Petition — Scholl, Inc. v. S. S. Kresge Co.

3 — Court, U. & ~

) LED

78-81Qi |

NOV 14 1978

No.

mibi@iinetmmerntte JR., CLERK

In the

Supreme Court of the Anited States

Octoser Term, 1978

SCHOLL, INC.,

Petitioner,

vs.

S.S. KRESGE COMPANY,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

James Van SANnTEN

Hm, Gross, Simpson, Van Santen,

Srzapman, Cu1ara & Simpson

70th Floor Sears Tower

Chicago, Illinois 60606

312/876-0200

Attorneys for Petitioner

Epmunp W. Kitcu

1361 E. 56th Street

Chicago, Illinois 60637

Of Counsel

The Scheffer Press, Inc. (312) 263-6850

PA‘

NN alsin ccterenemalibiiasnidilinaiusnabeudiionsoeindiiti 1

PT tiiiininnictiriennnictnitnnignecinnnl lip iAeinihiieiieanleaiijaituiiin 2

Constitutional Provisions and Statutes 0.0... 2

Ef RE EN LE OC NT TD 2

Statement of the Case ........... ORO ene Re Oe Misttetbiesaaie 3

Reasons for Granting the Wit ............ccccsssssesseeseseeseeees 9

a sal stesstnsandasblaell 18

Appendix A - Opinion of the Court of Appeals ........ la-7a

Appendix B - Opinion of the District Court ............ 8a-28a

Appendix C - Excerpts from Trial Transcript (T.T.)

A SETI sickle taicisctiadbedltsinchishnlenagietnthleiahzaseindaicaaineniel 29a-39a

Appendix D- United States Patent No. 3,063,457 .... 40a-50a

AUTHORITIES

CasEs

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,

Rg RSC ener ore 14

Austin v. Mareo Dental Products, Inc., 560 F.2d 966

(9th Cir. 1977), cert. denied, 98 S.Ct. 1477 (1978) 16

Blonder-Tongue Laboratories v. University of Mlinois

Foundation, 402 U.S. 313 (1971) .....c.ccesssssssseseeseeseeseees 10

Chicago Rawhide Mfg. Co. v. Crane Packing Co., 523

ce Saeey CU CR TU) nccct aceteecsicccsecvrcccssberccznseve 12

Colourpicture Publishers, Inc. v. Mike Roberts Color

Productions, Inc., 394 F.2d 431 (1st Cir. 1968) ........ 16

Compton v. Metal Products, Ine., 453 F.2d 38, 42

UIE UNEIY TUTE” ‘ealasclisnisbecacisanaiasceeittiamiediscieiuveesensnvonmeguehdnies 16

ii

PAGE

Dann v. Johnston, 425 U.S. 219 (1976) crcscccsssssereerees 14

Deere & Company v. Sperry Rand, 513 F.2d 1131

Ee Si MIE esincectbissenssdipssibicabenicandcahadubibilegnesemieniiniiavabeneiones 16

Gass v. Montgomery Ward & Co., 387 F.2d 129 (7th

SI GUID -tiiesths aii iiadsasees ilceuicasbiansdcaiiaakodiateipeDiciedadantneies 16

General Electric Co. v. Jewel Incandescent Lamp Co.,

ee MES EEE TUNED scbeneaciciateaicessaadeusinnciasadibsebaabaniniinintn 14

Graham v. John Deere Co., 383 U.S. 1 (1966) .........

siheenesiadinis RAs aguinbaehdesephienthianindedeinan doriiciensodiiialiea 4, 13, 14, 15, 16, 17

Graver Tank & Mfg. Co., Inc. v. Linde Air Products

Celine ree. Ey, EW COIUIPP circicsosceretnennessateshecscosensione 5

Marconi Wireless Co. v. United States, 320 U.S. 1, 60

SUOMI spaebanoacabsbsstesdeibhasinn gadsvennscin tocausiabadsotaaesebetseabigh biplatoheniin 15

Monroe Auto Equipment Co. v. Heckethorn Mfg. &

Sup. Co., 332 F.2d 406, 412 (1964) ...cccccccsrerssrsscsssees 15

Palmer v. United States, 423 F.2d 316, 323 (Ct. Cl.

SOU: nicibielacniabsnabinkaieubunissdherinpadenastieelibadiahitesisineiendeiveineeatin 14

Reeves Instrument Corp. v. Beckman Instruments,

Inc., 444 F.2d 263, 271 (9th Cir. 1971), cert. denied,

TU: eC UE, INTER‘ coctesiasicesssncsabicsthtinbdesedstibiaasesepepinicos 16

Regimbal v. Scymansky, 444 F.2d 333, 339 (9th Cir.

UD; sscubcnctnsieisenienpaicdianbniidididieatsstii suid sadidtocdeelaldiaadicesdlcces 16

Reiner v. I. Leon Co., 285 F.2d 501, 504 (1960) ........ 15

Roanwell Corp. v. Plantronics, Inc., 429 U.S. 1004

LISD.’ siecedecusaisbdesevdobainiastnnendaabeaobliotaiiiioiianetaiaablaselviptends 4

Rockwell v. Midland-Ross Corp., 438 F.2d 645, 652

COUUE NODE P” nclossassccetleibasntbesibaeaseitiabianetibaeiombdiasoties 16

Safe Flight Instrument Corp. v. MeDonnell-Douglas

Corp., 482 F.2d 1086 (9th Cir, 1973) c.rcccssssesssseers 16

Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976) vue 13

Santa Fe-Pomeroy, Inc. v. P & Z Co., Ine., 569 F.2d

FU COME Gs SPD saiscinictiviavabionacninn sinthiatancal ni: a

iii

PAGE

Scholl, Inc. v. Glory Products Trading Co., Ltd.. 193

TEP, FOB. sccesscsssrersersseecscssossvecesenscccevensioonenecosessosinissoees 1,10

Systematic Tool & Machine Co. v. Walter Kidde &

Co., Ine., 555 F.2d 342, 348 (3rd Cir. 1977)... 16

U.S. Philips Corp. v. National Micronetics, Inc., 550

F.2d 716 (2nd Cir. 1977), cert. denied, 98 S.Ct. 183

CBT TD Sselidicachecsidtesctvenevtessseerssciibsbicncingninedennenmnineteretenteinies 16

United States v. Adams, 383 U.S. 39 (1966) ........... 13, 14

Univ. of Illinois Foundation v, Blonder-Tongue Lab.,

Inc., 422 F.2d 769, 778 (7th Cir. 1970), vacated

on other grounds, 402 U.S. 313 (1971), cert. denied,

Eee Se CITED cascssnenesitscicascetinnniasvisonssnnnensetendionsnces 16

Van Veen v. United States, 386 F.2d 462, 465 (Ct.

Oe. SEED sisi teicdakecidaceretinninseietiveretiscnensiocnseinmntachesnserinne 14

United States Constitution

BO, Bi BRO B:. seceieesetcnsicrnnenpeesssstndemsnsintiscveriemeeinemeesesnses 2

Statutes

Be ee CLD scchichisctarvactitececesiseacnasienncisecssentinerabennans 2

Be EA UII: Snittiapincserinsasbucecaheienespreisvisaetne 2, 4, 13, 14, 16, 17

Rules of Court

Be i is ee MICURD setsescsvivissnes ctsccessensssonvesinaibnssettaneoene 5

Administrative Regulations

Se ae SEINE - sicnitrhi gecnstiedcdehssanbovabesnihbaensiapeneabees beetesin 11

Others

A Proposal to Improve the Federal Appellate System,

Patent, TrapemarK & Copyricnt JournaL, August

EI. SI HE MEE cacnocesnevbescssicoumernsnginbicintecnsigaveenses 9

Commission ON Revision OF THE FrperaAL Court

AppeLLAte System, Srructure anp INTERNAL Pro-

cepures: Recommendations for Change (1975) ........ 9

Edmund W. Kitch, Graham v. John Deere Co.: New

Stamdards for Patents, 1966 Sup.Ct. Rev. 293, 330

SINE -> aiiceileensiuiasretiiidintebtesisldbessitaebasidebbuniialinesenstouieetbieetibiines 14

iv

PAGE

Kayton, Nonobviousness of the Novel Invention - 35

U.S.C, §103, published in Coursebook, 1977 Parent

Law ConFerENce (B.N.A. 1978) at 2:102 .....cccerseseeee 16

Reed, Some Reflections on Graham v. John Deere Co.,

published in Coursebook, 1977 Parent Law Con-

FERENCE (B.N.A. 1978) at 2:301, p. 2:307 ......cccccceseeee 17

Rich, Why and How Section 103 Came To Be, pub-

lished in Coursebook, 1977 Parent Law ConrereNcE

CR. TCE GS RUD ccesnnendiadicneaee 17

Ld

ly Tue

SUPREME COURT OF THE UNITED STATES

Octoser Term, 1978

No.

—

—

SCHOLL, INC.,

Petitioner,

v8.

S.S. KRESGE COMPANY,

Respondent.

ee eeeeeeseeee—eese—eeseee

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIROUIT

Petitioner Scholl, Inc. respectfully prays that a writ of

certiorari be issued to review the judgment of the United

States Court of Appeals for the Seventh Circuit entered

in this case.

OPINIONS BELOW

The written opinion of the Court of Appeals is reported

at 580 F.2d 244, 199 U.S.P.Q. 74, and is printed in Ap-

pendix A hereto.

The opinion of the District Court is reported at 193

U.S.P.Q. 695 and is printed in Appendix B.

The oral findings and conclusions of law of the Dis-

trict Court made at the conclusion of the trial are not

reported and are printed in Appendix C.

The opinion of the same District Court in a companion

case Scholl, Inc. v. Glory Products Trading Co., Ltd. from

which no appeal was taken is reported at 193 U.S.P.Q.

705.

iced.

JURISDICTION

The Judgment of the Court of Appeals was dated July

14, 1978 and was entered July 14, 1978. Rehearing was

denied on August 22, 1978. The jurisdiction of this Court

is invoked under 28 U.S.C. §1254(1).

CONSTITUTIONAL PROVISIONS AND STATUTES

The constitutional provision with regard to patents is

set forth in Art. 1, See. 8:

The Congress shall have power . . . To promote the

progress of science and useful arts, by securing for

limited times to authors and inventors the exclusive

right to their respective writings and discoveries.

The United States Patent Statute is 35 U.S.C. Patents

and Section 103 thereof reads as follows:

§103. Conditions for patentability; non-obvious sub-

ject matter.

A patent may not be obtained though the invention

is not identically disclosed or described as set forth

in section 102 of this title, if the differences between

the subject matter sought to be patented and the

prior art are such that the subject matter as a whole

would have been obvious at the time the invention

was made to a person having ordinary skill in the

art to which said subject matter pertains. Patent-

ability shall not be negatived by the manner in which

the invention was made.

QUESTIONS PRESENTED

1. Is U.S. Patent No. 3,063,457 valid?

2. What is the role of a Court of Appeals in reviewing

a judge verdict of patent validity?

in

STATEMENT OF THE CASE

This case involves the validity of a patent on an exer-

cise sandal. (App. D, infra.) The patented sandal has

been widely sold in the United States under the plaintiff's

trademark “Dr, Scholl’s.” The defendant purchased and

sold in the United States a Taiwan copy of the Scholl

sandal. ’

An exercise sandal is an odd piece of footwear. It is

designed neither for comfort nor for fashion, but to

cause the foot itself to work in the course of walking.

It provides exercise for muscles of the feet that receive

little use when regularly encased in modern shoes, An

exercise sandal consists of a solid base with a single

strap across the instep. In walking the sandal is held to

the foot by the gripping action of the toes. To enable

the toes to grip, a ridge is provided across the front of

the top surface of the solid base.

The Scholl patent is for an improvement on a prior

art exercise sandal patented by Berkemann. On the Berke-

mann sandal the ridge extended across the front of the

sandal under all five toes. The Berkemann exercise sandal

was patented and commercially successful in Germany.

The Scholl improvement patent teaches that a superior

exercise sandal can be made if the ridge terminates short

of the big toe and a slight depression is instead provided

to receive it. As of 1976, Scholl had sold 55 million pairs

of this patented improvement sandal throughout the

world. Corresponding patents issued in 10 other countries

including 5 with examination systems. (App. B, infra,

F.F. 36, pp. 18a, 19a)

The district judge, an experienced patent trial judge

with a skeptical attitude toward the work of the Patent

ary Wek

Office and the Patent Bar’, directed the brief two and

one-half day bench trial to the issue of validity under 35

U.S.C. §103.? Closely following the teachings of Graham

v. John Deere Co., 383 U.S. 1 (1966), the judge addressed

the factual inquiry to three primary issues (App, B, mfra,

pp. 20a-22a): (1) What is the scope and content of the

prior art? (2) What are the differences between the prior

art and the claims at issue? (3) What was the level of

ordinary skill in the pertinent art at the time the inven-

tion was made? 383 U.S. at 18. He also addressed Graham

secondary considerations:’ (1) That the patented sandal

has enjoyed great commercial success. (App. B, infra,

p. 23a-24a), and (2) That the defendant’s sandal was an

‘See Will, The Patent System: One Man’s View, 1

APLA Qtrly. 49 (1972), an article which documents his

views after 11 years of service as a federal district judge.

* Additionally, the District Court denied two separate

fully briefed pre-trial motions for summary judgment

brought by the defendant on the basis of affidavits and

deposition testimony, holding that disputed fact issues

required a full trial to determine obviousness under 35

U.S.C. §103. At the trial, live testimony was presented

by (1) a former Commissioner of Patents, Robert Gott-

schalk, (2) a Chicago Patent Attorney, Charles Pigott,

(3) an Orthopedic Surgeon specialist, Dr. Carroll B.

Larson, and (4) a renowned podiatrist, Dr. Philip Brach-

man.

*Such secondary considerations as commercial success,

long felt but unsolved needs, failures of others, ete., might

be utilized to give light to the circumstances surrounding

the origin of the subject matter sought to be patented.

As indicia of obviousness or nonobviousness, these in-

quiries may have relevancy. 383 U.S. at 18. The District

Court even made a synergism inquiry, suggested by two

judges of this court as a “requirement” under section 103.

(App. B, infra, p. 21a, F.F. 45) (White, J. and Bren-

nan, J. dissenting from a denial of certiorari), Roanwell

Corp. v. Plantronics, Inc., 429 U.S. 1004 (1976).

