Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U.S. 364 (1942)

MR. JUSTICE ROBERTS delivered the opinion of the Court.

The suit was for the infringement of Claims 6, 23, 42, 85, and 91 of the McFeely Patent No. 1,558,737 for improvements in automatic heel lasting machines. The District Court held the claims valid and infringed.{1} The Circuit Court of Appeals affirmed.{2}

The defendant sought certiorari on the ground that the claims were invalid under recent decisions of this Court because they constituted attempts to repatent a broad combination of old devices -- bed lasters and automatic tackers -- and embodied only aggregations of new unpatentable mechanisms with old mechanical combinations. In pressing us to grant the writ, the petitioner insisted that it desired no retrial of the facts, but merely a proper application of the law to the facts found by the courts below. We granted the writ. 314 U.S. 600.

In the manufacture of shoes, after the upper, the lining, and the counter have been placed on a wooden last, and an insole has been tacked to the last, the protruding edges of the materials are flattened over the insole and tacked down at the toe and shank of the shoe. The next operation is "heel seat lasting," which consists of conforming the upper materials and insole snugly to the contour of the heel of the last and fastening them down with tacks. Originally this was done by hand. Later so-called "bed" machines were used which employed horizontally moving plates called "wipers" to flatten the projecting materials over the heel seat, where they were tacked by hand. Heel lasting on a bed machine involves the repeated use of levers and a foot treadle, and the result is not uniform.

March 2, 1915, McFeely obtained a patent for a machine which would automatically perform, in one power stroke, the wiping and tacking necessary to complete the process of heel seat lasting. In this patent, he claimed numerous combinations of means to accomplish specific steps in the process, amongst others, combinations to effect the clamping of the last, and positioning it during the process, and to operate the wipers and the tackers in proper relation to the last. A declared purpose was that the machine should be able to last the heels of shoes of different sizes. One machine was built in accordance with the patent and used for some time. It was found to work satisfactorily on shoes of a small range of sizes, but not to work on shoes of a wide range of sizes, as would be required in the operations of the ordinary factory.

October 27, 1925, McFeely obtained the patent involved in this case for improvements{3} of the lasting machine described in his earlier patent. The improvements embodied in the claims in suit had to do with a new combination of elements for clamping the last in the machine, a new combination of elements for the operation of wipers and tackers in fixed relation to each other and to the heel of the last, and a new combination of means for positioning the last vertically and automatically altering the position during the operation. A manual adjustment was a part of each of these combinations by which the heel clamping, the wiping and tacking, and the vertical positioning mechanisms could be adjusted in advance for different sizes of shoes. The respondent is the assignee of both McFeely patents.

The petitioner purchased from a German maker, and used, four machines which were found by the courts below to be exact copies of the respondent’s commercial machines made under the patent in suit. So thorough was the imitation that even minor features not covered by the patent were copied. At the time of the trial, alterations had been made in the petitioner’s machines, but the courts below found that these were for the purpose of avoiding infringement, and that they were not effective to that end.

If the petitioner’s statements in support of the application for certiorari are taken at face value, the point for decision is extremely narrow. In argument, however, the petitioner sought to overturn the concurrent findings below and to have us redetermine the question of the novelty and usefulness of the improvements described in the combination claims held valid and infringed.

The courts below have concurrently found that none of the earlier patents cited, including that of McFeely, embodied the combinations of the challenged claims covering means for clamping and holding the last, means for the movement of wipers and tackers in fixed relation to each other, and means for the timed vertical positioning of the last during the power stroke of the machine, each combination including means for manually adjusting the mechanism in advance for different sizes of shoes. These findings are to the effect that the new combinations, while they involve old mechanical constructions, combine these in a new way so as to produce an improved result. These are findings of fact,{4} despite the petitioner’s apparent contention to the contrary, and we will not disturb such concurrent findings where as here, there is evidence to support them.{5} The claim that the combinations are merely of old elements, which perform no new function and produce no new result, must be overruled.

We come to the petitioner’s contention that the courts below have held the patent valid and infringed on the theory that the improvements and adjustments disclosed in the claims entitle McFeely to repatent the entire combination of the old devices, known as bed lasters and automatic tackers. Petitioner argues that they have so held only because the mechanism of the patented machine permits of its operation upon a wider range of sizes of shoes than the machine earlier patented, and that it does so operate merely because of three trifling mechanical adjustments which it embodies.

The contention is not in accord with the holdings below. It is true that both courts found that manual adjustments are provided which are not found in the earlier McFeely patent or in the prior art as applied to the three combinations embodied in the claims in suit. But the findings do not stop there. In respect of each claimed combination, both courts have found that they embody other improvements, in addition to mere manual preliminary adjustments, and that each combination exhibits invention in that its elements cooperate in a new and useful way to accomplish an improved result.

