United Shoe Machinery Corp. v. Industrial Shoe Mach. Corp.
| Decision Date | 26 November 1963 |
| Docket Number | Civ. A. No. 61-798. |
| Citation | 223 F. Supp. 826 |
| Parties | UNITED SHOE MACHINERY CORPORATION v. INDUSTRIAL SHOE MACHINERY CORP. |
| Court | U.S. District Court — District of Massachusetts |
H. L. Kirkpatrick and Martin Kirkpatrick, Fish, Richardson & Neave, Boston, Mass., for plaintiff.
Joseph Zallen, Boston, Mass., for defendant.
1. This is a suit for infringement of three patents owned by United involving toe lasting machines as used in the shoe manufacturing industry: Patent No. 2,926,367, relating to a power assisted toe lasting machine; Patent No. 2,986,753, relating to an upwiping composite Teflon-steel toe band for such a machine; and Patent No. 3,061,852, directed to a wiper operated trimming knife for such a machine.
2. Defendant asserted three counterclaims.
3. The first counterclaim challenges the validity of all the claims of all three patents in suit.
4. The second counterclaim is directed to alleged issues of unfair competition and was dismissed on plaintiff's motion during the trial.
5. The third counterclaim is directed to alleged anti-trust issues and was also dismissed on plaintiff's motion during the trial.
6. Two types of machines made by defendant are charged to infringe each of the three patents in suit, namely, the Industrial Power Attachment on the United LM-6 Lasting Machine and the Industrial Shirley Lasting Machine.
7. The defenses interposed by defendant are, in general, invalidity and non-infringement as to each of the three patents in suit.
1. A toe lasting machine of the type with which the present controversy is concerned is a machine which can be manipulated by an operator to perform a series of forming operations in which the toe end of the shoe upper and lining are drawn upwardly tight over and around the toe end of a last and over the marginal portion of the insole mounted on the inverted wooden last on which the shoe is made. The edge of the upper is then attached, usually by quick setting cement, to the shoe insole previously fastened to the bottom of the last. 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. Thus, the shoe upper and lining will be properly conformed to the curved side and end surfaces of the toe end of the last 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 lining will be smooth and free from wrinkles when the last is removed.
2. The major steps in the toe lasting operation, which are carried out by the lasting instrumentalities as they are moved relatively to the upper and last (with the last supported in fixed position in the toe lasting machine bottom upward and with the upper and its lining extending upwardly therebeyond around the toe of the inverted last), are upwiping, overwiping, and bedding down.
3. The upwiping step is performed by the operator pressing a foot treadle to move the wipers or toe band upwardly around the toe of the shoe to wipe the surface and so pull the upper around the toe of the last up to the level of the insole.
4. The overwiping step is next performed by the operator moving the wipers by the hand lever in the plane of the last bottom from the toe end of the last (after applying an adhesive) while continuing to press the wipers against the upper to force its edges inwardly into contact with the insole, the wiper mechanism operating meanwhile to close the wipers.
6. The final bedding down step is performed by moving the closed wipers overlying the upper and insole downwardly to press the overwiped edges of the upper firmly against the insole for a time sufficient for the cement therebetween to set.
7. The three patents in suit all involve various aspects of toe lasting machines used for performing these operations:
— the first patent relates to power assist features which reduce physical effort while retaining discretion in the operator for operation of the machine to advantage in lasting shoes;
— the second patent provides a toe band which replaced the steel wipers for upwiping;
— the third patent provides a trimming knife for automatic trimming of excess stock at the toe of the shoe as it was gathered between the wipers during overwiping.
1. The LM-6 toe lasting machine has been used in the trade since as far back as World War I, that is, about half of a century. One of its characteristics is that its action is wholly under the control of the operator who can exercise discretion in operating the machine to accommodate widely varying types. Thus, 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.
2. However, the LM-6 machine requires considerable physical effort to operate, especially insofar as the final stage of the overwiping operation and the bedding operation are concerned.
3. Although this undesirable aspect of the LM-6 machine had long been recognized in the trade, United, until it was effectively challenged by a competitor, did nothing to introduce commercially an improvement to reduce the operator's physical effort.
4. As revealed by United's own intraoffice memoranda, (see, for example, Exs. U-147A par. 2, U-148 par. 2, U-156 par. 2, U-160 par. 7-8, and U-170), United's active interest in power-assisted toe lasting machines was greatly stimulated when in 1955 a competitor, Kamborian, put on the market a semi-automatic toe lasting machine, which was covered by Kamborian patent No. 2,668,967, and which was improved in Kamborian Model D advertised July 11, 1956.
5. United in a memorandum dated November 27, 1956, Ex. U-170, p. 6, recognized that "the particular novelty involved in the Kamborian — Model D machine clearly resides in the use of power (fluid pressure) means for operating the wipers of a Bed Lasting Machine, i. e., advancing and closing the wipers for overwipe and effecting relative heightwise movement of the wipers and the toe end of a shoe for upwiping and for bedding, with these power movements under the direct (servo-feed-back) control of a single control member, i. e., the handle H." At the same time United was aware that there were in the prior art at least 8 patents disclosing bed type lasting machines in which the wipers are operated by fluid under pressure with manual control (Ibid, p. 4) and 5 patents providing an arrangement wherein a single control member is effective to control the direction, speed and extent of movement of two different fluid pressure operated pistons by the direction, speed, and extent of movement of the control member in two different directions. (Ibid, p. 5).
6. Fully aware of the Kamborian competition and of the patent situation, United's ordinary mechanics, skilled in the art of making shoe machinery, set out to develop a machine which would not infringe Kamborian's patents. Their alleged invention has four claimed features: (1) Power Assist for Overwipe; (2) Power Assist for Bedding Down; (3) Continued Bedding Down; and (4) Wiper Head Locking.
7. The first of these claimed features provides discretionary power overwiping in a toe lasting machine having conventional steel toe lasting wipers, together with manual means for moving them including a foot treadle for effecting relative heightwise movements of the wipers and a shoe on a support, and a hand lever for effecting advancing and closing movements of the wipers longitudinally relatively to the shoe. The overwiping by power, more particularly fluid pressure, includes means for effecting the advancing and closing movements of the wipers by a power overwiping cylinder, together with means under the direct control of the operator, more particularly a control member mounted on the hand lever, for selectively rendering the power operated means operative to effect advancing and closing movements of the wipers and the shoe at any time during relative movement of the wipers and the shoe by the manual means.
8. With this arrangement the operator, at his own discretion, may at any time during the lasting operation and at any position of the wipers, bring the power means into operation for advancing and closing the wipers, continue this power operation for as long as he desires, or terminate the power operation and restore manual action, as he himself wishes.
9. Claims 3 and 4 and claims 17, 18, 19, and 20 are all concerned with the discretionary power assist overwiping feature of the patent.
10. The second claimed feature of the patent involves the concept of providing discretionary power bedding down in a toe lasting machine having conventional steel toe lasting wipers, together with manual means for operating them including a foot treadle for effecting relatively heightwise movements of the wipers relatively to the shoe. The discretionary power bedding down is provided by power operated means, more particularly a power bedding down cylinder for effecting said relative heightwise movement of the shoe in one direction (the bedding down direction), together with means under the direct control of the operator, more particularly a control member mounted on the hand lever for selectively rendering said power operated means operative to effect its particular relative movement of the wipers and the shoe (in the bedding down direction) at any time during relative movement (in the overwiping direction) of the wipers and the shoe by the manual means.
11. With...
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