United Shoe Mach. Corp. v. Industrial Shoe Mach. Corp., 6281.

• Decision Date: 20 August 1964
• Docket Number: No. 6281.,6281.
• Parties: UNITED SHOE MACHINERY CORPORATION, Plaintiff, Appellant, v. INDUSTRIAL SHOE MACHINERY CORPORATION, Defendant, Appellee.
• Court: U.S. Court of Appeals — First Circuit

335 F.2d 577 (1964)

UNITED SHOE MACHINERY CORPORATION, Plaintiff, Appellant, v. INDUSTRIAL SHOE MACHINERY CORPORATION, Defendant, Appellee.

No. 6281.

United States Court of Appeals First Circuit.

July 15, 1964.

Rehearing Denied August 20, 1964.

H. L. Kirkpatrick, Boston, Mass., with whom Edgar H. Kent and Martin Kirkpatrick, Boston, Mass., were on brief, for appellant.

Joseph Zallen, Boston, Mass., for appellee.

Before WOODBURY, Chief Judge, and HARTIGAN and ALDRICH, Circuit Judges.

ALDRICH, Circuit Judge.

This is an action by United Shoe Machinery Corporation, United, against Industrial Shoe Machinery Corporation, Industrial, for infringement of three patents, Nos. 2,926,367; 2,986,753, and 3,061,852, relating to toe lasting machinery. The district court found all three patents invalid and, without making findings as to infringement, entered a judgment of invalidity on Industrial's counterclaim, and dismissed the complaint. United appeals.

It is sometimes preferable for a trial court to pass on infringement as well as validity, not only to enable an appellate court to determine the action finally, but also, if lack of infringement is clear, perhaps to decide the case ultimately on this narrower issue. We make no present generalizations on this matter, but cf. Hap Corporation v. Heyman Manf. Co., 1 Cir., 1963, 311 F.2d 839, 844, cert. den. 373 U.S. 903, 83 S.Ct. 1290, 10 L.Ed.2d 198. United makes a more specialized objection with respect to the court's failure to decide questions of infringement because it invokes the principle that immediate and successful copying lends evidentiary support to the claim of validity. See Mershon v. Sprague Specialties Co., 1 Cir., 1937, 92 F.2d 313, 316, cert. den. 304 U.S. 561, 58 S.Ct. 943, 82 L.Ed. 1528. Again we voice no comment because, on our view, the principle is inapposite.¹ We pass directly to the issue of validity.

Toe lasting is an operation requiring a series of steps. In sum, the material which will constitute the outside of the toe, known as the upper, is placed around the toe end and over the toe lining and the marginal portion of the insole mounted on an inverted wooden last and the edges partially attached to the insole, usually by a quick-setting cement. The first step is the upwiping (the wooden last being upside down) of the material around the toe; the next is the overwiping, or inwiping, over the edge of the insole, and the final step is bedding down. Bedding down is the flattening out and fastening of the overlapped material to the insole. Normally there must also be a trimming off of the central portion of the overwipe, which bunches, and accordingly will not completely bed. As to some shoes, particularly women's with highly pointed toes or delicate uppers, the operation as a whole is far from routine. In the words of the district court,

"the toe lasting operation requires a skilled operator who observes and feels the shoe upper on the last as he forms and tensions the upper by means of the lasting instrumentalities, such as the wipers and toe band. * * * in order that the tension or stress on the shoe upper will be evenly distributed around the toe end of the last and the upper and the lining will be smooth and free from wrinkles when the last is removed. * * * On any given shoe, a skilled operator might repeat portions of the upwiping step and at least the initial portion of the overwiping step sequentially as well as alternately as his experience tells him is necessary properly to form the upper around the last. This ability is particularly important in the usual shoe factory operations in which the uppers prepared for the toe lasting operation are not as uniform as might be desired." 223 F.Supp. 826, at 828.

Patent No. 2,926,367 relates to a power-assisted toe lasting machine which sought to supplement the advantages of a manual (i. e., human-powered) machine, on which an operator could exercise the "feel" necessary to do the careful work thus described, by supplying controlled power in such a way that it could reduce the expenditure of physical effort without undue interference with the operator's individual skill. The control achieved was such that the operator could engage or disengage the power at will and could hold temporarily in any position one set of wipers while he was operating, manually or otherwise, the others. A more comprehensive description of the device and its accomplishments will be found in the opinion of the district court, supra, 223 F.Supp. at 829-831. After making these findings the court stated, "United's many experiments * * were principally to find ways of rivalling Kamborian an earlier machine without being found liable for infringement. All that United did was to produce an alleged invention that hardly goes beyond a handle, a button, and a lock." It added, a matter we will return to, that evidence of commercial success was not to be considered because of certain circumstances peculiar to United, and failed to comment upon Industrial's alleged copying. It concluded, "On United's own testimony, Patent 2,926,367, is not a significant step in advance of the prior art," but merely "small steps that could be devised by any mechanic."

In our opinion this was a considerable undercharacterization both of the testimony and of the device. A court undoubtedly may, on its own, draw the conclusion that certain advances are within the knowledge or ability of ordinary mechanics skilled in the art, but we question, in the absence of affirmative evidence enabling the court to put itself in the position of such persons, whether its own judicial competence may extend beyond a relatively narrow area. This area is well illustrated by the second patent, discussed infra. One may wonder, however, whether a court, unaided by any expert testimony, can find that a machine which, although of relative complexity, is claimed to be of improved simplicity, and which was produced only after several months of apparently intensive efforts and some fifteen or twenty attempted "combinations," was a matter of obviousness to "any mechanic." The changes were hardly only "a handle, a button, and a lock," although if they were we might agree with United that this did not negative originality. But passing purely mechanical factors, we do not find the '367 device within the teaching of the prior art. The prior art shows manual devices, and power devices, and manual devices convertible at will to power. However, on examination it shows none of the high degree of discretion here possessed described in detail in the court's findings, supra.

Perhaps the best approach would be to discuss the two Pym patents referred to by the court, No. 1,678,873 (inadvertently numbered 2,098,358) and No. 1,693,119, both of which were power operated with manual control. The '873 device could be made to function either forward or in reverse, at the will of the operator, but by a single control. Its mechanically interdependent cams permitted no selection over the sequence of operations. No wiping could be performed manually. The '119 device, which employed friction clutches, and was required to be belt-driven, did permit independent control of the upwipers and the overwipers. However, like the '873 patent, it was solely power operated, and with no "hold" which permitted retention of what had been accomplished with one set of wipers while the operator went ahead or back or resumed operations with the...