Brief for the Respondent in Opposition — Gilbert v. General Motors Corp.

A ces

Supreme Court of the United States

OCTOBER TERM 1942

No. 861

LEWIS W. GILBERT,

Petitioner,

VS.

GENERAL MOTORS CORPORATION,

Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

DRURY W. COOPER

ALLAN C. BAKEWELL

Attorneys for Respondent.

Post Printing Company, Inc., 225 Varick St., New York, N. Y.

INDEX

PAGE

STATEMENT 1

ORIGIN OF THE Buick Switcn 8

Tue Prior Devices or CoLLins AND KAUFFMAN... 11

Emons Uncen sy Perrrioxen 14

Se at Se NTT a RT Oe aoe 17

PETITIONER’S SUMMARY OF FACTS AND LAW .oocccccccccccccecooeee 20

EERIE SRD Beers ena Set Rae CE ROA RRM ROT OD 20

AUTHORITIES

Burr v. Duryee, 1 Wall. 531, 572 7

General Talking Pictures Corp. v. Western Electric Co.,

et al., 304 U.S. 175, 178 15

Gilbert v. General Motors, 41 F. Supp. 525 (D. C.

W. D.N. Y.) ]

Gilbert v. General Motors, 56 U.S. Pat. Q. 483 (C. CL A.

2) 1

Gilbert vy. Lachapelle, 127 F. {2d] 750 (U. S. CG. A.

ym i 10, 16

Hoeltke v. C. M. Nemp Mfg. Co., 80 F. [2d] 912 (C. C.

A. 7) 17, 20

Texas &@ New Orleans Railroad et al. vy. Brotherhood of

Railway & Steamship Clerks et al., 281 U.S. 5A48...... 15

Thompson Spot Welder Company v. Ford Motor Com-

pany, 265 U. S. 445, 447 15

Westinghouse v. Boyden Power Brake Co., 170 U. 8S.

537, 568 7

Statutes and Rules Cited

Revised Statutes, Section 4915 (35 U.S. C. 63 and 72a) 16

Rule 1 of the Rules of Civil Procedure 19

Rule 36 a of the Rules of Civil Procedure 18

Supreme Court of the United States

OCTOBER TERM 1942

No. 861

LEWIS W. GILBERT,

Petitioner,

Us.

GENERAL MOTORS CORPORATION,

Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

Plaintiffs petition in many instances fails to distinguish

between statements of fact, supported by the record, and

mere argument of counsel dehors the record. We believe

it necessary to restate some of the facts.

Statement

This is a so-called “submission” case—i. e., plaintiff Says

defendant appropriated and used an idea submitted by

plaintiff. It went to trial on a third amended complaint

(R. 2) which alleges three separate confidential submis-

sions to defendant of an unpatented switch, asserted to be

novel, and claims damages for the subsequent copying and

use of that switch by defendant on its Buick automobiles.

The opinion of the District Court (R. 32) is reported in

41 F. Supp. 525 and that of the Court of Appeals (R. 861)

in 56 U. S. Pat. Q. 483, not yet in Federal Reporter.

The primary question in an action such as this is one

of fact: Did the defendant copy and use the device of

i 7

9

plaintiff? -This question was answered in the negative by

concurrent findings of both of the lower courts (R. 47 and

R. 866):

“The Buick switch has nothing in common with that

of Gilbert except use of vacuum control and a mechani.

cal connection to the accelerator. These features are

entirely different in construction and function in the

Buick device and that of Gilbert.”

Without proof of similarity of defendant’s structure with

that of plaintiff and the use of a similar mode of operation,

there can be no liability on defendant’s part and it makes

no difference whether or not there was a confidential sub-

mission by plaintiff or whether or not the devices submit-

ted were novel. The fact of confidential submission, the

fact of novelty and the fact of copying by defendant must

all be proven. As _ plaintiff’s counsel said on the trial

(Rt. 68):

“As I said, unless we establish priority, we are just

out the window, because if they knew all about it, as

they say they did, that is an important issue. * * *

Now, as I say, we have to establish priority or we are

out, even though there was a disclosure and _ even

though they copied our device. We had no property

rights in it if it was anticipated by somebody else,

whether they knew about it or not, if they found it out

later.’

And again (R. 72

“* * * [plaintiff] is obliged to establish that they

took from him something that was original with him.

