United Shoe Machine Corp. v. Brooklyn Wood Heel Corp.

• Decision Date: 13 May 1935
• Docket Number: No. 273.,273.
• Citation: 77 F.2d 263
• Parties: UNITED SHOE MACHINERY CORPORATION v. BROOKLYN WOOD HEEL CORPORATION.
• Court: U.S. Court of Appeals — Second Circuit

77 F.2d 263 (1935)

UNITED SHOE MACHINERY CORPORATION v. BROOKLYN WOOD HEEL CORPORATION.

No. 273.

Circuit Court of Appeals, Second Circuit.

May 13, 1935.

George P. Dike and Cedric W. Porter, both of Boston, Mass., for appellant.

Hector M. Holmes and H. L. Kirkpatrick, both of Boston, Mass., for appellee.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

L. HAND, Circuit Judge.

This is a suit in equity in the usual form, for the infringement of a patent for a machine to fashion wooden heels for women's shoes. The only issue is as to the priority of invention between Sawyer, the patentee of the patent in suit, and Pope and Mann, the joint patentees of the patent under which the defendant manufactures; No. 1,669,144 issued May 8, 1928. In the District Court the defendant argued in addition that it did not infringe, and that the art had anticipated Sawyer's invention; but these defences are not pressed here and we shall disregard them. Thus the controversy comes down to which of two inventors was the earlier, and whether he was duly diligent in reducing his work to practice. The dates are as follows: Sawyer filed his application on January 12, 1927; the date of his invention was April, 1923; it was reduced to practice in June, 1924. Pope and Mann's application was filed on September 29, 1925; it may be assumed to have been reduced to practice in March, 1925, because by that time a machine had been constructed which was capable of turning out heels and did so. As there can be no just complaint of delay after discovery, the whole case turns upon the actual date of Pope and Mann's invention, which the defendant claims was fully conceived and put into drawings and a machine made, by March 18 or March 28, 1923. There is at the outset a dispute as to the degree of proof necessary upon this issue. The defendant, relying upon Willard v. Union Tool Co., 253 F. 48 (C. C. A. 9), maintains that the burden rests upon the plaintiff to show beyond doubt that Sawyer as junior applicant antedated Pope and Mann; but that the defendant in its turn may carry Pope and Mann's date back of any date shown for Sawyer by a mere balance of probability. But the law is not so, whatever may be the practice in the Patent Office. When an inventor's date is to be carried back beyond his application, courts regard the effort with great jealousy, and must be persuaded with a certainty which is seldom demanded elsewhere; quite as absolute as in a criminal case, in practice perhaps even more so. Brooks v. Sacks, 81 F. 403 (C. C. A. 1); Dey Time Register Co. v. W. H. Bundy Recording Co., 178 F. 812 (C. C. A. 2); Bearings Co. v. Harris Hardware & Mfg. Co., 299 F. 782 (C. C. A. 2). It makes no difference how the question arises; whether the patentee is carrying back his own invention, or a supposed infringer is carrying back his; the burden is the same as the proof necessary to establish a prior use. We agree with the judge in his statement of law, but it seems to us that the documentary and physical exhibits establish the earlier date of Pope and Mann's invention beyond reasonable doubt.

Sawyer's machine was much the more elaborate; it makes the whole "breast" of the heel from a rude block in one operation. Not so Pope and Mann's, which receives the heel when the upright portion of the "breast" has been already formed and only finishes it. The heels in question are so high that the foot is at a very substantial angle to the floor. As the "breast" should be perpendicular, the "lip" will be at an angle to it, for the "lip" is a thin continuation of the top of the "breast," where it is fastened to the outside of the "shank" or sole. The outside of the "shank" is convex in transverse section; and as the heel must fit upon it, its top surface must be concave, but Pope and Mann's machine has nothing to do with making it so. The "lip" extending forward along the "shank" makes the transition between "shank" and "breast"; to do this agreeably, and receive a strip of leather which covers the "shank" and runs down the "breast," its outer surface must be convex transversely like the "shank," and the transition curve between "lip" and "breast" must also be agreeable in longitudinal section. Pope and Mann's machine made this convex surface of the "lip," and the longitudinal transition between "lip" and "breast," both of which had formerly been done by hand. The workman held the nearly completed block and rotated the unfinished "lip" against the edge of a rotating rasp which planed its outer surface into the proper transverse convex arc to blend with that of the "shank," and into a longitudinal arc to blend "lip" with "breast." Mann conceived the notion of a holder upon which the heel should be mounted and which should similarly rotate it. There is no doubt that he did construct a machine of some sort which would do this, and the issue is narrowed to the precise kind of machine he made, particularly whether the angle of the axis of the holder to that of the rasp could be varied. This last feature is important in order to accommodate the machine to heels of different heights. The cutting surface of the rasp is not circular in cross-section and does not touch the heel with the whole of that surface. It therefore follows that the curve by which the "lip" blends into the "breast" will vary in form according to what section of the rasp does the cutting. The higher the heel the smaller the angle between the "lip" and the "breast"; and the smaller the angle, the shorter should be the radius of the arc of transition. This accommodation depends upon the power to vary the angle between the axes.

Mann swore that he had conceived the notion of finishing the "lip" by a machine as early as 1917, but this we disregard. He had a rasp, made in 1921, which Pope produced and Mann identified; Mann also produced a cone which he swore that he had mounted on a holder, and which he used to revolve the heels against the surface of the rasp. The mounting he did not produce; at the...