BOGBBS.

MOFFITT

v.

RQ,GERS

and others.

July 2, 18SI.)

, 1.

PATENT

(OircuU Court, D. MaSBuchusetts.

No. MACHINE-VALIDIU. Letters patent No. 178,869, granted June 20, 1876, to John R. Moffitt, for process a.nd,machine for manufacturing counter stiffeners boots and shoes, held, invalid. While a patent may hardly be llustained for a process. or method which Call· sists only.in applying an old machine toa new use, it will only be supported when the new use is so remote from the old use that it is evident that a new idea has been discovered.

2. PATENT-NEW ApPLICATION OF OLD MACHINE.

3. SPECIFICATION-ADMISSION BY PATENTEE.

An admission by a patentee, in his specification or application for 'a patent, contradicted by him. cannot Leggett y.AverN, 101 U. 8.256.
PATENTAJ;lIUTY.

I. COUNTER STIFFENERS - OLD METHODS- COM!Bnu'l';J;O.N OF OLD METHODS"':'

The methods of manufacturing counter stiffeners for boots and shoes, either by forcing the blank through a mould by means of a revolving former; or by molding the blank by pressure between a male and female mould, being old, complainant's process combining both such methods, in the manufacture of each counter, in a single machine, held, wt patentable.

I.nEquity. B. F; Butler;E: F. Hodges, and J. C. Maynadier, for complainant. Chauncey Smith and T. L.Wakefield, for defendants. LOWELL, C. J. A patent was granted to the plaintiff, June 20, 1876, NQ. 178,869, for an improvement in machinery for manufacturing connterstiffenera for boots and shoEls,. The patentee, in his specification, says:
":My invention to the shaping of the counter from the blank; and consists, primarily, in using ,a qouble .process for effecting this, as will be "more fully explained hereinafter,-the first process consisting in shaping them by means of a former mOVing upon an axis, and suitable means for holding the blank up to the former; and the secol1d process consisting in moulding the oounter 80 formed over a male mould of the desired form. By this double process, a counter is formed which suits the wants of the consumer much bette£ than any other known to me."

These counters Oli counter stiffeners are made of leather, or leather board, whichis.a ,composition of leather, and are used .to increase the thickness a.nd .resistance of a hoot or shoe at the heel. To he most conv"lnienttor tbj;l makers. of boots and shoes, they. should correspond tQ -the shape of the heel. Several machines haa been invented by the. plaintiff and. by others for their manufacture before 1876..Jt :extremely, difficult to cODfltruetmachinery

148

FEDERA.L.BEPORTERi

,{hich would form a complete heel-shaped counter at one operation. The objection to the ordinary method of moldil1g by pressure between a and mould lies in the resiliency of the material; that is, its tendency to resume its original shape. The difficulty with mftchines which used a revolving "former" to press the material with groat force through, instead of into, a mould, consisted in obtaining Cote's machine, which has been before me in two the exact cases to which the plaintiff is a party, makes a counter which is circular in cross section, and therefore needs to be reshaped by hand or by machinery. In the patent now in suit, the plaintiff describes improvements in machinery for both parts of the operation, for forming a counter, and for reshaping it, and his claims, numbered from 2 to 6, are for these improvements, which are not infringed by the defendants. But what he considers the great future of his invention is the "process" of submitting the counter first to one and then to the other of the old methods. He says: "This process of shaping counters, consisting in first shaping them by means of a former, a, and theu molding them in the exact form desired over the male mold, e, constitutes the chief feature of my invention, and its great merit is that counters can be made by my improved process, not only with the proper curves to suit the trade, but also, in all other respects, of the exact shape required; and, so far as I know, I am the first to obtain this." He goes on to say, as I have said, that counters had been made upon machines working in either mode, and to point out the objections to each. His first and broadest claim is for "the improved process of shaping counters above described, consisting in first giving the proper curves by a revolving former, substantially as described, and afterwards giving the exact shape by forming the counter over a male mould, all as set forth." The defendants make counters by first passing counter-blanks though a Cote machine, patented in 1874, and then shaping them upon a Hatch machine, patented still earlier. They do not use the specific improvements in machinery described in patent No. 178,869, but they do use the process of the first claim. As I intimated at the hearing, I am not aware that a patent has ever been sustained for a process or method which consisted of employing an old machine for the very purpose for which it was made. If any person discovers how to use an old machine to the best advantage, he is only a skilful workman, not an inventor. The plaintiff undertakes to prevent the owners of a machine made for moulding counters from using it to finish

MOFFITT.. V.R.QUERS'.

