United Shoe Machinery Corporation v. Kamborian

• Decision Date: 16 July 1948
• Docket Number: No. 4344.,4344.
• Citation: 169 F.2d 249
• Parties: UNITED SHOE MACHINERY CORPORATION v. KAMBORIAN et al.
• Court: U.S. Court of Appeals — First Circuit

169 F.2d 249 (1948)

UNITED SHOE MACHINERY CORPORATION v. KAMBORIAN et al.

No. 4344.

Circuit Court of Appeals. First Circuit.

July 16, 1948.

Stephen H. Philbin, of New York City (Edgar H. Kent, of Boston, Mass., on the brief), for appellant.

Charles S. Grover, of Boston, Mass. (Richard F. Walker and Roberts, Cushman & Grover, all of Boston, Mass., on the brief), for appellees.

Before MAGRUDER, GOODRICH (by special assignment) and WOODBURY, Circuit Judges.

GOODRICH, Circuit Judge.

This is the second appeal by the defendant in an infringement suit brought by a patent owner, Kamborian and his licensee. The subject-matter of the patents is a machine for performing the lasting operation on shoes, which is the process of stretching the leather or cloth of the upper over the insole and then connecting the edge of the upper to the insole. The description of the machine and the claims of the inventor are fully set forth in our opinion upon the first appeal reported, 1 Cir., 160 F.2d 461. They need not be repeated here. The inventor had won in the first trial in the District Court. We sent the case back for further consideration, for we were not clear from the findings which had been made whether the machine operated the way the inventor said it did, or whether its admitted success was due to something else. We posed several questions which we thought brought this issue into focus. See 160 F.2d 461, at page 465.

Upon the remand, the District Court heard witnesses, saw the machine operate and indeed operated it himself. With the additional learning thus acquired he set about to answer our questions. To the one which queried "Is there an upward pull upon the material when the machine is operated as described by Kamborian?" he replied: "I find as a fact that there is upward pull upon the material when the machine is operated as described by Kamborian." To the others which ran as follows: "Does it come from the helical ribs? Is there `positive' gripping action which exerts an upward pull? Is there an upward pull by crimping as distinguished from a positive grip? Is the pull sufficient to do what is necessary to last the material?" he gave affirmative replies.¹ These answers are unequivocal and clear. If they are allowed to stand they settle the case in the plaintiffs' favor.

Defendant claims that the findings cannot be supported. It says further that the District Court's statement 73 F.Supp. 550 "The pull provided by the combination of the helical ribs and the wiper, provided for in the patent, is sufficient to do the necessary continuous lasting claimed by the invention," demonstrates that the Court found that the machine operated in a way not described by the patent since the application did not say the wiper was a tensioning aid. If the defendant is in error in these views we must affirm the judgment below since we think the evidence is clear that the defendant's machine infringes.²

An examination of the records reveals evidence to support the fact conclusions reached in answer to the questions we asked upon remand. The demonstration by the plaintiffs' witness showed that the gripper rolls with the helical ribs lift up the leather before it comes in contact with the wiper. The fact that defendant's expert witness says in an affidavit that he did not observe the lift is not conclusive since it is the trier's of fact observation which is crucial. At the trial, moreover, while the plaintiffs' lawyer read the specifications and instructions set forth in the patent application, a skilled operator followed the instructions and turned out an acceptable job. The question involved is purely factual and Rule 52, Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c, is applicable. Kamborian is bound to show how his machine works but not why. He satisfied his burden when he showed the procedure whereby a shoe, not lasted when the journey through the machine began, comes out lasted in a manner described as "satisfactory" to "very good" in accordance with the directions in his patent. The physical or mechanical law which makes this machine operate in a certain way is interesting but is immaterial patentwise. White v. E. L. Bruce Co., 3 Cir., 1947, 162 F.2d 304; Eames v. Andrews, 1887, 122 U.S. 40, 7 S.Ct. 1073, 30 L.Ed. 1064; Diamond Rubber Co. v. Consolidated Rubber Tire Co., 1911, 220 U.S. 428, 435, 436, 31 S.Ct. 444, 55 L.Ed. 527. The research into pure science and the discovery of the physical laws which control the universe, may be more valuable socially than the process of invention. But it is the latter which is within the scope of the patent law system.

Our determination on whether the...