Petition for Writ of Certiorari — Elrick Rim Co. v. Reading Tire Machinery Co.

Supreme Court brief1959

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PETITION FOR WRIPQE CERTIORARI

to the United States Court of Appeals

jor the Ninth Circuit.

Petition for writ of certiorari :.....-........555. 4p ceedensa 1

urisdiction of the courts below .............seseeeneeeees 2

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Concise statement of grounds upon which the jurisdiction of =»_—

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Bones Ob BO GUMISUINE 0c ccc ccc cc tccvceddcccscccccccectecc 3

Concise btatement of thp case ekauiaweiols Dents iaebiimaeaie 4

Reasons relied upon for the allowance of writ of 7

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"indefinite under the doctrine of Graver tira Fares

Co. v. Linde Ait Products Co., 336 U.S. 721, 69 S. Ct. -

535, and 35 U.S. Code, Section 112, and the judgment ~

holding the claims to be valid is in direet conflict with .

said case and statute .... asseccecte Cccacpecccsecgaces 8

Conclusion <........cq.ee00. perrerortyy pieibancetecanes ‘me J

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Table of Authorities Cited —

—_-- *

General Electric Co. ¥. Wabash Appliance Corp., 82 L. Ed.

ee Eee eer ee of tao ,

Graver Tank & Mfg. Co. » Linde Air Produeta Co, 33°_).S.

271, 69 S. Ct. $35 sghwekek shasta ih se 3, 5, 6, 7, 14, 16

nies,

ii CCS Tempore Avtuorities CITED

+. ¢@

7.3 Pages ~

’ Schriber-Sehroth €o. v. Cleveland Tre Ce. 83 L. Ed. 34,

305 US. 46......... Ge tg A eee: 1f

United Carbon Co. v. — & Smith Co., 317 US. 228, 63° |

—— 165 oe jseeeeeeeee eee en cree tens Sriuic casera 7,11

Codes

"28 U.S. Code: . : ) aaa

ee. Seeperrrrerr rere rere err eet tir There 2:

I BE cp edadtnndstinwas sehen cena errr et

Section 2201 ...... Ve asigas’ Mecupindinniattasss aa.

» INE TB ese is oss cacaa ges sacvends Bh ace ke 7

¢. | Seetion, 112 woe iene ried cakiannees ...-3, 7, 8, 10, 14, 16

."\ Rules . Pee

- Rules of U.S. Supreme Court, Rule 31, Subdivision Qe. 3

—_

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In the eugictme Court

° OF THE

| Aited States

OcToBER ‘ion 1958

% y ry : XN

No.. ;

——— ‘ : &

.Exeick Rm Company, a, copartnership |

_ consisting of M. C. Exarcx and M. B.

_ CHAMPLIN, | | je See

re ee . Petitioner,

vs. ate , §

_ Reapine Tre MacHINERY i Inc., a cor-

. poration, and Ratru K. Rearerrten an. |.

individual, be Z

ee . © Respondents. | wa

_. PETITION-FOR WRIT OF CERTIORARI

to the United States Court of Appeals

, for the Ninth a 4 |

Dias f “ .

‘PETITION FOR WRIT OF CERTIORARI.

Your petitioner, Elrick Rim Company, respectfully

prays that a Writ of Certiorari issue to. the Court of

Appeals for the Ninth Circuit to review the Judgment of

‘ that Court

of ‘United

valid and infringed claims 1, 2, 3 and’4

ters. Patent - ‘No. 2,721,148. A certified

- .

: copy of the iii including all: proceedings in th Court

of Appeals for the Ninth Circuit is furnished rewith in

compliance with Rule 31, Subdivision 2, of the Rules’ of

‘this Court. —.

_ ° JURISDICTION OF THE COURTS BELOW.

This: suit was commenced in the United S+ntes District

Court: by the filing of a complaint under the provisions a

of the Declaratory, Judgment Act, 28 U. S. Code} See.

2201. The jurisdiction of the Court of Appeals for the —

Ninth Circuit was founded on 28 U.S. Code, ‘Sec. 1291.

OPINION OF THE COURT BELOW.

” Copies of the opinion (R. 874) of the Court of Appeals

for the Ninth Circujt and fhe Judgment (R. 888) upon

_which review is respectfully sought are appended in the

Appendix to this petition. The opinion is reported .at 120

U.S.P,Q. 514, but at the time of preparation of this peti-

. tion had not been reported in the Federal Reporter. .

\ ; s

“CONCISE STATEMENT OF GROUNDS UPON WHICH THE —

JURISDICTION oF THIS, COURT IS INVOKED.

The grounds on which jurisdiction is invoked is that »

‘the Court of Appeals for the Ninth Circuit, by its Judg-

ment, has decided important questions of settled law in

a way in conilict with ‘applicable decisions of this Court |

and Courts°of Appeals of other circuits and has erro-

Seen ait Sethe indo.) dnd, 2 del

‘neously construed and applied a statute of the United

States, to wit, 35 U. 8. Code, Sec. 112. *. . €a3

The Judgment of the Court of Appeals ‘for the Ninth

Circuit, sought to be. reviewed was entered on March 4,

1959. A petition for rehearingewas filed on March 26, 1959,

and said petition was denied by the Court of. Appeals ‘for

’ the Ninth Circuit on April 6, 1959. This petition: is filed

in this Court within ninety days mere the denial of

said petition for rehearing.

The statute ‘confirming jurisdiction on this. Court. is

28 U. S. Code, See. 1254.

QUESTIONS PRESENTED.

1. Should’ a Court of Appeals be permitted to ignore

a doctrine of this Court wherein the interpretation and

application of a statute of the United States is settled?

2. Where the claims of a patent are free from am-

biguity but overclaim the invention to the point of in-_

validity, is a Court justified’ in referring to the specifica-.

tions of the patent to limit and thus validate said claims

when the doctrine expressed by this Court in Graver Tank

é Mfg. ‘Co. v. Linde Air Products Co., 336 U.S. 271, 69

S. Ct. 535, clearly prohibits such reference?

; , b-

STATUTE TO BE CONSTRUED.

The Statute to be construed is 35 U. S. Code, See. 112,

; as follows:

‘The specification shall contain a written descrip-"

_ tion of the invention, and of the manner and process

4 r :

; a

of making and using it, in nh full, dian % concise,

and exact terms as to enable any person skilled: in the

art to which it pertdins, or with which it is .most

nearly connected, to make and use the same, and shall

* set forth the best mode contemplated by the inventor.

of carrying out his invention. ,

' The specification shall conclude with one or more

claims particularly pointing out and distinctly claim- °

ing, the subject matter which the —_— —

as his invention. .

