Kamborian v. United Shoe Machinery Corp.

• Decision Date: 29 October 1945
• Docket Number: Civil Action No. 2751.
• Citation: 62 F. Supp. 903
• Parties: KAMBORIAN et al. v. UNITED SHOE MACHINERY CORPORATION.
• Court: U.S. District Court — District of Massachusetts

62 F. Supp. 903

KAMBORIAN et al. v. UNITED SHOE MACHINERY CORPORATION.

Civil Action No. 2751.

District Court, D. Massachusetts.

October 29, 1945.

Robert Cushman and Roberts, Cushman & Grover, all of Boston, Mass., for plaintiffs.

Fish, Richardson & Neave and Charles E. Hammett, Jr., all of Boston, Mass., (Alex D. Salinger, of Boston, Mass., and Stephen H. Philbin, of New York City, of counsel), for defendant.

SWEENEY, District Judge.

In this action the plaintiffs, who are, respectively, the owner and the sole licensee of the patents here involved, charge the defendant with infringing Letters Patent No. 2,251,284, a machine patent, and No. 2,254,224, a method patent. The plaintiffs seek an injunction against further infringement and an accounting of profits. The defenses urged at the trial were that the patents were invalid for want of invention, or because misdescriptive or inoperative, and a denial of infringement.

All of the parties are active in the construction and leasing of shoe building machinery. The present action concerns shoe lasting machinery. The claims in issue are claims 13 and 19 of the method patent, and claims 26 and 28 of the machine patent. Claim 13 of the method patent, which is typical of all of the claims, reads as follows:

"That method of lasting shoes which comprises as steps seizing a narrow area of the margin of the upper and applying positive lasting pull thereto in a direction substantially perpendicular to the last bottom, progressively and uninterruptedly shifting the point of application of such pull along the periphery of the shoe bottom, and wiping narrow areas of said margin inwardly over the insole successively from point to point longitudinally of the shoe."

Shoe lasting is the art of affixing the upper portion of a shoe to the insole in such a fashion as to cause it to be shaped as nearly as possible to a human foot. Prior to the use of lasting machines, the operation was performed by hand; that is, an operator would tack an insole to the bottom of the wooden last, then slip the last into the leather or cloth upper, and align the parts so that a proper union might be made. After alignment, the operator would seize the margin of the upper with a pair of pincers, tensioning the material to conform to the contour of the last, and then affix the margin of the upper to the bottom of the insole, usually by tacking it. The operator would then proceed from point to point along the insole until the upper was firmly and completely affixed thereto.

The first improvement over hand lasting was the so-called "Niggerhead" machine, which was introduced about 1890. This method was an improvement over hand lasting, but the union between the sole and the upper was still made at intermittent stages and required many stages of operation before completion.

In the industry there was a long felt need for a machine which would do continuous lasting so that, in one simple operation, the upper could be affixed to the insole. In 1920 the McFeeley Patents Nos. 1,356,539 and 1,356,540, and in 1925 the Varney Patent No. 1,541,875, were issued to the defendant. These patents were designed to provide continuous lasting, but the machines made under them proved to be unsuccessful. Incidentally, it might be mentioned at this point that the defendant company maintains a research department of approximately 200 employees, 20 of whom devote their time to patent work. The patentee's idea, which was the basis for his patent application, came from his observation of a tack pulling machine, which was used to pull tacks from wooden lasts. This tack puller consisted of two rollers suspended beneath an arm parallel to each other. Each roll had a helical, knurled rib with the spiral opposite a similar spiral on the other roll. At the base of each roll the spirals ended in a rather fine and sharp point. When the points were inserted under the tack head, the tack rode up the spiral rolls and out of the wood. The patentee conceived the idea of utilizing similar rolls to lift and tension the upper of a shoe so that it could be turned over and affixed to the insole. In patent application No. 2,251,284, the patentee refers to his rolls as "gripper rolls" having "helical ribs of opposite pitch respectively, the ribs of the two gripper rolls normally meshing. Preferably the outer edges of these helical ribs are knurled so as to grip the material firmly between the rolls." (P. 2, col. 1, 1. 52.) The Kamborian rolls exert a positive grip, and by that it is understood to mean a grip which grasps the material firmly against opposing pressure.

Kamborian, the patentee, is a man of considerable mechanical ability but his knowledge of mechanical principles and theories has not been demonstrated. At the time that he filed his patent application he was of the opinion — and probably is today— that the introduction of material between such rolls as he describes in his invention would have a tendency to uplift or pull it in the same way that the tack puller rode the head of the tack up its helical ribs. In the case of the tack puller, the head of the tack extended over the edge of the helical rib and, when the rolls were turned, it was compelled to ride upwardly. I do not believe that it necessarily follows that cloth or leather, contacting only the outer surface of the helical rib, would rise in the same way. Undoubtedly, while there is direct engagement of the cloth between the ribs there may be some such upward pull, but the pull, if any, on the material is not sufficient to completely tension the material to conform to the contour of the wooden last. Such additional tension as may be needed is provided by the operator who exerts pressure by pushing the last inwardly towards the body of the machine, or by presenting the work at an angle to the rotating gripping rolls. The resulting tension is sufficient to do a workmanlike job in conformance with the patent claims. Whether or not Kamborian understood all that his machine would do at the time that he described it in his patent application is immaterial. He is entitled to the benefits of all that he has created. With few minor improvements, the machines that Kamborian has built read directly on the patents.

If a patentee clearly describes the new structure, it is unnecessary that he also describe the new mode of operation. I. T. S. Rubber Co. v. Panther Rubber Co., 1 Cir., 260 F. 934, 937; Warren Steam Pump Co. v. Blake & Knowles Steam Pump Works, 1 Cir., 163 F. 263, 277. The patentee is not required to state the principle of operation of his invention, or even understand it, as long as the mechanism is so described that it can be reproduced. Eames v....