*350

(133 U. S. 349)

BURT et al. v. EvORY et al.1

(February 3, 1890.)

PATENTS FOR INVENTIONS-PATENTABILITY-SHOES.

Letters patent No. 59,375, issued November 6, 1886, to Alexander F. Evory and Alonzo Heston, for an improvement in boots and shoes, which consists of "a shoe when constructed with an expansion gore flap, the external fold of which is attached to and in front of the quarter, and the internal fold of which is attached to and in the rear of the vamp, the said several parts and pieces being respectively constructed and the whole arranged for use substantially in the manner and for the purpose set forth," must be construed to be a claim for a manufactured article, and is a mere aggregation of old parts with mechanical improvement in the arrangement, which is not a patentable invention.

Appeal from the circuit court of the United States for the district of Massachu

setts.

Geo. D. Noyes, for appellants. F. H. Betts, for appellees.

LAMAR, J. This is a suit in equity, brought in the circuit court of the United States for the district of Massachusetts, by Alexander F. Evory, Alonzo Heston, and J. B. Belcher against John W. Burt and Fred. Packard, composing the firm of Burt & Packard, for the alleged infringement of letters patent No. 59,375, issued to said Evory and Heston, November 6, 1866, for an improvement in boots and shoes." The bill filed December 9, 1880, alleged the issue of said letters patent to the plaintiffs Evory and Heston; the assignment of a onehalf interest therein to the plaintiff Belcher: the granting of an exclusive license to the National Rubber Company to manufacture rubber goods containing the inven tion patented; and the infringement by the defendants, which was said to consist in their having made and sold shoes and gaiters constructed in accordance with the specifications and drawings contained in letters patent No. 205,129, granted to the defendant Packard, June 18, 1878, and also other shoes and gaiters, all of which contained the invention in the plaintiff's patent. The bill prayed an injunction, an accounting, and damages. The defenses pleaded in the answer were non-infringe ment; an anticipation of the plaintiffs' invention by certain English patents, dated in 1856 and 1860, respectively; and want of novelty in the invention, because, long prior to the issue of plaintiffs' patent, one Jacob O. Patten, of Philadelphia, had mauufactured and sold shoes constructed on the same plan as described in that patent. Issue was joined, proofs were taken, and on the 3d of February, 1883, the circuit court entered a decree sustaining the plaintiff's patent, and adjudging that there had been an infringement of it by the defendants; and accordingly referred the case to a master for an account of profits, and for the determination of damages, if any, by reason of such infringement. Evory v. Burt, 15 Fed. Rep. 112. October 13, 1884, the master filed his report, in which he found that the defendants had made and sold 41,297 pairs of shoes which infringed the plaintiffs' patent, but that, as they made no difference in price between shoes

'Reversing 15 Fed. Rep. 112.

containing the invention of the plaintiffs and those without it, they therefore made no profit from such infringement; that Belcher was the only one of the plaintiffs who was engaged in making or selling shoes, and, as he made and sold less than 1,000 shoes containing the invention in the patent, he was not damaged by reason of defendants' infringement; but that, as the evidence showed that the plaintiffs had an established royalty of three cents a pair for shoes made under that patent, and had issued licenses and sold stamps to persons desiring to use their patent, the licensees paying such royalty, the defendants should. pay the plaintiffs that royalty on the num-2 ber of shoes made by them containing the infringing device, to-wit, 41,297 pairs; that is, the sum of three cents a pair, or $1,238.91. Exceptions were filed to this report, but they were overruled by the court, and on the 29th of January, 1886, a final decree was entered confirming it, and assessing damages in the sum of $1,238.91, that being the amount of the royalty found due An appeal from that deby the master cree brings the case here.

The material parts of the specification of the plaintiffs' patent and the drawings are as follows: "Our said invention consists in a novel mode of constructing shoes a and gaiters, whereby the ordinary elastic goring at the sides and the tedious lacing up at the front are both dispensed with, while at the same time the tops will expand to receive the foot, and fit neatly and closely around the ankle when the shoe is on, being also water-tight to the extreme top of the shoe. * Figure 1 represents a side elevation of our invention; Fig. 2 a plan or top view of the same; and

