145 F.2d 389 (8th Cir. 1944), 12774, Sbicca-Del Mac, Inc. v. Milius Shoe Co.

Docket Nº:12774.
Citation:145 F.2d 389, 63 U.S.P.Q. 249
Party Name:SBICCA-DEL MAC, Inc., et al. v. MILIUS SHOE CO.
Case Date:November 18, 1944
Court:United States Courts of Appeals, Court of Appeals for the Eighth Circuit
 
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Page 389

145 F.2d 389 (8th Cir. 1944)

63 U.S.P.Q. 249

SBICCA-DEL MAC, Inc., et al.

v.

MILIUS SHOE CO.

No. 12774.

United States Court of Appeals, Eighth Circuit.

November 18, 1944

Page 390

[Copyrighted Material Omitted]

Page 391

George T. Bean and Theodore S. Kenyon, both of New York City (Delos G. Haynes, of St. Louis, Mo., and Frederick Bachman, of New York City, on the brief), for appellants.

John H. Cassidy, of St. Louis, Mo. (Joseph J. Gravely and J. Sydney Salkey, both of St. Louis, Mo., on the brief), for appellee.

Before GARDNER, THOMAS, and RIDDICK, Circuit Judges.

THOMAS, Circuit Judge.

This is an appeal by the plaintiffs from a decree for the defendant in a suit involving the alleged use by the defendant of the inventions set forth in two patents owned by the plaintiffs: Sbicca reissue patent No. 20, 274 and Maccarone patent No. 1, 988, 281. The controversy involves claims 1, 2, 3, 4, 9, 10, and 13 of the Sbicca patent and claims 3 and 5 of the Maccarone patent. Claims 9 and 10 of Sbicca are for a complementary insole-outsole combination shoe, and claims 1, 2, 3, 4, and 13 are for a method of making the shoe. Claims 3 and 5 of the Maccarone patent are both for a method of making the Sbicca shoe. The patents relate particularly to the art of making women's shoes.

The complaint is in three counts. The first count or cause of action is for infringement and asks for an injunction and an accounting for profits and for damages. The defenses are (1) invalidity, (2) non-infringement, and (3) unclean hands. The second cause of action is for judgment for royalties and interest under a license agreement dated May 1, 1933. The defenses are (1) nonuse, (2) ouster, and (3) waiver. The third cause of action is for judgment for royalties based upon a license agreement dated September 1, 1937. The defenses are (1) nonuse, (2) a special agreement, and (3) unclean hands.

The District Court held all the claims in issue in both the Sbicca reissue patent No. 20, 274 and the Maccarone patent No. 1, 988, 281 invalid 'because of lack of invention in view of the prior art.' In finding the patents invalid the court cited Harmer (Australian) 4066/17; Maccarone 1, 569, 823; Kelly 1, 593, 264; and Ruggiero 1, 728, 366. Any minor differences that may exist, the court found, 'are only in matter of form or degree and lie well within the skill of an expert shoemaker. ' In addition to these examples of the prior art the defendant in its brief cites Lentz No. 307, 780 (Nov. 11, 1884); Nevins No. 459, 166 (Sept. 8, 1891); Scott No. 462, 594 (Nov. 13, 1891); and Scott No. 467, 441 (Jan. 19, 1892); and, as particularly applicable to Maccarone, French No. 344, 659; Beach 488, 303 (1892); Engel 1, 068, 489 (1913) and 1, 313, 887 (1919); and Caggiano 1, 904, 405 (1933).

Plaintiffs contend that the court's findings are clearly erroneous in that they are not supported by substantial evidence, are contrary to the weight of the evidence, and are the result of an erroneous view of the law.

The manufacturing of shoes has been a progressive art. Advance has been marked by improved methods of shoemaking and by improved machinery for use in cutting,

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forming and shaping leather, and for other purposes. The patents in issue are improvement patents.

Formerly most shoes were made with two soles, an outsole and an insole. Shoes so made were heavy, stiff, and uncomfortable to wear. Shoemakers came to realize that there was a demand for shoes light in weight, durable in quality and, especially since high heels came into fashion, having soles flexible at the juncture of the instep or shank and the ball line. In addition to these qualities manufacturers were interested in the difficulties and costs of manufacturing, and in the sale price.

The first shoe that seemed to embody many of the qualities desired by the users is known as the turn shoe. This was a single sole shoe in which the upper was sewed directly to the sole. To produce a smooth surface for the foot there was a channel around the top margin of the sole to receive the 'lasting allowance' of the upper and a slit to bury the seam. This type of shoe was difficult to make. In the course of manufacture it was necessary to turn the shoe inside out; and uniformity in size was frequently lacking. These and other difficulties presented the problem to the solution of which the patents in issue have contributed.