An element in a claim for a combination may be

- expressed as a means or step for performing a speci-

’ fied function without the recital of structure,. mater’ al,

or acts in support thereof, and such claim shal! be -

construed to cover the corresponding structure, ma-

terial, or acts described in the specification. and

equivalents. thereof.” xi

The pertinent ‘portion of this ‘Statute here involved ‘is:

‘‘The specification shall conclude with one or more

claims particularly pointing. out and distinctly claim-

» ing the subject matter which the oe regards as

his invention.”

CONCISE STATEMENT OF THE MSE...

This. suit originated under the Declarhtory Judgments

Act, 28 U. S. Code, Sec. 2201, wherein titioner, after.

receiving a notice of | infringement (R. 863), sought a

declaration that Letters Patent. No. 2,721,148 was invalid

and not infringed. The ‘District Court adjudged the four

- claims of the patent in, suit to be’ valid and infringed, and

this Judgment was affirmed on appeal to the Court of

Ramee for the Ninth Circuit. This: eines seeks a re-

. s

‘de of the Sudgisiat afiirming the J dieu of the Dis- ‘

trict Court that claims 1, 2, 3 and 4 of Patent No. 2, 721,148

> are valid 88.8 ‘matter of law.

Patent: No. 2,721 148: is coneerned with a: mcthod of

spray painting rubber cement on tire carcasses during

_ the retreading of tires. The purpose of spraying rubber

cement on the tire carcasses is so the rubber cement will.

act as an adhesive to hold the camelback or treadstock i in

place during the succeeding steps of retreading.,The prior

’ method of. applying rubber cement to a tire carcass was | .

~ to paint it on with a paint brush. The spray: painting

method of applying, rubber cement on tire carcasses: has

been. universally: adopted in the tire retreading industry.

Industry, statistics for the-year 1958 establish that there

were approximately. thirty-seven million ‘tires retreaded ;

during that year in the United States. |

The basis of contending that the claims of wk Patent’

No. 2,721,148 are invalid: is that said claims are fatally

Anhdefinite under the doctrine of Graver Tank ¢ Mfg. Co.

' vy, Linde Air ProductseCo., 336 U.S. 271, 69 S. Ct. 535,

: wherein this Court stated ‘that where claime were free

- from ambiguity and overclaimed the invention to the point .

of invalidity, it was:improper to refer to the specification

to limit the ‘claims for the —- of. validating said

"claims. | ‘ ;

In the use of tlie seinuity spray gun with’ a sailed

| pot, there is employed an independent air line connected

to one inlet of the gun whereby. Air under pressure is fed

theretp. There is also a fluid line connected to the other

inlet’ of. the gun whereby. fluid under pressure is fed to

¢.*. qi 6% -

: : _ erie:

the gun. The gun ,fulictions to atomize and spray mr air :

and wma onto.a surface. ” se ; ee.

‘The Court ‘of Appeals: for the Ninth Cireuit held ent

one of the novel features of the process of Patent. No. -

; 2,721, 148, thet-@ifferentiatga th nt

’ art, was the use of trom bv to 200 pounds ‘per square

. inch pressure in the indep ent air line leading directly

to the spray gun. The Court of Appeals for the Ninth

Cirenit throughout its opinion stressed this novel feattre

of the process. ¥et the ‘claims of said patent fail tas -_"

~¢lude any limitation of such pressures in the independent

- air line. Claim 1 calls only for’ “forming an fhdependent .

stream of " afr’? while claimns: ‘2, 3 and.4 call only: for ‘‘a

proeess from the prior

soufte of air under superatmosphéric pressure.’’? The |:.

: langage of the claims . is ‘understandable and free frei :

ambiguity. ‘Yet the range of pressure of the, independent

stream of air, included in each. of the claims,. is greatly

«=. in excess of the actual invention disclosed and covéred by

| said patent. ga i ee as

This contention was clearly brought out, by petitioner -

‘ in-the Court below, both on theoriginal hearing and on ,

~—the petition for rehearing. Yet the Court of Appeals for

Bi , the Ninth Circuit ruled as follows:

‘* Appellant challenges the on sufficiency of the

specific claims set’ out in Reading’s patent. In our

view, however, the stated claims of the patent -read

see in the light of the, patent Specifications are legally

, sufficient within t eaning of 35 U.S.C.A. att re

s>: 4" (R. 885, Appendix page 12.) : o

This ruling was made in complete disregard of the doc-

_ trine expressed by this Court in Graver Tank ¢ Mfg. Co. F)

i . ¢ . ‘ é . fi . .

"he 2 | w

;

he v. Linde. Air Products Co te ‘supra, sal has the effect of

- forcing’ millions’ of purchasers of retreaded tirps, in the .

United a to pay tribute to said Patent No. 2,721, 148.

REASONS RELIED UPON FOR THE ALL WANCE

“OF WRIT OF CERTIORARI.

1. The Court. of Appeals for the Ninth Circuit should

not ‘be ¢_permitted to ignore a set doctrine of this Court

whereift a Statdte of the Unite States is interpreted and

applied. o ;

‘ The Court of ‘haeai for‘ the Ninth Circuit, .in

fuling claims 1,2 2, 3 and 4 of United States Letters Patent

‘ No., 2:721, 148 valid, iby permitting reference _— speci- ;

fication ‘to limit said claims, made a ruling with réspect*

— to-35.F. S. Code, ‘See. 112 (the pertinent. language of the

present statuteg) ere involved, is identical with the lan-

- ‘guage ‘of the prior statute 35 U. S. Code, Sec. 33), in ~ °

conflict with the doctrine expressed by this Court in

' Graver Tank & Mfo. Co.-v. Linde Air: ‘Products Co., supra.

3. . The language of the claims of Patent No. 2,721,148

"is free from ambiguity ; the said claims overclaim the in-.

vention to the point of invalidity and. they should not be .

° . ‘gaved by reference to the specification ee defi-’.

nition of the invention. ae)

4. The claims of. the patent ‘, suit do not define the -

: metes ‘and bounds ef the invention; and thus deprive the-

public of being clearly informed: “during the life of the

patent-of the limits of thé monopoly “asserted, so that it

may be known. which features may be safely used without

a license. and which may not.’’ (Quoting from United

oe ec oe | :

8 5

Gorden Co. 0. Binney ¢ Smith Co., 317 US. 228, 63'S. Ct.

=~ : ee o

5. Issues of great moment tothe public are involved

in that the process covered by the claims of United States

Letters Patent No. 2,721,148 is employed in the retreading

a large percentage f truck and passenger car tires in the

United States, and as a result thereof each person who

a purchases: a retreaded tire for use on a vehicle will pay

tribute ta. this patent if the validity of the claims thereof

is sustained.

é i

CLAIMS 1, 2, $ AND 4 OF PATENT NO. 2,721,148 ARE FATALLY

' INDEFINITE UNDER THE DOCTRINE OF GRAVER TANK &

MFG, 00. v. LINDE AIR PRODUCTS 00., 336 U. 8. 721, 69 8.

