WILLIAMS
'V.
GOODYEAR METALLIC RUBBER S.a;OE !7.
CO.
245 .
WILLIAMS et al. 1.
GOODYEAR METALLIC RUBBER SHOE CO.
(Circuit Court, D. Connecticut. February 6,18112.) PATENTS FOR INVENTIONS-INVENTION-RUBBER SHOES.
Letters patent No. 131,201, issued September 10, 1872, to Isaac F. Williams, for a rubber overshoe with bellows flaps,are void for want of invention.
2. SillE.
In view of the prior state of the art, as shown by the English patent to. Stephen Norris, and the Evory & Heston shoes, (American patent No. 59,375, issued November 6, 1866,) the conception of a bellows flap in a rubber overshoe, for the purgenius. pose of making it water-tight, was not the exercise of
3. SillE-MECHANICAL ADAPTATION.
The adaptation of the bellows flap to the arctio overshoe by running the hinge of the flap forward to a point near the arch of the shank, in order to give sufliciell,t room for the insertion of the shoe-clad foot, thus placing the hinge almost at right angles to the draft line of the shoe, did not require inventive faculty.
4. SillE.
Nor did it require inventive faculty to abandon the use of separate.gores, and make. the flap integral with the vamp and the quarter, since experiment would promptly show that in inserting the shoe-clad foot the strain would be too great for the seams, and tile substitution of an integral extension for a gore would naturally occur to the shoemaker. The. !'Ipplicationforletters patent No. 166,669, issued August 10, 1875, to Isaac .F. Williams, having been made for an improved rubber boot distinguished from a shoe; and the whole course of the proceedings in the patent-oflice having proceeded on thlilt.thllory, the inventor is estopped toc1lJ.im that the p!'ltentCQvers a, rubber
-50' ·S:um-EXTENT OF· CLAIM-ESTOPPEL.
In Equity. Bill by ISMC F. Williams andthe National RubberCompany against the Goodyear Metallic Rubber Shoe Company for ment of patents. Bill dismissed. . . WilmarthH. Thurston and Charles E. MitcheU, for plaintiffs. John K. Beach andOharles R. IngerBOU, for defendant. SHIPMAN, District Judge. This is a bill in equity founded upon the .alleged infringement by the defendant of letters patent No. 131,201, dated September 10, 1872, for an improved cloth and rubber gaiter ()ver· shoe, and letters patent No. 166;669, dated August 10, 1875, for ari improvement in rubber boots.' Each patent was granted to Isaac F. Williams, the present owner and one of the plaintiffs. The National Rubber Company is the exclusive licensee under each patent. No. 131,201 was an improvement upon the well-known cloth and rubbel' shoe known as the "arctic," and was designed to render the shoe water-proof. The specificatioIl and drawings of the patent represented that it consisted in a peculiar construction of double water-proofed, jointed flaps, which were extensions of the vamp and quarter, and integral therewith, and that they were "so arranged that the flap tongue, passing over the instep, will draw equally upon the sides of the quarter when buckled to the foot." The claim of the patent was as follows: .. Asa new article of manufacture, a cloth and rubber gaiter overshoe having a double water-proof flap, composed of extensions of the vamp and quarter, folded on each side of the instep, and provided with a buckle and flap tongue, which are arranged to draw :llqually on each side of the quarter across :the iostep, SU91ltantially as described."· In May, 1880, two suits in equity against L. Candee & by· present plaintiffs) upon the patents now in controversy, and the :other
246.
EEDERAL. REPORTER,
vol. 49.
