Petition for Writ of Certiorari — Continental Gin Co. v. Murray Co.

Supreme Court brief1959

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Oitce-Sugress Ss

7 SUPREME COURT OF THE UNITED STAT i.

| ~ vero TERM, 1958,

801

CONTINENTAL GIN COMPANY.

Petitioner, 7

VS,

. THE MURRAY COMPANY OF TEXAS, INC.

Respondent.

PETITION. FOR A WRIT OF CERTIORARI

To the United States Court of Appeals °

. for the Fifth Circuit.

{-—— ee

Ve. L. ALL,

Comer Building;

. Birmingham 3, Alabama,

Attorney for Petitioner.

' Of Counsel: 7

PS HENRY L, JENNINGS,

HUGH. P, CARTER,

Title Building, —

Birmingham 3, Alabama, -

Sr. Lovis Law Patnrino Co., INc., 416 N. Eighth Street. CEntral 1-4477.

INDEX.

‘ | nee Page

Opinions below ........4.... Jeccbsesccceses aage'en Ten. err mee

Jurisdiction ae non RS oe eS

Questions presented ....0..0....cgceseetepascesens 2

Statutes, federal rules’ and regulations involved... .. ee

~ Summary and short statement of the matter involved. >

Reasons for allowance of writ and enn: cia...

greatest importance to the i dustry- engaged in

the raising and processing of‘ ¢ottqn and in the

‘ manufacture of cotton treating apparatus, which

manufacturing indust?y is concentrated in the

_ Fifth Cireuit, whereby litigation elsewhere, with

a resulting confliet of decision is improbable..... 9

2. The Court of Aneta has erred in deciding in ded-

‘eral question in a manner conflicting with Kule _

52 (a) of the Federal Rules of Civil Proeedure.... 9

3. The decision of the Court of Appeals is in conflict ,

in important respects with decisions,of this Court

and the Courts of Appeal of other ¢ irchits on the

* same question of laws . 2... 6.6.66. ee eee eee 9

4. The decision of the Court of Appeals that the pat- 4

eyt does not meet the test of invention prescribed

by Congress, in 85 U.S.C. 108, is in violation of

FRCP %S2 (a) beeduse the District Court found as

~a fact that the Brooks invention was not obvious

withiti the meaning of that section of the statute. 9

ae : Pea he Sy ee >. = en , S me

ease | “_ pene 9

5. The decision’ involves: such departure from the

ie _ accepted and asual’ course of judicial proceedings

«. as to ¢all for the exercise of this Court ’s' power of

: supervision ..... qrcteeeees f rere eet cecss.: ae

AI Gosia tibet iiics,

"\ > ., Si |

_ A. Opinion of United States Court “ Appeals for

. The Fifth Cireuit.. POT PRET ET Oe Ser eae 19

| ~B. Judgment of United States Court of Appeais for —

‘; .the Fifth Circuit........ ina eae ai gt aaa wee 30

si Opinion. and judgment of! Distriet Court for

sae ee ne _ Northern District of Atabama...... SC cerekened : w

_D. Affidavit of Merrill Sy Meer er ere ovens? ae

: . r / | c ‘

*\ TABLE OF AUTHORITIES.

| : ol ( ee ee

Cases.

| Adamson v. Gillitana, 37S. Ct. 169, 242 U, S. 350, 353. 10, 14

Arcadia Knitting Mills, Inc., v. Princeton Knitting

Mills, Inc., 124 F. 2d 330 (Cert. Den. 315 U.S. 7 : ae:

Ade -- Bates v: es OU ae ec Wwavawsade ee

| Bryan, d. b. a. Bryan Gas‘ Lift Equipment, v. Garrett

Oil Tools Co., Inc., 945 F, 2a 36: see pe eee etenees 16

_— Palmolive ee et al. ve Carter Produets;

| <a 17

ee, FR ela Me My OR a 6 a8 s oe ee ded veceterccescegens 14

seg hed awd cee tebhemeecgewes keen 17

I Process v. Minnesota ete., 261 U. Ss. ener 4 ic

Emerson et al. v. National Cylinder Gas Co. et al.,’

251 F. 2d ag eau sr is 164

Gibson-Stew ind Cupeny, Inc., v. Wm. Dine. Boiler & |

- -® eee

| iii |

a ‘ ° . —

Federal Security Insurance Company % Smith, 259

F. 2d "294 ee lena sds C64 wAGd Ra one eke e oa “47,

o Mfg. Co., 120 USPQ 352 (Decided Feb. 19, 1959.4?

ane

"Graham v.-Geoffroy, 253 F. 2d 272...... PARE Bi 16

Graver Tank & Mfg: Co. v. Linde’ Air Products Co. -

1949, 336.U. S. 271, 275, 69 S. Ct. 535, 587...... ‘‘cskg OO

~ Great Atlantic. & Pacific Tea ‘Co. v.. _— Market

Equipment Corporation, 340 U.S. 147, e....; 4, 23, 15 |

‘Hazeltine Cc Corporation v. General Motors Corporation,

131 F. 2d 34...... ughedensbebadecedeven<saueets ag

| Hyster Company v. . Hunt me ia et al, 120 USPQ

ee dead us so el ea ea 04 Oe oO eae 6 OP ee aa

Inglett & Co., Inc., 'y. Everglades: Fertilizer Co., Inc., |

255 F. DR dwisccdakwcoks cisxeenees cas eanrets ~ 16

-Jones v. felon, 189 F. 2a WR tics es Toe a

Kepffel & Esser Company v. Pickett & Bekel, Ine,

- et al., 182 F. 2d 581-........ ere Lee

Loom Company ¥- Hive, 105 U. 8 580.2. eee 18, 15

MeC eugh v. +. Conuhio, 309 U ie. ee 10 °

fiehle’ Printing Press & Mfg.,Co. et al. v. Publication

. » »

"Schriber Schroth v. Cleveland Trust Co. 305 U. 8. 47.9, 10

- Corporation, 166 F. 2d 615. ; .... RE ae i eee ee qs

-Minerals Separation v. Hyde, 242 U. §.. 261.: pvatees ies ae

‘Muncie Gear Works v. Outboard Mari ine « Mtg. Co.,

5 i rere Recess dik eck se eeelnes ...9,10

National’ Dev elopment Compapy v. Lawson- Porter

Shoe Machinery Corp. ete., 129 F. 2d ee oy

O’Leary et al. v: The Liggett Drug Co. te, 150 F.

(2d 656... eee cee eee eee. etapa weiner er

‘Sannders v.-Leéeh; 158 F. 2d 486, 487.........0660.. 16°

Ch ll

, : es » oo 2 ; : aie

ue naa ee iv ale (

| Seymour v. Osborne, 78 U.S. REELS Der enna

— S..H. Kress & Co. v. A nides et al., 246 F. oe T26... WT

Topliff v. Toplift, 145. U: S. are re Couns ‘act On

Trico Products Corporation v. The Delman Corporation

et al., ete., 180 F. 2d 529 er rey eeceePisssa Of

_ U.S. v. Yellow, Cab Co., 333 U. S. ee 15

| a . . . ‘Other Authorities. ;

98 USC 1254....... SAGE KERVORRG ULAR RA UAA Acad Meas 2

FRCP 52 ea) ETS) Vee eee 2, 4, 9,,10, 12

Supreme Court Rule 19 (b).:. TOL err ee Terry hE er - 9

ef Seen SOE Oe ER Ye Ie 4, 9, 13

‘States Court of Appeals for the Fifth

the judgment of that Court entered on the 26th day of -

a | THEE

SPE COURT OF THE UNITED STATES.

7 os

@. » \

‘ OCTOBER TERM, 1958.

Be ad

CONTINENTAL GIN COMPANY, a

Petitioner, — ss

VS. «

THE MURRAY COMPANY OF TEXAS, INC.,

: Respondent, . s

"PETITION FOR'A WRIT OF CERTIORARI

_ To the United States Court of Appeals .

. for the Fifth Otronit.

Your Petitioner, Continental Gin Company, respectfully

prays for the issuance of a writ of ge to the United

reuit to review

February, 1959 | (petition for rehearing denied April 3,. .

1959 holding invalid Petitioner’s patent No. Re. 23,044. ne

A tr cript of the record in the case, including the pro- |

ceedings in said Court. of Appeals, is- furnished herewith |

in “accordance with sthe rules of this ‘Court.

