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This appears to be true, notwithstanding the out orders to make a quantity of shoes for statement in British patent No. 200,383, su- each of a number of stores; Exhibit A bepra, which speaks of these rubber soles ce- ing for two lots, No. 87925 L and No. 87926 mented directly to the leather as "inclined" L, seven pairs each, and Exhibit C for two to separate from the leather.

lots, No. 87909 L and No. 87911 L, for seven This brings us to the crepe rubber soled pairs each, soles made of “new H. W. Hanan shoes made by Hanan & Son. About the rubber.” The making of these shoes was same time in the spring of 1922 that Mr. shown, not only by oral testimony, but by Cutler saw the crepe soled English shoe, Mr. the written records of Hanan & Son and the H. W. Hanan, of the firm of Hanan & Son, shoes, Exhibits B and T. These shoes were was in London, and evidently saw crepe. rub- cut June 1, 1922, leveled June 29, 1922, at ber soled shoes and purchased and sent to which time the sole was completed, certain Brooklyn some crepe rubber in sheets, which finishing was done, and the shoes completed was received in Brooklyn about the middle of July 12, 1922, and shipped July 18, 1922. May, 1922; the invoice being dated May 3, The sole of the shoe, Exhibit E, was leveled 1922. Apparently he must have sent some July 20, 1922. cable or letter of instructions, but the same The soles of these shoes were made of cannot be found.

unvulcanized rubber of the kind known as Orders were then given (of which Ex- crepe rubber, there was the wedge at the heel hibits A and C are samples), and under di- portion, which was sewed to the equivalent rection of Mr. Brunell, the superintendent of of a welt, and an outer sole which was sewed the Hanan factory, manufacture began. to the fore part of the shoe and cemented to

He first made a sample with a single lay- the wedge at the heel portion, whereby these er of rubber at the fore part and two layers portions became unified. at the heel, one of which was a wedge to Although the two layers of rubber in Exform a spring heel, and tried to sew the sole hibits B, E, and T appear only at the heel, thus made up entirely around its edges. In the inventor's thought, if there was any indoing this, he met with difficulty because, if vention, is fully exemplified, and no limit can the sewing machine was properly set to sew be set to the carrying forward of the wedge, the single thickness, the thread would draw because, if desired, it can be carried to the down into and cut the rubber at the double toe. These shoes evidently gave satisfaction, thickness.

as about 1,000 pairs were made. He then made the shoes with the heel In the face of these shoes, made as they wedge sewed to the equivalent of a welt at were before the application of the patentee the heel and a single full sole layer “sewed in the patent in suit was filed, Exhibits B and aloft” to the welt at the fore part of the T having been some time even before the shoe, and such single layer brought down over date to which the patentee has attempted to the heel wedge and cemented to it, no stitches carry back his invention, the shoes even havpassing through the outer sole at the heel ing been shipped on that day, if it be held portion, as illustrated in the shoes, Exhibits that there is any invention by the patentee in T, B, and E.

the patent in suit, it must consist simply in The records of Hanan & Son are well carrying forward the inner layer shown at kept, except that the particular method of the heel portion of said Exhibits B and T, construction is not fully shown on the order, and this at most would seem to me to be only but the lots of shoes manufactured are given the act of a skilled workman, desirous of ima lot number, and the progress of each lot proving the looks of the shoe. Smith v. through the factory is fully shown. To show Nichols, 21 Wall. (88 U. S.) 112, 22 L. Ed. the exact construction, however, it is nec- 566. essary to obtain one of the shoes, and then Some time after Hanan & Son began to by its lot number its date of manufacture can make shoes like Defendant's Exhibits B and be readily ascertained, and that is what was E, the construction was somewhat changed done in this instance, as there were obtained by their superintendent, as he said, to "make from one of the retail stores Exhibits B and a better looking shoe.” This construction T, which are of the same lot number, 87926 was described as having one layer of crepe L, and there came back to them because of a rubber sewed to the welt entirely around the loose lining, Exhibit E, which was of lot No. shoe, then two wedges of crepe rubber ce 87911 L.

mented to this first or midsole, at the heel, On May 17, 1922, the assistant general and then the outer sole cemented to this midmanager of Hanan & Son's retail stores wrote sole and to the heel wedges, the outer sole

