# Petition for Writ of Certiorari — Continental Gin Co. v. Murray Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA04386419_0889%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1959 - **Citation:** 360 U.S. 911 ## Text Oitce-Sugress Ss So 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; | el wid tose Ee = - fe ee WN oi . sheen a } ® STATUTES, PEDERAI RULES AND ne@uLAatio : nr. GF OLVED. | i « oS “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. i _ (b) Whether the results achieved by the Brooks apparatus are obtainable by any of the prior art ap- paratus relied Upon by the defendati (c) Whether the commercial Brooks macfine em- 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- © type in suit is concentrated i in. the Fifth € irenit. 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: c “’ ’ = 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- . om —,, 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. (c) The patented sieiniins has enjoyed tremendous - 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, (c) Court of Appeals, Third Circuit: | 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 — : 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 $ - - a 5 ° . e: _ a 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 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. 4 a i * 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. 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 - . . \ ~< Q J Ye. -30— : " 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. Fa ‘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 f 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. i 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. _ ; ’ L. < - 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. : oe 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. fa --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA04386419_0889%3A2. Public record. Not legal advice.