, OPINIONS BELOW. :

The hiiition: of the Court of Appeals is Lethe at 120 —

USPQ. 416 and the decision of the District Court. at 120°

USPQ 427 and said opinions are printed in the Appendix

~ hereto. The order granting the stay of the Mandate of the |

Court of Appeals until May 13, 1959, is found at page 924

. of the certified copy of the sees

JURISDICTION. Athenee ety

The sdieheltetbien of its Court. is invoked ‘under Section’

1254 of - — Code (28 U.S. C., See. ata

a - QUESTION: S PRESENTED.

‘9 1, ‘Should a Court of. Appeals disregard. findings of fact”

5. of a District Court in a patent case where. such findings

involv ca judging of the é¢redibility oftwitnesses whose testi- _

mony ‘on material} highly ‘technical questions such as are

‘ here involved ‘is conflicting, and with respect to which,

testimony the trial. court was enlightened by - scientific

demonstrations;, in short, is ‘Rule 52 (a). of ‘the Federal

Rrges of Civil Procedure applicable to patent cases?

2..Is a Court of Appeals, in deciding ‘the question of .

3 invention in a patent case, at liberty to disregard a finding

-of fact by a Distriet Court to ‘the effect that the subject -

matter’ of the patent in suit, taken. as,a whole, would not .

_\ have been obvious to a _— having knowledge of

‘ ‘fs

}

prior ari and having ordinary steall in the art to } ‘hich the

; patent relates, where such finding of. fact is the; result of

the consideration of the eonflicting oral testimony of expert 7 an

witnesses and of consideration of official published reports /

“of Government experts assigned to, work: on. the problem |

~ solved by the patent? v : |

DEL TNR EN, EEL GOO Ee AAR BONO =

8. “May a Court of Appeals reverse a finding of inven- r

{. tion by a trial court in a patent case where such finding:

( a) Is! ased upen all appropriate factual soiaittiees.

tions required by the. decisions of this: Court; and, ~°

(b) Is based: upon ‘the application ‘of an sunsting a

standard of invention as required by this Court| t\in the ;

case of The Great Atlantic & Pacific Tea Company v.

Super Market ‘Equipment Corporation, 340 U. 8. 147, .

152; and,

witnesses which required the judging of the credibility - —

- of such wifnesses and as to which the trial court was

enlightened by scientific demonstrations?

ONCE eNO the tests

SAAR BE ie nes Se beh ht > el

wid tose Ee

fe ee

WN oi . sheen

a } ®

STATUTES, PEDERAI RULES AND ne@uLAatio

: nr. GF OLVED. |

i «

“This casg involvgg fe following:

‘Title 35, United States Code, Section 103 (1952): ,

, ‘ patent may not ‘be obtained though ® the inven-

tion is not identically disclosed or deserjbed ‘ad! set

forth in Section 102.of this’ Title. if the differences be-

‘tween the. subject matter sought do be patented | and.

‘the: prior art;aTe such ‘that the subject matter as a

‘ whole would have been. obvi ious at«the time the’ in-

‘vention was.*made to.a person having ordinasy skill: °

_in the art to which said subject matter pertains. Pat;

' entability shall not? be negatived by the manner in

which the i invention was made.”

. ? .

. “pe 52 (a) of the K ederal Rules. of Civil Procedure; im we

pa t: a @ ‘

2 “(a) Effect, In all actions tried upon the facts w vith- :

‘out. a jury or with an advi isory jury, the court shall

find the facts Specially and state separately its con-

; clusion ° ‘of law: thereon. and direct the entry. of

the . appropriate - judgment; . and in, granting or ,

refusing interlocutory injunctions * the: eourt _ shall

similarly set forth the findings of fact and conélusions ,

of law which Qenstitute tl grounds of its action. Re-

_ quests fornfindings are not necessary for purposes ‘of

“review. dings of fact shall not’ be set aside unless

' ¢learly erroneous, and due’ Teggrd shall be given to

the opportunity of the trial court to judge of? the.

credibility of, the witnesses.”

Ow! , >

—

”“ - .

SUMMARY AND. SHORT STATEMENT OF. ‘THE

- _ MATTER INVOLVED.

oe” Your Petitioner, Vontinental Gin ‘Company (plaintiff

below), i is the sole ‘ow viler of Brooks Pafbit No. Re. 23,044 —

relating to apparatus for cleaning lint cotton. The manufac-

‘ tare of lint cleaners of thé character covered by the Brooks:

opient is cencentrated in St Fifth Circuit and the patent:

“dominates a substantial portion of the industry. (Affidav it

“of Mr. Merrill E. Pratt hereto attached.) The problem. of

clegning lint cotton as’ it_eomes from the gins is one of |

me long standing, i is‘of prime importance to the cotton farmer

_ since: it rectly affects the priceof his cotton, and has By

-been the subject of considerable -résearchf .Thé problem

‘whs so pressing and a solution so important that in 51939

Ate Goyernment of the United States, through the Depart-

‘ment of Agriculture, assigned skilled engineers and tech-

Re ricians’ to find a solution. R. 485 to 497, This” work was

. earried onsat the Stonev ille Cotton Ginning Laboratory,

Storieville, Mississippi. R. 639. Except for the interrup-

~ tion caused by World: War II, the Stonevil

- personnel: workéd on the problem continuofsly from 1939

~ until about 1950.+ They attempted to adap\ mill-type open-

ing room cleaniyg.. machinery and “Ganiief -regins to the

cleaning ‘of lint cotton as it came from the gins. All of

e wete relied:

patent in suit.

these machines and instances of thei

upon by the defendant‘ as anticipatins

None of these. experiments twere snecessful. R. 639.

. ‘Results from the foregoing: and numerous other .

Laboratory ©

*f i

. experiments showed that the development of a prac-

tical lint: cleand®- Ww ould be, difficalt.”” U. S. Pepartment

of Agriculture Cireular No. 858, R. 639, 642. ‘Gordes

testimony, R. 509, 524, 525.

, In 1946, and with fall knowledge . of the experiments car- -

“ried on by. the U. S. Department 6f Agriculture at Stone- °

ville, Mississippi,” R. 377, and with full knowledge of all

the -other prior. art urged as anticipating the Brooks —

‘e ¥ : >. | ; : ‘

cleaners,

_ on

‘

patent, dolendint itself manufactured a set of lint cleaners

and installed them in a gin housejn IndMinadla, Mississippi.

_. R, 120, 379, 417, 418. These machines did not solve the

’ problem and were abandoned at the end of the first ginning :

season. R. 379. In 1949 the defendant began the manu-

facture and sale of lint cleaners of a type which had been

‘ patonted by a Mr. Stedronsky of the Stoneville, Mississippi

laboratory. R. 380. These machines did not solve the

‘problem to the satisfaction of the defenggnt and they

abandonefl the manufacture of and geased selling them

altogether in’ 1954. R. 385. Finally, defendant purchased

one of plaintiff’s commercial machines in 1953, and copied

the same and commenced the manufacture and. sale of the

aceused*machine in 1955, This solved the problem for the

defendant. -R. 35 through 47, 96 through 100, 276, 429,

430, finding of fact No. 17, R. 605. . Petitioner sells lint

cleaners made in accordance with the patent throughout

‘the cotton growing districts of the United States and

- foreign countries. Up to the time of the frial, more than.

4,000 of:the said lint cleaners had been sold for apyroxi-

mately $14,000,000,00. The value to the farmers of the.

lint cotton passing through these machines is inereased

approximately $20,000,000.00 per’ year by reason of the .

removal of trash from the cotton paéasifg through the

-uinchines. Finding of fact No. 5, R. 602.

‘2. Plaintiff instituted suit against respondent (defend-

ant below) charging infringement of claims 3, 4, 5 and 6

of the Brooks patent in the United States District Ceurt

for the Northern District of Alabama, ‘Southern Division,

hecause of defendants manufacture and sale of lint

3. Upon the trial § in the District Court expert testintony .

introduced by the parties was in direct conflict. which. con-

flicts among others related to she fallowing issues:

(a) Whether the elaims of the Brooks patent define

a new combinafion and whether it- produces a new -

result.

_ (b) Whether the results achieved by the Brooks

apparatus are obtainable by any of the prior art ap-

paratus relied Upon by the defendati

g bodies the features described and claimed in the patent.

. (a) Whéther the apparatus of the Brooks patent

‘amounts, to no more than a mere transplanting of the .

prior art carding engines, pickers, and regins relied

upon by the defendant at the trial, to use behind a

gin in a gin house.