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10 F.(20) 843 being shaped up at the instep to make a that he had then developed the process of the spring heel.

patent in suit, because that process provides This type of shoe was shown by Mr. for the fastening of the inner sole by meBrunell, the superintendent, as he testified, chanical means and then causing the outer to Mr. Addison Hanan (now dead) and Mr. sole to adhere by the use of benzol. Laycock, in charge of Hanan & Son's retail Mr. Hodder was alive at the time of the stores, and the making of these shoes was also trial, and, if he could not be present, his testified to by Mr. O'Brien, who was cutting testimony could have been taken by deposisoles.

tion, as he was one person who could have Mr. Brunell believes this type of shoe was given a satisfactory explanation of his made in July or August, 1922, while Mr. diary entry. O'Brien believes it was in August or Septem- [2] This evidence was offered to antedate a ber, but the time that this change was made prior use by Hanan & Son, supported, not cannot be definitely fixed, due to the fact only by oral, but by documentary testimony that a change of this kind could be made by and some of the articles manufactured, and the superintendent in the Hanan factory, it it is incumbent on the patentee to do so with does not appear on any of the orders, and the testimony of at least the quality of that by earliest shoe of this type which Hanan & which the prior use is established. Clark Son was able to produce was Exhibit D, Thread Co. v. Willimantic Linen Co., 140 U. which had been ordered February 20, 1923, S. 481, 492, 11 S. Ct. 846, 35 L. Ed. 521; and completed April 5, 1923.

Westinghouse Elec. & Mfg. Co. v. Catskill This was after the date of the filing of his Ill. & P. Co., 121 F. 831, 834, 58 C. C. A. application by the patentee of the patent in 167. suit, and, while I have no doubt of the truth- This he has failed to do, and the date of fulness of the witnesses, the evidence is not his invention must be fixed as of the date of sufficient, under the strict rule which the filing his application, October 4, 1922. courts have enforced, fin that shoes of Exhibits B and T were completed even the type of Defendant's Exhibit Dwere before July 18, 1922, the earliest date claimed made early enough to constitute a prior use. by Mr. Cutler. In any event, it is clear that The Barbed Wire Patent, supra; Deering v. no one connected with Hanan & Son could Winona Harvester Works, supra.

have seen Mr. Cutler's two-unit crepe rubber The, application for the patent in suit soles before Exhibits B, E, and T were made. was filed October 4, 1922, some three months Mr. Cutler is a rubber chemist and not after the completion of the soles of Defend- a shoemaker, but was assisted by men in the ant's Exhibits B and T, on June 29, 1922, shoemaking factory of Young & Co. Of and nearly three months after they were ship- course Mr. Cutler knew, as did all rubber ped on July 18, 1922, and Exhibit E was workers, that a solvent such as benzol would leveled July 20, 1922.

produce an effective joint; shoemakers, howMr. Cutler has sought to carry the date ever, were using rubber cement composed of of his invention back to July 18, 1922, but a solvent and raw rubber, and, when applied to do this he offered only his oral testimony to a raw rubber surface, that surface is softand the testimony of a clerk in the office of ened and the rubber that was dissolved in the Mr. Hodder, Mr. Cutler's patent attorney, solvent merges with the surface so softened, who read an extract from the diary of Mr. to the extent that the solvent is present, and Hodder, and then described certain soles when the mass is pressed together a homogewhich he said Mr. Hodder had told him were neous block of rubber is formed. the samples brought by Mr. Cutler, although From Mr. Cutler's testimony, it would the diary referred to "sample" not "samples," appear that he did much experimenting in a and at that time Mr. Cutler was sending out very short space of time, whereas the men in sample soles of one-unit crepe rubber and the Hanan factory, who were practical shoedid not begin sending out the two-unit soles makers, moved from step to step in line until, as he says, “our patent attorney told with what seems to me to have been the us we were protected,” which it appears to teaching of the art. me could not have been before October 4, Notwithstanding Mr. Cutler's experiments 1922, the date of filing his application. he apparently advanced step by step, in the

