Petition for Writ of Certiorari — Bright Leaf Industries, Inc. v. Stabler

Supreme Court brief1959

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Text

- Fi (onnp-ourre La LAUT é.d.

OPY . ee

2 ; of mk FEB VG a

[aes . ie NING. Cher)

atu | OF THE UN bSTHTES 7

a OCTOBER TERM, ‘i959.

936.

BRIGHT LEAF INDUSTRIES. NC.:

Petit: oner,

VS, a f

) VERNON STABLER, as HENDRICK, and. WC. GATES. .

* Individually; COLO-RITE MANUFACTURING COMPANY,

INC., a Corporation; and ‘GREENVILLE BUTANE GAS

COMPANY, ‘INC., a Corporation, Separately amd Severally,

_ Respondents...

PETITION FOR A WRIT OF CERTIORARI

To the United States Court of Appeals for the

Fifth Circuit and ————

PAUC'B. EATON, |

- Oth Floor Johnston Building, -

ig 7 Charlotte 2, North Carolina,

25 ie Counsel. for Pet itiOne re

OF Counsel:” Sie ie Ps

PAUL*B.- BELL, : tie

9th Floor Johnston Building, ° | ws ane

Charlotte 2, North. Carotina.. : ee

St. Louts Law Printinc Co:, Inc., 415 N. Eighth Street. CEntral 11-4477.

$ v i

: a . p . ° ore

a INDEX. -— ., e

a ee « :

Page

: ia , , oO

Opinions I ae eek nie PPE LE Pent ee Ps

‘ 3 ete 7

NE ak ee ae ree | a ees ye -

Jurisdiction a eC meee.

~ Questions Pre anak. Nt ee IG TEES 1 eee 3

¢ Statutes, Federal Rules:and Regulations Involved. ... 003

) » 7 a ae CN rs ‘Jat ase ;

“Stats me. nt of the Mase? 8). os Sie RS Roy eae oe

* ~ . . s

Reasons fer Allowance of Writ Seen Mey ce eenetas ee |b

ly The Court’ of “Appeals for the Fifth Cireuit in.

eal bbb the were of the District Court for

a in suit ‘avaiid for want of invention did

not give proper consideration to the findings of |

fact hy the Distriet Court that the elements of |

the patent claims work togéther in combination’ — Wekra.

to prodye new results heretofore unobtainable > 11 pe

(2) Th holding the patgyt in suit invalid for want of. ~

~ .* invention, the Court of so for the Feth

Circuit has made.a hollow myckery of thefatu- |.

selina tosan of validity set forth in

», United States Code, Section 282........... ie |

The ( ‘ourt of Appeals erred in applying an im.

° proper test of what canstitutes patentable in- |

vention by failing to apply the test of invention

required by Section 103 of Title 35 of the United

States Code ae ore Sree rear ee Pree 2

(4) The Court of Appeals by holding that the patent ee

vie ju suit was-invalid takes A position contrary to

“ vious decisions of this Court, sihee the’ ourt\.

Appeals expresstt approved findings of thes

ee f Court that the pater disclosed an.im-

proved tohae co curing system combintag: ‘old ele.

‘aments of the art in sneha manner as to give rise <3

to better results ee Ea utantaee aie hex

caer ‘

s Ht

a ANE ees ‘ aetna eect) tan oS) ‘ss

Appendix: A: eae a ee Tae

a at, ve Opinion of v n ‘ited States Court of Appeals, for

the Fifth Cireuit ......... Oren rer, Pigisaas 4s

B. Judgment of U nited State s Court of f Appeals for 4

the Figen ¢ MONE he ech avsnd ages ec ek cua neds OL

Opinibe of. Distriet Court for Middle District of —

rar” Ip Alabama: ..... peter ee 7 ease Ses Se re -

Ae Sp ee ‘

cee ane ao TABLE OF AUTHORITIES.

Cases.

Brown et*al. v. Brock etyal., 1957, 240 a ad 723,

"°C. CA. 4 os. ...0e. SPOT ee ee aViwhves peed a...% 2

Cameron Tron WV ‘orks, hie, v. Steoll, 157, 242 F.2d *4@

po Ea ae Se oe adie de MeORked cond saunas 16

Cuno Engineering ( ‘p. v. Automatic Devices oe,

7, 1941, 314 U. - 84, 62 S. (t. 37, 86 L. Bd. 58 ....... ly

Goodyear: Tire: ‘& -Rubber Co. v. Ray-O-Vac Co.,. E964, 7

_ 321 U.S, 275, 279, 64 S. Ct. 593, 594.....5..... See 6.

Pee Tank & wig Co. v. Linde Air Products Ac eV.

1949, 336 U.S. 271, 275, 69S, Ct. 585, B89 6... 1,

a Atlanti¢ & as Tea Co. v. Super market Corp,

¢ 1950, 40 UL S147, TES. Ct 127 see ted giX2t

Hote iikiss v. Greenwood, 1850, o2-U. S: 248 (11 How.),

7 gf rere errs eae: a

I. {): F. Glass thers Co. Vv: Watson. 1955, 293 F. 2d on

Wk, TN ids bade bak abe ed OPS Poo ee eee errr ee

Lyoy. v. Bausch & banal Optical ib., 190, 224 F. yi

530, ; ood, CLC. A. 2, cert. den. 350'U~. S 911; inka |

Mumm ¥. Decker, 1937, 301. T. &. 162, 71, a 5,

a. ae ears y anaes VOrerT cree 15

Palmer vi Ludens, Inc., 1956, 236 F. 2d 196, C-EAA3 &

re cee Pe “3 ; a : o ° “

e °

| ore

Sevmonr: i Osborn. INTO. 78 t. Ss. al, D4

Williams Mfg. Co. ee

1942, 316.U. S864, 62S. Ct. WI79,86 LOE 137... 14, 20

epee rs Scarce Other Authorities. f

26 U. ia S| CRRE SPST Oey ot

| Sanpete ie eee 3 Ta S21, 24,27

F oT S oe Se PTI, eee, Lod

SP. fade (8) oo ice css. eR re, ayer a peng a

~ Fedéral Rules of ¢ St Procedure, SS Sree =

H. R. Rep. Np. 1923; 82d Cong., 2d Sess. (1952) Tonia 18, 19

+S. Rep, No. 1978, a & ong. ., 2d Sess. (195: 2}. canna a -18,19

Hearings before Subcommittee No. 3. of House Com-.

Inittee on Judiciary, 82q Cong.Alst Sess. 38 (1951) 19

’

oe 6 a :

e} aited Khe Machine rx Corp.

cp ate pes sessed on the NewNRatent Act’’, 30. .

_ Lomb Optical Co..” 38 J. Pat, Off.’ ‘Soe'y ma, 323,2- _

| Se A at va esis eee 2. a

a : \ ;

a : ‘

Be”

x a *

4 ‘

CSca, en tm 2

Libert. “Section 103 -of ihe: Patent “Act

ard, of lavention: Comme nts on Lyon x.

a 2s 2.6 eo. 6.2 2S 6 SE RY 2G Oe OS

and the Stand-

Bausch &

IN THE a

_ SPREE OUR i THE UNITED sites

OCTOBER TERM, 1959..

No. eee.

~ BRIGHT LEAF INDUSTRIES, INC; |

Petitioner, - +‘

VS. | ae

gee VERNON STABLER, JG, HENDRICK; and W. C. GATES,

Individually;, COLO- RITE. MANUFACTURING COMPANY.

~INC,, a Cornoration; and GREENVILLE BUTANE: GAS

eat, INC., a Corporation, Separately and Severally,

s Respondents.

PETITION OR A WRIT\OF CERTIORARI

of Appeals for, the Fifth Cireuit, reversing a final judg-

. ment of the United States District Court for the’ Middle

District of Alabama, ‘wherein - originally the: petitioner

“owas plaintiff and the respondents were defendants.

Petitioficr ‘respectfully prays that a writ of certiorari -

issye to review the judgment of the United States Court .

OPINIONS BELOW.

2% The opinion of the United States Court of Appeals for

the Fifth Circuit is reported at 261 F. 2d 383 and appears -

as Appendix A to this petition. The opinion of the United

States District Court for the Middle District of Alabama

is reported at 158 F. Supp. 294 and appears at pages 9°4-

555, inclusive, of the Reeord, and as Appendix C to this.

petition.

ess JURISDICTION.

The opinion and «judgment sought to be reviewed were

entered by the United States Court of Appéals on Novem.

ber 21, 1958, and appear.as Appendix A and B of this

petition. Petitioner’s timely petition for a rehearing wa

dgnied on January 22,.1959..The jurisdiction of this Court

“to review by writ of certiorari the judgment in questidii is

.. conferred by Title'28, United States Code, Section 1254 (1).

_3 : ° ¥ . -

ee see QUESTIONS PRESENTED. ie

Pe aatiti

(1-) Did ‘the Court of Appeals err in* reversing ‘the Nj--

trict Coprt-and holding that the patentein suit w as invalid ’

“for want of: invention, despite the ent ( ‘ourt Jnigige’s

findings of ‘fact that - > es CLM as oe .

. fa) the invention. of the patent in suit pertains to

a gas-fired tohacco curing system based upon a new

concept of curing wherein , low,- “even, -earefully

controlled heat and high air volume. are utilized to

obtain new and‘ improved - results. unobthinable in

prior systems using high. heat and relativ ely low air

movement; ‘ vi

\3h 2 o

; :

(b) the biti set forth in the claims of th® pat:

- ent in suit“work together in combination ta produce

hew and unobvi ious results heretofore unobtainable;

. e . .

. ‘ ‘ - ® a

: 4 he ae

. e ~ 2

_{e) the. tobaeca curing industry for, years has

worked to try ‘to overcome the disadvantages of to-

haceo ‘curing systems, and in some prior curers: one

or. more of the dantedinnapa were: partially over-

‘come, but no curer prior to that disclosed in the patent.

in suit suecessfully overeame all of these disadvan-

tages; and 3,

(d) the patent . dn suit: meets the standards of in-

‘vention as set up ‘for de ‘termining vt alidity in Seefion

103 of Title 35 of the U nited States Code?

Q) Did the-Court of. “A peais’ err. in failing to give,

proper weight to the presumption of validity attending

the issuance of .the patent in suit, as. set forth-in Section

289 of Title 30 of the U nited States Code?

(3) Did the Court of Appe: ls err in applying an im-

proper test of what constitutes patentable invention b¢é

failing to apply the test of invention required by, Section

103 of Title 35 of the United States, ¢ ‘ode?

(4) Did the Court of Appeals | err in holding that the

patent in suit was invalid despite its approval of fitidings~

by the District Court that fhe patetit claimed an improved’

tobacco curing system combining old elements. of-the art

in such a manner as to give rise to better resul(s, inasmuch

as ‘this holding is contrary to prev ious decisions of: the

Supreme Conrt?-* . cut Seat”

STAMUTES, FEDERAL RULES. AND REGULATIONS

-, ° . INVOLVED. |

case isvehnsa the following: oe

The insQpatti c

- Title 35, Uhited States Code. Section TO3° ( (1952),

“A patent’ may not be obtained though i iawonkion is

hot identically dise losed or desexibed as set forth in section

i. /-

° / - . . ° £ 7‘

Pat ’ x 5 , : “> -, . =

} ~ ‘ of * “ . . 6 ° F

. . ¢ , 4 . wed

. . od .

. . ° : ‘ _*% 2

: | Bae: of this title, if the a , ances betwe een 1 the subject. mats

as * fer sought to he’ ‘patented andtin are such that

'. the subject matter as-a-thole w Alteg yet en Obvious at

the time the. invention wes made to a Mr sou having oriti-

~: ee skill in the art to which swid sul§@et matter pestains?

" -atentability shall not be negatived by. the manne’ TT

Ww hich the invention was ‘made.’ - :

°°

~ Tithe 39, United States Code, Section IRD. (1952 ) ‘in part. ;

: -, A patent” shall he presumed, valid. The burden of

se - establishing phage oF a patent shall rest. on al party,

‘

“

asserting ie peer ee ee

. .

“oe ° . °

Rule $2 of the Federal Rules of Civil Procedure in part.

v i :

“se, + indings of fact shall not be set aside unless elearly

erroneous, and due regard: shall be given to- the opporty |

tb » 4

SSes, ° . . a ‘ “i : - °%

. « * . e 3

- Ms Pe e e ‘

Be eee ti STATEMENT OF THE CASE. Bee:

= ed of fie trial court to, judge the credibility of the Wit-

re The patent -in suit dies to il das-thred Sahat euring

~ gsystem relying upon a new congept. of curing, wherein tow,

-# even, ‘arefully controlled heat and high air volume are

utilized: to obtain new and improved results unobtainable

an pr ior. systems which use uncontrolled: hich hea’ and.

relatively low air movement. ea

To tliose ouifamiliar with . tobackef curing, the- curing

5 + process: awpears to be nothing more thag heating ‘the.

ft - tobace 0) Jéaves in a Warn. Tp reality, _tebace suring ts a

: complicated process involving’ a chemje: il fon of thre

enzymes within green tobacco Jeaves. ‘Phe leaves’ must be

ae » processed as to perinit | the! enzymes to convert the

mista within the leaves to the optiangma amount of sugar.

without exe OSS enzymatic -action andj at the same time a +

-Jarge amoiit of water must he rembyed from the leaves

;

3°

without sremoving desirable volatile substanées such as.’

tars, nieotine, and. aroma.’ Curing involves. more than

mere ‘heating. The patentee for the. first time. recognized

‘the ‘desirability of providing uniform controlfable atmos:

pherie conditions around each leaf, of .tobaeco within a

arn and. fer the first ‘time “con

proved results in curing: gould he

) aN Ke

to provide sue h uuniforr controlad LwmAiditions. .

