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10 F.(2d) 843

being shaped up at the instep to make a spring heel.

This type of shoe was shown by Mr. Brunell, the superintendent, as he testified, to Mr. Addison Hanan (now dead) and Mr. Laycock, in charge of Hanan & Son's retail stores, and the making of these shoes was also testified to by Mr. O'Brien, who was cutting soles.

Mr. Brunell believes this type of shoe was made in July or August, 1922, while Mr. O'Brien believes it was in August or September, but the time that this change was made cannot be definitely fixed, due to the fact that a change of this kind could be made by the superintendent in the Hanan factory, it does not appear on any of the orders, and the earliest shoe of this type which Hanan & Son was able to produce was Exhibit D, which had been ordered February 20, 1923, and completed April 5, 1923.

This was after the date of the filing of his application by the patentee of the patent in suit, and, while I have no doubt of the truthfulness of the witnesses, the evidence is not sufficient, under the strict rule which the courts have enforced, to find that shoes of the type of Defendant's Exhibit D were made early enough to constitute a prior use. The Barbed Wire Patent, supra; Deering v. Winona Harvester Works, supra.

The application for the patent in suit was filed October 4, 1922, some three months after the completion of the soles of Defendant's Exhibits B and T, on June 29, 1922, and nearly three months after they were shipped on July 18, 1922, and Exhibit E was leveled July 20, 1922.

Mr. Cutler has sought to carry the date of his invention back to July 18, 1922, but to do this he offered only his oral testimony and the testimony of a clerk in the office of Mr. Hodder, Mr. Cutler's patent attorney, who read an extract from the diary of Mr. Hodder, and then described certain soles which he said Mr. Hodder had told him were the samples brought by Mr. Cutler, although the diary referred to "sample" not "samples," and at that time Mr. Cutler was sending out sample soles of one-unit crepe rubber and did not begin sending out the two-unit soles until, as he says, "our patent attorney told us we were protected," which it appears to me could not have been before October 4, 1922, the date of filing his application.

Even if Mr. Cutler did give Mr. Hodder, on July 25, 1922, two soles, one thicker than the other, and two additional soles that had been stuck together, that would not prove

that he had then developed the process of the patent in suit, because that process provides for the fastening of the inner sole by mechanical means and then causing the outer sole to adhere by the use of benzol.

Mr. Hodder was alive at the time of the trial, and, if he could not be present, his testimony could have been taken by deposition, as he was one person who could have given a satisfactory explanation of his diary entry.

[2] This evidence was offered to antedate a prior use by Hanan & Son, supported, not only by oral, but by documentary testimony and some of the articles manufactured, and it is incumbent on the patentee to do so with testimony of at least the quality of that by which the prior use is established. Clark Thread Co. v. Willimantic Linen Co., 140 U. S. 481, 492, 11 S. Ct. 846, 35 L. Ed. 521; Westinghouse Elec. & Mfg. Co. v. Catskill Ill. & P. Co., 121 F. 831, 834, 58 C. C. A. 167.

This he has failed to do, and the date of his invention must be fixed as of the date of filing his application, October 4, 1922.

Exhibits B and T were completed even before July 18, 1922, the earliest date claimed by Mr. Cutler. In any event, it is clear that no one connected with Hanan & Son could have seen Mr. Cutler's two-unit crepe rubber soles before Exhibits B, E, and T were made.

Mr. Cutler is a rubber chemist and not a shoemaker, but was assisted by men in the shoemaking factory of Young & Co. Of course Mr. Cutler knew, as did all rubber workers, that a solvent such as benzol would produce an effective joint; shoemakers, however, were using rubber cement composed of a solvent and raw rubber, and, when applied to a raw rubber surface, that surface is softened and the rubber that was dissolved in the solvent merges with the surface so softened, to the extent that the solvent is present, and when the mass is pressed together a homogeneous block of rubber is formed.

From Mr. Cutler's testimony, it would appear that he did much experimenting in a very short space of time, whereas the men in the Hanan factory, who were practical shoemakers, moved from step to step in line with what seems to me to have been the teaching of the art.

