Letters patent No. 238,303, granted to William Orcutt, March 1,
1881, for improvements in rotary cutters for trimming the edges of
boot and shoe soles, although the patented claim shows great
industry on the part of the patentee in acquiring a thorough
knowledge of what others had done in the attempt to trim shoe soles
in a rapid and improved mode by the various devices perfected by
patents for that purpose, good judgment in selecting and combining
the best of them, with no little mechanical skill in their
application, are nevertheless invalid for want of patentable
invention, as the claim presents no discoverable trace of the
exercise of original thought, and is only an improvement in degree
upon previous cutters, and therefore not patentable.
There is no substantial difference between the improved cutter
for cutting the teeth of gear wheels, etc., patented to Joseph R.
Brown by letters patent
Page 137 U. S. 424
No. 45,294, dated November 29, 1864, and the patent in
controversy in this suit except in the configuration of their
molded surfaces, and this is not a patentable difference, even
though the Brown cutter was used in the metal art and the Orcutt
cutter in the leather art.
Burt v. Evory, 133 U. S. 349, and
Florsheim v. Schilling, 137 U. S. 64,
affirmed and applied to this case.
In equity for the infringement of letters patent. Decree
dismissing the bill. Complainants appealed. The case is stated in
the opinion.
MR. JUSTICE LAMAR delivered the opinion of the Court.
This was a suit in equity brought by the Busell Trimmer Company,
a New Hampshire corporation, and William D. Orcutt against Frank M.
Stevens, Henry B. Cunningham, and Samuel N. Corthell for the
alleged infringement of letters patent No. 238,303, issued to
Orcutt, March 1, 1881, upon an application filed January 6, 1879,
for "improvements in rotary cutters for trimming the edges of boot
and shoe soles."
The bill, filed May 9, 1884, alleged the issue of said letters
patent to Orcutt and the granting of an exclusive license to the
Busell Trimmer Company to manufacture and sell the invention
described therein, and set out with considerable detail the value,
importance, and novelty of the patented invention.
It then alleged that, as the result of a suit in equity brought
in the court below in January, 1882, by these complainants against
the Corthell Manufacturing Company for infringements of the
aforesaid letters patent, such proceedings were had that a consent
decree was entered in complainants' favor, the following resolution
of the stockholders of the defendant in that suit having been
passed as a part of such compromise:
"
Resolved that in the acceptance of the offer this day
tendered to us by the Busell Trimmer Company, it is done with the
express understanding by all the parties thereto that
Page 137 U. S. 425
it is mutually entered into for the purpose of consolidating the
several interest of the two companies, and to that end none of the
parties in their corporate capacity or as individuals will directly
or indirectly enter into the manufacture of trimming machines or
cutters for the sole edge of boots and shoes except in connection
with and for the benefit of the two companies as consolidated."
It further alleged that the defendants were at that time
stockholders in the Corthell Manufacturing Company, and acquiesced
in such resolution; that they were afterwards employed by the
complainant, the Busell Trimmer Company, in various capacities
until within about a year previous to the commencement of this
suit; that while so employed, the defendants Stevens and Cunningham
secretly sold small cutters manufactured with complainants' tools,
which were facsimiles of those manufactured by complainants, and
that after they left complainants' employ, the defendants
associated themselves together to manufacture and continued to
manufacture and sell cutters embracing complainants' invention, in
violation of complainants' rights under the patent, and to their
damage, $20,000.
The bill prayed for an injunction, an accounting, and damages,
and for other and further relief.
The answer made no reference to the consent decree and
compromise between the Busell Trimmer Company and the Corthell
Manufacturing Company referred to in the bill, but set up as
defenses (1) the invalidity of the patent, because the thing
alleged to have been patented had been in long use previous to that
time, and was not useful; (2) the insufficiency of the
specification and drawings of the patent to enable one skilled in
the art to which it pertained to construct the article for which
the patent was claimed; (3) the want of novelty in the alleged
invention; (4) the long continued use of rotary cutters embodying
the same principles as were contained in the alleged invention, by
various persons and firms engaged in the manufacture of boots and
shoes in various parts of the United States, and (5) that Orcutt's
prior patent, No. 212,971, dated March 4, 1879, showed and
described all that was
Page 137 U. S. 426
claimed in the patent in suit, and that from the date of that
patent to January, 1881, Orcutt made no claim to the subject matter
of the later patent, thus abandoning such invention to the public,
by reason whereof the patent in suit was void.
