Rubber Co v. Essex Rubber Co, 36

• Decision Date: 13 April 1926
• Docket Number: No. 36,36
• Parties: I. T. S. RUBBER CO. v. ESSEX RUBBER CO
• Court: U.S. Supreme Court

272 U.S. 429

47 S.Ct. 136

71 L.Ed. 335

I. T. S. RUBBER CO.

v ESSEX RUBBER CO.

No. 36.

Argued April 13, 1926.

Decided, Nov. 22, 1926.

[Syllabus from pages 429-431 intentionally omitted] Messrs. F. O. Richey, of Cleveland, Ohio, and Melville Church, of Washington, D. C., for petitioner.

Mr. Lucius E. Varney, of New York City, for respondent.

Mr. Justice SANFORD delivered the opinion of the Court.

This is a suit in equity brought by the I. T. S. Rubber Company against the Essex Rubber Company in the Federal District Court for Massachusetts, for the infringement of United States patent No. 14,049, on resilient heels, reissued to the I. T. S. Company January 11, 1916, as assignee, on an original patent to John G. Tufford, issued in 1914. After final hearing on the pleadings and proof¹ the bill was dismissed by the District Court for want of infringement. This was affirmed by the Circuit Court of Appeals. 1 F.(2d) 780. And there being a conflict of opinion with the Circuit Court of Appeals for the Sixth Circuit as to the scope of the patent, this writ of certiorari was granted.

The Essex Company, which manufactures and sells the heels alleged to infringe, expressly admitted the validity of the reissued patent. And the only questions are: First, whether it is estopped to deny infringement; second, if not, whether infringement is shown.

1. In the courts below the I. T. S. Company relied on estoppels by reason of adjudications in various prior suits brought by it in the Sixth Circuit against dealers in the Essex Company's heels. In the brief for the I. T. S. Company in this Court it is asserted, in general terms, that the action of the Essex Company 'in suits brought against its jobbers in the Sixth Circuit estop it from denying in- fringement here' and that the Circuit Court of Appeals erred in holding that it was not estopped by the decrees in such suits. The argument in the brief, however, specifies and deals with only one of such prior suits; and there being as to the others no semblance of compliance with the requirements of rule 25 of this Court,² we need consider only the suit specifically relied on.

That was a suit brought by the I. T. S. Company against one Wendt, a dealer in Essex heels of a type involved in the present suit, in which infringement of the patent was adjudged. The I. T. S. Company contends that the Essex Company, although not a party of record, took entire control of the defense, participated in the suit until the final decree, paid all the expenses, and is now estopped from denying infringement as therein adjudged.

The material facts found by the District Court are: The Essex Company, after being notified by Wendt of the commencement of the suit, notified the counsel of the I. T. S. Company that it did not wish to, and would not, appear. Wendt thereafter voluntarily allowed the suit to go by default, and an order was entered taking the bill pro confesso. This was followed by an interlocutory decree pro confesso adjudging the infringement of the patent and Wendt's liability for damages and profits, and ordering an accounting. Down to the entry of this decree the Essex Company exercised no control over the management and conduct of the suit. Thereafter the Essex Company, having previously written Wendt that it would reimburse him for any losses he sustained by reason of the suit, suggested that he and counsel whom it had employed procure an adjustment of the damages and profits. Wendt and the counsel for the Essex Company thereupon secured an agreement to settle the case by Wendt's payment of $1,000. This was embodied in a stipulation signed by the I. T. S. Company's counsel and by the Essex Company's counsel as counsel for Wendt, and filed in the case. This stipulation, with the interlocutory decree, was thereafter made the basis of a final decree, readjudging the infringement, reciting the settlement, and adjudging that the I. T. S. Company recover of Wendt $1,000 and the costs of the suit. Wendt paid this judgment and was reimbursed by the Essex Company. The District Count further found specifically that, under the circumstances, the Essex Company did not control the suit; and held that, even though the I. T. S. Company understood that the counsel negotiating the settlement represented the Essex Company as well as Wendt in adjusting the damages, it was not estopped from contesting the question of infringement raised in the present case.