Pao

exact Taiwan copy of the plaintiff’s sandal. (App. B,

infra, p. 8a). The District Court concluded on the basis

of its factual findings on these issues that the patent is

valid. The Court of Appeals reversed,

The key to the trial court’s judgment was a finding,

amply supported by the record, that the state of the foot

appliance art was not high. Although foot problems afflict

millions, they have not been sufficiently function-threaten-

ing to cause the government to mobilize the resources of

high technology medicine to the foot appliance art. The

design of foot appliances has been the nonexclusive

province of shoe builders, podiatrists, and medical doctors.

It was because of the Court’s findings as to the factual

state of the pertinent art that the Court concluded that

the patent is valid. |

The Court of Appeals treated the issue of patent va-

lidity as a question of law and, reviewing the record de

novo concluded that the invention was obvious. No factual

finding of the District Court was analyzed in light of the

“clearly erroneous” standard of Fed. R. Civ. P. 52(a)‘,

nor was it suggested that the District Court had applied

an erroneous legal test.

In both the courts below the issue of validity led to this

question: Why is it not obvious, once the Berkemann

exercise sandal is in the prior art, to modify it by re-

moving the portion of the ridge under the big toe? (App.

A, infra, p. Ta, App. B, infra, p. 22a). The trial judge

asked this question for two and one-half days and only

at the very end of the trial did he arrive at an answer

*“*The rule (52(a)) requires that an appellate court

make allowance for the advantages possessed by the trial

court in appraising the significance of conflicting testi-

mony and reverse only ‘clearly erroneous’ findings.”

Graver Tank & Mfg. Co. Inc. v. Linde Air Products Co.,

336 U.S. 271, 275 (1949).

ey ee

that satisfied him. The Court of Appeals asked and

answered this question for itself. (App. A, infra, p. 7a).

This case was tried in a spirit of mutual inquiry for

the truth. The trial judge regularly revealed the state

of his thinking and asked the parties to correct him if

he misunderstood. The critical expert witness turned out

to be Dr. Brachman who had first been identified and

prepared by the plaintiff, but who was called to the stand

by the defendant and whose careful and subtle answers

earned him the confidence of the district judge. Dr.

Brachman testified that the invention would have been

obvious to him, but not to a person skilled in the perti-

nent art at the time the invention was made. At the end

of Dr. Brachman’s testimony the trial judge made it

clear that he was prepared to rule for the defendant.

Think, he said, of the footprint of a person standing

on sand. If one examines the footprint, he asserted, one

will see that the big toe leaves a deeper depression than

the other toes. Therefore, wouldn’t it be obvious to modify

the Berkemann sandal to provide additional room for

tlte big toe? The trial judge asked for comment from

the parties. Plaintiff's counsel suggested that Dr. Brach-

man, still present in the courtroom, was better qualified

to comment. A dialogue began:

Dr. Brachman: ... I think there is some miscon-

ception there... .

The Court: ... Straighten me out.

Dr. Brachman: Because we walk on hard surfaces,

we must design footwear that will be normal for the

foot on hard surfaces, and we can’t even think about

the fact that we at times used to walk on soft sur-

faces; therefore, we must design the type of foot-

wear where the toe, where the foot will function and

it will bring about the same amount of pressure, but

what will happen to it when it hits the hard surface,

this is what we have to think about.

—

om

The Court: I understand that, but you said this

design was anatomically sound. . . . [because] there

is a depression for the big toe which permits it to

get a lower level on the bottomside than the other

four toes. ... That is what would happen if you step

in the sand... . Isn’t that right?

Dr. Brachman: ... I really can’t answer that

{what would happen when you step in the sand] be-

cause | have studied walking in the sand [only] in

Southern Portugal, the clam diggers, and I have

taken pictures of them, and actually, there was no

difference between the amount of digging they did

in the sand with their lesser toes than the big toe... .

The Court: I am not talking about digging. I am

talking about just standing in a weight bearing po-

sition.

Dr. Brachman: Then there wouldn’t be much weight

on the big toe at all if you are just standing.

The Court: And the big toe wouldn’t make a

deeper depression than the other four toes?

Dr. Brachman: No sir. . . . Normal standing it

[weight] would be distributed fairly evenly along the

whole foot. .

The Court: What you are really telling me, this

is anatomically more correct not for the simple stand-

ing position, but walking. ... As an exerciser... .

You are satisfied, that given the average designer’s

knowledge of how the foot works, it wouldn’t have

been obvious to take that Berkemann patent and de-

sign the Scholl patent?

Dr. Brachman: That is my interpretation.

Following this colloquy, the district judge concluded

that the patent was valid. The improvement patent is

non-obvious because the problems of designing an exer-

cise sandal relate not to the position of the foot at rest

but to the more complex working of the foot in motion.

If the modification had been obvious to the inventor of

the Berkemann sandal, then he would have disclosed and

claimed a ridge under either all five or only four toes.

a

His failure to do so excluded from the scope of his patent

a sandal that has proven to have superior qualities,

In his testimony Dr. Brachman had explained why the

modification was not obvious to the art. He explained

that the nature of the movement of the foot in walking

was not properly understood by the art. He testified that

in the 1950’s it was believed that as the foot is dropped

the heel strikes first, then: contact moves forward along

the outside edge of the foot to the little toe, and then

across the front of the foot to the big toe. With this view

of the walking motion, a designer would see the role of

the big toe in walking as minor and extend the ridge

under the toe to increase the available gripping surface,

as Berkemann did. Brachman showed ultra high speed

movies to the Court, taken by him in the 1950’s, which

demonstrate that this theory of the movement of the foot

is wrong, although, Dr. Brachman testified that this is

still not entirely accepted in the art. The movies show

that in walking, the big toe comes down first before the

other toes and plays an important role in establishing

the initial balance of the foot. Only if a designer were

aware of this would he be moved to provide the big toe

with a more stable resting place in spite of the loss of

gripping surface.

The prior art relating to orthopedic shoes relied upon

by the defendant and the Court of Appeals is not perti-

nent, Dr. Brachman testified, because in those appliances

the foot is held to the sole and the natura! motion of the

foot is not involved.

pon ee

REASONS FOR GRANTING THE WRIT

‘1. The Court should grant a writ of certiorari be-

cause this case presents a question of importance to fed-

eral judicial administration, That question is the role of

the Courts of Appeal in patent litigation. The activist

appellate role asserted by the court below increases the

incentives for losing parties to appeal to the Courts of

Appeal, adding to their docket burden, and threatening

to disrupt emerging solutions to the procedural problems

of patent litigation. :

This Court is no stranger to the workload problems

of the Courts of Appeal, nor to the role that patent cases

are thought to play in that problem.’ Patent cases often

present courts with complex and extensive records and

almost always involve the question of validity. The Court

of Appeals was influenced by the fact that the district

judge had found this case ‘‘close’’, (App. A, infra, p. 4a),

but litigated patent cases are frequently close. If the los-

ing party knews that the outcome on appeal, even in the

absence of errors of law, will be little affected by the

outcome in the district court, the incentives to appeal will

be high. Conversely, the incentive of the district court

to resolve the issues with care and deliberation will be

reduced if he knows that his findings will not be accorded

any presumptive validity by the reviewing court.

The procedure for the adjudication of patent validity

matters has been undergoing hopeful change in the past

* The current position of the government is reflected by

a proposal circulated for comment by the Department of

Justice whereby ALL patent appeals would be heard by

a specialist court in Washington, D.C., see A Proposal

to Improve the Federal Appellate System, Parent, Trave-

MARK & Copyricut JournaL, August 3, 1978, No. 389 at

D-1; cf. Commission on Revision or THY Feprrart Court

AppeLuate System, Structure AND INTERNAL PROCEDURES:

Recommendations for Change (1975).

\

sain,

decade. Blonder-Tongue Laboratories v. University of II-

linots Foundation, 402 U.S. 313 (1971) held that the

owner of a patent that had been held to be invalid in one

proceeding cannot relitigate the patent against other

parties. This holding, combined with modern transfer

procedures, has tended to produce a single lead case in

which the validity or invalidity of a particular disputed

patent is litigated with national effect.. This change has

reduced the litigation burden of patent cases on the

federal district courts and effectively assigned to a single

district judge the responsibility for deciding once and for

all the validity or invalidity of a patent.

This change has been accompanied by efforts from the

Patent Office to provide more assistance to the District

Courts in the trial of patent cases. It has long been the

complaint of this Court and others that the Patent Office

action is of little help to the trial court because the rec-

ord before the trial court will contain relevant prior art

not considered by the Patent Office. Thus the rule that

the presumption of validity disappears if there is rele-

vant prior art not considered by the Patent Office is fre-

* The present case is exemplary. A second action against

the Taiwan manufacturer and the St. Louis based Taiwan

importer was consolidated for trial after the importer

was dismissed for improper venue: Civil Action No.

75 C 622 in the Northern District of Illinois, 193 U.S.P.Q.

705. A third action against the Taiwan importer was

brought in the St. Louis Federal District Court (8th

Circuit) and was quickly resolved. The Court adopted

findings of fact and conclusions of law very closely pat-

terned after those entered by Judge Will in Chicago.

Civil Action No. 77-0301-(C)1 in the Eastern District of

Missouri.

Another action presently pending in New York City in

the United States District Court for the Southern District

of New York (2nd Circuit) with Melville Corporation

is in a hold status pending final determination of this

case, Civi] Action No. 77 CIV 755,

ee ae + oe

—M—

quently invoked in patent cases. (Parenthetically, the dis-

trict court here was moved to comment that this was an

unusual case because all of the relevant prior art had

been cited to the Patent Office. App. B, infra, pp. 19a, 20a,

F.F. 40, 41). This has been a difficult problem for the

Patent Office because at the time of application it is im-

possible to give all applications the kind of study they

would receive in litigation, yet it is impossible to pre-

dict which particular patents will be of sufficient impor-

tance and of sufficiently uncertain validity to cause liti-

gation. The Patent Office, through creative use of its rule

making power, is now moving toward the following so-

lution: Create an opportunity for re-examination by the

Patent Office after civil discovery has been completed.’

The Patent Office can then examine on the record that

the district judge will consider, and the district judge will

have the advantage, of the expert and relevant view of

the Patent Office.

The emerging procedure shows promise of working as

follows. First, the patent owner, subject to the rule that

an adverse outcome is binding on him, will sue all major

infringers so that he can at least have an outcome bind-

ing on them if he wins. Second, using transfer procedures,

the case will be consolidated in a single district court for

an authoritative adjudication, Third, discovery will be

conducted and a record satisfactory to all parties devel-

oped. Fourth, if this record shows that the Patent Office

did not act in light of relevant and material information,

the patent owner can move to stay the proceeding pend-

ing submission of his patent to the Patent Office for re-.

examination. After re-examination, the case will then

proceed to trial in the district court.

This procedure would focus the validity determination

in a federal district court with the facts before it and

* 137 CFR. §1.175(4).

aw 19 o-

with the time to adjudicate the issue in light of the con-

flicting public interests at stake in the patent system, but

with access to the informed view of the specialized office

responsible for centralized administration of the patent

system.

The decision of the appellate court below and others

like it will greatly complicate this emerging procedure

for patent validity litigation. Iustead of focusing the pro-

cedure on a single district court, the important decision

will be made in the Court of Appeals. This will increase

the complexity of the procedure with little gain in the

quality and uniformity of patent decisions. The district

court, which will have the advantage of an extended, live

trial on the issues, will not make the authoritative deci-

sion on validity. That will be the province of a court of

appeals, But there will be no gain in uniformity because

the decision of any panel of a Court of Appeals as to

the validity of a particular patent will have little signifi-

cance beyond the facts of the particular case before the

panel,

Mr. Justice Stevens (then speaking for the Seventh

Circuit Court of Appeals) commented on the advantages

of the district court in the trial of a patent case in Chi-

cago Rawhide Mfg. Co. v, Crane Packing Co., 523 F.2d

452, 460 (7th Cir. 1975):

[A]s we read the transcript of the testimony in

this case, we are impressed with the importance of

having live witnesses, subject to cross-examination,

explain the operation of physical exhibits in a way

which enables a district judge to understand what is

before him and to interrupt with proper questions

when he does not understand. * * * [O]Jur under-

standing of the written record, even when aided by

briefs and oral argument, is comparable to that of

a student who has taken a correspondence course in-

stead of attending classes on a daily basis with a

laboratory available for experiment when needed. The

—

trial judge really is in a better position to evaluate

the obviousness issue than we are.

2. The Court should grant a writ of certiorari because

the decision ,below reflects confusion in the Courts of

Appeal about the law of patentability under 35 U.S.C.

$103 and Graham v. John Deere Co., 383 U.S. 1 (1966).

The simple technology and clear factual record in this

case lend themselves to a clarification of the law of

patentability.

Graham taught that the issue of patentability was to

be decided as follows. First, the “scope and content of

the prior art are to be determined; differences between

the prior art and the claims at issue are to be ascertained ;

and the level of ordinary skill in the pertinent art re-

solved. Against this background, the obviousness or non-

obviousness of the subject matter is determined. Such

secondary considerations as commercial success, long felt

but unsolved needs, failures of others ete... . as indicia

of obviousness or non-obviousness ... may have rele-

vancy.’’ 383 U.S. at pp. 17, 18. The district court followed

these instructions, The Court of Appeals ignored them.

In a companion case to Graham, United States v. Adams,

383 U.S. 39 (1966), this Court held a patent on a battery

whose construction was suggested by the prior art valid

because of specific evidence in the case that those of or-

dinary skill in the art had believed at the time of the

invention that the battery would not work. Similarly, the

factual record in this case showed that the construction

of the exercise sandal in question was contrary to the

theories of the pertinent art.