Replication was filed issue was joined, proofs were taken, and
on the 14th of September, 1886, a final decree was entered by the
circuit court, held by MR. JUSTICE GRAY and Judge Colt, dismissing
the bill, from which decree complainants appealed to this Court.
The opinion of the circuit court, delivered by Judge Colt, is found
in 28 F. 575.
The specification, claims, and drawings of the patent in suit
are as follows:
"My invention relates to that class of rotary cutters consisting
of a series of cutting blades arranged about a common hub, and it
consists in certain peculiarities of construction of the blades,
more fully described below."
"Figure 1 is a perspective view of one form of rotary cutter
embodying my invention. Figures 2 and 3 are perspective views
(enlarged for greater clearness) of the upper portion of one of the
blades. Figure 4 is a cross-section enlarged, illustrating my
improved cutter as used."
"The blades
d of my improved cutter have a flat front
face
a, a flat rear face
b, and a top surface
c. A number of ridges, 1, 2, extend across this top
surface or circumferentially of the cutter, making what is called a
'molded' or 'fancy' surface, which is the converse of the sole edge
desired, every ridge, 2, 2, making a corresponding depression in
the sole edge, the ridge, 1 at the side of the cutter, and when in
use next the rand guide, takes out the rand or welt. The main
feature of my invention consist in the blade thus formed, with a
flat front face and a molded or fancy top surface the converse of
the sole edge, and having the ridge 1 or the ridges, 2, 2, either
or both, extending across its top surface -- that is, extending
from front to back, as shown in the drawings -- my improved cutter
having a series of such blades, the cutting edges of each blade
extending to one side of the cutter to adapt it for use on the edge
of the sole next the upper, and each cutting edge having the same
relation with the axis
Page 137 U. S. 427
as all the others. Each blade
d is shown in this
instance as a distinct piece secured to a hub,
d',
substantially as in the United States patent No. 82,402 to
Harrington, dated September 22, 1868. My invention, however, does
not relate to the mode or process of manufacture, but to the
article of manufacture, and the blades and hub may be in one piece
and constructed by any suitable mode or process too well known to
need description, and I disclaim as any part of my invention both
the cutters and both the modes of manufacture described in the
patent to Harrington above named and in the patent to Brown, No.
45,294, dated November 29, 1864."
"The flat front faces
a of the blades are not radial,
but are so inclined so as to make each blade slightly hooking, and
thereby form a knife edge at the intersection of the flat front
face with the top surface
c and its ridges 1, 2, 2. This
is very desirable for if the front faces
a be not so
inclined, the tool will be a scraper, rather than a rotary cutter.
The blades are made quite thick from front to rear, so that they
may be ground back as they become dull, and they are ground only on
their front faces
a, these faces being always maintained
at substantially the same pitch. The grinding is done with a flat
grinding surface -- the flat side of a small emery wheel -- and
does not alter at all the shape of the cutting edge of the blades.
The tops
c and ridges 1, 2, 2, are inclined rearward to
give the necessary clearance, as will be well understood."
"I am aware of the patent No. 207, 395 to Corthell, but in that
cutter each blade is flat on top, and its front face is molded, the
cutting edge being formed by the intersection of the flat top and
molded front face, and the ridge corresponding to the ridge
1 of my cutter is across the front ace of the blade, or
nearly radial, instead of across the top
c of the blade,
or nearly circumferential, as in my cutter. The same is true of the
ridges corresponding to the ridges
2 of my cutter. When
the ridge
1 is at one side of the front face, as in
Corthell's cutter, the height of the projection above its base is
limited by the necessary closeness together of the blades.
Moreover, the depth of cut is always less than the height of the
projection.
Page 137 U. S. 428
The main object of my invention is to provide a sole-edge cutter
in which the depth of cut is the same as the height of the
projection and in which the height of the projection is not limited
by the closeness together of the blades. I am also aware of the
patents to Brown and Harrington above mentioned, but both those
cutters are wholly unsuited for trimming "
image:a
sole edges, and both lack the ridge
1 at one side of
the top surface of the blade for taking out the rand, and also lack
the ridges 2, 2 for beading the sole edge. I disclaim, therefore,
all that is shown in either of the above-named patents.
