United Shoe Machinery Corp. v. Muther, 1583.
| Decision Date | 13 April 1923 |
| Docket Number | 1583. |
| Citation | 288 F. 283 |
| Parties | UNITED SHOE MACHINERY CORPORATION et al. v. MUTHER. |
| Court | U.S. Court of Appeals — First Circuit |
Charles F. Choate, Jr., of Boston, Mass. (Frederick L. Emery, Nelson W. Howard, and Harlow M. Davis, all of Boston, Mass., and Lucius E. Varney and Edward G. Curtis, both of New York City on the brief), for appellants.
Edward F. McClennen, of Boston, Mass. (Francis J. V. Dakin, of Boston, Mass., on the brief), for appellee.
Before BINGHAM and JOHNSON, Circuit Judges, and MORRIS, District judge.
This is a bill in equity charging infringement of letters patent No 1,112,643, issued to Lorenz Muther, the appellee, October 6 1914, on an application filed January 31, 1914, for a device for setting invisible eyelets.
The appellant is the owner of a patent for a similar device issued to it October 31, 1922, on an application filed August 1, 1914, by Henry T. Doulett, and a second application filed by him November 13, 1914.
An interference was declared between the Doulett invention and that of the appellee after letters patent had been issued to the latter. Doulett was found to be the prior inventor, and letters patent were issued to the United Shoe Machinery Corporation as his assignee. This bill was filed on the 19th day of August, 1916, after the interference had been declared, but before the hearing upon the same was concluded.
The tool to which the patent relates is one for invisible eyeletting, which, in conjunction with a shoe machine punches a hole through several layers of leather and has an enlargement or upsetting shoulder upon it which is pushed down through the outer layer of leather, and an eyelet inserted from the under side is turned down and outwardly by this upsetting shoulder and clenched beneath the outer layer upon the next layer. A restricted portion above the upsetting shoulder allows the outer layer to spring back after the shoulder passes through it, so that it is not caught in the prongs of the eyelet in the clenching process. As infringement is admitted if Muther was the prior inventor, the only issue involved is that of priority as between Doulett and Muther in the invention of this contracted portion of the device which, in practical operation, is found to be one of its important features.
The claims in the patent to Muther cover this contracted portion of the device. The first application filed by Doulett on August 1, 1914, did not contain this; but in the second application, filed November 13, 1914, it is covered by the claims therein made, the applicant stating that this second application is a continuation of his prior application filed August 1, 1914, and 'discloses and claims certain features which were inadvertently omitted from said prior application.'
An answer was filed by the United Shoe Machinery Company on September 16, 1916, denying that the plaintiff was the true, original, or first inventor of the device disclosed and claimed in said letters patent, and alleging that Henry T. Doulett was the true, original, and first inventor of the same; that he had made an application for letters patent based on said invention, and had assigned his application to the defendant; that he had conceived such invention and disclosed it to others, and had reduced it to practice before the plaintiff claimed to have conceived said invention.
On February 1, 1922, a supplemental answer was filed, which, in addition to the denials and allegations in the first answer, alleged that prior to the filing of the bill of complaint an interference was declared by the Commissioner of Patents between the application of Doulett and the letters patent in suit; that the plaintiff had voluntarily appeared and contested the granting of a patent upon the application of Doulett; and that, after several successive appeals, it was finally decided by the Court of Appeals for the District of Columbia that said Doulett, and not the plaintiff, was the true, original, and sole inventor of said device and priority of invention was awarded to Doulett.
The patent in suit contains three claims which are as follows:
The issues raised by the supplemental answer, by way of abatement, were heard separately and disposed of before hearing upon the merits of the case, and the motion of the defendant to dismiss the bill, because of the decision of the Court of Appeals of the District of Columbia, was denied. This is assigned as error.
Section 4914, R.S. (Comp. St. Sec. 9459), authorizing an appeal from the Commissioner of Patents to the Court of Appeals of the District of Columbia, provides in part as follows:
It has been authoritatively settled that the decrees of the Court of Appeals are not final and conclusive; that they are rendered only upon the testimony which was taken in the Patent Office and are binding only on the Commissioner of Patents; that the court is only a part of the administrative machinery of the Patent Office and that it decides and hears administrative questions only. There are numerous decisions in support of this, and the citation of Frasch v. Moore, 211 U.S. 1, at page 9 (53 L.Ed. 65) 29 Sup.Ct. 6, 8, is sufficient. The court there says:
'In interference cases and in all others going up from the Commissioner to the Court of Appeals there is no final judgment in the cause, but one interlocutory in its nature and binding only upon the Commissioner 'to govern the further proceedings in the case.''
The decision of the Court of Appeals was not res adjudicata and there was no error in denying the motion to dismiss.
The learned judge who sat in the District Court refused to receive in evidence the record of the decrees rendered by the Examiner of Interferences, the Examiners in Chief, the Commissioner of Patents, and the Court of Appeals of the District of Columbia upon the issue of priority raised by the declaration of interference. This is assigned as error and must be disposed of at the outset.
This bill, alleging infringement of letters patent, is not brought under any particular section of the Revised Statutes, but is addressed to the court as one having full equity powers. Under section 4920, R.S. (Comp. St. Sec. 9466), it is provided:
The only issue involved was whether Doulett or Muther was the prior inventor of a contracted portion above the upsetting shoulder of the invisible eyeletting device.
It is contended by the defendant that the records of the decisions in the Patent Office and by the Court of Appeals should have been admitted. Under the authority of Morgan v. Daniels, 153 U.S. 120, 14 Sup.Ct. 772, 38 L.Ed. 657, the decision of the Court of Appeals 'must be accepted as controlling, upon that question of fact, in any subsequent suit between the same parties, unless the contrary is established by testimony which, in character and amount, carries thorough conviction.'
In Morgan v. Daniels, supra, an unsuccessful applicant for a patent sought under the provisions of R.S. Sec. 4915 (Comp. St. Sec. 9460), to have a patent granted to him by the court. It will be noted that the case was submitted to the Circuit Court upon the testimony in the interference proceedings and no other, and therefore what was said by the Supreme Court applied to a case where the same testimony was before the court that had been considered by the Patent Office and the Court of Appeals for the District of Columbia. The statement in the opinion in regard to the weight to be given to a decision of the Patent Office is broad enough, however, to cover a case like the one before us where additional testimony was taken in the District Court.
In the present case a patent had not been issued to the defendants at the time of the hearing in the District Court, and they were only the owners of an invention for which an application had been made, which had been placed in interference with the patent in suit and priority awarded to its inventor. The plaintiff, therefore, could not avail himself of the provisions of R.S. Sec. 4918 (Comp. St. Sec. 9463), as they afford a remedy only where there are 'interfering patents.' The allegations as to...
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