4. Upon the trial in the District Court the defendant

introduced in evidence’ a number of prior patents. These,

together with instances of public use of the Garner regins

of the kind experimented with by the Department of Agri-

culture, were relied upon as anticipating the Brooks patent,

or rendering it void for lack of invention. “Each of these

patents and instances of prior public use were explained

in detail to the District Court. There were sharp conflicts

in the testimony between the plaintiff’s experts as to what

these patents and prior-apparatus showed andghow they

operated, and especially. as to whether the several appa-

ratus therein shown functioned, of could be made to fune-

.. tion, after the manner of the Broshe patent. To illustrate,

defendant's Chief Engineer Nitzel, at R. 193 to 245, testi-

‘ fied that patents such as Faulkner, Schorsch, Oxley,

Howorth, Gartier and Washburn disclosed: the principles

of the Brooks patent. And the written reports of Govern-

ment experts, published prior to the time this controversy

arose, R. 637 to 645, 697 to 701, 705 to 711, aud oral testi-

mony by plaintiff's expert witness Francis, R. 549 to 598, .

* and oral testimony by Mr. Leo Gerdes, who was in charge of

the U. S. Ginning Laboratory at Stoneville, MisMissippi for

. 25 years, R..494, 495, 539 to 541, is to the effect that none ~

of these patents or prior apparatus embody the principles

of the Brooks patent and that none of them would operate

after aad manner of the Brooks -patented machine. After

PAE

considering all this testimony the District Court found that .

none of the prior apparatus could be made to clean lint

cotton behind.a gin in a gin house. Findings of fact Nos. 13°

and 14, R: 604. ,

5. In order to aid the District Court to understand the

_ prior art, fs well as the apparatus in dispute, various mov-

ing and still pictures of the Garner regin, relied upon prin-

cipally by the defendant: to invalidate, the Brovks, patent,

were ‘shown, elaborated upon and -commented upon by the-

defendant's witnesses at the trial » Defendant’s exhibits

W, R. 231; U, R. 227; V, R. 228, 815 and 816.

—

6. Sefore the conclusion of the trial the District Judge,

by agreement of the parties, went to the plaintiff’ s plant,

and there, in the presence of all concerned and witlf on-the- _

‘spot explanations by witnesses for both sides, viewed the |

plaintiff’ s and the defendant” s apparatus , in actual side- by- «

side operation. R. 600 .

7. After considering all the conflicting evidenee, oral |

argument, and post-trial briefs, ‘the District Court entered

appropriate: findings of fact and conclusions of law in

’ which it found, among other things, that the Brooks patent

‘involved invention over the prior-art~that Ahe invention

avas not obvions to a person having ordinary skill. in the |

art to which the subject matter pertains; and that it was

valid and infringed. R. 601 to 607.

_% 8. The Court of Appeals, in total disregard of the find-

ings of: faet of the District Court, which included ‘specific

findings that.the Brooks patent measured up.to every

criterion of ‘‘inyention’’ known to the law, held:

‘In sum, the patent in suit does not meet the con-—

stitutional requirement of invention. It does not tend

‘to promote the Progress of Scienc. and Useful Arts’.

U. S. Const., Art. 1, See. 8, Cl. 8. Nor does it meet

the test of inv ention required by Congress: 35 U.S. (.

103.’’ : ;

REASONS FOR ALLOWANCE OF THE

WRIT AND ARGUMENT.

Rule 52 (a): of the Federal Rules of Civil Procedure, by

its terms, applies equally to all civil cases tried before a

Court withoat a jury and this includes patent cases,

While’ this is a_ patent infringemerit- guit, the questions-

submitted for review are not specific to the paint in suit

* but are general questions of patent law raised by the pro- ;

ceedings and the opinian of the Court of Appeals, showing,

. jurisdiction under Rule 19 (b) of this Court, as follows:

+1. The Court of. }ppeals for the Fifth Cireuit has

Vv erroneously held -invalid a, patent, -whielr is of the.

greatest importance to the industry engaged in the

raising and processing of cottan and in the manufac-

ture of cotton treating apparatus, whi¢h manufffetur-

.ing industry is concentrated in te Pifth Circuit,

whereby litigation elsewhere, with @ resulting conflict

Of decision is improbable, Schriber ‘Schroth ‘v. Cleve:

land Trust Co., 305 U. 8. 47; Muncie Gear Works y.

Outboard Marine & Mfg. Co., $15 U. 8. 759. Affi-

davit, Appendix D. | : ‘

2. The Court of Appeals has erred in deciding a

Federal Qnestion in a manner conflicting with Rule

“O02 (a) of the Federal Rules of Civil Procedure; and,

3 The decision of the Court 6f Appeats is in conflict

_ in important respects with decisions of this Conrt.and -

the Courts of —— of other Cireuits om the same

qostn of law; and,

"4 The decision of the Court of Appeals that the

patent does not meet the test of invention prescribed

by—Congress+in_35 U. S. C. 103 is in violation: of

FRCP 52 (a) because the District Court found as a fact

yas not obvious within the

that the Broek invention

i ’ the statutes

meanilig of

5. The decision involv Cs such departure from the ac-

cepted and usual course of judicial proceedings | as to

call for. the exereise of-this- Court’ 8 power of super ,

vision. (McCullough v. Coxgrov e, 309 U. S. 634.)

As to Point 1.

. Following the practice of the Sehriber Schroth v. Cleye-

land Trust Company and Muncie Gear Works v. Outboard

Marine and Manufacturing Company caws, supra, peti.

tioner has included in Appendix D, an affidavit of Mr

Merrill KE. Pratt, a person who has intim edge of

the cotton industry manufacbure of appar-

og J | - \ens 06 Relate 2 3, 4, and 5.

Traditionally, appellate courts always have given great

weight to the findings of fact by trial courts. : Even before

° the adoption of Rule 52 (a), this Court, ponowng the rule

| then in foree, said:

“( ‘onsidering that a patent has. been. granted to the -

| plaintiff, the case is pre-eminently one for the appli-

ce. cation of the practical rule frat so far as the. finding

4 of the master or judge who saw the witnesses ‘de-

_ pends upon conflicting testifiony, or upon thee eredi-

’ bility of witnesses, or so far as there i« any testimony

corisistent with the finding, it must be treated asx un-

* " assailable’. Davis v. Sehwartz, 115 U. S: 631, 636.”

- Adamson v: Gilliland, W 8. Ct. 169; 242 U. 8. 350, 353.

After the adoption of Rule 52 (a) the point came before

this Court and in its decision, the Court said:

“’

’

= ee

“To no type of case is this last clause more appro-

priately applicable than to the one before us, where

the evidence is largely the testimony of experts as to

Which a-trial court, may ‘be enlightened by scientific.

‘demonstrations, ix trial occupied some three weeks,

during which, as the record shots, the trial judge vis-

ited laboratories with counsel and experts to observe

‘actual demonstrations of welding as*taught by the

patent and of the weldjng accused of infringing it, and

of various stages ofthe prior art. He viewed niotion

| pictures of various welding o operatiotis and tests and

heard many expe Other witnesses. He wrote a

eare succinct opinion and made findings cover-

ing-all thé factua’ issues.

“The rule reqires that an appellate court. make

/ allowance for the Advantages possessed by. the trial

/ court in appraising the significance of conflicting testi-

‘mony and reverse only ‘clearly erroneous’ findings.”

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

_ 1949; 336 U. 8. 271, 275, 60 8. Ot. 535, 537. ~s

Tlie decision of the Court of Appeals in the instant case

does not in specific termes! set aside the findings of faet of

the Disfriet Court, but completely ignores them. The

statements. in the Court: of Appeals’ decision, purporting

to he facts, and upon which its decision is apparently

—based,-are indirect conflict with the specific findings of

fact of the District Court on the same matters. The prop-

osition we here urge ix forcefully expressed in this lan- >

guage: .

_ “Tt is urged, however, that concurrence of two

“ courts below, in holding the patent claims valid, gon-

cludes this Court. A recent restatement of the ‘two-

court rule’ reads, ‘A court of law, such as this Coust

‘is, rather than a court for correction of errors im fact.

finding, cannot undertake to review concurrent find-

—,, oo

ings of “act by two courts below in the absence of a

very obvious and‘ exceptional showing of error.’

Graver Tank (o. v. Linde Co., 336 U. 8S. 271, 275 (8) -

- "US.P.Q.. 451, 452). The questions of general, im-

portance ‘considered here are. not contingent upon re-

# solving conflicting testimony, for the facts are little:

in dispute. We set aside no finding of fact as to in-:

tion, for none has been made except'as to the |

"extension, of the counter, which cannot: stand as a

matter of law. The defect that we find in this judg-

ment is that a standard.of invention appears to have

been used that’ is less exacting than that required

where a combination is mada up entirely of old com. ‘

, Ponents. It is on thig ground that the judgment be: , §

- ” low is reversed.’ Great Atlantic & Pacific Tea Com.

pany v. Super Market Equipment Corporation, 340

@. 5. 147, 152. (Emphasis supplied.)

