The claim in letters patent No. 59,375, granted to Alexander F.
Evory and Alonzo Heston, November 6, 1866, for an "improvement in
boots and shoes" was for a manufactured article, and not for the
mode of producing it, and, as it was merely a carrying forward of
the original idea of the earlier patents on the same subject --
simply a change in form and arrangement of the constituent parts of
the shoe, or an improvement in degree only -- it was not a
patentable invention.
Not every improvement in an article is patentable, but the
improvement must be the product of an original conception, and if
it is a mere carrying forward or more extended application of an
original idea, an improvement in degree only, it is not an
invention.
The combination of old devices into a new article, without
producing any new mode of operation, is not invention.
In equity to restrain an infringement of letters patent. Decree
in complainants' favor. Defendants appealed. The case is stated in
the opinion.
MR. JUSTICE LAMAR delivered the opinion of the Court.
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 one-half interest therein to the plaintiff
Belcher;
Page 133 U. S. 350
the granting of an exclusive license to the National Rubber
Company to manufacture rubber goods containing the invention
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 noninfringement, 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 manufactured 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 F. 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
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 number of shoes made by
Page 133 U. S. 351
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 by the master. An appeal
from that decree 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 and gaiters whereby the ordinary elastic goring at the sides
and the"
image:a
Page 133 U. S. 352
"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 Figs. 3 and 4 represent detached views or
patterns of the several parts. Similar letters of reference in the
several figures indicate like parts of our invention. A represents
the front of the shoe, and has attached to its rear edge,
a, as shown, a 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,
c
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
Page 133 U. S. 353
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 F. 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
Page 133 U. S. 354
boots and shoes could be made water-tight 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 overlapping, as heretofore. Another mode is to secure
folding side gussets and fastenings, composed either by interlacing
into two rows of books strips of elastic or eyelets. The 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
Page 133 U. S. 355
says:
"I would remark that the principal points to be attended to in
these improvements are to have the gussets the proper size, and to
connect them to the front and back parts of the boot, or to the
back part only thereof, by sewing and stabbing, or other known
means, so that they may, when necessary, be rendered waterproof,
and this applies more particularly to men's boots. And as regards
the fastenings for securing the boots on the feet, I employ any of
the known means for that purpose."
And again he says:
"I hereby declare that I claim as my invention firstly the modes
above particularly described, set forth, and represented at figures
1, 2, 3, 4, 10, 11, 12, 13, 18, 19, of sheet 1, of manufacturing
Blucher boots, and more particularly the cutting of the back part
of such boots in the manner exhibited at figures 5, 6, 15, 16, 18,
for the purpose set forth; secondly, the inserting of the gusset at
the back part of the boot, as at figure 14; and lastly, as regards
the boots exhibited at the several other figures of the drawings, I
claim the adapting thereto of two gussets, as above described."
In the patent of 1860, some minor changes were made in the shape
of several of the parts composing the boot or shoe, but the object
of the invention remained the same -- namely, to make the boots and
shoes to which it related water-tight and capable of excluding
dirt, etc.
An examination of the drawings accompanying the applications for
those patents shows that several of their shoes differ very little,
if any, in their essential features from those manufactured under
the Evory and Heston patent. The shoes under the English patent, as
do those under the Evory and Heston patent, consist of quarters,
the vamp, and a folding gusset or gore flap uniting the vamp and
the quarters. It is contended on behalf of the appellees, and the
testimony of their expert, Mr. Brevoort, is to the same effect,
that the material point of difference between their shoe and the
Norris shoe is that in the latter, the gusset or gore flap folds in
such a manner that it lies within the shoe proper next to the foot,
while in their shoe, the gore or gusset folds outside of the shoe,
thus rendering their shoe more comfortable to the foot and
Page 133 U. S. 356
more easily worn than the English shoe. But we do not think it
can be safely averred that the specifications and drawings of the
English patents require the gore or gusset to be folded so that it
will lie inside of the vamp, next to the foot. It is true that
Norris does not say in so many words that the folds of the gore
will lie wholly outside of the shoe proper, but neither does he say
that they shall lie wholly within the shoe. We think a fair
construction of Norris' patents leaves the question of where the
folds of the gussets of his shoes shall lie, within the discretion
of the manufacturer of them, who, if he be a skillful mechanic,
will be enabled to so arrange the gores or gussets that they will
accomplish their object without interfering with the comfort of the
wearer of them.
On the 7th of March, 1865, Samuel Babbit, of Kokomo, Indiana,
obtained a patent, No. 46,622, for an "improvement in gaiter
boots." In his specification Babbit says:
"The object of this invention is to dispense with the use of the
ordinary gore or elastic webbing in the manufacture of gaiter
boots, and at the same time so construct the shoe as that the
purposes of such webbing shall be subserved. To this end, the
invention consists in forming that part of the shoe which covers
the ankle with an extension which enlarges the opening to such a
degree as to permit the foot to be readily inserted, and which,
after the shoe is on the foot, is folded and buckled or fastened
against the ankle after the manner of a flap, and this shoe is made
without the formation of a joint, and is perfectly
water-tight."
Babbit's shoe had the quarters extended at the heel about
one-half the width of the shoe at the ankle, thus enlarging the
opening in the top of the shoe through which the foot is inserted
to an extent commensurate with such extension. When the shoe was on
the foot, those elongated quarters were folded against the side of
the shoe and buttoned to it, and the shoe was thus rendered
water-tight clear to the top.
