Wayne Knitting Mills and the May Corporation, Appellees, v. Russell Hosiery Mills, Inc., Appellant, 400 F.2d 964 (4th Cir. 1969)

Before us for determination are the questions of the validity of Claim 3 of Sarbo United States Patent No. 3,059,458, issued October 23, 1962, and whether certain of defendant's hosiery products infringe. The patent concerns knitted foot covers designed to be worn as a liner in shoes of various styles instead of stockings or conventional socks. The district court declared Claim 3 of the patent valid and infringed.¹  For failure to distinguish the prior art — and hence for over-claiming — and for failure to comply with 35 U.S.C. § 112 we find the patent invalid, and reverse.

The claim in suit reads:

"3. A knitted foot cover comprising a seamless tubular rim including at least some rubber threads,

said rim being adapted to form an opening for a foot entry,

a seamless tubular body having an axial length greater than that of said rim and connected with said rim,

said rim and said body, each, respectively, consisting of the same knitting structure throughout its entire axial length and throughout its entire periphery and

a seam formed at the end of said body opposite said rim, to form a symmetrical pouch-like body, and

said body being adapted to function as tip, sole and heel portions of said foot cover."

"Foot cover" is not defined in the specifications; neither is it defined in the claim, except as a definition may be inferred from the language employed. A drawing (Figure 5) accompanying the specifications depicts "a foot cover forming an end product of the method of the invention," as one of several " [I]llustrative embodiments of undersocks or foot covers made according to the invention," and the drawing shows a foot cover on a human foot with the rim at all places below the ankle, barely covering the toes, partially covering the heel and between them dipping almost to the sole. The claim, the specifications and the drawing are not otherwise specific as to the degree of coverage of any part of the foot below the ankle.

The patent was the result of the activities of Edgar G. Sarbo in Vienna, Austria, which culminated in 1958. Prior to then, shoe-top-length foot socks adapted for wear with low cut shoes were available in at least two forms: (a) a type, known as "Peds" and "Footlets" made from flat knitted fabric cut from such fabric and sewn into the desired shape with a sewn-in elastic rim around the foot entry opening, and (b) a sock, such as previously manufactured by defendant, which was knitted as a conventional sock with a very short top and with reciprocatorily knitted heel and toe pockets (a time-consuming process), the knitted fabric being then cut down at the top and instep and provided with a sewn-in elastic rim around the foot entry opening. These known types were comparatively expensive to manufacture because of the labor required for cutting and sewing and because of the time required for reciprocatory knitting. Additionally, they were uncomfortable because the heavy band or rim of elastic around the foot opening tended to burrow into the foot of the wearer as a result of pressure from the shoe.

Sarbo, a manufacturer of conventional socks, became aware of the deficiencies of available shoe-top-length foot socks as a result of a customer's inquiry. Sarbo's mill did not engage in cutting and sewing operations. Ultimately, he developed a shoe-top-length sock which could be produced entirely by knitting and without need for cutting or sewing. On November 19, 1958, Sarbo filed for letters patent in Austria. On November 13, 1959, Sarbo filed a corresponding patent application in the United States.²  which matured into the patent in suit.³  Plaintiff, Wayne Knitting Mills, Inc., is the ultimate assignee of the Sarbo patent.

Unaware of the Sarbo development, plaintiff, The May Corporation, principally through its Charlie T. Smith, an employee of May's research and development department, began work on an improved shoe-top-length sock in 1949. A ten-year interruption then ensued because May was busily occupied in national defense work. In 1959, Smith resumed his efforts and by 1962, he developed the "extended gore sock." This style, however, did not fit low enough on the foot for wear with slipper-type shoes, and it required reciprocatory knitting to shape it. Smith's efforts continued and, in 1963, independently and without knowledge of Sarbo's patent, Smith hit upon the Sarbo concept.

When May began to manufacture the Smith sock, it was confronted with the Sarbo patent by Sarbo's then licensee. May then purchased the Sarbo patent. From September, 1963, to the date of trial, May had manufactured and sold over 5,300,000 pairs of Sarbo socks and thus had captured a significant segment of the prior shoe-top-length sock market.