Notwithstanding Mr. Cutler's experiments he apparently advanced step by step, in the same manner as the workmen in the Hanan factory. When they received the crepe rubber, they commenced by attempting to sew the sole all the way around, but, finding dif

ficulty with the heel portion, they then sewed the heel wedge of crepe rubber to the equivalent of a welt at the heel, and sewed aloft a single full sole layer of crepe rubber to the welt at the fore part of the shoe, and brought it over the heel wedge to which they cemented it. This they found satisfactory, although Mr. Cutler said that, in his experiment with sewing aloft, he found that crepe rubber would not hold the stitches, but he afterwards said the stitching had nothing to do with his "turning to the invention."

The Hanan workmen thereafter adhered a second layer of raw rubber to the one which had been sewed aloft, and covered the stitches to improve the appearance of the shoe, and followed the shoemaker's art by using for that purpose an old and to them well-known rubber cement (Montgomery No. 1), while Mr. Cutler, as it appears to me, received the approval of Mr. Young without a test when he caused the outer layer to adhere to the inner layer and hide the stitches, for the very same reason, that it improved the appearance of the shoe.

Both Hanan's men and Mr. Cutler in the beginning followed the American custom of sewing aloft, while the British workmen followed their practice of securing the sole with cement; and yet we find that, on July 22, 1922, an application was filed for a British patent by Greengate and Irwell Rubber Company, Limited, and Walter Hubbard, disclosing the same structure as the patent in suit with an improvement which Cutler did not adopt until 1924.

We thus have three sets of mechanics, in England, New York, and Massachusetts, without any connection with each other, doing the same thing in the same way with a new material, which goes to prove that it was simple and obvious. Elliott & Co. v. Youngstown Car Mfg. Co., 181 F. 345, 349, 104 C. C. A. 175.

In addition to which as we have seen the following facts appear: Cutler did not first suggest the idea of using crepe rubber for soles; on the contrary, that idea came from England. Sewing aloft was old and standard American practice for vulcanized rubber soles. The use of a covering or double sole which hid the stitches or other mechanical fasteners was old, particularly in rubber soles. The use of a solvent such as benzol to soften the surfaces of two layers of raw rubber to be joined was old, and the ordinary practice of the rubber worker, who also knew that such solvent produced a unified

mass.

It therefore seems to me that the patent in suit is invalid for want of invention, because Cutler was doing what the art taught, and that did not constitute invention, but was simply what other skilled workmen were doing at the same time at other places. Atlantic Works v. Brady, 107 U. S. 192, 199, 2 S. Ct. 225, 27 L. Ed. 438.

Furthermore, it seems to me that the patent in suit is invalid, because all that Cutler did was to substitute one material for another, viz. crepe rubber for vulcanized rubber, in the shoes of the prior art, and crepe rubber was not discovered by him. New York Belting & Packing Co. v. Sierer, 158 F. 819, 86 C. C. A. 79.

[3] I am not unmindful of the presumption of validity given to an issued patent, but it is only a presumption that may be rebutted by proof, and I think the proof sufficient in this case.

[4] Neither am I unmindful that a process, the steps of which are old, may be patentable when co-operating with each other they produce a result that is new and useful, but I do not agree with the plaintiff that the making of vulcanized rubber shoes was not an analogous art, and all that the patent in suit discloses was shown in the Godfrey patent, No. 34,682, the only difference being that in that patent the soles were made of vulcanized rubber, the midsole mechanically secured, and the outer sole cemented to the midsole, and I am unable to see any invention in causing the contacting surfaces of two layers of crepe rubber, to which a solvent such as benzol has been applied, to adhere, in view of the tendency displayed by the two-unit sole (Defendant's Exhibit H) to contact without the application of a solvent or cement, because it seems to me to be perfectly obvious. [5] This is not a case where the question of invention is in doubt and may be sustained by proof of commercial success, but, if it was, the evidence does not show that the crepe rubber soles of the plaintiff have supplanted all others, because it has sold 800,000 to 1,000,000 pairs of Rajah soles in three years and but 430,000 pairs of these in 1924, while the United States Rubber Company alone is making 6,000,000 to 8,000,000 pairs of vulcanized soles annually.

