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10 F.(20) 838 plaintiff; that one of these lamp sets was lined underwear and proceeded to make the on exhibition at a radio show held in Mad- horns for the seven crystal radio receiving ison Square Garden, New York City, in sets. One of these horns is Exhibit 4 and December, 1922; that three of these lamp another is Exhibit 14. The crystal radio sets sets are now on the floor of plaintiff's place as made were expensive, the one sold to the of business at No. 14 Greene street, New Peerless Light Company having been sold for York City."

$350, and this naturally restricted the sales, The defendant reserved the right to ob- as the set, arranged as it was on a large ject to the competency and pertinency of that pedestal, would only be purchased by one exhibit and similar exhibits as to reduction having large rooms and in a position to pay to practice, on every ground; whereupon the that sum. said Exhibit 4 for identification was received The horns made by Stevens were not anin evidence as Exhibit 4.

ticipations of the patent in suit, and I agree The date of the making, selling, and ex- with him that the horn he made in buckram hibiting of the horns like Exhibit 4 at a an entirely different thing from the time long prior to the making of the Man- horn described in the patent in suit. The nequin horn is established by such stipula- same may also be said of the sound amplifition, and the horn itself, being one of the ers made by Stevens of buckram or burlap, seven manufactured by the plaintiff at the and as to the horn which he sold to Betts & time stated, speaks for itself. In addition Betts, in September, 1923; that is, too late to which we have the testimony of the plain- to be considered for any purpose. The sheltiff and his witness Schwartz as to the manner lac horns presented by the defendant are of constructing the horns, that they were not anticipations of the patent in suit, nor do made of fleece cloth stiffened with glue, dex- they constitute prior art. They are not made trine, and water. We also have the plain- according to Heintze's British patent, No. tiff's testimony as to the purchase by him 14,032, because that does not disclose fleeceof the fleece-lined underwear to make the lined material, and they do not anticipate horn, and his receipt from Mr. Quint for the the patent in suit because they are not impayment therefor. We also have the tes- pregnated with nor are they subsequently timony of the restaurant keeper in whose coated, after baking, with a water paste. ovens the horns were baked, that is, dried, [2] The utility of the patented combination and the testimony of Mr. Friedman, the auc- cannot be denied by the defendant, which has tioneer, who was in the restaurant at the seen fit to adopt the precise thing patented. time and remembered seeing the horns Boyce v. Stewart-Warner Speedometer Corbrought in to be baked.

poration, 220 F. 118, 136 C. C. A. 72. While I do not think there was much pro- The patent in suit does not represent the bative force to the testimony of Friedman, substitution of one old and well-known mastill it fits in with the testimony of the oth- terial for another, but is for a new combinaer named witnesses, who I believe are tell- tion of materials, in which fleece-lined mateing the truth, notwithstanding some incon- rial, the properties and qualities of which for sistencies in the testimony of Schwartz. the purpose of horn construction had never [1] Prior use to invalidate a patent must before been known, was applied and adapted. antedate the invention of the patent in suit, [3] This is a new combination, even if the or it must have been more than two years elements are held to be old, by which a new before the date of filing the application for and useful result is produced, in that a horn, the patent. Tiffany v. Paper Products Co., the acoustical properties of which are as 253 F. 953, 165 C. C. A. 395.