In three cases construing Section 103 since Graham,

this Court has reversed an appellate tribunal that had

reversed the Section 103 determination of a trial court

or of the Patent Office. Sakraida v. Ag Pro, Inc., 425 U.S.

oy

273 (1976); Dann v. Johnston, 425 U.S. 219 (1976); An-

derson’s—Black Rock, Inc. v. Pavement Salvage Co., 396

U.S. 57 (1969). In each of these decisions the Court em-

phasized the central role of the Section 103 inquiry as

explained in Graham. In each of these three cases the

court followed the decision of the finder of fact and re-

versed the appellate tribunal,

The decision below cited no Supreme Court precedent

other than General Electric Co. v. Jewel Incandescent

Lamp Co., 326 U.S. 242 (1945).° That citation and the

style of the opinion return the law of patentability to

the confusion that had prevailed prior to Section 103

and the decision in Graham. Much of that law was built

upon the concept of inventive novelty, a concept that

caused great uncertainty because it is in the nature of

technology to develop in incremental steps. Every new

invention must draw upon what is already known, and

the difference between a combination of old elements and

a new invention was difficult for this Court to explain

and for the courts below to follow.

The 1952 reviser said of Section 103 that “the section

is added to the statute for uniformity and definiteness.”

And this Court said in Graham: “(T]he §103 additional

*“Patentability may not rest upon the discovery of a

new use or a previously unnoticed advantage of an old

structured element.’’ (App. A, infra, p. 7a). The Patent

Act of 1952 specifically overruled that ee of law and

the cases enunciating it, 35 U.S.C. 100 (b) Commentary

on the New Patent Act, P, J. Federico, U.S.C.A., Title 35,

§$1-110 at pp. 16 and 17; Palmer v. United States, 423

F.2d 316, 323 (Ct. Cl. 1970); See also Van Veen v. United

States, 386 F.2d 462, 465 (Ct. Cl. 1967). The General

Electric case was overruied by implication in United

States v. Adams, 383 U.S. 39 (1966). See Edmund W.

Kitch, Graham v. John Deere Co,: New Standards for

Patents, 1966 Sup. Ct. Rev. 293, 330 (1966).

i

condition, when followed realistically, will permit a more

practical test of patentability. ... We believe that strict

observance of the requirements laid down here (in

Graham) will result in that uniformity and definiteness

which Congress called for in the 1952 Act.”

Later in the opinion the Court, in a discussion of the

secondary considerations of long felt need and commer-

cial success, referred to the need for a law of patent-

ability. that poses issues the district judges can effec-

tively address.°

Unfortunately, the promise of Section 103 has not been

fully realized, as even a casual reading of the numerous

Court of Appeals’ patentability decisions demonstrate.

The conflicts are not only between circuits, but within

them. On the one hand are the many cases thet follow

the teachings of Graham and instruct the district judges

to make the findings of fact it requires. Shortly after

Graham, the Seventh Circuit, in a much cited opinion,

cautioned the district judges to make the findings re-

*“These legal inferences or subtests do focus attention

on economic and motivational rather than technical issues

and are, therefore, more susceptible of judicial treatment

than are the highly technical facts often present in patent

Itigation. See i udge Learned Hand in Remer v. I. Leon

Co., 285 F.2d 501, 504 (1960). See also Note, Subtests of

‘‘Non-obviousness’’, A Nontechnical Approach to Patent

Validity, 112 U.Pa.L.Rev. 1169 (1964). Such inquiries may

lend a helping hand to the judiciary which, as Mr. Justice

Frankfurter observed, is most ill-fitted to discharge the

technological duties cast upon it by patent legislation.

Marconi Wireless Co. v. United States, 320 U.S. 1, 60

(1943). They may also serve to ‘guard against slipping

into use of hindsight,’ Monroe Auto Equipment Co. v.

Heckethorn Mfg. & Sup. Co., 332 F.2d 406, 412 (1964),

and to resist the temptation to read into the prior art the

teachings of the invention in issue.” Graham, supra, at 36.

a

quired by Graham.” That precedent was ignored by the

Court of Appeals panel here. In the Ninth Circuit, one

panel has held that Section 103 and Graham made no

change in the role of the pre-1952 inventive novelty tests,”

while another panel emphasized the central role of the

Graham factual inquiry.”

A commentator has observed that “even today, the

meaning of Section 103 is anything but clearly judicially

established, It is safe to say ... that the various circuits

of the United States Courts of Appeal and the Supreme

Court of the United States differ seriously among each

other (as do the three-judge appellate panels within cir-

cuits) with regard to the meaning of ‘nonobviousness.,’ ”*

° Gass v. Montgomery Ward & Co., 387 F.2d 129 (7th

Cir. 1967); cited in Systematic Tool & Machine Co. v.

Walter Kidde &@ Co., Inc., 555 F.2d 342, 348 (3rd Cir.

1977); Compton v. Metal Products, Inc., 453 F.2d 38, 42

(4th Cir. 1971); Rockwell v. Midland-Ross Corp., 438

F.2d 645, 652 (7th Cir. 1971); and Univ. of Illinots

Foundation v. Blonder-Tongue Lab., Inc., 422 F.2d 769,

778 (7th Cir. 1970), vacated on other grounds, 402 U.S.

313 (1971), cert. denied 409 U.S. 1061 (1972); ef. Colowr-

picture Publishers, Inc. v. Mike Roberts Color Produc-

tions, Inc., 394 F.2d 431 (1st Cir. 1968),

" Kegimbal v. Scymansky, 444 F.2d 333, 339 (9th Cir.

1971) ; ef. Deere & Company v. Sperry Rand, 513 F.2d 1131

(9th Cir. 1975).

% Reeves Instrument Corp. v. Beckman Instruments,

Inc., 444 F.2d 263, 271 (9th Cir. 1971), cert. denied, 404

U.S. 951 (1971). See also, Santa Fe-Pomeroy, Inc. v.

P & Z Co., Inc., 569 F.2d 1084 (9th Cir. 1978); Austen v.

Marco Dental Products, Inc., 560 F.2d 966 (9th Cir. 1977),

cert. denied, 98 S.Ct. 1477 (1978); Safe Flight Instru-

ment Corp. v. McDomnell-Douglas Corp., 482 F.2d 1086

(9th Cir. 1973). Another clear example of these two dif-

ferent approaches is the majority and dissenting opinions

in U.S. Philips Corp. v. National Micronetics, Inc., 550

att) (2nd Cir. 1977), cert. dented, 98 S.Ct. 183

( R

* Kayton, Nonobviousness of the Novel Invention—35

U.S.C. $103, published in Coursebook, 1977 Parent Law

ConFERENCE (BN.A. 1978) at 2.102.

vee - nes eee

ox 47

Writing of the current law, Judge Clark’s law clerk in

Graham has said: “In reading the later cases, I lament

along with you the fact that the courts have strayed from

the methodology in the trilogy cases. There has been a

failure to appreciate that methodology. . . . I think it

was the high hope of Graham and its companions that

there would be injected a more easily handled approach

to the thorny and difficult question of patentability, It

appears ... that what has apparently happened is that

the search for mots justes has been revived... .’”*

In recounting the history of the drafting of Section

103, Judge Rich of the Court of Customs and Patent Ap-

peals has said that the key concept behind Section 103

was to get away from the troublesome concept of inven-

tion and to write the law in terms of the requirements for

patentability. ‘‘This,’’ he observed, ‘‘is the simple idea

which many courts and many patent lawyers still have

not taken.’’”® ‘‘The ultimate reason for writing Section

103 into the statutory law was that the requirement for in-

vention was a lead razor which could not take an edge

and could be nothing other than a blunt instrument.’”*

Because this case presents a clear conflict between a

district court that followed the teachings of Graham, and

a Court of Appeals panel that followed the old law of

inventive novelty, it is a good opportunity for this Court

to contribute to a clarification of this central issue.

* Reed, Some Reflections on Graham v. John Deere Co.,

published in Coursebook, 1977 Parent Law ConFrERENCE

(B.N.A. 1978) at 2:301, p. 2:307.

*® Rich, Why and How Section 103 Came To Be, published

in Coursebook, 1977 Patent Law Conrerence (B.N.A.

1978) at 1:209.

*Id. at 1.213.

—

The decision below, which reverses a district court de-

cision faithful to Graham, on the basis of obsolete pre-

1952 law, threatens the stability and uniformity that many

thought the Court had mandated in Graham. The insta-

bility thus engineered will breed litigation, particularly

in the Courts of Appeal. Increased uncertainty about the

validity of particular patents will undermine the impor-

tant public functions of the patent system in encourag-

ing and facilitating technological progress.

CONCLUSION

The Court should grant a writ of certiorari.

Respectfully submitted,

James Van SANTEN

Hitt, Gross, Simpson, Van Santen,

SreapMAN, Cuiara & Simpson

70th Floor Sears Tower

Chicago, Illinois 60606

312/876-0200

Attorneys for Petitioner

Epmunp W. Kitcu

1361 E. 56th Street

Chicago, Illinois 60637

Of Counsel

== 18

APPENDIX A

In THE

Unrtep States Court Or APPEALS

For The Seventh Circuit

No. 77-1308

ScHoi., Inc.,

Plaintiff-A ppellee,

vs.

S. S. Krescz Company,

Defendant-Appellant.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

No. 74-C-2302—Huserr L. Win, Judge.

Arcuep DeceMBEr 2, 1977—Decipep Jury 14, 1978

Before Sprecuer and Tone, Circuit Judges, and Grant,

Senior District Judge.*

Tone, Circuit Judge. The issue in this case is whether

a combination patent on an exercise sandal is invalid for

obviousness under 35 U.S.C. § 103. The District Court,

after a bench trial, held the patent valid and infringed.

We reverse the judgment.

*The Honorable Robert A. Grant, Senior District

Judge of the United States District Court for the North-

ern District of Indiana, is sitting by designation,

Paes ll

Reduced to its essentials, the alleged invention con-

sists of changing the position provided for the big toe in

the sole of the sandal. A prior German patent, known as

the Berkemann patent,’ taught the design of an exercise

sandal that was the same in the following respects to that

of the Bittner, et al., patent? in suit:

(1) a rigid sole block in the shape of the foot,’

(2) with a loose fitting strap fitting across the foot

to hold the sandal on the foot, and

(3) a xvidge on the sole block on which the toes rest.

The Berkemann sandal was sold to the general public at

least as early as 1950, and some 25,000,000 pairs of that

sandal were sold in 50 countries, including the United

States, between 1950 and 1970.‘

The patent in suit merely called for two changes in

the Berkemann design, neither of which was new, viz.,

eliminating the part of the ridge under the big toe and

providing a slight depression under that toe.°

a — Utility Model Patent 1,775,539, granted July

, 1958.

?U.S. Patent No. 3,063,457, filed October 14, 1959, issued

November 13, 1962.

* Although not mentioned in the Berkemann patent, the

sole of the sandal made and sold under that patent was

also contoured to accommodate the shape of the bottom

of the foot.

*The Berkemann patent was not cited to the Patent

Office in the application proceedings leading to the is-

suance of the patent in suit, but the District Court found

that a general description of a sandal of the Berkemann

type was provided and therefore the examiner was not

misled.

* The single claim of the patent is as follows:

A foot exerciser sandal comprising a sole block

of rigid material contoured in keeping with the plantar

surface of a human foot and having a depression

formed therein for receiving the great toe, a trans-

verse elevation on said block positioned to underlie

=

As early as 1938 Dr. Phillip R. Brachman, one of the

medical experts who testified at the trial (who was

originally identified as plaintiff’s expert but who was

called as a witness for the defendant), wrote a book® in

which he discussed the idea of a ridge for the toes and

recommended that the ridge not be extended to the area

under the big toe.” A depression for the big toe anterior

to the ridge is not mentioned in the Berkemann patent,

but such a depression appears in the exemplification of

that patent that is in evidence.

A depression for the big toe in relation to the other

toes and the ball of the foot was taught as anatomically

* (Continued)

the outer four toes on a foot, said elevation termina-

ting inwardly and abruptly adjacent the location of

the great toe, strap means secured to said block in

position to embrace the foot of a user in the region

of the metatarsal arch, said strap means being the

only means for retaining the sandal on the foot of a

user, whereby gripping of said elevation by the outer

four toes maintains the heel portion of the block

adjacent the heel of the foot during walking.

*The date stated in the text appears from Brachman’s

testimony. An extract from a later (1966) edition of the

book, entitled Mechanical Foot Therapy, is in evidence.

‘Dr. Brachman also testified that during the period

prior to the patent in suit he modified the Levy Mould,

used to construct a ridge under the interphalangeal areas

of the toes in custom-made therapeutic appliances, by re-

moving that portion of the mould extending under the

great toe. Dr. Levy’s ideas are stated in Levy, Pod. D.,

An Applicance to Indwce Toe Flexion On Weight Bear-

ing, Pages 24, 26, Journal of National Association of

Chiropodists, Vol. 40, No. 6, June, 1950; Schuster, Pod.

D., Modifications In The Construction Of The Levy Mould,

Page 33, Journal of National Association of Chiropodists,

Vol. 40, No. 6, June, 1950; Levy, Pod. D., Structural

Changes In The Levy Mould, Page 37, Journal of National

— of Chiropodists, Vol. 41, No. 2, February,

_—

correct in the Stroup patent issued in 1951,* which applied

that design to the sole of a shoe. In addition, a 1941 publi-

cation by Musebeck Shoe Company entitled “Your Patient

and His Feet” taught “hollow[ing] out” the insole to fit

the contours of the foot, including “the ball of the great

toe.”

The Bittner patent is thus a combination patent, com-

bining Berkemann with Stroup, Musebeck Shoe Com-

pany, and Brachmann. It amounted to changing the Berke-

mann sandal by honing off the ridge under the big toe

as advocated by Brachmann and providing a slight depres-

sion as taught not only by the production model of the

Berkemann sandal but also by the Stroup patent and the

Musebeck Shoe Company book.

The district judge, although stating that he “had

enough trouble deciding it wasn’t an obvious modifica-

tion of Berkemann,’” made an oral finding that the modi-

fication resulted in “some anatomical, or therapeutic,

orthopedic benefit, improvement.” He later entered written

findings” that the modification was

a novel and useful combination of elements having a

unique interdependent functional relationship, there-

by affording a synergistic result which in and of it

self was non-obvious, namely, the automatic separa-

tion of the great toe from the other four toes, result-

ing in some anatomical advantage and beneficial ortho-

pedic or podiatric effects on the foot as well as pro-

moting increased comfort.

The written findings also stated,

The differences between the prior art and the claim

of the patent reside in the combination of a metatarsal

crest which underlies the four lesser toes, but termin-

*U.S. Patent No. 2,539,557, issued January 30, 1951.

*This statement was made in the course of explaining

why the court did not find wilful infringement.