Even if Mr. Cutler did give Mr. Hodder, same manner as the workmen in the Hanan on July 25, 1922, two soles, one thicker than factory. When they received the crepe rubthe other, and two additional soles that had ber, they commenced by attempting to sew been stuck together, that would not prove the sole all the way around, but, finding difficulty with the heel portion, they then sewed It therefore seems to me that the patent the heel wedge of crepe rubber to the equiv- in suit is invalid for want of invention, bealent of a welt at the heel, and sewed aloft cause Cutler was doing what the art taught, a single full sole layer of crepe rubber to the and that did not constitute invention, but was welt at the fore part of the shoe, and brought simply what other skilled workmen were doit over the heel wedge to which they cemented ing at the same time at other places. Atlanit. This they found satisfactory, although tic Works v. Brady, 107 U. S. 192, 199, 2 S. Mr. Cutler said that, in his experiment with Ct. 225, 27 L. Ed. 438. sewing aloft, he found that crepe rubber Furthermore, it seems to me that the patwould not hold the stitches, but he afterwards ent in suit is invalid, because all that Cutler said the stitching had nothing to do with his did was to substitute one material for anoth“turning to the invention.”

er, viz. crepe rubber for vulcanized rubber, The Hanan workmen thereafter adhered a in the shoes of the prior art, and crepe rubsecond layer of raw rubber to the one which ber was not discovered by him. New York had been sewed aloft, and covered the stitch- Belting & Packing Co. v. Sierer, 158 F. 819, es to improve the appearance of the shoe, and 86 C. C. A. 79. followed the shoemaker's art by using for [3] I am not unmindful of the presumption that purpose an old and to them well-known of validity given to an issued patent, but it rubber cement (Montgomery No. 1), while is only a presumption that may be rebutted Mr. Cutler, as it appears to me, received the by proof, and I think the proof sufficient approval of Mr. Young without a test when in this case. he caused the outer layer to adhere to the [4] Neither am I unmindful that a process, inner layer and hide the stitches, for the very the steps of which are old, may be patentable same reason, that it improved the appearance when co-operating with each other they proof the shoe.

duce a result that is new and useful, but I Both Hanan's men and Mr. Cutler in the do not agree with the plaintiff that the makbeginning followed the American custom of ing of vulcanized rubber shoes was not an sewing aloft, while the British workmen fol- analogous art, and all that the patent in suit lowed their practice of securing the sole with discloses was shown in the Godfrey patent, cement; and yet we find that, on July 22, No. 34,682, the only difference being that in 1922, an application was filed for a British that patent the soles were made of vulcanized patent by Greengate and Irwell Rubber Com- rubber, the midsole mechanically secured, and pany, Limited, and Walter Hubbard, disclos- the outer sole cemented to the midsole, and I ing the same structure as the patent in suit am unable to see any invention in causing the with an improvement which Cutler did not contacting surfaces of two layers of crepe adopt until 1924.

rubber, to which a solvent such as benzol has We thus have three sets of mechanics, in been applied, to adhere, in view of the tendEngland, New York, and Massachusetts, ency displayed by the two-unit sole (Defendwithout any connection with each other, do- ant's Exhibit H) to contact without the aping the same thing in the same way with a plication of a solvent or cement, because it new material, which goes to prove that it was seems to me to be perfectly obvious. simple and obvious. Elliott & Co. v. Youngs- [5] This is not a case where the question of town Car Mfg. Co., 181 F. 345, 349, 104 C. invention is in doubt and may be sustained C. A. 175.

by proof of commercial success, but, if it In addition to which as we have seen the was, the evidence does not show that the crepe following facts appear: Cutler did not first rubber soles of the plaintiff have supplanted suggest the idea of using crepe rubber for all others, because it has sold 800,000 to 1,soles; on the contrary, that idea came from 000,000 pairs of Rajah soles in three years England. Sewing aloft was old and standard and but 430,000 pairs of these in 1924, while American practice for vulcanized rubber the United States Rubber Company alone is soles. The use of a covering or double sole making 6,000,000 to 8,000,000 pairs of vulwhich hid the stitches or other mechanical canized soles annually. fasteners was old, particularly in rubber There is no evidence to show how many soles. The use of a solvent such as benzol crepe rubber soles were sold by others, alto soften the surfaces of two layers of raw though Mr. Cutler says that the 430,000 Rarubber to be joined was old, and the ordi- jah soles sold by the plaintiff in 1924 is only nary practice of the rubber worker, who also a small proportion of the total number made

