ITS Rubber Co. v. Essex Rubber Co., 1642.

• Decision Date: 23 October 1924
• Docket Number: No. 1642.,1642.
• Citation: 1 F.2d 780
• Parties: I. T. S. RUBBER CO. v. ESSEX RUBBER CO.
• Court: U.S. Court of Appeals — First Circuit

1 F.2d 780 (1924)

I. T. S. RUBBER CO. v. ESSEX RUBBER CO.

No. 1642.

Circuit Court of Appeals, First Circuit.

October 23, 1924.

F. O. Richey, of Cleveland, Ohio, and Charles A. Brown, of Chicago, Ill., for appellant.

Lucius E. Varney, of New York City (Frederick L. Emery, of Boston, Mass., on the brief), for appellee.

Before JOHNSON, Circuit Judge, and MORRIS and LOWELL, District Judges.

JOHNSON, Circuit Judge.

This is a patent infringement suit, which has been before this court once before (281 F. 5) on a motion to dismiss, which had been granted by the District Court for Massachusetts. Upon the record then before us we reversed the decree of the District Court, and the case has since been heard upon its merits. The District Court has decided that, upon its merits, the bill of the plaintiff should be dismissed, and from that decree an appeal has been taken.

The bill charges infringement of reissue letters patent, No. 14,049, applied for June 22, 1915, and issued January 11, 1916, to the plaintiff, as assignee from John G. Tufford, to whom the original patent, No. 1,110,730, was issued September 15, 1914, on an application filed July 21, 1912.

The patent covers a cushion lift for a shoe heel. The original patent contained four claims, all of which appear in the reissue patent, with six additional claims. Infringement is charged of five of these additional claims, which are as follows:

"5. A heel lift of substantially nonmetallic resilient material having its body portion of concavo-convex form on every line of cross section, the concave upper face lying entirely below a plane passing through the rear upper edge and the breast corners of the lift.

"6. A heel lift of substantially resilient material having its body portion of concavo-convex form on every line of cross section, the concave upper face lying entirely below a plane passing through the rear upper edge and the breast corners of the lift, said lift being provided with nail-receiving openings located near the center thereof.

"7. A heel lift of substantially resilient material comprising a body portion, the attaching face of which is concave and the tread face of which is convex on every line of cross section and normally held in such form by its own inherent resiliency, the concave attaching face lying entirely below a plane passing through the rear upper edge and the breast corners of the lift, whereby to cause the entire margin of said lift to exert a uniform pressure on the heel of a shoe when said lift is positioned on the heel and the convex tread face thereof depressed to flatten said lift.

"8. A heel lift of resilient material comprising a body portion of uniform thickness throughout its entire area and of concavo-convex form on every line of cross section, the concave upper face of the lift lying entirely below a plane passing through the upper edge and the breast corners of said lift.

"9. A heel lift of resilient material comprising a body portion, the attaching face of which is concave and the tread face of which is convex, the concave face of the lift being unbroken and lying entirely below a plane passing through the rear upper edge and the breast corners of the lift, whereby when the convex tread face is depressed to flatten said lift a suction will be created between the lift and the heel to hold the attaching face of the lift throughout its entire extent in contact with the exposed face of the heel."

Defendant in its answer admits that the reissue letters patent are valid, but denies infringement, averring that by reason of the rejection of claims in the application for the original patent, and for the reissue patent, upon reference to certain prior patents and the acquiescence of the applicant in said rejections, the plaintiff admitted that the reissue patent "did not cover or include every form of resilient heel lift which was `concavo-convex on every line of cross section,'" and that, in addition to the plaintiff's heel being concavo-convex on every line of cross section, the reissue patent contains the further limitation without which the Patent Office refused to allow the claims in issue, viz. that the concave upper face lies "entirely below a plane passing through the rear upper edge and the breast corners of the lift."

The alleged infringing heels of the defendant are shown by two exhibits marked Plaintiff's Exhibits 1 and 2. In those marked Plaintiff's Exhibit 1 the attaching surface is made up of a flat, oval surface from which a bevel portion rises to the side and rear edges, and nearly to the breast edge; so that its rear edge and side edges lie within the same plane, making what has been called a "saucer-shaped heel."

Exhibit No. 2 is of the same general form, except that the center of its breast edge is lower than in Exhibit No. 1, and rises but little above the surface of the central oval plane, making what has been characterized as a "scoop-shaped heel."

In substance defendant's contention is that the letters of the reissue patent cover only a heel concavo-convex upon every line of cross section, and which, in addition, has its entire concave surface below a plane passing through its breast corners and rear upper edge, that the sides of the defendant's heels are straight, and lie in the same plane as the rear upper edge and breast corners, and that this distinguishes them from the heel of the plaintiff.

When the case was heard before, we said in our opinion (281 F. 5, 9):

"If it should appear that the raised side edges in the defendant's heel do not cause it to function in a different way from the plaintiff's, but simply cause its rear edge and breast corners to function less perfectly (a matter of degree), we think it should be held to infringe.

"As the defendant's heel may or may not infringe the claims in issue, depending upon whether or not it functions in the way or manner heels constructed in accordance with the requirements of the claims in issue function, and as this question cannot reasonably be determined on a mere inspection of the heels thus constructed, we think the case should be remanded for trial, unless the defendant is estopped to deny the question of infringement, due to the pro confesso decrees obtained against the dealers in the Sixth Circuit."

We did not then have the record of the proceedings in the Patent Office before us; but at the hearing upon the merits in the District Court the file wrapper was introduced in evidence. From that it clearly appears that upon the application for the original patent the applicant was denied claims which cover a heel having its upper side edges, breast corners, and rear edge in the same plane, and that he acquiesced in the rejection of such claims.

The applicant also sought to obtain the allowance of claims covering a heel having a concave attaching face and a convex tread face, and these were denied, and their denial acquiesced in by the applicant.

The four claims which were finally allowed upon the original application related...