‘The written findings were submitted by counsel for

the prevailing party and entered following revisions by

the court that are not material here.

=-= $a —

ates short of the great toe, and a depression to re-

ceive the metatarsal head of the great toe, both fea-

tures being provided in a contoured rigid sole block

having a strap means as the sole means of retaining

the sandal on the foot. That combination constitutes

a patentable improvement over the prior art.

In addition the court found that the combination would

not have been obvious to a person having ordinary skill

in the art.”

"The relevant art was found to be “the sandal art,”

which was practiced by “podiatrists and other practitioners

who investigate and treat disorders of the feet,” the req-

uisite level of skill in which “is attained, if not Motes |

by orthopedic and podiatrie surgeon specialists.” The level

of ordinary skill in that art, the court went on to say, “is

surpassed by experts of the extraordinary and superior

skills” exemplified by the experts who testified in the case,

Dr. Brachman, previously mentioned, and Dr. Carroll B.

Larson, an expert called by defendant. In considering

what would have been obvious to physicians of ordinary

skill, it is to be noted that the essential idea of the patent,

eliminating the ridge under the big toe, was recommended

in Dr. Brachman’s book published in 1938 and that Dr.

Larson testified that the release of tension in the big toe

created by allowing the big toe to rest on a flat weight-

bearing surface “has been known for at least fifty yearr ”

As for providing a depression for receiving the big tor,

Stroup had previously taught that such a depression is

anatomically correct, i.e., increases comfort. See text,

supra. In fact, at one point during direct examination,

Dr. Brachman acknowledged that it has been known for

“probably a million years or so” that allowing a depres-

sion for the big toe is anatomically correct. This evidence

undermines Dr. Brachman’s opinion and the District

Court’s finding that the Bittner sandal would not have

been obvious to a person ordinarily skilled in the sandal

art. We add that we do not share Dr. Brachman’s ap-

parent skepticism concerning the size of the readership

of his book on foot therapy, for, in view of his superior

qualifications, as noted by the District Court, it is reason-

able to assume that many physicians of ordinary skill

would have consulted the

—6a— .

Although we base our decision on another ground, we

note that the evidence of the orthopedic usefulness as-

serted in the patent specifications for the Bittner modi-

fication is slight. The modification has little to do with

the ostensible’* function of the patented sandal, which

is to exercise the foot, because the exercise occurs

through the gripping action of the toes to keep the san-

dal from falling off when the wearer is walking, and this

occurs regardless of the position of the toes. The ortho-

pedic effect asserted for the modification in the specifi-

cations is that, by providing “an anatomically correct

positioning of the toes when the sandal is put on,” the

modification “prevent[s] the formation of crooked toes,

and alleviate[s] or counteract[s] conditions such as hallux

valgus.” (Hallux valgus is “angulation of the great toe

away from the midline of the body, or toward the other

toes.” Dorland’s Illustrated Medical Dictionary 642 (24th

ed. 1965).) The District Court’s finding that the modifi-

cation actually produced “some” orthopedic benefit ap-

parently was based on the view that depressing the posi-

tion of the big toe had “some” deterrent effect on its

lateral movement. That effect was described by Dr. Lar-

son, the only expert who testified specifically concerning

the orthopedic benefit to be derived from the modification,

as slight and having a “very small amount” of medical

significance. The record is thus extremely weak on the

issue of whether the alleged invention produces an ortho-

pedic benefit of any consequence, but, even if plaintiff’s

proof on this point had been satisfactory, the patent could

not be sustained for a reason to which we now turn.

Dr. Larson, whom plaintiff characterizes as “one of

the most renowned orthopedic specialists in the United

States,” agreed with the District Court’s statement that

the patented sandal “is really essentially a comfortable

device, and to call it an exercise sandal is gilding the lily

....” He could “see no difference” between the Berkemann

and Bittner sandals “in regard to strengthening of the en-

tire structure of the foot,” prevention of arch sag, re-

lieving stiffened joints, causing calluses to disappear, or

stimulation of circulation of the blood. The Bittner patent

claimed therapeutic benefits in these respects.

am TQ tu

Plaintiff concedes in its brief that “improved comfort

alone would not have been sufficient” to entitle it to pre-

vail on the obviousness issue, which we take to be a con-

cession that honing off the ridge and providing a depres-

sion under the big toe,to make the sandal more comfort-

able was obvious. Even without this concession, we would

have no difficulty in reaching the same conclusion.

The obviousness of the combination of old elements for

the purpose of promoting comfort disposes of the case.

Patentability may not rest upon the discovery of a new

use or a previously unnoticed advantage of an old struc-

tural element. General Electric Co. v. Jewel Incandescent

Lamp Co., 326 U.S. 242, 247-249 (1945); Preuss v. Gen-

eral Electric Co., 392 F.2d 29, 33-34 (2d Cir.), cert. denied,

393 U.S. 834 (1968); Gould-National Batteries, Inc. v.

Gulton Industries, Inc., 361 F.2d 912, 914 (3d Cir. 1965) ;

cf. Research Corp. v. Nasco Industries, Inc., 501 F.2d 358,

360 (7th Cir.), cert. denied, 419 U.S. 1096 (1974). Before

the issuance of the Bittner patent, it would have been ob-

vious to persons of ordinary skill in the sandal art to im-

prove the comfort of an exercise sandal by lowering the

position of the big toe pursuant to the teachings of Stroup

and others. The discovery that the combination also had

some orthopedic benefit would not make patentable that

which was already in the public domain.

We therefore find the patent invalid for obviousness.

REVERSED.

Pee UUEECO COC Ieee)

Clerk of the United States Court of

Appeals for the Seventh Circuit

=

APPENDIX B

District Court, N. D. Ituinots, Eastern Division

SCHOLL, INC.,

vs.

S. S. KRESGE COMPANY,

No. 74 C 2302 — Decided Jan. 20, 1977

Action by Scholl, Inc., against S. S. Kresge Company,

for patent infringement, in which defendant counterclaims

for declaration of patent invalidity and non-infringement.

Judgment for plaintiff.

See also 193 USPQ 705.

James Van Santen, and Hill, Gross, Simpson, Van San-

ten, Steadman, Chiara & Simpson, both of Chicago,

Illinois. for plaintiff.

Richard E, Alexander, Chicago, Illinois for defendant.

Will, District Judge (Orally).

I think I am satisfied that the evidence has demon-

strated, to my satisfaction, that the prior art does not an-

ticipate the Bittner-Gnass design; that that design is use-

ful, it is novel, and it would not have been obvious to one

with ordinary skill at the time they developed their strue-

ture.

Therefore, I conclude that they have a valid patent.

I conclude, second, that the commercial sandal is manu-

factured consistent with the specifications and claims of

that patent.

I conclude, third, that the accused devices are identical,

or substantially identical. They were intended to be

Taiwan copies of the patented sandal, and that therefore,

they infringe. ;

So, I find that the patent is valid and infringed.

— 9a —

Now, that leaves us the question of relief. I don’t find

any extraordinary relief warranted in this case. No ques-

tion that Glory made these. And I think they clearly did

induce infringement in the United States.

They first attempted to sell to Scholl, and then they

subsequently sold to other people, Modern Shoe. So, they

induced infringement in the United States. I don’t have

any difficulty with that.

I do have some difficulty with any concept of willful,

deliberate, knowing infringement by Kresge.

Kresge might reasonably have thought this device—I

had enough trouble deciding it wasn’t an obvious modi-

fication of Berkemann, so if Kresge had been knowledge-

able, which I don’t guess they were, but if they had done

the kind of patent search Mr. Alexander did, and you did

when it came to prepare for the trial of this case, they

may very well have had a reasonable basis for conclud-

ing there wasn’t infringement of a valid patent.

So, I am not going to make any findings of willful in-

fringement. I think it is even less than willful because at

the time I don’t think they knew what the patent situa-

tion was.

I am prepared to let what I have said from the bench

be findings of fact, and I am prepared to enter more ex-

tensive and explicit findings of fact, if you like, and I

would like you to prepare them. Enter judgment order

with each case.

Actually, those findings of fact should all be applicable

to Glory Products. So, if you get my comments on the

Kresge case they will also be relevant to the Glory Pro-

ducts case. To the extent that they are applicable, I think

they will all be applicable.

Glory Products has some additional findings about in-

ducement. Everything else we have defined in Glory Pro-

ducts anyhow. So we have to make the same findings with

respect to validity and infringement and novelty, and

usefulness, obviousness, the whole business,

—10a—

Supplemental Findings of Fact

1, The following findings of fact and conclusions of

law were originally drafted by the prevailing party. How-

ever, the court has edited and revised the counsel-sub-

mitted findings to insure that there is no unnecessary

blurring of focus on critically material facts. F. 8. Serv-

ices, Inc. v. Custom Farm Services, Inc., 471 F.2d 671, 176

USPQ 65 (7th Cir. 1972).

2. These findings of fact result from a careful con-

sideration of all of the evidence and the documentary

and physical exhibits. These findings are also predicated

upon the court’s observation of the witnesses and its eval-

uation of their demeanor, qualifications and credibility.

3. Every finding of fact deemed a conclusion of law

is hereby adopted as a conclusion of law.

4. The subheadings used herein are for convenience

only. Any finding of fact pertinent to any determinations

other than as indicated by the heading under which it

appears is to be deemed adopted as a finding of fact ap-

plicable to such other determination or determinations

as may be appropriate.

The Parties

5. Plaintiff, Scholl, Inc. (hereinafter ‘‘Scholl’’) is a

corporation incorporated under the laws of the State of

New York. Scholl has its principal office and place of busi-

ness at 213 West Schiller Street, Chicago, Illinois 60610,

and is licensed to do business in the State of Illinois. Prior

to June of 1971, it operated under the name of The Scholl

Mfg. Co. Ine. and at that time by way of a restated Cer-

tificate of Incorporation, changed its name to Scholl, Ine.

6. Defendant, S. S. Kresge Company (hereinafter

“Kresge”) is a corporation duly organized and existing

under the laws of the State of Michigan. Kresge has a

place of business at 3100 West Big Bend Road, Troy,

Michigan and is licensed to do business in the State of

Illinois. Kresge has a number of regular and established

places of business in Chicago, Illinois, and the suburbs

—lla —

thereof, including one such place of business at 4 Oak

Brook Center Mall, Oak Brook, Illinois, in this district.

Jurisdiction and Venue

7. This is an action by plaintiff for patent infringement

which arises under the Patent Act of 1952, 5 U.S.C. §1,

et seq. Defendant has counterclaimed under 28 U.S.C.

§2201-02 for a declaration of invalidity and non-infringe-

ment of the patent in suit. Jurisdiction is founded under

28 U.S.C. $1400. Venue and jurisdiction were not con-

tested by either party.

Patent in Suit

8. The patent in suit, the Scholl Patent, is U.S. Patent

No. 3,063,457, issued November 13, 1962, to Ernst Bittner

and Werner Gnass, assignors to Scholl, Inc., formerly

Scholl Mfg. Co., Inc., entitled ‘‘Foot Exerciser Sandals.’’

9. The Scholl patent in suit issued on the basis of

application Serial No. 846,303, filed October 14, 1959 and

claimed priority on the basis of an application No. Sch

23 704/30f Gm. earlier filed in Germany November 26,

1958, the inventors. Messrs. Bittner and Gnass being citi-

zens of Germany.

10. The subject matter of the patent in suit is described

in the introductory portion of the Specification which is

quoted as follows:

“This invention relates to improvements in foot

exerciser sandals, and more particularly to sandals de-

signed to stimulate and exercise the foot while the

user is walking naturally although the invention may

have other uses and purposes as will be apparent to

one skilled in the art.

“More specifically the invention relates to a type

of sandal designed to automatically exercise the foot

when the sandal is worn, and particularly when the

user is walking in a natural manner.”

11. The Specification adequately describes the inven-

tion as well as the manner and process of making and

using it in such full, clear, concise and exact terms as to

enable any person skilled in the art to which it pertains,

or with which it is most nearly connected, to make and

use the invention.

12. The Specification concludes with a single claim

which particularly points out and distinctly claims the

subject matter which is regarded as the invention.

The single claim of the patent reads as follows:

“A foot exerciser sandal comprising a sole block of

rigid material contoured in keeping with the plantar

surface of a human foot and having a depression

formed therein for receiving the great toe, a trans-

verse elevation on said block positioned to underlie

the outer four toes on a foot, said elevation termina-

ing inwardy and abruptly adjacent the location of the

great toe, strap means secured to said block in posi-

tion to embrace the foot of a user in the region of

the metatarsal arch, said strap means being the only

means for retaining the sandal on the foo. of a user,

whereby gripping of said elevation by the outer four

toes maintains the heel portion of the block adjacent

the heel of the foot during walking.”

13. The Scholl Exercise Sandal, as commercially mar-

keted by Scholl and its related companies, embodies the

invention as disclosed and claimed in U.S. Patent No.

3,063,457.

14. The disclosure and claims of the patent application

as originally filed, the file wrapper record of prosecution

before the Patent Office and the disclosure and single

claim of the patent as issued, emphasize that the invention

consists of combining in an exercise sandal having a rigid

sole block contoured in conformity with the sole of the

foot and retained on the foot solely by a strap, a metatar-

sal crest which terminates short of the great toe and a

depression to receive the metatarsal head of the great toe.

Apart from any question of novelty as to these individual

features, their combination in a single exercise sandal

synergistically develops the effect of automatically sepa-

rating the big toe from the other four toes, promoting in-

— 13a —

creased comfort, and affording both some anatomical ad-

vantage and some beneficial orthopedic or podiatric effect

on the foot and therefore constitutes a patentable im-

provement.

Infringement by S. S. Kresge Co.

15. §S. S. Kresge Company first became aware of U.S.

Patent No. 3,063,457 as a result of the filing of the com-

plaint in the subject lawsuit.

16. 8S. S. Kresge Company first sold or distributed the

accused device under the name of ‘‘Olympus Exercise

Sandals’’ approximately March 1, 1974, and has been sell-

ing them since.

17. The defendant, S. S. Kresge Company, first became

aware of the plaintiff’s Scholl Exercise Sandal some time

in 1971 through the following buyers:

Robert Goshorn J. T. Porter

E. H. Larson D. A. Bass

Fred Auert M. J. Ghastin

These individuals obtained such knowledge from disclo-

sures of samples of the Scholl Exercise Sandal to the

buyers by salesmen from Scholl, Inc. Scholl Exercise San-

dals were purchased from Scholl, Inc. for resale by Kresge,

in the period 1971-1974.