To view the. pate ited system in its” proper per speedive,

it must” he eonsidered ‘with respect to the tebaceo curing

art, as it ex Xisted when ‘the invention was made, namely, in

August of 1946; T he tohaedd curing Art pe

types of Curérs, hoth p tented and» unpatented, having

in old one, many

been used with varying . These cnrers ean be classi-

# ;

fied under three general types. ~ % Rak :

One, a-flue type offcurer (RI. Ex. 1

a oxen and flue pipes which extend into a barn-and into

which hot air is introduced to create radiant heat within

the Darn. The hot air was first produc ‘od by a wood fire

cived that new and im-—

15, R. 176-180), utilizes

ina furhate connecte to the flue. aml later by oil burnérs ~’

‘and coal stokers.- Very 1ittle per is moved -within the ~

5 barn ti this type of curer, and the tobacco: is cured: price

marily by. heat iradiated fone fiue’ pipes. Since ‘the *

flue pipes are hotter’ adjacen| he stove than elsewhere,

the temperature , ‘arieseeonsiderably throughout the *barn,

‘and .the lower most: tobacco leaves in direct contact with’

the radian? rays are dried more quickly than the upper

leaves, with resultant uneven curing and poor grade

whe.

tobacco, } Ps ; : bars

“&° second type of eurer - know n at the time of the inven:

‘tion utilizes a splur ality of inde ‘pendent gravity: feed oil

, burners within the barn, each having a ‘vent stack exten: e:

‘ing wp through the tobacco and: the roof of the barn for >

Venting 3 away a portion = the fumes atid prodivcts of. oil:

a oe

—alh--- , + 4%

1 al .

combustion as well as a wood deal. of the heat (P I. Ex. WW,

TR. AS-IS). This type of. curd is ‘difficult to control, pro-

duces ¢ berger acs through the tobae ¢o, gives. off a great

amount of ractiint heat, introduces fymes and harmtn!

prodiiets of combustion: into’ the curing atmosphere, pro-

Vides nneven concentration of Jieatlover each burner, anil

requires careful attention to*operate,

A third typeof enrer known at the time of the inveritign

utilizes a plurality of stove units, usually four, spaced one

or. mit usuglly encloses groups of four or Aiore

individual oil burners of the wick type substantially identi-

‘al to those used in wellknown oil cook stoves. The groups,

of Burners confined within the stoves concentrate the heat

and ¢uring is accomplished primarily by radiant heat rays

which are concentyated on those tobacco leaves located

imnfediately above. each stove. The concentration of heat

‘adjacent eaeh corner of the batn (PL Ex. 17, R. IS4-184).

adjacent each stove unit causes -the tobaceo leaves over

each stove unit to dty and shrink more rapidly, opening

up space between the leaves and forming air channels ‘or

“chimneys”? through

ureas to eure ata greater rate and to a greater extent than

the -ofher ‘tobacco Within the: barn. This system, utilizing |

‘smelly fuel oil or kerosene, requires careful attention and

“Is Kid ject to constant maifunction. . Fumes and. products

_of combustion are introduced into the barn and frequently

contaminate the tobacco beme cured.

All of these prior curers are sot forth in the fa tent in

-stut ‘as being, old at the time of the invention claimed

therein. With all-of these prior curérs it was excoodingly

diftieult to adequately control the temperature of the indi-

vidual units and impossible to maintain an even tempera

fire. throughont-the entire bard. The uneoritroltet: heat,

open oil flanies, and red -yot flues in prior systems consti-

tuted serious fire hazariis. The low volume air movement

r / «> i ° ; :

”

1 the tobacco, ‘using tobacco in these

in tHe barn prgduced by these_prior units resulted in ex

gressive curing times, and the short life of these curers, as

well as the labor. cgst involved in the installation. and

operation thereof, resulted in excessive cost of curing.

Most important, poor results were ebtained due to mneven

curing, in certain areas of the harn, excessive heat, con-

* tamination by soot, oil fumes ‘and the ike, resulting in a

_ lower price to the farmer, for, his tobacco,

cult to control the temperature within the ‘barn, as it was

; leeessary. to, maintain all burners absolutely ievel relative

to each other (and_ relative to the level of fuel in’ the

reservoir). Attempts to use thermostatic devices were not _

. stiecessful due to-the time Jag caused by the backup of

liquid fuel in the lines and the impossibility of « venly con-,

are the amount of liquid delivered to each oil wick.

The danger of i, ps liquid fuel, both inside and outside

“* the harn, was a constant fire hazard. The,use of high

tempers atures at ‘localized areas in the barn r sulted in in-

creased fuel cost and inability to properly adjnst the vari-d

‘ous-burners resulted in uneven heat and tobacco which

wak properly and ais id enred,

— The industry for vears had worked to try to evercome

these disadgantages, and in. some prier curers one or more

curer prior to the invention disclosed by the ‘patent in suit

* _ suecessfillly overcame allong these disadvantages. The art

pertaining to tobaeco curing systems is replete w ith nu-

merous -patents and attempts, by others to ®onstruct A>

curing system which wonld solve these praplems. 'Al-

though the individual elements of the patented system

years prior to the invention disclosed therein, no one had

evolved the- concept ‘of combining these elements with

‘this particular type of fuel to‘provide a novel curing sys:

ss PP ae ae epee meth vn

The use of liquid fuel in prior eurérs made it very diffi-

of the disadvantages were ‘partially overcome, but ae

; - Were known for years, and gas fuel was available for some

v - tem wherein low, even. heat and high uniform air move.

ment are utilized to obtain even curing resulting | In heavier

and hetter erade tobacco until the advent of Gilder S.°

Horne, the inventor of tlre system chaired. i in the patent

in suit.

These

tohacys curing because tall of theses prior efforts were con-

prior attempts failed to solve the problems of

-vorned merely with: putting heat inthe barn. These prior

patentees and the court below, failed to appypciate that

he ening | involves more than heat- alone, .

1. ae . r

The Horne imvention came about by his recognition of

a novel concept of curing tobacco based upon drying

rather than heating. Horne proc eeded on the theory that

ifa tobacco curing system could be developed wherein:

(1) a large volume of heated air was moved upwardly

a through thre tobacco as distinguished from simply putting

large amounts of heat into the tobacco barn; (2) the large

volume of heated air-was uniformly directed) in. its ap-

ward movement throughout the tobacco in the barn as dis

‘tinguished from upward ,movement. at locaiized points

Within the barn: and (3) the temperature of the large vol-

amie of heated afr was varied as required, within relatively

wide finitts for each separate curing stage but Was iatili-

tained constant throughout the barn Mw in relatively

narrow limits during each uring stagy an answer to the

problems. plaguing the tobacco cyte industry? would be

Ss . .

found: In meeting the challenge presented by the. age

factors outlined-Above, Horne evolved the system. of the

“yi itent in suit.

6. Horne conceived that a : hee ality of gas burners could

be wsed to créate the necessary air flow and to disperse

the heat evenly i in the barn. He recognized that they burt:

ing of gas <imultaneously ina plurality of vas burners dis-

aie persed throughout the barn would create a Jargé volume

of upwardly moving heated air | 4

om.

. P ;

ef, « ¢ .

. : >

At -that time, available gas cost ahout twice us much per

heat unt as liquid fuel, but Horne: was not blinded by this

fact. ‘He perceived that. his system using gas as a fuel

would le ren so superior to these of prior curers

is to fully warrant the increased The cost, The record of

the success of the Horne invention is aaribute to the ac-

curacy Of his perception in 1946. This is particularly true

new coneept | :

in view of the evidence thaf no one htt previously used

gas, or everl conceived that high priced gas: could be used,

wits did Horne to ohtain the sdvant: Ages resulting from this

4@ . ‘ . - 0 . ae ~~ a

Horne, at the time of the Invention, Was an officer of

Rulane Gas Company -of & shartotte, Noth Carolina; who

then had many ye ‘ars of experi¢nee in the gas field ¢

(od jo

related to consumer jand-rural use (R, 225, 226). The om

ented tobacco curing system was first put on the market

in 1947. by Rulane Aias Company CR. 244), and subse-

quently the plaintiffy Bright Leaf Industries, Ine., aequired

rights to--the, invyfition, and actively “manufactured 4

sold the patented tobacco curing systems in large numbers

(R. 36-37).

The defendant, Greenville Butane Gas (‘o., Ine. is a

butane ‘gax dealer of: Gri PHY ille, Alabama, and is owned by

‘the individual defendants, E. Vernon Stabler, J. G. Hend-

rick, and W. (. Gates, together wit! i Mrs. BE. Vernon Stab-

~ ler, Who owns ten per cent of the stoc ‘koand is inactive int:

the nianageme nt of the company.

‘Prior to June 2. 1950, 4. Hendrick had observed -one

of the plaintiff's patented curing systems in-operation and

acting for Greenville Butane Gas Co., Ine. , the then wrote

to, plaintiff requesting in formation about the pate ted eur

ing system. Plaintiff furnished. the rgquested literathie

and information which was clearly marked) “Pat. No.

24725347" CR. 246). Again in early T9O1, Mr. Hendrick

és ihn

wrote to plaintiff and received further: information, 071, the.

patonted system marked Withi the om number,

°°: nn

In Mareh of 1951, Groonsite tata ine Gas Co, Tit,

_—erdercit a cn : complete euring systery’ from plaintiff whieh

Was pee with © perating iustructions beariug the pati

nambey 472434 (R. 250-2 my), and the Gurners of the unit

were ‘marked ‘Patented.’ Later in the same veary. ail

addjtional’ curing ‘System Was ordered from plaintit?. The

control unit wf one system was returied with san in it

ahd cleaned out by plaintiff and later used by the defend

“ants. The OH hive s¥stem was completely satisfactory, Suh

sequent orders: were. not Cousnmimated due. to pliintit’s

te}

requirement of cash on delivery,

Thereafter, Greenville Butane Gas Co.. Tne. purchase!

and sold-a combination stove and fie: type radiant Vest

curer known. ag the ‘Gas-A-Fire’’ eurer, sie duly

thirty-two anits during a period: f about thier Vears.

After the .°*Gas- A-Fire”’ company weld out of usiness.

late igi 1953, defendants decided to manufacture their ow

complete curer with ‘full knowledge of plaintiff's patented

mirer: and, with a copy of plaintiff's patent in their pos,

session, they produced a curer which the record shows te

be, in all material re Speeds, identical to that of the plain

tiff. Tn early. 1954. the defendants Thanufi tetured and. be

gan selling these cont let te curing systems for caring to-

hacen in barns under then: ne “*Colo- Rite. ‘

> at

” Angust of 1854, the plaintiff aiid Al, defend: mts that

the Colo-Rite, curing svstem was an infringement of plain.

tiff’s patent riglits... Subscquently, ino February of 10.

the individual defendants caused the eae ndant, Colo- Rite

Manufacturing -Company, Ine. to he Ancorporated with

lini capitalization for the sole purpose of manuf aes

turing the infringing curers. The new corporation con-

tinued to’ Conduct ‘its operafions.at the same loeatien an

mm i es

with-the same allieors and personnel as -fireeny de 1 Butane

Gas Co... Inc — AH-tinils for the opMation of the new

— Colo-Rite corporation cae from Greeuville Butane, either.

directly Gr upen loans enarantoed why Dr. Stabler. The

edefendant, Colo-Rit&\ Manufacturing Company. ‘Tne. was

operated, under the fall controlot the individual defend-

ants, and conteined to. manufacture and sell infringing

cnrers until the issuance of the preliminary injuiiction: in?

this canse (R. 120-121). os ;

Plaintiff instituted this action “ander Title 28, Section.

338 (a) of the United States Code. The Distriet Court

- held that plaintiffs patent 2472.55 Wi ax valid and in-

fringed by the defendatits. On appeal by the defendants,

the Judgment of the Distrief Coutt owas reversed by the.

Court of ‘Appeals for the Fifth € freuit on the ground that

the patent im suit is invalid for want of invention. Plain-

tiff’. petition. for a rehearing was denigd ,

i>: 4 any <4

» REASONS FOR ALLOWANCE OF WRIT.

1) Tlie ‘ourt of Appeals for the Fifth Cirenit in, re:

versing the judgment of the District Court for the Middle

District of Alabama by hold#ig the patent in suit invalid:

for Want of invention did not give proper Consideration to

the findtnes of fact by. the District Court that the elements

of the patent claims work together. in combination to pro-

duce new. results heretofore unobfaimable. The’ District

ria ourt after a ‘careful examination of. the exhibits and con-

fie ting: testimony found the following facts:

“As stated above; the invention of the patent in

suit pertains to a gas-fired tobace oetring system based

upon a new concept of curing wherein low, even, eare-

fully controlled heat and high air volume are utilized

to obtain new and fraproved results unobtainable in

prior systems using high heat and relatively low air

movement.

¢ *

We. :

« : .

ce ota

‘The clemeats set forth An te bre patent claims

work together in cambination to produce “HOW and up-

obvious results heretofore - tndbtainable’ > (RR. 54,

App. i. |). Hig ; - ; oe 4

5 pas . |

“The ieee for" ve ars. lis worked to try to

overcome these disady vantages, aml in) some prior

curers one or more of the disadvantages were partially

, overcome, Unt insofar asathe, Gonrt is aware’ no eurer

prior to plaintiff's invention successfully overcame

all of these disadvantag@. The art. is replete with -

lumerous patents and attempts by qghers to construct

aocuring system which would solve these -profileni.

Almost if not all.of the gpdividnual clomenty of plain.

tiffs system were ‘known individually tar ens anid =

eas fuel was available in this area .for some years

prior to plaintiff's invention, yet no one-prior to plait-

* tiff had’ the inve ntive concept of combining these

elements with this partienl aur type. of fuel to provide a.

, new, system wherein loy heat and high airemotement

aratilized to obtain evea curing, resulting in heavier

and better grade tobaceo.? (R. 542-545: App. Cy p. 46).