good as any, is constructed without skilled Clearly, the use by the Mannequin Com- labor, expensive machines, or other equippany was not until the summer of 1923, ment being required, and the materials enwhereas the date of invention of the patent in tering into its combination are inexpensive. suit was undoubtedly as early as December In addition, there is a uniformity of product 31, 1922. The plaintiff had been engaged in the long run, and it possesses the ability in the business of manufacturing floor oil- to retain its form and tone qualities under all cloth, and from the knowledge and experi- conditions which it would meet in use. These ence gained while in that business he tried are indicia of invention. Dalton v. Nelson, first to make a horn of the proper design out Fed. Cas. No. 3549, 13 Blatchf. 357; George of burlap impregnated with glue and dex- Frost Co. v. Samstag, 180 F. 739, 105 C. trine, but this proved to be unsatisfactory, C. A. 37. and it was then that he purchased the fleece- [4] The defendant contends that the disclosure of the patent is not sufficiently com- the right to plead the general issue, and, havplete with reference to the composition of ing given notice in writing to the plaintiff or the water soluble filler, but it does not seem his attorney 30 days before, may prove on to me that the patentee was bound to give the trial five enumerated defenses, the fifth a formula specifically describing the rela- of which is as follows: "That it had been tive quantities of glue and dextrine, because in public use or on sale in this country for it appears from the testimony that in very more than two years before his application damp places it may be better to use dex- for a patent, or had been abandoned to the trine alone, and by the same process of rea- public.” soning it would appear that it might be bet- [6] The notice required by the statute must ter to vary the proportions of glue and dex- be given by the defendant. Western Electrine in other places, and these are matters tric Co. v. Sperry Electric Co., 58 F. 186, which one skilled in the art could well deter- 192, 7 C. C. A. 164; Warren Featherbone mine, and it is not necessary in the patent Co. v. Warner Bros. Co. (C. C.) 92 F. 990, to describe all the possible modes of appli- 991. No such notice was given by the decation in order to obtain the best results. fendant. Minerals Separation, Ltd., v. Hyde, 37 S. Ct. The defendant has not rebutted the pre82, 242 U. S. 261, 61 L. Ed. 286.

sumption of validity of the patent in suit, It makes no difference that the plaintiff and the weight of the presumption of priormay have found a paste suitable for his ity and novelty which arises from the grantpurposes which he uses, containing glue and ing of the patent has been greatly increased dextrine with other elements, manufactured by the concession of priority by Pollock & by a maker of glues and pastes, more suit- Horn to Abrahams in their settlement of the able for large commercial production and partially litigated interference declared by cheaper than he could manufacture it, be- the Patent Office. Inasmuch as I am not cause the only question is whether the paste laboring under any doubt, it seems unnecesdescribed in the patent will make a horn sary to enter into any extended consideraanswering the definition of the claims. The tion of the question of the commercial suctestimony has answered that question in the cess of the patent. affirmative, because I am convinced that Ex- [?] The patent is valid, and there remains hibit 14 was made in 1922, of the materials for further consideration only the question described in the patent, and is still rigid, of infringement. and this patent should not be declared inval- Claim 1 of the patent in suit reads upid for indefiniteness, or for insufficiency of on the defendant's structure, Plaintiff's Exdisclosure. Carnegie Steel Co. v. Cambria hibit 2. The horn is made of fleece-lined maIron Co., 22 S. Ct. 698, 185 U. S. 403, 46 terial impregnated with a water soluble paste L. Ed. 968; Expanded Metal Co. v. Brad- and baked. This claim is clearly infringed. ford, 29 S. Ct. 652, 214 U. S. 366, 53 L. The infringement of claim 2 depends upEd. 1034; Van Epps v. United Box Board on whether the defendant's structure was & Paper Co., 143 F. 869, 75 C. C. A. 77; impregnated with a hardened filler of glue Westinghouse Electric Mfg. Co. v. Mont- and dextrine and having a surface finishing gomery E. L. & P. Co., 153 F. 890, 82 C. coating of a water paste. The paste used C. A. 636.

by the defendant, which was sold to it by [5] The defendant contends that there was Mr. Nach, contains glue and dextrine toan abandonmet by the plaintiff and the duty gether with other ingredients. Mr. Wilson rests upon the defendant to prove such testified that he had sold quite a few horns abandonment beyond a reasonable doubt. on which additional paste was rubbed after Kellogg Switchboard & S. Co. v. Interna- the horns were baked. “Paint" is defined tional T. Mfg. Co. (C. C.) 158 F. 104. This in Funk & Wagnall's New Standard Dicthe defendant has utterly failed to prove, tionary, as follows: "A solid color or pigbecause the evidence shows that the plain- ment either dry or mixed with a vehicle, as tiff, through Mr. Foote, was trying to dis- oil or water, intended to form a surface coatpose of the crystal radio sets during 1923, ing as distinguished from a dye or stain." and started to manufacture horns in quan- This definition is satisfied by a paste distities as soon as he received a large order. solved in water.