18. Defendant, S. S. Kresge Company, did not make

any patent or prior art search or investigation as to the

scope and/or validity of U.S. Patent No. 3,063,457 prior

to this action.

19. The accused Olympus Exercise Sandals are manu-

factured by Glory Products Trading Company, Ltd.

20. Glory Products Trading Company, Ltd. is a manu-

facturer located in Taiwan, Republic of China, and has an

office and place of business at the following address:

303 Room Pai Chou Building

219 Woo-Fu 2nd Road

Kaohsiung Taiwan

Republic of China

—l4a —

21. Modern Shoe Company of St. Louis, Missouri, is a

partnership having a regular and established place of busi-

ness located at 1201 Washington, St. Louis, Missouri

63101.

22. The partners of Modern Shoe Company are

Michael Mathis, Robert J. Gamm and H. A. Waltuch, all

residents of St. Louis, Missouri.

23. The accused Olympus Exercise Sandals are im-

ported by Modern Shoe Company from Glory Products

Trading Company, Ltd. and are shipped from Taiwan to

a Modern Shoe Company warehouse in St. Louis, Mis-

souri, from where they are freighted on order to Defer-

dant, S. S. Kresge Company, which company retails the

accused sandals.

24. Modern Shoe Company has agreed to indemnify

S. S. Kresge Company as follows:

‘Modern Shoe Company recognizes that it is obli-

gated to and will, in fact, indemnify and hold Kresge

harmless in regard to any claims of infringement

made in regard to Patent No. 3,063,457 and further

agrees to reimburse Kresge for any and all attorneys

fees occasioned in the defense of such infringement

charge including that set forth in Civil Action No.

74 C 2302. Modern Shoe Company does not wish to

undertake the defense of Kresge directly in this

matter.’’

25. Modern Shoe Company has replaced defective mer-

chandise at the request of S. S. Kresge Company, which

defective merchandise was returned by Modern Shoe Com-

pany to Glory Products Trading Company, Ltd. in Taiwan.

26. Glory Products Trading Company, Ltd. was aware

of the Plaintiff’s ‘‘Exercise Sandals’’ as a result of its

President, Winston C. E. Chen travelling to Hong Kong

and ‘‘attracted very much by your name ‘Scholl’s Exer-

cise Sandals’, brought home to (Taiwan) complete set, six

pairs for study’’.

27. Modern Shoe Company was aware of the patent in

suit, Patent No. 3,063,457, at least as early as October

i

— 15a —

and November, 1973 at which time counsel for Modern

Shoe Company rendered an opinion as to validity and

infringement.

28. The present action was consolidated for purposes

of trial with Civil Action No. 75 C 622, Scholl, Inc. v. Glory

Products Trading Company, Ltd. and in which Glory is a

named Defendant.

29. In Civil Action No. 75 C 622, Modern Shoe Com-

pany was dismissed on motion for lack of venue.

30. In regard to the accused Olympus Exercise San-

dals forming the basis of the present action:

a) The sandal is a foot exerciser sandal;

b) The sandal has a sole block of rigid material;

c) The sandal is contoured in keeping with the plantar

surface of the human foot;

d) The sandal has a transverse elevation on the sole

block positioned to underlie the outer four toes of

a foot;

e) The transverse elevation terminates inwardly and

abruptly adjacent to the location of the great toe;

f) The sandsai has a depression formed in the sole

block for receiving the great toe;

g) The sandal has strap means secured to a sole block

in position to embrace the foot of a user in the

region of the metatarsal arch;

h) The strap means are the only means for retaining

the sandal on the foot of the user;

i) In general, gripping of the elevation by the outer

four toes maintains the heel portion of the block

adjacent the heel of the foot during walking.

[1] Thus, the accused Olympus Exercise Sandal manufac-

tured by Glory Products Trading Co. Ltd., imported by

Modern Shoe Company, sold by 8S. S. Kresge Company,

provides a full and complete response to each and every

structural and functional requirement of the claim con-

tained in U.S. Patent No. 3,063,457 and the unauthorized

manufacture, use and sale of such sandals is an infringe-

— 16a —

ment of the claim of U.S. Patent No. 3,063,457 within the

meaning of the statute 35 U.S.C. 271.

31. There was no apparent dispute between the parties,

nor did any witness testify that there were any structural

or functional differences between the Scholl sandal as

marketed and the Olympus Exercise Sandal.

Validity and Enforceability

32, The state of the prior art is represented by:

A. The sandal structures described in the patent ap-

plication and in the issued patent, which includes

a prior sandal substantially corresponding to the

so-called Berkemann sandal, and also illustrated

in the German priority document submitted to

the Patent Office as part of the file wrapper.

B. The prior art references cited by the Examiner

of the United States Patent & Trademark Office.

C. The prior art references not cited by the Patent

Office Examiner, but cited and relied upon by the

defendant in these proceedings and during the

course of trial.

D. The prior public uses relied upon by Kresge in

this action.

33. The following references were cited by the United

States Patent and Trademark Office during the course of

prosecution of application Serial No. 846,303, which ma-

tured as 3,063,457:

1,080,305 Scholl Dec, 2, 1913

1,730,466 Mallott Oct. 8, 1929

1,867,679 Riehle July 19, 1932

2,096,500 McCahan et al Oct. 19, 1937

2,167,035 Westheimer July 25, 1939

2,217,990 Nussbaum Oct. 15, 1940

2,518,649 Tydings et al Aug. 15, 1950

2,539,557 Stroup Jan. 30, 1951

2,808,662 Webb Oct. 8, 1957

—_ 1%q—

34. The following prior art references were not cited

during the prosecution of the Scholl patent application in

the United States Patent and Trademark Office and were

relied upon by Defendant to show non-infringement and

invalidity :

Patents

Country Filed Issued

Germany 1,775,539 Berkemann Oct. 9, 1953 July 29

110, t. , , 195

Germany 1,777,252 Sandgrens Sept. 2, 1958 Nov. 6, 1968

U.S. 1,693,398 C, Miller July 27, 1927 Nov. 27, 1928

U.S. 1,850,977 Musebeck Mar. 1, 1930 Mar. 22, 1932

U.S. 2,760,281 Cosin Feb. 17, 1954 Aug. 28, 1956

U.S. 2,381,846 Thomas Apr. 10, 19438 Aug. 7, 1941

Publications

Your Patient and His Feet—Musebeck Shoe Company,

1941, Pages 31-32 of Catalogue illustrating various

types of Berkemann prior art sandals.

Ben Levy, Pod. D., An Appliance To Induce Toe

aye 5: Rags: Bearing, Pages 24, 26, The Jour-

nal of the National Association of Chiropodists, Vol.

40, No. 6, June, 1950. mee.

Richard 0. Schuster, Pod. D., Modifications In The

wep be sag Of The Levy Mould, Page 33. The Jour-

nal of the National Association of Chiropodists, Vol.

40, No. 6, June, 1950, : Te As

Ben Levy, Pod. D., Structural Changes In The Levy

Mould, Page 37. The Journal of the National Associ-

ation of Chiropodists, Vol. 41, No. 2, February, 1951.

35. The Defendant also relied on the prior art practices

of Dr. Phillip Brachman, originally identified as Plaintiff ’s

expert, but called during the trial as a witness for the De-

fendant, in modifying the so-called Levy crest or Levy

Mould, by removing that portion of the Levy crest or Levy

Mould extending under the great toe. Such practices oc-

curred prior to the Bittner and Gnass invention, but in-

volved custom molded therapeutic appliances in shoes and

such teachings were never applied by Dr. Brachman to

exercise sandals. 4

—~ 18a —

36. The following prior art was cited during the course

of prosecution of counterpart applications resulting in

foreign patents of Scholl, Inc. (or its subsidiaries) corre-

sponding to the U.S. Patent in suit.

German Patent No.:

1,168,291

References Cited:

German Patent

675,858

German Gebrauschmuster

1,775,539

1,777,252

United States Patents

1,310,358

2,759,284

2,760,281

1,943,829

2,734,285

Danish Patent No.:

96,730

References Cited:

German Patents

674,569

762,446

Norwegian Patent No.:

100,282

References Cited:

United States Patent

2,760,281

Swedish Patent No.:

198,690

References Cited:

Swedish Patent

113,776

Swiss Patent

200,047

— 19a —

Austrian Patent No.:

233,437

References Cited:

German Patent

675,858

United States Patents

2,530,737

2,217,990

786,194

87. While the application as originally filed did not

make specific reference to the German ‘‘Berkemann’’ pat-

ent which defendant alleges to be the most relevant prior

art, neither the applicants nor their counsel misled the

Examiner of the United States Patent and Trademark

Office as to the status of the prior patented art or as to

the inventive concept forming the basis of the disclosure

and claim.

88. No fraud or deception or other unlawful or inequi-

table conduct was practiced or intended by the applicants

for the Scholl patent or their attorneys, in connection with

the application therefor or its prosecution before the

United States Patent and Trademark Office.

39. The German Patent application of Bittner and

Gnass was placed in the file of the U.S. Patent and Trade-

mark Office and receipt thereof was formally acknowledged

by the Patent Office Examiner in the file wrapper. The

drawings of that German application contain Figure 1 to

show the Berkemann prior art sandal,

40. Without specifically naming ‘‘Berkemann,’’ the ap-

plication as originally filed gave, and the patent as issued

gives, a general description of the art and a description

of the Berkemann prior art sandal (Appln. file wrapper,

Def’s. Ex. 13(a), p. 2; U.S, Patent No, 3,063,457; Plitff’s.

Ex. 1, Column 1, lines 34-38) as stated by the Court (Trial

Transcript pp. 163-64) :

‘The Court: Look at the last paragraph on that page.

‘* ‘Exercising Sandals of the type of the instant in-

vention are provided with a generally transverse

ae

bulge or elevation in the forward portion thereof

which is successively gripped and released by the toes

during walking.’

‘‘That is a general description of this kind of exer-

cise sandal.

‘¢¢Tn prior construction this transverse elevation

extended across the entire width of the sole block of

the sandal. Such construction automatically gave the

great toe of the foot a wrong position anatomatically

which frequently aided the formation of crooked toes

or aggravated the condition of hallux valgus rather

than alleviate or prevent such disorder. Prior known

forms of exercising sandals are also objectionable in

that they were not desirably comfortable, not as dura-

ble as wanted, were frequently, objectionably heavy,

and did not provide proper toe-spreading when

needed,’ _

‘‘That’s got to be about as specific a description of

Berkemann without saying Berkemann as you can

get.’?

41. The best prior art, according to the defendant’s

expert witness, Charles 0. Pigott, Jr., was Berkemann

modified in view of the Stroup Patent, U.S. No, 539,557,

also a file wrapper reference cited by the Examiner during

the course of prosecution. (TT 187).

42. Mr, Pigott admitted that ‘‘Stroup by itself would

certainly not anticipate the invention’’ and ‘‘would have

relevance only when combined with something like Berke-

mann’’ (TT 189), a proposed combination which is not

taught by Stroup (TT 190).

43, The prior art references not cited during the prose-

eution of the Scholl patent in the United States Patent

Office and relied on by the defendant in support of its al-

legation of invalidity are not significantly better than

those references which were either cited by the United

States Patent Office during the course of the prosecution

of the patent application, or were before the Examiner as

a part of the contents of the file wrapper, to-wit, the de-

scription of the Berkemann sandal in the Specification and

—_

-— 2la—

the illustration of the Berkemann sandal in the drawings

of the German priority document.

44. The prior art cited by the United States Patent

Office as well as the prior art cited by the defendant,

whether such prior art is considered singly or in combi-

nation with one another, does not anticipate the invention

as disclosed and claimed.

45. Although individual features and elements occur in

various showings of prior art footwear, the Scholl Exer-

cise Sandal has been shown to be a novel and useful com-

bination of elements having a unique interdependent func-

tional relationship, thereby affording a synergistic result

which in and of itself was non-obvious, namely, the auto-

matic separation of the great toe from the other four toes,

resulting in some anatomical advantage and_ beneficial

orthopedic or podiatrie effects on the foot as well as pro-

moting increased comfort.

46. The differences between the prior art and the claim

of the patent reside in the combination ‘of a metatarsal

crest which underlies the four lesser toes, but terminates

short of the great toe, and a depression to receive the

metatarsal head of the great toe, both features being pro-

vided in a contoured rigid sole block having a strap means

as the sole means of retaining the sandal on the foot. That

combination constitutes a patentable improvement over

the prior art.

47. The differences between the subject matter as dis-

closed and claimed in the patent in suit and the prior art

are such that the subject matter as a whole would not have

been obvious at the time the invention was made to a per-

son having ordinary skill in the art to which such subject .

matter pertains,

[2] 48. The level of skill pertinent to an interpreta

tion of Section 103 is the level of skill of a person having

ordinary skill in the art and who is practicing the art to

which the patented subject matter pertains at the crucial

time of the invention,

— 22a —

[3] 49. Im the sandal art to which the sandal of the

patent in suit relates, a general knowledge of the human

foot, which may be acquired through experience by people

manufacturing foot appliances to relieve and correct, afflic-

tions of the foot and types of footwear beneficial the

foot including the value of properly exercising the foot, is

the generally required level of skill. The requisite level

of skill is attained by podiatrists and other practitioners

who investigate and treat disorders of the feet and is at-

tained, if not surpassed, by orthopedic and podiatric sur-

geon specialists.

50. The level of ordinary skill in the exercise sandal

art is surpassed by experts of the extraordinary and su-

perior skills exemplified by the medical experts presented

by the parties to assist the court, to-wit, Dr. Carroll B.

Larson, a renowned orthopedic expert, and Dr. Phillip

Brachman, a similarly renowned podiatrist. Significantly,

both experts recognized that the patented Scholl Exercise

Sandal embodies structural differences over other prior

art exercise sandals including Berkemann with which they

were familiar, which structural differences provide a high

level of comfort and some anatomical advantage and some

beneficial orthopedic or podiatric effect. Dr. Brachman,

who was called by defendant, stated that in his opinion

the difference between Berkemann and the patent in suit

and the advantages of the latter would not be obvious to

one of ordinary skill in the art of footwear manufacture

nor even to orthopedic surgeons or podiatrists unless they

were familiar with the special research which he had done

on the functioning of the human foot.