“This Court farther conehidés that the patent in

suit meets the sta@ftrds of invention as set up for de-

tefmiming validity in ° 163 of the Patent. Act of 1952.

and that the Great “Atlantic & Pacific Tea Co. ¥v. Super-

onarket Equipment ¢ orporation case cannot be sed by

these, defendants as a ‘sanetnary’ ? (Ro 550; App

Oy ee a ee z) . ©

The decision by the Court of Appeals for the Fifth Cir.

cuit admits these facts.’ Having admitted those facts

fonnd by the District Court, the Court of Appeals then pro-

tNpp Asposl py. 2 The Horne patent 4. a combination patent

Te is an impr: wed <estem combining old elements of the art ines”

a Mantes sa ads to give rise to better results,” sy

eure :

e *

. 12

; " : ‘t . : oe F :

ceeded to ignore ‘them and substituted its own independent

Opinion als to mve ntion without ane fae ts wh atsoever to

support its saute

Rule 52. of. the Federal Rules ef Civil Procedure pro-

vides that findings of fact shall.not be set aside. unless. _

clearly erroneous, the Supreme Coun having occasion to

apply this rnle in Graver Tank & Mfg. Co: v. Linde Air |

Products Go., 1949. 336.08. 271, 275. 69'S. Ut. 595, 5872.

: «To no typeof ense is this last clawse ‘more ap-

>“ propriately ‘applicable than to the one before’ us,

where the evidence ,is large ly’ the ‘tesfamony of ex-

perts as to which a thf court may be enlightened by

seientifie demonstrations. This trial “oceupied some |

three weeks, during which, as the record shows, the

trial judge visited laboratories With counsel and ex-

perts to observe actual demonstrations . of welding

accused of infringing it, and various stages of the

prior art, He viewed motion pictures of vatous

welding ‘operations and tests and heard many experts

and other witnesses. He wrote a careful and suceinct .

opinion and made findings covering. all” ‘the factual

issues, ee

“The Tule” requires that. an appellate court make

allowance for the advantages possessed by the trial -

court in appraising the sigmificance of conflicting 1es-

timony, and reverse only ‘clearly erroneous’ . findings.

* * * . * r e -

“No. such shewing: ts made, While the ultiinate

question of patentability is one of meeting the’ require-

i, sre the stafute, R. = See, 488% ax ainepded, 35

UT. . See: 31,325 U.S A., See. 31, the, faéts as.

ee om. respect to iat Naas flux claims warramtit a

conelusion here that as matter of law those. statutory

requirements have been met. Accordingly, we affirm

* the judgme nt. insofar qs it holds claims numbered -18,

20, 32 and 2 define an inventroy for wich patent has.

Valielly. issued.”

‘Simcuek: the Supreine €ourt in deciding ‘Williams Mtg.

Co. v.- United Shag Machinery“Corp., 1942, 316" U. So 304,

62S. Ct 1179, 8@ L. Eds 1457, comes to grips with a ues.

ton. identical j in point of law with that existing in the

present Instance, the language of this’ Court at page 267.

heing especially pertinent.to the present inquiry:

binations, while they involve old mechi anical Constrie-

tions, combine these in a new way so as to produce an

improved result. These are findings of fact, despite

the petitioner’s apparent’ contention to tie contrary,

and we will not Stutb such concurrent findings where

as here, there ix e vidence to support them. The Glain::

that-the combitiations are merely of old elements, whith

perform no new funetion and produce no new result,

-must he overruled. ae ine was six udde d.)

> <

The Court of Appeals is the Fifth ici did not -vt-

aside as erroneous the findings of the Distnict. (‘ourt that

new and improved results were Gbtained hy the [Horne

~ invention which were Hot obvious to those having ordinary

pkill “in the art. — Nevertheless, ‘the Court -of Appeals

found no invention even though the statutory: tekt oF inven

tion was fully met. There is Ho factual hase for such a

hoiding and it. is clearly contrary to the evide Ce and tly

aw, ree, “

4 . ' ; Ny

(2) In scbigey ten Sorc in suit invall®, Tor want 0

invention, the Court Spf Appeals for the Fifth Cire Wit alias

made a hollow oe of the statutery presumption’ al

Validity set’ "forth in Title 30, United States Code, Section

YSee Indeed, the Court @f Appeals, havi ing only the. be me

= v2 :

233 UL S.C. kin part, CA patent shall be presmne |

The sills af establishing invalidity of a

party asserting it :

= |. poe

fit of brief arguments presented in connection with this

eqs, has taken it apon itself to. overturn the decisions of

the United States Patent Office and the District Court in

holding the patent in suit invalid Without résorting to any:

prior art but merely upon the “expressed opinion that the

patent suffers’ fron, want of invention.: Petitioner is well

justified in asking of this Court, “Do the statutery provi-

sions of Title 35, United States Code, Seetion 282,-:mean

_afything at all? It ¢ learly -appears that notwithstanding

Kg express statutory provisions of Section: 282, the Court

f Appeals for the Fifth Circuit) has proceeded on the |

eeaie theory that a patent, shall eo sachin invalid |

and the hurde n of establishing validity of a patent, shall

“rest upon the party ass rting a claim bebe:

If the intentions of the drafters of Section 282 which

codifies the law expressed. bv the Supreme Court: in the

leading case of Mumm v. Decker, 1937, 301 U S. 168, 171,

BLS. Ct. 675, G76: > . ;

‘Phe issue of the patent is enough to Slow, unfi}

the contrary appears, that all of the conditions under

ance with the

statutes have been met. | Henee, the barde?

which a discove ry is patente thle in acco

of proving

Walker

on Patents, Sec. 116. Not only is the burden Yo make

good .this defense upon the* party setting it

avant of “novelty is upon hin who avers it-

ip, but.

his burden is a heavy one, as it has been held>y

‘every reasonabie doubt shonld be rived wgainsl

him.’

are to be erried ont, sneh flagrant disregard shy the Court

of Appeals of facts found by the District Court based upor |

an inrdepende nt CX: unination of the pate nit it} suit shoald st.

hot he pe rinitted, dng

“Tndeed, “as Court of Appeils for the Fifth Cireait, las

rendered decisions wholly inconsistent with the holding |

ae : ne 16

“here, as in Cameron ~~ ‘Works, ‘Inc., v. Stekoll. ( a

a re, 242 FY 2d i, QU, it stating: : \

OW hile we recaigy ize the fact that the. Alle patter

is an linprovement patent, and hence not, entitled +

‘any broad degree of. protection, we nevertheless ay

of the clear Opirtion that it reveals suffic’ ent mialicia ot

novelty and invention to justify a limited : Jwotection,

“Other factors strotigly influencing, and which Wwe think

are supportive of our conelusion that) the patent is”

valid. are: (1) the: presumption of validity whieh

“attends thi® erant of patent hy the Patent Office: (2)

the rule that the burde noof establishing invalidity of

Aopatent shall rest‘on. the party asserting’ it ane that

any ypu doult will be resolyéd against) him.

o Set. C, Qe? ind (3) the further well-est: Us fishied

rule ae it. an improve ment combination is patentable:

‘ever’ though its) constjtuent elesnetits are singly re-

vealed] by the? prior art."

; Moreover ry, the commerce: i] suceess of plaintiff’. ener, .

ren t} AZ ‘acknowledged: by’ ‘the Court of Appe nals, oe re ~ th -

enhanye the presumption of validity as stated by this Con a

in ree Tire & Rubber Co. v. Ray-0-Vac Co... 1144.

v2] U.S. 275%.279, 64-8. Ct. 093, SMF:

r :

Viewed after: the’ event, the means Anthony

adopted: seem simple and sueh as should have bee

d obvious te those who worked in the fiele, hut this is

net enough to negative invention, During a period

of half a century, ino whie h the use of flashlight bat-

teries Infreasedd enermonsly, and the maunfacturset-

of flashlight cells were cCOnSetons of the ,defeet. in

them, he one devised ‘a method. of elwigug such defects,

~Onee the method was'diseevered it commended ite!

. Ys .

ne —, ’ om 4 be

App. AL p.. 31 cone * ceess iS bevend dente Rete

curing was achieved The problema «ef deg i ‘try were answere,

Tr Appears that the plaimtifl is one rf the 4: Tg marnfactirers 17

oy reels Hcagte soring -Vetems truday ’

. {

” : ; és

‘a 17.

a ; . : Pi ea ‘ / ee

Ges .- =

te the. publie as évideneed yw marked” commercial

: PRCCOSS. The lah. capes Were entitled to wepoh! tn cle

terminitg Whether the improvement amonuted to om 7.

“vention and should. inca close’ cages tip the seales in

favonr of pate ntability, Neco tinge w~ We cha tlre

find inrds a we chold the’ qaatent valhd and in ;

fringed: = ‘ .

w .

Can pares Seduene the action of thet Court af cs

“Appeals for the. Fifth -‘Cirenit. in forming its own inde. t 7. 2

cwendent opinion of inv: alidity | while: ejreumventing, “ie

eypress Statutory Jpresumption, of validity® where the eva”

denee enhances the presumption and there is neni ta the? 1

eéntrary ! ‘This question is certiinly one worthy ‘of Con ,

sideration hy this Court! | . oo - .

DO . oe ‘tw 7 8 om |

(3) The Court of Appeals erred iy siihdookae improper

test of what constitutes patental fie invention byw. failine

“to apply the test of invention. required hy Seefion 105 of >

Title’ 25 of, the United’ States Code, The opinion of thes’. 4

pals of Appeals correctly ‘stated that Section 1S af Tile. ne

| rv nited States Code, ecodtfies the st: atidarad of inv on tfay

+t forth in Hotchkiss v. Greenwood. W850, ak, ee Be * |

1 Hew. ), 15 1. Ea. G82. and lays tof rest the ‘fash of é pe

genius* test set forth in Cuno Engineering orp. V. Auto: a 4

matic Devices Corp.. 1941. 214 1. S) S84. 208. Ct. 37. ald nt Tel

_L. Ed. 58, Having one laid the round work fora preper 54 hb

interpretation of the st: atutes the Court of Appeals thers ‘: Be ‘

proceeded te ignore the statute and improperly re Hed upon * oa 8 we

the (uno case, even though the test of iniveutioit net ‘forth. - - eg oY *

in the Cuno case hi: AS been. repudiated by the sti atutory + : ‘

requirement of inverition’ enacte Viv Comurrece Alison ne nit

to this dgeision. | creas og ‘ eS ae 3

P 7 a a pe ay,

— Seétion 103 ‘of Title bed, t nited States.¢ ‘ode, was erteted ene

. by Congress in 1952 In order to stabilize the pragmatic test

of invention ae determin: itive: : ¥ P ‘f i.

‘ wad — 18 —,. ;

’

- Section

ri ° : : -

3. siete as follows:

is not if aesdliy Aine sae or aia st as sct “forth

an seetion 102 of this title, ifthe differences betworr

the subject matter sought to he patented anet Fhe prior

art are sue ‘h that the subject matter as a. whale ar

have been obvious at the.time the i inv ention Way ):

to a person having ordinary ‘skill in the art: to wWhth

- . said subject. matter. pertains, Patentability shall not

ses

: . Pe .. OR,

hey Rog “eatived by the neimner: In Which the invention

Ww as mage,

The intent of Congress, as der ived from Reviser’s Note ‘

the committee reports: and ‘the background of its enact:

nent, was to stabilize the test of invention hy ate w

the standard by whichanvention shonld be judged. thir

forestalling great departures: of the kind which appear ite

sone recent cases, such: “Ase the Cuno Engineering and

A & P* cases, and restoring publie confidence In patents.

ee.

“Both: the fons and Senate Reports contain the, follow-

ing statement: ‘ as TES as

2 Lone : : Mans

“That provision paraplirases language which has

‘often been used: in decisions of the courts, and the

section is added.to the statute for uniformity ‘u mh

- definiteness. This” séction - should have a- stabilizin’s

effect and minimize = departures which have ap-

, eared in some cases” ’ (emphasis added). :

The ate statement is an almost verbatim quoWion from

the: t testimony of P: J. F ‘ederico, then Examiner in Chief

ee as ‘ es P

se oe . ° ”

1 Great Auaavie & iy ihe Tea Co. v. Supermarket Corp. 05".

HOS. WAZ, 71S. Ct. 127295 1. Ed. 162.

a a se .

: R Rei? No, 1923, 82d Cong... 2d Sess. Z°(1982)5 8. Rep

" hoe ish, 82d Cong’, 2b Sess. 6 (1952), ;

* | a oa

rs 2 Z a? .

of ‘the Patent Office, given at the’ hearings of the House -

sube nig le Tn his **¢ ‘ommoentart on the New' Patent

Act,”’ 30. U. Av-1 et .22,; Mr. Raderion confirms that

the “great detaitures” te Which, he referred were in. the

& direction oft ‘greater str ie tness.

3 The House and Seale Reports also contain the foliow- -

“ing statemdnt, indicative of an intention on thé part of ‘the.

legislators *to bre tthe substantive life into Section, 108:.

- Aithough the principal purpose of tie bill is the

codification of Title 35, United States ( ‘ode, and. in-

volves simplification and clarification of language ‘and

arrangement and- elimination - of obsolete and re-

dundant provisions there are’ a number of?changes in

substantive statutory law. These will be explained: in

some detail in the’ revision notes'keyed to each section

‘which appear. in the appendix ‘of this report. The -

major changes or innovations in the title consist of

incorporating a requirement for invention in Sec. 103

and the judicial doetrine of contributory infringem@ut

in See, 271977 (Emphasit added). +

‘ . 4 ; a re :* . % . * &’.