by Evory & Heston and the National Rubber Company, upon letters patent No. 59,375, dated November 6, 1866, granted .toEvory & Heston for an improved shoe,-were tried in this court. ,The respective opinions are in 2 Fed. Rep. 683 and 542. It wasclliiined that each patent . was being infringed by the defendants in the manufacture of the same shoe. In the suit upon the Williams patent the Evory & Heston patent was not introduced in evidence. The suit was originally defended, not extension was not a patentable novupon the ground that tbe elty, iftbe proper, limited construction should be given to the patent, but upon the ground that in view of the Stephen Norris English patent the Williams invention was limited to the "cut" of vamp and of ql1arter, and of their extension'into a flap tongue, which was shown in the draWings, and that the defendant's shoes had a different "cut," which was a union of the arctic quarter and of an extension of the vamp, which was the Norris gore, but, if the Williams patent should receive a broad construction, it was anticipated by the Norris shoe. The plaintiff's reply was that this shOe was not a water-tight shoe, but had necessarily a leak-hole at the apex or the gore, and that at the union of the vamp, quarter,'and gore there was no turning of the water by a fold of the leather, ancitherefore Williams was a pioneer in making a water-proof overshoe by meaDs·()f overlapping flaps. The court was of opinion that the "imllPOll the arctic shoe co.nsisted in overlapping the vamp and beneath the rubber {Qxing, and extending the vamp and the quarter Boas to form bellows-like,' 'water-excluding flaps, folded on each side of the instep, and buckled together Over the. instep;" and, further, that "the gist of the Williams inyention consisted in such a cut of vamp and quarter that the' two ovel'1ll.pped or folde(l upon each other, and lrak-hole at the junction of the Norris gor.a with vamp and and that was" not to he limited to the preqise.Mape of the 'cut' of each part of the extension which is shown in but it covt:rs,Rlso, other forms of cut which are like the pattern shown and described, and which accomplish tbe.same result.» In this case, .the defenuant relied upon the Evory & Heston patent, under which, as a licensee, it claimed to have made theinfriQgingshoes, and, defended upon the ground that the shoe described, the. patent wall an of the Williams invention, and, if not, that,. iQ"view of the state, of the art at the date of the Williams itwas not apatElntable invention. While the complainants were taking evidence in reply to .the delimdant's case, the latter offered theN9rris patent pf 1856 OO,sbow the state of the art, but no oral testiOlony in regard to said pntept. In the case of .BlLrt v. Evory, 133 U. S. 349, 10 Sup. Ct. Rep. 394, the suprt:me court held that, in view of the Norris shoe and other shoes which were in existence at the date orthe Ev,OI')':I&Ht>stonapplication, the sboe therein d'escribed was not a }>atentabl4dnvention·. This shoe, was made of leather, and was into'C()vera stocking-clad foot. .It had an expansion gore flap made of a separate piece of leather, the exterrtal fold of which \'Vas attached to and the internal lold of which was attached and in front toa:rtd in rear oftheVl1mp. The apex of the gore was directly in front
WILLIAMS V.GOODYEAR METALLIC RUJml1:R SHOE CO.
247
of the ankle line. The vamp and qua'rteroverlapped at the point of junction for the purpose of holding each other together, and there was no leak-hole at the apex of the gore. It is obvious that the Evory & Heston shoe could not be used without alteration as an overshoe for a shoe-clad foot. So as the hinge of the flaps is in a line with the aukle line, there will not be room enough at the in'Step to receive a shoe, with its protruding and rigid heel. A mere enlargement of the flaps at that point will not make an acceptable overshoe. The location of the flaps must be changed. A shoe, in order to be useful, must bea substantial improvement upon the Evory & Heston shoe. To that end the overshoe would naturally be a brogan, andauimprovementupon the arctic, in which the quarter overlapped and buckled upon the instep over a large vamp, which could be turned· back to receive the shoe-clad foot. In defining and explaining the nature of ,the Williams invention, tlie patentee and one oftbe plaintiffs' experts: substantially abandoned the position in the Chndt>6 Case, that the gist· of in that overlapping of the vamp and quarter, (which, in the Williams shoe WIlS below the foxing) whereby the Norri91eak-hole was obviated. Their position ·isthat the im provements in: the .Ioeationof the flaps, and the principle upon which they were constructed, constituted the inven'tion,and made for the first time a water-tigJ1t cloth arid rubber overshoe. His truly said that the line on the overshoe extending from the instep to the heel is the one upon which the overshoe must have capacity to open or extend. This line is called the "draft and by the shoemakers is called the "line of the instep. measure."Furthermore, after the Qvershoe.has been