51. There are no file wrapper estoppels which preclude

reading the requirements of the patent claim on the struc-

ture and function of the accused Olympus Exercise Sandal,

or which preclude the conclusion that the Scholl Exercise

Sandal follows the patent.

52. From the beginning of prosecution to fina] allow-

ance, the Examiner repeatedly urged the applicants to

reduce the number of claims and finally specified (File

Wrapper, p. 60) that one or two claims would be reason-

able to define the invention. There is nothing in the file

— Ba—

wrapper to indicate that the Examiner ever concluded that

the basic combination as ultimately claimed was not a pat-

entable combination.

53. The notiee of appeal filed after an interview was

apparently a formality only, merely as a safeguard for

meeting a statutory due date prior to formal allowance of

the application by the Examiner.

Sales Volume of the Scholl Exercise Sandal

54. Scholl Exercise Sandals manufactured and sold by

Scholl embody the invention as disclosed and claimed in

U.S. Patent 3,063,457.

55. From 1968 through June 1976 the plaintiff sold

and distributed 9,056,000 pairs of such Scholl ‘‘Exercise

Sandals’’ in the United States.

56. In other parts of the word, Scholl Exercise Sandals

manufactured in accordance with the patent in suit have

been sold in the following quantities:

Sales of Scholl Exercise

Sandals in Units (pairs)

Country from 1964-June 1976

United Kingdom 11,783,300

Australia 1,579,000

Austria 5,754,000

Belgium 279,000

Denmark 179,800

Finland 342,000

France 2,505,000

Germany 3,539,000

Ireland 350,300

Italy 2,698,000

New Zealand 139,000

Norway 58,900

South Africa 291,000

Spain 266,000

Sweden 928,000

Switzerland 1,587,000

SUB-TOTAL 32,279,300

— fe

From 1969 through June 1976

Canada 13,280,000

From 1974 through June 1976

Argentina 24,000

Mexico 20,000

Venezuela 140,000

SUB-TOTAL 45,743,300

From 1968 through June 1976

United States 9,056,000

GRAND TOTAL 54,799,300

Conclusion of Law

1. The Court has jurisdiction of the parties and the

subject matter under 35 U.S.C. §1 et seq.; 28 U.S.C. 1338

and 28 U.S.C. §§2201-02 and venue is proper undur 28

U.S.C. 1400.

I nfringement

[4] 2. As applied to a patent, infringement is the un-

authorized making, using or selling for use or for profit

of an invention covered by a valid claim of a patent dur-

ing the life of the patent. 35 U.S.C. $271; Unit Construc-

tion Co. v. Hershey Mfg. Co., D.C. Pa., 241 F. 129 (1917);

69 CJS Patents 282.

3. The infringement of a patent may consist of any one,

two or all three of the acts of making, using or selling the

patented invention without the authority of the patent

owner. 69 CJS Patents 286; Schiff v. Hammond Clock

Co., 69 F.2d 742, 21 USPQ 308 (7th Cir. 1934).

[5] 4. In determining whether an accused device or

composition infringes a valid patent, resort must be had

in the first instance to the words of the claim. If accused

matter falls clearly within the claim, infringement is made

out and that is the end of it. Graver Tank Mfg. Co., Ine.

vy. Linde Co., 339 U.S. 605, 607, 585 USPQ 328, 330 (1949).

ii:

[6] 5. In determining infringement, the accused struc-

ture is to be compared to the language of the claim of the

patent and not with any particular embodiment or with the

patentee’s commercial structure. S. 8. Kresge Co, v.

Davies, 112 F.2d 708, 46 US.PQ 116 (8th Cir. 1940);

CTS Corp. v. Piher International Corp., 188 USPQ 419,

423 (7th Cir. 1975), cert. denied, 189 USPQ 384 (1976).

[7] 6. A patent may be infringed where the essential

or substantial features of the patented invention are taken

or appropriated, or the device alleged to infringe is sub-

stantially identical with the patented invention, even

though there are some differences in form or variations

in form or variations in detail, as mere colorable depar-

tures do not avoid infringement.

{8] 7. While the claims of a patent limit the invention,

and specifications cannot be utilized to expand the patent

monopoly, Burns v. Meyer, 100 U.S. 671, 672 (1880);

McCarty v. Lehigh Valley RR., 160 U.S. 110,116 (1895),

it is fundamental that claims are to be construed in the

light of the specifications and both are to be read with a

view to ascertaining the invention. Seymour v. Osborne,

11 Wall. 516, 547 (1871); Schriber-Schroth Co. v. Cleve-

land Trust Co., 311 U.S. 211, 47 USPQ 345 (1940); Scher-

ing Corp. v. Gilbert, 153 F.2d 428, 68 USPQ 84 (1946); .

United States v. Adams, 383 U.S. 39, 49, 148 USPQ 479,

482-483 (1965).

8. The manufacture, use and sale of the Olympus Ex-

ercise Sandal manufactured by Glory Products Trading

Co., imported by Modern Shoe Company and sold by S. S.

Kresge Company is an infringement of the claim of U.S.

Patent No. 3,063,457 and the invention defined thereby.

Validity

[9] 9. As in every patent chse, there is here a pre-

sumption that the patent in suit is valid. The burden of

establishing invalidity rests on the defendant. 35 U.S.C.A.

§282. Helms Products v, Lake Shore Mfg. Co, 227 F.2d

677, 680, 107 USPQ 313, 314-315 (7th Cir. 1955); Copease

Mfg. Co. v. American Photocopy Equipment Co., 298 F.2d

772, 777, 182 USPQ 87, 91-92 (7th Cir. 1961).

—_

[10] 10. The 1952 Patent Act, 35 U.S.C. §§1-293, sets

out the conditions of patentability in three sections indi-

cating that patentability is dependent upon three explicit

conditions: novelty and utility as articulated and defined

in section 101 and section 102, and non-obviousness, the

statutory formulation as set out in section 103, Graham v.

John Deere Co., 383 U.S. 1, 12, 148 USPQ 459, 464-465

(1965).

[11] 11. Under section 103, the scope and content of

the prior art are to be determined; differences between the

prior art and the claims at issue are to be ascertained;

and the level of ordinary skill in the pertinent art resolved.

Against this background, the obviousness or non-obvious-

ness of the subject matter is determined. Graham v. John

Deere, 383 U.S. 1, 17, 148 USPQ 459, 466-467 (1965).

[12] 12. Secondary considerations such as commercial

success, long-felt but unsolved needs, failure of others,

etc., may be utilized to give light to the circumstances sur-

rounding the origin of the subject matter sought to be

patented. As indicia of obviousness or non-obviousness,

these inquiries may have relevance. Graham v. John Deere

Co., 383 U.S. 1, 17, 18, 148 USPQ 459, 466-467 (1965).

[13] 13. To be patentable, a combination of elements

must produce something more than the sum of the pre-

existing elements; there must be a synergistic result that

is itself non-obvious. Anderson’s Black Rock, Inc. v. Pave-

ment Salvage Co., Inc., 396 U.S. 57, 61, 163 USPQ 673,

674-675 (1969); Sakraida v. Ag Pro Inc., 425 U.S, 273,

282, 189 USPQ 449, 452-453 (1976).

[14] 14. A novel combination of old elements which so

cooperate as to produce a new and useful result or a sub-

stantial increase in efficiency is patentable. Lewyt Corpo-

ration v. Health-Mor, Inc., 181 F.2d 855, 857, 85 USPQ

335, 336-340 (7th Cir. 1950); Helms Products v. Lake

Shore Mfg. Co., supra at 681, 107 USPQ at 315-316; Wel-

ler Mfg. Co. v. Wen Products, Ine., 231 F.2d 795, 798, 109

USPQ 73, 74-75 (7th Cir. 1956); Mojonnier Dawson Co.

v. United States Dairy Sales Corp., 251 F.2d 345, 116

— 27a—

USPQ 106 (7th Cir. 1958); Copease Mfg. Co. v. American

Photocopy Equipment Co., supra.

[15] 15. Since the ‘‘level of ordinary skill’’ in a par-

ticular art has not usually been defined in writing, the

usual way of determining such level is by referring to the

subjective reaction of a person thoroughly familiar with

the particular art and, if possible, one who practiced the

art at the crucial time in question. Malsbary Mfg. Co. v.

Ald, Ine., 171 USPQ 7 (7th Cir. 1971).

[16] 16. Not a single person having ordinary skill in

the art testified that the Scholl patented invention was

obvious at the time it was invented in 1958. In this regard,

the defendant presented testimony by a patent lawyer,

who admittedly was not an expert in the art of designing

and manufacturing footwear at the time of the invention,

that the invention was obvious in light of prior art which

was before the Patent Office. The Court of Appeals for the

Seventh Circuit has noted its reluctance to rely solely on

the testimony provided by a patent lawyer who was not

an expert. National Dairy Products Corp. v. Borden Co.,

394 F.2d 887, 890, 157 USPQ 227, 229-230 (7th Cir. 1968).

The conclusion of defendant’s witness is entitled to little

or no weight, CTS Corp. v. Piher International Corp., 184

USPQ 399, 402 (D.C. Ill. 1974), affirmed. 188 USPQ 419

(7th Cir. 1976), cert. denied, 189 USPQ 384 (1976), par-

ticularly in light of the testimony of Dr. Brachman re-

flected in Finding of Fact Number 50.

17. The combination defined in claim 1 of U.S. Patent

No. 3,063,457 and embodied in the Scholl Exercise Sandal,

produces a new and useful result, to-wit, an anatomical

advantage, greatly increased comfort and some beneficial

orthopedic or podiatric effect on the foot, that itself was

not obvious. Anderson’s Black Rock, Inc. v. Pavement Sal-

vage Co., Inc., 396 U.S. 57, 61, 163 USPQ 673, 674-675

(1969); Sakraida v. Ag Pro Inc., 425 U.S. 273, 282, 189

USPQ 449, 452-453,

18. Tht invention embodied in the Bittner and Gnass

patent in suit is a new combination of old elements which

a nen

produced a new and improved result and which was not

obvious to one having ordinary skill in the art.

[17] 19. The conclusion of non-obviousness is but-

tressed by the evidence relative to the secondary tests to

be considered as set forth in Graham v. John Deere Co.,

383 U.S. 1, 148 USPQ 459, and repeated in Trio Process

Corp. v. L. Goldstein Sons Inc., 461 F.2d 66, 174 USPQ

129 (3rd Cir. 1972), cert. denied, 409 U.S. 997, 175 USPQ

577 (1972). These tests include commercial success, filling

a long-felt need, failure of others to develop the invention

and copying by others.

20. U.S. Patent No. 3,063,457 is valid and the claim

thereof is infringed. The plaintiff, Scholl, Inc., is entitled

to judgment including an injunction under 35 U.S.C. $283

and to damages under 35 U.S.C. $284 and to an award of

costs.

21. Every conclusion of Jaw which is deemed a finding

of fact is hereby adopted as a finding of fact.

—

APPENDIX ©

351 The Court: So that I am satisfied, again, as I

said, that there is a difference and it is a significant

difference, that there is in fact invention, or there is in

fact novelty, and usefulness, and significant novelty and

significant usefulness.

Now, whether or not there is invention depends on

obviousness. So far, I guess I really have Dr. Brachman’s

testimony that it was obvious but he wouldn’t think it

would be obvious to a person skilled in the art because

the function, the working of the foot is not that well

understood, so that Mr. Berkemann should have known

better than to put that ridge under the big toe when he

designed the Berkemann sandal, and it wouldn’t have been

obvious to Messrs. Bittner and Gnass if they were just

ordinarily skilled in the art, or steeped in the traditional

concepts of how the foot works, and the big toe comes

down last, and so forth.

Mr. Van Santen: There is one other interesting case

you may want to refer to, your Honor, and that is

352 Court of Customs and Patent Appeal case in re: Earl

Steinmeyer. It is reported at 41 USPQ 24.

In that case it was a question of putting on a lightning

arrester.

The Court: What year, Mr. Van Santen?

Mr. Van Santen: 1939. It was a question of putting

a glass in a lightning arrester so you could see when the

thing had failed, and the question was directly to obvious-

ness because the argument was that the use of glass should

have been obvious because everyone knew that you could

use glass to see through.

The Judge that wrote the decision here for the CCPA,

said, “A part of the inventive concept was the idea of

rendering visible at a distance, the operative condition of

a lightning arrester, and when a glass housing was utilized

for that purpose the invention became complete and it

— 30a —

is immaterial that the use of glass to complete the inven-

tion would be obvious to one who had formed the original

concept.”

So, I suggest the analogy there is, you know the original

concept of having a toe come down, but it still took some-

body to invent the sandal.

The Court: No, you see the difficulty and the difference

between that and this is that in that, the original con-

cept is to devise something which you can see whether or

not it is functional.

353 That is, you know, now you are talking about a

different kind of lightning arrester. I take it that all

the old lightning arresters you couldn’t see whether or

not it had been shorted out, or whatever it was that hap-

pened to a lightning arrester when it malfunctions.

So, what you are trying to figure out is how do you

devise a lightning arrester which by visual examination

you can ascertain is, in fact, in operating condition. So,

once having decided you wanted to do that, which is the

invention, you figure out the way to do it is with glass be-

cause you can see through glass.

That is not what we are talking about. We are not talk-

ing about how do you figure out how you can make a com-

fortable sandal in which the big toe is depressed, and

therefore, you make one where the big toe is depressed.

That is not it.

We are talking about what do you do with the Berke-

mann design if you had it in front of you which I have to

assume Bittner and Gnass had, because they were in Ger-

many and this was a German sandal which was a German

sandal which was being sold in substantial quantities, and

they look at it and say well, this is a pretty good sandal,

but what do we do to improve it, and they come up with

this, which as Dr. Brachman says, is anatomically cor-

rect.

But, I don’t think that means, as Mr. Alexander

354 suggests, they just accidentally happened on an ana-

tomically correct sandal when they set out to improve

Berkemann.

I think it is a very close question whether it is obvious.