CT. 535, AND 35 U.S. CODE, SEO. 112, AND THE JUDGMENT

HOLDING THE OLAIMS TO BE VALID IS IN DIRECT CON-

FLIOT WITH SAID CASE AND STATUTE.

' TRe said Patent No. 2,721,148 covers a process of spray-

‘ing rubber cement wherein there is fed to the ordinary

spra an independent stream of air under a pressure

of from 150 to 200 pounds per square inch and a stream

of emulsified rubber cement. The spray gun functions to

atomize and spray the air and cement. 2 .

"The Court of Appeals for the Ninth Cireuit. admitted

that the prior art discloses spray devices that can be

- utilized to practice the process of ‘the patent here in suit,

stating:

“There are at least three fhint-spraying: devices,

patented prior to Reading, whieh with. certain ad-

“+ justments or minor changes could have been utilized

to carry out the Reading process. One of these is the

Shelburne apparatus, patent No. 1,710,435. Another

—°*

is the Gradolph devite, patent No. 1,318,863. The third

is the McLean sprayer, patent No. 1,395,965. These

three patents claim devices and not methods. In each

case the principal purpose of such device is to spray

paint, but other liquids are also mentioned." (R. oe

. Appendix p. 5.)

The only difference between the process resulting from

the use of the device of either of the patents to Shelburne,

Gradolph or McLean is the use of an excessive air pres-

~ sure in the independent air line of 150 to 200 pourtds per

square inch antl the formation of an emulsion of air and

cement.

The Court of Appeals for the Nirith Cirenit and the. -*

District Court stressed the fact that an exeéssive pressure

in the independent stream of air of from 150 to 200

pounds per square inch was an important and novel part

of the patented process. The Court of Appeals in its opin-

ion said:

‘The high pressure in the independent air line, as

taught by Reading, reaches a magnitude of from one.

hundred fifty to two hundred pounds per square inch.

This makes possible the application of an exceedingly

thin coating of rubber cement which dries quickly,

thereby saving time and avoiding the dust, moisture,

and health hazards assogiated with former methods.

-+ The utilization of high air pressure in the bypass line

also aids in. overcoming the ‘cobwebhing’ effect to

“which reference has been made. In addition the high

air pressure utilized in the Reading process causes

the mixture to attain and retain an air volume above

the flammable limits of the solvent. The need of e»

treme care to avoid the danger of fire or explosion

is thus overcome.” (R. 877; Appendix p. 4.)

» 2 2 3 2, @

ed pete

—s 10

‘In paint spraying the application of air pressure |

in the independent air line in the 150'to 200-pound i 4

range is unnecessary and in fact undesirtble. Like-’ --' |

wise, there is no advantage in obtaining an emulsion’

- effect where paint is to be sprayed. In these two par-

turdars Reading teaches a process not contemplated’ . —

by Shelburne, Gradglph or McLean.’’ ’ (R. 878; Ap-

pendix P. 5.) (Italics ours.)

‘‘The trial court concluded that the use’ which

Reading made of the known paint spraying devices

"was not analogous to the uses for. which they were

originally designed. The Court based this conclusion

onsits findings of fact that Reading was the first to

“ use excess air préssure in the independent air line 4

and to obtain emulsion within the tank of liquid, both

of these techniques being undesirable in the case’ of

spray painting. In our view these two variances are.

sufficient to warrant the conclusion that mney .

teaches a nonanalogous art and is therefore a ‘new’

use of a known machine within the meaning of . |

§ 100(b)." ” (R. 883; Appendix p. 10.) acne ours.)

: ee @¢ ee © @ —__S

‘‘The independent air line under- Réading is used 9!

.at pressures far above, thdse contemplated by Shel-

burne and the other devices, though within the physi-

cal capability of those devices. Again, the use of this —

excessive pressure is to be desired in applying liquid

cement and to be avoided in applying paint. * e. 884 ;

- Appendix p. 11.) ;

Section 112 of Title 35 U.S.C. requites that the specifi.

cations contain a sufficient description of the invention to

enable one skilled in the art to make and use the inven- )

.tion and, in addition, requires.that the claims must par-

44 ‘ .

a ai — §

ticylarly point | out and distinctly claim the invention. This

defense is not a technical defense and has frequently been |

upheld by the Courts. The necessity of a proper disclosure

and a proper claiming of the jnvention, to ‘enable. the |

public to make and use the invention after the monopoly -

has expired, is one of the major considerations: for “the . |

issuance of a patent to an inventor. The metes and bounds |

— of the patent must be set forth, in order. that-those skilled™ ¥ i

in-the art may know what monopoly is asserted, and to _ 3

enable them to use other processes, structures and devices |

not covered by said monopoly. « |

Schriber-Schroth Co: v. ee Trust Co., 83 L. g - |

, 39, 305 U.S. 46; |

General Bléetric Co. v. Wabash Appliancé Corp’, |

82.1. Ed. 1402, 1405, 304 U.S. 364; = / |

United Curbion Co. v. Binney & Smith Co.,*87..L.

Fd. 232; 237, 317 U.S. 228, ae

No contention has ever been made, nor is there any ~~

- finding or statement by either the District Court or Court

of Appeals, that the language employed in the claims of

said Patent No. 2,721,148 is unintelligible or ambiguous.

The claims are free from ambiguity. What, therefore, are

the metes and bounds of said claims with reference to this

novel feature of the pressure employed in the independent

air line—the very heart of the invention!

The process. defined in clairn 1 is as follows:

‘A method of applying rubber omnes which. initentee

an inflammabie solvent,

comprising forming an iia of air in the ce-

ment in a dispersion zone by introducing said air

under pressyre—into_a substantial body of cement

from the dispersion zone,

forming an ‘indepéndent stream of-air,

“continuously mixing the emulsion stream with ‘said

independent stream of air in a mixing zone, .

and continuously directing the resulting mixture of

emulsion and air onto a surface to form a thin

’ uniform coating of rubber cement thereon.’’

(Italics ours.) = = °

: “In analyzing this process with respect to the independ-

ent air stream, we find that the step of\‘‘forming an in?

dependent stream of air’’ defined by claim 1 does not in

any way limit the pressure to be employed in said inde-

_ pendent stream of air. There is no imitation whatever

| A the pressure of air in this ‘independent stream of

ir’. Any pressure ftom 0 to infinity is includéd in the .

process of this claim. Certainly, this claim overclaims the

invention. We submit that, there being no limitation what-

soever respecting the pressure to be employed in the -

independent ai line in the process defined in claim 1, said

claim di particularly point out and distinctly claim

the invention of the patent.

