Burt v. Evory

delivered the opinion of the court.

This is a suit in equity brought in the Circuit Court of thq United States for the District of Massachusetts, by Alexander F. Evory, Alonzo Heston and J. B. Belcher against John "W. Burt and Fred. Packard, composing the firm of Burt & Packard, for the' alleged infringement of letters patent No. 59,375, issued to said Evory and Heston, November 6,1866, for an “improvement in boots and shoes.”

The bill filed December. 9, 1880, alleged -the issue of said letters patent to the plaintiffs Evory and Heston ; the assignment of a one-half interest therein to the plaintiff Belcher;

The defences pleaded in the answer were non-infringement; an anticipation of the plaintiffs’ invention by certain English pátents dated in 1856 and 1860, respectively; and want .of. novelty in the invention, because, long prior to the issue of plaintiffs’ patent, one Jacob O. Patten of Philadelphia had manufactured and sold shoes constructed on the same plan as described in that patent. Issue was joined, proofs were taken, and on the 3d of February, 1883, the Circuit Court entered a decree sustaining the plaintiffs’ patent, and adjudging that there had been an infringement of it by the defendants; and accordingly referred the case to á master for ah account of • profits, and for the determination of damages, if any, by reason of such infringement. Evory v. Burt, 15 Fed. Rep. 112 . October 13, 1884, the master filed his report, in which he found that the defendants had made and sold 41,297 pairs of shoes which infringed the plaintiffs’ -patent, but that, as they made no difference in price between shoes, containing the invention of the plaintiffs and those without it, they therefore made no profit from such infringement; that Belcher was the only one of the plaintiffs who was engaged in making or selling shoes,, and, as he made and sold less than 1000 shoes containing the invention in the patent, he was not damaged by. reason of defendants’ infringement; but that, as-the evidence showed that the plaintiffs had an established royalty of three cents, a'pair, for shoes made under that patent, and had issued licenses and sold stamps to persons desiring to use their patent, the licensees paying such royalty, the defendants should pay the plaintiffs that royalty on the number of shoes made by .

The material parts of the specification of the plaintiffs-patent and the' drawings are as follows: “ Our said invention consists-in a novel mode of constructing shoes and gaiters, whereby the ordinary elastic goring at the sides and the

In construing this patent the court below followed, the decision of the Circuit Court of the United States for the District of Connecticut (Judge Shipman) in Evory v. Candee, 2 Fed. Rep. 542 ; and seemed to assume that no question was presented here touching its validity. After referring to the fact that the patent had been held valid in Evory v. Candee, supra, the court said : “ Its validity is not now assailed, unless a wide construction is given, to the claim; and this, as is most usual, is the difficult point.”

The. assignments of error are seven in number; but in the view we take of the case it is necessary to examine only the first three of them, which are, that the court erred (1) in holding that the patent is valid; (2) in holding that,-in view of the antecedent state of the art, the patent had been infringed by the defendants; and (3) in construing t'he patent.

These assignments may be properly considered together. In construing the patent it will be necessary to consider the state of the art when the application for it was made. The object sought to be accomplished was to make improvements upon ordinary shoes so that they would be water-tight and would exclude dirt. It is shown by the record that long prior to the time when the application for the patent was made there had been a number of efforts made' in the direction of accomplishing the same result. As early .as 1856, Stephen Norris, of England, received a patent there for “ improvements in the manufacture of boots and shoes and other coverings.for the human- feet;” and in 1860, Norris and Robert Rogers obtained another patent in England relating to the same subject matter, and intended to be an improvement upon the invention in the prior patent. These patents were broad in their claims, and were intended to coyer any device by which

In his specification to the patent of 1856, Norris says:-“My improvements consist in adapting to boots, shoes and other ■coverings for the human feet, gussets of novel and improved construction, in combination with ordinary fastenings, for the purpose of enabling boots, etc., to be readily adapted and secured to and detached from the feet, and at the same time preserved water-tight at. such parts when ■ necessary. The following are a few examples of the mode of adapting my said improvements to certain descriptions of boots, shoes and other coverings for the human feet. First, as regards ladies’ boots, I propose to employ-side gussets of cloth or leather, so combined with elastic material as that the said gussets shall always be preserved flat, instead of wrinkling or overlapping,, as heretofore. Another mode is to secure folding side-', gussets and fastenings, composed either by interlacing into two rows of hooks strips of elastic or eyelets. The openings for the gussets I propose to make at each side of the boot, and to extend it from the top in an ornamental direction, either towards the toe of the boot or the sole thereof, or towards the heel. And as regards gentlemen’s boots and other, similar coverings, I propose, in manufacturing boots known and distinguished as Bluchers, to form the side seams thereof, or close the ‘ fore ’ and ‘ back ’ parts, somewhat after the manner of Wellington boots, so as to resemble the same when on the feet, and to enable Blucher boots to be more readily put on and taken off than heretofore, by employing the aforesaid gussets in’ combination with boots of the above description. In order to explain my said invention ás completely as possible, I now proceed to describe' the "best means I am acquainted with for carrying the same into practical effect, reference being had to the illustrative drawings hereunto annexed, and to the numeral figures and letters of reference marked thereon respectively, as follows.” Then follows the description of the drawings relating to the patent, and, in conclusion, the sped

In the patent of 1860 some minor changes were made, in the shape of several of the parts composing the boot or shoe,, but the object of the invention remained the same, namely, to make the boots and shoes to which it related water-tight and capable of excluding dirt, etc.