In 1964, defendant, after seeing a Sarbo sock, began the manufacture of one of its styles of socks accused of infringement. After formal notice of infringement, defendant introduced two other styles, one which has never been commercially produced, and the other which is also accused of infringement.

The patent is a combination patent. Concededly, each of the elements of the combination was well known in the industry and had been disclosed in patents predating Sarbo.⁴  Plaintiffs, nevertheless, claim that in combination, laid-in-rubber in the rim of the Sarbo sock performs a new function, i. e., the rubber threads serve to conform the rim of the below-shoe-top-length sock to the irregular configuration of the foot (as opposed to the circular configuration of the leg or ankle) and hold the body of the sock in tensioned condition below the instep and on the toe, sole and heel of the foot. This function, so the argument runs, is different from the function of rubber-top in above-the-shoe socks wherein the rubber-top exerts an inward force in the cylindrical leg to prevent the top from sliding down, or in below-the-ankle socks, when the rim is below the ankle but still around the cylindrical leg to prevent the rim from sliding down. Essentially adopting this argument, the district judge remarked that " [T]here is no evidence that laid-in rubber or elastic yarn previously served the function of holding in place a sock located below the ankle and entirely within the shoe." (274 F.S. at 940). The district judge's ultimate conclusion was expressed:

"It is apparent that those skilled in the art, probably due to the irregular configuration of the foot as compared with the uniform configuration of the ankle and leg members, could not accept or grasp the idea that rubber or elastic yarn could be laid in with proper tension to keep a below the ankle length sock on the foot. * * * The combination of Claim 3 of the patent in suit teaches a new and useful result, that is, the old elements could be joined to make a shoe-top-length sock that would stay up on the irregular contours of the foot and could be comparatively cheaply manufactured." (274 F.S. at 941).

From plaintiffs' argument and the district judge's conclusion, it is apparent that the lower location where the laid-in rubber rim serves its function is critical to the validity of Sarbo Claim 3, both as to inobviousness and new function. Yet, the exact location of the rim is not identified anywhere in the claim. At most, the claim implies a location below the ankle, but plaintiffs and the court below predicate the validity of the claim, not on the entire area below the ankle, but on the undetermined location below the ankle where the ankle ceases to resemble the cylindrical conformation of the leg and exhibits the irregular configuration of the foot.⁵  Specifically, Sarbo Claim 3 gives no particularity as to the part or shape of the foot or leg portion the rim contracts against, or where it is located relative to the instep. While this claim recites that the body does function as "tip, sole and heel portions" of the foot cover, absent is any language to exclude the body from also covering part of the instep, the ankle or parts of the foot in the area below the ankle.

Lacking language disclosing how the patented device should be constructed so as to position the elasticized rim below the ankle in the place where it can perform its theretofore undiscovered — and hence new and novel — function, the claim, in our view, is invalid, because it is so broad that it claims as invention that which plaintiffs concede was not new. Stated otherwise, by the breadth of the claim that which is conceded to have been known in the prior art — that which the prior art anticipated or made obvious — is included within the claimed invention; hence, the claim is invalid for overclaiming. Schriber-Schroth Co. v. Cleveland Trust Co., 305 U.S. 47, 59 S. Ct. 8, 83 L. Ed. 34 (1938). See also, Heyl & Patterson, Incorporated v. McDowell Company, 317 F.2d 719 (4 Cir. 1963). And the drawings cannot properly be referred to for the purpose of narrowing the claim. Binks Mfg. Co. v. Ransburg Electro-Coating Corp., 281 F.2d 252, 256 (7 Cir. 1960). Cf. Wilcox Manufacturing Co. v. Eastern Gas & Fuel Associates, 400 F.2d 960 (4 Cir., Decided July 18, 1968).

It follows, also, that by failure to specify the critical location of the laid-in-rubber rim the claim of the patent is invalid for failure to satisfy 35 U.S.C. § 112.⁶  The mandate for a particular and distinct claim of the subject matter constituting the invention was not satisfied. Wilcox Manufacturing Co. v. Eastern Gas & Fuel Associates, supra; Triumph Hoisery Mills, Inc. v. Alamance Industries, 299 F.2d 793 (4 Cir. 1962).⁷ 

Reversed.