Petition for Rehearing — Bright Leaf Industries, Inc. v. Stabler

a Y; IN THEY

* SUPREME COURT OF THE UNITED STATES,

OCTOBER: TERM, 1958,

hacietihed

” rT ~

- BRIGHT LEAF INDUSTRIES. NC.,

: Petitioner, ei

vs. | gs:

. E.VERNON STABLER, J. G. HENDRICK, and W. C. GATES,

Ss ae dividually; COLO-RITE MANUFACTURING COMPANY,

=~, INC..°a Corporation; and GREENVILLE BUTANE -

GAS COMPANY, INC., a Corperation,

Separately and Severally,

a4 4 _Responde its. ‘

—

PETITION FOR REHEARING OF ORDER)

_, _ DENYING.WRIT OF CERTIORARI =

To the U: nited States Court of Appeals ‘for

the Fifth Circuit.

ey ee

tT

PAUL B. EATON, os ¢

By pant: Oth Floor Johnston Building.

elie ‘ es aS Charlotte 2, North. Carolina,

Of Counsel: mary Counsel for Petitioner, —

. PAUL 8, BELL, | % an +

Sth Floor Johnston Building, >.

Charlotte 2, North Carolina, .

St Lovis Law Rien €o9.. Inc., 415 N. Eighth Street.. CEntral 1-4477

e

INDEX.

y : ; ; Page

Introduction .:... 0.0.0. ..0 pees. R. srmgcteieses 1

: ; ~ pul —_

Be Ee a 2

—Conelusipn ............... Pe iae ee bike Cee e reer ieee 11

Sait :

TABLE OF AUTHORITIES.

7 ‘ Cases.

e

(ireat Atlantic & Pacific Tea Co. v. Supermarket,

Massey v. United States, 291 U.S, 608, 34 S. Ct. 532.. 2

Sanitary Refrigerator Co. v. Winters, 230 U. S. 30, 34,

footnote 1, 50.8. Ct 9, 10....... 04. eet pene :

a J other Authorities. |. a

Bailey, ‘(& Proposal for: A’ Standard of Patentabil- 4

ity; Consonant Statutory Changes; A Manual on. De-

~ termination of Patentability,’ 741 J. Pat. Off. Soe’y -.

193-225 (1959) :}..... a ane Umea aaa be aee wie _

-

IN THE

SUPREME COURT 0 THE UNE STATE. =

OCTOBER TERM, 1958,

No, 736.

BRIGHT ‘LEAF INDUSTRIES, INC.;

—_

VS. /

E. VERNON STABLER, J. 6. WENDRICK, ‘and W, LC, GATES, 3

Individually; COLO-RITE MANUFACTURING COMPANY, |

INC., a Corporation; and GREENVILLE BUTANE

GAS COMPANY, INC., a Corporation,

Separately andSeverally,

4 ; 3 Pe assess onl

a

‘PETITION FOR REHEARING OF ORDER

__ DENYING WRIT OF CERTIORARI .

To the United States Court of Appeals for.

the Fifth ¢ Circuit. “- .

*

# .

areeametvite.

ol Petitioner, Bright Leaf Industries, Ine.; respectfully —

certiorari to review the “judgment of the Unithd. States

Court of Appeals for the Fifth Cyreuit reversing a final

judgment of the United States District Court for the Middle

District of Alabama, wherein originally the petitioner w as

nae plaintiff and the re sponde nts were defendants.

st

‘prays for a rehearing of the Order of this Court denying: , .

. *

h

INTERVENING. CIRCUMSTANCE.

This. petition for rehearing is based on an intere ening

circumstance of substantial effect, such as were presented

in Sanitary tor Co. v. Winters, 280 U.S. 30, a4,

footnote 1, 50- S. Ct. 9, 10, and Massey vv. United States,

291 U. S. 608, 54 S. Ct. 532, cases in which this Court chose

to grant ‘the petition fo ehearing. aie

The petition for writ of oitiuned in “this case Was.