The defendant also failed to allege aban- Claim 2 of the patent provides, in part, donment as a defense, as required by statute. "and having a surface finishing coating of

Under section 4920 of the Revised Stat- a water paint.” The purpose is to fill in utes (Comp. St. § 9466), the defendant had the ribs and make a smooth exterior surface,


10 F.(20) 843 and Mr. Wilson testified under cross-exami- invalid for lack of invention and anticipation, nation that he used this "as a filler” and “to but, if valid, not infringed. fill up grooves and holes in the horn." Ac- 2. Patents Om91(3)-Patentee must establish cording to his testimony, he did sell quite

claim to use antedating a prior use, by evia few horns on which such filler had been

dence of at least equal quality to that estab

lishing prior use. used. The infringement of claim 2 is clear,

Patentee must establish claim to use antebecause plaintiff is entitled to be protected dating a prior use, by evidence of at least equal against further infringement even though the quality to that establishing prior use. defendant claims to have discontinued that 3. Patents am 112(3)–Presumption of validity process, or that he found the addition of the

of issued patent may be rebutted by proof, water paint coating to be unsatisfactory. Presumption of validity of issued patent

Defendant contends that on the author- may be rebutted by proof. ity of Brookfield v. Novelty Glass Mfg. Co., 4. Patents en 26(2)-Process consisting of 170 F. 960, 96 C. C. A. 127, plaintiff is not old steps may be patentable, if it produces entitled to an accounting. I do not think the

new and useful results. decision in that case goes that far, but it

Process constituting of old steps may be seems to me that the plaintiff is entitled to patentable, if it produces new and useful re

sults. an accounting, in addition to the profits which the defendant has realized, to deter- 5. Patents w36Evidence of commercial suc

cess held insufficient to sustain validity of mine the damages which the plaintiff himself

doubtful patent. has suffered by reason of the appropriation Evidence held not to show that crepe rubber by the defendant of the plaintiff's rights un- soles, prepared under plaintiff's patent, supder said patent.

planted others so as to sustain validity of The allegations of the plaintiff's bill of doubtful patent by proof of its commercial complaint are not sufficient to warrant any recovery by the plaintiff of any damages suffered by his licensees , and further plaintiff ber Company against the Morse & Burt Com

In Equity. Suit by the Alfred Hale Rubdoes not pray for the recovery of any

damages suffered by the licensees, bụt only the pany and another. Decree for defendants. gains and profits of the defendant, and dam- Redding, Greeley, O'Shea & Campbell, of ages suffered by the plaintiff.

New York City (William A. Redding and [8] This, however, does not prevent the Ambrose L. O'Shea, both of New York City, plaintiff from recovering the gains and prof- of counsel), for plaintiff. its of the defendant and damages suffered

Gifford & Scull, of New York City (Livby the plaintiff, because it does not appear ingston Gifford and George F. Scull, both of that any one has any interest, legal or equi- New York City, of counsel), for defendants. table, by assignment or otherwise, in the patent sued on, or that the licensees men- CAMPBELL, District Judge. Plaintiff tioned are other than licensees at sufferance. seeks in this action to restrain the alleged Tilghman v. Proctor, 8 S. Ct. 894, 125 U. infringement by the defendants of patent No. S. 136, 143, 31 L. Ed. 664.

1,479,497, issued by the United States PatThe patent is valid, and both claims have ent Office to David A. Cutler, dated January been infringed by the defendant.

1, 1924, and to recover damages. The deA decree may be entered in favor of the fendants have interposed the answer of inplaintiff, with the usual order of reference. validity and noninfringement. Settle decree on notice.

No evidence of any sort has been presented that in any way connects the defendant Cantilever Shoe Shop, Inc., with the alleged infringement; therefore the complaint should

be dismissed as to them, with costs. ALFRED HALE RUBBER.CO. V. MORSE & [1] The patent in suit is for the process of BURT CO. et al.

attaching rubber soles to boots and shoes. (District Court, E. D. New York. February 5, The invention is said by the patentee in his 1926.)

specification to primarily consist in his 1. Patents 328—1,479,497, for method of "method of applying and securing the outer

applying rubber soles and heels to shoes, rubber or yielding sole or combinei sole and held invalid for lack of invention and anticipa- heel to the shoe, independently oi stitching tion, but, if valid, not infringed.

