Shuter v. Davis

• Decision Date: 25 May 1883
• Citation: 16 F. 564
• Parties: SHUTER and another v. DAVIS and others.
• Court: U.S. District Court — Southern District of New York

16 F. 564

SHUTER and another v. DAVIS and others.

United States Circuit Court, S.D. New York.

May 25, 1883

Henry McCloskey and J. Van Santvord, for complainants.

Geo. H Fletcher, for defendants.

WALLACE J.

The proofs satisfactorily establish infringement by defendants of complainants' patent. The defense that Mark Davis was the original and first inventor of the patented improvement, and that complainants obtained the patent in fraud of his rights although supported by somewhat impressive probabilities and the testimony of several witnesses, is met by strong opposing proofs on the part of the complainants. Under the circumstances, the presumption arising from the grant of the patent to the complainants is not sufficiently overthrown and must prevail. But it also appears that the defendants were parties in interest to the interference proceedings before the patent-office between the complainants and Mark Davis; that proceeding having been set on foot by Mark Davis for the benefit of the defendants, to protect them from the complainants' patent, and under an agreement between him and the defendants by which the defendants undertook to pay, and pursuant to which they did pay, the expenses of the proceeding. The question of priority having been determined in favor of the complainants in that proceeding, it is res adjudicata as between the parties to it. Hanford v. Wescott, 16 O.G. 1181; Greenwood v. Bracher, 1 F. 857; Peck v. Lindsay, 2 F. 688; Holliday v. Pickhardt, 12 F. 147.

The defense of want of novelty does not come with very good grace from parties who endeavored to procure a patent to be issued to Mark Davis for the same invention, but is undoubtedly open to the defendants. The complainants' invention relates to tips for the insoles of boots and shoes, and their patent is for the tips as an improved article of manufacture. Their tip is formed of muslin or other textile material, stiffened with shellac, and pressed into the required shape by headed dies. Prior to their improvement, tips had been made of leather and usually in one piece with the insole, the tip being beveled to a fine edge. This mode of producing the tip required considerable time and skill, and was more expensive than was desirable, and the object of the patentees was to produce a less expensive substitute. The problem was to produce a tip sufficiently thin to require no beveling, but at the same time sufficiently rigid...