Williamson-dickie Mfg. Co., Plaintiff-appellant-cross Appellee, v. Hortex, Inc. and the B. F. Goodrich Company,defendants-appellees-cross Appellants, 504 F.2d 983 (5th Cir. 1975)

In 1967, B. F. Goodrich Company began to manufacture a plastic reinforcement film for commercial sale to garment manufacturers. Hortex, Inc., a Texas garment producer, purchased the Goodrich product, called Fabrilock,¹  and used it to reinforce the knee areas of boys' trousers. Williamson-Dickie Mfg. Co. is the owner of the Mizell patent²  that related to a method of reinforcing garments by applying heat and pressure to a film of thermoplastic material. They used Goodrich and Hortex for patent law violations. Williamson-Dickie claimed that Hortex's use of Fabrilock film infringed upon the Mizell patent,³  and that Goodrich's actions in marketing Fabrilock constituted contributory infringement.⁴ 

Goodrich and Hortex denied infringement of the Mizell patent, and counterclaimed for a declaratory judgment of invalidity and an award of attorneys' fees. Adopting almost all of the defendants' proposed findings of facts and conclusion of law, the district court ruled that Hortex and Goodrich had not infringed upon the patent, and that the patent itself was invalid.⁵  Williamson-Dickie appeals the trial court's decision on those issues, while Goodrich and Hortex cross appeal the denial of attorneys' fees. We affirm the district court's ruling on the validity issue; accordingly we do not reach the infringement claim. We also affirm the district court's refusal to award attorneys' fees.

The Mizell Patent

On May 13, 1959, Louis R. Mizell applied to the Patent Office for a patent on an invention relating to producing garments with increased resistance to abrasive wear.⁶  His original application made sixteen claims relative to both the process and the end product. Protracted negotiations between Mizell's attorneys and the Patent Examiner followed. The Examiner rejected all the original claims and seven subsequent claims. On May 14, 1963, he finally allowed the following claim:

A method of making a garment comprising, cutting pieces of fabric of about 10 ounce weight to peripheral dimensions and shapes for fabrication into a garment, overlaying said pieces in areas of potential wear with a film of thermoplastic material having a thickness of approximately 2 mils, and simultaneously applying heat from about 345 degrees F. to 440 degrees F. and pressure from about 14 p.s.i. to 145 p.s.i. for periods of about 3-10 seconds to cause the film to flow around the fibers of the fabric in said area on one side only and separate at the interstices between the fibers to render said area permeable to air and water and prevent mechanical separation of the thermoplastic material from the fabric. Thus the end product under the Mizell process has the following characteristics: (1) flow of the film on only one side of the fabric; (2) separation of the film at the interstices rendering the area permeable to air and water; (3) a permanent bond between film and fabric. Mizell's process achieves these results through application of heat and pressure to the film and fabric for a certain time period.

The striking characteristic of the Mizell patent is the breadth of the claim. When Mizell's deposition testimony is considered in conjunction with the language of the claim, its scope becomes clearer. The patent is not limited to certain types of fabrics. Nor does it embrace a limited class of thermoplastic materials.⁷  Instead the claim refers to any fabric 'of about 10 ounce weight,' and to any thermoplastic film 'having a thickness of approximately 2 mils.' Yet Mizell's deposition testimony makes clear that the 10 ounce weight is not crucial. He testified that Williamson-Dickie manufactured work clothes with fabrics ranging from 5 to 12 ounces in weight, and that wear problems were similar for all of them.⁸  He later referred to the problem of strikethrough-- having the film penetrate through both sides of the fabric:

Q Did you ever observe a problem of strikethrough in connection with the film patches which you subsequently developed for Williamson-Dickie?

A Yes.

Q And in what connection did you observe the problem in that case?

A When we got the pressure or thickness too great we could get strike-through.

Q Did it depend also on the weight of the fabric?

A We could get strikethrough with twelve-ounce denim.

Q Would it stike through twelve-ounce denim just as readily as through a five-ounce fabric?

A Under different pressure and temperature conditions.⁹ 

The proper temperature factor depended in large part on the heat softening temperature of the particular thermoplastic film employed. Mizell testified that he used a temperature of about 440 degrees to cause caplene (a Nylon film) to fuse and imbed into the fabric, while 325-350 degrees was sufficient to achieve that result with polypropylene.¹⁰  Mizell stated that basic requirement as follows:

Q Continuing at the bottom of page 10, the entry says that the propylene film was placed on the fabric and pressed in the Carver press at 345 degrees, the conditions otherwise apparently being the same as for the Mylar film and the caplene film.

How was the temperature of 345 degrees Fahrenheit selected for this first experiment?

A Well, if you look on page 9 you will see that the polypropylene, it says the heat sealing range is 325 to 350 so we are close to the 350.

Q It was considered important then to have the temperature within the heat softening range of the material in question?

A Well, it was important to have to get the temperature of the film in the heat softening range, . . ..¹¹ 

Mizell's testimony shows that the patent claim does not contain precise specifications for a particular film and fabric. He stated that '. . . these factors are interrelated . . . by applying more pressure for a longer time we could have been a little lower in the temperature . . ..'¹²  The figures in the claim represent the range of temperatures, pressures and times that Mizell used in his experiments. Given the interrelationship between the five variables-- time, temperature, pressure, fabric thickness, and film thickness-the particular specifications in his process are achieved through trial and error. We find that the district court properly concluded Mizell's process was obvious in light of the prior art.