‘The Court of Appeals states that this deficiency can he

remedied by reference to the specification which would

limit the pressure in the independent air line to 150 to

.200 pounds. However, the language empléyed in elaim 1

is free from ambiguity, and under the doctrine of this

Court expressed in Graver Tank ¢ Mfg. Co. v. Linde Air

Products Co., supra, there is nO justification for referring

to the specification te limit.the claim. Therefore, as 8

matter of law, said claim 1 is invalid.

The language of claim 2 respecting the independent

stream ‘of air is also representative of claims 3 and 4. —

We will, therefore, analyze the process of said claim 2 as

representative of said claims 2, 3 and 4.

Claim 2 calls for:

“A inethod of applying rubber cement which includes —

an inflammable solvent,

comprising introducing a measured. amount of the

cement into a dispersion zo

introducing a quantity of air ‘at superatmospheric

presstre inte the cement under ‘emulsion conditions

to form a stable dispersion of gas and cement under

pressure,

continuously withdrawing a stream of the emulsion

from the dispersion zoue, 7

‘continuously withdrawing a separate stream of air

from asxgpurce of air under superatmospheric pres-

sure, «

continuously mixing the streeme of emulsion and said

separate stream of’ air ina mixing zone to form a

spray of ernulsion suspended i in air,

and continuously directing the resulting spray onto

a surface to form a thin uniform coating of rubber

cement thereon.”’

(Italics ours.)

Each of these claims 2, 3 and 4 calls only for the air of

the independent stream to be ‘‘from a source of air under

| superatmospheric pressure’’, What - does , ‘superatinos-.

pheric pressure’’ mean? Atmospheric pressure at sea level

,; is 14.6974 pounds per square inch. A pressure, therefore,

“of 15 pounds at sea level would be superatmospheri¢ pres-

sure. The language of said claims 2, 3 and 4 encompasses a

- pressure in the independent stream of air of from approxi- 7

mately 15 pounds per square inch to infinity. Again, cfaims

2, 3 and 4 overclaim the’invention. The language of these

claims is free. from ambiguity and, therefore, they. should

of sthemselves ‘* particularly point. out and distinctly .

claim’’ the invention. Due to the fact that each of these .

‘claims is free from ambiguity, there is no justification —

_ for reference to the specification to limit the invention.

Therefore, as:a matter of law, each of said claims 33

and 4 is invalid. °

Notwithstanding the contention. ‘that the claims. ovér-

claim the invention and that they are ,free from am-

biguity, the Court of Appeals, in. affirming the’ validity

of said claims, said: el ee

“Tn our ‘view, however, the stated claims of the —

patent read in the light of the specifications are

_ legally sufficient within the meaning of 35 U:S.C.A.,

"eee Section 112.’ (R. 885; Appendix p. 12.) -

| This ruling is completely opposed to and ignores. thé °

interpretation and application of Section 112 of 35

U.S,C.A. in Graver Tank d Mfg. Co. v. Linde Air Pood.

~ ucts Co., supra, where this Court express ged the followiniz :

- déctrine respecting the application of said Section 112:

‘*The difference between the District’ Court and

-the Court of ‘Appeals as to i 8 findings comes to

—

this: The trial court looked’ at claims 24 and 26

fo \ alone and declined to interpret the terms ‘silicates’

_ | Y-and ‘metallic silicates’ therein as being limited or

qualified by specifications to mean only the nine metal- |

* jie silicates which had been proved operative. The

District Court tonsidered that the claims therefore

were tooy broad and eomprehended more than the

invention. The Court of Appeals considered that

. because there was nothing in the record fo show that

the applicants for the patent. intended by these claims’.

to assert ‘a monopoly Whoader than nine metallic

silicates named in the specifications, the court should

‘shave construed the claims as thus narrowed and.

‘ limited ‘by: the specifications. é

The statute makes’ provision for. spécification sepa-

rately from the claims .and requires that the latter

‘sitll _paisticularly point out and distinctly claim the .

part, improvement, or combination which he claims

as his invention or discovery.’ RS. § 4888, as —

amended, 35 U.S.C. § 33, 35 U.S.C.A. $33. It would

accomplish little to require that claims be separately -

written if they are not to be séparately read. While

vain repetition is no more to be encouraged in patents

than in other documents, and claim like: other state-

ments may incorporate other matter by reference, .

their text must be sufficient to ‘particularly point ‘out

. and distinctly claim’ an identifiable invention or dis-

“* eovery. We have frequently held that it is the claim

which measures the grant to the patentee. See? for

example, Mileor Steel Co. v. George A. Fuller Co.,

316 U.S. 143, 145, 62 S.Ct. 969, 970, 86 L. Ed. 1332;

- ‘General Electric (0. v. Wabash Appliance Corp., 304

U.S. 364, 369, 58° S. Ct. 899, 901, 82 L. Ed. 1402;

Altoona Publix ‘Theatres v. American Tri-Ergon

Corp., 294 U.S. 477, 487, 55'S. Ct. 455, 459, 79 L. Ed. |

1005. While the cases more often have dealt with

. . v4

; 16 :

eyorts to resort to specifications to expand claims,

it is clear that the latter. fail equally to perfarm their ~

function as a measure of the grant ‘when they over-—

. claim the invention. When they do so to the point of

invalidity ard are free from ambiguity which micht

justify resort to the specifications, we agree-with the |

District Court that they are not: to be saved because

_ the-latter are less inclusive. Cf. General Electric Co.

. v. Wabash Appliance Corp., 304 U.S. 364, 373,. 3F4, .

58 S. Ct. 899, 903, 904, 82 L. Ed. 1402; see McClain v.

Ortmayer, 141 U.S. 419, 424, 425, 12 S.; Ct. 76, 77, 7s,

- 35 L, Ed. 800; Cimiotti Unhairing Co. v. American

Fur Refining Co., 198 U.S. 399, 410, 25 S. Ct. 69, 702,

49 L. Ed. 1100.” (Italies ours.)

| tn applying this doctrine to the instant case, we find, .

first, that fhe claims of patent No. 2,721,148 are free from

"ambiguity; second, that the claims overclaim the invention

to the point of invalidity; and third, that said claims fail

tov perform their function as a measure of the grant to

thé patentee, — ak: het |

_ We submit Zhat said claims are fatally indefinite and

that the Cofrt of Appeals. for the Ninth Circuit should

not be permitted ‘to ignore the doctrine of this- Court

expressed in Graver fank & Mfg: Co. v.. Linde Air Prod-

ucts Co., supra. We urge that the’ decision here inyolved

_erroneously construes and applies 35 U.S.C. Section 112,

in direct conflict with said Graver Tank.@ M fq. Co. case

Be and ‘applicable decisions of other Courts - Appeals.

CONCLUSION.

_ We respectfully urge that in the public interest and in °

the interest of uniformity. this Court should review the

Judgment here involved. — |

| May 7, 1959. ie

Respectfully submitted,

Jack E, Hurss,

391 Sutter Street,

San Francisco 8, California,

. Athegney for Petitioner.