On the basis of ve: evidence as outline bove, ore

commentator has ‘dra rn the, following conclusion:

og anv firm cone Jusion ean be drawn with respect

: 5 Ric a the intent of Congress, it is that Congress intended

; Section 103 to’ be the sole and exclusive test applicable

when. the question of invention was in. doubt. As has,

= been pointgd ont above, one may. ‘deduc ‘e this proposi-

tion simply from. the language of the statute itself but :

it-is believed that one cannot absorb the-atmosphere of.

‘

F ae ae 1 a z wes R

e ‘ .

“Hearings before Subeommittee No. 3 of tlanee Committee on

fuciciary, R21 Cong, Pst Sess. JR C7951) :

HL R: Rep. No. 1D: Bld Cong.. 2d Sess. 5 (1oR2 feos. Rep

No. 1979, 82d Cong., 24 Sess. 4 (10382, ,

.8R J. Pat. OF Soe'y 304, 325 (1056%, ' eae: |

fhe hearings and ‘the’ reports withont‘attaininge sora)

certainty that Congress intended Ahat henceforth the

courts should find noninvention. only, where the sub-

Ject matter “would have been obvious’ to one skilled

in’the art. In what other way could it reasonably be

stipposed that the law would achieve ‘uniformity and

definiteness’? — Unless. all -ofher tests of invention

were-eliminated, how could it be pam that section

Wr would have a ‘stabilizing effect” or xe rvecas the

basis for some additional criteria ‘whieh may -he

‘worked out*® at a later+time? Tt seems inescapable

that the ‘obviouguess’ test was established gs the ole

means of invatidating or refusing a patent for kick

of invention. “While thig proposition appears elemen-

‘tary oni its faces aud: probably few would quarrel with \

; e. ee

it, its full significance has not been realized.

, ut ,

In the present instance, the Court of Appeals ignored

the many unsuecessful attempts of those skilled ui the

tobacco. curing art to solve: the, sante problem, ignored: the

fully supported finding. of fact” that the invention of the --

patent produced a new and unobvious result: ignored the

hew wand unexpected result produce ‘d by -the combination

as a whole and or misapplied tHe stricter standard set

fortlf in the Great A & P Tea Co. case. In-so doing, the

Court of pena whesed to recognize that Seetion 103

Was intended-to temper the strict fest of those cases which .

preceded, its enactment -and refused to ‘ree ognize Section va

103 as the sole and exelusive test by whigh ‘patetitable in-

vention must be determinéd. _ : ’

Here, thy record in the District Court shows ‘that the.

Horne invention Was a major advance in the art of curing

, — ee ees somes & » i = : < a)

S Libert, “Section.103 of the Patent “Net and the, Standard

Invention: Comments on Lyon vy. Bausch & Lemb’ Optical Co

. obtained with other systems.

° - ¢

tohaceo; (hit the industry néeded the inve ution: that many

prior attempts to overcome the problems of tobacco cur ing.

had failed; that the Horne invention solved the proilem

and filled a need; and that the Horne invention was w idely

acegpte ul by ‘the Madustry. The Court of Appeals accepted *

these facts, boas

The use of. a plurality of, spaced gas burners j in a tobacco

barn created An homogeneous mixture of Air and heat ‘and

tie combined action of thes burners induced movement of

large volumes of air‘uniformly through allef the tobaeco

in’ the barn. This could ‘not be accomplished with’ one

burner, or a group of Burners confined in a stove, or with

any other curing system known at the time of the inven--

tion, To. destrey"this patent as the Court of Appeals has

‘done on the basis that pipes function.as pipes, parners as

burnersyand a thermostat as a thermostat is ries aor

“ignore the. facet that the claimed ,combination of these ele-

— nefits as a whole -prdduces for the first time new and im-

proved results in tobacco curing whgch had fot heen ob-

tained with existing eqitipment and, which could not he

\ judicial interpretation of the standard of invention as

set forth in Section 103, Title 35, United States Cgde, by:

the Supreme Court has Jong been awaited. A well written

“appellate opinion in’ w hich this. section of the statute and

the preceding law have heen carefully analyzed by. Judge ~

Learned, Hand, exists in Lyon v, Bausch & Lomb a

Co., 224 F. 2d 530, 534, C. CLA. 2, 1955, cert. den. 350 U.

O11, 1955. The following Linsunige from this wren he.

lieved to Be appropriate for this Court's. consideration:

“Therefore we at length come to ‘the question

whether Lyon's contribution, ‘his added step, was

enough to support a patent. It certainly would have

done so tw enty or thirty vears ago; indeed it conforms

}

? 4 ; .

fo the accepted standards of that time. ‘The mosf cor

petent’ workers fu the field) bad for at least ten bears

heen serkgng a hardy, tenac lous coating to pre vent pe

fection; “there” had been ca number of attempts, nan

satisfactory; meanwhile. aot hing In the imiplementsery

‘arts had been Jacking foctaut the advance into opera

tion; when. it appeared, it’ supplanted the existing.

practice and occupied substantially the whole field.

We do not see how any combination of evidence could -

more completely ‘demonstrate that simple as it was.

the change had-not been ‘obvious * * * to a person

having ordinary skill in the art’. . See. 103. On

he other hand, it nist be owned ‘that, had the ease,

qome up for deci ‘ision within twenty, Gr perhaps t®erty-

“five, years Deore the Act of 1952 Went into effect on

Januarys 1, 1958, it is almost certain that the claim:

weuld have been held invalid. The Céarts of Appea!

have Very generally found in thé: recont opinions of

the Sipreme Court a disposition - to insist upon a

stricter test of invention than it nsed to apply —indeti-

nite it Is trtie,, hut indubitably stricter than that de-

fined in See. 103: Indeed, some of the justices them-

selves have. taken the same view. ‘The Act Geserjhes

itself as a codification of existing law, as’ it certainly is

"ate the sense that the structure of the system rematis

unehi: urged. Moreover, tise decisions that hae passed.

upon it have uniformly referred, to it as a codification,

“although. so far as we have, found none. of them has

held that See. 103 did not change the standard of in.

vention. And so the Guestion arises w hother we’ should

_fonstrué See, 103 as restoring the law to what it was

when the. Court announced the definition of invention,

now expressly: embodied in See. 108, or whether we

should assume that no change Whatever was intended.

To dec ‘ide that ani it seems. desirable to look

brie fly. backward,’ ony

Jinlge Learned Vand then observeds

‘was applied ik mAny cases

"Tn Hotchkiss v. Greenwood, 11 How. 248, 267, 18

ld. 683, the Court. iuipesed an authoritative gloss

upon the Word, which’ it pat in whe following words:

‘unless more figennity-and skill in applying the ‘old

method” were necessary ‘than were possesntu ‘by an

ordinary mechanic acquainted with the business, there

was a absence. of that ddgree of skill and ingenuity

whieh constitute essential elements -of every invey

* &? a

tion: Z

al ¥ ‘ * & %

Desa: this bats ume the standard rubrie avd

*.* * the Court never

formally abjured it; nor has it ever substituted, any

other definite test. Evén Cuno Engineyring Bars. v.

Automatic Devices: Corporation, 314 U. S. 84, 62 S. Ct.

37, 86. L. Ed. 58—whieh in expression probably was

the furtherest departure—recoghized the seciph oat

authority of Hotchkiss v. Greenwood, supra, 314 U.S

~at page 90, 62S. Ct. at page 40: ‘if an improvement is

to obtain the privileged ‘position’ of a. patent more

ingenuity must be involved than the work of a me-

chanie skilled in the art.’ Again, 314°U. S. at page

91, 62 S. Ct.-at page 40: ‘The principle of.ihe Hotch-

kiss case applies to the adaptation or combination of -

old orwell known devices for new uses.’

In conclusion, Judge Hand states:

‘*See, 108 only restores the original sie: substan-

tially’ in’ ipsissimis verbis; which has never beer over-

ruled; but on the contrary for seventy or eighty Years

had continued to be regarded as authoritative.

“ai Tee lie ae ae ee are eg ed

4*Courts again and-again shift their: position ; and,

although, they .aré apt to do so under cover of nice

eee

distinctions, they impose the risk of anticipating the

changes’ upon those whe may have’ acted upon toe

“faithoof the original, Certainly a legislatuye, whos

will the Courts have undertaken to proliferate, Iritist

le free to reinstate the courts’ initial interpretation.

even though it-imay.have Deon obscured’ by a series °

of later comments -Wifose upshot is at best liazy.’

The Bauseh & “Lomb. casi has been erga in the

Fourth Cirenit, Brown et al. v. Brock et al, (. CU. A. 4.

1957, 240 F. 2d 723;.the Third Circuit, Palmer -v. ne ;

Inc., 236 KF. 2d we C2 AL 3, 1956; and by the Court of —

Appeals for the-Distriet of Columbia in L. O. F. Glass:

Fibers Co. v. Watson, 228 F.2d 40,1955, \

Other courts andthe decision. hy the Court of Appeal

for the Fifth Cireuit in the instant ‘ease take positions

contrary to the well-reasoned opinion ine the. Bauseh NY

Lomb case. This situation creates’ confusion between the

various Cirenit Courts: whieh should he resolved byw this

Court...

Kver ‘since the enactment of the Patent Net of 1992, a

judiciaryeinterpret ation by this Court of the test for me

vention stated in Seetion 103 has been ‘songht. The in

stant case presents ‘an excellent Opportunity to this Court

to resolve the existing confusion. The Distriet Court held

the petitioner’s yatent valid. The Court of Appeals re

versed the District Court, holding the patent invalid: for

want of invention. The standard of invention applied by

- the Court of Appeals was not consistent with the require.

ment of Section 10. in that, relying upon the strict test

of invention set forth in Great Atlantic & Pacific Tea Co.

v. Supermarket Corp., 340 U.S: 147, 71S. Ct. 127 (1950),

the Court of Appeals ignored: the man: ansyccessful: at-

temipts of those skilled in the art te resol YE same prob.

lem and substituted its own casual opinion of ho. inven-

g \

Q° ,

)

tion without any factyal or statutory basis. ‘ically

real practical WMS he ee

‘the simplicity of the iivention blinded the Cage to G&

Comtinentators On this question have almost without ex-

ception alined themselves in. favor of the “sensitive ap- |

proach to the problem set fy forth by: Judge Learned Hand

in the '‘Bausele& Lonib ease. ~The comments on the Bause he

& Lomb. ease may be appropriately simmmarized by the

fyllowing language from one such conmnentator:

si Applying ‘the Sobviousniess’ test, to “Sperifie. eases,

it must be observed that the eases where it is most

diffeult to’ say that the invention wenld have been

-. obvious to those skilled in the art, are thosé cases’ in

whieh the evidene® ‘clearly shows that those most

_ skilled in the art have sought a solution to a_par-

ticular and perplexing problem fer many Years, bus

have heen without sueeess until the discovery of the

patentee.* In the Bausch %& Lomb’ case, the coun

found ‘that such a long, concentrated, ahd unsuccessful

"search was present. It is .oniy natural thaf the court’

should find that it could not inive alidate the patent with-

out disregarding the test est: ablished by Congress in

seetipn 102.

“Tt is submitted that the Sicinion in the Banseh &

Lomb ease is ¢orreet on the facts as found by, the e ourt.

and that its analysis of the effect of seetion 103, cor.’

rectly understood, is more in accord with the intent?”

of Congress than any of the otdier eases whieh have -

Sonsidered the qnestion."™

he same type of “long, concentrated, and unsuecessful

search” az referred to above is preseat here. Thuse the

9 Libert. “Section 103 of the’ Patent Net and the Standard of

Invention: C ommients on. ven vo Bausely & Lomb Optical Co 38

F Pat. Off. Soc’y 304. . 328 (1956) eat?

¢ . 9¢ ; es ~

. ae _—_— . :

Court of Apoeals for the Fifth Cireuit *tcoutd snot invali:

date the patesit. without disre warding the test estabipshed

bv Congress in. Section 133"

; : ) erohe eee

“

2 as es ry . :

(4) The Court of Appeals hy holding that the patent in -

suit was invalid takes a position contrary to previons de-

cisions of this Court, since the Court of Appeals expressly

approved findings of thy District Court. tliat the. patent —

disclosed an improved tobacco curing system combining

‘old. elements. of the art in such a manner as to “IVE rise

‘to better results. 4 Oe Ee oe

This’ Court has Jone recognized that improveinermt pat

rents may be valid if new and ep results are produced.

In Seymour Vv. Osborn; oe,’ as U. S. 516, 548, the follow:

ing principle is stated: ing a

“New and useful istics are the “proper tsubjects

of an application for a patent, aind.so, by the express

Words of the acts of Congtess, ave Trew and useful

provements on any machine, All of the patents

embraced insthe siit fall under the second’ clause’ of

the. provision, and are.of the fourth class of pate nts

hefore, deseribed, that is, they. consist of a new com-

. bination of old elements Whereby a new and - useful

result Is ‘obte vined.. ea

? * 2 * * 5 oe *

. ‘ :

“Improvements for which’a patent may be granted

Inast be new and useful, within the meaning of tlie

patent law, or the patent will-be void, but the require-

ment of the patent act in that respect Is satixfied if |

the combination is new and the machine is capals le gt.»

pei ing benefie ‘ially used for the purpose for w hich its

was designed, as the laf does not*reqiire. that it,

should be of such general utility as to supersede all

(other inventions in 1 -practiee ta accomplish the same

object”

what “the test for patentability’

The more recent case of Williams Mfg. Co. v. United

Shoe Machinery Corp., 316 U. So N64, fe wlirms this Court's

position that old technic vl eOmstructions combined: ina

hey way so as to prodnee an improved result may con-

stitute a valid pits nt, it being noted that this ‘ourt deter-

mined these - findings towhe factaal.