By this langue. this Court admonishes all appellate

courts, including itself, to abide strictly by the principles

of Rule 52 (a), riot to try, cases de novo. In the A & P

Tea case this Court held as a matter of law that it did not -

amount to patentable invention merely to make a‘ goods

counter longer than it had before been made. That was

the sole finding of fact entered by the District Court in

that case. It,was not -ignored nor set aside, but held

legaHy insufficient as the standard of invention applicable —

to that case. In the present case the District Court entered |

findings of fact upon every consideration heretofore ac f

cepted as determinative of the proper standard of inven-

tion to be applied. The Court of Appeals did net hold

that the findings of fact by the Distriet-Court in the instant fF

case were insufficient as a matter. of law; instead, the ~

Court of Appeals ignored the trial court? 8 findings and

* ‘substituted its own judgment on the facts. The record

cle arly shows that here the Court of Appeals was not in

= 13.

. .

a position comiparable to that of the Distriet Court i in 1 find-

ing the facts. . ;

Lastly, the Court of poner did sik hold the findings

of fact by the District Court to ‘be ‘‘clearly erroneous”’ .

Where, as in this case, there are conflicts in the testimony |

on vital points, this Court has held that ‘the findings. of ¢.

fact by.a District Court should not be set aside by they

Court of Appeals as ‘‘clearly erroneous.”’

‘While, of course, it would be our duty to correct

clear error, even in findings of fact, the Government

has failed to ‘establish any greater grievance here than,

‘it might have in any case where the eviderice would

support a conclusion either way but where the trial

om court has decided it to weigh more heavily for the

defendants. Such a choice, between two. permissible

views of the weight of the evidence is not ‘clearly

erroneous.’.”’ 'U. 8. v. Yellow Cab Co., 333 U. 8. 338..

‘The District Court painstakingly considered and entered

findings of fact upon thefollowing all of which have been.

E recognized by this Court as supporting a finding of inven-

tion and which, in sum, represent a most exacting standard :

of invention:

(a) The inv ‘ention was not obvious to a person of

ordinary skill in the art within the meaning: of 35—

ok Se section 103. Finding of fact No. 13; R. 604.

~~ (b) The invention was brought about in 1945 by’ a

. need which had existed since 1489 for an efficient

‘means for cleaning lint from mechanically harvested

> eotton as it came: from the gin. Findings of faet Nos.

3, R. 601, and 12, R. 603. Loom Conspany v. piecins,

105 U. ‘vw 580.

- commeteial success and it is a major improv ement and

of major benefit to the cotton farmer and the industry

a4 , .

ox ,

—14—

in , genteel: Finding of tact No. 5, R. 602. Minerals

- Separation v. Hyde, 242 U. 8. 261.

| (dd) doteOT the prior patents, and Ahe Garner ap-

paratus relied upon by the defendant wete designed

’ by their ‘makers to accomplish the functions us the

patent in suit, nor were they adapted or actually used,

nor could they be used without modification, to ac

complish.such functions. Findings of fact Noe. 11,

~ R. 603, and 13, R. 604. Topliff v. Topliff, 145 U. 8. 156.

(e) The. United States: Department of Agriculture, .

“employing skilled engineers and technicians in the ‘

Stoneville, Mississippi, Ginning Laboratory, commence-

ing in 1939 arid continuing after World War II worked

‘. on the problem solved by the Brooks apparatus, and iri

that work a Garner regin and other apparatus urged

by defendant to anticipate were tested’ and ‘found

‘wholly unsuited for the cleaning of lint cotton as it

- comes from a gin.. Finding of fact No. 12, R. 603- 604.»

Eibel Process v. Minnesota, etc., 261 U. 8. 45.

6 5 (f) All of the prior patents relied :upon to show €

"tack of inv ention relate to apparatus different in design

and wholly foreign in function to that claimed in the :

, patent in suit. Finding of fact No. 14°R. 604. Seymour f:

ie v. Oshorne, 78 U. 8. 516. =

(g) ‘Prior to placing on the market. the apparatus

charged to infringe defendant had experjmented with

at least three different types of lint cleaners. Defend-

ant had purchased plaintiff’s machine and had it in

its possession when. designing the accused apparatus.

The accused apparatus is in fact the full- equivalent

of the patented apparatus. Findings of. fact Nos. 15

to 19, inclusive, R. 604, 605. Adamson v. Gilliland,

242 U. 8. 350; Diamond Rubber Co. v. Consolidated

Rubber Tire Cor, 220 U. 8. 428, 441. ee

‘

. —

on mn

. ‘ ” ° . e : ‘

(h) The claimed combination is a new combination.

‘Finding of fact No. 13, R. 604. Bates v. Coe, 98

U. 8. 31., : ‘ .

(i) The new combination claimed in the patent

produces a new result. Finding of fact No. 5,-R. 602.

Loom Company v. Higgins, 105 U. S. 580.

The standard of invention.applied by ‘the District Court

- jn arriving at its determination of validity of the Brooks

patent was derived from and: based. squarely upon the fore-

going ‘considerations. Each of these considerations con-

caveahly bee Yeon hall ey the courte to be 0 Getermninatton

of fact. ~

In ‘disregarding the foregoing findings of fact by the

District Court the Court’ of sis gaa committed three basic

errors:. -

“=

1. It dloregar ompletely the dodistens on the

subject by this rt. Graver Tank & Mfg. Co. v.

Linde Air Products Co., ante; The Great Atlantic &

-Pacific Tea Co. v. Super Market Equipmient Corpora-

tion, ante; U. 8. v. Yellow Cab Co., ante. | *

. It failed to follow the rules laid down by its own

prior decisions, both in the fields of general law and*

patent law. '

. “Since their adoption (FRCP), how ever, ‘all find-

ings of fact, and this includes findings as to dam-

ages, made* by a trial court on waiver of jury

are reviewable in this court, subject to the provi-

sions‘of rule 52°(a) that ‘Findings of fact shall

not be, set aside unless clearly erroneous.’ Under

that rule, as it plainly reads and has been’ in-

terpreted by the courts, it is not for the appellate

court to substitute its judgment on disputed issues ~

Ygiact for that of the. trial court where’ there is

—

substantial credible. evidence to support the find-

-ing. Acadian Production Corp. of Louisiana v.

Land, 5 Cir., 153 F. 2d. 151. It may -reverse,

g though, under-the rule (1) where the findings are |

"without substantial ¢vidence to support them;-

(2) ‘where the court misapprehended the effect of |

the evidence; and ‘%) if, though there is evidence

which if credible would “be substantial, the force -

and effect of ‘the testimony. considered as a whole —

‘convinces that the finding is so against the great

| preponderance of the credible testimony that .it

~ does not: reflect or represent the truth and right

of the case. Katz Underwear v. U. S., 3 Cir. 127 —

_F. 2d 965; McIntosh v. Leisk, 5 Cir,, 95 F. od

164. 99 A

Saunders v. Leech, 158 F. 2a 486, 487. Pitateheecn,

_ C.J.) To the same effect: (a) Graham v. Jeoffroy,

258 F.2d 272; (b) Bryan, d. b. a. Bryan: c_sLift

be aaa’ v. Garrett Oil Tools Co., Inc.,. 245 F. 2d

; (c) Inglett & Co., Inc. v. Everglades. Fertilizer

a ‘Inc: 255 F, 2d 342, and cases cited _—

3. ‘It failed to*follow the meal whit of authority

as laid down by. othef Courts of ae.

~ (a) Court of Kppedia, First Circuit:

1, National Development Company v. Lgwson-

: Porter Shoe Machinery. Corp., etc., , 129 F. 2d 255.

'* “* 9° Bmerson.et al. v. National Oylinder Gas Com.

--~pany et al., 251 F. 2d 152. 3 ;

(b) Court of Appeals, Second Circuit:

; Arcadia Knitting Mills, Inc. v: Princeton Knit.

~ .-ting Mills, Inc, 124 F. 2d 330 (Cert. Den. 315

‘U. ™ $19). .

pc ak,

ak. S Haseltine Corporation v. General Motors Cor-

oe > poration, 131 F. 2d 34.» ;

| (d) Court of Appeals, Fourth Circuit: ~~ 5

‘\,. .> 1. 8..H. Kress & Company v. Aghnides et ‘al,

| - FP, 2d 718.

2. Colgate-Palmolive Company et al. v. _ Carter |

Products Inc, et al., 230 F. 2d 855.