The petitioner, however, contends that the breadth of the claims in suit is such that, instead of patenting the combinations claimed as improvements over the prior art, and restricting the claims to the improvements, the patentee sought to blanket every machine which combines the old bed laster with the equally old automatic tacking device. It is said that our decisions in Bassick Mfg. Co. v. Hollingshead, 298 U.S. 415, and Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, forbid any such extension of the patent monopoly.

We think, however, that each of the claims is confined to a combination of specified means applicable only to a restricted portion and function of the whole machine. In stating his claims, the patentee sometimes says "a machine of the class described having, in combination. . . ." Obviously, no machine will infringe which does not have in combination the means specified in each of the claims for accomplishing the particular portion of the total operation covered by the claim. Other claims refer to "a lasting mechanism of the class described having, in combination. . . ." The same comment is applicable. Other claims read: "In a machine of the class described, the combination. . . ." Such preliminary statement is commonly and properly used to specify the type of machine in which the claimed subsidiary combination of elements works an improvement over the prior art.{6} In describing the novel combinations embodied in the claims, it was necessary to make reference to certain portions of the machine in connection with which the new combinations were to operate and with which they were to dovetail,{7} but, in mentioning these other mechanical parts, the claim does not purport to embody them as elements of the claimed combination. To construe such a claim for a combination of new elements intended to be embodied in some well recognized mechanical aggregation, such as a sewing machine or a washing machine, as a claim covering all the mechanical details, or all the well known parts of the machine would be to nullify every patent for an improvement in a type of machine long in use, and would invalidate thousands of patents for improvements in standard machines. It would be difficult to describe an improvement in a washing machine without naming such a machine as the thing to which the patent is addressed, and equally difficult to refrain from referring to various parts of the machine, such as the tub or the motor which actuates the washer. But it has never been thought that a claim limited to an improvement in some element of the machine is, by such reference, rendered bad as claiming a monopoly of tubs or motors used in washing machines.

Bassick Mfg. Co. v. R. M. Hollingshead Co., supra, and Lincoln Engineering Co. v. Stewart-Warner Corp., supra, lend no support to the petitioner’s argument. Those were suits for contributory infringement. In the Bassick case, the invention was of an improved pin fitting for receiving grease. The combination claimed was stated as a combination of a grease gun, a coupler, and a pin fitting of the improved type. It was sought to convict one who sold grease guns, common in the prior art, of contributory infringement because the seller knew, and intended, that the guns should be used with the improved pin fitting. The effort was to extend the monopoly embodied in the improved pin fitting so as to prevent sale or use of well known grease guns of the prior art, although whatever was novel in the improved pin fitting was peculiar to itself, and had nothing to do with the grease gun commonly used in connection with all pin fittings. Had the claim merely recited that it applied to an improved type of pin fitting to be used in connection with grease guns and couplers, the claim for the pin fitting would have been good, and would not have been rendered bad by the statement that the fitting was intended for use in connection with those other instrumentalities.

The Lincoln Engineering case went on the same principle.

The present suit for infringement is not for the use of an automatic bed lasting and tacking machine as such. It is for the use in such a machine of improvements of certain features of the machine. The respondent does not pretend to fix liability on the petitioner for contributory infringement by reason of the use of an automatic power driven lasting and tacking machine which does not employ the novel improvements of the combinations claimed, and could not do so. It is admitted, as it must be, that the petitioner is free to use the machine shown in the first McFeely patent, which has expired, or any other automatic lasting and tacking machine which does not embody the three improvements covered by the claims in suit.{8} It is not free, however, to use such a machine if it embodies any one of the three combinations embraced in those claims respectively. The use of these combinations is the basis of its liability for infringement.

The decree is

Affirmed.

1. 29 F.Supp. 1015.

2. 121 F.2d 273.

3.

Any person who has invented or discovered any new and useful . . . machine . . . or any new and useful improvements thereof . . . may . . . obtain a patent therefor.

R.S. 4886, as amended, 35 U.S.C. § 31.

4. Battin v. Taggert, 17 How. 74, 85; Bischoff v. Wethered, 9 Wall. 812, 814; Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 446; Stilz v. United States, 269 U.S. 144, 147.

5. Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 416, 422; Adamson v. Gilliland, 242 U.S. 350.

6. Compare e.g., Grier v. Wilt, 120 U.S. 412, 420-421; Morley Machine Co. v. Lancaster, 129 U.S. 263, 266; Keystone Manufacturing Co. v. Adams, 151 U.S. 139, 142; Deering v. Wingona Harvester Works, 155 U.S. 286, 289-290; Boyd v. Janesville Hay-Tool Co., 158 U.S. 260, 264; Kokomo Fence Machine Co. v. Kitselman, 189 U.S. 8, 10, 14; Altoona Publix Theaters, Inc. v. American Tri-Ergon Corp., 294 U.S. 477, 482.

7. Compare McCormick v. Talcott, 20 How. 402, 404; Loom Company v. Higgins, 105 U.S. 580, 586.

8. Seymour v. Osborne, 11 Wall. 516, 541, 548.