Cutler patent, No. 1,479,497, for method of the same, and in a manner to conceal, proapplying rubber soles and heels to shoes, held tect, and cover the stitching, if any, utilized in the construction of the shoe to which the ber unified into a single outsole, which conelastic outsole is applied.”

sists in providing two solelike layers, each of In carrying out his invention, the patentee less thickness than that of the combined outsays in his specification that he makes the sole, first applying one layer to the footwear shoe-either welt or McKay–in the usual and securing the same thereto by mechanical manner, but that he secures, during the pro- fastenings, then partially dissolving either cess of manufacture, "a thin rubber layer or or both of the contacting surfaces of the intermediate sole to the shoe insole or to the layers to be united, and then applying and attached welt. This may be by the usual welt holding the outer layer to the surface of the stitching or McKay stitching. Preferably mechanically attached layer, until the partialalso I form this thin rubber sole of unvulcan- ly dissolved surfaces become unified, whereby ized rubber, or a suitable rubber compound. a complete solidified outersole of unvulcanI then prepare the main outer sole, also ofized rubber is produced, having the mechanyielding material, such as unvulcanized rub- ical attachments concealed therein." ber or vulcanizable rubber compound of The shoe made and sold by the defendant suitable size, thickness, and shape to com- Morse & Burt Company (Plaintiff's Exhibit plete the outsole of the shoe. I then coat 1) is stipulated to have been made as folthe contacting surfaces or one of the surfaces lows: "By first mechanically fastening a and apply the outer sole to the previously at- layer of 'crepe' rubber to the shoe, then coattached rubber sole, preferably a thin strip or ing the outer surface of said layer with benzol intermediate sole. These contacting surfaces and the surface of another layer with benzol, are coated with a suitable solvent, which will then placing the two coated surfaces toact on the rubber itself to partially dissolve gether, and holding them in position until the the same and permit the two soles by slight two layers adhered to each other.” pressure and in a short space of time to be- The rubber used by the defendant in its come thoroughly and substantially integrally shoe in evidence is unvulcanized rubber, and united."

benzol is a solvent, therefore, if the patent The patentee also says, in his specifica- in suit is valid, no further consideration will tion, "that, where unvulcanized rubber is be required of the question of infringement. employed as at the outer sole and preferably The defendant in its brief relies on the also as the intermediate sole, a coating of defense of invalidity. The defendant offered benzol or the like will sufficiently dissolve the in evidence the following patents of the prior contacting and coacting faces of the two art: soles as to practically and solidly unify the British patent No. 1987, A. D. 1858, isrubber in both.

sued to Warne, for improvements in the conThe patent in suit is not limited to crepe struction of elastic pavements, etc., discloses rubber, but the midsole is described as "pref- that the use of a solvent to make two pieces erably" made of “unvulcanized rubber" or a of unvulcanized rubber adhere together is suitable rubber compound, and the main or old. outer sole the patentee says may be "unvul- United States patent No. 34,682, issued canized rubber or "vulcanizable rubber com- to Godfrey, for improvement in india rubber

boots and shoes, dated March 18, 1862, disA rubber compound is a mechanical mix- closes double india rubber soles, each vulcanture of crude rubber, with other materials ized, which are so formed that they will adsuch as sulphur or pigments. This is quite here to each other when cement is applied different from crepe rubber, and a vulcanize without being held pressed together. able rubber compound is a compounded rub- United States patent No. 616,470, isber in condition to be vulcanized, and this sued to Kennedy, for rubber soled leather surely does not describe crepe rubber.

shoe, dated December 27, 1898, discloses & Crepe rubber is mentioned but once in the leather upper provided with the usual insole. patent, and that is in the specification where Secured to the upper by mechanical means it is said, "The outsole, also of suitable rub- is a layer formed of leather, which extends ber, preferably Colombo or other raw, un- out beyond the edge of the upper, a middle vulcanized rubber such as crepe, or latex. sole formed of textile material impregnated

with rubber, which is of the same size and The patent has but one claim, which reads shape as the said layer of leather, and secured as follows:

thereto by mechanical means, and may also "The improved process of attaching to be secured to the upper by mechanical means, footwear two layers of unvulcanized rub- but such fastenings are independent of the


