(dissenting).
I regret that I am quite unable to agree. The Sheridan stocking protector is a mere application of the principle fully described in the Weston patent. Weston so shaped two pieces of leather that, when sewed together along designated edges, they formed a sort of pocket approximating the shape of the interior or heel portion of a shoe. As the shoe is adapted to fit the foot, obviously Weston’s heel lining would fit the heel. Weston obtained this result by the novel curves in which he shaped the two pieces of leather on the edges which were joined. He explains this very clearly in his patent:
“The main object of my invention is the provision of a heel lining for use in repairing shoes which is so made that it will fit naturally and smoothly into the concavity of the heel of the shoe without requiring stretching or other manipulation. * * *
“One of the important features of my invention resides in providing a heel lining in which the back or counter portion is normally at an acute angle to the heel seat so that the rear curved portion of the heel lining projects rearwardly with the counter-portion slanting inwardly over the heel seat. I have found that when a heel lining of this shape is placed in the heel portion of a shoe, it will fit the concavity which receives the heel of the wearer naturally and without requiring stretching or other manipulation to secure smoothness and a perfect fit. This shape of the heel lining may be secured in various ways but I prefer to accomplish it by having the lower edge of the back or counter-*939portion before it is united to the heel seat curved outwardly and upon the amount of this outward curve will depend the inward slant of the counter-portion in the finished lining. * * *
“My heel lining can be made to fit any style of shoe since the acute angle between the counter-portion and the heel seal is controlled by the amount of curvature on the lower edge of the counter-portion, a?id, therefore, the projection of the heel lining rearwardly mag be increased or decreased by decreasing or increasing the radius of this curve.”
The Sheridan stocking protector is made of two pieces of leather shaped on the exact principles which Weston so clearly pointed out. The only idea which Sheridan contributed was the observation that, if a Weston heel lining were made — as the Weston patent says it may be — with a sharply inclined counter, it would when applied to the’ foot draw in closely around the heel. He made a. Weston heel lining in this shape and patented it as a stocking protector. Nowhere either in the brief for the plaintiffs or in the opinions here or in the court below is there any effort or suggestion to distinguish in principle or basic construction the Sheridan device from the Weston. The District Judge said, “There is a fundamental difference between the articles in purpose and use” (italics supplied), which is true; but what we are concerned with is differences in construction or principle of operation; and there are none. Apparently, it never occurred to Weston that his heel lining eoukl, instead of being set into a, shoe, be put on the foot and used as a stocking protector. But the uneseapable fact is that, if a Weston heel lining is so made that the counter slants forward at a. certain angle and is then applied to the foot, a pull or draw is set up which makes it cling to the heel. Sheridan, who must be assumed to have known the Weston device, noticed this characteristic of it, and trimmed the counter portion to take advantage of it. By an oversight in the Patent Office, the Weston patent was not cited against the Sheridan application. So ho got a patent to which lie was not in the least entitled. It is well settled that a new use of an old device is not invention. “The application of an old device to a now use is not in itself an invention or capable of protection by a patent.” Sanborn, J., Mallon v. Gregg & Co. (C. C. A.) 137 F. 68, at page 76> citing cases; Tropic-Aire v. Scars, Roebuck & Co. (C. C. A.) 44 F.(2d) 580. It seems to me extremely clear that the Sheridan patent shows no invention over Weston, and that tile bill ought to be dismissed on that ground.
With respect to the counterclaim, I understand the weight of authority now to be that, where the infringing acts are those of a corporation, the officers of the corporation are not personally liable, in the absence of proof that the corporation was insolvent or financially irresponsible, or used as a cloak or cover for individual activities, or was in other ways an instrument of fraud. Dangler v. Imperial Machine Co. (C. C. A.) 11 F.(2d) 945, 047; Claude Neon Lights, Inc., v. American Neon light Corp. (C. C. A.) 30 F.(2d) 548. In Calculagraph Co. v. Wilson (C. C.) 132 F. 20, relied on in support of tbs counterclaim, Judge Hale said: “The record convinces us that at the time of the infringement the defendant was personally conducting the business, and that he intends to continue to conduct it. The law is well settled that a party cannot escape liability for his infringement by attempting to shield himself behind a corporation.” Page 30' of 132 F. The facts in that case were different from those here presented. On this ground the defendant is not, I think, entitled to a decree against the plaintiffs on the counterclaim.