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April 22, 1935

M. WOLF & SONS, Inc.

The opinion of the court was delivered by: CAMPBELL

CAMPBELL, District Judge.

This action is brought for the alleged infringement of United States patent No. 1,838,708, issued to Frank Sbicca, assignor to Sbicca-Method Shoes, Incorporated, for Shoe and Method of Making Same, granted December 29, 1931, on an application filed February 2, 1931; and patent No. 1,902,725, issued to Frank Sbicca, assignor to Sbicca-Method Shoes, Incorporated, for Method of Producing Complementary Insole-Outsole Combinations, granted March 21, 1933, on an application filed November 7, 1931.

The corporate identity of the plaintiff and its title to the patents is conceded.

 The plaintiff is a Delaware corporation and engaged in exploiting the alleged inventions by issuing licenses under the patents in suit to shoe manufacturers.

 The defendant is a New York corporation, and has a regular and established place of business in the borough of Brooklyn, in the Eastern District of New York, where it is engaged in manufacturing shose in the manner and of the type which are alleged to infringe the patents in suit.

 Suits are pending in this court brought by the same plaintiff against the following defendants: Andrew Geller Shoe Manufacturing Company, Inc., Equity No. 7330; Benjamin Dickstein, Equity No. 7331; Premier Shoe Co., Inc., Equity No. 7332; and Schwartz & Benjamin, Inc., Equity No. 7333 -- all of whom have shoe factories in the borough of Brooklyn, in the Eastern District of New York.

 It has been stipulated that the processes and products of all of the said defendants are the same as those of the defendant herein, and that the court's decision herein will control the other cases hereinbefore enumerated.

 Notice to all of the defendants in this and the other actions enumerated is admitted.

 The defendant herein, and each of the enumerated defendants in the other suits, is licensed under the Maccarone patent No. 1,569,823, by Del-Mac System Corporation, a New York corporation, which was formed with the patentee Fred Maccarone as vice president, and Herman B. Delman, as president, who was also the president of Delman, Inc., a shoe manufacturing corporation, in New York City; the name Del-Mac having been made up from the first syllables of the words "Delman" and "Maccarone."

 Maccarone and the Del-Mac System Corporation are controlling the defense in this case, and Mr. Delman has personally contributed quite substantially to the defense.

 The defendant's expert familiarized himself with the process herein complained of by observing commercial operations at Delman, Inc., which he was advised were the same as those of the defendant.

 The defendant has interposed an answer raising the issues of invalidity and noninfringement.

 The patents in suit relate to the manufacture of shoes in which insoles and outsoles are formed by division of single pieces of sole leather. The first patent in suit relates to one method of forming such a sole and the subsequent steps of forming a cemented shoe therewith; and the second patent in suit relates to another method of forming an improved sole of that type, and also claims the article per se.

 The first patent in suit, No. 1,838,708, relates to method of constructing shoes. It contains two claims, but only claim 2 is in suit.

 The second patent in suit No. 1,902,725 contains four claims, three relating to a method of stock fitting sole, and one to the product. All of the claims are in issue.

 The objects of the alleged invention of the first Sbicca patent in suit No. 1,838,708 are set forth in the specification, as follows:

 "My invention relates to new and useful improvements in shoes and the method of making the same, the primary object of the invention being to provide an improved method of making women's shoes so that the shoe when completed will give the effect of what is known as a turned shoe, but in effect is made similar to a shoe produced by what is known as the cemented shoe process, yet differs from both of them and overcoming the many objectionable features of both of the aforesaid shoes.

 "A further object of the invention resides in providing a method wherein but a single sole is used, thus eliminating the objectionable features of an inner sole, such as is used in the 'McKay' process, the cemented shoe process and similar processes.

 "A further object of the invention resides in the provision of a process for making shoes which will produce rigidity and strength at the portions thereof requiring the same but which will eliminate unnecessary thicknesses at the portions of the shoe where thinness and lightness are most desirable.

 "A further object of the invention resides in providing a shoe which is light in weight, durable under the heaviest wear and one which will avoid squeaks.

 "Still another object of the invention resides in using a single sole from which is cut a marginal sole strip applicable to the last and to which the upper is secured prior to the application of the sole proper."

 The method of constructing a turned shoe, briefly summarized, consists in applying an outsole bottom side down on a last and stitching the lasting allowance of an upper, while wrong side out on the last, to a channel leaf of the sole; trimming the excess lasting allowance; then removing the shoe from the last; turning it right side out; relasting it and hammering or molding it on the last until it assumes the shape of the finished product. For a completed turned sole shoe see Plaintiff's Exhibit 7-C.

