Before PARKER and GOODRICH, Circuit Judges, and BARD, District Judge.
This is an appeal from a judgment of the District Court invalidating Robinson and Moore patents Nos. 2,222,555 and 2,222,556 and Frederickson patent No. 1,828,772, and dismissing a counter-claim for infringement.
Plaintiff brought suit seeking a declaratory judgment to invalidate the Robinson and Moore and other patents and defendant brought a counter-claim seeking damages for infringement. The District Court concluded that six of the patents were invalid and defendant now appeals to this court from that portion of the judgment invalidating Robinson and Moore patents Nos. 2,222,555 and 2,222,556 and Frederickson patent No. 1,828,772.
The sole issue presented is patentability since it is evident that the patents, if valid, are infringed. The patents are owned by National Electric Products Corporation, hereafter referred to as "National", and the alleged infringer is Triangle Conduit and Cable Company, Inc., hereafter referred to as "Triangle". The Robinson and Moore patents, pertaining to fibrous covered rubber insulated electrical building wire, will be considered together since the second patent describes the same combination but in a specific improved form. Theroz Co. v. United States Industrial Chemical Co., D.C., 14 F.2d 629.
Electrical wire used in the interior wiring of buildings is covered by a rubber compound to insulate the electrical current and maintain its flow within the wire circuit. It is essential that the rubber insulation be preserved intact and protected from the injurious effect of light, air and moisture. To provide this protection the rubber insulation is enclosed in a cotton jacket which is impregnated with an asphaltic compound, then coated with a pitch material, and finally waxed on the exterior. The cotton jacket protects the rubber from knocks, blows and kinks which are encountered during installation of the wire and, in addition, provides a base for the protective coatings of pitch and wax.
For many years the standard cotton jacket was a braided fabric. It provided ideal protection for the wire under the most scvere kinking and stresses but it was not economical. Its application was slow since the threads were interlaced around the wire by a braiding machine consisting of two circles of spools mounted on carriers turning in opposite directions about the wire which was drawn up through the machine. The overlapping of threads was wasteful of cotton and the final product was of uneven thickness.
The electric wire industry had developed another form of jacket known as a "serving" consisting of cotton threads spirally wrapped on the wire in one direction only, with parallel turns laid close together without overlap at a substantial angle. The serving overcame all the economic disadvantages of the braided jacket. It could be applied quickly in an even layer without waste of material. But it had a tendency to separate and expose the rubber covering when the wire was subjected to a sharp bend, and this basic defect precluded adoption of the serving as a standard approved covering for wire.
For over twenty-five years the art addressed itself to the problem of eliminating the separating tendency of the serving. McCulloch patent No. 1,216,337 of 1917 proposed a serving interlaced with threads running lengthwise or helically. It failed to solve the problem in that it was basically a braiding operation and had similar economic disadvantages. In 1926 Western Electric Company developed Lamplough patent No. 1,610,954 which prescribed application of the serving before the rubber covering was vulcanized, the whole to be drawn through a hot bath or saturating compound so that the threads of the serving would become firmly attached to the softened rubber. The process failed to keep the serving in place when the wire was kinked and Western Electric returned to the use of an improved braided jacket. Frederickson patent No. 1,900,492 issued to National in 1933 paralleled the Western Electric scheme of adhesion and proposed a saturant of stearin pitch to induce firm attachment of the serving to the rubber. The adhesion was insufficient to prevent separation of the serving and the patent was rejected by the Umderwriters' Laboratories.
The Robinson and Moore patents of 1937 successfully solved the problem which had confronted the art by combining a new counter-wound locking thread with the traditional spiral serving. The first claim of the patent contains the following description:
"1. An insulated conductor structure having a flexible metallic conductive element, and inner insulating structure and an outer protective jacket in the form of a filamentary insulating serving surrounding the said metallic conductive element with the turns of said serving lying against each other in a simple helical lay to form a closed wrapping, and a locking filament laid in a helix opposite in sense to the helix of the closed wrapping and disposed in the assembly outside and in contact with the said wrapping, said locking filament being laid with its turns out of contact with each other in an open binder structure and arranged each to form an angle approximately as great as 60 degrees with the longitudinal axis of the conductor."
The spiral serving and counter-wound locking thread could be applied rapidly and cheaply and easily satisfied the economic goal sought by the art. Although inferior in many respects to the braided jacket, it provided an adequate protective covering for rubber insulated building wire and was approved by the National Board of Fire Underwriters. Competing manufacturers, with the notable exceptions of Western Electric Company and Triangle, entered into licensing agreements with National. The licensed manufacturers and Triangle, which was not a licensed company, began production of the Robinson and Moore wire and the product achieved immediate commercial success.
The basic contention asserted by Triangle is that the Robinson and Moore patents are anticipated by Roberts patent No. 242,911 (British). One of the prerequisites of a patentable invention is that it must be new or novel. The Roberts patent effectively negatives any novelty in the Robinson and Moore patents and is clearly an anticipation thereof.
The Robinson and Moore patents describe a serving consisting of threads wound helically around a rubber covered wire to form a closed but non-overlapping covering which is secured by a widely spaced binder thread oppositely wound at about a 60 degree angle to the longitudinal axis of the conductor. The threads which form the wrapping or serving are described as "fiber threads of moisture resistant character such as cotton, lint, hemp or paper thread". The use of a serving has been advocated by the art for some twenty-five years; but the ...