_ docketed in this GQourt on February 28, 1959, following

°which¥the petition was detiied 6n April 6, 1959. In the

intervening period, an article of substantial import relating

to the judgment of the Court & Appeals for the Fifth

Circuit, reported at 261 F.-9d 383, whiclb. this Court is

requested to review was published in the. March, 1959,

issue of the ‘‘Journal of the Pafént Office Societys | The

author of this article, Malcolm F. Bailey, is a, member of

the Board of Appeals of tlie United States Patent Office

" .@ person well qualified to speak on the subject of Patene

‘Law because of his long experience in this field. Bailey is .

an independent commentator having no connection with”

- either petiftoner: or respondents, and thus ‘his article’ ev-

presses a completely unbiased viewpoint.

‘This article clearly shows the following: .

1. The judicial confitsion with. respect to ‘invention’

and the need for this. Court to clarify the effect of

" Section 103 of the Patent Act of 1952. .. .

‘2. That the opinion of the Coyrt of Agouile fer the

Fifth Circuit in this case is clearly erroneous on its

face.

_ The comments in this article are so revealing as to the -

coufusion between: the various Circuit Courts of Appeals

1 Bailey, ° ‘A Proposal for: A Standard of Paseitabiticy : Cohso-

nant Statutory Changes; A Manual on. Determination of Patent-

ability,” 41 J. Pat. Off. Soc’y 192- 225 (1959)..

<

in interpreting the decis:. n of this Court i in Great Atlantic

& Pacific Tea Co. y. Supermarket Equipment Corp. » 340

a, S. 147 (1950), that a sound basis ‘for granting of this

petition for rehearing is. firmly estalélished.. Because .of .

. the importance of ‘this article in confirming petitioner’s

contention. that the judgment of -the Court of Appeals for ‘

the Fifth Circuit has so far°departed from the. accepted

* and usval course’ of -fudicial proceedings. as to call for =

an exercise of the Supreme Court’s power of supervision,

‘it will be quoted extensively. Thus, on pages ,212-21: 2.

Bailéy qhecnres: \

2

190: Sistine 2: “Nevel’ ‘contelvations avnat be defined

ravens - INVARIABLY as an assembly of old elements.

It is immaterial, in wet field ‘of knew leige. newness

ix considered, e. g- whether in the fleld of the useful’ .

arts, pure science, applied science, economies, ete., or

whether the dese ‘ription is‘a patent claim or other

dese ‘ription or definition.. My second premise, "Sa aha

“That Which is New can be Deseribed and Detined

_ only ne

in Terms ef Old Elements and the Way That They

. are Assembled (2. 0. the relat on thereamongst ) W hich

Causes the Whole to he. Ne #.

This premise: has been, at ane in part, recognized

_ as is shown ‘by. the decision Safety Car Heating and

Lighting Cc. v. Gen’l Electric Company, 155 F. (2d)

937 (939); 69 USPQ 401 (402), where Justice L.- Hand

- stated: (Emphasis added.) “ aR

“Substantially all inventions are f or. the combination ig

of old elements; what counts is ‘their selection, -ont of

all their possible pernrfitations, of theg, new, Combina-

tion which will be serv iceable. No objective standard

is practicable: . . (citations) as, for. example, w hether

each of the tates operates in a different way from =:

‘ * \

, T

Poe ee

whit it did in other combinations. That is almost,

never true of a machine; each member ordinarjly per-

‘forms the same methanical function which it does

in any other machine?” it is their cooperation that

produces the result, and the value of that cooperation

depends upon the sagacity which divined the end and

fabricated the meamis.’ MP ,

This second premise is a tinal’ of definition

‘and deser iption. To be meanjngful each element must

‘be known to. the hearer or reader. That which is new

cannot be described or defined in new terms (in terns

-of itself) since ‘such’ would be meaningless to , the

recipient of the d@seription or definition. Every patent

ever granted under our patent -laws has been .de-

scribed in. the specification and defined in the. claims

by terms that be old elements, and their as-

sembly (the rePetfon thercamongst) that causes the

whole to be new. }

The author then, proceeds to corroborate statements

made by the petitioner in the original petition for writ

: of ‘certiorari: on pages 24 and 27 thereof relative to the

rampant confusion existing in the Federal Courts through-

out the United States in applying Section 103 of. Title 59, ,

United States Code, statements which were facctiously

denied by respondents,® by showing how various Courts

of ‘Appeals have applied this Court’s decision - in- Great:

Atlantic & Pacific Tea Co. v. Supermarket ‘Equipment

Corp., 340 U. S. 147 (1950), against patents. |

‘The following statement was made in the opiiiion

of. the court in the ainee Atlantic and Pacific Tea Co.

