Owen J. Roberts

“ In the absence of a statutory prescription to the contrary, I see no reason for extending the presumption of validity arising from the mere issuance of a patent beyond the narrow compass indicated by the passage quoted from the Radio Corporation case.
On the other hand, there are many positive reasons for not doing so. A patent is a grant of exclusive privilege. Yet it is normally issued in a non-adversary proceeding. Indeed, it is the practice of the Patent Office to keep patent applications on file in secrecy until the time of issuance. ”

“ The impressive speed of the machine is not the result of the improvements. Like most of the other admirable qualities of the machine as a whole it was attainable before the improvements were patented and to it the improvements made no contribution.
Even if there is some conceivable basis for crediting the machine as a whole to McFeely's genius, he was not entitled to claim it in this patent. For his earlier patent, even lengthier than this one, had described and claimed as patentable invention every feature of the machine except the minor improvements to which we have referred. ”

“ Moreover, the patent examiner, unlike the court in an infringement suit, does not have the benefit of the researches of opposing counsel upon the state of the prior art. Even where the Patent Office conducts interference proceedings for the purpose of determining priority of invention, a contestant is not permitted to prove that a stranger to the proceedings was the first inventor. He can oppose only his own claim of priority against that of the other party. ”

“ When it is a close question whether the changes embodied in a later patent are a sufficient advance over earlier patents to constitute patentable invention, the measure of commercial success of the later patent has been recognized by courts as affording some aid in reaching a conclusion. ”

“ Even if the issue of patentable invention were a doubtful one, the force of deductions that might normally be drawn from commercial success is greatly reduced in the circumstances of this case. For, by virtue of its dominant position in the shoe machinery industry, the United Shoe Machinery Corporation was not seriously threatened by loss of business to competitors when it withdrew the first McFeely machine from commercial use. ”

“ We come to the petitioner's contention that the courts below have held the patent valid and infringed on the theory that the improvements and adjustments disclosed in the claims entitle McFeely to repatent the entire combination of the old devices, known as bed lasters and automatic tackers. Petitioenr argues that they have so held only because the mechanism of the patented machine permits of its operation upon a wider range of sizes of shoes than the machine earlier patented and that it does so operate merely because of three trifling mechanical adjustments which it embodies. ”

“ The respondent does not pretend to fix liability on the petitioner for contributory infringement by reason of the use of an automatic power driven lasting and tacking machine which does not employ the novel improvements of the combinations claimed, and could not do so. It is admitted, as it must be, that the petitioner is free to use the machine shown in the first McFeely patent which has expired, or any other automatic lasting and tacking machine which does not embody the three improvements covered by the claims in suit. ”

“ The narrow field into which the patent in controversy was projected had already been so crowded by prior patents, a multitude of which were owned by the respondent, that the area left for patentable invention was very small. As the brief treatment in the Court's opinion indicates, the inventions set out in the claims now held valid, if inventions at all, are comparatively simple improvements of an automatic power-driven heel seat lasting machine. ”

“ If the shoe is too low with respect to the wipers, the leather will not be bent down sufficiently far; if the shoe is too high with respect to the wipers, the wipers will hit the shoe below the insole and therefore will not produce any bending of the leather at all. But in setting out a mechanism to insure the proper relationship between the level of the shoe and the level of the wipers during successive strokes of the machine, the second McFeely patent is by no means new. ”

“ There is no doubt that the United Shoe Machinery Corporation, particularly since it maintains a patent department in which patent lawyers are regularly employed, could have caused these simple improvements to be patented separately and without ambiguity or prolixity. ”

“ On the other hand, blurring the lines of separation places anyone who attempts to use any part of the amalgam in jeopardy of burdensome infringement suits. Where the patent owner has ample resources to bear the costs of repeated litigation, the power of the infringement suit to stifle competition is increased. ”

“ Even before 1900, automatic tacking machines and automatic wiping machines, adaptable to shoes of different sizes, had been in use commercially. In connection with the issuance of his earlier patent, McFeely represented that he had succeeded in combining tackers and wipers in a single machine and that his patent therefore set out a pioneer invention, disclosing the first machine organized for the entire process of heel seat lasting. The United Shoe Machinery Company built a machine in accordance with the patent and placed it in a factory for testing purposes. ”

“ It would be difficult to describe an improvement in a washing machine without naming such a machine as the thing to which the patent is addressed and equally difficult to refrain from referring to various parts of the machine, such as the tub or the motor which actuates the washer. ”

“ Bokee, said: 'We think it proper to reiterate our disapprobation of these ingenious attempts to expand a simple invention of a distinct device into an all-embracing claim, calculated by its wide generalizations and ambiguous language to discourage further invention in the same department of industry and to cover antecedent inventions. ”

“ It is difficult to imagine that any mechanic would be ignorant of the principle that if two parts are fastened together, they will move simultaneously. The change in the tacker-wiper mechanism was no more than the application of this principle. Tackers and wipers were more rigidly interconnected. Even if such an expedient could ever have been invention, it had been anticipated in the field of shoe machinery as far back as 1881, when George W. Copeland, Matthias Brock, and Joseph E. Crisp obtained Patent No. ”

“ The public, who will be exclude for 17 years from the field granted to the applicant, are represented only insofar as the enormous volume of business permits the examining staff of the Patent Office to watch out for the public interest. ”

“ In essence, it is an attempt to utilize minor improvements to perpetuate exclusive enjoyment of a major instrument of production which rightfully belongs to the public. Distinct separation of the new would afford guidance to those who wished to use the old when the exclusive rights to it expired. ”

“ A comparison of the patent in suit with patents of the past shows that the improvements here were but duplications of old elements to obtain an old result and their application to the first McFeely machine was no more than a common mechanical expedient. The objective, adapting the machine to shoes of different sizes, suggests its own means of accomplishment. ”

“ The ratchet can be adjusted to position the graduations for different groups of sizes such as men's, women's or children's sizes.' And the first claim sets out 'means for fixing the gripper in different positions of adjustment both vertically and horizontally relatively to the last spindle for lasts of different heights and lengths.'↑ See discussion of the invalidity of this claim (No. 42) at pageS 377-378, supra.↑ Rule No. 15, Rules of Practice, United States Patent Office, 35 U.S.C.A.Appendix.↑ See Report of Science Advisory Board, set out in TNEC Hearings, Part 3, 1139, 1140. ”