A.G. Spalding & Bros. v. John Wanamaker, New York

• Decision Date: 13 February 1919
• Docket Number: 164.,163
• Citation: 256 F. 530
• Parties: A.G. SPALDING & BROS. v. JOHN WANAMAKER, NEW YORK. SAME v. SUCCESSORS OF SAMUEL BUCKLEY & CO. OF LONDON AND NEW YORK.
• Court: U.S. Court of Appeals — Second Circuit

256 F. 530

A.G. SPALDING & BROS. v. JOHN WANAMAKER, NEW YORK.

SAME v. SUCCESSORS OF SAMUEL BUCKLEY & CO. OF LONDON AND NEW YORK.

Nos. 163, 164.

United States Court of Appeals, Second Circuit.

February 13, 1919

5. A golf ball with spherical surface pitted with isolated cavities with large surface area relatively to their depth substantially circular in plan with steep sides at the peripheries only of said cavities, and dished or concave bottoms, and of a diameter not less than nine-hundredths nor greater than fifteen-hundredths of an inch, and of a depth not exceeding fourteen-thousandths of an inch.'

The defendants made balls pitted with spherical cavities similar in proportion and size to the plaintiff's. The issue in the case was whether these conformed to the words, 'with steep sides at the peripheries only of said cavities,' which are contained in all the claims in suit. The section of the defendants' pits was the are of a circle, and the angle subtended varied between 28 degrees for the defendant Wanamaker's ball, and 35 degrees for the defendant Buckley's. The tangents to the curve of the pit at the lip were therefore, in the first case, of 152 degrees, and in the second, of 145 degrees. The District Court found that pits of this character did not answer the element of the claims above mentioned and dismissed the bills for noninfringement.

These are appeals from decrees of the District Court for the Southern District of New York (Hough, J., presiding) dismissing the bills, with costs. The suits were based upon claims 1, 2, 4, and 5 of Patent No. 878,254, issued on February 4, 1908, to William Taylor of Leicester, England. In each case the plaintiff sues as assignee of Taylor, and some question was made upon the hearing of the sufficiency of the evidence of assignment; but this matter is not considered in the following opinion.

The patent recites that the invention relates to golf balls, and has for its principal object to improve the flight of the ball by giving it 'a sustained hanging flight' with 'a flat trajectory with a slight rising tendency particularly towards the end of the flight' (page 1 lines 12-15). It acknowledges that in the past it was common to mark the surface of golf balls with grooves of even width, intersecting each other and leaving between them isolated polygonal portions; that another common marking consisted of separate prominences upon the surface, resembling the surface of a blackberry, and named for this reason the 'bramble' pattern. The patent then proceeds as follows (page 1, lines 30-47):

'The character of the marking which constitutes the present invention may be described in general terms as an inverted bramble pattern, and consists of isolated cavities the essential features of which are that they must be substantially circular in plan and substantially evenly distributed. They must be shallow, and their sides, particularly at the lip of the cavity, must be steep. Steepness of the cavity walls is essential to the hanging flight, but excessive depth besides promoting the collection of dirt, is detrimental to length of flight by offering great resistance to the passage of the air. Consequently the cavity must be shallow and the steepness of its walls confined to the immediate neighborhood of the lip.'

Detailed drawings set forth sections of the proposed pits, and the specification states the limits of their proper diameter and that in no case should the depth exceed one-eighth of that diameter. Several forms of section are shown, all with steep sides at the lips of the cavity; the pits differ in section, in some cases being flat at the bottom, in some elliptical, and in some the spherical surface of the ball proper, adjacent to the lip, slopes inwardly toward the lip. This last feature is not in issue in the suit at bar.

The claims in issue are as follows: William A. Redding, of New York City, for appellants.

Samuel Owen Edmonds, of New York City, for appellee John Wanamaker, New York.

W. Hastings Swenarton, of New York City, for appellee Successors of Samuel Buckley & Co., of London and New York.

Before ROGERS and MANTON, Circuit Judges, and LEARNED HAND, District judge.

LEARNED HAND, District Judge (after stating the facts as above).

We think this case turns upon the question of infringement, as did the District Judge, and we have no disposition to question the validity of the patent giving it any scope which the reasonable intent of the claims can carry. We therefore consider simply the meaning of that language, present in all the claims, 'with steep sides at the peripheries only of said cavities. ' As to this the parties differ-- the defendants insisting that it positively requires steep sides; the plaintiff, that it need mean no more than that the relatively steepest part of the sides must be at the lips, or, as the Patent Office phrased it, 'peripheries.' If the plaintiff's contention be correct, any angle between the tangents at the lips would answer the claims provided it were less than any angle between similar tangents drawn elsewhere. It would follow that the claim only meant that the pit should not be made up of two convex sections. In short, the expression wold mean no more than that the pit must be concave in section.

Now it is perfectly clear that the patent did not mean this at all. The patentee supposed that he had discovered an invention dependent upon the two elements: First, that the pit should have steep sides; and, second, that it should be shallow. About the first he is explicit, for he says (page 1, lines...