10 F.(20) 843 fastenings to said layer and an outer sole and ordinarily determined by the working condiheel which are vulcanized to the outer sur- tions. face of the middle sole without any mechan- The patentee in the patent in suit succeedical fastenings.

ed, in the Patent Office, in distinguishing his United States patent No. 790,558, issued invention over the references there cited, and to Butterfield, for composite boot or shoe, now contends that it is distinguished over the dated May 23, 1905, discloses a layer of leath- said references because they apply to vulcaner called the middle sole, and a layer of vul- ized rubber, while the process of the patent canized rubber called the tread sole. Butter- in suit is limited to unvulcanized rubber. field is doing in a slightly different way just Without discussing that question at the what Kennedy was doing.

moment, we are met on this trial with eviUnited States patent No. 1,306,996, issued dence, which was never before the Patent to Brown, for shoe, dated June 17, 1919, Office, of several alleged prior uses. discloses a shoe bottom made of more than The first alleged prior use is the Hoskins one layer of material, the insole being me- shoes. These shoes were made in 1917, long chanically secured, the middle sole being in prior to Cutler's invention, in imitation of part mechanically secured, the outside sole English rubber soled shoes, and, as appears and heel put in place, and the shoe is vulcan- by one of the shoes in evidence (Defendized, thus having an outer sole which is not ant's Exhibit 1), no stitches nor mechanical secured by any mechanical fastenings. The fastenings of the sole were visible, but the patentee says: “My invention relates to a sole was vulcanized. new and improved shoe of a character which Then came the so-called Addison Hanan can be manufactured by the methods com- shoes. None of the shoes alleged to have monly employed in a rubber shoe factory, as been made for Mr. Addison Hanan, about the distinguished from methods commonly em- same time as the Hoskins shoes, were producployed in a leather boot and shoe factory.” ed, and, while I do not question the veracity

The defendant also offered British patent of any of the witnesses, I am clearly of the No. 200,383, issued to Greengate and Irwell opinion that the evidence of such alleged Rubber Company, Limited, and Walter Hub- prior use, both in the case of the Hoskins bard, effective date July 12, 1923. This pat- shoes and the Addison Hanan shoes, is not ent is not prior art, and was offered by de- sufficiently strong to comply with the requirefendant "to show people all over the world ments which have been laid down by the were doing the same thing at the same time;" courts in like cases. The Barbed Wire Patthe application date being July 22, 1922. ent, 143 U. S. 275, 12 S. Ct. 443, 450, 36 L.

From these patents and the evidence of Ed. 154; Deering v. Winona Harvester the experts we find that vulcanization was in- Works, 155 U. S. 286, 15 S. Ct. 118, 39 L. vented by Goodyear in 1844, and has been Ed. 153. almost universally adopted because it in- In 1921 the English introduced the use creases the strength and elasticity of the rub- of crepe rubber for soles for sport shoes; ber and also increases its resistance to heat the idea having originated with the young over a wide range of temperatures; that from men on the rubber plantations at Colombo, the beginning of the use of rubber it has been and been communicated by them to their known that rubber which is clean and has a firms, who began to introduce them on the “tacky" surface can be joined to another English market. piece of rubber in the same condition by sim- Mr. Wilson, importer of crude rubber, ply pressing them together; that it was old saw crepe rubber soled shoes in London in in the art and standard practice, if the sur- September, 1921, and received a number of face of two pieces have become dry, to coat pairs as samples from London in the fall of the two surfaces with benzol or some other 1921, which he in turn distributed among his solvent, and then, after a pause to permit the friends whom he thought might be intersurfaces to become tacky, to press the two ested. surfaces together. It was also well-known Mr. Cutler, the patentee of the patent in and standard practice, where rubber has lost suit, was shown an English shoe with a crepe its original tacky surface condition and such rubber sole, on May 1, 1922. tackiness cannot be restored by cleaning with The English, in making the crepe rubber a solvent, to resort to a rubber cement, and soled shoes, followed common English praccement was also used with vulcanized rubber. tice, and cemented the soles, which proved

Rubber cement is a rubber solvent and satisfactory because of the careful way in raw rubber, and the amount of solvent is which the English cement rubber to leather.

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