gore flap, (marked 'D.') B represents the back of the shoe, and has attached to its front edge, b, as shown, a corresponding gore flap, (marked 'C.') The front and back are sewed together at those parts of their contiguous edges marked 'a'' and 'b',' and the flap, C, is arranged upon the flap, D, bringing their corresponding edges, e and d, upon each other, which are then sewed together; the two flaps thus arranged forming a double extension gore upon each side of the shoe, which readily expands to admit the foot, and which may then be folded forward over the instep, and be secured by a buckle or knot, or by a suitable lacing, as desired. * * We do not claim, broadly, for an extension gore flap inserted in the ankle of gaiter shoes, for this is fully covered by the broad claim of Samuel Babbit's patent, issued March 7, 1865, to which our patent will be subject; but our mode of construction is an improvement upon that, and all the other modes since patented, in the following particulars viz.: First, it requires less stock in its construction, and is therefore cheaper than those in which the gore is inserted in the heel; second, it is neater in appearance, and, being adjustable to the ankle, it may be fitted even where there is a variation in the size of the shoe, thus rendering it more available in the construction of shoes for sale at wholesale; third, it avoids the wrinkle in the heel in Babbit's construction of shoes, which, being exposed to the friction of the leg of the pantaloon, soon wears into a hole; fourth, by giving expansion forward to the vamp in front of the ankle it admits of the more easy introduction of the foot, and allows a neater fit than is attainable when the gore is in the heel. What we do claim as our invention, and desire to secure by letters patent, is: A shoe when constructed with an expansion gore flap, C, D, the external fold, C, of which is attached to and in front of the quarter, B. and the internal fold, D, of which is attached to and in rear of the vamp, A, the said several parts and pieces being respectively constructed, and the whole arranged for use, substantially in the manner and for the purpose set forth." In construing this patent the court below followed the decision of the circuit court of the United States for the district of Connecticut (Judge SHIPMAN) in Evory v. Candee, 2 Fed. Rep. 542, and seemed to assume that no question was presented here touching its validity. After referring to the fact that the patent had been held valid in Evory v. Candee, supra, the court said: "Its validity is not now assailed, unless a wide construction is given to the claim; and this, as is most usual, is the difficult point."

The assignments of error are seven in number; but, in the view we take of the case, it is necessary to examine only the first three of them, which are that the court erred (1) in holding that the patent is valid; (2) in holding that, in view of the antecedent state of the art, the patent had been infringed by the defendants; and (3) in construing the patent. These assignments may be properly considered together. In construing the patent, it will be necessary to consider the state of the art when the

application for it was made. The object sought to be accomplished was to make improvements upon ordinary shoes, so that they would be water-tight and would exclude dirt. It is shown by the record that long prior to the time when the application for the patent was made there had been a number of efforts made in the direction of accomplishing the same result. As early as 1856, Stephen Norris, of England, received a patent there for "improvements in the manufacture of boots and shoes and other coverings for the human feet;" and in 1860, Norris and Robert Rogers obtained another patent in England relating to the same subject-matter, and intended to be an improvement upon the invention in the prior patent. These patents were broad in their claims, and were intended to cover any device by which boots and shoes could be made watertight by means of the cut of the various pieces composing them. Various designs were adopted and used by the patentees in those patents for the manufactured article to which the patents related. In his specification to the patent of 1856, Norris says: "My improvements consist in adapting to boots, shoes, and other coverings for the human feet, gussets of novel and improved construction, in combination with ordinary fastenings, for the purpose of enabling boots, etc., to be readily adapted and secured to and detached from the feet, and at the same time preserved water-tight at such parts when necessary. The following are a few examples of the mode of adapting my said improvements to certain descriptions of boots, shoes, and other coverings for the human feet. First, as regards ladies' boots, I propose to employ side gussets of cloth or leather, so combined with elastic material as that the said gussets shall always be preserved flat, instead of wrinkling or overlappping, as heretofore. Another mode is to secure folding side gussets and fastenings, composed either by interlacing into two rows of hooks strips of elastic or eyelets. openings for the gussets I propose to make at each side of the boot, and to extend it from the top in an ornamental direction, either towards the toe of the boot or the sole thereof, or towards the heel. And as regards gentlemen's boots and other similar coverings, I propose, in manufacturing boots known and distinguished as 'Bluchers,' to form the side seams thereof, or close the fore' and 'back' parts, somewhat after the manner of Wellington boots, so as to resemble the same when on the feet, and to enable Blucher boots to be more readily put on and taken off than heretofore, by employing the aforesaid gussets in combination with boots of the above description. In order to explain my said invention as completely as possible, I now proceed to describe the best means I am acquainted with for carrying the same into practical effect, reference being had to the illustrative drawings hereunto annexed, and to the numeral figures and letters of reference marked thereon, respectively, as follows." Then follows the description of the drawings relating to the patent, and, in conclusion, the specification says: "1 would remark that the principal points to