Sbicca and Maccarone solved the problems and overcame the difficulties and disadvantages of the older methods by splitting a single sole blank and using the flesh side for an insole and the other side of the leather for the outsole. By first attaching the upper of the shoe over a last to the insole and afterward adding the outsole the necessity for turning the shoe inside out in the course of manufacture was obviated; and by leaving, in the splitting process, the full thickness of the outsole at the ball, the point of greatest wear, durability is achieved. By this means lightness, uniformity and flexibility, as well as durability, labor saving and cost of manufacturing, were accomplished.

The Sbicca patent, No. 20, 274, is a reissue of original No. 1, 902, 725, issued March 21, 1933. Claims 9 and 10 of the reissue patent are for a composite sole, that is, an article or product patent, and claims 1, 2, 3, 4, and 13 are for a method of producing such a sole. Claims 9 and 13 are representative. They are set out in the footnote. 1

The Maccarone patent, No. 1, 988, 281, issued January 15, 1935, is a method patent for cutting the complementary outsoles and insoles described in the Sbicca patent from a single blank. Claim 3 of the patent, set out in the footnote, 2 is illustrative.

It will be observed that in the Sbicca patent

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the operation of splitting the blank consists of three or four steps, while in the Maccarone patent the same result is accomplished in two steps. Neither patent covers the tool to be used in performing the splitting process. However, it appears that Sbicca contemplated the use of a knife held in the hand of the artisan or shoemaker, and Maccarone provides that the blank, after depressing an area at the ball, shall be passed between the rollers of a conventional leather splitting machine in which the splitting blade is positioned to cut above the bottom of the depressed area.

Harmer No. 4066/17 (Australian), referred to by the court, conceived the idea of cutting (in the language of the art, skiving) away a portion of both an outsole and an insole, providing an opening or aperture in the insole at the ball in front of the shank to receive a similarly shaped surface, not skived away, of the outsole, with a space above to be filled with cork or soft leather. That part of the two soles skived away was waste. Harmer's patent did not meet with success and the method disclosed by him did not come into use. The patent, however, suggests a complementary outsole-insole shoe in which a projecting surface of the outsole through an opening in the insole is called an island, the surrounding remains of the insole a rand, and the insole a skeleton insole.

Maccarone in his first patent, No. 1, 569, 823 (1926), for the purpose of eliminating the necessity of turning the shoe, described a method almost identical with the Harmer patent. He used two sole blanks and skived them to produce a skeleton insole from one blank and a complementary outsole from another. He achieved lightness and flexibility, and avoided turning the shoe in the process of manufacture. But there was great waste, and the method was not adopted by himself or other manufacturers. In the same year, 1926, Kelly described a method for making a single sole shoe without turning it by using a thin narrow strip of material instead of an inner sole to serve as a binder between the upper and the single sole. In 1929 Ruggiero accomplished what Kelly had done and in substantially the same way by cutting the narrow strip, called by him a welt, from the margin of the single sole, and by attaching the upper first to the welt and then cementing the sole over the welt and the exposed part of the upper. The welt was held in place on the last by an anchor piece of fabric during the process of constructing the shoe. The method of cutting the welt is not described, 'this part of the procedure', he says, 'being a mechanical detail which forms no part of the invention.'

The Lentz, Nevins and Scott patents comprise leather cutting and splitting machines which, it is claimed, by minor variations and adaptation requiring only mechanical skill, can be made to split a sole blank according to the specifications of the Maccarone patent. They are early patents covering the period from 1884 to 1892. They are machine or tool patents, and the District Court does not refer to them in its findings. The Beach, Engel and Caggiano patents are cited as examples of machines for skiving leather and by use of templates or 'pattern pieces' producing layers for heels and other parts of the shoe of different forms and thickness.

Comparison with the prior art makes clear the fact that Sbicca and Maccarone did not discover the art of splitting leather nor did they discover the advantages of the skeleton insole and its complementary outsole. Splitting machines were old in the art and Harmer revealed the skeleton insole with a complementary outsole. Kelly and Ruggiero taught a method of making a single sole shoe without turning the shoe inside out during the process of manufacture. And the use of the die and matrix together with templates in splitting leather in varying forms and of uneven thickness was in practice prior to 1931.

When the state of the prior art is given full consideration, however, it can not be denied that the...

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