Joyce, Inc. v. Fern Shoe Co.

• Decision Date: 11 April 1940
• Docket Number: No. 661-M.,661-M.
• Citation: 32 F. Supp. 401
• Court: U.S. District Court — Southern District of California
• Parties: JOYCE, Inc., v. FERN SHOE CO. et al.

32 F. Supp. 401

JOYCE, Inc., v. FERN SHOE CO. et al.

No. 661-M.

District Court, S. D. California, Central Division.

April 11, 1940.

Herbert A. Huebner, of Los Angeles, Cal., for plaintiff.

Harris, Kiech, Foster & Harris, and Ward D. Foster, all of Los Angeles, Cal., for defendants.

YANKWICH, District Judge.

The suit was begun on November 14, 1939, and charged infringement of Letters Patent No. 2,067,963, relating to shoes, and unfair competition arising out of the infringement complained of.

It sought injunction, accounting, and damages suffered by the infringement and the unfair competition.

On January 5, 1940, and while the matter was pending before another judge of this court, on stipulation of counsel, it was referred to the Honorable Charles C. Montgomery as master.

The conditions of the reference were these: "It Is Ordered that this cause be referred to Charles C. Montgomery, Esq., as Special Master to take and hear the evidence offered by the respective parties and to make his findings and conclusions on all issues presented and recommend the judgment to be entered thereon; the Special Master is authorized and empowered to do all things and to make such orders as may be required to accomplish a full hearing on all matters of fact and law in issue in this case. The Special Master is directed to commence the trial hereof on or about January 10, 1940, and to proceed promptly with the same; counsel for both parties will exchange and file briefs within three days after the close of the trial; the Special Master will hand counsel his draft report within five days after receiving the briefs; counsel for the parties will submit to the Special Master any suggestions or exceptions to the draft report within two days after receiving the same; and the Special Master will file his final report within five days after receiving the suggestions or exceptions of counsel to the draft report. It is noted that while the parties have consented to the reference, they do not stipulate that the Master's findings of fact shall be final, and reserve leave to file exceptions thereto." (Italics added.)

The master began the hearing of the matter on January 10, 1940. Testimony was taken on various days between that day and February 8, 1940, when the parties rested. Extended briefs were filed and the matter was submitted to the master, who filed his report on March 4, 1940.

On March 12, 1940, the cause was transferred to me. On March 11, 1940, the defendant filed its objections to the report of the special master. They were duly noticed, and came up for hearing before me on March 25, 1940.

The patent in issue was before me in Joyce, Inc., v. Solnit, D.C.Cal.1939, 29 F. Supp. 787, 43 U.S.P.Q. 233. In substance, I there held that the four claims of the patent were valid, although not infringed by the accused structures there involved. In reaching this conclusion, I held that the elements of the combination in the Joyce patent, which constituted its contribution to the prior art, were a midsole member therein described and a covering over it. The accused devices there did not have these two elements.

The decision did not require any discussion of the construction of the midsole member.

In the present case, the accused structures all contain midsole members constructed in different manners. Thus, in Defendant's Exhibit 1, the midsole is of two component parts, a felt half-platform tread and a heel lift made of cork. In another accused structure, Defendant's Exhibit 2, the midsole is formed by a rand running around the toe to the shank of the shoe on both sides which creates a hollow, which is filled with a plastic composition of ground cork. The master found that neither Exhibit 1 nor 2 infringed Claims 1, 2 and 3 of the patent, but that they infringed Claim 4.

This claim reads: "4. In a slipper construction, an upper, the lower edges of which are turned inwardly and secured to an insole, a midsole member of relatively thick cushioning material shaped to extend completely over the surface of said insole and comprising a sole portion of substantially constant thickness and a heel lift portion tapering in thickness toward the shank of the slipper to provide a substantially smooth lower surface to said midsole member, a covering of relatively thin material extending about the edges of said midsole member, means for securing the upper surface only of said midsole member to the insole, and an outsole member co-extensive with said midsole member and attached solely to the lower surface of said midsole member."

The elements of this combination are: (1) an upper portion of a shoe fastened to (2) an insole, (3) a midsole of thick cushioning material, with (4) built-in heel lift which is covered about the edges as a single element, (5) means for fastening the upper portion of the midsole to the insole and (6) an outsole attached to the lower surface of the midsole.