The

BLATCHFORD, J. This was an action to recover damages for personal injuries brought by Barbara Merchant against the Quebec Steam-Ship Company, a Canadian corporation, in the superior court of the city of New York, and removed by the plaintiff into the circuit court of the United States for the southern district of New York. The case was tried by a jury, which ound a verdict for the plaintiff for $5,000, on which a judgment was entered in her lavor for that amount, with $306 interest from the time of rendering the verdict to the time of entering judgment, and $60.25 costs,-in all, $5,366.25. The plaintiff was the stewardess of the steam-ship Bermuda, a vessel belonging to the defendant, and one of a line of vessels plying between the city of New York and the West Indies. She had been employed on the vessel for about 18 months. It was her duty as stewardess to attend to the ladies' rooms in the cabin, and, in the course of that duty, to empty slops, as to which he orders were to throw them over the side of the ressel. The cabin was on deck. A railing extended around the vessel, and consisted of fou. horizontal iron rods, which were supported, at intervals of about 4% feet, by stanchions. In this railing there were openings or gangways, for receiving and discharging freight and passengers. Three of the gangways were for passengers. One of them faced one of the doors of the cabin, which open on the deck. In order to use these openings or gangways, the four iron rods which formed the railing of the gangway, instead of being fixed immovably to the stanchions, were each of them fastened at one end to a stanchion by a ring or eyelet in which the rod could swing, the other end of each rod being formed into a hook which went into an eye fastened on another stanchion to receive it. This was a proper construction of the railing at the gangway. On the 28th of December, 1883, the vessel was at anchor from a mile and a half to two miles off the shore of the island of Trinidad, one of the islands at which she stopped in her trips. Some passengers from New York were to land at Trinidad, and their baggage was put off through the gangway on the starboard side aft, into a boat from the shore. To do this, the four rods composing the railing in the gangway were raised, and the gangway was opened. After the baggage had been discharged, the carpenter and the porter of the vessel undertook, according to the testimony of a witness for the plaintiff, to replace the rods in their proper position. He says that the porter, one West, was at one stanchion, pushing forward, while the carpenter stood at the other, where the hook fitted into the eye, trying to force it into the eye. It began raining, and the carpenter and West were beginning to get wet." Thereupon the carpenter left the gangway, and the porter left it soon afterwards. The rods were not placed in their proper positions, but remained so far unfastened that the hooks were not secured in the eyes. The porter testified, as a witness for the defendant, that he told the carpenter to put the rods in, and that he replied," Wait until the rain

99

goes over. While the rods were thus unfastened, the plaintiff came out of the cabin door with a pail of slops, to throw its contents over the side of the vessel. She leaned over the railing at the gangway, the rods gave way, and she fell overboard, through the opening, and was seriously injured. She probably struck the edge of a small boat which was lying there, and thence fell into the water. She had been in the habit of emptying slops at this gangway, but had never noticed the hooks. The ship's company consisted of 32 or 33 persons, divided into three classes of servants, called three departments,-the "deck department," the "engineer's department," and the "steward's department." The captain, the first and second officers, the purser, the carpenter, and the sailors were in the deck department. The engineers, the firemen, and the coal-passers were in the engineer's department. The steward, the waiters, the cooks, the porter, and the stewardess were in the steward's department. Every one on board, including the plaintiff, had signed the shipping articles, and she had participated in salvage given to the vessel. The master or captain was in command of the whole vessel. At th close of the evidence, the counsel for the defendant requested the court to direct the jury to find a verdict for the defendant, ou the grounds (1) that the injury sustained by the plaintiff was one occasioned, if there was any negligence, by the negligence of a fellow-servant; and (2) that, on the uncontradicted testimony, the plaintiff herself was guilty of contributory negligence, and could not recover. The court refused so to direct the jury, to which refusal the defendant excepted.

We think the court ought to have directed the jury to find a verdict for the defendant, on the ground that the negligence was that of a fellow-servant, either the porter or the carpenter. As the porter was confessedly in the same department with the stewardess, his negligence was that of a fellow-servant. The contention of the plaintiff is that, as the carpenter was in the deck department and the stewardess in the steward's department, those were different departments, in such a sense that the carpenter was not a fellow-servant with the stewardess. But we think that, on the evidence, both the porter and the carpenter were fellow-servants with the plaintiff. The carpenter had no authority over the plaintiff, nor had the porter. They and the plaintiff had all signed the shipping articles; and the division into departments was one evidently for the convenience of administration on the vessel, and did not have the effect of causing the porter and the carpenter not to be fellow-servants with the stewardess.

The injuries to the plaintiff were caused solely by the negligence of one or the other of two fellow-servants, who were in a common employment with her; and there was no violation or omission of duty on the part of the employer contributing to such injuries. Neither of her fellow-servants stood in such relation to her orto the work done by her, and in the course of which her injuries were sustained, as to make his negli