. (e) Court of Appeals, Sixth Circuit:

1. O'Leary et al. v. The Liggett Drug ew

etc., 150 F. 2d 656.

2. Gibson-Stewart Company; Inc. v. Wn. Bros.

Boiler & Még..Co., 120 vU. 8. P. Q. 352 (Decided

Feb. 19, 195 ). a ;

: ( f ) Court.of Appeals, Bavonth Circuit:

-1..Miehle Printing Press & Mig. Co. et al. v.

Publication Corporation, 166 F. 2d 615.

x Hyster Company v. Hunt Foods, Inc, et al,

120 U. 8. P. Q. 140.

(zg) Cais of Appeals, Eighth Circuit:

“t 1. Keuffel & Esser Company v. Pickett & ar

"ait Inic., et al., 182 F. 2d 581: >.

/ . % Edward F- snaps wi: nlRtanen sha, 3) |

257 F. 2d 861. 7

, *

(h) Court of eae: Ni dies Gireuit: ba ee ee Yea

| Trico Products Corporation v. The Delman Our. cae

“" * poration et al., etc., 180 F. 2d 529: : :

; (i) Court of Appeals, Teiith Circuit:

a 1. Federal Security - Insurance ‘Company: ve.

Seg —< 259 F. 2d 294. «.

2. Jones v. Bodaneis, 189 F. 2d 838.

a as ae Di

; \ f

—8— ©

opmndisiasoal

This petition for cettiorart should be sieninheil

; ——— submitted, . oe

; a>

: E L. :

Comet Building, . °

- Birmingham 3 ghlsbeme, :

Attorney for. Petitioner.

. of Coninsel | ok ae

~ HENRY ‘. JENNINGS, Sy he

.: HUGH P. CARTER, . ty 4 “i

Title Building, . |

Birmingham 3, Alshama. A

\ 8 $ -

5 °

. e: _

e t : e

APPENDIX A...

: : In the ue

United States Court of Appeals

For the Fifth Circuit.

oS Neo. 17217.

the Murray Conipany of Texas, Inc., :

Appellant, ts

versus

Continental Gin. Company,

——.

«dicate from the United States District Court for the

: oe Northern District of Alabama.

" ebruary 26, 1959. i

_ ge *

Before Cameron and Wisdom, Circuit J udges, and

Wright, a a J udge,

Wright, District Judge: Plaintiff, appellee here, charges

..the defendant, appellant here, with infringement of its.

Brooks patent No. 23,044, issued in 1948, entitled ‘Cotton

Cleaning Apparatus. ad Appellant, the Murray Company of

Texas, interposes ‘the usual defenses of imvalidity and non-

infringement. The district court, on findings and conelu-

sions prepared and submitted by the prevailing party, held

the patent. valid and infringed. We hold the Brooks -*’

patent invalid for want of invention over‘the prior art.

sie *

‘

——

' The paterit covers an apparatus for cleaning lint cotton,

which is cotton fiber removed from the seed by. ginning.

_ Although the patent indicates that the machine is ‘a gen-

eral lint cottén cleaner, actually its primary use, as shown .

in the patent, is in connection with the ginning operation.

Cotton which is picked manually ordinarily does not re- .

quire cleaning betWeen ginning and baling for delivery to

the mill. -With the advent of mechanical pickers after

World War II gin house cleaning beeame a necessity be-

cause of tlie bits of:leaves and-other trash picked up wall the

mechanical. picker. .

¢ Cotton has long been eiial at the mill, before being

spun into thread, by ‘conventional lint cotton cleaners

~ well known in the art. What the Brooks patent does is

simply combine the elements of conventional lint cotton

cleaners as fourid in the mills and place them in a gin

house environment. Actually Brooks, the patentee ‘and

vice-president of appellee, Continental Gin Company, first

- applied for a°system p&tent covering the processing 5f

cotton from gin to baling press, passing through a

cleaner en route. In the traditiona® ginning operation

before mechanical. picking, the ,cotton was fiassed from

the gin, to a condenser,’ and thence down a slide to the

Kaler without passing through a cleaner. Brooks’ was

required by the Patent Office to divide his system patent

so that the cleaner shown therein, although part of the

ms In the ordi ginning operati the lint cotton is airborr®

a cond uid by the air current of the gin cloffing means, from

ty to a condenser, which is a slowly revolving )orizontally

disposed, cylindrical cage, upon the perforated peripherat surface

of which the lint cotton and its carrying current da are impinged

the air entering the cage through the perforations and being evacu*

ated by suction through ‘the ends of the cylinder, while the lint *

cotton is“ deposited and carried around’ upon the outer surface of

the cylinder unti i its doffed, or removed, therefrom in a thin ‘con-

tinuous bat, or s by the patent Phew of driven doffing pinch

rollers. The, Brooks system patént ows the traditional cotton

ginning operation: except that a cleaner is placed between the con-

denser and the baling press.

ee ee ee ee ee eee eee ee

. .

‘ | ine *

system, was patented separately. Murray, the accused.

infringer 6f* the lint cotton, cleaning patent, is a licensee

under the Brooks system patent. Murray, therefore, has

been granted the right, to use, the system but not the lint ~

cotton cleaner.

The Patent in Suit.

The Brooke patent in suit, the lint cotton cleaner, -re-

ceives the cotton from a condenser, not part of the paten®

doyn a slide in a wide, thin bat through cylindrical feed

rolfrs which pinch or press the fibers close together. The

feed rollers feed the eétton to the periphery “of a large

rotating cylinder equipped with saw teeth to which the

cotton adheres. Centrifugal force presses-the heavier trash.

in the cotton Slightly outward, and away from the saw

cylinder, where itis struck by the cleaning bars, fixed in

place close to the periphery of ‘the rotating saw cylinder,

which cars sever the trash from the fiber while keeping the

fiber on-the cylind@r. The trash falls into ‘the lower part

of the casing which covers the entire machine. Fiber

thrown off by -the cleaning bars is blown back to the gin

for reworking. The mass of the cotton still adhering to the

saw cylinder is taken off, or doffed, by a cylinder equipped

‘with.brushes which passes the cotton through a flue and

in the direction of the baling press. A wall separates the

doffer from the trash compartment, thus preventing trash

thrown ‘off the saw cylinder from mixing with the A@ean

_ ¢otton.; In short, what the Brooks patent in suit shows is

the conventional and well-known’ feed roller the equally

conventional and well- known saw cylinder, the traditional

doffer, the customary casing with a wall to keep trash

Separated from the clean ‘cotton, plus a nieans té conrey

away the trash. :

The claims in suit are 3, 4, 5 and 6. Claim 3 calls for

a lint cotton cleaner comprising a relatively wide casing,

a rotating saw cylinder in widely spaced relation with a

wall of the casing, feed rollers mounted over the saw

cylinder adapted to feeding cotton in a relatively thin uni-

form bat, a plurality of cleaning bars extending parallel:

to the axis of. the saw cylinder, a conveyer means for

disposal of trash, a recovery means for lint thrown off ‘the

_ saw cylinder in the cleaning operation, a doffing means and

a wall separating the ‘doffing means from. tlie trash com-

partment. Claim 4 is generally similar to 3 except that

it is not limited to a “plurality of cleaning bars.’’ In‘other

words, claim 4 of the patent covers one .cleaning bar.

-Claims 5 and 6 are similar to 4 except that a single dis-

posal mears for trash and lint thrown off: tle saw cylinder.

‘is claimed. In Claims 5 and 6, therefore, the cotton thrown

off with the trash would not be recov ered.

Brooks, although an officer of a large cotton machinery

manufacturer, had no drawings, no -plans, no diary, no

documents which showed the conception and development

of his patent. He testified he conceived the idea sometime

in. 1944, but there is no evidence of any experimentation

pursuant to this conception, nor was any machine, as

shown in the patent, ever built... Nor is. it shown whether

Brooks’ conception related to his system which he patented

or the cleaner patent in suit. The record does show thiit

. Brooks was present at a meeting at Memphis carly in 1945

attended by representatives of the cotton industry and that

problems atteridant on méchanization in the eotton in-

dustry. were discussed. It was shortly after this meeting

that Brooks.filed his patent application for a system patent,

subsequently divided as above indicated. |

The Continental Gin Company, as owner of he patent,

on the issue of validity sought to show a long-felt need

in the industry for a lint cotton-cleaner, as well as com-

mercial success, of its machine. The evidence indicates

that in 1946 80% of the cotton in this country was still

— 23 —

picked manually, though it was apparent to the industry,

as indicated at the Memphis niecting, that mechanization |

was on the way.: In fact, the Government, before World

War II, had made experiments with gin house cleaning,

using the lint(eotton cleaners then found in the mill:

These experiments were ngt satisfactory although some

- cleaning was accotuplished Using the, conventional cleaners,

ticularly the Garner regin. |

e machine manufactured by appellee, Continental Gin

ompany is indecd a-edmmercial success. But the com-

mercial machine is substantially différent from the patent.