That is his case. If they took something from some-

body else, then, of course, he is out of luck. It doesn’t

make much difference whether they took it before or

after the disclosure because he no longer has any

originality. The date of the invention is highly mate-

rial here.”

The question of novelty of plaintiff’s switch was likewise

found against plaintiff by the concurrent findings of both

courts below (R. 47 and R. 866):

—

“These features are both found in the prior devices

of Kauffman' and Collins.”

‘

3

The third issue in such an action for damages is the fact

of a confidential submission. Both courts found that plain-

tiff’s switch was first submitted on September 10, 1931 by

one Watkins, acting for plaintiff, to Findley, an emplovee

of defendant’s Deleo Appliance Division at Rochester,

N. Y. This division manufactured only household appli-

ances. The courts also found that neither Findley nor

Watkins took the switch apart or made a sketch of it (R.

864); further it was found by both courts that there was

no evidence that Findley (R. 42) ever told any of defend-

ant’s other employees what he learned of it (admittedly

Findley himself had nothing to do with the defendant’s

design or manufacture of the Buick switch). There was

no finding that the disclosure to Findley was in confidence,

and not an iota of evidence to that effect.

That Watkins did visit Findley on September 10, 1931

is proved by two letters in evidence which were written

after the visit (R. 566 and R. 567), but defendant doubts

that the switch actually shown to Findley was the plain-

tiff’s switch here in controversy. Rather it seems that what

Watkins did show to Findley was an earlier switch, already

patented and that switch admittedly was never used by

defendant. That earlier patented switch is the only one

mentioned in the correspondence (and it is shown in a

drawing placed on one of the letters by Gilbert himself,

R. 566) ; this was found to be the fact by the District Court

and the finding was not disturbed by the Court of Appeals

(R. 42, findings 2e, 2f and 2g). Unfortunately Findley died

several years before the complaint was filed (R. 42) and

was not available to testify for defendant.

Watkins alone testified by deposition (R. 260-323) as to

what was said and done at the Rochester visit and the only

items of documentary evidence were the two letters above

‘The prior switches of Kauffman and Collins will be described at

p. 11 of this brief and their significance explained.

4

referred to. Watkins was not produced at the trial as he

was subject to arrest in New York State oe S witness,

Y pees Sheriff of Seneca County, N. Y., R. 256). By his own

ssertion he was not a disinterested ePore for he claimed

a 2Yy6% interest in Gilbert’s switch (R. 318). Watkins

was believed only in part (R. 42) and even he never testi-

fied that he had submitted whatever he did submit to

Findley, in confidence. The device said to have been sub-

initted was not produced in Court nor otherwise accounted

for, though Watkins said he thought Gilbert had it (R.

314) and Gilbert never denied it.

While defendant does not believe that there is adequate

proof of the fact that Watkins showed the plaintiffs device

in question to Findley, it will not here urge a ruling con-

trary to the concurrent findings of the lower courts. But

it does most strenuously contend that Watkins’ testimony

establishes neither the existence of a confidential dis-

closure—the two persons present thought they (R. 42, g)

were talking about the device of a publicly issued patent—

nor does it establish the use of the disclosed device by de-

fendant.

3oth courts found as a fact that the evidence did not

sustain the allegation (R. 5, fol. 14) of a second submis-

sion to defendant (R. 42, 43; R. 864, 865) which was as-

serted to have taken place in Detroit. No further regard

need be given to this allegation because petitioner, now,

has apparently abandoned it.

The third alleged submission took place on January 7,

1952 when one of plaintiff’s switches was sent to Prescott

(R. 588), one of defendant’s engineers at Anderson, In-

diana. Also on January 11, 1932 a copy of Gilbert’s patent

application (filed October 13, 1931) and some instructions

for installing his switeh (R. 596, 597) were sent to defend-

ant. There is considerable correspondence in evidence;

a letter of February 26, 1932 (R. 600) from Gilbert’s associ-

ate is of particular significance for it accentuates a dis-

tinetive feature of the operation of Gilhert’s switeh whieh

is not present in the accused switch of Buick:

~

0

“The wire which attaches to the throttle arm, has no

function im starting the starter; but serves to keep the

starter cut out as long as the throttle is open.”