, knew that such solvent produced a unified by all, but the evidence does not show that the

total number of crepe rubber soles made even

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10 F.(20) 849 approximates the number of vulcanized soles ing vessel, did not disavow services, but almade by the United States Rubber Company lowed it to continue, held that vessel was liable

for towage, notwithstanding previous notice alone.

that tug's services would not be required. Whatever success crepe rubber soles have

4. Towage cm 8-Evidence held to show that had, has been due to the inherent quality of

agreed rate for services of tug in towing ves. the rubber and not to the method of the pat- sel was $250 per day. ent in suit.

Evidence held to show that agreed rate for No long-felt want was filled by the patent services of tug in towing vessel was $250 per in suit as crepe rubber soled shoes were on

day, as claimed by owner of vessel, and not

$350, as claimed by charterer of tug. sale in London in 1921, some were brought over to this country in the fall of 1921, both

In Admiralty. Libel by the Siletz NaviMr. Cutler and Hanan & Son had the subject gation Company against the steam schooner called to their attention in the spring of 1922, Trinidad; the Hammond Lumber Company, Hanan & Son completed the soles of Ex- claimant. Decree for libelant. hibits B and T by June 29, 1922, and the application for the patent in suit was filed Oc

Winter S. Martin, of Seattle, Wash., and tober 4, 1922.

Maurice W. Seitz, of Portland, Or., for liIf, however, I am in error, and invention belant. may be found in applying the process de

G. C. and A. C. Fulton, of Astoria, Or., scribed in the patent in suit, then such patent

for claimant. was anticipated by Hanan & Son in their Joseph, Haney & Littlefield, and John C. prior use in the manufacture of Exhibits B, Veatch, all of Portland, Or., and Green & E, and T, all of which were completed some

Wold, of Astoria, Or., for crew of tug Dougtime before the filing of the application of

las. the patentee for the patent in suit.

BEAN, District Judge. This is a libel The patent in suit is invalid, both for to recover compensation for salvage services want of invention, and by reason of anticipa- alleged to have been rendered by the tug tion; but, even if it were valid, no infringe- Douglas to the steamer Trinidad. ment by the defendant Cantilever Shoe Shop, The Trinidad is a steam schooner, without Inc., has been shown.

wireless apparatus, engaged in the coastA decree may be entered as to both de- wise lumber trade, and is owned and operatfendants, dismissing the complaint with costs. ed by the Hammond Lumber Company, which

has offices in Portland and San Francisco. The' libelant was, at the time the contro

versy arose, in the towing business with its THE TRINIDAD.

principal office at Newport on Yaquina Bay, (District Court, D. Oregon. November 23, and had under charter from the owners the 1925.)

tug Douglas. 1. Salvage Om48–Evidence held to show that [1] On Tuesday, October 28, 1924, the Trin

master of libeled vessel accepted tug's serv. idad, while on a voyage from Grays Harbor ices because of tug master's statement, which to San Pedro with a cargo of lumber, enwas not true.

countered a southwest gale some 25 or 30 On libel for salvage service, evidence held miles off the Oregon coast and south of to show that master of libeled vessel accepted tug's services because of tug master's state. Yaquina Bay. During the night of that ment that tug was sent by vessel's owner, day one of her stanchions parted, and her which was not true.

deckload shifted slightly. At 1 o'clock on 2. Salvage em 13—Towage rendered vessel Wednesday afternoon her tiller stock broke,

having broken tiller, but in no immediate so she was without steerage way, but in all danger, held not to justify claim for salvage other respects was staunch and seaworthy, service.

and she was in no peril or immediate danTowage of vessel having broken tiller, but otherwise seaworthy, and in no immediate ger. danger, rendered by tug without consent of About 3 o'clock on the afternoon of Wed. vessel's owner, and because its master was nesday the steamer Oleum offered her asmisinformed by tugmaster, keld not to justify sistance, which was declined. At the reclaim for salvage service.

quest of the master of the Trinidad, how3. Towage em 3Vessel held liable for towage, ever, the Oleum sent a wireless message

where owner did not disavow service on being to the owners of the Trinidad at Portland, Informed thereof.

