Freeman v. Altvater

• Decision Date: 24 July 1933
• Docket Number: No. 9602.,9602.
• Citation: 66 F.2d 506
• Parties: FREEMAN et al. v. ALTVATER et al.
• Court: U.S. Court of Appeals — Eighth Circuit

66 F.2d 506 (1933)

FREEMAN et al. v. ALTVATER et al.

No. 9602.

Circuit Court of Appeals, Eighth Circuit.

July 24, 1933.

Marston Allen, of Cincinnati, Ohio (John H. Bruninga, of St. Louis, Mo., on the brief), for appellants.

Lawrence C. Kingsland, of St. Louis, Mo. (John D. Rippey and John H. Cassidy, both of St. Louis, Mo., on the brief), for appellees.

Before KENYON, GARDNER, and SANBORN, Circuit Judges.

SANBORN, Circuit Judge.

The appellants were plaintiffs in the court below, and the appellees defendants, and they will be so referred to in this opinion.

This suit is to compel specific performance of a license agreement under United States letters patent No. 1,681,033, issued to Benjamin W. Freeman August 14, 1928, upon an application filed December 3, 1923, for a cutout machine for shoe uppers; to enjoin acts alleged to be in violation of that agreement; and for an accounting.

Briefly, the situation out of which the controversy arises is this: Both parties are and were designers, manufacturers, and sellers of shoe machinery. In 1922 and 1923 shoes with cut-out designs in the uppers came into vogue. There was consequently a demand for an improved method for making such designs. Shoe machines for making cut-outs in flat work were known, but a closed or completed shoe upper is not flat. Freeman in 1923 produced a machine to make cut-outs in such uppers. It was an adaptation of a Knight type press, or flat bed machine, well known in the art. The Freeman machine met with favor, and the defendants copied it in order to meet the demands of their customers. After Freeman had been granted his patent, the controversy which arose between him and the defendants over the sale by them of similar machines was settled by the license agreement which is the basis of this suit and which was entered into on January 1, 1929, between Freeman, as licensor, and the defendants, as licensees. Under this agreement the licensees were granted the right to make and sell, within a limited territory, upon payment of royalties, parts known as dies, anvils, and masks, of the patented machine, and were permitted to repair, but not to rebuild, the machines they had already sold. The licensees agreed not to sell any machines falling within the scope of the patent, not to contest its novelty or validity nor the title of the patentee, and "to co-operate in the protection of the patent" and "in the development of the business thereof and thereunder." Within a few days after the execution of this agreement, the defendants placed upon the market a cut-out machine, known as the "Model T", designed by the defendant Altvater, president of the defendant company, for which he was granted United States letters patent No. 1,807,952 on June 2, 1931, upon an application filed January 25, 1929.

The plaintiffs in bringing this suit charged that the Model T infringed the Freeman patent; that, moreover, its sale was in violation of the co-operation clause of the license agreement; and that the defendants had rebuilt machines which under that agreement they might only repair. The plaintiffs asked that the license agreement be specifically enforced, its violation enjoined, and the damages caused by its breach ascertained. The defendants denied that they had in any way violated the terms of the license. The suit was tried, and the court below, being of the opinion that the defendants' Model T machine did not infringe the Freeman patent, that the license agreement did not prohibit the defendants from marketing a noninfringing cutout machine, and that no machines had been rebuilt by the defendants in violation of the license, filed findings and a decree in their favor.

The finding of the lower court that the defendants had not rebuilt machines is, we think, justified by the evidence and should not be disturbed.

It may be that the parties to the license agreement intended that the licensees should be prohibited from making or selling even any noninfringing cut-out machines, as the plaintiffs assert and as the defendants deny; but the court below thought that the written agreement failed adequately to express any such intention. In view of our conclusion upon the question of infringement, we find it unnecessary to review this issue.

The important question in this case is whether the Model T machine infringes the Freeman patent. The validity of the patent is not in question, since the defendants, being licensees, are estopped to assert its invalidity; but their contention is that the claims of the patent, as limited by the prior art, do not cover their cut-out machine. They say that they are required to accord to the patent only such novelty as is sufficient to sustain it, and that the differences between the Freeman construction and their construction are such as to avoid infringement.

In Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U. S. 342, 351, 45 S. Ct. 117, 120, 69 L. Ed. 316, the Supreme Court said with respect to such cases as this: "Of course, the state of the art cannot be used to destroy the patent and defeat the grant, because the assignor is estopped to do this. But the state of the art may be used to construe and narrow the claims of the patent, conceding their validity. The distinction may be a nice one but seems to be workable."