There is no evidence to show how many crepe rubber soles were sold by others, although Mr. Cutler says that the 430,000 Rajah soles sold by the plaintiff in 1924 is only a small proportion of the total number made by all, but the evidence does not show that the total number of crepe rubber soles made even

10 F.(2d) 849

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Whatever success crepe rubber soles have had, has been due to the inherent quality of the rubber and not to the method of the patent in suit.

No long-felt want was filled by the patent in suit as crepe rubber soled shoes were on sale in London in 1921, some were brought over to this country in the fall of 1921, both Mr. Cutler and Hanan & Son had the subject called to their attention in the spring of 1922, Hanan & Son completed the soles of Exhibits B and T by June 29, 1922, and the application for the patent in suit was filed October 4, 1922.

If, however, I am in error, and invention may be found in applying the process described in the patent in suit, then such patent was anticipated by Hanan & Son in their prior use in the manufacture of Exhibits B, E, and T, all of which were completed some time before the filing of the application of the patentee for the patent in suit.

The patent in suit is invalid, both for want of invention, and by reason of anticipation; but, even if it were valid, no infringement by the defendant Cantilever Shoe Shop, Inc., has been shown.

A decree may be entered as to both defendants, dismissing the complaint with costs.

THE TRINIDAD.

(District Court, D. Oregon. November 23, 1925.)

1. Salvage 48-Evidence held to show that master of libeled vessel accepted tug's services because of tug master's statement, which was not true.

On libel for salvage service, evidence held to show that master of libeled vessel accepted tug's services because of tug master's statement that tug was sent by vessel's owner, which was not true.

2. Salvage 13-Towage rendered vessel having broken tiller, but in no immediate danger, held not to justify claim for salvage

service.

Towage of vessel having broken tiller, but otherwise seaworthy, and in no immediate danger, rendered by tug without consent of vessel's owner, and because its master was misinformed by tugmaster, held not to justify claim for salvage service.

3. Towage 3-Vessel held liable for towage, where owner did not disavow service on being informed thereof.

Where managing officer of owner of vessel, on being informed by radio that tug was assist10 F. (2d)-54

ing vessel, did not disavow services, but allowed it to continue, held that vessel was liable for towage, notwithstanding previous notice that tug's services would not be required.

4. Towage 8-Evidence held to show that agreed rate for services of tug in towing vessel was $250 per day.

Evidence held to show that agreed rate for services of tug in towing vessel was $250 per day, as claimed by owner of vessel, and not $350, as claimed by charterer of tug.

In Admiralty. Libel by the Siletz Navigation Company against the steam schooner Trinidad; the Hammond Lumber Company, claimant. Decree for libelant.

Winter S. Martin, of Seattle, Wash., and Maurice W. Seitz, of Portland, Or., for libelant.

G. C. and A. C. Fulton, of Astoria, Or., for claimant.

Joseph, Haney & Littlefield, and John C. Veatch, all of Portland, Or., and Green & Wold, of Astoria, Or., for crew of tug Douglas.

BEAN, District Judge. This is a libel to recover compensation for salvage services alleged to have been rendered by the tug Douglas to the steamer Trinidad.

The Trinidad is a steam schooner, without wireless apparatus, engaged in the coastwise lumber trade, and is owned and operated by the Hammond Lumber Company, which has offices in Portland and San Francisco. The libelant was, at the time the controversy arose, in the towing business with its principal office at Newport on Yaquina Bay, and had under charter from the owners the tug Douglas.

[1] On Tuesday, October 28, 1924, the Trinidad, while on a voyage from Grays Harbor to San Pedro with a cargo of lumber, encountered a southwest gale some 25 or 30 miles off the Oregon coast and south of Yaquina Bay. During the night of that day one of her stanchions parted, and her deckload shifted slightly. At 1 o'clock on Wednesday afternoon her tiller stock broke, so she was without steerage way, but in all other respects was staunch and seaworthy, and she was in no peril or immediate danger.

