Overview
Case summary
This patent infringement case involves U.S. Patent No. 243,917 issued in 1881 for a machine that flanges counters (heel portions) of boots and shoes preparatory to lasting. The McKay-Copeland Lasting Machine Company sued the Copeland Rapid-Laster Manufacturing Company for infringement of claims 1 and 3. The machine uses a 'former' (not a last) and a clamping strap to bend leather counters. The patent had limited commercial use for only 3-4 weeks after issuance before being abandoned. The court found claim 1 anticipated by Kriebel's 1865 patent for a wood-bending machine that used the same mechanical principles and motions. Claim 3 was deemed void as surplusage. While the court recognized the device had utility under patent law despite limited commercial success, it invalidated the claims at issue due to anticipation by prior art.
Abstract
In this patent infringement suit, the court invalidated claim 1 of the patent for a machine that flanges counters of boots and shoes, finding it anticipated by an earlier patent for a wood-bending machine employing the same mechanical principles and motions. Claim 3 was held void as surplusage. The bill was dismissed with costs despite the device's recognized utility.
Opinion of the court
opinionPUTNAM, Circuit Judge
- Claim 3 is surplusage and void
- Patent specification limits invention to flanging counters, not lasting
- Kriebel's 1865 wood-bending patent anticipates claim 1
- Limited commercial use does not establish lack of utility
- No invention in applying Kriebel's mechanism to leather instead of wood
Jurisdiction
not challenged- Suit for alleged infringement of letters patent No. 243,917
Procedural posture
- Validity of patent claims
- Anticipation by prior art
- Infringement
Legal categories
Case record
Issues & holdings
de novo
Claim 1 lacks patentable invention in view of Kriebel's anticipatory device
Issue preserved for review
de novo
Claim 3 is surplusage and void as it adds no novelty to claim 1
Issue preserved for review
de novo
Limited commercial use does not overcome prima facie case of utility under patent law
Issue preserved for review
Holdings of the court
Error analysis
- Patent claims invalid due to anticipation by prior art — procedural · error foundNot applicable as error goes to validity of patent · not harmless
Statutory interpretation
1Standards of review
- Patent validity and anticipation — de novo Legal questions of patent validity and anticipation reviewed de novo
- Utility of patented device — de novo Question of utility under patent law reviewed de novo
Timeline
Machine used commercially for 3-4 weeks then abandoned
Shows limited practical use of invention
Patent No. 243,917 issued to Hurlbut and Kennard for machine flanging counters of boots and shoes
Patent at issue in the case
Complainant obtained title to patent
Complainant became owner of patent
Complaint filed alleging patent infringement
Initiation of lawsuit
Circuit court dismisses bill with costs, finding first claim anticipated and third claim void
Outcome: Bill dismissed
Final disposition of case
Facts & evidence
Key facts
6 facts- Patent No. 243,917 issued July 5, 1881 to R.H. Hurlbut and C.E. Kennard for a machine for flanging counters of boots and shoes
- The machine uses a 'former' (not a last) and a clamping strap to flange counters preparatory to lasting
- Only first and third claims of patent are in litigation
- Machine was used commercially for only 3-4 weeks after patent issuance then abandoned
- Complainant obtained title to patent in April 1893 and filed suit in August 1894
- Respondent raised defenses of lack of utility, anticipation by prior art, and non-infringement
Procedural history
5 steps- Patent issued July 5, 1881
- Limited commercial use in 1881
- Patent dormant until 1893 when complainant obtained title
- Suit filed August 1894
- Circuit court decision August 8, 1896
Evidence in the record
- Testimony from one of the patentees about machine operation
- U.S. Patent No. 243,917 (July 5, 1881) to Hurlbut and Kennard
- Kriebel's patent (October 24, 1865) for wood-bending machine
- Patent drawings and specifications
- Evidence type: Prior art patent (Kriebel 1865) · Challenge basis: Anticipation · Trial court ruling: admitted · Reasoning: Kriebel's device combines same motions and principles as claim 1 · Challenged on appeal: true · Appellate outcome: affirmed
Objects of relevance
Authorities
Cited authorities (7)
Statutes
- U.S. patent law principles
Standards & doctrines
- Anticipation doctrine in patent law
- Utility requirement in patent law
Legal principles applied
- Prior art that combines same motions and principles anticipates patent claim
- Paper patents that lie dormant for years should not receive broad construction