In Noonan v. Chester Park Athletic Club Co. (C. C. A. 6) 99 F. 90, 91, Judge Lurton, afterwards Mr. Justice Lurton, said: "The court will not assume against an assignor, and in favor of his assignee, anything more than that the invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger." This language is quoted with approval in the Westinghouse Case. See, also, Smith v. Ridgely (C. C. A. 6) 103 F. 875, 877; Bradford Belting Co. v. Kisinger-Ison Co. (C. C. A. 6) 113 F. 811, 815; Schiebel Toy & Novelty Co. v. Clark (C. C. A. 6) 217 F. 760, 764, certiorari denied 235 U. S. 707, 35 S. Ct. 283, 59 L. Ed. 434; West v. Premier Register Table Co. (C. C. A. 1) 27 F.(2d) 653, 654; Moon-Hopkins B. Mach. Co. v. Dalton Adding Mach. Co. (C. C. A. 8) 236 F. 936, 937; Leather G. & D. Co. v. Christopherson (C. C. A. 9) 182 F. 817, 822; Robeson Process Co. v. Robeson (D. C.) 293 F. 70, 74, affirmed (C. C. A. 3) 1 F.(2d) 1022.

However, in litigation such as this between a licensee and his licensor or between assignor and assignee, there is a tendency on the part of the courts to give to the patent a liberal rather than a narrow construction.

In Leader Plow Co. v. Bridgewater Plow Co. et al. (C. C. A. 4) 237 F. 376, 377, the court said: "The patents set up by the plaintiff being nothing more than improvements on the prior art, the general rule on the subject would require that they be given a narrow construction. Singer Mfg. Co. v. Cramer, 192 U. S. 265, 24 S. Ct. 291, 48 L. Ed. 437. But this general rule is elastic enough to allow the application of the dominant equitable rule that as between the assignor and assignee the construction of the patent must be broad and liberal enough to give full value to the patent assigned, and shut out the assignor from every structure within the fair meaning of the claim. When Thomas assigned the Hanger and Thomas and Hanger patents, he asserted them to be valid, and he is estopped to deny their validity. He was not estopped, however, from showing the limits of the assigned patents by evidence of the prior art, or any other relevant fact. Martin, etc., Co. v. Martin, 67 F. 786, 14 C. C. A. 642; Automatic S. Co. v. Monitor Mfg. Co. (C. C.) 180 F. 983; Noonan v. Chester Park Co., 99 F. 90, 39 C. C. A. 426; Smith v. Ridgely, 103 F. 875, 43 C. C. A. 365; Rollman v. Universal H. Works (D. C.) 207 F. 97; Standard Plunger E. Co. v. Stokes, 212 F. 941, 129 C. C. A. 461. But on an issue of infringement between assignor and assignee the courts will give a liberal rather than a narrow construction to the patent assigned, if necessary to preserve its value." See, also, Frick Co. v. Lindsay (C. C. A. 4) 27 F.(2d) 59, 63; Universal G. & L. Co. v. Haggerty (D. C.) 21 F.(2d) 544, 546; United States v. Harvey Steel Co., 196 U. S. 310, 25 S. Ct. 240, 49 L. Ed. 492; Piano Motors Corp. v. Motor Player Corp. (C. C. A. 3) 282 F. 435, 437; U. S. Frumentum Co. v. Lauhoff (C. C. A. 6) 216 F. 610, 613; Schiebel Toy & Novelty Co. v. Clark (C. C. A. 6), supra.

We think that it is safe to say that when a licensee, as in this case, seeks to avoid the burdens of his license by endeavoring to make a noninfringing machine, the court will give to the claims of the patent in suit as liberal an interpretation as can be justified.

It is apparent that Freeman was endeavoring to provide an efficient and economical way of performing a cut-out operation on closed and lined shoe uppers. Almost five years elapsed between his initial application for the patent and its issuance. In that time various rejections and substitutions of claims took place and several interference proceedings were had and finally settled in his favor. He was granted ninety-four claims. Eight of the more general ones are relied upon in this suit. Five of these relate to the machine as a whole and three to the parts known as the mask and die. Claim 87 appears to be typical of the former. It reads: "87. In a die press, the combination with a bed, a pressing member and a cutting-out tool supported other than by the pressing member, of a work supporting member, on said bed, adapted to fit inside of a made shoe upper provided with a work supporting surface, elevated above the bed, upon which the portion of the upper to be operated upon is positioned flatwise, and provided with a depression below the elevated surface in which another portion of the upper may be positioned by at least one hand holding the work on the work support."

The essential...