(Appendix Follows.)

FOR 1Tms. NINTH CIRCUIT

~ .

Exzick Roi Company, a co-partnership con-

sisting of M. C. E.aicx and M. B. Caamp.in,

| —

on | < = 15,986

Mar. 4, 1959

Reapina Tre MACHINERY Co. Ine., a corpora-

fion, and maee: R. Reaping, an individual,

a |

Appeal from the United States us Disttict Court for

the Southern District of California

Central Division

Before: Barnes, Hamley, and Jertberg, Circuit J udges., :

HAMLEY, Circuit. Judge: ‘

Seeking to defend its method of applying liquid Yubber cement

on tires, Elrick Rim Company brought this action for a declara-

tory judgment.'*The company sought a judicial declaration that

& patent owned by Ralph R. Reading, covering a process for the

application of liquid rubber cement, is invalid and not infringed

by Elrick Rim Company. It also sought damages for wale com-

_ petition. ;

The defend:nts are Reading, to whom the: - patent (No.

- 2,721,148) was issued on October 18, 1955>fand his exclusive

- licensee, Reading Tire Machinery Co., Inc. They denied the prin-

cipal allegations of the complaint. They. alsq; counterclaimed for

_ & judicial declaration that the patent is valid and infringed, and

1At the time the suit was filed Elrick Rim Company was a partnership

consisting of M. C. Elrick and M. B. Champlin. A California corpora-

tion having the same name, organized after this action was begun, is |

the successor in interest to the partnership. is

> . aa

ED. <a ENE

“9

2 ee Blrick Rim Company vs.

for treble damages for infringement. In sddition. defendants

sought an award of reasonable attorney's fees.

2 — After a trial, a» judgment favorable to defendants was entered.

Plaintiff was denied.all relief. The patent was declared to be

valid and infringed by plaintiff. Defendants were awarded single

damages in an amount to be. ascertained by a master. i Ley were

also awarded attorney's fees in the amount of $7,500.

Plaintiff appeals,® contending that numerous findings of fact

are clearly erroneous and that basic principles of patent lew were -

’ disregarded or misapplied.

The retrending of on eutemstilio tine fo ‘sccempliched by at-

taching tread rubber to a tire carcass through the application of

heat. The first step in doing this is to buff thoroughly the surface ©

of the tire carcass. It is then necessary to apply an aditesive

coating to thp buffed surface before placing the tread rubber.

At the inception of the tire retreading industry and for many

years thereafter this adhesive coating consisted of a thick, wet

layer of rubber cement dissolved _in an inflammable solvent hav-

ing a pettoleum base. A stippling brush was used in applying

. this coating. There was considerable difference of opinion in the /

industry as to the necessity for applying more than one such -

layer. ' ' . ae ‘

The viscosity and wetness as well as the thickness of thd

coating presented problems. It was necessary to remove the*coated

~ tire to a place of storage having adequate ventilation so that it

could dry under fireproof conditions, It wag also hecessary that

- the drying room be dustproof. If particles of dust were permitted -

. to settle on the surface of the drying cement, defective adhesion

* , of the tread rubber to the tire would later result.

At times of high humidity droplets of water vapor would con-

dense or settle upon the surface of the coating. is sometimes

. resulted in tire failures caused py the creation of por pockets

under the tread. It was therefore necessary: to suspend ‘the de-

seribed coating operations during periods of _ humidity.

.2As it may do under 28 U.S.C.A., § 1292(a) (1), elites 2 an account-

ing remains to be had.

Reading Tite Machinery Co., Inc., et al. 3

In this prior practice the evaporation of the solvents in

which

“the rubber cement was dissolved created « serious health hazard

to the operator. The prior practice was also time consuming with

espect to both {pe application of the coating and the drying

| ca | Elrick Rim Company vs.

— canine through the —_ of the spraying device at a high

pressure.

Emilsification,® as hesitins conceived it, is the entwninsient of

air’ bubbles, in the liquid cement. The result is a stable mixture

of cement solids and solvent. The need for constant stirring is

avoided, and there is no precipitation or settling of cement solids

. as long as the container is kept under pressure. -

It’ was discovered that the sprayed emulsion had less tendency

to “cobweb” than where no emulsion effect was obtained. The

elimination of “cobwebbing” made it possible to secure a more

thorough and even coating of the tire. It was also observed that

there is a. greater degree of tackiness to cement which has been -

emulsified by means of the Reading process.

This process, as finally developed, teaches ‘that the emulsifying

effect may be produced by’ introducing compressed air into the

container of the spray device through pinholes in an air inlet

| pipe near the bottom of the container. The desired effect can be a

| Obtained: by an air pressure as low as five pounds per square

\inch. Reading believed, however, that the best results would be

\ubtained by an application of forty pounds per square inch for

several seconds, - then reducing the — to about fifteen

pounds.

Bee]

The high ‘pressure in the independent’ air jine, as taught by

Reading, reaches a magnitude of from one hundred fifty to two

hundred pounds per square inch. This makes possible the appli-

cation of. an exceedingly thin coating of rubber cement which

dries quickly, thereby saving time and avoiding-the dust, mois-

ture, and health hazards associated with former methods. The

utilization of. high air pressure in the bypass line also aids in

overcoming the “cobwebbing” effect to which Teference has been

made. In addition the high air pressure utilized in the Reading

process. cauSés the mixture to attain and retain an air volume

3An emulsion is the dispersion of one liquid in another. The witnesses

and the trial court recognized that the entrainment of air bubbles in the

». cement and solvent as accomplished ‘by the Reading process did not

result in emulsion in the technical sense. Since, however, this is the

term employed in the Reading patent to describe what his process ac-

complished, it — be convenient to use that terminology in this opinion.

{

> Reading Tire Machinery Co., Inc., et al. i

above the ‘flammable limits of the solvent. The need of extreme

care to avoid the danger of fire or explosion is thus overcome.

There are at least three paint-snraying devices, patented prior

to Reading, which with certain adjustments or minor changes

could have been utilized to carry out the Reading process. One

of these is the Shelburne apparatus, patent No.A,710,435. Another

is the Gradolph device, patent No. 1,318,863. . The third is the

McLean sprayer, patent No. 1,395,965. These three patents claim .

devices and not methods. In each case the principal purpode of

such device is to ) spray ams | but other liquids are also men-

tioned. -

. application of air pressure in the inde-

pendent air line in/the 150 to 200-pound range is ecessary

and in fact undesitgble. Likewise, there is no advantage in ob-

taining an emulsion effect where paint is to be sprayed. In these

two particulars Reading teaches a process not contemplated by

Shelburne, Gtadélph or McLean.

