Union Edge Setter Company v. Keith

Appeal from the circuit court of the United States for the district of Massachusetts.

This was a bill in equity for the infringement of letters patent No. 173,284, issued February 8, 1876, to Charles H. Helms for an improvement in sole-edge-burnishing machines. In the introduction to his specifications, the patentee stated that his machine consisted 'of a head or standard carrying a tool-holder, holding a tool for setting or burnishing the edges of the soles of boots and shoes, and a finger-rest to aid the workman in holding the edge up to the tool, and the face of the sole against the rest, which is just below the burnishing part of the tool.' After describing his machine by reference to the drawings, he stated his operation to be as follows: 'The workman holds the shoe firmly in his hands and thus presents the edge to be burnished to the tool, which reciprocates with great rapidity; about 1,800 times per minute, I find, gives the best results. The workman passes [presses] the edge up against the tool, and the fact of the sole against the surface which projects below the tool, and gradually mves the shoe so as to bring all parts of the edge to its action, steadying the shoe by the aid of the finger-rest, D, especially when burnishing the corners of the toes. A little experience is necessary to enable the workman to use the machine to great advantage, but a skilled workman can do a very large quantity of work, second to none in quality. The combination of the finger-rest, D, with the burnishing tool, and the rest for the face of the sole, is the main feature of my invention.'

The only claim alleged to be infringed was the first, which reads as follows:

'In combination with the burnishing tool and the rest for the face of the sole, the finger-rest, D, substantially as described.'

There were two other patents originally set forth in the bill, but by stipulation they were stricken out.

The defenses set up in answer were (1) the in validity of the first claim of the patent, which was the only one relied upon by the plaintiff; and (2) non-infringement.

Upon the hearing in the circuit court, the bill was at first sustained, but, upon a rehearing, dismissed. The first opinion of the court is reported in 28 Fed. Rep. 715, and the opinion upon rehearing in 31 Fed. Rep. 46.

The errors assigned were—

(1) That the court decided that the combination set forth in the first claim was not patentable.

(2) That the court decided that neither of the three elements of the combination named in the first claim performed any new function.

J. E. Maynadier, for appellant.

J. L. S. Roberts, for appellee.

Mr. Justice BROWN, after stating the facts as above, delivered the opinion of the court.