The slide feed to the cleaner from the condenser has been

eliminated so that now the feed rollers of the cleaner are

fed directly from the condenser- doffing yollers. The posi- _.

fion of the feed rollers, with respect to the saw cylinder,

has been changed and instead -of using {wo smooth feed

rollers, as: shown in the. patent, one is. now serrated. ‘In

addition, a control:bar has been added which keeps the -

cotton from flaring: away and: being thrown off the. saw

cylinder, ‘'.us eliminating excessive throw-off of cottoh apd

the necessity for the cotton recovery-means shown in the

patent. .The drawing out, or stretching, of the bat between _

the condenser doffing rolls and the feed rolls, now an

important part of defendant's commercial machine, is

‘nowhere taught in the patent. In fact, a cleaner as shown

in the patent has never: been manufactured commercially

by Continental. .

it is common ground that the elements in the Brooks

patent present nothing new., Each ‘of them has been in

the public domain for many years.’ Continental contends,

however, that its, combination js new, that its machine

achieves a new result, that.this new combination and new

result were not obvious to one having ordinary skill in the

art, Murray, defendant-appellant, argues that the Brooks

combination is but an aggregation of old elements perform-

« ° .

— 4% | :

ing the same function in the same way; that Brooks con-.

tributed nothing to the sum of useful knowledge in the cot-

ton cleaning art, and that to give him and his employer a -

monopoly in the cotton cleaning art would take frem the

pndlic that which it has long known and used.

The Prior Art.

The prior art discloses many cotton cleaners ais

same combination of elements shown in Brooks: feeding

means, a rotating saw or toothed cylinder with an dmple

casing, one or more cleaning or whipping bars, and doffing -

means. Some of these prior art cleaners also include trash

disposals together with a protective wall to separate the

clean cotton’ from the mixed trash and lint. In 1882 the

Faulkner patent? was issued. It provides for feed rollers,

rotating ‘saw cylinder, cleaning bars and doffing means,

all very similar in organization and operation to the

combination shown in Brooks. Faulkner was not cited

by the Patent Office during the prosecution 6f the Brooks

application. i |

The Schorsch patent? issued in 1932 shows a enue 2

for ‘cleaning lint cotton preparatory to spinning. In

_ Schorsch, ‘the cotton is received from a condenser, as in

Brooks, in the form of a ‘‘bat or fleece’’ and is féd to the

conventional rotating saw or toothed cylinder by a con-

ventional feeding means, this time a feeder roller and

plate. The cotton is whipped against cleaning bars, as

in Brooks, and is doffed by a doffing brush, also as in *

Brooks. In fact, the only feature in Brooks absent iti

‘Schorsch is a specific means for removing from the bottom

of the casing lint and trash thrown off in the cleaning

operation. : ‘Schorsch was not cited - ther Patent Office.

2 Faulkner Patent No. 258,397, nit ¢

3 Schorsch Patent No. 1,889,615.

In Oxley,’ issued in 1925, there is shown & lint cotton

cleaner in Which cotton passes from a condenser to the

toothed cylinder of the cleaner by means of feed roller

aryl plate. The eotton is whipped around against cleaning

bars, called knives in the patent, and the clefin cotton is

* doffed by a carding drum whieh arranges the fibers in

parallelism for spinning. As with Sehorseh and. Brooks,

> lint egtton fed to the rotating cylinder comes directly

from the doffing rollers of a condenser in the form of a

~ thin, tiform bat, Qxley also has means to convey away

trash plus a wall separating the trash from the clean

cotton. Oxley was not cited by the Patent Office.

see Se eee. ©

was issued. “It ix designed to clean and salvage cotton

thrown off with trash in the picker operation. Like

Brooks, it includes g feeding means closely adjacent to

the toothed evliviee and adapted to feed a bat from a

_ condenser to the cylinder, cleaning. bars in the customary.

-_ position close to the cylinder, doffiit means and separating

“ wall] Howorth also provides a belt for conveying away

“sand or other similar impurities,” indicating that means

for conveying away trash was not unknown to the art.

_ ° Other: patents of gotten mill cleaners showing most, if

‘not all, of the elements of Brooks are Thoma No. 1,559,475

* of 1925 and Hollerunz No, 2,258,055 of 141. *

. In 1919 the Howorth patent,? cited by the Patent Office,

;

In addition to the, cotton mill cleaners anticipating

Brooks, there is a series of regin patents covering cleaners

. designed for cleaning lint. cotton in damaged, bales. No

regin patents were cited by the Patent -Offiee, The Pettit

Patent No. 1,401,439 of 1921 shows.a cleaner of the regin

type. It includes a conventional means for feeding cotton

to a rotating saw eylinder within a casing together with

> ; ro al --.

* Oxley Patent No, 1.567 541.

> Lloworth Patent’ No. 1.200 TRS.

— 26 — an

cleaning bars, all as in Brooks. Doffing from the saw

cylinder is accomplished by an air blast, a means well

_ known in the art. ‘There was also shown in Pettit a trash

removal means. |. : e hae

The. series, of Garner regin patenta is also. important

in- the prior-art. In.1926 Garner Nous 1,574,044 was ogee

It shows a’ rotating toothed cylinder being fed a ‘‘bat’* o

lint cotton by feed: rollers. A cleaning brush,. ‘aaatine

with an air blast for doffing, i is also shown. Cotton throw n

off by the cleaning brush is recirculated for further clean-

ing and separate _djposal means for removing trash is

provided. ‘Garner No. 1,527,859, issued. in 1925, shows: a

‘brnsh doffer protected - by a wall, recirculation means for .

_ thrown off lint and reindval méans for trash. These early

Garner patents show\ everything of substance disclosed

and claimed by. Brooks, exce). one or more cleaning bars

_ for which they substitute a cleaning brush. Beginning in

‘the early 1930’s Garner made and sold commercially regins

foe-dlean, ing cottén from dirty or damaged bales. In these .

- cleaners the cleaning bar, as in Brooks, i is used.

The Garner commercial regin: includes feed rolls feeding

to a saw cylinder, cleaning bar,. doffing means, means for

recirculating ‘and means for disposal of trash: It was

. this machine whieh,the Government’ tested in .1941-. while

experimenting with gin house’ cleaning of mechanically

picked cotton. In the experiment this machine did clean

cotton but it had two drawbacks: te throw-off of

fiber and insufficient capacity® for use with a gin. The.

excessive throw-off apparently was a result of using only ~

one Aeaning bar, thus allowing cotton to flare out from

‘the saw cylinder, before it reached the doffing means. <

Its lack of capacity was atteibutable to its size. The

6 All of the prior art mill cleaners and regins were of insufti-.”

cient capaeity for use behind a gin’ Buyt as will be shown infra,

_—

eo ‘ Pe

: —27—

Garner commercial regin also called for the delivery of |

the-cotton to the feed rolls of the cleaner in a continuous

’- bat. Thus the Garner’ commercial regin includes every

‘element of Brooks operating in the same way as Brooks.

Validity, . f

[

The presumption of validity, attends the prant.of a

' patent. and the burden of persuasion. of invalidity id on

the putative infringer. Radio Corporation of. America v.

Radio Engineering Laboratories, Inc., 293 U, S. 13 35

I’. S. C. § 282... The presumption is strengthened when it

appears that, the Patent Office has. considered and dis--

' tinguished the prior art relied on as anticipation. South-

ern States Equip. Corp. v. USCO Power Equip. Corp.,

_5 Cir, 209 F, 24.111. But where, as here, the Patent Office |

_ novelty is but an improvement on a peior patent, in -

A new an

has failed to consider pertinent art, the statutory pre-—

sumption of validity is greatly weakened.7

‘To be hatentable; it is not necessary that the machine

he broadly or generically’ new. It is sufficient if its

Which event patent ‘rights“thereunder are Strictly limited

to its precise form and elements. Diamond Rubber Co.

of New York v. Consolidated Rubber Tire Co., 220 U.S."

428; 35 U.S.C. § 101. A machine composed of elegiients

of the pyior art is. patentable if the combination produces

SYtectat result. Leeds & Catlin v. Victor Talking

Machine Co., 213 1. S. 301: Jeoffroy Mfg. v. Graham, 5

Cir, 219 F. 24 511: But a mere aggregation of old ele-

ments performing no new functions and achieving no

_hew result is not patentable. .Lineoln Engineering Co. v. '

* In Rosaire «. Baroid Sales Division, National Lead Co., 5 Cir..