In January 1953, which was towards the end of: Reading’s ex-

periment. period, one W. 8S. Cahill developed a method of spray-

ing rubber.cement on tire carcasses. After a little over a month .

of testing, ‘Cahill began the manufacture and sale of a spray

device to be used for this purpose. He, sold five.such appliances

between February 7 and July 23, 1953. One D. S. Hartman

assisted Cahill at the outset, and was later given Cahill’s original

‘machine. Hartman used ‘this machine in the regular course of his |

tire retreading business from February 7 to July 1, 1953, during

whieh period he processed 4,658 tires.

The Cahill method utilizes a paint-spray type of device but

without provision for agitation or emulsion of the liquid in the

tank. While compressed air is forced into the.tank, this is done

at a point above the liquid and only for the purpose of forcing

the liquid into the spray gun.

Cahill employs an independent air line connected to the spray

gun, utilized, as in the case of Reading, to atomize -the liquid

cement as it is applied. The patent issued to Cahill does not dis-

“i ‘Shelburne mentions ‘< paints, varnishes, enamels, or other liquid coat- —

_ ing compositions. . ; .’’ McLean refers to ‘‘paints, washes or chemicals.

6 . *s Elrick Rim Company vs.

close any casa air pressure, althovigh references are made |

toethe “high pressure” air supply. In 1's recommendations to

otfers using his device, Cahill advised the application of forty

/ pounds pressure in the deve men air line and five pounds in

the tank.

The Cahill process contemplates that bivsities will be applied

to the cement after it is coated on the tire. Most of the ap-

pliances manufactured by Cahill were actually without brushes. ©

Hartman, however, continued to use the brushes on his Cahill

‘device and considered them to be a valuable part of the machine.

This feature of Cahill has no counterpart in Reading.

The Cahill method of spraying liquid cement has a tendency

‘ to cause “cobwebbing” of the cement on the tire. The result is

that tiny filaments and strands of” dried cement would float in

the atmosphere, creating a health, fire, and dust hazard. As be-- .

fore noted, this “cobwebbing” effect was avoided in the Reading

process.

Reading made the first public diselopure of his'concept’on Jan-

uary 23, 1952. Cahill applied for his patent on June 17, 1953.

’ Redding applied for his patent on July 23, 1954. The Reading ~

patent was issued first—on October 18, 1955.The Cahill patent

was issued on August 7, 1956.

The application for the Reading patent as originally filed

’ was intended to cover both the device and the process. There-

after the application was divided and the patent issued on Oc-

tober 18, 1955, unlike Cahill, is on a process and not affap-

paratus. The part of the Reading application pertaining to an

apparatus is still pending in the patent office.

Appellant Elrick Rim Company has been in the tire-retread-

ing machinery business since 1951. M. C. Elrick, a member of

the original partnership, first met appellee Reading at a tire

dealers’ convention in 1954. Before meeting Reading, however,

Elrick had heard of the Reading method and believed that it

_was excellent. When the two men met, Elrick asked Reading

y any jobbing arrangement was available for northern Califor-

‘nia. Reading referred Elrick to Reading's northern California

representative who informed: Elrick that no distributorship was

available.

Reading Tire Machinery Co., Inc., et al. 4

Several days after the cobvention Elrick entered into s con-

tract with an Oakland manufacturer for. the production of «

‘spray device. Before doing so Elrick had made an examination

;

‘

tion.

The Elrick device as thereafter manufactured for and

_ keted by him utilized“ conventional pressure paint pot. In

the cement and solvent are put in the tank, which is then

_and air compressed 6 ‘ten pounds per square inch

to bubble through the liquid fdr a few minutes. The

ment is then released by pressing the trigger of the

An independent source of compressed air mixes

ment at thé nozzle as in any spray device. -

The instructions which Elrick issued to purchasers of

vice deseribe in some detail the operating method to be employed.

SThese operating instructions read as follows:

“To Operate

‘‘], Wipe tank with clean rag and pour 4 a. of

solvent ahd 2 quarts of rubber cement in tank. T

- may vary as sofie cements are thicker than others.

“2. Adjust air pressure regulator to 10# as shown on air guage.

; Do not use over 10#- as. spray gun has been adjusted for this

‘*3. Mix cement thoroaghly by air agitation. This is done by

opefing air release valve located at rear of cover ( the safety

valve). Allow air to pass through tank for about 3 minutes for

complete mixing. If sprayer is not used for several agitate

before using.

‘4. Apply cement to slowly rotating tire with spray gun about

8” from surface. Usually one rotation for each shoulder center

is necessary for proper coverage. When proper amount

tie

¢ 36

the

his

‘*General P

“Spray gun has been properly adjusted. Read instructions in

box before trying to make any changes.

‘Tt is not necessary to clean spray gue. Leave it connected at

* all times so that cement in hose apd gun does not dry. If gun does

8 | Elrick Rim Company vs. e

Elrick’s instructions for air pressure in the independent line. are

the same as in the specifications of the Reading patent.* E)-

rieck’s instructions for air pressuré within the liquid cement re.

ceptacle, however, \are . for ten q Pounds per square inch’,.as com-

pared to Reading's recommended intigh pelavare of forty: pounds .

thereafter reduced to’ fifteen pounds. | The Elrick instructions

do not mention “emulsion,” but use the term “air agitation.”

The Elrick process, however, actually does produce an “emul-

sion,” as Reading uses the term, though it may not be accom-

plished as quickly or as completely as by Reading’s process. In |

view of this fact and the similarity of methods as to atomization, °

* the Elriek practice is equivalent to the method disclosed by Read-

ing. Whether Elrick’s action in adopting this equivalent prac-

‘tice was willful, deliberate, and inten al is a ‘fact question

which will be dealt with at a later’ poi in this opinion.

The facts summarized above incorporate the substance of the —

findings of fact,’ but with considerable amplification. Appellant

challenges many of the individual findings of fact as clearly

erroneous. . .

, Sins ts ena ta tne Ril ot teen, eo those in

. ‘almost any case, where an individual finding, read alone, is in-

_ complete or inaccurate. The limitations af language are such

* that it is often impossible to state a fact with all of its at-

tendant qualifications and exceptions in a 7 sentence or

not -operate properly, contact ee pee local Binks dealer as listed in

- Y llow Pages of telephone book

; Full air presgure of 150# » 200# at air cleaner inlet is neges-

“sary proper atomization and drying of cemert.’’ 5

*The Reading specifications state: ‘‘The pressure of the compressed

air fed to spray gun is set at, about 150 to 200 pounds per square ineh.

“Certain of the statemehts contained i in the findings of fact are more

properly to be. considered conclusions of law, and have therefore not

been referred to.in the above summary. What the prior art was and -

what the patentee did to improve upon it are questions of Tact. W hether

what the patentee did is properly to be classified as an invention is a

question of law.: See Cee-Bee Chemical Co., Ine. v. Deléo Chemicals, Inc.

alee ra ...... , Coes 6.

