Grosjean v. Panther-Panco Rubber Co.

• Decision Date: 31 January 1939
• Docket Number: No. 4454.,4454.
• Citation: 26 F. Supp. 344
• Parties: GROSJEAN et al. v. PANTHER-PANCO RUBBER CO., Inc.
• Court: U.S. District Court — District of Massachusetts

26 F. Supp. 344

GROSJEAN et al. v. PANTHER-PANCO RUBBER CO., Inc.

No. 4454.

District Court, D. Massachusetts.

January 31, 1939.

A. L. Ely, of Akron, Ohio, and Edgar H. Kent, Robert L. Thompson and Roberts, Cushman & Woodberry, all of Boston, Mass., for plaintiffs.

Melvin R. Jenney and Fish, Hildreth, Cary & Jenney, all of Boston, Mass., for defendant.

McLELLAN, District Judge.

This suit involves alleged infringement of four patents, United States Patents Nos. 1,344,503, 1,344,504, 1,650,511 and 1,687,441, all issued to James E. Grosjean. It involves, too, alleged infringement of United States Trade Mark Registrations Nos. 149,142 and 285,219. Unfair competition is also charged. In its answer, the defendant asserts non-infringement and invalidity of the various patents in suit. It also avers non-infringement of the plaintiffs' trade marks and denies unfair competition.

The individual plaintiffs named originally included James E. Grosjean of Lima, Ohio, the patentee of all the patents in suit, Pearl G. Maire and Fred W. Cook, both of Lima, Ohio, alleged owners of fractional parts of the patents by assignment, and the Lima Cord Sole & Heel Company, an Ohio corporation having its office and principal place of business at Lima, Ohio, exclusive licensee under the patents in suit. Title to the various patents as alleged has been admitted by stipulation of counsel. Nannie A. Grosjean and Pearl G. Maire were substituted upon motion as executrices of James E. Grosjean, who died after suit brought. The defendant is a Massachusetts corporation, having a principal place of business in Chelsea, Massachusetts.

Patents Nos. 1,344,503 and 1,344,504

These two patents were granted together on June 22, 1920, upon applications filed May 15, 1918. No. 1,344,503 is for a method of manufacturing composite soles for boots and shoes. No. 1,344,504 covers a sole manufactured according to the method disclosed in the first patent.

In the manufacture of a sole according to these patents, a relatively thin and substantially flat base is first produced. The base conforms in outline to the proposed finished sole. It is made of some material which admits of vulcanization, preferably canvas thoroughly impregnated with rubber. A tread portion is produced separately from the base, composed principally of a textile material whose threads are presented endwise to the tread surface. This material is thoroughly impregnated with a vulcanizable compound. This tread is initially secured to the base by means of some adhesive material, preferably suitable cement, in the position which it is eventually to occupy in the completed sole. A marginal supporting strip of vulcanizable material, preferably rubber, is then added. This strip, also, is secured to the projecting portion of the base by cement or other adhesive material. The sole is then vulcanized, the pressure employed being preferably exceptionally heavy, so that the tread portion and the marginal supporting strip are both firmly united to the base and to each other.

Claims 1 and 2 of Patent No. 1,344,503 are in suit. These claims read:

"1. The method of manufacturing composite soles for boots and shoes which consists in producing a substantially flat, relatively thin, flexible base, disposing thereon an originally separate tread portion having components of textile material, the ends of whose threads are presented to the tread surface, applying to said base and tread portion a marginal strip of vulcanizable material within which said tread portion is arranged and vulcanizing said base, tread portion and marginal strip under heavy pressure in their assembled relation whereby said tread portion and strip are bonded to one another and to said base.

"2. The method of manufacturing composite soles for boots or shoes which consists in producing a substantially flat, relatively thin, flexible base, disposing thereon an originally separate tread portion of less area and having components of textile material, the ends of whose threads are presented to the tread surface, and arranging said tread portion projecting therefrom, applying to the marginal portion of said base a strip of vulcanizable material within which said tread portion is arranged, and vulcanizing said base, tread portion and marginal strip under heavy pressure in their assembled relation whereby said tread portion and strip are bonded to one another and to said base."