L218 F. 2d 72. 75, this Court said: “This article was not considered |

by the Patent Office and the patents were therefore greatly weak-

ened and they lack the presumption of Validity that would otherwise

exist." See also Jacuzzi Bros: 7. Berkeley Pump Co., 9 Cir., 191

r. 20 632,68 «- .

s °

Ne.

—_

Stewart-Warner Corp. 303 U.S. 545; Keystone Driller -

Co. v. Northwest Engineering Corp., 294 U.S. 42, 50;

Powers-Kennedy, Con . v. Concrete Mixing

' and Conveying Co., 282 U.S. 175, 186. \As stated by the

Supreme’ Cofrt in Great Atlantic & Pacific Tea Company

_v. Supermarket Equipment Corp., 340 U. S. 147, 152,

‘‘A patent for a combination which only unites.old ele-

ments with no change in their respective functions, such

as is presented here,‘ obviously withdraws what already

is known into the field of its monopoly and diminishes

the resources available to skillful. men. This patentee has |

added nothing to the: total stock of knowledge, but has ~

merely brought together segments of prior art and claims

them in congregation as a“mgnopoly.’? .

Tested by the tyuchings of these authorities, it is obvi-

ous that the patent in suit is invalid for want of inven-

tion over the prior art. Brooks did nothing more tan’

take well-known elements of cotton mill cleaners and

place them in a gin house behind a gin without changing

their function and without producing a new result The—

idea of placing a cleaner behind a gin was-a good one

but it was not new. It. was disclosed in the Washburn

patent* in 1911. Even if it were new, its application .

would not amount to invention, but merely to double use, —

since applying an idea from an analogous art is not: in-

‘ vention: Powers-Kennedy Contracting Corp. v. Cgncrete

Mixing and Conveying Co., supra; Lovell Manufacturing

Co. v. Cary, 147 U. S. 623, 639; Howe Machine Co. v’

National Needle Company, 134 U. S. 388, 397; Carbide &

Carbon Chemicals Corp. v.Qexas Co., 5 Cir., 31 F. 2d 32,

33. Nor can invention inhere in mere ,increased size

“and capacity because ‘‘mere enlargement is not inven-

tion.’’ Planing-Machine Company v. Keith; 101 UU. S.

479, 490; Pennington v. a Supply Co., 5: Cir., 95°

F. 2d 291, 295. : | z

® Washburn Patent No. 95.993.

ie)

an =

In stm, the patent in suit does not meet the constitu-

tional requirement of invention. It does, not ten@ ‘‘to

promote the Progress of Sciencé and useful Arts.?” U. S.

Const., art. 1, £8, cl. & Nor does-it meet the test of in-

_ vention required by Congress. 35 U. S. C. § 103.9 What

Brooks, atid his = er, the Continental Gin Company,

did simply was ‘to’ watch the advancing wave of im-

provement?’ and Atte ‘mpt to ‘‘gather its,foam in the form

of patented monopolies’? which would enable m ‘‘to

lay a heavy, tax upon the industry of the country, with-

~ out contributing anything to the real advancement of the

arts.’’ Atlantic Works-v. Brady, 107 U.*S. 192, 200.

| ‘ Reversed.

_A true copy.

Test: | tipo

Edward W. Wadsworth,

Clerk, U. S. Court of Appeals,

: ; ‘. Fifth Circuit,

ae New Orleans, Louisiana.

. ; e . April 14, 1959.

‘ \ ;

® See also Stabler, v, Bright Leaf Industries, Inc., 5 Cir.. 261 F.

2d 383. a a aoe X -

. . \ ~<

Ye.

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" APPENDIXB. =. -.

Judgment.

--Ratract from the Minutes of February 26, 1959. :

- The Murray: Company of Texas,: Inc.,

No. 17,217." versus.

Continuental Gin Company.

- This cause came on to be heard on the transcript of the

record from the United States Distriet’Court for the North-

ern District of Alabama, and was argued by counsel; —

On Consideration Whereof, It is now here ordered and

adjudged by this Court that tlie judgment of the said Dis-

trict Court, in this, cause be, and the yu is hereby, re-

versed; |

It is torthér ordered and. adjudged that the appellee,

Continental Gin Conipany,.be condemned to pay the costs

of this cause in this Court for which execution may be

- issued out-of the said District Court. . on

Des e | | :

oe “e AP PENDIX C. ° ;

In the ‘United fitatis District Court for tis Northern ™.

District of Alabama, Southern Divisjon.

‘Continental Gin Cc lompany,, .

; ; Plaintiff,

oo nf hae | Civil Action. :

Ba No. 8061.

The Murray-Sompany ‘of pe age

panty Defendant.

Findings of Fact and Conclusions of Law.

This cause coming on to be heard on ‘the testimony and

exhibits of plaintiff’s and defendant’s witnesses and on the »

: argument and briefs of plaintiff’s and defendant’s counsel,

| and the Court, ‘Being fully advised, finds as follows:

ee | Findings of Fatt. . | aes

1. This is a suit for infringement of letters patent. of the ,

United’ States No. Re’ 23,044. The Court has jurtsdiction

of Re cause of action and of the parties. fine

2. Letters Patent No. Re 23,044, the patent. in “th re-

lates: to a lint cotton cleaner and is the property of the

plaintiff, Continental Gin Company. ae .

3. The i iny ention of the patent in suit. was brought about ‘

by the need in the cotton-ginning ‘industry for an efficient

i means» for cleaning the lint from: mechanically harvested

- cotton it came, from., Ahe | cotton ‘gin and before it was,’

_ baled

mR:

wt ¥

4" Prior to ‘thé invention of the letters, patent in cuit

there was np apparatus on the. market available te. ginners

capable of cleaning lint cotton as itcomés from the gin and

’ before it is baled, and the precleaning of seed cotton before

being ginned had proceeded as far as Was economical.

inthe lint flue

— 32 — ; oe

5. The apparatus disclosed and dalsied in the letters,

patent in suit was first put on the market during the 1948

ginning season, atid since that date more than 4,000 ma-

chines covered by the patent have been: sold for approxi-

mately $14,000,000.00. The value of the lint cotton passing

through these machines is increased approximately $20,-

000,000.00 per y®hr by reason’ of the nn sample pro-

— by the’ machine.

\ 6. The patent which resale’ t in the letters patent in suit

wailed originally June 7, 1945, and was directed not only .

to the “Satton-cleaning apparatus, but ‘to its combination

with the cottan gins, condensers and cotton press found in

gin house. Unter the rules of the patent office, the appli-

nt, Eugene H. Brovks, was required to divide the appli-

- cation and file a®eparaté“application directed spectmeadly

‘ to. the lint cotton cleaner. , fa 2 ity

| 7. The original application Lema as s patent No. 2,418, am _

694, April 8. 1947, consisted of- two claims directed to a .

battery of gins, a lint cotton: cleaner with each gin, a con-

denser with each gin adapted ‘to receive lint.cotton there-

from and deliver.it to its associated lint cleaner, a lint flue

common td all gins and cleaners, and means (a van located

Gaver cotton from the gins % the lint

flue or to the separate condensers and cleaners. The de-

z fendant. here is a licensee under that patent, but is not

licensed under the patent in ‘suit. .

_ ° 8. The patent upon which thig suit is based, taeeude orig-

inally .as ‘No. 2,440,139, April 20, 1948, with five claims.

, After if was issued it.was surrendered. and an, application

‘ was filed for a-reissue which resulted in the patent in suit

No. Re 23044: with six claims.

9, The drawi ings and dectttiaen: of the apparatis i in the

patent in suit are in such full, ylear, concise and exact terns ‘

as to enable any person skilled in the art to Which it per-

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

— . ;

and use ‘the device, and sets forth the best mode‘ contem- |

_ plated hy the inventar of carrying out his invertion (35

U.S.C, § 112). :

10. The complaint originally anaes the ddfendant with

infringement of claims 5 and 6. By amendment to fhe com- °

plaint, the defendant was charged additionally with infting- |

‘ing claims 3 and 4.