I really do. I really do, whether it would have been obvious

— an

or not, because while Dr. Brachman said it wouldn’t have

been obvious if you didn’t know as much as he knows about

how the foot works, he also says that as a matter of fact,

however you think the foot works you ought to end up

with a depression for the big toe because the big toe ends

up normally in a position, or should end up normally in

a position which is iower on the underside than the other

four toes.

If you walk in the sand your big toe will make a deeper

hole than the other four toes. They are level across the

top, but the big toe, because it is thicker, makes a deeper

indentation in the sand than the other four toes do.

If you know that, you ought to make the sandal in which

the big toe has a depression in which to rest without re-

gard to whether or not you think it goes down first or you

think it goes down last, or they all go down together.

If you want to make one that contours to the foot and

the big toe in its normal weight bearing position, in a soft

surface it will be lower. If you just had somebody stand

in the sand and you say, I want to make a sandal that

conforms to the contour of the foot in a weight bearing

position, you will make a sandal with a depression for the

big toe deeper than the level of the surface for the

355 other four toes.

Mr. Van Santen: I don’t think that is exactly the

way you proceed because people don’t live in the sand.

We live on hard surfaces.

The Court: But isn’t the objective, isn’t it desirable

to attempt to design footwear so that it permits the foot

to function in as normal a fashion as possible, and isn’t

the most normal fashion the way you would walk on soft

surfaces rather than hard surfaces?

Am I wrong about that, Dr. Brachman?

Mr. Van Santen: I think Dr. Brachman should answer

rather than me. Doctor, did you hear the question?

Dr. Brachman: There is a great deal of difference be-

tween walking on hard surfaces and soft surfaces.

The Court: I know that.

Dr. Brachman: We don’t walk on soft surfaces.

The Court: But if you can design footwear so as to

have the foot assume the weight bearing position which

— 39a —

it would have on a soft surface, isn’t that better than

having it flattened out where it is in a, what you might

say, distorted position by virtue of the hardness of the

surface? Am I wrong about that?

Dr. Brachman: No, I think there is some misconception

there, your Honor.

The Court: Go ahead. Straighten me out.

356 Mr. Van Santen: Do you want him to come up a

little closer?

The Court: What is my misconception?

Dr. Brachman: Because we walk on hard surfaces, we

must design footwear that will be normal for the foot on

hard surfaces, and we can’t even think about the fact that

we at times used to walk on soft surfaces; therefore, we

must design the type of footwear where the toe, where

the foot will function and it will bring about the same

amount of pressure, but what will happen to it when it

hits the hard surface, this is what we have to think about.

The Court: I understand that, but you said this design

was anatomically sound.

Dr. Brachman: Correct.

The Court: Among the reasons being there is a depres-

sion for the big toe which permits it to get a lower level

on the bottomside than the other four toes.

Dr. Brachman: It needs that to function normally.

The Court: That is what would happen if you step in

the sand. Your big toe would be at the same plane on the

top surface, and would be on a lower plane on the bottom

surface because it is thicker. Isn’t that right? |

Dr. Brachman: Your Honor, I really can’t answer that

because I have studied walking in sand in Southern Por-

tugal, the clam diggers, and I have taken pictures of

them, and actually, there was no difference between

357 the amount of digging they did in the sand with their

lesser toes than the big toe.

The sand is soft. You just went all the way down.

The Court: I am not talking about digging. I am talk-

ing about just standing in a weight bearing position.

Dr. Brachman: Then there wouldn’t be much weight on

the big toe at all if you are just standing.

The Court: There wouldn’t be?

—

Dr. Brachman: No, mostly on the heel and metatarsal

head. It would not be on the toes.

The Court: And the big toe wouldn’t make a deeper

depression than the other four toes?

Dr. Brachman: No, sir.

The Court: I am going to check this the next time I am

on the sand, which won’t be soon.

Dr. Brachman: You will find it true though.

The Court: If you were to ask me my recollection, my

recollection is that having looked at my footprint in the

sand from standing, that the big toe did in fact make a

deeper depression than the other four toes.

Dr. Brachman: You can have your big toe do it if you

work your big toe down.

The Court: No, I am talking about normal standing.

Dr. Brachman: No. Normal standing it would be dis-

tributed fairly evenly along the whole foot. We are talk-

ing now on a takeoff which is different than normal.

358 The Court: What you are really telling me, this is

anatomically more correct not for the simple stand-

ing position, but walking.

Dr. Brachman: Function, walking. I am not interested

in standing anyhow. I am not, personally, because that is

static. I am interested in the dynamic function of the foot.

The Court: As an exerciser.

Dr. Brachman: That’s right. Dynamics.

The Court: You aren’t going to get any exercise stand-

ing still. I recognize that.

You are satisfied, that given the average designer’s

knowledge of how the foot works, it wouldn’t have been

obvious to take that Berkemann patent and design the

Scholl patent?

Dr. Brachman: That is my interpretation.

The Court: Okay. You have looked at them both, I

take it? )

Dr. Brachman: Yes, I have. In fact, I have put them on,

too. I have tried them. I tried to do some functioning with

them, not a great deal, but to some extent.

The Court: I am persuaded that this one is better than

the Berkemann in terms of comfort, and some anatomical,

or therapeutic, orthopedic benefit, improvement.

— 34a —

I take it you agree with that too?

859 Dr. Brachman: Oh, yes.

The Court: Okay, Mr. Alexander, I am disposed

to conclude this wasn’t an obvious improvement. In fact,

this is novel, useful, and non-obvious, and that therefore,

it is a valid patent.

I am disposed to conclude that the device is manu-

factured consistent with the specifications and claims of

the patent, and that your client’s product infringes.

Unless you see some real purpose to be served in filing

post trial briefs, I am prepared to decide the case on the

basis of the record and my conclusions, as just expressed.

Mr. Alexander: Your Honor, could I ask the witness

about two questions?

The Court: You certainly may because I am most in-

terested in getting at the ultimate proof, and I think the

most difficult question is the question of obviousness, as

I have indicated several times.

Mr. Alexander: Dr. Brachman, I believe in your par-

ticular, well, I am going to take off where you left off.

The Court: Go ahead.

Mr. Alexander: Because I think this is important, the

whole thing.

Has it been known for a long time this idea of keeping

the big toe effectively lower than the other toes?

860 Dr. Brachman: I didn’t hear the first few words.

The Court: Has it been known for a long time

that it was desirable to keep the big toe effectively lower

than the other four toes?

Dr. Brachman: I don’t think that that is a very

knowledgeable, obvious conclusion for the members of

my profession. That is the way I can answer that.

The Court: I gather that, in fact, neither shoes nor

sandals have historically been manufactured with that

feature, right, with the big toe lower than the other

four?

Dr. Brachman: No, they haven’t.

The Court: In fact, I bought a pair of shoes. I made

my own hole for the big toe in every pair of shoes I

bought. I looked at my own shoes, and by God, there

was a hole there.

—_— ae

I can remember I sold Nettleton Shoes when I was at

the University of Chicago, and their proud boast was

that they were flat on the bottom rather than curved or

concave, as a lot of, what we said cheaper made shoes

were,

It took special manufacturing skill, and we used to

put a pencil across the bottom to show how flat they

were, and we operated on the assumption that that was

a mark of quality to have a shoe with a flat sole, and

Nettleton’s, for years, prided themselves on the fact

that they had flat soles, flat inserts, and flat outer soles,

bottom soles.

So, I think you are right that at least in the

361 Thirties it was not known that it was desirable to

have a contoured insole, or contoured sole, although

I can remember sole inserts which were contoured ‘so that

there was a depression for the big toe.

Dr. Brachman: And yet, there are some manufacturers,

your Honor, that put in a filler between the insole and the —

outer sole that had some flexibility so the foot could

become depressed where it wanted to be depressed for

normal function.

The Court: Yes, Massagic.

Dr. Brachman: Massagic was one of them, right.

Mr. Alexander: Your Honor, I have no more of the

witness and we would prefer your ruling from the bench.

That would be fine.

The Court: I think I am satisfied that the evidence

has demonstrated, to my satisfaction, that the prior art

does not anticipate the Bittner-Gnass design; that that

design is useful it is novel, and it would not have been

obvious to one with ordinary skill at the time they

developed their structure.

Therefore, I conclude that they have a valid patent.

I conclude, second, that the commercial sandal is manu-

factured consistent with the specifications and claims of

that patent.

I conclude, third, that the accused devices are identical,

or substantially identical. They were intended to be

Taiwan copies of the patented sandal, and that

362 therefore, they infringe.

— 3a—

So, I find that the patent is valid and infringed.

Now, that leaves us the question of relief.

Mr. Van Santen: Also, your Honor, we need some

sort of reaction of the Court in terms of Glory Products

Trading Company because I think it is active induce-

ment of infringement.

The Court: I don’t find any extraordinary relief war-

ranted in this case.

Mr. Van Santen: No, it is not extraordinary. It 1s

just 271(b) instead of 271(a).

The Court: No question that Glory made these.

Mr. Van Santen: And they induced infringement in

the United States by making them and selling them.

The Court: And I think they clearly did induce in-

fringement in the United States.

They first attempted to sell to Scholl, and then they

subsequently sold to other people, Modern Shoe. So, they

induced infringement in the United States. I don’t have

any difficulty with that.

I do have some difficulty with any concept of willful,

deliberate, knowing infringement by Kresge.

Kresge might reasonably have thought this device—

I had enough trouble deciding it wasn’t and obvious

modification of Berkemann, so if Kresge had been knowl-

edgeable, which I don’t guess they were, but if they had

done the kind of patent search Mr. Alexander did,

363 and you did when it came to prepare for the trial

of this case, they may very well have had a reasonable

basis for concluding there wasn’t infringement of a valid

patent.

So, I am not going to make any findings of willful.

I think it is even less than willful because at the time I

don’t think they knew what the patent situation was.

I don’t even see a patent marking on this sandal, as a

matter of fact.

Mr. Van Santen: I don’t believe we marked the

patent number on the sandal.

The Court: I don’t see any patent marking on the

sandal at all.

Mr. Van Santen: Mr. Eiseman says it is on the box.

— 37a —

The Court: I assume it probably was. I have seen

these sold without boxes, however, I must say and there

is no patent marking on the sandal.

Mr. Van Santen: That hasn’t been an issue in this

case.

The Court: I understand, but when you are talking

about willful, then it gets to be an issue. If the sandal

is marked, anybody looking at the sandal will know it is

patented. On the other hand, Kresge was a customer and

should have had some knowledge whether Scholl was at

least claiming patent. But, I don’t think it adds up

364 to willful in any event.

Now, do you want to prepare some written find-

ings based on the oral findings I have made, or just

let the record stand on the basis of what I have found?

Mr. Van Santen: No, I think with your Honor’s in-

dulgence, I think it might be desirable from our stand-

point, to possibly prepare some additional findings in light

of your conclusions.

The Court: Some preliminary findings?

Mr. Van Santen: I want to make sure everythiug con-

forms with the requirements of Graham v. Deere.

The Court: I do too. I have no desire to be told that

I decided the case on the wrong grounds, because I am

satisfied.

Mr. Van Santen: What I propose is, I prepare such

findings and submit them to Mr. Alexander for his ap-

proval as to form.

The Court: Okay, and get me a judgment order too.

Mr. Van Santen: Yes.

The Court: What are we going to do about relief?

Mr. Van Santen: I suppose that will require an

accounting.

The Court: I guess it will require something.

Mr. Alexander: Well, your Honor, there will be an

appeal of this case first, of course.

The Court: Maybe I should write a long opinion so

the Court of Appeals understands it.

365 The only time I have been reversed in a patent

case in 15 years, is when I just made finding of fact

and conclusions of law and they never did understand

why I decided the way I did.

— 39a —

They were really very explicit findings of fact and

conclusions of law, but either they didn’t read them, and

they don’t read as easily as a narrative opinion reads,

number one, and number two, number three—16 find-

ings of fact.

Mr. Van Santen: Could the comments from the bench

be—

The Court: I think they should be. They really

amount to my opinion, and therefore, I don’t feel such a

great urge to write an opinion in this case, but I do have

to make findings of fact.

I am prepared to let what I have said from the bench

be findings of fact, and I am prepared to enter more

extensive and explicit findings of fact, if you like, and

I would like you to prepare them. Enter judgment or-

der with each case.

Mr. Van Santen: Mr. Alexander doesn’t represent

Glory Products, so I will have to assume that is my

responsibility.

The Court: Yes, but I am talking about the Kresge

case.

Actually, those findings of fact should all be applicable

to Glory Products, but there will be some additional

findings of fact as to Glory Products. So, if you get

his comments on the Kresge case they will also be rele-

vant to the Glory Products case. To the extent that they

are applicable, I think they will all be applicable.

366 Glory Products has some additional findings about

inducement. Everything else we have defined in

Glory Products anyhow.

Mr. Van Santen: Yes. It is the same product.

The Court: Yes, so we have to make the same find-

ings with respect to validity and infringement and novelty,

and usefulness obviousness, the whole business.

All right, gentlemen, as usual I have enjoyed this

patent case, and as usual I end up with some caveats

about the patent system and its day to day operation.

I suspect that if the Patent Office had considered Ber-

kemann in the process of issuing the patent, Mr. Alexan-

der might never have been here, although maybe I am

— 39a —

wrong about that. Bui, the fact that they didn’t, cer-

tainly gave him a legitimate reason for vigorously defend-

ing the question of validity.

How soon are you going to get me these findings, Mr.

Van Santen?

Mr. Van Santen: Let’s see, it is Christmas.

The Court: I don’t think you ought to work on them

Christmas Eve or Christmas Day, but other than that I

don’t know why you shouldn’t work on them. These are

findings in support of a judgment in your favor. I would

think you ought to be anxious to get them entered as

quickly as possible. .

367 Mr. Van Santen: I am, and I will. I would suggest

within 10 days, your Honor.

The Court: That is all right. Ten days from today

would be Sunday, the 2nd. Saturday is the 1st.

Mr. Van Santen: I have to be in Minneapolis on the

4th. Could we make it—

The Court: Do you want to let Mr. Alexander—

Mr. Van Santen: Mr. Alexander wants a chance to

look at them.

Mr. Alexander: I will be gone until January 2nd,

your Honor.

The Court: Until then?

Mr. Alexander: Right.

The Court: I understand, but you will have the week

of the 3rd to look at them. If I make it the morning of

the 7th, isn’t that all right?

Mr. Alexander: Fine.