 The method of constructing the cemented shoe, briefly summarized, consists in placing a solid insole on a last, placing an upper on the last right side out, and lasting it to the insole with cement, trimming, roughing, and coating the lasting allowance with cement, placing a filler over the center of the insole, preparing a roughed and cemented outsole, and then cementing the outsole to the lasted upper while still on the last. For a completed cemented shoe, see Plaintiff's Exhibit 8-C.

 The method of constructing a "McKay" shoe, briefly summarized, consists in using a solid insole, bottom filler, and lasting operation similar to the cemented shoe, and then delasting the shoe and stitching an outsole to the lasted upper through a channel formed in the grain side of the outsole, after which the channel leaf is cemented down to hide the stitches. For a completed "McKay" shoe, see Plaintiff's Exhibit 9-C.

 The patentee by the last paragraph of the specification showed that he did not intend to limit himself to the exact details of construction shown and described, as he said: "While I have particularly described the elements and steps best adapted to perform the functions set forth, it is obvious that various changes in form, proportion and in the minor details of construction may be resorted to without departing from the spirit or sacrificing any of the principles of the invention."

 Claim 2 of the first patent in suit reads as follows: "2. The method of constructing a cemented shoe consisting in providing a sole of the desired final sole thickness in the finished shoe, removing from the edges of the upper surface of the ball section and adjacent portions of the shank section of the sole a rand of less thickness than the sole and reducing the thickness of the shank and heel portions of the sole, by removal of material from the upper surface thereof, to the thickness of the marginal portions of the ball section thereof, lasting an upper upon a last to which said rand and a shank piece to which the rand is secured have been applied, and permanently securing the upper to the rand and the edges of the shank piece, and permanently attaching the sole to the upper, the rand, and the shank without delasting the shoe."

 This patent does not particularly disclose any shoe structure nor the method of making a shoe, but seems to be a method of making a sole structure. It discloses a sole having a skeleton insole and an outsole having the elevated central ball portion with the reduced marginal edge about the ball and forward part of the shank of the insole. In making the rand portion of the sole, Sbicca cuts the ordinary seam channel found in sewed shoes, which is shown at the left of Fig. 2, which channel forms a beveled edge about the central portion of the outsole.

 After the forming of this channel, the outer portion of the edge of the outsole is given a horizontal cut, which separates a rand from the outsole structure about the ball. The shank portion of the sole blank is split, and the portion of the leather which is removed from this shank portion becomes waste.

 Prior to the lasting operation, a piece of paper is placed on the last. The rand portion 2 of the insole is then fastened to the last, and a separate shank portion 6 is then applied to the last, the rand portion being secured to the shank portion.

 A completed shoe having a sole, combination insole and outsole, produced as described in the patent, is shown in crosssection in Fig. 17.

 The substance of the patent relates to cutting out a marginal strip, as it is described in the specification or rand as described in the claim, by the use of knives, and likewise cutting out the heel and shank portion of a sole.

 This patent states that the upper may be secured to the outsole after application of the insole by one of three methods, cementing, stitching, or nailing, which are practically alternative methods.

 The second patent in suit, No. 1,902,725, contains four claims, three to a method of stock fitting soles, and one to the product. All of the claims are in issue.

 The specification says that the invention relates to complementary insole-outsole combinations and to a method of producing the same.

 It then points out what the patentee considers the difficulties encountered in the practice of the prior art, particularly with respect to the inaccuracy of fitting outsoles to insoles and the waste of material involved, and contends as follows:

 "An important object of the present invention is the provision of a method of producing complementary insole-outsole combinations in which all waste is eliminated and an absolute fit assured between the insole and outsole in the completed shoe.

 "A further object of the invention is the provision of a method of producing such combinations which may be readily carried out at the factory and by use of machines commonly employed at the factory with but slight modifications thereof.

 "These and other objects I attain by the construction shown in the accompanying drawings wherein, for the purpose of illustration, I have shown a preferred embodiment of my invention. * * *"

 The specification ends with the following two paragraphs:

 "The process employed in the production of shoes by use of combinations of this character is preferably that set forth in my prior application above identified, but may obviously be employed in the production of other shoes, as for example, shoes produced by processes similar to that described in the patent to ...

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