About 3 o'clock on the afternoon of Wednesday the steamer Oleum offered her assistance, which was declined. At the request of the master of the Trinidad, however, the Oleum sent a wireless message to the owners of the Trinidad at Portland, stating her condition, and requesting that a tug be sent to her assistance. The Oleum

stood by until word was received from her owners that the request would be complied with, when she proceeded on her way.

The Trinidad was also spoken by the Patrician some time Friday afternoon. The message from the Oleum to the owners of the Trinidad was picked up by the wireless operator of the tug Douglas, then lying at a dock at Yaquina Bay.

Mr. Noon, the manager of the libelant, was in Portland at the time, and was advised of the condition of the Trinidad, and that she was asking for a tug. About 10 o'clock in the evening he telephoned Mr. McLeod, the vice president and manager of the Hammond Lumber Company, and inquired whether he could be of any assistance, and, after some conversation between them, it was agreed that the Douglas should go to the assistance of the Trinidad for a stipulated rate per day for her services. Mr. Noon had some telephonic conversation with the master of the Douglas on the same day, concerning a proper charge to be made for the services of the tug. The Douglas was unable to put to sea on Thursday on account of the condition of the bar at Yaquina. McLeod was advised by Noon of that fact, and thereupon proceeded to make arrangements for another tug, and on Friday morning he called Noon by telephone, and told him that he did not want his tug, as he had arranged with the coast guard Algonquin to go to the assistance of the Trinidad.

Thereafter, and notwithstanding such information, Noon ordered the tug to sea to pick up the Trinidad, without informing its master that the arrangements with McLeod were off.

The Douglas left Yaquina early in the afternoon of Friday, and spoke the Trinidad some time between 8 and 9 o'clock on that evening, and a conversation was had between the masters of the two vessels. There is a conflict in the testimony as to what was said. The master, chief officer, engineer, and other employés of the Trinidad testify that, when the tug approached, the master of the Trinidad asked, among other things, "Who sent you," and the reply from the Douglas was "Your office in Portland," while the evidence on behalf of the tug is that the reply was, "From Portland."

I have carefully read and considered all the testimony in the case, and am clearly of the opinion that the weight of the evidence and the probabilities are with the Trinidad. The master of the Trinidad had an opportunity to obtain assistance from either the Oleum or the Patrician if he had so desired.

He did not ask for such assistance because he considered his vessel was in no peril, and he had been advised that the owners were sending a tug. It is but natural, therefore, that, before taking a line from the Douglas, he would want to know whether she had been sent by his owners, and the answer of the tug, "From your owners in Portland," was such as would naturally be given by it, since it knew of the negotiations for its services, and was not advised that they were off, and that its owner had been notified that its services were not required.

The master of the Trinidad, relying upon the information thus received, took a line from the tug. About 12 o'clock Friday night the Algonquin appeared, stood by until morning, when she attached a line to the stern of the Trinidad, and in charge of the two vessels she proceeded on her way, using her own power, arriving at Astoria about 1 o'clock on the afternoon of Sunday, November 2d.

On the next day, without any demand for payment or settlement, and without giving the owners an opportunity to pay without suit, this libel was filed by the Navigation Company for itself and on behalf of the general owner of the tug, her master, and crew, claiming the sum of $35,000 as salvage. The master and crew were not represented at the trial, and probably have abandoned any claim on their behalf. A receiver has been appointed for the Navigation Company, and apparently the only party interested in this litigation is the general owner of the tug, who was made a colibelant at the trial. [2] In my judgment this is not a salvage case. The services rendered by the tug were commenced by it against the wish and without the consent of the owners of the Trinidad, and because her master was misinformed as to the true condition of affairs. Neither the Trinidad, her cargo, nor the lives of her crew were in such danger as to justify a salvage service without the consent of her master

or owner.

[3, 4] About 9:30 o'clock Saturday morning, McLeod was advised by radio that the Douglas was assisting the Trinidad. He did not disavow the service, but allowed same to continue, and therefore she is liable, I take . it, for a towage service. There is no evidence as to the value of such service other than what can be gained from the conversation between McLeod and Noon on Wednesday evening. Their testimony is in conflict. Noon says the rate agreed upon was $350 per day, while McLeod says it was $250.