drawn over the inner shoe, the opening, which has been extended for this purpose, must be contractedjand the heel ,portion of the overshoe must be drawn up to, and held firmly against, the heel of inner shoe. In the opinion of the plaintiffs, the Williams invention consh.ted in abandoning the gore or gusset idea,and in extending orprolQuging the vamp of the arctic overshoe, and folding it so that the line, or hinge of the fold would be substantially at right angles to the draft line. and that the apex of the fold would, be in a line with the forward edge of the extended quarter,and the two would meet at the edge.of the foxing. Mr. Williams testifies that in his experiments he tried separate gores or gussets, and was forced to abandon them, and make his flaps integral with the vamp and quarter, because in no other way could he make them resist the strain which was brought upon the seams of the gussets at the apex of the gore. He also says that the construction of the arctic was such that it was liable to tear at ,the point of contact of quarter and, foxing, aHd sometimes the opening of the shoe was so small that it would,give way at that point, and that to prevent this liability he eftended the vamp, which folded upon itself, so that it joined the qnarter at its forward line; the apex or bottom of the fold meeting the forward edge of the qnarter. This apex was about on a line with the forward edge of the quarter of the old arctic. The question in the case is that ofpateotable' improvement, in view of the EViory& Heston shoe and the arctic overshoe. In other words, bellowsfl.aps being kmowo; and in:1eather,and aO'aro-
248
FEDEaALaEPOaTEa,
ticnibber overshoe being well known, did it require invention to place the Williams bellows flaps upon a cloth and rubber brogan? The mere fact that the pre-existing devices were in leather is not important. There is much more force in the necessary differences between a flap in a shoe fora stocking-clad foot and, in an overshoe; and it is necessary to see whether these differences, in view of the existence of the arctic shoe, presented real difficulties, which required inventive genius to overcome. It is,said, in the technical language which is used in the case, that the patentee made a patentable departure frolD the pre-existing bellows flaps, whicliwere hinged- vertically upon .the ankle line, by locating his flaps so as .to expand the shoe on the: draft line of the overshoe, making the hinge line of the flaps practically at ,right angles to the draft line, and extending the hinge line below the' draft line l and that by this construetion strain is avoided-llR suflicientopeping for the insertion of the inner shoe is fUrnished, and when the flapsarll buckled across the instep the openingjs contracted. upon the draft line. The buckle and flap tongue of the arctic overshoedreweq iOIl' each side of the qqarter across the instep. -The shoe opened on and -below the draft lihei and was contracted ,on the same line. -." It opened between the vamp and the quarter, near the, sole, at the arch of the shank. Into such a· shoe the patentee desired to put bellows flaps. He had very little room for choice as to .the place where they were, to be pu-t. They must be placed so as to continue the opening on the draft line, and could be dsuooessfully plar.ed nowhere else. The hinge line of the flap IDustrun .forward to a poi.nt near the arch of -the shank in order to gi.ve sufficient rooin, and to be As matter of fact the direCabout at right angles with the draft tion Bud position ·of ,. the hinge line of the Willianis shoe were substantially.the saIDe as the direction and position of the opeBing between the vamp and quarter.inthe arctic shoe,except that in the latter the quarter overlapped the vam.p at the line of the foxing, near the sole. Unless the idea of putting expansible bellows flaps upon an arctic Qvershoe was the conception of .an inventive mind, the position and location of the flaps imd,the location of the hinge line were matters which do not rise to the dignity of invention, because they are within the scope ofthe skilled workman. In view of the Norris and the Evory & Heston shoes, of -which the public is presumed to have had knowledge, I do not think that the,conoeption of bellows flaps in a rubber overshoe was an inventive idea. The remaining point is that the patentee, after many experiments, as useless, and made his flaps integral with abandoned separate the vamp and quarter. The separate gore idea is the one which would first naturally occur to anyone when thinking of the way in which flaps could be made; but itoannot be safely contended that making the extensions oithe vamp integral with it, instead of by the use of gores, involved invention. Experiment would promptly show the inutility of separate gores, by reason of the strain that would come upon the seams and at the apex in the act of drawing the shoe upon the foot, but the substitution of an integral extension for a gore appears -to me to be a matter which wouldnatu.rally promptly occur to the shoemaker.
WILLIAMS V.,GOOl>YEU METALLIC RUBBER SHOE CO.