Plaintiff offered no proof that this 1932 submission was

either intended, or understood to be, in confidence; indeed,

it was demonstrated that prior to that time plaintiff had

generally (R. 107-109, 159, 205) offered his switeh to other

companies without any attempt to keep the matter confi-

dential and had sold one of them to a company for twenty

dollars. But regardless of this fact, plaintiff was held not

entitled to any recovery here because defendant had al-

ready designed and adopted its own switch and this switch

is essentially different in structure and mode of operation

from that of plaintiff.

Before discussing the origin and history of the Buick

switch we will describe the defendant's switeh and eom-

pare it with that of plaintiff. The descriptions and com-

parison in the petition are inadequate (p. 11) and confus-

ing. Both courts found essential differences between the

structures of the two switches and specifically held that

they were designed for a different purpose and operated

ina different manner (R. 46, findings 22, 23; R. 866, 868) :

1). In the device of Gilbert, the control switeh is nor-

mally closed and the only thing which must be done to cause

the starting motor to become operative is to close the igni-

tion switch. This device is known in the record as a “key

start” device. Defendant’s device on the other hand em-

ploys a normally open control switch and the mere closing

of the ignition switch will not cause operation of the start-

ing motor (R. 39, finding 2 (a); R. 866; last par.) and

it is, therefore, not a “key start” device.

2). The mechanical connection between accelerator pedal

and switch performs a different function in the two devices.

With plaintiff, depression of the accelerator pedal either

pulls the contacts apart when the engine is not running or

holds them apart if the engine stalls so as to prevent the

Bs MANOR TIT AR EMRIs MORO ITER WAR WEN DA AL th Ral OME

ee aL

6

closing of the electrical starter circuit. As was said in

OTS)

plaintiff’s letter of February 26, 1932 (supra, p. 4; R. 600):

“The wire which attaches to the throttle arm has no

function in starting the starter * * *.”

Defendant’s switch operates entirely differently; depres.

sion of the accelerator pedal is used to close the starter

creult and is not used to prevent the closing of the starter

circuit (R. 39, finding 2 (b and ¢); R. 867, last par.; Dver,

R. 518-522).

5). In plaintiff's device one of the electrical contacts is

mounted on the piston and the vacuum created in the mani-

fold of the engine, when it has started to operate under its

own power, pulls the contacts apart and upon a drop in

vacuum, if the engine stalls or is stopped by the operator,

the contacts will automatically close under the influence of

a spring unless prevented by the continued depression of the

accelerator pedal. Vacuun, on the other hand, does not pull

the contacts apart in defendant’s device nor does it hold

them apart; vacuum merely declutches or disables the con-

nection between the aecelerator pedal and switch operating

arm so that the contact of the switch is permitted to rotate

to open position under the influence of a torsion spring.

With defendant's switch, if the vacuum should drop, the

switch contacts will not automatically close, regardless of

whether the accelerator is held in either a depressed or an

off position (R. 40; findings 2 d and e; R. 866, last par.).

+). With plaintiff’s switch there will be an automatic

restarting of the engine, should it stall, unless the switeh

contacts are held apart by the operator, whereas with de-

fendant’s device nothing will happen if the engine stalls

until the operator reclutches the switch operating arm by

taking his foot off of the accelerator pedal and again

depresses the accelerator pedal to rotate the switch con-

tacts to closed position (R. 40, 41, findings 2 (h) and (1);

R. 866, fol. S71).

(

Because of these radical differences between the devices

of plaintiff and defendant, it was inevitable that the Court

of Appeals should agree with the District Court and say

(R. 866):

“The Buick switch has nothing in common with that

of Gilbert except use of vacuum control and a mechani-

‘al connection to the accelerator. These features are

entirely different in construction and function in the

Buick device and that of Gilbert.”

Under this state of facts, conclusively established by de-

fendant’s proofs and not questioned by any of plaintiff's

witnesses, no court could find that defendant has in fact

copied the device of the plaintiff Gilbert and is liable to

account to him. The two devices are distinctly different

in construction, mode of operation and result.

Burr v. Duryee, 1 Wall. 5381, 572.

Westinghouse v. Boyden Power Brake Co., 170 U.S.

537, 568.

It is significant that plaintiffs petition totally disregards

the testimony of his only witness in regard to the strue-

ture and operation of the Buick switch and relies upon

argunents of counsel which are not based upon anything

in the record. For example, the claimed similarity of de-

fendant’s device to an electric light socket (petition, p. 12):

nowhere in the Record is there any basis for this state-

ment and it has never been used by counsel before it ap-

peared in the petition; also mechanically it is incorrect.