Noon's conduct in the transaction in

10 F.(2d) 851

dicates so plainly that he was attempting to lay the foundation for salvage service without the consent and over the objection of the owners of the Trinidad, and his testimony is in some respects so lacking in that frankness which should characterize a witness, that I am disposed to accept the testimony of McLeod as to the rate agreed upon.

A decree will therefore be entered in favor of the libelant for two days' towage service at the rate of $250 per day, without costs.

GENERAL ELECTRIC CO. v. MINNEAPOLIS ELECTRIC LAMP CO. (District Court, D. Minnesota, Fourth Division. October 9, 1924.)

1. Patents 297(3)-Preliminary injunction will be granted, where there has been prior adjudication sustaining patent and infringement thereof in same or another circuit.

Where there has been a prior adjudica

tion sustaining patent, and infringement thereof in same or another circuit, validity of patent being contested on full proofs, trial court should, upon motion for preliminary injunction, sustain patent, and leave question of its validity to be determined upon final hearing.

2. Patents 297(7)—New matter, other than introduced in prior suits to sustain validity of patent, must be such as to lead court to believe patent would have been held invalid, in order to defeat preliminary injunction.

In order to defeat preliminary injunction, where patent has been sustained in same or another circuit, new matter relied upon must be of such character as to lead the court to believe that, had new matter been presented in former suit, patent would have been held invalid.

3. Patents 297(7)-French court's decision, holding patent invalid, can only raise doubt as to validity where patent was held valid in another circuit which had before it French court's decision.

Decision of the French court, holding invalid French patent covering same invention as United States patent in suit can only serve to raise doubt as to validity of French patent, and is not new matter which might affect the issuance of preliminary injunction, in view of fact that French court's decision was before other United States courts which sustained the French patent.

4. Patents 297(7)—New matter set up with old, insufficient to have changed prior decision sustaining patent, will not defeat issuance of preliminary injunction.

Where so-called new defenses are in reality old defenses, and new matter set up with old would hardly be sufficient to have changed prior decision sustaining patent, such new defenses, although entitled to full consideration upon final hearing, will not defeat issuance of preliminary injunction.

5. Patents

235-Retaining principle and mode of operation and attaining result by use of same or equivalent mechanical means constitutes infringement, notwithstanding form has been changed.

One may not escape infringement by adding to or substracting from a patented device, by efficient, while he retains its principle and mode changing its form or by making it more or less of operation, and attains its result by use of same or equivalent mechanical means.

6. Patents 328-1,018,502 and 1,180,159, claims 4, 5, 12, and 13, for incandescent lamp and bodies, held infringed.

Just and Hanaman patent, No. 1,018,502, for incandescent bodies for electric lamps, and Langmuir patent, No. 1,180,159, claims 4, 5, 12, and 13, for incandescent electric lamp, held infringed.

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8. Equity

65(3)-Maxim, “He who comes into equity must come with clean hands," applies only to case where the unconscionable conduct of the plaintiff is directly connected with the subject-matter of the suit.

Maxim, "He who comes into equity must come with clean hands," applies only to case where the unconscionable conduct of the plaintiff is directly connected with the subject-matter of the suit.

9. Patents 283 (1)-Fact that patent owner had breached contract with defendant would not be defense to patent infringement suit.

Fact that owner of patent had breached contract with defendant would be no defense to patent infringement suit against defendant. 10. Patents 316-Defendant to patent infringement suit cannot compel plaintiff to perform contract which it had alleged was illegal and void.

Where counterclaim to patent infringement suit asks for relief that it be given right of purchasing from plaintiff according to contract, after having made allegation that sales made under such contracts were illegal and void, held that defendant had no valid cause of action to enforce such contract.

11. Patents 283 (1)—Counterclaim to patent infringement suit, which is legal and not equitable, cannot be set up.

Under new equity rule 30, counterclaim to patent infringement suit, which is legal and not equitable, cannot be set up.

In Equity. Suit by the General Electric Company against the Minneapolis Electric Lamp Company for an injunction and accounting for infringement of patents. On motion for preliminary injunction, and on motion to strike out parts of answer. Pre

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