249
I place no importance upon the patent of June 4, 1867, which was for a folded enlargement of the leg of a boot, the folds being buckled together. Neither this device nor the Kilsheimer patent of May 10,1870, seems to me to have weight in the case. The Williams improvement approaches the border ,line of invention, and it is very likely that upon the testimony in the case it would have been generally held patentable by the circuit courts before the recent. decisions of the supreme court on the subject of invention. The tendency of those decisions is to confine patentability within narrower limits than formerly. They especially demand that a device which is an improvement upon a pre-existing ,one must, in order to be patentable, contain a new idea, and perform some new function, and not present changes of degree only, or simply "new or more extended applications of the original thought." Smithv. Nwhola, 21 Wall. 112; Burt v. Evory, 133U. S. 349, 10 Sup. Ct. Rep. 394. Patent No. 166,669, known in the cttse as the "Patent of 1875," is described in the specification as follows: "My improved boot consists, in fact, of an inner and an outer upper and a suitable sole, the inner upper being made to fit the last, and thrrefol'e requiring to be slit open from neal', thesol6 upward, while the outer upper is made much larger than the inner upper, and requires the s'urplus stock to be lapped and fastl:'ned in order to fit the boot closely to the ankle and leg. My invention, further, consists in a boot made with an overlapping leg section and an overlapping ankle section, the latter being provided with a so-called 'bellows flap;' formed of continuations of the front and rear uppers ; and my invention,still further, consists in a peculiar outline of the edge of the oyerlapping sllction,at a point adjacelltto the ankle." Theelaims, of which the first only is said to have been infringed, are as follows: ' "(1) Theimproved boot eomposed of textile fabric and rubber, having an Inner uppercut to fit the last or foot, and an outer upper cut larger than the inner upper, with the surplus' portion thereof overlapped, SUbstantially as described. (2) The improved boot, having an open leg section and t;he overlapping ankle sectiml, prOVided with the bellows flap, formed of continuations of tile front and rear uppers, substantially described. (3) In a boot, the overlapping leg and ankle section, provided with the recess, D, at the edge between the said sections, substantially as described." The flaps in the shoe of 1872 were lined with the same thick material which was used inside the shoe, and were therefore clumsy. 'l'his method oflining the flaps was caused by the manner in which'the shoe was made. The inside lining was cut to conform to the outside cloth upper. The two were placed together, "built up," and a finished upper was formed before placing it upon the last. After the patent of 1875 the plaintiffs lined the flaps with a thin material, which they were enabiM to do by making the shoes in the following way: The inner lining is fitted to the last. The outer upper is cut larger than the inner, and the united vamp and quarter, which is divided attheb,eel, are put together upon the inner lining, and, except the bellows flaps, ,are secured thereto. The shoe is vulcanized, and the inner
150
DDERAL BEPORTEB,
sUtted to permit the removal of the shoe from the last. The old arctic waS also made by flrstfitting tbeliningto the last, and then "building up" tbeouter upper upon it, but the vamp and quarter were put on the imier lining separately. Herein is the distinction between the metbod. of tbe shoe of 1875 and the arctic method. In the 1875 shoe the vamp and quarter are united together before being placed upon the inner lining. In the Candee Case the novelty and patentability of the 1875 patent were not denied. In this case both are denied. The first .point which the defendant makes is that the history of thapatent,'811 it progressedtbrough the patent-office,shows that it was granted for a boot as distinguished from a shoe. The argument of counsel is n6t that the first claim, taken by itself, showed that the improvemelit .was for a boot as distinguished from a shoe, or that a patent for an imprO\7edboot is necessarily to be construed as including only a covering for the foot and leg, any more than that a patent for an improved table-spOon excludes the like improvement in a tea-spoon; but the contention is tbat the application was presented and urged before the patentoffice for, an.improved boot, as distil}guished from a shoe, and that under the appearanoe of obtaining a patent for a boot only the one now in question was obtainl'ld, and is presented to the public as covering a thing whic4 was subject .of the application. It oa0110t be denied that the orlglnlliapplicathm Jar this patent was for a leg extension composed of rubbel,"·andcloth in overlapping sections. combined with a foot, (all the drawings but one baving a foot with bellows flaps,) and Ihat the claim wbichwasasked for was for a rubber and cloth foot. but not necessarily a "bellows flap" foot, and a 'leg constructed in overlapping; sections. An improved rubQer and cloth boot, the improvement consisting in a leg constructed in overlapping sections, was the only subject of the appli· cation..Tha first amendment of the specification, and all the correspondenoe,on both sides, aud the rejections of the application, both by the examiner and. tbe examiner in chief, proceed unmistakably upon the idea that a patent for a leg section in combinalion with a foot was asked for. . There was no suggestion of novelty in the foot portion. On the other hand, the states that the bellows flaps in the foot portion are to be made in accordance with the inventor's various palents of 1872. Finally, the decision of the acting sioner says: "1 am not prepared to Bay that no invention may be involved in extending the shoe to form a boot retaining the sallie manner of so as to fOl'IIl water-tight leg. While the point at which the shoe ill its upwatd extension ceases to be II shoe and bpcomes 11 boot may not be ai.ways easytointlicattl, yet Doone fails to recognize these articles. and distin.guish the one from the other·. I think, however, that the specification and claim are so broa.d thIs case as to include what hasalrjlady been shown in the art." . . .This Janguag8 shows that the head of the office supposed that he was dealing with an application for a boot, as distinguished from and as an improvement upon a shoe. It would be useless to go over this history' in
WILLIAMS .,. G90DYEAR. METALLIORUBBER SHOE 00.