(3 Sip ote aa y

¢ . ° . iets

, ‘ gy . oi

Reading Tire Machinery Co., Inc., et al, —o

“even a single ‘paragraph of reasonable length. The accuracy and

- completeness of findings of fact must therefore be judged by

reading them as a whole and not by considering individual find.

ings in isolation.

The findings of fact here in’ question are comprehensive, con

sisting of fifteen paragraphs. They are supplemented’ by an

eight-page memorandum decision. Although no attempt was

_ made therein to deal with each subissue or byway explored dur-

ing the trial, we find them to be adequate.

We also find them to be supported by substantial evidence.

This is demonstrated by the details we have added in the above

summary of the facts. Thees Uerails are based upon substantial

evidence. Where the evidence has been found to be in dispute,

we have adopted that version which. is consonant with the find-

ings of the trial court. This is the only proper course since it *

is hot our function to make findirtgs or to test the trial court’s

findings through a weighing of the evidence,®

The findings of fact are got clearly erroneous.

The trial comrt concluded ffem these facts that in the concep-

tion and perfection. of his process Reading exercised invention

end exceeded the, skill of tlie art. Appellant attacks this con-

clusion. It is argued that, as compared to the prior paint-spray

art taught by the Shelburne patent, Reading cannot be regarded

as the invention or discovery of a new and useful process. The

. same comparison is drawn and assertion made concerning the’

prior: liquid cement. spray art practiced by Cahill and ‘Hartman.

It has already been noted that the Reading process can be

utilized: by means of the Shelburne, Gradolph, or McLean de _

vice, providing certain adjustments ‘or changes ar. made. This .

fact alone, however, is not sufficient to rule out patentability.

The term “process” is defined in the patent law as including “a

new use of a known process, machine, manufacture, composition

of matter, or material.” 35 U.S.C.A.,- § 100(b). A different use

of s, known substance, machine, or process is not “new” with-

” mT

*Perlfaps the point concerning which there is the most eonflict in the

evidence is with regard to whether. the Elrick process produces an

emulsion.

10 eae Elrick Rim Company vs. - %)

in the meaning of this statute if it. is merely analogous or cog-

nate to the uses theretofore made.* °

The trial court eoncluded that the use whieh Reading made

of the known paint spraying devices was not analogous to the.

uses for which they were originally designed. The court based

this conclusion on its findings of fact that Reading was the

first to use exceas.air pressure in the independent air line and to

obtain emulsion: within the tank of liquid, both of these tech-

niques being undesirable in the case of spray painting. In our

view these two variances are sufficient to warrant the conclu-

sion that Reading teaches a nonanalogous art and is therefore a

“new” use of a known machine within the of § 100(b).

Loves

It is true, as appellant argues, that in n decisions the

rule has been announced that the mere function of a machine

is not patentable.'° But this rule does not apply in the casc of

& process patent involving the use of a known machine where

such use is found to be “new” within the meaning of § 100(\),

provided the other conditions of patentability are satisfied."

Appellant is quite right, however, in contending that patent-

ability is not established by showing that the process is‘new and

useful.’ It is made clear in 35 U.S.C.A., § 101, that to be patent-

able the new, and useful process must be the result of inven-

tion or discovery. The sathe view has been expressed with re-.—

- gard to the patent law as it existed prior to enactment of the

new patent act on July 19, 1952.13

‘

*Fluor Corporation Ltd. v. Gulf Interstate Gas Co., 5 Cir., 259 F. »

405, 408; B. & M. Corp. v. Koolvent Aluminum Awning Corp. of Ind.,

Cir., 257 F.2d 264, 267; Application of Wynne, C:C-P.A., 255 F.2d 956,

959; Application of Dueci, C.C.P.A., 225 F.2d 683, 688.

See, for example, Boyden Power Brake Co. v. Westinghouse,. 17%)

U. S. 437; Miller v. Zaharias, 7 Cir., 168 F.2d 1; Interstate Folding Box

Co. v. Empire Bo: he x 7 Cir. 68 F.2d 500; Demeo vy. Doaghaut

“Machine Corp., 4 Cir., 62 F.2d 23.

11 See Seukeeen on the New Patent Act, P. J. Peteten! Examiner-

in-Chief, U. S. Patent Office, 35 U.S.C.A., page 1, at pages 16-17; Ap-

plication of Wynne, supra.

. 12See Palmer v. Kaye, 9 Cir., 185 F.2d 330, 332; R. G. Le Deasneen,

Inc. v. Gar Wood Industries, Ine., 9 Cirs, 151 F.2d 432, 434.

Reading Tire Machinery Co., Inc., et al. ier

Invention or discovery is not present where the new use of

a known apparatus is-the product of the exercise of ordinary

professional skill. Pierce v. Muehleisen, 9 Cir.; 226 F.2d 200,

204, There must be ingenuity over and ve mechanical skill.

Sehick Service Ine. v: Jones, 9.Cir., 173 F.2d 969, 974.

‘Bearing these principles in mind, we think that the trial

court was warranted in concluding that Reading’s process repre-

sents’ invention -as compared to the prior paint-spray and liquid-

_ cement-spray aft. True, the Reading process makes use of the

essential features:of Shelburne and the other devices which have

been named. It is a new use, however, not only in the sense

‘that the device is used to spray a nonpaint material, but also

because essential elements of the device are employed in a man-

ner different from that originally intended. _

The compressed air inlet tube within the receptacle is used

not alone %o agitate the liquid (as in the case of paint) but also

to emulsify. it. Such emulsification is peculiarly desirable in

coating tires with ‘liquid cement and distinctly undesirable: in

‘applying ordinary paint. The independent air line under Reading

is used at pressures far above those contemplated by ‘Shelburne

and the other devices, though within - the physical capability of —

those devices. Again, the use of this excessive pressure ito be

_ desired in applying liquid cement and to be avoided’ in applying

paint. ; | At Se ' \

Unlike. the prior patents such as Shelburne, Canill’s apparatus

and mathod (also utilized by Hartman) is intended for use in

spraying liquid cement. But Cahill teaches neither emulsification |.

hor atomization achieved at excessive pressures. The result was,

as the trial court found, that Cahill did not overcome the dif-

ficulties which had long beset the tire retreading industry.

After @ long period of experiments and tests, varying his tech-

hique sometimes by plen and sometimes by accident, Reading

finally hit upon a way, overcome almost all of these problems.

The -need for such, a ‘development was urgent. Yet, despite the

efforts of trained mechanics in this industry, no one had found

the answer until Reading came along. * #B:

It is true, as appellant points out, that any mechanic can in-

‘stall an air inlet tube or regulate air pressure. But these steps

a *; Elrick Rim Company vs.

were not taken in the manner ~~ ni tien » purpose conitenaplated

by the Reading method until he discovered an advantage in do-

ing so. When they were taken, new, mmangontes, — extremely

useful results were achieved.