"What I claim as my invention is:"
"1. A rotary cutter for trimming sole edges, the blades
d of which are provided with flat front faces
a,
and have their outer or peripheral ends
c molded
throughout to a uniform shape, the converse of the desired shape to
be given to the sole
Page 137 U. S. 429
edge, and slightly eccentric to the axis of the cutter,
substantially as described."
"2. A rotary cutter for trimming sole edges, the blades
d, of which are each provided with a flat front face
a and a slightly eccentric cutter or peripheral end
c, having formed thereon the end ridges 1 and 2, extending
circumferentially across said face, substantially as and for the
purposes described."
The circuit court held that the patentability of the invention
was to be determined by reference to two classes of prior tools,
namely the old hand tool or plane and the Brown gear cutter,
patented in 1864 and found, upon a comparison between the various
forms of the Brown gear cutter and the Orcutt cutter, that there
was no substantial difference between them except as to the shape
of the top surface of the blades that were used to cut the form or
outline of the path or figure in the material operated upon; that
the form of the cutting teeth in the Orcutt patent was
substantially the same as that used in the old hand plane or tool;
that the use of the rotary rand knife in the Orcutt patent, in
connection with the rand guide, claimed by him to perform a
different function from the rand lip of the old hand plane, was not
sufficient to sustain the patent because both the rotary rand knife
and the rand guide were found in prior devices, and that the
substance of Orcutt's improvements lay in the application of the
well known form of blade to a Brown milling cutter for the purpose
of trimming the edges of boot and shoe soles, which was merely a
case of double use, and was therefore not patentable.
The errors assigned are that the court erred (1) in holding that
the application of a well known form of blade, used in the old hand
tool for trimming sole edges, to a metal milling cutter, also old
and well known, for the purpose of producing a rotary cutter for
trimming sole edges, is a case of double use, and not patentable;
(2) in holding that in view of the state of the art, there was no
invention in the Orcutt cutter, and (3) in holding that in view of
the two classes of prior tools referred to, taken in connection
with a third class of old devices in which both the rotary rand
knife and the rotary rand guide were found, the patent could not be
sustained.
Page 137 U. S. 430
It is hardly necessary to discuss these assignments of error
seriatim. It will be sufficient perhaps to refer to some
of the essential features of the patent in suit which are claimed
to constitute elements of invention.
We have examined the evidence in the case very carefully. That
of appellants' principal expert witnesses, John A. Coleman,
Frederick W. Coy, and O. L. Noble, was unusually clear and
intelligent, and was given very ingeniously in support of the
theory of the appellants' case, but we think that even their
testimony, when subjected to the analysis of cross-examination,
contains retractions and admissions fatal to the validity of
Orcutt's patent as containing a patentable novelty.
We are clearly of opinion that the circuit court was correct in
its construction of this patent. In this connection, the state of
the art when the application for the patent was made must be taken
into consideration. The old hand plane or tool for trimming the
edges of boot and shoe soles had been in existence for a long time;
but while it accomplished the purposes for which it was designed,
it was found to operate too slowly to meet the demands of the
business. Accordingly, various attempts had been made to perform
the work done by the old hand tool, with rotary cutters operated by
machinery. A number of patents were issued to various persons,
named in the record, for various forms of such devices long before
the date of Orcutt's application. We were furnished on the argument
with specifications and drawings of many of such patents -- some
English, but mostly American -- running back as early as 1855, when
an English patent was issued to one Moliere, for what was known as
a "burr cutter," used to cut only the bed or main body of the boot
or shoe sole. It is not deemed necessary to refer to all of the
various patents issued from that time up to the date of Orcutt's
patent. All of them may be said to have had but one object,
viz., the performance of the work formerly done only by
the old hand tool, and were improvements, more or less new and
useful, in the leather art. An examination of them discloses the
fact that, to a greater or less degree, each was an improvement on
its predecessors, and was in like manner improved upon by those
that
Page 137 U. S. 431
followed in the order of time. The operations of those rotary
cutters did not entirely supersede the use of the old hand tool, or
the embodiment of the principles of that tool in an automatic
machine which imitated the movements of that plane or tool when at
work. A number of patents, it appears, were issued for such
machines.
The precise features or combination of features which it is
claimed constituted Orcutt's alleged invention are thus stated by
appellants' counsel:
"There is nothing whatever in the state of the art of trimming
or of burnishing sole edges tending to show any rotary cutter,
prior to Orcutt's, made up of a number of blades, each having a
rand lip and bed -- or a bed or bed guard, or channel guard in
connection with a rand lip and bed -- each with a flat front face,
and each blade the guard for the cutting edge of the succeeding
blade."
