Williams Mfg. Co. v. United Shoe Mach. Corporation

• Citation: 121 F.2d 273
• Decision Date: 27 June 1941
• Docket Number: No. 8438.,8438.
• Parties: WILLIAMS MFG. CO. v. UNITED SHOE MACH. CORPORATION.
• Court: United States Courts of Appeals. United States Court of Appeals (6th Circuit)

121 F.2d 273 (1941)

WILLIAMS MFG. CO. v. UNITED SHOE MACH. CORPORATION.

No. 8438.

Circuit Court of Appeals, Sixth Circuit.

June 27, 1941.

H. A. Toulmin, Jr., of Dayton, Ohio (Dolle, O'Donnell & Cash, of Cincinnati, Ohio, Toulmin & Toulmin, of Dayton, Ohio, James B. O'Donnell, of Cincinnati, Ohio, and H. A. Toulmin, H. A. Toulmin, Jr., and Rowan A. Greer, all of Dayton, Ohio, on the brief), for appellant.

Harrison F. Lyman, of Boston, Mass. (Harrison F. Lyman, Charles E. Hammett, Jr., and Fish, Richardson & Neave, all of Boston, Mass., on the brief), for appellee.

Before SIMONS, HAMILTON, and MARTIN, Circuit Judges.

SIMONS, Circuit Judge.

Certain of the claims of two patents in the shoe-making art were held below to be valid and infringed by a number of machines purchased abroad by the appellant and used by it in the United States. The appellant assails the decree in respect both to its adjudication of validity and infringement.

The patents in suit are McFeely, No. 1,558,737, for a lasting machine, granted October 27, 1925, and Hoyt, No. 1,508,394, for a fastening inserting machine, granted September 16, 1924. Both inventions concern themselves with improvements in machines for lasting heel seats of shoes of various shapes and sizes. Of the two the McFeely combination is the more comprehensive, clearly the more important in the development of the art, and its adjudication more vital to the determination of the controversy, since Hoyt is concerned with a relatively minor improvement in machines of the type embodied in the McFeely invention.

In the McFeely machine, as it is described in the specification and the evidence, and as demonstrated, the shoe upper, with its lining and counter assembled on a last, is placed on a pivoted jack with the bottom uppermost. An insole has been tacked to the last and the upstanding edges of the upper at the toe and shank of the shoe have already been flattened down and attached to the insole. The heel seat lasting, which is to be done on the machine, involves conforming the upper materials snugly to the contour of the heel end of the last by an operation called "wiping," which consists of flattening the marginal portions of the upper, counter and lining down on the insole and then fastening them in lasted position. To accomplish this the jack is swung toward the machine into a "heel band" and under what is known as a "hold-down," which is a vertical movable member that governs the vertical position of the shoe in the machine. The machine is placed in motion by tripping a treadle, and power operations take place in following sequence. The jack is pulled farther into the machine to seat the shoe snugly against the heel band, the shoe bottom is pressed against the hold-down so that the last and shoe are forced downwardly to place the insole below the plane of elements called "wipers." The wipers are then automatically advanced to close over the bottom of the last to break down the upstanding edges of the upper, counter and lining over the insole surface. The wipers are then retracted and the first wipe is complete. The jack and last are then pulled back tighter into the heel band and forced upward more firmly against the hold-down to position the shoe with the surface of its insole substantially in the plane of the wipers. These are now caused to again advance and close for a second wipe which is called "ironing." Retraction of the wipers again follows, and upon their final advance they confine the lasting allowance against the insole while tacks are automatically driven through the materials to hold them in place on the insole. The heel band then opens, the jack is lowered, the wipers and tackers are withdrawn and the jack swings out of the machine so that the operator may remove the shoe and present another assembly for lasting.

While these operations require extended description the entire sequence is completed in the fraction of a second and too swiftly for the eye to follow. It is said that the heel seat lasting operation is a delicate and important one, and that there must be an accurate fit so that the heel of the shoe may subsequently be applied without any looseness in the upper material. It is to attain this objective that there must be the first wiping operation with the wipers somewhat above the plane of the insole and the second wiping or ironing operation in substantially the same plane.