Loss ME Nae D>

2 Brief of Respondents iq Opposition to Petition for W cit of

Cortewasi, page 7, lines 1-7, “To summarize, there is no ilisagree-"!

ment ra Fo exéept in the eyes of the Petitioner . . . and there

. is no confusion as to. the clear. and explicit meaning of Section 103

- of the Patent Act aes except*in the brief of the Petitioner.”

cane yg), soe

_v. Supermarket Equipment Corp., 340 U. S. 147; 1951

C..D. 572; 642 O. G. 87 USPQ 303 (306),

‘Courts should scrutinize combination patent claims

with a care proportioned to. the difficulty and improb-

ability of finding invention in an assembly of old

elements.’ /I note that ‘invention’ .should be in

quotes/ |

e°

This language appears to mean that, if a patent

claim recites only elements that are indi vidually old

and the way that they are ‘assembled,, the claim is

probably invalid.

Such a meaning is “clearly inconsistent with the only

possible way. to describe and define that which is new

as I pointed out in the preceding section...

. Howey r, many ‘soarts have accepted this language

as méany that which. it appears td say. On the

basis of this language they have accepted as a de-

fense a showing, througli the medium of numerous

patents or other publications, that each claim element

is separately old. .They , quote the above language

(which language by its terms is a presumption ofs

invalidity) - and hold ‘lack of- ‘invention’. “If such

language -is followed and applied, every. patent ev or.

granted or. to be -granted in the ure Nunder our

laws would have to. be — at with a

ing ‘invention’ in an aes of old. elements| 1. @.,

will have to be presumed to be invalid, ‘since eker

thing that has ever been patented or ger will DeXS

patented.and every other bit of new kui ledge that .

ever will be set forth in the fature in any field will

he. deseribed and defined in terms of an agsembly of.

- old: elements, i. @; in terms of old elements and the .

relatiar thereamorest that “involves the new ness that

is being presented. oi

—6— 7 A oe

_. The article confinues by discussing the judgmeint;- of

‘the District Court and the Court of Appeals-for the Fift

‘ Cireuit, Which latter ‘judgment. petitioner . seeks to have

‘reviewed by this Court.

‘In Rright Leaf Ind. v. Stabler, 116 U SPQ 559 ( (565,

Ist col.), after pointin out: that patentee was thie

first to assemble old elemetits to form a tobacco curing

- system providing | ae also pointed out, the

— court stated:

— *This Court further concludes that the patent i in suit |

meets the standards of invention as set up for deter-

‘ mining validity .in paragraph 103 of the Patent Act |

of 1992, and that the... (A and P case) cannot be

“used by these defendants 3 a ‘sanctuary’’. (Hmplia-

‘sis added.)

However, upon appeal to the circuit court, ads

tuary’ was granted. In Stabler et al. v. Bright Leaf

Industries, Inc., ". USPQ 362, the cireuit , court ,

stated: bere te

‘Tobacco curing is an old art. Although the rare

of curing have differed, the theory of curing has never

changed, | ‘Curing is predicated on the use of heat to —

dry t »- tobacco leaf. - The system embodied in tlie

' Horne iliac is no different. Prior curers, however,

had many disadvantages. Some required too much

heat in curing. - This caused uneven euring., In. some

_eases, the introduction of products of combustion re- |

sulted in contamination of the leaf. It was difficult to’

control the temperature in the units and the barn. °°

The use of oil fuel created unwanted odors, and soot.

It created a fire hazard if the flame was open., Low

. air movement ‘caused excessive arid uneveR curing. In

the main, the difficulty was to find a clean fuel and a

way to control the heat so as to get even curing. of

the leaf. The art evidences numerous attempts to

‘

:

—~ oe

—

pis

. overcome the disadvantages, le -conistruct a curing

system that would solve these problems. Herne.did it.

