Reece Shoe Machinery Co. v. United Shoe Machinery Co.

244 F. 446, 1917 U.S. App. LEXIS 2039

• Court: Court of Appeals for the Third Circuit
• Decided: July 30, 1917
• Docket: No. 2250
• Status: Published

Opinion

BUFFINGTON, Circuit Judge.

In the court below the Reece Shoe Machinery Company, the owner of patent No. 818,159, granted April 17, 1906, to William E. Goodyear, for a stop motion for high-speed machines, charged the United Shoe Machinery Company with infringement. On final hearing that court held infringement was not established. From a decree dismissing its bill, the plaintiff took this appeal.

Having had the benefit of a full and helpful discussion of this case by competent counsel, and after careful study of the briefs and records, we see no reason to differ from the conclusion reached in the court below. In view of the thorough and painstaking discussion by the judge, an opinion by this court describing the complicated machines involved could but be an effort to state in different language what has been already placed on record in the opinion of the judge below. We avoid useless repetition by reference to that opinion, and limit ourselves to a general statement of the conclusions to which we have been led by our study of the case. Those conclusions may be thus summarized:

First. The general subject here involved is the abrupt stoppage of sewing machines driven at high speed.

Second. In such machines there are two varieties and two modes of operation, viz. a cyclic machine, or one that repeats a certain unvarying routine in 'each operation, and therefore automatically stops at a predetermined point after sewing a certain number of stitches at uniform speed. The other is a noncyclic machine in which there is no cyclic finish and cyclic repetition, but which sews at varying speed and with varying numbers and lengths of stitches, all at the will of the operator.

Third. In the first type there is a machine-controlled, automatic, predetermined stop. In the other the stop is made when the operator wills.

The device of Goodyear was of the former kind, and in his specification he applied it to a machine for sewing the edges of buttonholes. In -that respect his specification says:

“The object X have in view is the production of a stop motion for high-speed machines, which will positively stop the mechanism at a predetermined position and without shock. The invention is intended for use in connection with sewing machines, and particularly buttonhole sewing machines, which must he stopped in a certain and definite position. The invention, however, may be applied to other forms of machinery, as is found desirable. * * * It is to be understood that the illustration of this particular sewing machine [E. B. Allen, patent No. 785,061, of March 14, 1905] is solely for the purpose of describing the invention, as the invention of the stop motion may be applied to any other form of sewing machine or to any machine to which the stop motion may be used with advantage.”

Showing the cyclic type of the device and the machine-effected, automatic stop, the specification says:

“A cam, 5, carried by a disk 6, which is turned by the machine and which makes one revolution while a buttonhole is being completed, is provided. This cam is designed to engage with mechanism for shifting the belt from one pulley to the other and applying the stop motion.”

Without entering upon a detail description of the various operative parts, it suffices to say that the cyclic operation centers in said cam, 6, which- is illustrated in this drawing,

• — and that by the engagement of a finger with the cam there is in the mount on the first incline an automatic, predetermined shift from high to low speed. This is followed, on the level plane, by a predetermined period of low speed. Then follows, by the mount on the second incline, an automatic, predetermined throwout of the low speed and the automatic throwin of the dog stop at a predetermined, unvarying point. It will thus be seen that the cam and engaging finger produce a continuous, indivisible, mechanical operation by which the machine automatically goes from high to low speed and from low speed t® a predetermined, regularly recurrent stop.

In the progress of Goodyear’s application through the Patent Office, his claims were rejected on reference to patent No. 710,612, of October 7, 1902, to Richardson, for a shoe-sewing machine. Without describing the mechanism of lliat machine, it suffices to say it had a high-speed drive, a change from high speed to low under the control of the operator, and thereafter an operative slop at a desired, predetermined position. Goodyear recognized that Richardson embodied his pending claims,¹ and he therefore differentiated his device by showing that Richardson’s shift speed was made by the operator while his own was automatic and made by his machine, and narrowed his claims by limitation to automatic action. In that regard the file wrapper shows Goodyear said:

“The first six claims have been amended, to specify an automatic arrangement for driving the machinery at tlio reduced speed. The Richardson structure is not automatic. The shifting from one speed to the other is effected by means of a pedal.’’

' Even this amendment, viz. by inserting the limitation automatically, did not satisfy the Office, and to meet its further objection Goodyear added to his claim the limitation “such means being controlled by the machine,” saying:

“By including in tb.e claims tlie specific statement that tlie speed-shifting means is controlled by tbe driven member, tbe driven shaft, or whatever is specified in tbe claims, tbe definition of ‘automatic’ is made very clear.”.