In effect, Is : the intent Gt the dratters of Sections’ 103 and

" of -Tithe 25, -U hited States Sole ne cod ving the law

vleaned fron cupictinig Saloon of this Court to be utterly

ignyred in allowing an appellate Court to make an inde-

the findings,of fact of a District Court? Ts the “presump-,

tion of validity’ supposediy attendant upon every: patent

shel to he ‘ibused aud treated-as iv it did not existY

issued by the United States: Pittent Office only an cvmpty

This Court has yet to rule. Upor the validity of a-patent —

under the Patent) Act of, 4952 even’ thoughy seven years

shave elapsed since it ~ passage, A judicial interpretation

by this Court of the legal points hergin involved would

serve £0 dispel the r: umpant confusion now existing as to

* actiully involves, In

the absence of judicial guidance by thts Court, the Fed-

eral Courts throughout the United States have applied and

misapplied Section 103 in every ‘conceivable fashion. Tn

the present-instanee, the Court. of Appeals for the Fifth

Cireuit comprised of individuals untrained in the knowl

edge of tobacco curing and. its problems by making a

hasty decision cof inv: alidity of the patent in suity based:

tipon: purely personal impressions has traveled to arm ex

trente of “what cousfitutes invention” directly opposed to

that env isioned by the drafters ‘of Section 103. “The Patent

Bar. and the Federal Courts have long awaited the time |

en this Court would affirmatively establish Section, 103

as the sole test for determining patentability, -

pendent inquiry into the validity af a patent exclusive of | ~

CONCLUSION.

For the reasons sét forth in this petition, it is réspoct-

fully submitted that certiorari should’ be granted.

PAUL B. EATON, |

%th Floor Jehnston Building,

‘Charlotte 2, North Carolina,

Counsel for Petitioner.

Of Counsel:

PAUL B. BELL, .

9h Floor Johnston Building, -

* Charlotte 2, North Carolina.

' @

APPENDIX A.

— Tithe . ee

UNITED STATES COURT OF AP PE. S

¥ OR THE FIFTH CIRCUIT.

oe W724. Peer:

I". VE IRNON STABL ER, ne AV... ee tig

- Appe Hants,

oe Versus

Ar HIGHT LEAF INDUSTR IES, INt.,

: Appellee. ;

“Appeal from: the United States: District Court for, the

Middle District of Alabama. \.

(Noveatbor 41, 1958.) Be \

6. N

Opinion. oft the United States Court of Appeals ;

for the Fifth Circuit.

~~ Before Rives, Brown, and Wisdom, Cirertit Judges,

‘ ; : .

he plaintiff, Bright Leaf In-

dustries, sued the defendants Tor patent infringement. ~The

qatent ino suit, issued to. Gilder S, ‘Hoxne,, Junes 7, 19407,

. eovers an improved system” and apparatus. for curing

Wisdoni, Cireuit Judge:

~* tohaceo, The distriet court, after granting a temporarg:

2 injunction, held that the defendants had ee the

won The

défondants argue that (1) the Horne patent is invalid for’

patent in suit and. issued a permanent injun

want of invention and (2) prior anticipation, and, im any

PeAt the time of the inventioni ipa Ww: san ceeer in, Rilane

| Gas C mpany. Thé curing. system was trst put on the marker 1

e Re pak @oand subseanently Beight Leaf id l-tries aoquired riehht. t °

ar tn 7s

‘ ; , e e

event, there was (3) non-infringement. We. reverse -the

* judgment on the ground that the. Horne patent is nV: “alid

for want of invention" | . ‘

The ‘Horne patent provides for a plurality. of preperly .

Space ed Us. burners within a barn where ‘tobacco leaves

are hung. The! burners are operateds from a’ common

source of liquitie -d petroleum gas, and the ———- is

regulated | by meats of: a thermostat. The burners are’

piped together. The thermostat regulates the, flow of was

to the butners in accordance with the. temper ature within’

the barn. - A perforated: cage’ member is fitted e¥ereeach

hurner, In each cage member there is a. ae to holed the

water given off by the leaves from the heat of the burners.

“The water is then, evaporated ‘in the pans. — That is the .

Horne patent. .

Tobacco euring is an old art. - Although .the methods

of curing have differed, the theory of curing has never,

changed. «uring is predicated on the nse of he: it to be

the tebacco, Jeaf. Thee system embodied in the Horne

patent is no ‘dj erent. .Prior curers, however, had) many

disady antages. =. Some required: too much heat in curing.

es ng ‘caused uneven curing. In some cases, the introduction

products ‘of combustion resulted in contamination of

a af It was difficult to control the temperature in)

the’ units and the barn. The use of oil fuel created wi

wanted odor s, and soot, It created a fire hazard if the

— flame was open. ‘Low aif movement caused excessive and

uneven curing. In the main, the di ficulty Was to find a

clean fuel and a way to control the het so as to get ever

euring of the leaf. The art evidences, numerots attempts

to-overeame. the disadvantages, to construct a-cuting <y>"

tem that wonld solve these problems. Horne did it. The

use of liquid petroleum. gas offered a clean odorless fuel.

_ a fine curing atmosphere. The plurality of gas burners

give increased heat volume and even heat distribution,

vd 4

‘)

Awhile thie use of the thermostatic device provided a means:

far evenly controlling. the, tempers ature in the barn.’

All eft the dividend elements of. as isa. jiatent vare

admitteddy old. They were known and used for vears in

one form or anoth r. Gas fuel was avail ible, but not used

stlece sssfully. The plaintiff claims i inve ition Hes in’ the com-

bination of the elements. Thé neat of the patent is the

use of Hquid petroleum was with the eas burners, controtled

by the use of a thermostat. Its commercial’ success is’

_ beyond doubt. Better curing-was achieved. The problenrs

‘of the industry vere answered, ;It Appears that the plain-:

tiff ‘is one of the largest manufacturers of ens-fired tobacco

curing systems today. /

The individual defendants, “Kh. Vernon Stabler, - Mrs.

Stabler, Hendrick and Getes, are the owners-of the defeid-

ant corporations, Greenville Butane Gas Co. -and Colo-Rité

Manufacturing Co. After obtaining information and litera-

tive on. the plaintiff's turer, they began to mannfatture

“thebe own curer which is onbiteitiate the same. It has

a plurality of eas burners spaced in. the tohacee barn by

_ branch rit Their curer utilizes: the same means. for

regulating: gas and controlling the

ry : p 2 °

eurer;. the birners, heat spreader ant. perforated: Care

embers are substantially the sae a

{ ly es

lames as the. plaintifty

The tie patent Is a combination patent’ Tt is an ims.

proved: system: conibining old cle ments of the art. in sueh.

‘a manner so as to vive rise to better results, ~ The question

in all. such cases is whether thre improved corubination of

old elements can be raised to the: dignity of invention. i\ “as

the addition of Jiquid petroleam gas and ‘the thermestat

chough to support acpatent?” We think not.

In the 62d case of Hotchkiss v. Greenwood; 1850, 52 ULS

M48 (11 -How.), 18 LocEd. 683, the court held “that a edm-

iuation of elements does net constitute an Invertion if Hs

; % creation required “6 more ingenuity and skill than that

\ ‘possessed - by ordinary mechanics acquainted. with the

‘business. ’* Section 103 of. the Patent Ace of. 19922 codifics

the Hotchkiss ‘‘mechanieal skill’? rule -and attempts to

: lay ‘Ye rest the ‘flash of genius’ standards of invention,

ie Palmer Co. v. Luden’ s, Inc., 3 Clr, 1956, 236 I. 2d 496.

Inventions: require close scrutiny awe patent monopolies:

be granted to. ‘each slight ‘technologival ddvante in av’

nat’? merely. becainse it ixeuseful. Cuno Engineering ges

P __v. Automatic Devices» rp., 1941, o14 U.S. "84, 62S. Ct.

| 86 ge Ed. 58: Here, Horye found that. liquid ean

s provided the-art with ~~ and odor-free fuel. A:

jicuteaund prov ided: the answer ' controlling the tem-

perature in tobacco barns. Horne rained the well known

. nese .. ‘deviee of.a Bunsen burner, wxing a conventional connec:

s 7. ten seems to us that he simply added. ed: together ‘several

\ , old elements, ‘each independently ‘usable... Each functions

in its own way-and there is no new éoaction het ween the

“elements. No doubt the result-is ‘a tobacco eurer that

functions betterthan other curer¥. Such a functional differ-

-enee, however, : Soe ‘sufficient ‘to sustain a patent. The™ ,

combined result? were a mére aggreeati + uf old elements

requiring no. more than meéhanical skill. “As was ‘said in-

Lincoln Engineering Go. v.,Stewart Warner Corp.,. 1!)::8-

805 U. 8. 545 », 58'S. Ct. 662, 82 L. Ea. 1008. “The mere

*- aggregation of: known or old parts or: elements which 1

the aggregation performed. or produced no newand ae oa

ent function or #peration than that theretofore pe srformed

or BEANE by them iS not patentable invention.’ : |

ng , ie sad ;

ee "A. patent may not be obtained though the invention Is net

identically disclosed or-described as set forth in sectian 102) af. yn

J title, if the differences between-the ‘subject matter songht ste be

‘“ "patented, and the prior art.are such thar the subject matter as

-+ whole would have been obvious at the tina: the invention was mee |

to a person, having: ordinary skill in the art to which said suhie

matter pertains. Patentability sla got be negatives by the manne?

te which the invention was mate.) .35 ESCA 103... ‘

The essential factor or ele ment of invention is not estah-

lished by the faef that the combination of: elenrgnts has

produc eda system, or Appar itns that iS More. ruse ful in the

art than any pretexisting system. Altoona Publix Theatres

v. American Tri-Ergon.Corp., 11135, 202 U.S. 477,55 S. Ct.

foo. 791. Ed. 1005.2, In. the Altoona case, the (ourt he ai

thatethe addition of a flywheel to a-st tandard FOU nal record-

ing device, giving the needed uniformity of speed, was not

hivention. * An improvement to an apparatus or method,’

to be. patentable, must be the result of inveltion, and not

the mere exercise of ‘the skill-of the calling or an advance

plaigly indicated by the prior art.’ The Court said at

the use’ of the flywheel had ‘heen the standagd procedure

for a long time for securing, uniformity of motion. Thus -

‘the addition of the flywheel, no matter how &kilifully done,

no matter how useful in the art, was ‘still the product of

skill, not of invention. a Powerg ee Corp: v. Con-

crete M. S. C. Co., 282 US: 17, ASG, 75-1. Kd. 278, 2N6

(1920), the court said: . Lian

‘For, these reasons we find that the patent’ (for a

concrete conveyor using compressed air) is invalid. Tt.

consists of a combination of elements all of which were

old in the art. Its applicatign to the transpertation of

concrete did not involve invention. Neither the com-

hination- of old clements or devices accomplishing HO

‘more thancan- aggregate of ol results (citing cases) .,

nor.the use of an old apparatus or appeal Ince for a new

purpose ix. invention.

« In the case of Keystone Driller do. Vv. Northwest E. Corp.,”

04 U.S. 42.090, 79 L. Kd. 747, 752 (1985), the court-said:

AV tare Convitic ed that the fix: ition vf the scoojr (in

“an exeatidtar) to thie stiek ; the pivoting ofa drop .

~ bettom near the front of the scpep, and the addition of

crake teeth at the sides of the SCOOP, Were all old) in the

-art and that the coinhination of them and aylaptation

‘ se *, : , Re : ‘

a *

. °

r : P ay

. ‘ ® ; 9

» ,

7 . f = ?

bad . ‘ .

of the combined results were a mere aggregation af

old clements requiring no more than mechanical skal,

and were not, therefore, — able invention.”

The sili “ase of Great Atlantic & Pacific Tea Co.

v. Supermarket Corp., 1950, 340 U.S. ae. .3t BARRE

- 95 L: Bd. 162, g guides the line we draw le tween mechanical

skill on the one hand and invention on the other. © in the

A & P case, the patentee improved the familiar moves ible

checking counter that is found in our supermarkets tockiy.

The Court: held tht patent invalid’ for want of Invention,

The language of the Court is important:

‘A patent for a combination which only unites old

elements with ne change in their respective functions.

such as presented: here, obviously withd. aws what

already is known, into athe field of its monopoly -and

diminishes; the resources available to skillful mens

This patentee has added nothing to the fotal stock at

knowledge, but has merely brought together segorents\)

“of -the prior art and claims them in congregation as a.

monopoly.

“The Court of: cil and th# sonmondann both ;

lean heavily bn ev idence that this device filled a long

felt.want and has enjoyed commercial suceess. , But

commercial*suecess, without invention will not make,

patentability... . . -The courts below concurred in

finding that every dowel here ¢laimed (except exten

. sion of the counter) was ‘known to prior art. Whien.

for the first time, those elements were put to work fer’

the: supermarket type of stores, although each per-

formed the same nrechanical function for them that it.

had been known ‘to perform, they produced resu'ts

more striking, perhaps, thanvip any previous utilizes

tion. To bring tliese devjces together and apply then

to save the tame of customer and checker was a ‘good ,

idea, but seores of progressive ideas in’ business are

’

K . 26 ad : s 3 .

4 Pe

. : ‘ : ry a ass .

