# Petition for Writ of Certiorari — Bright Leaf Industries, Inc. v. Stabler > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA04386419_0771%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1959 - **Citation:** 359 U.S. 960 ## 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... oe PETITION FOR A WRIT OF CERTIORARI To the United States Court of Appeals for the Fifth Circuit and ———— a 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. a ° A $ 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 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? ye (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 ‘ Ps Be eee ti STATEMENT OF THE CASE. Bee: e = 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 ; 4 q ae > A e 3° \ i R 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 . © Venting 3 away a portion = the fumes atid prodivcts of. oil: a oe , hd 4 « —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 ° ; : ” b 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: ° 2 a: 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 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 a 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 mM 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 y 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 4 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 (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 “ 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, ie 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: © © These findings aye to the effect that the new com- 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.) nN > . ; ‘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, . a 7 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 = : " 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 v 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 ae ; % 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 oe 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: 7 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 : ‘ as 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 . Ve 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 or 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 ¢ ; ° t é ‘ ‘ ‘ * ~ 8 s ' he ‘é Lo _- if — ° ‘ 7 ’ el . a * : APPENDIX B. be 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 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. ty 4 us United States District Court. , Middle District of Alabaina, Opinion. | ae December 17, 1957. oe 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 «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. t aA , 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 5 a 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 wi 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.??: . va Naw 7 f. a : ° : : Pe ae 4° iar Y 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 t ‘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 Cd df Hroughout the United States and in several foreign cow a = 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 - - ° 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 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 +9 Patentee Ww. B. Bastian JC. Gillette J0 0. Broek iH. Dyake © POSS Harper ‘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 ye 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 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, e 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. Be 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 v 2a 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 ¢ > # ia 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 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. . 4 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 . ad » , - : . : ee as ae” 4 . : mis I as : eee ee? be —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