It is contended by the appellant that essentially all of the elements of the McFeely patent are old, that they are combined and function in manner taught by the prior art, and that what the inventor claimed as improvements were merely details in a complicated machine, the equivalents of which have been used in the same way for the last sixty years. It points to the patent to Copeland, No. 244,714, as the basic patent in a crowded art, and as disclosing the first machine for automatically performing heel seat lasting by wiping the leather of the heel and toe across the bottom of the last while tacks are inserted to hold the leather in position after it has been wiped. It traces the development of the art, since Copeland, through the patent to Lombard, No. 524,445, as one describing a mechanism for automatically adjusting the position of wipers to varying contours with means for adjusting the machine for different sizes of shoes; through the patent to Eaton, No. 596,323, which describes a machine of the class known as "bed lasters" wherein tacking is performed by hand instead of carrying the tackers on the wipers; through the patent to Pym, No. 1,368,868, another "bed lasting" machine without automatic tackers, and urges that the bed lasters do everything that the patent in suit performs and include means for a predetermined adjustment of the wipers; that the patent to Plant, No. 958,280, discloses in precise detail the means of the patent in suit for adjustably supporting the heel band, and that Brock, No. 1,188,616, demonstrates that it is old to provide means for applying pressure to the back and sides of the heel band for adjustment purposes. Principally, however, is reliance placed by the appellant upon an earlier patent to McFeely, No. 1,129,881. This is claimed to be a complete anticipation in all essential elements, in manner of their functioning, and in results. It is now expired and the appellant states the fundamental issue here to be whether the appellee may now extend its monopoly by substituting in an old construction equivalent mechanical details also old in the art and so to get a new patent for another 17 years. Its own machines, the appellant urges, do not infringe because they follow the plaintiff's own expired McFeely and Pym patents, and likewise because they are fundamentally different in construction and operation from the McFeely patent in suit.

The origin of the defendant's machines, the circumstances of their appearance in this country, and the efforts made to avoid the charge of infringement after notice, are illuminating and raise inferences in respect to infringement which may not be dispelled except upon clear and convincing evidence of fundamental differences between them and that disclosed in the second McFeely patent. The defendant purchased four "Calzera" automatic machines from Moenus Machinen-fabrik in Frankfort, Germany. It seems reasonably clear, from the general appearance of the accused machines, and as they are depicted and described in the Moenus catalog, and from the evidence of the defendant's witness Kath, a mechanical engineer engaged on patent work for the Moenus Company who came from Germany to help in the preparation of the trial and whose duty it was to study shoe machinery patents including those granted by United States, and who saw one of the McFeely machines in Germany and was familiar with the patent drawings and specifications, that the Moenus machines are copies of the commercial construction of the plaintiff. They followed this construction even in minor detail not shown in the patent, and the improved results claimed for it by the inventor over machines of the prior art are enthusiastically proclaimed in the Moenus catalog. After notice of infringement was served upon the appellant, there were removed from its machines certain wing screws, clips and a form of adjustable stop, some upon the advice of counsel and all in the hope clearly indicated that the changes might avoid a finding of infringement.

These implications do not, of course, either preclude or excuse us from detailed consideration of alleged differences between the accused devices and the disclosures and claims of the patent, or of their identity. Such consideration as we are able to give to the various elements and their function in tracing them through the maze of drawings and photographs that have been submitted to our inspection, requires a holding of infringement if the claims be valid. The wipers and tackers of the accused structures are fixedly connected as in the patent. While the tacking in the infringing devices is through the wipers, whereas McFeely disclosed tacking at a predetermined distance beyond the edge of the wipers, his claims are without limitation in this respect and the choice is but between known expedients in the art, nevertheless it is but another indication of copying that the assailed machines follow the commercial practice of the plaintiff rather than the preferred method disclosed by the inventor. The fixed connection between wipers and tackers is, however, present. Although in the defendant's machines the wipers and tackers are bolted to carrier plates, these are within the language of claims 6 and 85 printed in the margin,¹ as "tacking units co-operating with the wiper plates and having means to maintain them in predetermined relation to the wiper plates in all positions of adjustment," and "tackers connected to the wipers for preliminary adjustment with them and for power effected movement with the wipers."

Claims...