261
detail, for the sole subject of the application is everywhere manifest. The commissioner. having' rejected the' application .upon the ground that the claim was so broad as to be anticipated, the applicant further amended his specifica,tion.in the manner now presented in the patent as granted. Upon this amendment the examiner says that it is limited to specific features, and, as there is reason beHev.e some novel points do exist, he recommends that it be accepted for examination. The de· cision of the commissioner was to the effect that the applicant had asked for a broad claim for a boot as distinguished from a shoe, and that there might be particulars in the extension of the shoe upwards to form a boot which possessed invention. The applicant amended for the purpose of presenting a more limited claim for those particulars. If he had modified his proposed E1pecificationso as to clearly show that he had made and claimed an improvement in the method of constructing a lows.flap shoe, I am not prepared to say that such an amendment would be invalid. But not a word is said in the amended specification of clumsy bellows flaps, and the new way to avoid them. The new speci. fiqation, read in the light of the previous history, was apparently fOr specific features of the same com bination which had previously been asked for. Read in the light of the subsequent history of the patent, it can be seen that the applicant might then have had another purpose. The principle of estoppel has been frequently applied of late in the construe· tion of letters patent; and a patentee cannot, after obtaining a patent with a misty claim, abandon the express terms of his previous speciiications, which clearly specify and limit the invention, and assert that it is for a different and undisclosed thing. He cannot say that it relates to another invention than the one which he had originally represented, and a patent for which he had accepted. In this case the patentee applied from a shoe. The patentfor a patent upon a boot.8.R office said, "Perhaps you can have a narrow patentfor such an article." He amends his application without disclosing a change of subject, obtains his patent, and now claims that it covers an improvement in a shoe. That contention he is estopped from making. The bill is dismissed.
252
J'EDERAL 'REFOBTEB,
voL 49.
THE MAJOR WILLIAM H. TANTUM. 1 SHOE
et al. ". Low MOOR IRON CO. et ol.
(Circuit Oourt of .Appea't8,Second O(rcuU. December 14, 1891.) GIllNBIlAL AVERAGIll-VOLUNTARY STRANDING-BAVING OF LIFE.
, . Where the master of a vessel, which was dragging her anchor in a I!'ale and In danger of going sshore, slipped the cable, and voluntarily stranded her, in substan· ti,aUy the Bsme place, under the same conditions, and with the sallle result to ber cargo, as must necessarily have SOClD, from her dragging anchor, held no case of general average. 46 lI'ed. Rep. 125, WJ1rmecL
In Admiralty. Appeal from a decree of the district court of the United States for the southern district ofNew York, dismissing the libel of the libelant. Affirmed. ' The'schooner Major William H.Tnntum, loaded witb a cargo of iron, went for refuge inside the Delaware breakwater, September 8, 1889. The bad weather developed into the great storm of September, 1889, and the vessel gradually dragged her anchors, until the 10th, when some at4 o'clock in the afternoon but a of her anchor chains gave way, single one remained, and the vessel was drifting towards the beach, broadside on. In this situation, her master, fearing for the lives of those on board, determined to slip his cable and run ashore, head on. The cable was accordingly slipped, and the vessel, without canvas, paid off·'and went head on the beach,Mterwards turning broadside to the sea, and becoming a total loss. Part of the cargo wassa'led, and forwarded to its destination. The ship-owrierclaimed a general average, and brought thisstiit against the cargo-owner to recover $2,939.03, the amollntcl1arged against the cargo by the average adjusters. The .disti'icrcourt held that ,the act of the master in slipping his cable was done fotthepurpose of saving life, and with no other motive; and therefore. dismissed the libel: 46 'Fed. Rep. 125. The libelants thereupon pea)edto thiS' court. . . Wing, Shoudy & Putnam, for appellants. Sidney Chubb, for appellees. Before WALLACE and LACOMBE, Circuit Judges. PER CURIAM. At the time she slipped her cable, the Major William H. Tantum was on the eve, not of foundering in deep water, as her counsel contends. but of going ashore. Her hatches were not even started, she was making no water, 'and, at the rate at which she was drifting, all the indications were that she would, in a few minutes, ground on the beach, to leeward of her, broadside to the seas. The master slipped his cable, and thus hastened the end, not averting any imminent peril of foundering in deep water, selecting no more favorable locality for stranding, and, though she struck bow on, swinging afterwards broadside to the seas; 'Reported by Edward G. Benedict, Esq., of the New York bar.