Wonder Mfg. Co. v. Block

• Decision Date: 06 May 1918
• Docket Number: 3118.
• Parties: WONDER MFG. CO. v. BLOCK et al.
• Court: U.S. Court of Appeals — Ninth Circuit

249 F. 748

WONDER MFG. CO. v. BLOCK et al.

No. 3118.

United States Court of Appeals, Ninth Circuit.

May 6, 1918

Wm. A Smith, of San Francisco, Cal., and James Love Hopkins, of St Louis, Mo. (N. A. Acker, of San Francisco, Cal., of counsel) for appellees.

Before GILBERT, ROSS, and HUNT, Circuit Judges.

GILBERT Circuit Judge.

This is an appeal from a decree of injunction and an order directing an account of profits and damages for infringement of three trade-marks and four patents, all issued to Alexander Block and all relating to insoles for shoes. The trade-marks are the word 'Wizard,' certificate No. 110,976, issued June 20, 1916, and the technical trade-marks, 'Arch Builder' and 'Heel Leveler.'

We think that the court below properly disposed of all questions which arise in connection with the use of the trade-marks. The word 'Wonder,' upon goods identical in appearance with the plaintiff's goods, conveys the same idea as does the word 'Wizard,' and its use is an infringement. National Biscuit Co. v. Baker (C.C.) 95 F. 135; Florence Mfg. Co. v. J. C. Dowd & Co., 178 F. 73, 101 C.C.A. 565; Aluminum Cooking U. Co. v. National Aluminum Works (D.C.) 226 F. 815; Daniel O'Donnell v. Riscal Mfg. Co. (D.C.) 228 F. 127. And the terms 'Arch Builder' and 'Heel Leveler,' as used by the plaintiffs, are susceptible of exclusive appropriation, since they are used in a secondary sense. The primary meaning of 'arch builder' is one who builds arches. No suggestion is conveyed that the arch referred to is the arch of the foot. The primary meaning of 'heel leveler' is perhaps more obscure, but it is more suggestive of the shoemaker's trade than that of the chiropodist. It is only in its application to the plaintiffs' device that its significance becomes apparent.

It is said that the decree of the court below as to infringement of patent No. 1,043,058, for an arch support, issued November 5, 1912, should be modified, so as to permit the use by the defendant of the arch support shown in plaintiff's Exhibit 5; the contention being that, in view of the limitations placed upon the scope of plaintiff's patent by the proceedings in the Patent Office and the language of the claim, which covers 'a plurality of overlapping pockets,' etc., the plaintiffs should be limited to the feature which distinguishes that combination from the prior art, to wit, the overlapping pockets, and, inasmuch as Exhibit 5 shows no overlapping pockets, its use is not an infringement. The contention cannot be considered on this appeal. The decree contains no finding that Exhibit 5 infringes the plaintiffs' patent. It finds only that the defendant has infringed the claim of the plaintiffs' patent. It is not disputed that plaintiffs' Exhibit 3 presents a device which does infringe the patent. This court can consider only the question whether the court below erred in finding that there was infringement, and on the appeal from an interlocutory injunction in a patent case an appellate court will go no further than to ascertain whether or not the court below abused discretion in granting the injunction. Kings County Raisin & Fruit Co. v. United States Consol. S.R. Co., 182 F. 59, 104 C.C.A. 499; Blount v. Societe Anonyme, etc., 53 F. 98, 3 C.C.A. 455; Consolidated Rubber Tire Co. v. Diamond Rubber Co., 157 F. 677, 85 C.C.A. 349; Interurban Ry. & T. Co. v. Westinghouse E. & Mfg. Co., 186 F. 166, 108 C.C.A. 298.

The defendant admits its infringement of patent No. 1,191,655, issued July 18, 1916, for 'combined heel and arch support,' and abandons its appeal from the decree as to that patent.

We are of the opinion that the defendant has not infringed letters patent No. 1,127,349, issued February 2, 1915, for a 'support for the anterior metatarsal arch of the foot. ' The patent has two claims. The first is for the combination of 'a flexible insole having a portion located beneath the anterior metatarsal arch of the foot of the wearer, and means for adjusting the thickness of the insole at one or more points along the line of said anterior metatarsal arch. ' The patent to B. Nathan, for an inner sole, December 17, 1907, may be referred to as showing the prior art. Nathan's inner sole contains a continuous transverse pocket beneath the metatarsal arch, wider at the outer-edges than at the center, and removable wedge-shaped fitting members for the pockets. The plaintiffs contend that the Nathan patent is to be disregarded, for the reason that it was not set up in the answer or by notice. But that is no objection to its use as evidence of the state of the art, and to aid in the construction of Block's claim. Grier v. Wilt, 120 U.S. 412, 429, 7 Sup.Ct. 718, 30 L.Ed. 712; Brown v. Piper, 91 U.S. 37, 41, 23 L.Ed. 200.

It is contended, also, that the Nathan patent is without probative value, for the reason that it is but a paper patent, and that there is no evidence that the invention has ever been used. But that fact does not affect its value as evidence upon the question of infringement. Universal Winding Co. v Willimantic Co. (C.C.) 82 F. 228, affirmed, 92 F. 391, 34 C.C.A. 415; Packard v. Lacing Stud Co., 70 F. 66, 16 C.C.A. 639; E. L. Watrous Mfg. Co. v. American Hardware Mfg. Co. (C.C.) 161 F. 362. The Nathan patent presents all the features of claim 1 of the Block patent. It...