Roe

_ that he had invdnted dew precess but rather an pparat ns,

‘5 ~

ae pate ntable, onal we conelude on the findines be low

th: at this one Was hot.’ ;

Horne contends that his eurer is predic ated Upon a meas

inventive concept: Prving, istend of beating. using Jow,

even controlled’ heat. The el: vim is somewhat similar te the

claim for **so-called balanced. heat throtigh substan-

tially “even distribution of heat** advaheed in General

Motors Corp. v. Estate Stove Co., 6 Cir. 1993-201 FL 2d

f4o.%Phe court considered that the claims with respeet to

obtaining balanced heat were too indefinite to. sustain a

finding of validity on this asvect of the patent. With

varying degrees of success all tobacco cure rs use heat for

drying ‘tobacco leaves and -altempt to sec ure even COn-

tiutled heat. It should be noted that Horne Fid not claim

‘tor earrving out A process, e P

I may be cirsy, to say. now that whit Horne dia Wits

simple and obvious and Rat a problem once: solved appears

as never having presented difficulty. “On the other hand

it ix alsp Casy to say that a successful, pe rhaps amazing, re-

swt must have been the result of an invention. We liaye to

eschew both these not unreasonable points of vie wot

test the validity of a patent in the light of the patent law

. as it’is applied in the courts. As stated by this Court in

Butex Gas Co: v. Southern Steel Co. (1941), 123 F. 2d V4:

“The main idea is io -coMbine all of. the Necessary:

Valve gauges, ded other safety ‘appliances into a single

assembled unit. Applying the rnle thus authora-

: tively settled by thie Court, we think no invention is

shown incassembling those old élements for the pur-

poses deGlared. No new function ix evolved from the

* combination; the new result, so far as one is achieved,

_¢ tivonly that which arises from the well known opera.

_ tion of each “one of the elements. From the vo-

s®

“vee

wotp

- . .

operation of the elements here brought. logethy

. new results, involving the exercise of ereutive Pereny ty

whieh #S invention is achieved. *

Mh this "ase Horne put toge ther gas pipes, Bans

bnrners. anda the rnostat to produce” heat and? spaced th

burners evenly, as anvoué would. The’ pipes, the | ETS,

Sand tue th¥rmostat do net) perforin: any additional

different funtion in the combinati

n than they. do out of i

. - « i

Horne’s tohaeco cures may be an effective avd? use! ul.

curing svstem. As We see it, however, it was an ‘obvious

application of gas to tobace 0 curing, a plumbing Operation

that siaesinah ony mechani “al skill, = Fee Rae cs

Our view that ihe patent ix inwutid makes it tiinecess: ry

for us to disenss the qtestions of auticipation and ifring:

Me, Le . si ; , ‘ :

Tle Judgment is reversed, Ta i ie!

na ‘

? .

Ps : :

7 & ‘ Z .

7 5 *

ee : s "

° e <

‘ ! *

. & 2

> ¢ ;

° t

é ‘ ‘ ‘

~ 8

s '

he ‘é

if — °

‘ 7 ’

el . a * :

APPENDIX B.

Judgment ‘0 of United States Court of Appeols

for tHe Fifth Circuit.

. ae.

d,. TOS

MxXtraet from the Miastdu: of Nowa 4

i. VERNON STABLE H my

versus:

BRIGHT LEAF INDUSTRIES, INC.

” This cause Came on to he heard on the transe rit of thie

United States District Court. for the

and Wiis argued hv counsel:

record. from the

“Middle District of Alabama,

On Consider anton Whe reef, It is How ‘hege ordered and <

ailjudeed by this Court that the judeme nt of the said dD)ps-

triet Court j 1h this eanse be, and the: same Is hereby. re. °

versed; :

It is further ordered and pai that the appellee,

Bright Leaf Tudustries, Ine. be condemned to pax the

e : >

P this ¢tiuse in this Court for which exeentiat; Thay

COstsS

he-issned Gitoof the Said Dis triet Court, ,

> ‘

’ ° .

; ©

> Pe

>. | | APPENDIX C.

Bright. Leaf Industries, Ine., .

-% Plavigggi ff.

¥. “Vernon Stfbier, J. G. Hendrick and

Wee. Gates, Individually: kK. Ve

“Stabler, J. G. Hendrick, and Vf

Gates, a ages Doing Business Vi

dei the Name ane Stvle of Colo-Rite

Wanabustorlne Company ; Colo-Rite —

Manufacturing ‘Company, Ine. a Cor-

poration; and Greenville Butatle Gas —

Co., Ine. 8 Corporation, Separately | *

“and Severally. wee

| Defendants.

United States District Court.

, Middle District of Alabaina,

Opinion. |

ae December 17, 1957.

Katon, Bell, Hunt & Seltzer, Charlotte, North Caren

Jennings, Carter & Thompson, Birmingham, Alabama. ©

counsel, for: plaintiff. ’

~Bacoy & Thomas, Washington, D. C., Edward Tatin

Newton and. George M. Hopkins, Atlanta, Georgia, ‘Poor

< +“ ‘ 6 . .

—& Poole, Greenville, Alabama, of counsel, for. defendiint-

eholinson, District Suid xe,

The above-styled causé, coming on to°he heard, war

tried before the Court without a jury .on the

made up by the pléadings and the proof.

Issues cis

°. i

Upon consideration oof the evicheee, conisist ing af the

eral testimony of jseveral witnesses, the exhil bits, several

depositions ane the -tipnbations entered Mita. hy ane in...

hve noth TINT OS, the Corert ra re paceoads to “rake atid

Ineerpordte. in His’ moenmiorandin Opinion the: sppaepar late

ndings of puet ancl coneynsions af tsa

Thee yeliintith, Brit, Leat Tndustries, Tne. a cory prorat ian

Y North Caroline, brings this suit for infringement of ;

Pnited States Patent Now 2472584, insted ene dane 7. 104e.

tu°Gilder S. Horne: said puitenT Was. prior te any of the

events Goncerned: inthis stk tissigned by the original pat

ttce lo this } faaetrtill." rit. uatent pert bitin Yaa wah Iripsrovent

Vee an and Ap oaratis for cori tobe it tobacen Tans

. !

liv oy woviding wa plurality of property spaced gis ch urners

_ wt ith % the Verne, sata bitte re te be Open; ited trom a sourese

‘of Jie ptt: fre] petrodenm its tind with Aon automatic. Lesripeeraa

ture resniating means, 7APhe claims set out ip the jssned

patent are as followsy i :

me A tobacco euring -Vetem ‘for cure «

tang ina barn Pugh aqplurality of gas

ehaece

ieirhers

isposed Within: barn, %} Jurce oft ofits lis posed

“On the exte ‘ior “of ee beares sti n “piped | comneet tot

lhe ‘tween the vay: waft ¢ wis nicl thre igre Irs, Si |) poe ul

CO} neetiony comprising a bigdany yelp oNternia ig alone

the barn and: having braneh pipes-exrending from

+ “opposed » sides thereat, encod fatieh prin + ing con

nectiad to ao i! ndiv ida: r Durie r, the os Iv wig aft-

posed ao substantial distance from the walk tof the,

Anitrny smeans associated with cach: of the burners for

regulating the flow or gas therete, a cortrol

the piped) Conieetion and tems

“means disposed within the barn and connected to said

control valve for partially opening or Viotne e:

valve to Ahereliv regidate the tlow! of gas to the

Surhers in accordance with ther temperature Within

the Varn,

ae . . 40) Ae Z 1 °

eae as

“2. Apparatus for heating a tobacco barn, for evr

aan ing tyhaceos dispose ad therein eamprising a plural iligy

of x

> «distar

burners disposed within the barnea substasth

way from the walls of- ‘the barn, a souree of

gascow the exterior of the barn, a main. pipe lea ting

from the source of gas along a ceutral portion of the

barn, individual tranch pipes leading from the main

: pipe to e: ich of the burners, a flow control valve dix.

’ posed in said pipe and temperature responsive meats

: disposed within the barn ard extending to said vaive -

— for partially opening or closing the valve to tigteby

se control the flow of gas through the pipe, te the | es

| by and a perforated cage menpher disposed over each

! the burners.

“3. Apparatus for heating a tobacco barn for curing

tobacco disposed therein comprising a plurality of gat

burners disposed within the Darn and Sprite aosuh

is stintial Alistance away from the wails of they!) f

source of gas onthe exterior of the barn, -a mai Thin

; leading from the sourée of gas along a ‘cohtral retien

of the barn, individual branch. pipes extending from

voth vides of the main pipe to the Dimers, a

control valve disposed He sald main pipe and tenipers

iare responsive means disposed within the. barn and

extending to said valve for controlling the saze of the

opening in the 4 ‘aly e to thereby control the flow of gas

- through. the pipe to the burners, a perforated eaige

member, disposed over each of ethe burners, ai wet.

disposed: within cach of said cage ap agti and above

said “burners for holding water to be evaporated }

he heat from the burners.

weg, A tobaceo curing system for curing tobaced,.

hung in a barn cohiprising a plur: ality of gas burners

/ disposed within the barn and = spaeed a. prinen

_ distance away from. the walls of the barn, a source i

gas disposed on the exterigr of the barn and a piped

anes Lt

connection between the sgurce of gas and the hiftiic 1S,

Meals associated w ith exu@h ofAbe burners tor re sorulat-

Ing the tlow of ozas. thereto, a control valve ta the J

jiped) comnection and temperature controlled means

eo. e, :

disposed Within the barn ‘sad eGnuceted to said valve.

means for -cortrollind the size of the obening ia the

valve to thereby control, the flow of gas to the brrners

in accordance with the temperature within thie barn,

and a pertorateds cage Wember disposed « en the floor

oft the harn and completely enclosing said burners to

shiedd them. uvainst ai falling. tobadces leat lodging

thereon, said piped connection comprising a main pipe,

and each Burner having a ranch: pine connected te

the burner and, to the main pipe.

. hel ee

“A tobacco curing’ system for curing tobacco

hung in a barn comprising a plurality of gas burners

Hisposed within the barn a substantial diets ince from

the walls of the barn, a Souree ad gas disposed on the

exterior of the barn sand atpiped connection -bet ween

the souree of gas.and the burners, said piped connec-

tion comprising a main pipe disposed substantially

centrally of the arn, and each burner havinga brinch’

pipe connected to the burner and to the main pipe.

means associated with each of the burkérs for regulat.

‘ng the flow of wits thereto, a control valve sin the

biped connection, temperature controlled means ¢dis-

posed within the barn and counected to’ Said control

valve for controlling the size of the opening in the con:

tro] Valve for regulating the flow of gas to the burners

in: accordance with the temperature within the barn,

and @ perforated cage member dispesed oyAhe floor of

the barn and completely enclosing said hurners to shield

them, against a falling tobacco leat Khdging thereon,

each of said cage members having a pan in the tep

portion thereof inte ‘Aghich water is adapted to he

vlaced tbe evaporated by the heat trom the burmers.??:

Naw

f. a : °

: : Pe ae 4° iar

3 i « . 3 : 4 . ; e 2 . :

, This Court, upon proper-complaint and bond, issued a

temporary injunction against’ the defendants’ alleged in.

fringement of said patent. Plaintiff now seeks. to have this’

. _* ~ : @ . e

-Court make the injuuction permanent, enjoining the-de-

~ fendants from further, infringemetit of said patent; seck-

san‘ aecounting for profits made by the defendart- a- rr

preximate consequence of said infringement; seeks treble.”

damages for defendants’ wilful infpngement;-and also

seeks attorneys’ fees and court cogts for prosecuting: this

action. ;

The defendant Greenville Butane Gas Co. Tne. is an

Alabama corporation, having a regular ‘and’ ortablished

place of business in this district. The stock in this corpera-

tion is owned by the individual defendants, Stabler, Hen

drick and Gates, together with Mrs. KE. Vernon Stabler. the

wife of the defeidant Stabler. Mrs. Stabler is inactive 41

- the ma

the management wf the company... The individual defend

ants, Stabier, Hendrick and Gates; actively control nil

manage the Greenville Butane Gas Co., Ine. The: defend:

ant Colo-Rite Manufacturing Company, Ine., is can -Ala-

bama corporation, ha@ing a regular and establishoit place

ot business in this Mistrict. The individual- defendants,

Stabler, Hendrick: and Gates, own all of the issued stock

of the Colo-Rite Manufacturing Company, Ine., and’ the in-

dividual defendants actively contro] and’manage the de-

fendant Cole-Rite -Manufacturing Company, Ine. «The to-

bacco. curing system, as patented, was first used in North

— and South Carolina in the sunimer of 1946. Tt was put on

cet and sold in these two states in 1947. Since That

he plaintiff, Bright Leaf Industries, Ine., aceuired

‘ights to the system as patented and has actjvely manu

date, -

oie

ured and sold the patented systems in large numbers

‘tries. From an examination of the claims as set out in tlie

‘patent, this Court finds that the tohbaeco euring apparato-

tliat has heen and is now being mannfaectaged and sold by

Hroughout the United States and in several foreign cow

=< ilips

pub ic, and over ap

. re fall or early spring of 1952

Karly in 1954, these defendants commence

This nanufacturing and sellng

—45 —

the plaintiff is covered by the claims as set out in the pat.

ent in suit. Tt appears from the evidinee that this: curing

“systent lias heen Nvorahly aecepted and received) by the

built up a large and profitable business based npow tie’.

commercial snecess of the patented: curing. system AS a

ntitter of faet; it papperars that ‘the plaintitt ix the. largest

atiufacturer of eas: fired tobacco curing systems In the.

‘work I. ‘ .

On or abont June 2.1950, the defendant Hendrick, ; a

“ing for and on behalf of. the defendant Greenvill® Butane °

Gas Co., Ine. , Wrote to the plaintiff and requested informa-

tion about the plaintiff's patented curing system, ‘’ Jaintit?

rurpished thegrequested literature and information, Which —

was marked with patent munber 2472534. Again, in Feb.

ruary of 1951, ie detendan® Hendrick wrote the plaintit?

and; as a result of his Inquiry, received further inform i

tion on the Said system.) This information ,was. also

_ barked: with the patent uumber. In March of. Tos, the

defendant Greenville glekc vO Co.,"Ine., ordered acon

plete svstem from, the plainti

with operating instructions also bearing the’ patent mam.

i Later in 1951, the defendant Greerville Butane Gas

, Inc, ordéred an additional. init from the. plaintiff. Iy

the defendants Stabler,

‘idually anid, as¢officials

Hendrick and Gates, acting indi

and stockholders in the defendant

commenced to manufacture’ theg: ov

to manufacture

and began selling such enrers wgider ‘the-name-‘Colo-Rite.

