I.T.S. Rubber Co. v. United States Rubber Co., 1993.

• Decision Date: 15 February 1922
• Docket Number: 1993.
• Citation: 278 F. 975
• Parties: I. T. S. RUBBER CO. v. UNITED STATES RUBBER CO.
• Court: U.S. District Court — Northern District of Illinois

278 F. 975

I. T. S. RUBBER CO. v. UNITED STATES RUBBER CO.

No. 1993.

United States District Court, N.D. Illinois, Eastern Division.

February 15, 1922

Charles A. Brown, of Chicago, Ill., and F. O. Richey, of Elyria Ohio, for plaintiff.

Charles S. Jones and Livingston Gifford, both of New York City, and George A. Chritton, of Chicago, Ill., for defendant.

LUSE District Judge.

Suit in equity by the I. T. S. Rubber Company against the United States Rubber Company in which the complainant charges the defendant with infringement of the Tufford reissue patent No. 14,049,, and particularly claims 5 to 9, both inclusive of said patent. This patent has been so often in litigation that it is not deemed necessary here to enter into a description of the plaintiff's rubber heel lift already adequately described in the opinion of Judge Westenhaver in the District Court for the Eastern Division of the Northern District of Ohio, and reported in Fetzer & Spies Leather Co. v. I. T. S. Rubber Co. 260 F. 939, 171 C.C.A. 581. Other cases in which various phases of this patent have been dealt with up to date are Fetzer & Spies Leather Co. v. I. T. S. Rubber Co., 260 F. 939, 171 C.C.A. 581; United States Rubber Co. v. I. T. S. Rubber Co. (the same parties as in the instant case) 260 F. 947, 171 C.C.A. 589; Elyria National Rubber Co. v. I. T. S. Rubber Co. (C.C.A.) 263 F. 979; I. T. S. Rubber Co. v. United Lace & Braid Co. (D.C.) 266 F. 375; Tee Pee Rubber Co. v. I. T. S. Rubber Co. (C.C.A.) 268 F. 250; Hill Rubber Co. v. I. T. S. Rubber Co. (C.C.A.) 269 F. 270.

As indicated above, the patent in suit here has been in litigation between these parties before. In January, 1919, the I. T. S. Rubber Company filed a bill in the United States District Court for the Northern District of Ohio, Eastern Division, against the United States Rubber Company, which latter company is a New Jersey corporation and maintains no place of business in the Eastern Division of the Northern District of Ohio, but consented for the purpose of that suit to submit itself to the jurisdiction of that court. On February 14, 1919, a preliminary injunction was granted against the defendant in that court, and the defendant appealed to the Circuit Court of Appeals for the Sixth Circuit, resulting in the affirmance by that court of the injunctional order on October 7, 1919, after which its mandate was returned to the District Court, and on November 12, 1919, the parties having adjusted their differences as to damages and profits, a final decree was entered in the District Court of Ohio in favor of the plaintiff and against the defendant.

To describe in a general way, for the purposes of this opinion, the defendant's rubber heel lift involved in the former suit, it is perhaps sufficient to say that its upper side edges were constructed in the same plane as the rear and upper breast corners of the lift, and that its attaching face was concave in the general sense of the term, with its lowest area centrally disposed. The upper attaching surface of the defendant's heel, as then made, from the center thereof to the breast was on an ascending line. In that case the defendant contested the validity of the plaintiff's patent and claimed noninfringement, partially at least upon the grounds that the upper side edges of its heel as then manufactured was in the same plane as the rear edge and the upper breast corners, while the side edges of plaintiff's patented lift were in the form of a depending arc, and that the line rising from the center of the attaching face of its lift toward and to the breast was straight rather than curved as in the plaintiff's lift. Defendant was unsuccessful in both of these contentions. In March, 1920, the defendant placed upon the market a new rubber heel lift (now involved in this suit), which it claims to have devised in good faith, following the interpretation of plaintiff's patent found in the opinion of the Court of Appeals in the action there between the parties here, as supplemented and explained by the opinion of that court in the Tee Pee Case (C.C.A.) 268 F. 250, and which may be said to be characterized by the fact that the central longitudinal line along the attaching face of the lift is in the form of an arc of a true circle, the lowest point of which is at the center of the breast edge.