¢ The use of liquid petroleim gas offered a clean odor- ©

less fuel, a fine. curing atmosphere. The plurality of gas

burners ‘gave increased heat vélunie and Aven heat

distribution,. while the use of the- thermostatic device _

provided a means for evenly controlling: the tempera-

ture in the barnd . ‘e

°

All of the individual ¢lemerits of, the Horne patent —

are admittedly old. They were known and used for

years in one form or another. G&s.ftiel was available,.

but not used successfully. The plaintiff claims fnven-

tion lies in'the combination of tlie-elements. The meat

of the patent is the use of liquid petfoleum -gas/ with ©

the gas burners, controlled by the use of a t! iermostat.

Its commercial success is beyond doubt. Better cuting .”

_ was achieved. The problems of the industry were

answered. It appears that the plaintiff is one of the e

-largest- manufacturers of was. -fired tohatco euring st » *

4

tems today. - - 140 are

: -Th indiv idual defendants, F. Vernon Stabler. Mrs.

‘Stabler, Héndrick and. Gates, are owners of the defend-

_ant corporations, Greenville Butane Gas Co. and. Colo-

Rite Manufacturing Co. ' After obtaining. information ,

and literature on the plaintiff’s curer, they began to) ~

manufacture their own .curer. which A ee :

the same *** — oe

The Horhe patent is a combination ‘patent: It is

an improved system. @ombining old elements ofthe art

-in such a manner 80 as to give fise tq better results.

The question in all such eases is whether the improved.

combination of old. elements can be raised .4o+the

dignity. of invention. , (Emphasis added.) bes

In the last line note ‘that e-, marks should

surround ‘invention.’ Poe eae tees ‘tg

: the ‘hou

he peinidingy quotation it will te ‘Seen that

guage that the constitutional requirement for progress

was fully met, namely an unsolved art problem solved

“

by the combination originated by the pategte®, which

combination gave , better results: ‘and answered the

problems of an industry. tae oa 7; 3

The court then points out the ‘flagrant eopying y

the infringer, and goes on to hold lack of ‘ invention,’

beaxise the novelty, was, ‘obvions.’

The only source that made the aia combination

‘obvioys’ was the patentee’s disclosure: The in-

_ fringer who coveted the novel combination because it*

solved an art problem whose solution wgs obsious to

neither the infringer nor anyone else (other than the

patentee). sought the sarictuary of infringers at first

unsuccessfully anéthen - - successfully:

In my opinion, the decision of the. circuit court is

clearly wrong. Where the constityfional objective and

every. statutory requirement are completely met, the

courts should hold\patentability and validity and not

-the converse on te arbitrary and meaningless: ground

. 01 lack ct ‘inv ention’ because the coveted. novelty: is

‘obvious to a person having ordinary skill in the art’

(an allegation as-.arbitrary and meaningless, as the

first, see Sections 27 through 36)...The infri inger nor-

maily considers himself ‘an expert in the art. and where

the novel combination of old elements was not obvious

. to him (as ev idenced by the fact that. héould not

have foregone the advantages and permitted the

patentee to be first ‘if such: were the fact), I.find gn

allegation of ‘obviousness’ singularly umpersuasive:”'

a ( KmyHasi-~ added, pe

; aes, Uae are PRS OTe ar aay

.. The anthor of this article immediatély- recognized that

-on its faee the opinion, below is clearly erroneous. This

t freely concedes’ by. clear and emphatie lan-

b

—_

WE: ey ons = ee Neo a ee orice Roan

is a factor not to be lightly. set t aside by this Courtgvithout . ie

further inquiry. .The author indepe ndently arrives at the |

-same conclusion as that advanced by petitioner tq the

effect that .the validity of a-patent is established where

the constitutional objective and every statutory require-—

ment: of invention dre completely met, as in the present

See en eas ie Eger

Even respondents. admit? that no findings of fact of the

District Court were set’aside by the Court of Appeals for |

the Fifth Cireuit in. renderirfg its decision. Moreover, re-

| spondents’ assertion’ that the presumption‘of. validity

provided for in Section 282, Title 35, United States Code,

_. was shattered ‘because the -Patent. Office failed to cite the —

most pertinent prior art is not in accord with the language ,

contained: in the opinion of the Coyrt of Appeals for the se

Fifth Cireuit, nor does it ac@rd “With respondents’ admis-

sion that no findings of fact of the District Court wette set

‘aside. There is absolutely. no mention of any’ prior art

relied upan by respondents i in the opinion of the Court of

Appeals for the Fifth Cirguit, the opinion expressitfy a

purely personal eof the fi as to what constitutes inven- igre

tion. In fact, one of|the findings v which —oe overtuled :

was: -

‘This, Court specifically finds | that none of the orier lt

—art:advanced by these defendants anticipates any of

the clainrs of. the patent in suit, ne renders said- claims

devoid of their inventive eharacter.’” :

‘The judgmgnt of the ‘Court: of ° Appeals if allowed to -

* stand by this Court. condones the brazen’ theft by. respond- . *

aa Brief of Respondents in Opposition. to Petition’ Sow Writ of .