Mr. Van Santen: That will be all right.

The Court: 10:00 on the 7th to enter findings of fact

and conclusions of law and judgment order.

Mr. Van Santen: Thank you, your Honor.

e ® @

— 40a —

APPENDIX D

Nov. 13, 1962 E. BITTNER ETAL 3,063,457

FOOT EXERCISER SANDALS

Filed Oct. 14, 1959 3 Sheets-Sheet 1

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— 42a —

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— ae

UNITED STATES PATENT OFFICE

3,063,457

Patented Nov. 13, 1962

3,063,457

FOOT EXERCISER SANDALS

Ernst Bittner, Frankfurt am Main, and Werner Gnass,

Frankfurt am Main Niederrad, Germany, assignors to

The Scholl Mfg. Co., Inc., Chicago, Ill., a corporation

of New York

Filed Oct. 14, 1959, Ser. No. 846,303

Claims priority, application Germany Nov. 26, 1958

1 Claim, (Cl. 128—615)

This invention relates to improvements in foot exer-

ciser sandals, and more particularly to sandals designed

to stimulate and exercise the foot while the user is walk-

ing naturally although the invention may have other uses

and purposes as will be apparent to one skilled in the

art.

More specifically the invention relates to a type of

sandal designed to automatically exercise the foot when

the sandal is worn, and particularly when the user is

walking in a natural manner. The use of the sandal re-

sults in restoring or improving the toe gripping action of

the foot, a function frequently lost wholly or partially

as a result of wearing shoes that constrict natural foot

motion and toe freedom. As a result of wearing the san-

dal, the entire structure of the foot is strengthened, and

arch sag and stiffened joints are relieved and corrected

by reactivation and revitalization of weakened muscles

in the feet and strained ligaments, circulation of the

blood is stimulated and increased through the foot elimin-

ating a condition of constant cold feet due to decreased

circulation of the blood in the lower extremities, calluses

on the ball of the foot gradually disappear as a weakened

—

metatarsal arch becomes stronger and the normal strength,

suppleness, and elasticity of the foot is restored.

Exercising sandals of the type of the instant invention

are provided with a generally transverse bulge or eleva-

tion in the forward portion thereof which is successively

gripped and released by the toes during walking. In

prior constructions, this transverse elevation extended

across the entire width of the sole block of the sandal,

and such construction automatically gave the great toe of

the foot a wrong position anatomically which frequently

aided the formation of crooked toes or aggravated a

condition of hallux valgus rather than alleviating or pre-

venting such disorder. Prior known forms of exerciser

sandals were also objectionable in that they were not

desirably comfortable, not as durable as wanted, were

frequently objectionably heavy, and did not provide

proper toe spreading when needed.

In view of the foregoing, it is an important object of

the instant invention to provide an exerciser sandal s9

eontoured as to automatically cause an anatomically cor-

rect positioning of the toes when the sandal is put on.

Another object of the invention is the provision of

an exerciser sandal having a sole block contoured in

keeping with the plantar surface of a foot and provided

with a generally transverse elevation in the forward por-

tion to be gripped by the toes of a user, which elevation

does not extend beneath the great toe.

Another feature of the instant invention is the pro-

vision of a foot exerciser sandal having a contoured sole

block with a transverse elevation in the forward portion

thereof to be gripped by the toes of a user, the elevation

terminating short of the great toe, and the block having

a depression therein to receive the metatarsal head of

the great toe, thus causing an automatic separation of

the toes, preventing the formation of crooked toes, and

alleviating or counteracting conditions such as _ hallux

valgus.

oie,

A further object of this invention is the provision of a

foot exerciser sandal especially constructed for lightness

in weight while giving rigid support to the foot.

Still another object of this invention is the provision

of a durable and economical foot exercising sandal

equipped with toe spreading means.

While some of the more salient features, characteristics

and advantages of the instant invention have been above

pointed out, others will become apparent from the fol-

lowing disclosures, taken in conjunction with the accom-

panying drawings, in which—

FIGURE 1 is a fragmentary perspective view of a foot

exerciser sandal embodying principles of the instant in-

vention, showing the same in operative position upon

the foot of a user;

FIGURE 2 is a plan sectional view of the sandal

taken just above the sole block, illustrating the sole block

in plan;

FIGURE 3 is a fragmentary vertical sectional view

taken substantially as indicated by the line III—III of

FIGURE 2, looking in the direction of the arrows;

FIGURE 4 is also a fragmentary vertical sectional

view taken substantially as indicated by the line IV—

IV of FIGURE 2;

FIGURE 5 is a fragmentary vertical sectional view

taken substantially as indicated by the staggered section

line V—V of FIGURE 2;

FIGURE 6 is an enlarged transverse vertical sectional

view taken substantially as indicated by the line VI—

VI of FIGURE 2;

FIGURE 7 is a bottom plan view of a foot exerciser

sandal embodying principles of the instant invention,

but of a somewhat different construction, showing the

attachment means in section and with the outersole elim-

inated ;

FIGURE 8 is a fragmentary vertical sectional view

taken substantially as indicated by the line VIII—VIII

of FIGURE 7, with the device ir upright position;

~~ wen

FIGURE 9 is a fragmentary plan sectional view illus-

trating the device equipped with a toe spreader on the

sole block;

FIGURE 10 is a fragmentary side elevational view of

the structure of FIGURE 9;

FIGURE 11 is a fragmentary plan view of our im-

proved sandal, showing the attachment means equipped

with a toe spreader; and

FIGURE 12 is a fragmentary side elevation of the

structure of FIGURE 11.

As shown on the drawings:

In the first illustrated embodiment of the instant in-

vention, seen in FIGURES 1 to 6 inclusive of the draw-

ings, there is shown a foot exerciser sandal comprising

a sole block 1 on the underside of which is attached an

outersole 2 of any desirable material, and which can

satisfactorily be of non-slip porous crepe. The sole block

1 is relatively thick in comparison with the outsole 2

and may be made of any suitable material, molded from

a thermoplastic or thermosetting plastic, or made of other

materials, it being highly satisfactory to utilize a single

piece of hardwood with a contoured upper surface for

this purpose. The bounding shape of the sole block and

outersole is generally that of a human foot, structure

for a right foot being illustrated in the drawings. It will

be understood, of course, that an allochiral structure

would be used for the left foot.

As indicated at 3 in FIGURE 1, the naked foot of the

user rests directly upon the upper surface of the sole block

1. The upper surface of the block 1 is contoured in keep-

ing with the plantar surface of a foot and includes a de-

pression at 4 to provide a cupped heel seat, an intermedi-

ate elevation indicated at 5 to underlie the longitudinal

arch of the foot, a depression at 6 for the metatarsal head

of the great toe, and a generally transverse elevation 7

in the forepart of the block which is gripped by the toes

of the user during walking.

— 472, —

The metatarsal crest or elevation 7 extends inwardly

from the outer edge of the sole block 1 and terminates

short of the great toe of the foot. This elevation is located

just anteriorly of the metatarsal arch of the foot, so the

toes extend over the elevation while the metatarsal heads

contact the sole block at the rear side of the elevation. As

in FIGURE 3, the elevation 7 is of relatively low height

underneath the small toe of the foot, then increases in

thickness as seen in FIGURE 4 until it reaches a relative-

ly great height under the second and third toes of the foot,

and then drops off abruptly toward the great toe depres-

sion 6, leaving the great toe resting i: the depression and

entirely off the elevation 7. Consequently, when the weight

of the body rests upon the surface of the sole block 1, the

great toe is urged away from the other toes into anatomi-

cally correct position. Thus, the formation of crooked

toes is prevented or discouraged by the sandal, and a con-

dition of hallux valgus existing theretofore is alleviated

or possibly corrected.

Attachment means for holding the sandal on the foot

of a user are provided in the form of strap members 8

and 9 which may be adjustably connected over the top of

the foot by a buckle 10. As seen best in FIGURE 6, each

of the strap members 8 and 9 preferably comprise outer

and inner cover members 11 and 12, which may desirably

be of soft leather or the equivalent, and an inner layer 13

of cushioning material which may be of any suitable soft

material such as padding, polyurethane or polyvinyl foam,

foam latex, etc. As also seen in FIGURE 6, the strap mem-

bers are secured to opposed side edges of the block 1, and

for this purpose it is quite satisfactory to utilize a plurality

of screws 14 driven into the block through the strap, and

it is preferable to utilize a washer 15 inside the head of

each screw to avoid the possibility of the screw tearing

the strap. It is a simple expedient to buckle the strap mem-

bers over the metatarsal arch region of the foot to pro-

vide a snug embracing relationship with the foot. Pref-

erably, no other means are utilized to attach the sandal

to the foot, the heel of the foot being free to raise and

lower relatively to the sole block 1.

we

In the use of the sandal above described, no special

talents of the wearer are necessary. The sandal is put on

the foot and the strap members adjusted to snugly em-

brace the foot. The sandals are worn preferably with the

feet naked, since hosiery interferes with the proper flexing

and spreading of the toes. When the foot is at rest it is

positioned squarely upon the upper contoured surface

of the sole block 1, as seen in FIGURE 1. As a step is

taken, the toes of the foot contract and grip the eleva-

tion 7, while the heel raises a short distance off the sole

block. As the foot is elevated off the floor, the gripping

of the elevation 7 by the toes tends to raise the rear por-

tion of the sandal into contact with the foot, and while

the foot is swinging forward just in advance of again

contacting the floor at the completion of a step, the toes

are preferably elevated or stretched upwardly, and as

the foot again comes to rest on the floor, the toes assume

their original position over the elevation 7.

The constant flexing of the toes in alternately gripping

and releasing the elevation 7 stimulates and strengthens

the entire foot and some of the leg muscles, definitely in-

creases circulation to the foot and leg, relieves and cor-

rects arch sag and stiffened joints, strengthens and raises

the metatarsal arch and thus eliminates calluses on the

ball of the foot, and results in increasing the overall well

being of the user. It is not intended that the user should

scuff across the floor, but should wear the sandals and

walk in his natural way. It is also not intended that the

sandals be worn all day long, but at the start, particu-

larly if the foot is ailing in some respect, the sandals

should be worn for a short time each day, and the time

gradually increased until they can be worn comfortably

for hours at a time. The simple wearing of the sandals

and walking results automatically in correctly position-

ing the foot and exercising it, and no time is wasted since

the sandals may be worn while performing other house-

hold tasks.

In that form of the invention seen in FIGURES 7 and

8, a sandal is shown comprising a sole block 16 which,

on its upper face, is contoured the same as the sole block

— 49a —

1 above described. In this instance, however, the under-

side of the block is provided with a plurality of longi-

tudinal grooves 17, the provision of which reduces the

weight of the block, rendering the sandal considerably

lighter. Also, in this instance we have illustrated slightly

different means for holding the strap ends anchored to

the sole block. In addition to the screws 14, each strap

end is also held by an elongated staple 18 overlying the

outer face of the strap end and has its end spikes 19—19

driven into the block on either side of the strap. The

screws 14 then pass through both the staple 1 and the

strap end. This method of securing the stra, «nd may

obviously he utilized on the sandal described above in

connection with FIGURES 1 to 6 inclusive, if so desired.

In FIGURES 9 and 10 we have illustrated the use of

a toe spreader 20 mounted on the sole block 1. This toe

spreader is preferably flanged at the upper end as indi-

cated at 21 and at the lower end as indicated at 22. It may

be secured to the sole block in any suitable manner, ce-

mentitiously or otherwise. Also, the toe spreader may

be made of plastic, rubber or rubber-like material, wood,

or any other suitable substance. As shown, the spreader

is positioned to separate the great toe from the second

toe of the foot, but obviously it can be positioned between

whatever toes of the foot need the aid of a separaio «.

In the construction of FIGURES 10 and 11, the same

sandal structure as above described is provided, except

that a strap member 8a, which is the same as the strap

member 8, except for the provision of an extension 23

projecting forwardly from the strap member, carries a

toe spreader 24, The toe spreader 24 is secured to the un-

derside of the strap extension 23 and the lower end of

the spreader rests loosely on the upper surface of the

sole block 1.

Both the toe spreader arrangements above described,

either the spreader 20 or the spreader 24, affords addi-

tional gripping action for the toes between which it is

located which also aids in maintaining the sandal on the

foot of the user, in addition to the toe spreaders perform-

ing their normal and intended function.

— 50a —

From the foregoing, it is apparent that we have pro-

vided a durable, lightweight foot exerciser sandal so con-

structed that when worn comfortably during walking in

a natural manner, the sandals automatically correctly posi-

tion the foot and exercises the same. The device is eco-

nomical to manufacture and economical to use by virtue

of its long life.

It will be understood that modifications and variations

may be effected without departing from the scope of the

novel concepts of the present invention.

We claim as our invention:

A foot exerciser sandal comprising a sole block of rigid

material contoured in keeping with the plantar surface of

a human foot and having a depression formed therein for

receiving the great toe, a transverse elevation on said

block positioned to underlie the outer four toes of a foot,

said elevation terminating inwardly and abruptly adjacent

the location of the great toe, strap means secured to said

block in position to embrace the foot of a user in the region

of the metatarsal arch, said strap means being the only

means for retaining the sandal on the foot of a user,

whereby gripping of said elevation by the outer four toes

maintains the heel portion of the block adjacent the heel

of the foot during walking.

References Cited in the file of this patent

UNITED STATES PATENTS

LBD DOE THOT ei srecccceernseesersecsesosuvsincoemnetesenvenss Dec, 2, 1913

LTGR AGS. MBO. ceececsrerercrcccrescorecrccsoscnovesinesosesese Oct. 8, 1929

LEE IO FID: ccictcsnesreseversewvisnrervcnnnssenenettttes July 19, 1932

2,006,500 MoCahan et ab. ....cccccccorssorcrsrererssceses Oct. 19, 1937

DIGT IES Westetne? rcccrrorcceresecccreosesesoresenioes July 25, 1939

ST Oe © TOOTS cacctnservsnececsssctsinernsecenremeneas Oct. 15, 1940

SEIBGED Tings GF Bl. siccorrcccreecorescessseoveeses Aug. 15, 1950

Ee CORNED cccccsemessnressccsncninviinscennecsotenned Jan. 30, 1951

SE. PG cescecosstenerresremtvnscmspenennivennnitoouns Oct. 8, 1957