Premier Machine Co. v. Freeman

• Decision Date: 03 June 1936
• Docket Number: No. 3103.,3103.
• Citation: 84 F.2d 425
• Parties: PREMIER MACHINE CO., Inc., v. FREEMAN.
• Court: U.S. Court of Appeals — First Circuit

84 F.2d 425 (1936)

PREMIER MACHINE CO., Inc., v. FREEMAN.

No. 3103.

Circuit Court of Appeals, First Circuit.

June 3, 1936.

George P. Dike, of Boston, Mass. (Cedric W. Porter, of Boston, Mass., on the brief), for appellant.

Marston Allen, of Cincinnati, Ohio (Nathan Heard, of Boston, Mass., on the brief), for appellee.

Before BINGHAM, WILSON, and MORTON, Circuit Judges.

MORTON, Circuit Judge.

This is a suit for the infringement of United States patent to Freeman, No. 1,681,033, dated August 14, 1928 (application filed December 3, 1923), for a cut-out machine for shoe uppers and for certain dies, anvils, and masks used in such machines. The defense is invalidity; infringement being conceded if the claims in suit are valid. In the District Court, there was a decree for the plaintiff on all the claims in suit, and the defendant has appealed. We shall refer to the parties, plaintiff and defendant, as they appeared in the court below.

The patent in question relates to the art of making shoes. In recent years the uppers of women's shoes have, for purposes of style, been ornamented with perforations or "cut-outs," i. e., holes through both the leather and the lining of the upper. The popular style for this ornamentation appears to have started about 1920, although perforations had been used in a small way before that time. The perforations are of various shapes and sizes. The mechanical problem was to cut them cleanly through the leather and the lining of the upper. For shoes to be sold at popular prices, it was necessary that the work be done by machine, which involved the use of dies. The method of cutting holes in leather by means of dies was old and well known long before Freeman entered the field. The cutting might be done either before or after the upper was "closed," i. e., sewed together at the back. In the former case the upper would lie flat and the cutting could be, and had been, done by means of a flat die of any desired size used in a Knight machine. A closed upper on the other hand would not lie flat except over a limited area, and if laid on a large flat die would bunch up between the die and the striking plate. Material to be cut by a die had, of course, to be held flat upon it when the cut was made.

Freeman seems to have been the first person to conceive the idea, or devise the process, of sewing (or cementing) the lining to the upper, closing the upper so as to bring the leather and the lining into true relation with each other, and then die-cutting the desired perforations through both leather and lining at the same time. This is substantially the way in which the Freeman invention is described in the plaintiff's brief, where it is said: "It (the Freeman invention) shows a result substantially distinct in nature, namely a cutting through of the upper when made up (i. e., closed) and with the lining in place in one blow, which from an art point of view was regarded as distinctly new, and a boon to the industry, and which had most remarkable results and impressed those in the industry as a new art. There was a distinct change in mode of application, namely, the material used was assembled first and cut afterwards" etc. In order to hold the lining in place, to prevent it from raveling when the shoe was worn, and to give the perforations a neat appearance, it was desirable that the leather and the lining should be sewed together around the perforations. This sewing might be done either before or after the perforations had been made. If the sewing was done first, the dies had to be accurately centered on the sewed pattern when the perforation was made, so as not to cut the sewing.

Freeman first devised his method or process, as above stated. He then made the machine of the patent in suit to carry out the process. It must be kept in mind that this suit does not involve the advantage or patentability of the Freeman process, which raises very different questions, but only the patentability of the machine itself from a purely mechanical point of view. The prior art shows dies of many kinds, including those used for making perforations in uppers, and also well-organized machines in which such dies were used. The Newton machine patented in 1922 (on an application filed in 1920) is described as, "a machine for perforating vamps," and the patent further says, "In the manufacture of boots and shoes, it is usual to ornament certain parts of the upper by punching designs therein by means of a gang punch. When it is desired to use a pattern punch to ornament some shoe parts, as the toe portion of a vamp on (or) a wing tip," etc. It further says, "With this object in view, there is provided in the illustrated machines, in combination, a cutting block, a perforating die for ornamenting a vamp and a vamp support connected to the die and movable with respect to the cutting block to carry the vamp from a vamp positioning to a vamp perforating position" (p. 1, line 55 et seq.). The patent to Furber, dated 1923 (application filed 1920), represents another machine for making ornamental perforations in tips and uppers of shoes; and the patent to Whitcomb, dated 1922 (application filed 1920), shows mechanism for accurately positioning a vamp which is to be punched in making ornamental designs. Other similar machines are shown in the record. It is entirely clear that the art of perforating uppers for decorative purposes by the use of punches (or dies) used in machines was old and well developed when Freeman entered the field.