On the appeal the Circuit Court of Appeals stated that the record showed clearly that the Essex Company refused to become a party to the suit or assume any control over it, and took no part in the conduct or control of the suit, 'but only in the adjustment of the damages' after the pro confesso decree had been entered; and approved both the findings and ruling of the District Court.

There is nothing which, under the well-settled rule, Del Pozo v. Wilson Cypress Co., 269 U. S. 82, 89, 46 S. Ct. 57, 70 L. Ed. 172, justifies us in disturbing the concurrent findings of fact of the two courts below; and we concur in their ruling that on the facts thus found the Essex Company is not estopped from contesting the question of infringement.

2. The question of infringement as here presented turns upon matters of law arising out of a file wrapper defense interposed by the Essex Company, which insists that the reissued patent, although valid, was so limited in scope by the proceedings in the Patent Office that the Essex heels do not infringe.

The patent covers the part of a shoe commonly called a rubber heel, or cushion heel lift.³ This is usually made of rubber, and is attached to the under side of the leather heel so as to furnish a yielding, resilient heel, giving softness to the tread and quietness in walking. These heels, which are in common use, are of two types, the fiat and the concavo-convex, both of which were old when Tufford made his invention. The flat heel, which is the older, is cemented to the leather and then fastened on by nails or screws. The driving in of the nails or screws, however, has a tendency to cause the rubber to spring away from the leather around the edges and produce an open seam. In the concavo-convex type the body of the rubber heel is curved downwards. It is attached to the leather heel, without any cement, by placing its upper concave side under the leather, pressing it upward flatly and then nailing or screwing it on tightly. This, through the tendency of the rubber to resume its original curved form, tends to keep it tightly pressed upwards against the leather and overcome the tendency of the flat heels to separate from the leather at the edges. This characteristic of the concavo-convex heels, often called 'the tight-edge effect,' was referred to as early as 1889 in Ferguson's patent No. 638,228.

The Tufford heel is of the concavo-convex type. We insert here reproductions of Figure 2 of the drawings of the reissued patent, which is described as 'a front to rear sectional view through the lift in position disposed against the under side of a shoe heel and immediately prior to application thereto,' and shows one-half of the lift on a median section; and of Figure 4, which is described as 'a perspective view looking at the upper side of the lift removed.'

[NOTE: MATERIAL SET AT THIS POINT IS NOT DISPLAYABLE (GRAPHIC OR TABULAR MATERIAL)]

The reissued patent contains ten claims. The first four, which repeat the claims of the original patent, relate merely to the form and position of the washers in a cushion heel lift, and to grooves, channels and suction areas in its concave surface. They are not here involved. The others are additional claims relating to shape defining improvements. The bill charges infringement of the new claims 5 to 9, inclusive. Claim 5 reads:

'A heel lift of substantially non-metalic 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 breast⁴ corners of the lift.'

The last clause in this claim, which we have italicized-about which the present controversy turns-is contained in all the other claims in suit in identical or precisely equivalent words, except that in claim 8 the word 'rear' does not appear before the words 'upper edge.'⁵ For immediate purposes we treat claim 5 as typical of all the claims in suit, passing for the moment the consideration of the question whether there is any essential distinction in respect to claim 8.

The Essex Company contends: (1) That by the proceedings in the Patent Office these claims were limited to the form of concavo-convex heel lift in which the concave upper face lies entirely below a plane passing through the rear upper edge and breast corners, that is, one in which, owing to the curvature of the upper face, only its rear edge and breast corners lie in the same horizontal plane, and its side and breast edges, as well as all other portions of its surface, lie below the plane passing through and defined by these three points-this being referred to as the 'three-point contract' form, since when the lift is brought in contact with the leather heel, before being flattened, only the rear edge and two breast corners will touch the leather. (2) That the claims, thus limited, are not infringed by the Essex heels, as their upper side edges, having no vertical curve, lie in and not below the plane passing through the rear edge and breast corners.

The file wrapper shows that on the application for the reissued patent it contained as first presented no reference to the position of the upper rear edge and breast edges of the lift in relation to the other portions of its upper surface. Several new claims were submitted some of which, at least,⁶ described a lift having its attaching face concave on every line of cross section. These were rejected by the examiner on reference to Nerger's patent No. 611,129. Another set of claims...