We do not think that this statement is sustained by the
testimony of the appellants' own witnesses, even putting out of
view all the evidence controverting it, given by defendants'
numerous expert witnesses, consisting of manufacturers, dealers in
shoes, experienced and skillful operators and machinists in making
shoes, trimmings, soles, and all branches of the leather art. A
rotary cutter in the metal art, called the "Brown & Sharpe
metal cutter," had been well known and in general and constant use
seventeen years before the date of the Orcutt patent. The counsel
for appellants admits that that rotary cutter
"bears a close resemblance to Orcutt's sole edge cutter. . . .
It is made up of a number of blades, each having a flat front face
and a molded top surface, the converse of the surface to be milled,
and moreover, each tooth has the proper clearance, so that if one
of the Brown & Sharpe metal cutters and one of the Orcutt
cutters be compared when not in use -- say one held in the left
hand, the other in the right -- there is a marked likeness between
them; in fact, no substantial difference except that one lacks and
the other has a rand lip, bed,"
etc. Similar admissions by Orcutt himself, and by Noble, the
manager of his (Orcutt's) company, leave no doubt upon our minds
that the principles of construction and operation of the Brown
cutter are substantially identical with those of
Page 137 U. S. 432
most, if not all, of the rotary leather cutters. The appellants'
counsel, as we have seen, says that the only exception to the
marked likeness between the Brown cutter and that of Orcutt is that
"one lacks and the other has a rand lip, bed," etc. With regard to
this exception, so asserted, Coleman, the expert witness on whom
the appellants mainly rely, testifies as follows
"Q. You have spoken of Orcutt's cutter being adapted to trim at
the same time the rand, the bed, and the guard of a shoe sole, or,
as you term them, the three fundamental principles of the shoe
sole. Do you or not regard Orcutt as the first to accomplish that
result with a rotary cutter?"
His first answer being considered evasive, the question was
repeated, and he replied: "No, I do not. Others had made different
cutters intended to accomplish the same purpose." It is true that
with this admission he also connected the somewhat inconsistent
declaration that Orcutt, by his alleged invention,
"created a structure which differed in form and principle from
any tool previously used for the operations of trimming the rand,
bed, and guard, because he produced a tool which had blades having
top-molded faces the converse of the form of the sole edge to be
trimmed, and the flat front faces of the teeth were so inclined
forward that they could make a proper cutting edge for leather, and
those faces could be ground without disturbing the top-molded face
of the teeth."
But when cross-examined in detail as to each of those alleged
novel differences, he admitted that the facility for sharpening
Orcutt's cutter without disturbing its periphery (or the top-molded
face of the teeth) was the same as in the Brown cutter and the
Snell & Atherton hand trimming tools; that the forward incline
(the rake or overhand) of the teeth was the same as in the Snell
& Atherton cutters; that in his opinion, the increase in the
number of teeth in the Orcutt cutter over that of Brown, in view of
the art as shown by other and earlier cutters, did not constitute
in itself an element of invention; that rand guides were in common
use with a rotary cutter before Orcutt's cutter; that a rand guide
as employed in an Orcutt cutter does not perform any other or
different office, or effect any other or different result, from
that which it performed when used
Page 137 U. S. 433
with other rotary cutters earlier than Orcutt's; that the
employment of such rand guide in the Orcutt cutter would not in
itself constitute an invention; that rand cutters were in common
use both with hand tools and rotary sole trimming tools before
Orcutt's patent; that the result or product of the Orcutt cutter,
to-wit, the sole edge trimmed by it, was identical with that
trimmed by the exhibit hand tools; that the shoe was held in the
same manner while being trimmed by the Orcutt cutter as with any
other and earlier cutter, and that before Orcutt's invention it was
common to trim the rand, the bed, and the guard at one and the same
operation, with both hand and rotary cutters.
Effort was made to show by other witnesses that the features in
the Orcutt patent specified in the statement of counsel above
quoted are all patentable novelties, especially the combination of
them into one device. We repeat that in view of the previous state
of the art, we think otherwise. The evidence, taken as a whole,
shows that all of those claimed elements are to be found in various
prior patents -- some in one patent and some in another, but all
performing like functions in well known inventions having the same
object as the Orcutt patent -- and that there is no substantial
difference between the Brown metal cutter and Orcutt's cutter
except in the configuration of their molded surfaces. That
difference, to our minds, is not a patentable difference, even
though the one cutter was used in the metal art, and the other in
the leather art. A combination of old elements, such as are found
in the patented device in suit, does not constitute a patentable
invention.