Certiorari: page 4, lines 17-184. No findings of fact of the: Dis-

trict Court were set aside.”

* Brief of Respondents in Opposition nA Paden for Ww rit of

Certiorari, page 5, lings 13-16, inclusive, “5. The presumption ‘of

validity as provided for'in Title 35, U.S. C Secfion 282, was not

disregarded. ‘The presumption of vatidity ha! h¢en shattered he-

cause the Patert Office failed to cite the most pertinent prior-art.’

5 Original Petition for Writ of Ceértiorari, aint C, p. 49.

e x hye ta .

‘

»>—-]l— - | te geet ia

ents of the subject matter cov ‘ered by petitioner's patent

and encourages such wilful infringement of ‘patents ‘in

_ the future. .The equities involved ‘in this ease lie wholly.

‘with petitioner, and it is believed that the article “Upon

which this petition’ for reheating is based should be per.

suasive to this Court that great injustice will result i?

the judgment of the Court of —— for the Fifth Circuit

is allowed to stand. ; .

= The patent in suit successfully passed the scrutiny of

‘the Patent Office, and the ‘trial court wherein the trial F

. Judge had'‘the opportunity to judge. the credibility of the

opposing witnesse® and equate the evidence. Furthermore, |

an auther experienced in Patent Law ‘and unacquainted

with the parties to this §uit unequivocably reaches tl

conclusion that athe Court of Appeals for the Fifth Circ ne

. made an erroneous judgment in declaring: the patent in-

~. suit to be i inv alid. ‘ er 6

ta summation, “several cogenty reasons why this Court |

should review the judgment: of ‘the Court of ‘Appeals for

~ the’ Fifth Circuit’ exist, these reasons being among those

enumerated in Rule 19 of the Supreme Court as factors

influencing. this Court to grant. certiorari: The Court of

| Appeals for the Fifth Ciréuif has’ (a) decided an important

question of /ederal law by interpreting the effect, of Section

103, Title 35, United States Code, a question which, has

_ not. been, but shdiild be, settled by. this Court, (b) decide

a federal question in ‘a way in conflict ‘with , applicable *

‘decisions of this Court by agreeing’ with the finding of

fi ict * of the District Court that the subject metter-of .the

; patent | in suit-was not obvious and yet holding 4nyalidity,

and (¢) so far departed from the accepted and ‘usual

cours? of judicial. proceedings as to call’ for an exerc ie.

of this (urt’s power of: supervision. The publis Lied

article upon which this petition for rehearing is based

béars out pe titioner on every point. .

.

ee

e

Bie, a Nee

CONCLUSION.

For the fore ‘going reasons * is ‘respectfully asheinh

thai this. Court grant petitioner’ s om na a rehearing in-

tit matter. ee . : i

PAUL B. EATON,

9th Floor Johnston Building,

Charlotte 2; North Carolina, -

( ‘ounsel for Petitioner. .

eae i. ‘a

Of Counsel: , ee

PAUL B.. BELL, *

9th Floor Johnton Building,

_—Charlotté 2, North Carolina.

, Certificate. ; y

As. counsel for pétitioner, I eke certify that the fore-

going petition for rehearing of this Court’s order. denying -

certiorari is, in my opinion, well founded and is presented

in good faith and not for delay, I -also certify that the

grounds, for this petition are restricted to the conclusions

expressed in the article published in-41 J. Pat. Off. Soc’y

192-225 (1959) at a time subsequent to the. date en which

. + the petition for writ of certiorari was docketed_ in this

ze. Court. This the ........ day of April, 1959.

‘ , ‘ % -

are Paul B.. Eaton.

_

“