Another patent, No. 49,076, for the same sort of an invention,
was granted to David Brown and William S. Wooton, of Kokomo,
Indiana, on the 1st of August, 1865. That invention is thus
described in the specification:
"The present
Page 133 U. S. 357
invention consists in attaching to the back portion of the boot
or shoe in which a vertical slit or opening has been made a folding
flap or piece of sufficient size and shape that when the boot or
shoe is put on the foot, it can be folded or passed entirely around
the instep, and there fastened by buckling, buttoning, or in any
other proper manner, said flap being connected therewith by means
of two wings or sectional pieces, each fastened by sewing, or in
any other suitable way at one edge to one side of opening or slit
in the boot or shoe, and at the other to the inner surface of the
folding flap, and which wings, when the folding flap has been
buttoned, as described, lie and are held between it and the
exterior surface of the boot or shoe upper."
The advantages claimed for the Brown and Wooton patent were the
ease with which the shoe could be put on and taken off, the absence
of eyelet holes or any kind of apertures communicating with the
interior of the shoe, and the peculiar construction and arrangement
of the flap, whereby the counter of the shoe was prevented from
being broken down.
Such was the state of the art when Evory and Heston made their
application for the patent in suit. Let us now carefully examine
the Evory and Heston patent to see what patentable improvements are
embraced by it. In the first part of the specification, it would
seem that they were seeking a patent for a
mode of
constructing a shoe, for they say: "Our said invention
consists in a novel mode of constructing shoes and gaiters," etc.
And in another part of their specification, they say: "Our
mode
of construction is an improvement upon" the Babbit patent,
etc. But the concluding part of their specification would seem to
negative the idea that they were claiming a patent for a mode of
construction, and not for a manufactured article, for they say:
"What we do claim as our invention and desire to secure by letters
patent is a shoe when constructed with an expansion gore flap,"
etc. In the brief of counsel for appellees it is conceded that the
patent is for a shoe, and not for a mode of constructing it.
Counsel says, after quoting the concluding paragraph of the
specification: "This is a claim
for a shoe having on each
side an expansion gore flap," etc.
Page 133 U. S. 358
We think, therefore, the claim in this case must be regarded as
being for a manufactured article, and not for a mode of producing
it. This being true, it is difficult to see any patentable device
or function in the Evory and Heston shoe. It is a mere aggregation
of old parts, with only such changes of form or arrangement as a
skillful mechanic could readily devise -- the natural outgrowth of
the development of mechanical skill, as distinguished from
invention. The changes made by Evory and Heston in the construction
of a water-tight shoe were changes of degree only, and did not
involve any new principle. Their shoe performed no new function. In
the construction of it, the vamp, the quarters, and the expansible
gore flap were cut somewhat differently, it is true, from like
parts of the shoes constructed under the earlier patents referred
to, but they subserved the same purposes.
It is well settled that not every improvement in an article is
patentable. The test is that the improvement must be the product of
an original conception.
Pearce v. Mulford, 102 U.
S. 112,
102 U. S. 118;
Slawson v. Grand Street Railroad, 107 U.
S. 649;
Munson v. New York City, 124 U.
S. 601, and many other cases, and a mere carrying
forward or more extended application of an original idea -- a mere
improvement in degree -- is not invention. In
Smith v.
Nichols, 21 Wall. 112,
88 U. S.
118-119, Mr. Justice Swayne, delivering the opinion of
the Court, said:
"A patentable invention is a mental result. It must be new, and
shown to be of practical utility. Everything within the domain of
the conception belongs to him who conceived it. The machine,
process, or product is but its material reflex and embodiment. A
new idea may be engrafted upon an old invention, be distinct from
the conception which preceded it, and be an improvement. In such
case, it is patentable. The prior patentee cannot use it without
the consent of the improver, and the latter cannot use the original
invention without the consent of the former. But a mere carrying
forward or new or more extended application of the original
thought, a change only in form, proportions, or degree, the
substitution of equivalents, doing substantially the same thing in
the same way, by substantially the same means
Page 133 U. S. 359
with better results, is not such invention as will sustain a
patent. These rules apply alike whether what preceded was covered
by a patent or rested only in public knowledge and use. In neither
case can there be an invasion of such domain, and an appropriation
of anything found there. In one case, everything belongs to the
prior patentee; in the other, to the public at large."
Neither is it invention to combine old devices into a new
article without producing any new mode of operation.
Stimpson v.
Woodman, 10 Wall. 117;
Heald v. Rice,
104 U. S. 737;
Hall v. Macneale, 107 U. S. 90.
In the recent case of
Hill v. Wooster, decided January
13th of this year,
132 U. S. 693,
132 U. S. 700,
it is said:
"This Court, however, has repeatedly held that under the
Constitution and the acts of Congress, a person, to be entitled to
a patent, must have invented or discovered some new and useful art,
machine, manufacture, or composition of matter or some new and
useful improvement thereof, and that"
"it is not enough that a thing shall be new in the sense that in
the shape or form in which it is produced it shall not have been
before known, and that it shall be useful, but it must, under the
Constitution and the statute, amount to an invention or
discovery,"
citing a long list of authorities.
We are of the opinion that the patent in suit does not meet the
requirements of the rules deduced from the decisions to which we
have referred. We do not think there is any patentable invention in
it, but, on the contrary, that it is merely a carrying forward of
the original idea of the earlier patents on the same subject --
simply a change in form and arrangement of the constituent parts of
the shoe, or an improvement in degree only.
For these reasons, the decree of the court below is
reversed, with a direction to dismiss the bill.