‘of these. tehaeco @urers

Was initially. carried on by the i iv dual defendants, Stab-

- Hendrick and Gates, find hy iets through the Green-

it Butane Gas Co., Fue. In August of W954, the plaintiff

hy legtér advised the defendants that the aeColo-Rite’* cur-

‘ing svstom- was ‘*probably’* an iafringement’ of plaintiff's ~

| l is |

giod of several vears the plain tur lies }

This system Was ‘shipped .

Butane Gas Co. Ine., «

curer for toBacco.

“2

‘

“patent rights! In February of 1954, Nie individual detend |

corpiration ( i Rite Manufac turing Yompany, qne. Th .

new corporation was formed for the solk

facturing and selling the tobacco curitig’ apparatus they:

claim was designed by them. The sum of $1,500 was paid

\. into this tiew corporation and it was paid in fron the:

‘wssets of the defendant Butane’ Gas Co., Inc. All funds torr

thie aperation of the ‘Colo-Rité enituturion' Coinparix,

Ine. ime ‘from the defendant Butane Gas Co., Tne., or

fromthe loans obtained by the last named corporation

— the_signature or endorsement af the defendant St; ih.

The defendant Colo-Rite Manufacturing Company.

ag being oper rated by these individual defendants, con:

- tinued to manufacture ¢ and’ sell-the curers that plaintiff al-

leged infringed\their patent curers until this Court issued:

its: prelimittary injunction. Practically at all, if not at_al!,

times sinee ‘its formation the defendant Colo-Rite Mannu-

fi uw turing Company, ‘Tne., and the defendant G Penvilie Bu-

tane Gas Co., Ine., have oceapied the | came offve

used the same empires

Jo ° RARE tee oe : rr a

As Stated above, the invention of .ae patent in suit per

tains to-a gas-fired tobacco euring system based upon a.

purpose of micatiy, *

‘espace and

new concept of. curing wher ‘ein, low, even, carefully. con- °

trolled heat and higi*nir volume are utilized to obtain new

and improved. results Mtainable in prior systems using

‘ high heat and relative lv low. air movement.

The elements set fortii in the five patent claims work

together in-combination to produce. new and unobvions r-

sults heretorore unobtainable, At the time of the inven:

' tion, tobacco curing was a well- know n and highly. devel:

oped art, and many types of eurers,: ‘hoth patented and ii:

patented, had beer used with varving ‘resnuits. These euy-

‘ers ean be Glassjfied into three broad types. First, the

flue type of curer utilizing flue r i es Extending into a barn

i ]

; af <i “}

; 3 * = | t

Sf te "

o f t

~~ fer -+- .

q.- « 2 py 7

cs h - .

and inte Whieh hot air is ‘introduced to eréa ate srydiqns heat 2

within “the fiarat, The hot air was first prodeeid hy al wood

fire ina Seismic Mclemctdll to’ the thu, atl datew joy ‘wil

bux ners uA cowl stokers. Very urtle air ya's mowed: within

* * “fhe ban ‘and the tobacco WA cura priniarily, by. heat

TT adiated from the flue pipes ex ;

ay. A second type off curer utiliggy, “ai plurility of indepe mad-

ent gravity fed, wick-tyyzie oil buraier each, having a vent

stack matending through the rool “é Ae barn for venting:

away a ‘portion of the fumes ‘and products at oll comlnus-

tion. A third type of. curer ‘utilized a plurality of. stove

units, usually for, spaced one adjacent two ench corner. of

the barn. Each, stove ——e, coptained four or more ineli-

vidual oil, burners which cred d concentrated heat at each

stove, In some Instances, excess air was intraduced ad jac

,e ent to each stove, « * ;

i. ; i 3% . e

These prior curers had many disadvantages, such as tl

use of excess heat in enring, thé introduction of prodhe

of “combustion and partial combustaon. inté the barn re. *

cultine & contamination of the tohacéo being sured. dt

Was’ also ‘exeoodtingly diffienlt iff not ‘impossible to ade-

quately controt the temperature of prior units. Many of

these units utilizing open oil flames constituted a fire daz’

‘ ard which w as Aue, in part. to het: to adequately

control temper ratures. The low air movement of most of

“these units resulted in excessive curing times. The initial

cost-and short life of most of these prior enrers as well

as the labor cost involved in the jnstallation and operation

of the unite resnited in excessive costs of: curtng, Fie-

quently, poor results. were obtained ‘due: to nneven curing

in certain areas of the

harn, ANEOSSIVE “hent. contamination

‘ el es

tkee . rh i

hy soot, oil fumes and t

oe 0 e :

The use of liquid fuel.in fhese rior curers made it very

diffienlt to geontrol temper tures. as it was Tecessary. fo

poe a --- 46 —-

maintain each burner absolute ly level,.and attempts to he

tivrmostatic devices were not successful.due to the hite ‘kup

: of: liquid-f€uel in the line and ‘the’ requirement of electric

service for adequate thermostatic control, ‘The’ upkeey

and replacement of these units constituted an nereidtse iy

cost as oil burners after slight wear tended to burn ir-

regularly and introduce “soot, and smoke into the | wary

The danger of keeping liquid fuel hoth inside’ and Outside

& barn. created a constant fire hazard. «In using high)

mperatur e, much waste heat was vented: out of the barn,

resulting in increased fuel costs, and the inability to prop:

erly ‘adjust, the v rarious burners resulted in uneven heat

and tobacco whieb was tmpréperly and unevenly cured.

“The indastiy, for years, lias worked to trv to ove repine

_ these. disadvantages, and in s6me: prix yr curers one or mere

of the disadvantages. were partially overcome, but insofar

as the Court is aware no curer prior to plaimtiff’s inven-

‘tion successfully over reame. all of these disadvantages.- The

art is replete with nuinerous' patents and attempts by others:

to construct a@euring system which would solve these prob-

iems.. Almost if not all of.the individual elements of plain-

tiff’s svstem were known individually for years yd gas

ars prior, to

fuel ‘was available in this area for some

plaintiff's invention, vet no one priér to plaintiff had the

inventive concept of combining these. elements with thir

particular type. of fugi to prov vide a new system “wherein

~Jow heat and high air movement are ytilized to obtain even

enring, resulting in: ‘heaviey and better grade tobacco.

The WAS curing system the ere claim to have per-

-feeted, which they’ manufactured and sold, is practical’y

identical, with the patented system of the plaintiff.

q has

a plurality of gas burners, to be -disposed and spaced

* the tobacco barn by branch pipes; same means: for regir

lating gas, controlling the flame, same type of contro!

‘valves, Same type of burners, heat) spre aders, perforated

we , . .. .

‘age pon rs, and the general lavout is practic ally. identi,

cal to the ~ystenh patented , hy the plaintiff's assignor,

Prior to the istitution of this snit and on September 10,

16, the plaintiff eave formal notice to the defendants that. Seika!

it considere d the product being manutae ‘tured and sold. by

these: ef fendants to be ati anfringement. of United States .

Patent No. 2.472.534. The de fendants were by said) notice o

called upon to immediate ly cease from further infringe- |

ment of said patent. . The defendants untit er res

tused to, cease: the manufacturing and selling of. their

? ! &

‘To the ‘plaintiff's claim, the defendants dens infringe-

“ment and say that ‘the plaintiff's patent ix invalid upon the

crounds thay the subject: matter and all material and sub-

stantial parts of plaintiff's apparatus. had heen previously i

patente he defendants also say iflirmatively ‘that the a 4

application for plaintiff’ s bem failed ta describe ani Bie 7Pa 13

“elaim as- required by Title 35 2 of the U hited States A

Vode; *hat the patent apintieaed knowingly described and

claimed more than he had invented: that the subject mat. +" i

ter of said patent Was in public use for over one Vvear prior ae |

to the original application; that the patent applic ant con. -' : i

vealed material faets and made nfater tal misrepresentations: ree ‘

te exathiners, thereby making said patetit rights unenfores- 4

able, and also that the plaintiff lias been and is.now mis" 7 ‘

> Using the patent in -ilegally attempting to extend the | 4

rights conferred by said patent. The defendants.also de nV : ; ‘

plaintiff is entitled to any -damages eve if the patent is : ;

valid and. even if they have infringed it, siid denial being = - f

predica ted. pon the dlleged fdilure of the plaintiff to vive |

notice to: defer dants, ils required by Title BOS 287 of the

United. States ( ‘ode, |

More seca cate, the. defendants sav’ the curer they J

manufac ‘tare does not infringe the plaintitf's pate ut rights ae

- - ° e

° i

ae MoS NG iis a Soa. Re i

ae it hit , :

even af plaintiff's patent Is held to i valid, Earaane |

_ defendants’ -eurer has a main pipe: ttatcone end’ ot th

barn but “not. along “the central, _ portion” of the es

“that. the det ‘endants’ apparatus bas the Durners iat series”

instead of ** parallel’; that the defendants’ structure bas

= valve which is, as ix plaiatiff’s structure, controlled jy”

“thermostat but that this valve completely closes, wheres

: the plaintiff *s valve only partially Closes; that the pan or

heat: spreader of defendants’ device. is on the outside ‘6

the perforated cage member and not ‘twithiin’’ the. cage

member: further, that the perforated cage meniher of

the defendants’ structure is not ‘son the. flogr’*’ bat is <ue

pended from a metal frame which rests on the floor. The

defendants: also claim that the plaintiff's patent is ue

valid because of the oral testimony of certain witness

taken be deposition, which testimony the defendant say

reflects that the device plaintiff claims to have patente:

was in public use in this country for more than gine year

prior to the fillng of the application, for the patent, wsitid

-applieation having ‘been filed ‘en. August 12 » 1946, Ergin a-

Close study of all this testimony, this Court. is of the opin

ion that the testimony is insuffieient to sustain this positye

> of the defendants. The testimony is vague, nnsubstanti.

ated by any documentary, eyjdence, and, at best, tend» te

show that there was snide akc siaa seclation going ati by"

ecrtain individuals in an effort to perfect the gas fired

tobacco curer, such as the plaintiff's assignor, patented.

Farther, the defendants state that plaintitt” s patent is i

viiid within the meaning of Great Atlantic & — Ton

ela a - Supermar ket Equipment Corporation, 340 Ul S. 145

71 9. ('t. 127,95 LL. Kd. 162) since the claims of plaintit®: :

patent define a-combination of old elements each perform

ing their old funetion and therefore define nothing new er”

novels and, further, that said system achieves no new ane

unexpected results. In support of this contention, 1!

. defendants rely upona large uniber of patents as follows. |

Uo. Patent Nov

rm 40 StF

LATAO5T

OS OTS -

L4ASs24

TOSO.386

1.667 512

—1STEOSO

LS7),7833

188449

s 21S 204

2.051348

JAL4 004

. 2.1 445

21SSS43 |

2139344

2164511

2170.73

~ 2180,789

216.075

: =n ae

Patentee

Ww. B. Bastian

JC. Gillette

J0 0. Broek

iH. Dyake

‘Gi. Q..

iH. Smith

A. Friedman

G. Kk. Burns

, Roberts

. Smith.

de Mayo F

. Hardgrove

*, Rouse

Andersen

. Furlong

. Spikes

». Browning _

. Henderson .

. Spikes

» Mavo

* Mott ot al.

. Faber

2 Mayo

2.331.476 I. A. Jones

2.470.996 WoL. MeGrath

o 257350 W. Smith, Jr.

1,509,902 Reyiiolds

1493,889 Mims

65.051

Fizer |

Craikshank"

August 16,

July

- 1D: rte »

October Ss, 1912

larch 28, 1916

February S, 1921

March 25, 1924

June 22, 1926

. April 24, 1028

POP T9R1

1932

June

November 22,

12, 1928

Auge By 1936

preg ly be

Angust 16, 1938 —

November 1, 1938

December 6, 1938

July 4, 19290 —

August 22, 1939

November 21,

September 24,

April 16, 1940

1940

December !

February 17, 1942

November 3,- 1942 °

“November 10,

October 12, 1942 -

May 24, 149 |

October 30, 1951

September 230),

May? 1, 1924

September 26,

This Court specifically finds that none of the prior art

advane qe il by

these

defendants

witicipates

any oof

Claims of the patent.in suit, nor rende ‘rs said claims devoid

of their inventive character,

Asa matter of fact. the prat-

1929

1942

imae °

TSS °

the ~

patent in suit.

—- ol) —

ents to Burns (1,888,449), Hardgrove (2,127, 44: i), Anderse:

(2,139,344), Furlong (2,164,511), Faber (2 300,560), fies

2,551,476), and McG irath (2,470,996) pertain to contro!

systems for heating devices such. as furnaces, hot ‘water

~ heaters and the like, and do not in any way antic ipate the

claims of the patent in suit for a gas-fired tobacco curing

system.

Fhe patents to Bastian (1,040,986), “Harpe (Ji5s89586),

Friedman’ (1,871,783), Roberts. (2,123,204), / Browning

*(2,180,789), and Smith (2,573, 02) pertain to/ gas burner

-onstrnetic 1. feature of the patent in suit which is not

Claimed to ve novel per we: by plaintiff and these “patents -

lo rot antic ipate any of the claims = the patent in suit.

- The patents to Gillette (1,176.957), Cr iisheak (1,667,-

212), Smith. (2,051,348) and Smith .(1,811 980), Spikes

(2,170,725) and Ploit.et al. (2,273,284) -were considered

and made of record by the United States Patent’ Offige dar-

ing the prosecution of. the Horne patent In suit-and the

patent was issued over the disc ‘losures of. these patents.

These patents do “not anticipate any of the claims of the -

a eee

The “patent to. Henderson °(2,216,075) discloses a com: |

bination flue and open-type oil burner s¥stem similar to,

“that disclosed in the two Smith patents placed of ‘record.

