together, they are entitled ...