Where managing officer of owner of vessel, stating her condition, and requesting that on being informed by radio that tug was assist- a tug be sent to her assistance. The Oleum

10 F.(20)-54

stood by until word was received from her He did not ask for such assistance because owners that the request would be complied he considered his vessel was in no peril, and with, when she proceeded on her way.

he had been advised that the owners were The Trinidad was also spoken by the sending a tug. It is but natural, therefore, Patrician some time Friday afternoon. The that, before taking a line from the Douglas, message from the Oleum to the owners of the he would want to know whether she had been Trinidad was picked up by the wireless op- sent by his owners, and the answer of the erator of the tug Douglas, then lying at a tug, "From your owners in Portland,” was dock at Yaquina Bay.

such as would naturally be given by it, since Mr. Noon, the manager of the libelant, it knew of the negotiations for its services, was in Portland at the time, and was ad- and was not advised that they were off, and vised of the condition of the Trinidad, and that its owner had been notified that its servthat she was asking for a tug. About 10 ices were not required. o'clock in the evening he telephoned Mr. Mc- The master of the Trinidad, relying upLeod, the vice president and manager of the on the information thus received, took a Hammond Lumber Company, and inquired line from the tug. About 12 o'clock Friday whether he could be of any assistance, and night the Algonquin appeared, stood by unafter some conversation between them, it was til morning, when she attached a line to the agreed that the Douglas should go to the as- stern of the Trinidad, and in charge of the sistance of the Trinidad for a stipulated rate two vessels she proceeded on her way, using per day for 'her services. Mr. Noon had her own power, arriving at Astoria about 1 some telephonic conversation with the mas- o'clock on the afternoon of Sunday, Novemter of the Douglas on the same day, con- ber 2d. cerning a proper charge to be made for the On the next day, without any demand services of the tug. The Douglas was un- for payment or settlement, and without give able to put to sea on Thursday on account of ing the owners an opportunity to pay without the condition of the bar at Yaquina. Mc- suit, this libel was filed by the Navigation Leod was advised by Noon of that fact, and Company for itself and on behalf of the thereupon proceeded to make arrangements general owner of the tug, her master, and for another tug, and on Friday morning he crew, claiming the sum of $35,000, as salvage. called Noon by telephone, and told him that The master and crew were not represented at he did not want his tug, as he had arranged the trial, and probably have abandoned any with the coast guard Algonquin to go to the claim on their behalf. A receiver has been assistance of the Trinidad.

appointed for the Navigation Company, and Thereafter, and notwithstanding such in- apparently the only party interested in this formation, Noon ordered the tug to sea to litigation is the general owner of the tug, pick up the Trinidad, without informing its who was made a colibelant at the trial. master that the arrangements with McLeod [2] In my judgment this is not a salvage

case. The services rendered by the tug were The Douglas left Yaquina early in the commenced by it against the wish and without afternoon of Friday, and spoke the Trini- the consent of the owners of the Trinidad, dad some time between 8 and 9 o'clock on and because her master was misinformed as that evening, and a conversation was had to the true condition of affairs. Neither the between the masters of the two vessels. Trinidad, her cargo, nor the lives of her crew There is a conflict in the testimony as to were in such danger as to justify a salvage what was said. The master, chief officer, service without the consent of her master engineer, and other employés of the Trinidad testify that, when the tug approached, the [3, 4] About 9:30 o'clock Saturday morning, master of the Trinidad asked, among other McLeod was advised by radio that the Dougthings, “Who sent you," and the reply from las was assisting the Trinidad. He did not the Douglas was “Your office in Portland,” disavow the service, but allowed same to while the evidence on behalf of the tug is continue, and therefore she is liable, I take · that the reply was, “From Portland.” it, for a towage service. There is no evidence

I have carefully read and considered all as to the value of such service other than the testimony in the case, and am clearly of what can be gained from the conversation the opinion that the weight of the evidence between McLeod and Noon on Wednesday and the probabilities are with the Trinidad. evening. Their testimony is in conflict. The master of the Trinidad had an opportu- Noon says the rate agreed upon was $350 nity to obtain assistance from either the per day, while McLeod says it was $250. Oleum or the Patrician if he had so desired. Noon's conduct in the transaction in

were off.

or owner.

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