- by the United States Patent Office during the prosecution

of the Hortve patent in suit, and does not ay iticipate the

claiius of the patent in suit.

~The inlet to Mims (1) 493,889) sid take A, 48s, 294)

pertain to drying houses similar to that.shown in the Gil-

lette patent placed of record. by the United States ‘Patent

Office duringthe prosecution of the Horne patent ‘in suit,

and these. patents cto not anticipate the ‘claims of. the pate

-ent in suit. 3 pge a

The patents to Mayo (2,124,074, 2,225,096, >and reissue

22.221) ‘and Spikes (2,497,325) all disclose’ oil-fired tobacco ,

curers of the stove-type similar to that shown in the: Spikes

| = patent cited “by the U nited States Patent ‘Office A

“claims of t re pate nt in suit.

The alts to Rouse ( (2,134,843 ‘) and Fizer (265,051) are

similar to. the vent-type burners shown in Plott. et al.

(2,273,284), whieh Was cited in the Horne patent file,. and

invention. Nae Ee

The patent to Reynolds (1, 509,902) eee 4 a large stove-

‘type heater utilizing fuel oik and does not anticipate the

claims of the patent in suit.

The rock patent (1,568,018) pe a slineadine of elon-

gated pipe bnrners into which liquid fuel jets axe directed.

The Brock structure appears to be inoperable and unsafe,

and the patent to Brock does not ahticipate the élaims of

“the patent-in suits

y |

Thijs Court specifieally finds that the patent in suit was

the first-of its kind to combine i in a tobacco euring system

a phurs ality. of gas burners disposed Within a tobaceo curing -

harn, a SOUTCE of liquid petroleum gas disposed on the ex.

terior of the barn, and a pipe connecting the burners and —

_ the source with a practical and workable temperature regu-

(lator for regulating the flow: of gas to the burners as does

. sired by tlie operator, This Court farther finds that’ the,

combination ‘of elements claimed in the patent in suit

worked -together to produce a better and more advanta-

geous curing ‘system than pre ‘viously avhilabile.’ The pat-

ented sy stem permits curing in a clean, oddrless atmos-

phere, with even and uniform heat: It provides for greater

q ;{eame aud more ais m a os ment of air duting the cur:

’

“e Horne file. These patents do not *antic ipate any of the -

these patents do, not anticipate the claims of the Horne ¢

ag,

eas ~ abe andi .'

ing: process and climinates the undesirable air channe!

through the tobacco” being cured. The. patented system.

“oliminates the need for placing fuel into the barn, elim

nates the need for leveling, adjusting, and cleaning thi

gravity Ped airw ick burners previously Know) to the art.

The patented system provides, for the first time known to

thee artoan wecurate,) simply operated wieans for controls

line the temperature throughout the entire tobaceo curint

barn and throtighoat all of the curing stages. ° *.

This Conrt coneludes that since this litigation arises

under the patent laws of the United States, , the Court has

jurisdiction of the subjgét matter and of the parties,tothis «|

‘litigation. Mus Court further -conclages that thie patent

nuniber 2472.5954, as issued by the United States Paten

Office ‘ow June 7, 41949, after an exams ation by a patent

office’ examiner, is) valid. The leading case of Mumm, v.

Jacob Ko Decker & Sons, 301 U.S. 168, 57S. (‘t. 675, G76, 81

I. Rd 983, sets out the burden upon these defenglants me

ullesee invalidity of sneh a.patent, in stating: |

ee The i isstte of the pateyt is e mough, to show, “urti| the

contrar® appears, that alf the conditions under which

a discovery ! -s patentable tn accordamy with. the stat.

utes have beer met. Hence, the burden of proving want

of novelty is upon him who avers it. Walker on Pat

ST16. Notlonly is fhe burden to-make good this

le hw voon the party setting it - up, but his burden

Ix a: heavy one, as it has been held that -*« every tganon

able doubt shoul he ‘resolved against him."

The Court of Appeals for this Circuit recognizes and

adheres to this basic curinciple of patent law. See Robert.

son Rock Bit C6. -*.. Hughes Tool Col 5 Cir, 1949, 176 F. 7

24 783; Newport bndustries, Ing, v. Crogby Naval] Stores.

2 ir. 144, 128 FB. 3d 611: Cameron Tron Works, Ine. ¥.

Stekoll, > Cir. “2057, 243 F. 2d Vi, and Jeoffroy Mfg... Ine.

aaa 3 5 Cir, 1955,.219 F.2d 511.

ites a

This Court further concludes tliat the patent In suit’

meets the staldards, of invention as set up for determiting

validity ino 105 Of the Patent Aet of 1952, and that the

Great Atlantic & Pacific Tea t’o. ve Supermarket Ke tip-

ment Corporation, cuse cahnot be used by these defendauts

asa ‘sanctuary. "This Court is of the.opinion that Judge

sLearned Udhdein the casxecof 1. you v, Bausch & Lomb Opti-

val Co 2 Cir, 1955,e224° F, 2d 530, certiorarl denied 350

U.S. 941, 76 S. Ct. 193, 100-L. Ed. 799, correctly analyzes

‘> i ase . : —-

the appheable statute and the preceding ease law and, as

this Court now ‘doe Ss, dee lined to find that thie Great Atlantic

& Pacifie Tea Co. Case theory was applicall to facts such *

as exist In this case. The Bansch case has bien followed

rin the Fourth Cireuit-hy the case of Brown v. Broek, 1957,. .

0 F< ada P23..and tacthe Third Cireuit in the case of R. as

Palmer Co. v. J. nen" s.- Tne. 1956, 2826 F.2d 406,

Applying the dex “as set up by these cases to the prese nt

jatented structure, it iippears that despite dhe long exist

ence of the indiy idual elements of the combini ition.and the’

known charac toristios of gas asa fuek no one, even though

ail recognized the exis stener of the problems vin tohbacéo +”

curing, produced such -an ingention as that here paterited.

“Asa matter ‘of fact, the defendaints* Chinese’ copy of plain-

tiff’s patented device is further evidence of the validity «

plaintiff's patent. See) Finid Systems: v.- Great Lakes

Equipment Company, D.C. Ne D. Ohio, 128 -F. Supp. nT4.

aves affirmed 6 Cir. 1954,217 F. P 615, wherein ihe dis.

trict gourt stated: ° . : cS see sc

interruption of the war has been, in@pressive -andg if

there were doubts as to ‘the inventive quality of the

patent claims in suit, such public acceptance and com-

mercial suevess would” go far t6 resolve it: and th:

tribute paid by the defe ndant in adopting: in modified

forti, tle system of the plaintiff. in grbat@part vives

\ considerable support. to eee ‘

-aniore detinite langnage and the defgiddnts have failed tw

FE. : af:

Also <r Denis Ve bells, sm I). ¢ ." uaa, Be F. Supp os

S86, and Weller Mite. Co. v Wen Products, Ine, PD. ORE ils

1954, TOE US. Po Q. i 27, 121-F. Supp 198, affirmed |

7 Cir. 1946, 231 P. 27 eee Sp od hoa

‘

This Court‘ conclitles further tha® defendants’) tile

Wrapper estoppel’? defense is without. merig, since what

“ever cancellation at writing that was made -ift this-distance

at the request of the patent examiner was made: to. secure

chow that their infringement i Within: the area to wlieli

Nhe “prior art could possibly have been thought to extend

So-vas to make it impossible ta make valid claims there, fo

“there is ne rénson to presume that applicant made a dis

claimer broader thay necessary te vield to the actual en

lenge to his elaim.’* See Hnnt Tool Co. v. Lawrenee, 5 Cir.

ee ee 24a, cortionari dented a4 Vos. O10, ri ae A

(1296.1 TL... Bad. 2 1428. any Os

‘ ~~

This Court further concedes, tliat the de feydlant Seyi

rately and: severally, v iolated the provisions “ot Tithe 35,

ASE. S Sek dak, that. they Without anthorit¥ mite,

vised-and sold patented invention 2 ATI SBS within the con

tinental limits cof the United States, while sd] patent

invention was protected under the patent «laws of th

“TP nited’ States”) This Conrt conetudes that the evidence i+

‘lear and-convincing hat said infringement on the part of +

-all ‘the defendints was wilful and deltberate, ¢ith a ful>

and. complete knowledge of plaintiff's system an

the knowledge that plarmeift® x structure Was paten

protected; further, that the infringement continued after

written notice from: thysplaintiffy and, as Matter of fact.

the defendants Yornwd a Jeparate sham corporation for the

sole purpose of casrying on the infringement activities. 1

appears from the evider nee in this case that the only, re!

effort made by the de fond: ants to ds We infringement ix, eons

upon a striet and nprealist te interpretation of the words at

-4

a at Sis Moot aay

the patent claim. and sin view of, this interpretation the

defendant work Ihave this Conrt to say the elements they

have “added’’ to these claimed cinse infringentent not to

‘

exist. Kueh a contention. was dealt with uM the case’ of

; he. 0 ; ( i ‘ ay 3

Matthews vo Rodlvent Motat Awning: ( 0.0L 46, IDS F.

27, 38, where the Rifth Cirenit Mourt of Appeals stated:

“Appearing from 2 decree adjudging thie, patent

valid but not infringed, plaintiffs are here querving, -

What shall it profit: a pateriter that his patent is de-

clared valid: if his claims are so precisely read, the

range of equivalence so narrowly confined, that piracy

is rewarded for the cunningness af. its dissin @ition

and the patentee is robbed ef the traits of his @wven-

tion?” i. .

i zs * :. . * _

-"We are not concerned here with determining

‘whether aaa s device, whielr pl: untiff charge is.

an infringement “of the M; atthows’ patent, is « xaetly

“the sane in appearance of in form, but merely ee

itis substantially theesame!. in funetion. Tn short, the’

decisive question heres. reading the claims of plean-

tits patent ow the Keolvent awning and interpreting

them fitirly inp accordance with theit plain intent’ and

COVEN ize, does de fend: ant’ « device infringe? We think

it does. The doctrine ef eqnivs aleney has never been.

amere dry bones doce ‘rine. Put forw: ard” tay do Justic e

cand, prevent defranding by dissiny lation and deceit,

“it shonld de. it has been applied to, give Its equitable

purpose feet, Not at all recond ite: or dif ult of under-

standing or aPbl ion, tis the mere expression and

application of ew ‘that like things are alilee and’

. that they are not- made unlike iK- ‘formal ‘ied 7 nen-

“snhstantical changes, 110 matter har cunningly. eon.

trived the. dissimulation: how clever the thanges in

fori, We think ‘it clears that. Cerggdant’ ~ deviee js

substanti: ly ade itioak i 1h rinetion with, and is an ine

S2t <6

> . ad »

, - : .

: ee as ae”

4 . : mis I as : eee

ee?

—56—-

fringement of, claims cid four, five, aime and ten o

the’ Matthews’ patent.”

\ . , oe

For “all purposes, the defendants’ structure! is idetitioal if

“function and substantially identical in form to pleintifs

patented stracture. Infringement is obvious. This deter

inination of infvingement and this determination of Viel id-

ity of patent number 2,472,534 is, effective awainst anc

binding upon all of the ‘defendants in this cas..

This Court further coneludes. that there is no evidence:

to <upport defendants! Claim that the patent applicant

knowingly described and claitned: move ‘than he had in

vented, or that the patent applicant goncos Ved materia

facts andstiade mate righ misrepresenti itions to the exdn

Iners, or that the plaintiff has been and is misusing th

patent in illegally attempting to: extend ‘the right eo

ferred hy the patent. The | latter clam of piisnse-is pred

~ieate® apon defendants’ argument thiat thy: plaintiffs ~ sill

of assembled or partially assemPled enring systenis issn"

: misuse of the patent as will make the patent rights iw:

enforceable, Sweh a ‘contention a disposed of by 1

of Electric. Pipe, Line, kne. v. Pliid Systems, 2 Cir.t

set Tay, Se, where Jrdge Medina stated:

“We turn to the santi-trust foature’of the case, Pini

“tiffs claim is that defendant misnsed’ the Lines com

f . ‘

bination. patent by ‘attempting to bring unpatente:

components within the protection <of said [etter

Patent and to comtrél competition in the unpatprite:

components contrary to public poliey.and in violatie

of the auti-trust +d

electrical travisform

ou heaters, patfel

sujated flanges. V

patented ‘and. in

. iJ .

Ws. These -gomponents. includ:

rs, thermostats, tank heaters. fue

oxes, msulated coupling yp and

hile these coniponent parts are aw

1 sense old atid .well- known,” thoy

sokd- bw defendan

for -use with thf ‘Lines Thermal: Eleetrie Syster:

are especially odified. or esigued |

° Teor) ee

os 9 s

# . ’

-o- -

‘ 04

‘.

° f

. .

sedndge Andersen fotnd thate defer dant liad ia inten

ae dion of preventing Ehiees seater aod Titese ate

thes Tar ise Git

* side rf [Ta patented oy! Pranisportations ~ oer We

see ne prensa: tovwisturh-this Grading

Tn this conection, see Also Great Lakes Kani

pans vo lui Svstemse. Tne. 6 Cir, 217 FP. horn:

The

. eo q

pigment, an accordakes with the foregdine. will he

a , ro : r 2 ‘

entered and the temporary dijunetion heretefore issued

ely thas Court wil

lhe made prermanent,

Further proceedings, inclnding an accounting to deter-y

tine What aaward will be made to the plaintiff as damages

“within the meaning of 7% 2s4 oem, Tittle 45, 12 8. «4. will

. .

he conducted, reer j . iat

. . . °

. ss. .

‘al

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: e

. -

e & ‘

rr)

: ‘

«+ .

. .

re m

‘ a.

A :

o - 5

\ P -

aot

2 a ‘ .

ad 5 -

Zé

‘

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.