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May 25, 1954


The opinion of the court was delivered by: DIMOCK

This is a suit for the alleged infringement of a design patent and a utility patent for footcaps. Defendant moves pursuant to Rule 56, F.R.C.P. 28 U.S.C., for summary judgment dismissing the complaint on the grounds that the patents are invalid and not infringed.

Plaintiff contends in effect that the issues of validity and infringement of a patent are never susceptible of determination on a pre-trial motion. Plaintiff's affidavits, however, raise no genuine issues of fact. The Court of Appeals of this Circuit has indicated that the remedy of summary judgment is available in patent suits where no factual issues are raised and where the patents and products involved are sufficiently simple to make expert testimony unnecessary. Bridgeport Brass Co. v. Bostwick Laboratories, 2 Cir., 181 F.2d 315, 316, 319; See also Steigleder v. Eberhard Faber Pencil Co., 1 Cir., 176 F.2d 604; Vulcan Corp. v. International Shoe Machine Corp., D.C.D.Mass., 68 F.Supp. 990, affirmed 1 Cir., 158 F.2d 520, certiorari denied, 330 U.S. 825, 67 S. Ct. 868, 91 L. Ed. 1275. Such is the case presented here. Since there are no genuine issues of fact or questions of expertise involved in the determination of this motion, defendant should neither have to undergo the expense of trial nor the prolongation of the threat to its business involved in the wait for trial of an infringement action. See Steigleder v. Eberhard Faber Pencil Co., 1 Cir., 179 F.2d 604, supra.

 I turn first to the issue of infringement.

 The products in suit are women's fabric foot coverings which are worn in lieu of stockings to protect the bare foot from contact with the shoe. These 'footcaps', as plaintiff calls its product, or 'Footlets', as defendant labels its product, are commonly worn with summer or sport shoes. Plaintiff sues as owner of a footcap utility patent, Patent No. 2,649,588, which was issued on August 25, 1953, and of a footcap design patent, Des. 166,540, issued on April 22, 1952.

 The undisputed facts are as follows: Since October, 1950, defendant has been manufacturing and selling a one-piece fabric foot protector the structure of which is set forth in Patent No. 2,628,439, issued on February 17, 1953. Defendant's patent is not contested here. Some time after the issuance of plaintiff's patent, and the appearance of its patent product on the market, defendant added a foam rubber pad to the heel portion of its foot protector. Defendant's inclusion of this foam rubber pad in its product is the alleged infringement of plaintiff's patents. There is no contention that any other portion of the structure of defendant's product infringes plaintiff's patent. Indeed, except for the foam rubber heel pad, defendant's product is covered by a patent earlier than plaintiff's utility patent, as I have indicated above. Thus, the issue is simply whether defendant's use of a foam rubber heel pad in connection with its otherwise unexceptionable foot protector constitutes an infringement of plaintiff's patents.

 The scope of a patent is determined by the inventor's claims as finally approved by the Patent Office. Paper Bag Patent Case, Continental Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S. 405, 419, 28 S. Ct. 748, 52 L. Ed. 1122. Patent No. 2,649,588, plaintiff's utility patent, sets forth two substantially identical claims, except that claim 2 specifically refers to the use of sponge rubber for the more generally described 'resilient friction pad' set forth in claim 1. Claim 2 is as follows:

 'A footcap comprising a toe panel, a heel box panel and an intermediate, panel, a continuous seam joining said toe panel to the forward edge of said intermediate panel, a continuous seam joining said heel box panel to the rear edge of said intermediate mediate panel, an inelastic binding on the top edge of said heel box panel extending forwardly to the junctures of said heel box panel and said intermediate panel, an elastic binding on the top edges of said intermediate panel and the inner edge of said toe panel, the rear ends of said elastic binding to the terminal ends of said inelastic binding, and a sponge rubber friction pad on the rear portion of said heel box panel.'

 It is quite apparent that Patent No. 2,649,588 describes a combination, a footcap composed of a number of elements, and does not purport to cover separately each of the elements comprising the combination.