Chance was a factor in Reading's success, as it often is in

the unfoldment of an invention. But’ the prime credit ‘goes to

careful thought, painstaking research, experimentation and testing,

and what°we consifler’ m.::e than average patience, detcrmination,

and ingenuity. In our ofmion the trial court correctly concluded

that Readihg’s conception evidences the exercise of the inventive

faculty.

Appellant ~~ the legal eubictaniay of the specific claims

set out in Reading’s patent. In our view, howeyer, the stated |

claims of the patent read in the light of the patent: specifica-

tions are legaily suffeient within the meaning of 35 U.S.C.A.,

§ 112.

The facts summarized earlier in this . opinion indicate t to us

that Reading was not anticipated by the prior art. The trial

for prior use or sale or on account of any estoppel. We agree.

The facts concerning Elrick’s asserted infringement have ‘been

' stated herein at some length. The trial court’s ultimate finding |

that Elriek practiced a method equivalent to that disclosed by

Reading has already been sustained. The conclusion of law drawn .

therefrom by the trial court, to, the effect that Elrick infringes -

each of the claims at Reading, ee, follows and is: here ;

upheld. ,

' ‘The trial court ‘further found wit concluded ‘that Elrick’ 8

rece was “willful, deliberate and intentional.”!% Based

‘*The sr are finding of fact on this point reads as follows: ‘

‘*The plaintiff’s and cross-defendants’ infringement was willful,

deliberate and intentional and continued after notice in writing. .

The plaintiff and cross-defendants obtained knowledge of the status _

and nature of the Reading process and of the status of the appli-

cation for the patent in suit while representing themselves to Read-

ing as persons recognizing the patent rights of the defendants an‘ .

counter-plaintiffs and seeking rights as licensees thereunder, and

armed with such knowledge commenced immediately their infringing

ain Reading vais Machinery Co., ne, et +, 13

“on this finding, . the ‘ial. overs awarded attorney’s fees to ap-

pellees in ‘an amount later fixed at $7,500. Appellant argues

. that the evidence does not support this finding and the: ee

award. of attorney’s fees. /

There is substantial evidence to support the finding ihn El- -.

_ rick’s adoption of a process substantially equivalent to that of

Reading’s was willful, deliberate, and intentional. But the pur- .

port of the questioned finding goes beyond this, for it refers

to “infringement.” There could not be infringemerit unless Read-

_ ing’s process met: all the conditions of patentabili

of fact, then, is to ‘the effect that, having veseenatile grounds for

believing that Reading’s process was patentable, Elrick willfully,

deliberately, and intentionally set “out to infringe that patent.

We do not believe that there is substantial evidence to support |

such a finding: .Elrick certainly did not concede ‘any such moti-

vation. On the contrary, he testified that before entering into

competition he made an examination of the ultimate results: of

the Reading device and method, and. concluded -that Reading

was not-entitled to patent protection. .

Considered in the hindsight of this opinion that was an erro-

neous conclusion. But it-was not a ‘wholly umreasonable or un-°: -

founded conclusion, since the question of patent validity, in our

view, is closé on both the facts and the law. Having arrived at

that conelusion, Elrick pfoceeded in the only way that he could .

- to test the matter—he engaged in competition, and when resisted -

by Reading instituted this action for a declaratory judgment.

The finding of. fact as to intentional infringement is therefore

clearly -erroneous. j

‘Under 35 U. S.C.A., § 285, an award of reasonable attorney's

fees may be made to the prevailing .party “in exceptional cases.’

Having concluded that the finding as to intentional infringement

“e

actions. The instant action was brought by the plaintiff and counter-

defendants as a part of their willful, deliberate and intentional in-

fringement to defeat the. rights of the defendants and counter-

plaintiffs and to force a free_license. on pain of. the threatened

immediate bringing of the instant action and said acts of the plaintiff

and counter-defendants were in bad faith.’’ —

e : is)

. The finding ~ -

a Elrick Rim compen ee

ia erroneous, it is our viewthat there is toting else to cate-

gorize this as an “exceptional” case warranting the imposition of.

_ @ttorney’s fees’ See Park-In Theatres v. aearreys 9 Cir., 190 F.2d

137, °142.

The judgment is modified by eliminating therefrom the awafd

of attorney’s fees to, appellees. In all other respects the judgment

is affirmed. The parties shall begr their respective costs on this

appeal. °

(Endorsed: ) ha eau Filed Mar. 4, 1959.

‘“ / Paul P, O'Brien, Clerk.

/ te ‘

. . "

™

ee : rw

° ™a.

; f

~ »,

ie .

6. te

Reading Tire Machinery Co., Inc., et al. | 15 ,

Appendix te ke

No. 15,986

‘United States Court of Appeals

g : for the Ninth Circuit

és -+ @ te

Knick Rim Company, ete, | pas . :

Appellant, - @°: )

VS. ae ae i ,

READING Tine MACHINERY Co., Ine, | | |

ete., et al., : " C

Appelleag): t

‘JUDGMENT

' Appeal fren the United States District Court: for the

» Southern District of California, Central’ Division:

This. cause came on to be heard on the Transcript of

the Record from: the United States District Court for the

- Southern District of California; Central Division, and

_ was duly’ submitted.: “yet @

On consideration wheregf, it is_now here ordered and

adjudged by this Court, that the judgment of the said

District Court in this eduse be, and hereby is, modified |

by eliminating therefrom the award of attorney's fees to

appéllees. In all “other respects the judgtent is affirmed.

The parties’ shall’ ‘bear their respegtive costs on this

appeal.

- Endorsed) J ntonainnd. Filed and entered March 4, 1959

Paul de O’Brien, Clerk.

(- | ee

16 Elric Rim Company vs. |

Mes ae No, 15,986. \

: United States Court of stppeals

for the Ninth Circwit

Excerpt from Proceedings of Monday, April 6, 1959.

‘ Before: BARNES, HAMLEY and JERTBERG, Cire

ORDER DENYING. PETITION FOR REHEARING _

On consideration thereof, and by direction of the. Couft, *

IT’ IS ORDERED that thie petition gf Appellant, filed

March 26, 1959, and within time ailowed therefor by rule

of court for a rehearing of the above cause be, and hereby

is denied. ,

‘ Certificate or Service sh

+ Service of this Petition has beeh imade upon fiiien

R. Reapixe and Reapixe Tine Macu very Co., Lxc., by

_ mailing a copy thereof by United States mail, with

postage prepaid, to their attdétney, Mr. Albert M. Herzig,”

Herzig and Jessup, 757 West Seventh Street, Low Angeles

, 1, eemars this 7th day of May, 1959.

%. Jack E. Hvrsn,

hg Attorney for Petitioner.

om P. -

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