Appeal from the District Court of the United States for the Eastern District of Pennsylvania; William H. Kirkpatrick, Judge.
Before MARIS and JONES, Circuit Judges, and SMITH, District Judge.
The defendant, Honorbilt Products, Inc., appeals from a decree of the District Court holding valid and infringed Patent No. 1,565,267 for an upholstery pad, issued on December 26, 1925, to Del Roy F. Fowler, one of the plaintiffs. The suit was instituted by Fowler, the owner of the patent as well as the patentee, and F. Burkart Manufacturing Company, the exclusive licensee under the patent. Honorbilt Products, Inc., is a manufacturer of mattresses, and the complaint alleges that Honorbilt, in its manufacture of mattresses, utilizes a sisal pad which infringes the patent in suit.
The patent contains but a single claim which reads as follows:
"A pad for upholstery made up of a fabric backing overlaid by a multiplicity of thin veils of dry carded, long and wavy sisal fibre, said veils being successively superposed upon each other with the fibres of successive layers crossing each other at an angle so as to form a springy unfelted pad and said pad being stitched to the backing."
From the findings contained in the opinion of the court below we summarize the following facts.
Pads of the sort described in the patent are used to overlie the helical springs of inner-spring mattresses and upholstery.Before the patent in suit there were in use upholstery pads consisting of bats stitched to reinforcing sheets. Bats had been made of cotton jute and other soft fibres, and hair and sponge rubber had also been used in the bats, but never sisal. Cotton bats were the commonest and were in general use. The difficulty with cotton pads as with all soft fibre pads was that they lacked resiliency with the result that they sank into the spaces in and between the springs and thus became lumpy and uneven. The sisal pads solved this difficulty.
The characteristics of sisal were matters of common knowledge and loose sisal had been tried by upholsterers in an effort to make better pads. These were of little or no use, because, in order to get the particular structure required to resist the spring thrust, it was necessary to have a pad of superposed veils withthe fibres laid lengthwise, the veils crossing and recrossing diagonally. This type of veil had already been disclosed and had been used in making pads of cotton.
The trial court further found that Fowler "developed his pad by taking the hard-fibred sisal, making the necessary adjustments upon the machinery which had been used for carding and lapping soft-fibred cotton, and carding and lapping the sisal by means of it. No one, prio to his time, imagined that sisal could be treated in this manner. Apparently no one knew that sisal was cardable."
The trial court then concluded that "It may not have been a matter of great difficulty to adapt the machinery then in existence, but the idea that it [carding and lapping sisal by machine] could be done, reduced to practice, was, in my opinion, invention."
Such however is not the invention claimed by the patent in suit. No mention whatever is made therein of a machine or machine adjustment for the carding or lapping of sisal. As the patent application states, the "invention relates to upholstery pads" made of thin superposed veils of dry carded sisal stitched to a fabric back, with the longitudinally placed fibres of one veil disposed diagonally to the fibres of the adjacent veils. The Fowler patent no more discloses a method for carding sisal than did Stratford forty years earlier in his British patent (No. 11,409) for an upholstery material wherein he specified the use of sisal which "After being curled or crimped and picked, * * * is preferably carded by any well known carding machinery * * * ." Fowler's patent both in its specifications and in its claim presupposes the practitioner's knowledge of how to card sisal. We need not therefore consider whether the carding of sisal was known to the art prior to Fowler or whether it was not really Klenk, the manufacturer of carding machinery whom Fowler consulted, who by trial and error ascertained the extent of mechanical adjustment of known machinery needed to obtain the proper coarseness of the clothing (carding teeth) in order to card sisal satisfactorily.
As the court below found, upholstery pads made of thin veils of cotton fibre, superposed so that the longitudinally placed fibres of one veil are disposed diagonally to the fibres of the adjacent veils, and stitched to a fabric back, had long been known and in sue prior to Fowler. It seems plain, therefore, that what the Fowler patent claims over the prior art is the use of sisal rather than cotton or other fibrous material in the manufacture of the veils to be superimposed so as to form a pad. That this is so Fowler clearly conceded in his cross-examination at trial.*fn1
The sole issue in this case is whether it constituted invention to use sisal instead of cotton or other fibrous material in the manufacture of upholstery pads in the same way in which such ...