The result is a shoe which, while having a flat outer sole, has the proper arching and the benefit of a cushioned sole. The midsole, by the unity of its construction, lends itself, as does the heel lift, because of its conformity to the arch form of the shoe, to decorative treatment not ordinarily possible with shoes built along ordinary patterns.

My prior decision limited the claims to the structure particularly described in the patent. It did not attempt to lay down any definite rules as to midsoles which might or might not be held to infringe the claims. All that I there held was that the wedge-type laminated form of heel lift consisting of a plurality of sheet-form heel lift units secured together was a mere deviation from the wedge-type shoe long known to the art, and did not infringe.

More particularly, I held that the accused structure lacked two essential elements: a midsole member and a unit covering over it. There is nothing in that decision which stands in the way of the finding of the master here that a midsole member formed, either by combining a felt half-platform made of cork with a heel lift and combining them into substantially constant thickness, through beveling and overlapping, as is done in Defendant's Exhibit 1, or by a rand running around the toe to the shank of the shoe on both sides creating a hollow filled with a plastic combination of ground cork, as in Defendant's Exhibit 2 does infringe.

We would be discouraging instead of promoting invention (U.S.Constitution, Article I, Sec. 8, Subdivision 8) if, in a structure or device patent, we permitted a deviation from the method of construction of an important element of a combination either by joinder or splitting of elements, to destroy a contribution to the art which, limited though it be, is yet entitled to protection. See Art Metal Works, Inc. v. Abraham & Straus, 2 Cir., 1939, 107 F. 2d 940.

Infringement is not avoided by dividing parts of a combination or by integrating them. See Howard v. Detroit Stove Works, 1893, 150 U.S. 164, 14 S.Ct. 68, 37 L.Ed. 1039; Standard Caster & Wheel Co. v. Caster Socket Co., 6 Cir., 1901, 113 F. 162; General Electric v. Yost Electric, 2 Cir., 1905, 139 F. 568; D'Arcy v. Staples & Hanford Co., 6 Cir., 1908, 161 F. 733; In re Prinzler, Cust. & Pat. App., 1938, 97 F.2d 102; Kay Jewelry Co. v. Gruen National Watch Case Co., 6 Cir., 1930, 40 F.2d 600. More so, when carried into practice, it has met with great success, to which those in the same competitive field have paid the compliment of slavish imitation. I am of the view that the accused structures just described and the one which was Defendant's Exhibit 5 and each of them, infringe Claim 4 of the patent in suit.

An extensive prior art has been argued and re-argued with great fullness in this case. It would serve no useful purpose to consider it in detail. Much of it was before me in Joyce, Inc., v. Solnit, D.C.Cal. 1939, 29 F.Supp. 787, although I did not discuss it there with particularity. Nor shall I do so here. However, to show non-infringement, the defendants have presented, as exhibits, two charts aiming to illustrate the best references as to each of the two accused exhibits, 1 and 2, and show their indebtedness to them.

We advert to these briefly.

As to Exhibit 1, the references are Efflandt 376,183, January 10, 1888, and Gilkerson, 1,751,990, March 25, 1930. Both were references in Joyce, Inc., v. Solnit, supra. But neither shows the characteristics of the Joyce shoe or the essence of its contribution to the art, — a visible midsole, encased as a unit, which the accused structure also has.

Efflandt aims to apply to a boot or shoe "a compound sole composed of a wooden sole, thin, and, therefore, flexible in the shank and a leather inclosing rim, together with which it is introduced between the insole or the welt and the ordinary leather outer sole of the boot or shoe for the purpose of producing a water-tight or warm covering of the foot."

He does not claim originality for the use of the wooden intermediate sole.

In fact, in his specifications, he says: "The application of wooden intermediate soles is well-known". But he claims novelty in the "peculiar manner of fastening" which allows the leather to be replaced without removing the wooden sole.

The shoe has the regular arch and heel. The wooden sole is not cushioned or flexible. It is not secured to the upper. We have no heel lift with a beveled or tapered upper face. Nor does the wooden sole conform to the natural shape of the arch of the foot.

Gilkerson, which was also a reference in Joyce, Inc., v. Solnit, supra, aims "to provide a cushion spring heel construction for Goodyear welt shoes having sewed heel seats which may be expeditiously incorporated in shoes of this type without any change in the factory equipment and which does not materially increase the cost of the shoe."

He gives as his further object "to provide a combined cushion heel and flexible shank construction for Goodyear welt shoes having sewed heeled seats".

The...