An examination of the drawings accompanying the applications for those patents shows that several of their, shoes •differ very little, if any, in their essential features from those manufactured under tbe Evory and Heston patent. The shoes under the English patent, as do those under the Evóry and Heston patent,, consist of quarters, the vamp, and a folding gusset or gore flap uniting the vamp and the quarters. It is contended on behalf of the appéllées, and the testimony of their expert, Mr. Brevoort, is to the same effect, that the material point of difference between their shoe- and the Norris shoe is, that in the latter the gusset or gore flap folds in -such a manner that it lies within the shoe proper next to the foot, while in their shoe the gore or gusset folds outside of the shoe, thus rendering their shoe more comfortable to the foot and

On the 7th of March, 1865, Samuel Babbit of Kokomo, Indiana, obtained a patent, No. 46,622, for án “ improvement in gaiter boots.” In his specification Babbit says: “ The object of this invention is to dispense' with the use of the ordinary gore or elastic webbing in the manufacture of gaiter boots, and at the same time so construct the shoe as that the purposes of such webbing shall be subserved. To this end the invention consists in forming that part of the shoe which covers the ankle with an extension which enlarges the opening to such a degree as to permit the foot to be readily inserted, and which, after the shoe is on the foot, is folded and buckled or fastened against the ankle after the manner of a flap, and this shoe is made without the formation of a joint and is perfectly water-tight.” Babbit’s shoe had the quarters extended at the heel about one-half the width of the shoe at the ankle, thus-enlarging the opening in the top of the shoe through which the foot is inserted to an extent commensurate Avith such extension. When the shoe was on the foot those elongated, quarters were folded against the sidq of the shoe and buttoned to it, and the shoe was thus rendered water-tight clear to the top.

• Another patent, No. 49,076, for the same sort of an invention, was granted to DaAud Brown and William S. Wooton, of Kokomo, Indiana, on the 1st of August, 1865. That invention is thus described in the specification: “ The- present

Such was the state of the art when Evory and Heston made their application for the patent in suit. Let us now carefully examine the Evory and Heston patent to see what patentable improvements are embraced by it. In the first part of the specification it would seem that they were seeking á patent for a mode of constructing a shoe, for they say: “ Our said invention consists in a novel mode of constructing shoes and gaiters,” etc. And in another part of their specification' they say; “ Our mode of construction is an improvement upon ” the Babbit patent, etc. But the concluding part of their specification would seem to negative the idea that they Were claiming a patent for a mode of construction, and not for a mamifaetured article; for they say; What we do claim as. our invention and desire to secure by letters patent is a shoe when constructed with an expansion-gore flap,!’ etc. In the brief of counsel for appellees it is conceded that the patént is for a- shoe, and not for a mode of constructing it.' Counsel says, after quoting the concluding paragraph of the specification :. “ This is a claim for a shoe having on each side an expangion-gore flap,” etc. . . '

■ It is well settled that not every improvement in an article is patentable. The test is that the improvement must be the product of an original conception. Pearce v. Mulford, 102 U. S. 112 , 118; Slawson v. Grand Street Railroad, 107 U. S. 649 ; Munson v. New York City, 124 U. S. 601 , and many other cases. And a mere carrying forward or more extended, application of an original idea — a mere improvement in •degree —is not invention. In Smith v. Nichols, 21 Wall. 112 , 118, 119, Mr. Justice Strong, .delivering the opinion of the court, said: ‘‘ A patentablé invention is a mental result. It must be new and shown to be of practical utility. Everything within the domain of the conception belongs to him who conceived it. The machine, process, or product is but its material reflex and embodiment. A new idea ■ may be in-grafted upon an old invention, be distinct from the conception which preceded it, and be an improvement. In such case it is patentable. The prior patentee cannot use it without the consent of the improver, and the latter cannot use the original invention without the consent of the former. Bufa mere carrying forward or new or more extended application of' the original thought, a change only in form, proportions or degree, the substitution of equivalents, doing substantially the same- thing in the same way, by substantially the same means,

Neither is it invention to combine old devices into- a new article without producing any new mode of operation. Stimpson v. Wo odman, 10 Wall. 117 ; Heald v. Rice, 104 U. S. 737 ; Hall v. Macneale, 107 U. S. 90 .

In the recent case of Hill v. Wooster, decided January 13 of this year, 132 U. S. 693 , 700, it is said: “This court, however, has repeatedly held that, under the Constitution and the acts of Congress, a person,' to be entitled to a patent, must have invented or discovered some new and useful art, machine, rhanufacture or composition of matter, or some new and useful improvement thereof, and that it is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it ¿hall not have been before known, and that it-shall be useful, but if must, under the Constitution and the statute,' amount to an invention or discovery; ’ ” citing a long list of authorities.

We are of the opinion that the patent in suit does not meet the requirements of the rules deduced from the decisions to which we have referred. We do not think there is any patentable invention in if; but, on the contrary, that it is merely a carrying forward of the original idea of the earlier patents on the same subject — simply, a change in form and arrangement of the constituent parts of the shoe, or an improvement in degree only.

For these reasons the decree of the court below is reversed, with a direction to dismiss the bill.