Florsheim v. Schilling, ante, 137 U. S. 64,
decided at this term of the Court, and cases there cited.
We do not think that the cases cited by counsel for the
appellants sustain his position that Orcutt's alleged invention is
a combination of previous devices rearranged with connections and
adaptations so adjusted as to produce a novel and valuable use. In
Le Roy v.
Tatham, 14 How. 156,
55 U. S. 177,
one of those cases, the claim was for a combination of old parts of
machinery to make lead pipes in a particular manner under heat and
pressure. The combination was held not to be
Page 137 U. S. 434
patentable, the Court saying:
"The patentees claimed the combination of the machinery as their
invention in part, and no such claim can be sustained without
establishing its novelty, not as to the parts of which it is
composed, but as to the combination."
The Court also quoted with approval the following from
Bean
v. Smallwood, 2 Story 408, an opinion by Mr. Justice
Story:
"He [the patentee] says that the same apparatus, stated in this
last claim, has been long in use, and applied, if not to chairs, at
least in other machines, to purposes of a similar nature. If this
be so, then the invention is not new, but at most is an old
invention or apparatus or machinery applied to a new purpose. Now I
take it to be clear that a machine or apparatus or other mechanical
contrivance, in order to give the party a claim to a patent
therefor, must, in itself, be substantially new. If it is old and
well known, and applied only to a new purpose, that does not make
it patentable."
That case, instead of militating against our view in this, in
reality supports it.
The distinction between a double use, as the result of mere
mechanical skill, and a new use created by the inventive faculty is
strikingly illustrated in the other case cited by appellants,
viz., Colgate v. Western Union Telegraph Co., 15
Blatchford 365. That case was a suit for an infringement of a
patent for the combination of gutta-percha and metallic wire in
such form as to encase a wire or other conductors of electricity
within the nonconducting substance, gutta-percha, making a
submarine telegraph cable which might be suspended on poles in the
air, submerged in water, or buried in the earth. It was contended
that the patent was invalid because a metallic wire covered with
gutta-percha, as a mechanical protection from abrasion or injury
from without, existed before the plaintiff's invention. It was
decided that the use by the patentee of the wire so covered to
conduct electricity was not a double use of the covered wire, nor a
use for a purpose at all analogous to any before made of it, but
that it was an entirely new use, the result of a discovery that
gutta-percha was an electrical nonconductor, evolved by original
thought, totally different from its quality previously known and
applied as a mere mechanical protector from external injuries.
Page 137 U. S. 435
But the patent before us is no such case. The most that can be
said of it is that it shows on the part of Orcutt great industry in
acquiring a thorough knowledge of what others had done in the
attempt to trim shoe soles in a rapid and improved mode by the
various devices perfected by patents for that purpose, good
judgment in selecting and combining the best of them, with no
little mechanical skill in their application; but it presents no
discoverable trace of the exercise of original thought.
Furthermore, according to the evidence submitted by the
appellants, it is shown that the features of the patent in suit are
substantially the same as those in Orcutt's earlier patent of March
4, 1879, having the same object except that in the patent in suit,
the teeth are claimed to be detachable from the hub, while in that
of 1879, they are shown to be solidly incorporated with the hub.
Even admitting such a difference to exist, it does not constitute a
patentable difference in view of the prior state of the art, for
the detachable teeth are found in the Corthell patent No. 207,395
of August 27, 1878. But, as a matter of fact, there is no such
difference, for, as stated in the specification of the patent in
suit, "the blades and hub may be in one piece," etc., thus showing
that no claim is made in the patent itself on that score. This of
itself would be sufficient to defeat the later patent.
It may be admitted that Orcutt's later patent performed the work
it was designed to accomplish in a better and more workmanlike
manner than any of the preceding cutters patented, because, as
already stated, there were constant improvements in the art to
which it related. So far as this record shows, it was the last of a
series of patents designed to accomplish the same object. As such,
it necessarily retained all the beneficial features of those
earlier patents, and to a certain extent improved upon them. Such
improvement, however, was an improvement in degree only, and was
therefore not patentable.
Burt v. Evory, 133 U.
S. 349, and cases there cited.
Decree affirmed.