Validity of the Mizell Patent

The three basic tests for patent validity are utility, novelty, and nonobviousness. 35 U.S.C. 101, 102, 103. When a patent application survives the scrutiny of the Patent Office, it presumptively passes all three tests, and the burden of establishing invalidity rests with the party challenging the patent. 35 U.S.C. 284. But the presumption of validity weakens when the challenger presents evidence of prior art not considered by the Patent Office. Beckman Instruments, Inc. v. Chemtronics, Inc., 5th Cir. 1970, 439 F.2d 1369, 1374-1375. Here Goodrich and Hortex contend that the Mizell patent was obvious in light of certain prior art not disclosed to or considered by the Patent Office.

The Supreme Court has set out the applicable boundaries of the obviousness inquiry in Graham v. John Deere Co., 1966, 383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545. Mr. Justice Clark stated:

While the ultimate question of patent validity is one of law, Great A. & P. Tea Co. v. Supermarket Equipment Corp., supra, 340 U.S. 147 at 155, 71 S. Ct. 127 at 131 (95 L. Ed. 162 (1950)), the 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.

Id. at 17-18, 86 S. Ct. at 694, 15 L. Ed. 2d at 556. The standard of invention under the patent laws is a demanding one. Lear, Inc. v. Adkins, 1969, 395 U.S. 653, 676, 89 S. Ct. 1902, 1914, 23 L. Ed. 2d 610, 626. The Supreme Court has counselled that strict observance of the Graham three-pronged test for obviousness is required since the patent standard is bottomed on the Constitution. Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 1969, 396 U.S. 57, 61-62, 90 S. Ct. 305, 308, 24 L. Ed. 2d 258, 262.

In Finding of Fact No. 42, the district court defined the scope of the prior art. 'A man of ordinary skill in the art would have been familiar with the properties and characteristics of thermoplastic materials and of fabrics at the time the alleged invention of the patent was made.' We agree. Mizell's claim is not limited to a particular type of fabric or thermoplastic film.

The district court also found that a person of ordinary skill in the art would have been familiar with all the patents cited by Goodrich and Hortex as more relevant to the Mizell claim than the references the Examiner relied upon.¹³  Williamson-Dickie does not contest the finding that these patents were within the scope and content of the prior art. Rather they argue that these patents are no more relevant to the Mizell patent than the references cited and ultimately rejected by the Examiner. In fact they imply that the Patent Examiner may have considered these patents.

B. Relationship Between the Mizell Patent and the Prior Art

We find no significant differences between the results achieved through the Mizell process and those achieved by the prior art references cited by Goodrich and Hortex. The Anderson, Redman, Kline, and Gillespie patents all teach application of heat and pressure to cause thermoplastic material to flow around the fibers of the fabric, effecting a substantially permanent bond.¹⁴  Both Kline and Gillespie explicitly teach flow of the film on one side of the fabric only.¹⁵  Redman and Gillespie claim that permeability results from their processes.¹⁶ 

None of the references cited by Goodrich and Hortex give the same ranges of temperature, pressure, and time as appear in the Mizell claim. However, given the interrelationship between those factors, we find that the lack of precise specifications is immaterial. The general principle, as stated in Mizell's deposition testimony, is that the temperature, pressure, and time must be sufficient to cause the thermoplastic material to soften and imbed itself into the fabric. Yet the temperature cannot be so high as to scorch the fabric.¹⁷  Both Redman and Kline explicitly refer to this principle.¹⁸ 

Robert F. Johnson, the expert witness for the defendants below, testified that the Mizell process would have been obvious to one of ordinary skill in the art prior to the filing date of the Mizell patent. The district court accepted that statement in Conclusion of Law Number 9. We believe the record amply supports the district judge's conclusion. Mizell's original application sought to patent the resulting article of manufacture as well as the process itself. The Patent Examiner consistently rejected the product claims, and eventually allowed the process claim. But the actual method for achieving Mizell's results would have been obvious to one of ordinary skill in the art.¹⁹ 

Attorneys' Fees

Under 35 U.S.C. 285, the court has discretion to award attorneys' fees to the prevailing party in exceptional cases. In this case, the district court refused to hold that this was an exceptional case within 285, and did not award attorneys' fees. We, as an appellate court, cannot lightly overturn that decision. 'The law placing, as it does, the discretion in the trial court to determine . . . whether the case is an exceptional one so that attorneys' fees should be allowed, appellate courts ought not to and will not interfere with the exercise of such discretion. Indeed, they may not do so unless there is such a clear abuse as to show that discretion was not exercised, or unless it is plain that the trial court's decision is based on an erroneous concept of law.' Graham v. Jeoffroy Mfg., 5th Cir. 1958, 253 F.2d 72, 78 (Tuttle J.).

It is our conclusion that the district court did not abuse its discretion in refusing to award attorneys' fees. Our review of the record provides no indication that Williamson-Dickie has not proceeded in good faith in this litigation, or in its dealings with the Patent Office. Under these circumstances, the trial court properly refused to award attorneys' fees. Garrett Corp. v. American Flight Systems, Inc., 5th Cir. 1974, 502 F.2d 9.

Affirmed.