: The defendant rallee upon Petit Patent No. 1,401,439,

Garner Patents Nos, 1,527;859 and 1,574,344, all relating to

regins, and on the patent to-Oxley, Ngp-1,569,541, as antioj-

pating the patent in suit,.It also relies upon a stipulated

drawing showing ‘a Garner regin. as commercially uséd

prior to plaintiff's patent. None of the apparatus shown,

in these patents or in the stipulated drawing was’ designed

’ by its maker to accomplish the functions of the patent in '

_ Suit, nor was it adapted or actually used for the perform-

, ance of such functions. The defendant also‘ relies upon-ten

.other prior patents as evidence to show that no -invenfion

~ was involved in making the lint cleaner shown. i in the patent —

in suit. S

129 The United States Department of Agricultpre, in

1930, under: the authority of U-8.C., Title 7, § 424, estab-

lished a laboratory at Stoneville, Mississippi, to investi-

- gate the ginning of cotton. Skilled engineers and _ tech-

nicians at that laboratory, in an effort to design a lint

cotton cleanef, made tests and experiments during’ the

years 1939 to 1941 and following the end of World War II,

of available jint-treating apparatus, including a Garner

regin, such as is. shown in the stipulated drawing of a Gar-

ner regin, and found such apparatus, as well as other avail-

able apparatus tested, wholly unsuited for cleaning lint

‘cotton. as. it comes from a gigi.’

13. “None of the apparatus disclosed i in the prior patents

and instances of prior ‘public use relied upon by the de-

fendant as anticipating the patent ins suit, No. Re 23044;

. ;

” inelude or show the combination of elements defined in

elfims 3, 4, 5 and 6 thereof when construed in connection

“with the specifications to @hich they relgte, and none of the

. apparatus disclosed in said prior paten® and instances or

[of] prior pultic use were designed by their maker, nor

were algo actually ased for the performance of the

functiagns perfermed by. the apparatus of the patent in

suit. : ' ’

14. The -prior patents relied upon by the defendant ‘to |

show lack of invention in the patent in suit show apparatus

which differ in design and are entirely foreign in function

to that described and claimed in the-patent in Suit, o. Re

23044, and the subject matter of said patent in suit, toben

as a whole, would not have been obvious to a person hav-

irig knowledge of said prior patents, and having ordinary

skill in the art to which .the patent in suit relates.

15. Defendant 'sYengineers, prior to placing: the appa-

ratus here charged to infririge on the market, designed and

placed on the market three different designs of- lint

cleaners. ‘

16. During 1953 defendant purchased a lint cleaner from

_ plaintiff which was constructed substantially according to

‘the patent in suit and defergjant’ s evgineers had this ap-

paratus in, their possession when they designed the —_

ratus here charged to infringe,

17. Defendant's apparatus here charged to infringe the

patent in suit with colorable variations only is clearly sim-

_ ilar in design to plaintiff's commercial apparatus, which is

built in substantial compliance with the patent in suit, a

operates in-substantially the same way to produce substan-

tially the same result. _f :

18. In plaintiff's commercial machine, and as described

in the patent in suit, No. Re 23044, thére are two feed rolls

moutited over and closel¥ adjavent to the saw cylinder

which feed rolls received the bat of cotton from the con-

. — -

_ denser dofing rollp and- feed it to the said cylinder, In

*’ defendant's machine the condenser is placed nearer fo the

said cylinder and a single cloth-covered feed roll cooper-

ates with the condenser doffing rolls to feed cotton to the

saw cylinder. ?

19. The means employed by the defendant to feed lint

cotton to the saw cylinder of its lint cleaner here charged

with infringement functions in substantially tha same way

‘to aceomplish substantially the same result as the feeding

means disclosed and claimed in the patent in suit and i |

the mechanical equitalent of said means.

_ 20. In plaintiff's EY as first designed; separate

means were provided for collecting heavy traetf and lint

thrown off from the saw cylinder, and it was so described

and shown in the Patent No. Re. 23044. It was soon found ,

that an insignificant amount’ of lint was thrown off in the

Operation of the machine, and that said separate means for

" collecting lint served no useful function, thereupon the

‘ lint and trash collecting’ means were’ combined and the

lint and trash wera,carried away by a wingle conveyor.

Both plaintiff's-And defendant's commercial machines now

have only A-single conveyor for carrying awhy lint and

trash which ‘functions in a manner which is the mechanical

eqhivalent of that shown in the patent .in suit.

21. All the. essential features of plaintiff's comme

machine are clearly disclosed in the specification

‘drawings in plaintiff's patent here in suit, No. Re. 23044. -

Conclusions of Law.

1. United States Letters Patent No. Re. 23044, the patent

in suit, is good and valid in law and is the property of the

‘plaintiff, Continental Gin Company.

2. The defendant, The Murray Company of Texas, Inc.,

his infringed said letters patent, particularly claimis 3, 4, .

5 and 6 thereof.

_ ; ’

- of judgment for the Court’ s consideration.

—

3. Defendant’ 8 apparatus is a substantial copy of plain-

’ tiff’s commercial lint cleaner .covered by said letters patent.

4. If it be assumed ‘that defendant's cloth, covered feed

roller be an improvement over the feed rollers disclosed in

Phe patent’ in suit, still it does not avoid infringement be-*

. cause it operates in substantially the same way to obtain

“substantially the same result. (Temco. Electric Motor Co.

v. Apco Mfg. Co., .275 U. S. 319, 328.)

5. None of the devices: and apparatus shown in the prior

patents and instances of prior public use relied upon by

the defendant as anticipating the patent in suit, No, Re.

23044, and as showing lack of invention in the patent in

suit would have, at the time the invention was made, sug-

. gested. the improvements describejl and claimed in the

patent in suit to a person having ordinary $kill in the art

to which the subject matter’of the patent pertains. The

patent accordingly discloses and claims a patentable in-

vention. ae ome

£ Pending an accounting, and under the Sie a?

E-I-M Company, Inc. v. Philadelphia Gear Worké, Inc., 5

Cir., 223 F. 2d 36, the Court withholds a determination as

_ to wheiher the infringement has-been willful and deliber- .

ate and whether a punitive award is justified under Title

35, U. S. C. A., § 285. The Court also withholds a deter-

» mination of the allowance of reasonable attorneys’ fees un-

der Section 286, Jurisdiction as | to both matters is specif-

_ieally reserv ed. . ,

7.°Counsel for plaintiff will submit an : appropriate form |

Dated, this the 3rd day of March, 1958.

— fF | Greene,

United States District Judge. :

In the United States Distriet Court for the Northerng «”

District of Alabama, Southery Division.

Continental Gin ompany; I laintiff,

vs.” Civil Action.

The Murray Company of Texas,° Ine., | « No, 8061.

Defendant. '

Judwment.

Pursuant to thé Findings of Fact and Conclusions of Law

‘ entered herein, on the 3rd day of March, 1958, it is hereby

Ordered, Adjudged and Deereed by tbe Cgurt as follows:

1, That the patent in suit No. Re 23,044 issued October

19, 1948, for Cotton Cleaning Apparfitus is valid, °

\. 2. That the lint cotton cleaners heretofore manufactured.

and sold by the defendant and’ complained of in ‘the com-

plaint- constitute infringements upon said patent, particu-

larly claims 3, 4, 5 and 6 thereof.

3. That the ‘defendant, The Murray Compatiy of Texas,

Inc., its officers, employees, and agents, and all those in

active concert a participating with them, and each and

every one of them be and the same are hereby enjoined

from making, using, or selling, ‘directly ‘or indireefly, lint

_ cotton. cleaners of the -kind described in plaintiff’s Ex-

hibits Nos. 2, 3, 6 and 7, or any other that would infringe

upon said patent. No. Re 23,044.

om That the matter of’ damages, attorney’s fees, and the

question of punitive damagfs abide an accounting and the

Court specifically res jurisdiction as to said matters.

5. That the plaintiff have judgment against the defendant ee

for the .costs of this action.

“a and Ordered, this the 19th day of Marek: 1958._

H. H. Grooms, |

‘“* ‘United States District Judge. *

—

¢ ,

APPENDIX D.

AiMdavit in Support of Poti for Oeriorar

State of Alabama . -_ <:

County of Jefferson °

- Merrill E. Pratt, being duly sworn, deposes ine days that

he is of legal Axe, and that he is the Chairman of the Board

of Directors of Petitioner, Continental Gin Company ;

That he knows the names and addresses of ‘the various

manufacturers of lint cotton: cleaning machinery sold An

competition with the lint cotten cleaner sold by his com.

pany; and that the entire industry is concentrated in the

States of Georgia, Alabama, Louisiana and: Texas, all within

the Fifth Judicial] Cireuit of the United States.

Merrill E. Pratt.

Sworn to and subscribed before me this 28 day of April,

1959.

H. P.Gaines,

(Seal) ss 4. Notary Public.

My commission enpiete sangany G, 1960.

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.