The result was to make the claim read as follows, the words in italics being those thus added under stress of the Office’s insistence:

“A stop motion, wherein means are employed for automatically reducing tbe speed of tbe machine before stopping it, such means being controlled by the machine, and means for positively driving it at a reduced speed to a predetermined stopping position.”

From this it will be seen that Goodyear’s machine was a routine, cyclic one, and that means controlled by the machine automatically stopped it at a predetermined point. The particular machine used by Goodyear shows that his type of stop motion was applicable to a buttonhole sewing machine, and the stop requirements of such a machine illustrate generally tire scope, character, and limitations of Goodyear’s stop motion. As the machine was operated at high speed —some 1,500 stitches a minute — and as the stitches in the buttonhole were confined to a certain number, it is obvious that mechanically the machine was intended to automatically stop when the required buttonhole stitches were made, and the high speed of the machine mechanically required that at that instant the cycle-ending stop be made by the machine itself. To have allowed the sewing to have gone further would have ruined the buttonhole, and to have the stop made by the operator, if indeed it could be made even by a highly skilled operator at such speed, would have been a backward step in the developed buttonhole sewing art.

It will therefore be seen that in the statements of the specification, in the enforced limitation of the claims, and in the everyday working of the art, the Goodyear disclosure was for a stop that was predetermined, automatic, and machine-controlled. Moreover, as Goodyear’s device was never used in practice, and left no impress on the art, there was no occasion for the exercise by the court below of that liberality of claim construction made where a highly meritorious invention might otherwise be shorn of patent protection by the literalism of a claim.

Turning, therefore, from this claim-restricted and unused device of Goodyear’s to the defendant’s sewing machine, we have one that does a type of nonuniform work, namely, the stitching of shoe soles, which necessitates the judgment and absolute control of an operator. It is also to be noted that the machine of tire defendant has been in wide, general use, without patent challenge, and it was only after a rival manufacturer purchased the dormant Goodyear patent that this belated charge of infringement is made. Without entering into the details of the defendant’s machine, we may say that it is used for sewing the soles of shoes; that such soles differ in size; the sewing is done by a skilled operator who slows down the speed as he turns bends and uses stitches of different length at different parts of the sole. In the nature of things, there must be operator control, operator skill, and operator volition in defendant’s machine. In the nature of things, there can be no fixed number of stitches, no uniformity of speed, and no predetermined place or time of stop. Not only the absence of an automatic, machine-controlled stop in defendant’s machine, but the varied character of the work done, precluding the possibility of the use of a predetermined stop, unite to make the defendant’s machine of a wholly different type from Goodyear’s. The mere fact that defendant’s machine goes from high speed to low speed and that the needle stop is made at such low speed docs not stamp the stop motion as Goodyear’s. He has no claim, and in the nature of things he could have none, for the mechanical step of slow-speeding a machine before dog-stopping it. That is a mechanical practice and truism as old as physics, and which no patentee could monopolize. Of such speed reduction the defendant avails itself to stop its machine without shock, but this it had the right to do. It is also true that its machine is stopped when the needle is out of the fabric, and in that sense the stop is predetermined. But it will be observed that, while the mechanism is such that when the machine does stop the needle shall be in a certain relation, still this fixed condition when the operator chooses to stop it is a wholly different mechanical feature from a machine automatically stopping itself at a predetermined cyclic point. In the one case the automatic, machine-controlled stop is unchangeable; in the other the optional, human-controlled stop is variant. In both there is slow speed and a super-fabric needle stop, but Goodyear did not disclose or claim a slow speed stop of a needle in a superfabric position. Confining ourselves to the foot brake mechanism of defendant’s machine, its working will apirear from the accompanying sketch.

Starting with the machine at such working high speed as the operator desires, he releases his foot treadle, and thereby disengages a clutch through the engagement of which the high-speed driving device drives the main shaft. But even such disengagement of the high-speed clutch does not per se throw in the low-speed clutch; for the operator may allow the machine to run by momentum. To throw in the lowrspeed clutch, the operator must release the treadle still further. It will thus appear that, while the throwing out of the high speed is a condition precedent to throwing in the low speed, it is not the causal agency, but the operator is, of throwing in the low speed. It follows, therefore, that the shift from high speed. and the shift to low speed in the defendant’s machine have no dominant or servient relation to each other as they necessarily have in the Goodyear cam, but that between the two independent speeds stands the personality and dominant volition of the operator.

After full consideration we are of opinion that, passing the question of validity, on which we express no view, the charge of infringement has not been established, and the decree below must be affirmed.

1 E. g., claim 1: “A stop motion wherein meáns are employed for reducing the speed of ilie machine before stopping it and means for positively driving it at a reduced speed to a predetermined stopping position.”