As heretofore stated, Patent No. 1,344,504 is for a sole produced as described in the method patent. Claim 1, which is the only one in suit, will serve to illustrate the difference between the two patents. It reads:

"1. A sole for boots or shoes having a substantially flat, relatively thin and flexible base, a tread portion secured to the under side of said base and composed of textile fabric and vulcanizable material, both presented to the tread surface, said base being of greater area than the tread portion and the latter being arranged whereby said base has a marginal portion projecting beyond the tread portion, and a supporting strip of vulcanizable material laid on said marginal portion in the plane of said tread portion, the sole being vulcanized whereby the components of the tread portion are permanently bonded to one another and the tread and the supporting strip are bonded to one another and to the base, the union of the supporting strip and the vulcanizable material of the tread portion being homogeneous."

To show lack of novelty or invention as to these patents, the defendant relies principally upon United States Patent No. 695,298 to Foster, and United States Patent No. 1,249,292 to Montgomery.

In the Foster patent, a tread for a shoe is shown in which plugs consisting of rolls of fabric impregnated with rubber are inserted in holes cut from a rubber sole in such a way that the ends of the fabric are presented to the tread, and thereafter vulcanized with the rest of the sole so as to become a part thereof. The plugs preferably do not extend all the way through the sole, thus leaving some rubber between the inside end of the plugs and the inside of the sole.

The Montgomery patent, which shows a tread and the process for making it, was issued December 4, 1917, on an application filed March 13, 1917. James E. Grosjean was assignee of one-half interest therein. The tread as shown is made from fabric taken from old tires, and the patent deals primarily with a method of treating this fabric to form a tread in which the ends of the threads are presented to the surface. The use of such a tread in a shoe sole is also shown in the specification. A rubber sole is shown recessed to receive the tread insert, which forms the entire front portion of the sole, except for a margin of rubber, and the whole is thereafter vulcanized. It was argued that the sole shown in Montgomery was formed by cutting or dieing a hole clear through the unvulcanized sole, into which the tread portion was inserted, thereby intimating that there would be no rubber or other backing to the tread element as shown in Montgomery, and that it remained for Grosjean to supply this obviously desirable feature. From an examination of Figure 2 of the Montgomery patent, as well as from the use therein of the word "recessed", it is clear that this argument is without foundation, and I so find.

The defendant makes a tap, or half sole, by dieing out a piece of unvulcanized rubber to form a margin for the completed tap. Within this margin, a tread composed of rubber impregnated cords, the ends of which are presented to the surface, is inserted. A thin flat piece of unvulcanized rubber, of the same material as the margin, is placed against the back of both insert and margin, and all three pieces are vulcanized together. Since the margin and the backing are of the same material, they are joined together by vulcanization and become virtually indistinguishable. The finished product thus resembles Montgomery more closely than Grosjean, since in the latter rubber impregnated canvas serves as the backing material.

1. Claims 1 and 2 of Patent No. 1,344,503 and Claim 1 of Patent No. 1,344,504 are invalid for want of invention. All three elements of the alleged invention are to be found in the completed Montgomery sole. There is the tread portion, of fabric, the ends of which are presented to the surface. There is a margin of rubber, and a backing of rubber, all joined together by vulcanization. That Grosjean makes the margin strip separately from the backing is not a sufficient change to warrant a finding of invention. Nor is the fact that Grosjean uses rubber impregnated canvas instead of just rubber for a backing sufficient to warrant such a finding. That such a backing would be stronger would, in my opinion, be evident to any skilled rubber worker, and substitution of a superior material at one step does not ordinarily constitute invention. See Walker on Patents, Section 29, and cases there cited.

2. In view of the invalidity of these patents, it may not be necessary to pass directly on the question of infringement. It is, however, noteworthy, as pointed out above, that if Grosjean is distinguishable from Montgomery by his use of a rubber impregnated piece of canvas, instead of just rubber, then the defendant employs the latter construction and does not infringe.

Patent No. 1,687,441

This patent, granted October 9, 1928, to James E. Grosjean upon an application filed June 26, 1924, describes a tread material for shoes and a method for making it. The patent is directed to soles similar to those considered in the first two patents. In making the tread described in those patents and in another patent, Grosjean United States Patent No. 1,297,834, not now in suit, but which is later referred to, the plaintiff Lima Company purchased a cord tire fabric, in sheet form, previously coated with "friction", which means a first coat of rubber. This material was relatively expensive. It is the object of the...