Freeman's dies and method were first used in an old Knight machine on open uppers. The dies adapted to that machine were too large to be used successfully on closed uppers which would not lie flat over so large an area. The use of small dies in the Knight machine was impractical, because the die was supported by the side frames of the machine and the upper could not therefore be draped around it. For these reasons the Knight machine could not be satisfactorily used on closed uppers except in a limited way. Closed uppers and completed shoes had, however, been worked on for many years in making and repairing shoes. Shoe-jacks or other supports, small enough to be introduced into a closed upper or completed shoe and mounted on a shank around which the shoe could be "draped," had long been used to hold shoes while they were being made or repaired. It was perfectly well known in the art at that time that, in working on a finished shoe, a small support or anvil adapted to go into the shoe was used, held on a column around which the shoe was "draped." In the Wright machine patented in 1894 a support in a form approximating a shoe-jack having a flat upper surface of small area was used as an anvil to support a "die" (so called in the patent) used to punch patterned holes in completed uppers. This machine had a columnar support with a flat top carrying a small die, around which the upper was draped.

In the Freeman machine a columnar support carries a die small enough so that a closed upper will lie flat on it over the area to be perforated. This combination of a small die on a columnar support constitute what is claimed to be the basic invention of the Freeman patent; and it is what is covered by the first group of claims. Freeman also made alleged improvements in dies and masks and in a slide for moving the die in and out which will be described in connection with the claims relating to them.

The patent contains 94 claims of which 26 are in suit. They have been discussed by the parties in three groups: (1) Those involving the "anvil die" so called; (2) those involving the "mask"; and (3) those involving the slide for moving the die in and out of the press. It is a convenient grouping, and we shall follow it in our discussion.

In the first group are claims 6, 7, 8, 62, and 71. Of these, claim 6 may be regarded as typical. It reads as follows:

"6. For use in a machine for cutting designs in shoe uppers, the combination including work supporting means, a work cutting unit with upstanding cutting edges mounted thereon, said work supporting means and work cutting unit constructed with a top portion to support in a substantially flat manner a portion of the shoe upper in which a design is to be cut and with lateral sides so shaped that the upper may be draped thereabouts, without buckling the shoe upper while the design is cut therein."

This is a claim of great breadth. As described by the plaintiff's mechanical expert it covers all shoe cutting machines which have an "elevated anvil, having a clearance space, having a flat work supporting surface, and having cutting die mounted on that flat supporting surface or adjacent, with perhaps some means for gauging." So construed, the claim covers every cutting-out machine in which a die is held on a central support around which an upper may be draped; and it is fully and completely anticipated by the Wright machine, supra. Aside from that reference it does not seem to us that the simple arrangement specified in this claim involved invention in view of the prior art. It certainly did not involve invention to reduce the size of the die, so that it could be used in a closed upper or a completed shoe; the District Judge so intimated during the hearings. See Butler v. Steckel, 137 U.S. 21, 11 S.Ct. 25, 34 L.Ed. 582; Anderson & Writer Corporation v. Hanky Beret, Inc. (C.C.A.) 40 F.(2d) 196; Karron v. Karron (C.C.A.) 66 F.(2d) 785; and B. & W. Shoe Machinery Co. v. Multiple B. M. Co. (C.C.A.) 73 F.(2d) 11, at pages 12, 13, where it was said, "changing the size and dimension of dies was a matter of mechanics and did not constitute patentable novelty." Martineau, J. Nor was it invention to provide a support for a small die in such a way that an upper could be draped around it. That very thing had been done for a very similar purpose in the Wright machine. It seems to us to have been clearly obvious in view of the prior art. "It is not a patentable invention to...