By way of further description of the defendant's heel lift, it being understood, however, that the figures now given have not exact arithmetical accuracy, it may be stated that the defendant makes heel lifts varying in size, the largest thereof being approximately 3 5/16 inches in length along the attaching face, while the smallest thereof is approximately 1 1/4 inches in length. In the largest of defendant's heels the low spot at the center of the breast is 17/64 inches lower than the upper rear edge while in the smallest heels there is 3/32 of an inch difference between those two points; such measurements being taken when the lift is held with the plane of the rear edge, and breast corners in a horizontal position. The breast end of the upper longitudinal center line of the attaching face is approximately 1/15 of an inch below the center of such line in the largest of defendant's heels and 1/54 of an inch below the center of such line in the smallest. On the largest of defendant's heels the central longitudinal line of the attaching face is the arc of a curve with a radius of 20 1/2 inches, while on the smallest lift such line is on the arc of a curve having a radius of 8 37/64 inches. It should be said further that, in the defendant's heels, a lateral line drawn between the upper side edges of the lift in such position thereon as to pass directly over the point of junction between the central longitudinal line with the breast, such lateral line will under the evidence, pass over the low point on each and all of the longitudinal lines of the attaching surface. In other words, such parts of the attaching face of the lift as lie forward of such line so drawn are, theoretically at least, higher than at the point where they intersect the lateral line so drawn. By way of comparison it may be stated here with reference to the Tee Pee heel, which must of necessity be referred to later on in this opinion, that in the size corresponding to the largest of the plaintiff's heels the upper central longitudinal line of the attaching surface is on an arc of a circle with a radius approximately 8 1/4 inches which continues to a point 7/16 inches back of the breast edge, at which point such center line departs from the arc of a circle and extends on a straight line and at a tangent to said arc to the center of the breast, with the result that the difference in height between the low point on the breast edge of the Tee Pee heel and the top of the rear edge is approximately 15/32 of an inch and the breast end of such longitudinal line is approximately 1/8 inch lower than the center point thereon.

Plaintiff applied to the District Court of Ohio in contempt proceedings, which application was denied by the judge, who in his memorandum in that regard said in effect that the question of whether the defendant's new lift infringed or not should not be determined in a contempt proceeding but only upon a full hearing, either by filing an original bill in a court of competent jurisdiction or by the filing of an ancillary supplemental bill in the Ohio court. The defendant, it seems, maintains an established place of business in Chicago in this district and marketed the new lift there, and plaintiff has instituted this suit as a new and independent one, seeking to establish that the new lift of the defendant is an infringement and the usual relief by injunction and for an accounting.

Before any evidence was introduced the defendant moved to dismiss this suit for lack of jurisdiction in this court, predicating the motion upon the grounds: (1) Because the Act of March 3, 1897 (29 Stat.

695, c. 395, Comp. Stats. Sec. 1030; Judicial Code, Sec. 48), does not permit two suits to be brought in two districts under the same patent, against the same defendant; (2) because under said act it must be established that the defendant has committed acts of infringement within this district and that upon the pleadings and the exhibits attached to plaintiff's interrogatories it is evident that no acts of infringement within this district are properly charged; (3) because plaintiff obtained defendant's consent to the jurisdiction over it for the purposes of the patent here in suit in the District Court for the Northern District of Ohio, Eastern Division. Defendant also moved to dismiss the bill on the ground that plaintiff is estopped by the res adjudicata effect of the final decree against the defendant in the former suit between these parties, sustaining said patent in the Northern District of Ohio, Eastern Division, from contending that the Nerger form of heel lift infringes, being the form of heel alleged to infringe and attached to plaintiff's interrogatories herein. Ruling upon such motions was reserved, and defendant presses for decision. I do not deem it necessary to consider whether the jurisdictional question attempted to be raised by the defendant is one of a nature which can be, or whether it has been, waived, as upon the state of the record disclosed I am unable to see wherein there is any lack of essentials to jurisdiction in this court.

Under section 48 of the Judicial Code, District Courts are given jurisdiction in suits brought for the infringement of letters patent--

'in the district of which the defendant is an inhabitant, or in any district in which the defendant * * * shall have committed acts of infringement and have a regular and established place of business.'

That the...