149

counters already begun upon another old machine for making counters. He might as well, in my opinion, claim a patent for passing a counter twice through the same machine. I do not mean to say that a patent cannot possibly be supported for a process or which consists only of applying an old machine to a new use. Many of the ablest writers and jurists assert that such a claim is possible. I have never seen a case in which a patent of this sort has been sustained, and there are some in which it has been rejected. If one is ever supported, it will be when the new use is so remote from the old use that a court or jury can say that a new idea has been discovered. In the case of Brook v. Ashton, 8 E. & B. 478, affirmed, 32 L. T. Rep. 041, the patentee applied to fibers of wool and hair a process which had been before used for burnishing threads of cotton linen; but it was held, as matter of law, to be a mere double use, and the court refused to leave to the jury the question whether a new result was obtained. Certainly hair is iess like cotton than a counter-blank partly made into a counter is to the counter-blank. I am further of opinion, upon the evidence, that the process had been used by the defendants and by Russell & Co. before the plaintiff's application; whether for more than two years before that time, I do not decide. An attempt is made to carry back the plaintiff's invention for nine years, by evidence that he conceived the idea of the double process and carried it out to a practical succeRS in 1867. The fact is denied by the defendants, and it is doubtful whether, so far as counters are concerned, the experiments of 1867 resulted in anything like a completed invention. For all the purposes of litigation the point seems to be settled in the patent; for it is explicitly stated in the specification that both the processes which the plaintiff has united into a single process are old; and this must mean old at the date of his invention. He cannot now be heard to contradict this admission. Leggett v. Avery, 102 U. S. 256. Bill dismissed with costs.

11;Q

J'JIlDJDBAL BEPOBTEB.

THE CoBVALLIS FBUIT Co.

1. 1m

UNGEMENT.

V.

CURRAN and others.

August 6,1881.)

(o.rcuit Court, D. Oregon.

A machine for drying fruit, which employs substantially the formg and

nechanical contrivances of the one patented to William S. Plummer, is an i Ifringement of such patent, although in some respects it is an improvement , Ipon the latter.

2.

7 VIDENCE,

A patent is primajacie evidence that the patentee was the inventor of the thing patented, and of its novelty and utility.

Suit for Injunction. Wallis Nash, R. S. Strahan, and D. R. Kennedy, for plaintiff. Cyrus A. Dolph, W. R. Bilyeu, and J. K. Weatherford, for defend",nt. DEADY, D. J. 'On May 22, 1877, a patent, numbered 1£11,072, was issued to William S. Plummer "for an alleged new and useful improvement in fl'uit-driers," for the term of17 years; and on October 9th of the same year a re-i8sue of said patent, numbered 1D5,948, was made to him. The specification I of the second patent states that"The object of this invention is to furnish an improYed apparatns for drying fruit, which shall he simple in construction, convenient in nse, and etleetive in operation, drying the fruit rapidly and evenly, aJl.cl which sh:ll1 be so constructed that it Illay be readily taken down, set up, and moved fl'omplace to place;" and that "the invention consists in the case provided in its lower part with a lining set at a little distance from its walls, the large door, the small door, the or slides to reeeive the fruit frames or trays, the doors, and the cover and· cap to allow the moisture-laden air to escape, to adapt it for use in drying frUit." I:

Having thus described his inrention, he claims "as new""The case, A, provided in its part with a lining, B, set at a little distance from its walls, the large door; G, the small door, H, the cleats or slides, I, to receive the fruit frames or trays, 'and the cover and cap, L M, to allow the Illoisture-Iaden ail' to eseape, SUbstantially as herein shown and described, to adapt it for use in drying fruit."

On December 1, 1870, the plaintiff, the Corvallis Fruit Company, became the lawful assignee of said patents and improvements for the county of Linn, Oregon; and on January 13, 1881, it brought this suit to restrain the defendants from infringing the same by the manufacture and sale of fruit-driers, in said county, "produced by the inventions and improvements described and claimed in said letters patent." On June 27th an application for a provisiona.l injunction