 It has long been established that no one element of a combination, no matter how important, can be regarded as the substance of the invention for the purposes of patent protection. See Schumacher v. Cornell, 96 U.S. 549, 554, 24 L. Ed. 676; Leeds & Catlin Co. v. Victor Talking Mach. Co., 213 U.S. 301, 318, 29 S. Ct. 495, 53 L. Ed. 805. Further, the Supreme Court has held that any part of a combination patent, even if the part is itself a clearly patentable invention, may be freely used unless it is separately patented. Special Equipment Co. v. Coe, 324 U.S. 370, 376, 65 S. Ct. 741, 89 L. Ed. 1006.

 Conversely, for a finding of infringement, every element of a patented combination is presumed to be material. Therefore, in order to find infringement of a combination patent, every element of the patented combination must appear in the accused product. Etten v. Kauffman, 3 Cir., 121 F.2d 137, 139; Steigleder v. Eberhard Faber Pencil Co., D.C.D.Mass., 81 F.Supp. 143, 145, affirmed 1 Cir., 176 F.2d 604. If a single element is omitted from the accused combination there can be no infringement. It is true, as plaintiff contends, that a substitution of a substantially equivalent element merely to avoid a claim of infringement will not avail the infringer. See Etten v. Kauffman, 3 Cir., 121 F.2d 137, 140, and cases there cited.

 A patentee is estopped to invoke this doctrine of equivalents, however, as to any element which he added to his rejected claim in order to obtain patent protection. See Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 136, 62 S. Ct. 513, 86 L. Ed. 736; Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 220-221, 312 U.S. 654, 61 S. Ct. 235, 85 L. Ed. 132; I.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S. 429, 443-444, 47 S. Ct. 136, 71 L. Ed. 335; Keith v. Charles E. Hires Co., 2 Cir., 116 F.2d 46, 48. A patentee is not permitted to narrow his claim in order to sustain its validity and then seek broader protection against infringement. Such is plaintiff's dilemma.

 In the original application for plaintiff's patent, seven claims were set forth, all of which were rejected for 'failing to patentably define from the prior art.' The two claims set forth above were finally accepted after amendment. The amended claims contained two elements which did not appear in any of the original claims, 'a continuous seam' joining the toe panel to the intermediate panel, and 'a continuous seam' joining the heel box panel to a rear portion of the intermediate panel. The parties have submitted affidavits attempting to define 'continuous seam'. Under neither of the two proffered definitions does the accused product contain any 'continuous seams'. It cannot, therefore, infringe plaintiff's combination.

 If I accept plaintiff's explanation of 'continuous seam' and treat any stitching as a seam, a continuous seam is an unbroken line of stitches. If I accept defendant's definition, a 'continuous seam' is a joining of two pieces of material which are completely separated, the edges of which must be sewn together in an unbroken line for complete attachment. Defendant's foot protector, which is a one-piece structure with stitched folds, contains neither an unbroken line of stitching around any portion nor any joinings of separate pieces of material. Where the three-piece assembly has a continuous seam around the toe of the article, the single piece construction has two stitched folds separated by the toe. Likewise, where the three-piece assembly has a continuous seam around the heel, the single piece construction has two stitched folds separated by the heel. Plaintiff is prevented by 'file-wrapper estoppel' from charging that defendant's separate fold construction is an equivalent of the continuous seam element of plaintiff's combination.

 Even without resort to this file-wrapper estoppel and on the basis of the prior art alone, plaintiff's patent cannot be construed to cover one-piece structures like defendant's, though they embody foam rubber heel pads. A patent which represents limited improvement over prior art must be narrowly construed. See Railroad Supply Co. v. Elyria Iron & Steel Co., 244 U.S. 285, 294, 37 S. Ct. 502, 61 L. Ed. 1136; Penmac Corporation v. Esterbrook Steel Pen Mfg. Co., 2 Cir., 108 F.2d 695, 697. One-piece foot protectors with some form of heel lining date back at least to 1933. The Paul stocking foot, Patent No. 1,912,539, issued June 6, 1933, is a one-piece foot protector with a liner of waterproof material in the heel. The Wilson foot protector, patented May, 1935, is a one-piece knitted structure with elasticized margins on the two sides of the foot opening and a liner of friction material in the heel. Thus, plaintiff's three-piece foot protector with an elasticized binding around the upper edges of the toe and intermediate panels and a foam rubber heel pad is at most ...

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