Plaintiff's sole witness on the operation of defendant's

switch was Mr. Frank Keiper, who was attorney of record

for plaintiff below and is on the petition as of counsel

here. It developed on cross-examination that he knew very

little about the structure and operation of the Buick switeh

(R. 232).

Origin of the Buick Switch

The Buick switch was designed by John B. Dyer, plain-

tiff’s engineer at Anderson, Indiana. He started his de-

velopment work in April, 1931 (R. 327) in connection with

some earlier vacuum switches designed for defendant by

Hill and Blake (R. 420). On September 10, 1931 (R. 640)

Dyer designed his first starter, which was not of the “key-

start” type (R. 356) but required the manual operation

of the accelerator pedal. The drawing and a long report

(R. 657), dated September 15, 1931, are in evidence. The

report is of interest because it shows that Dyer already

knew about a manually operated vacuum switch designed

by Collins which had been submitted to defendant (R. 672)

in January, 1931. The Collins’ switch is like that of Buick

(R. 519) in that it is a normally open switch and depres-

sion of the accelerator pedal is necessary in order to close

the switeh (findings 16-19, R. 45: R. 866: infra, p. 11).

On September 29, 1931 Dyer (R. 359) made a drawing

of a vacuum operated starter switeh (x. A-17; R. 643)

in which the accelerator pedal is used to close the starter

cireuit and in which vacunm disables the connection be-

tween the accelerator pedal and the switch closing lever

of the switch. Drop in vacuum will not recouple the con-

nector but it is necessary for the operator to return the

accelerator to the normal position and again depress it to

close the switch. In other words, it is not a “key-start”

device like Gilbert’s, but is a normally open switeh closed

manually to crank the engine, like that of Buick.

Immediately after Dyer made his sketeh on September

29, 1951 working drawings were prepared (the date, Octo-

ber 10, 1931 is now conceded, R. 646) and the device con-

structed (physical exhibit, A-59) and pnt in operation on

a car on November 3, 1931 (Ex. A-37, R. 649).

Dyer testified (R. 384) that he had never heard of Gil-

bert or his switch at the time he made and operated E.xrhibit

4-59, and did not learn anything of it until the Spring of

9

1932 (R. 350). Dyer did, however, know about Collins’ de-

vice even as early as the date of his drawing, A-13, which

was made September 10, 1931—this fact was reluctantly

admitted in plaintiff’s brief in the Court of Appeals (p. 37) :

“Nevertheless, we cannot deny that Dyer might have

learned something of the Collins device, or scheme, as

he puts it, early in September, 1931. His letter (De-

fendant’s A 12, R. 637) indicates that, and also in-

dicates that he has embodied this scheme in Defend-

ant’s A 13.” ?

The next type of switch designed by Dyer is in evi-

dence as Exhibit A-58 and is shown in a series of draw-

ings dated November 17, 1951 (xs. A-41 to A-47; R. 654).

This device differs from Exhibit A-17 (Sept. 29, 1931) and

from the commercial Buiek switeh (lox. A-62) in that

vacuum pulls the contacts apart but it is like those switches

in that the contacts are closed by operating the foot ac-

celerator as distinguished from Gilbert’s “key-start” device.

As Dyer had already designed and operated A-17 which

Buick followed, this A-58 of November 17, 1931 switeh is of

interest here merely because petitioner, without any basis

in the record, has again and again asserted that a patent

application filed on the Buiek commercial switch was in in-

terference with Gilbert in the Patent Office. This assertion

is contrary to the fact. The fact is that the Buick switch

application of Dyer was never in any interference, whereas

the Dyer application disclosing the A-58 switeh was in in-

terference with Gilbert and Lachapelle.

It is incredible that petitioner should continue the mis-

statements about the interference unless he still does not

understand the operation of the Buick switch, for Mr.

Keiper was attorney for the Gilbert application in the Pat-

ent Office and must be familiar with the particular Dyer

application there involved and the Dyer applieation on the

Buick switch is now an issued patent. Indeed our belief

that plaintiff actually knows the facts yet continues the mis-

* Petitioner seems to assert the exact contrary here, at page 9.

10

statements is confirmed by the fact that the complaint (R. 7)

in the case at bar correctly refers to the Dyer application

which shows Exhibit A-58 as having been involved in the

interference. Unfortunately the Court of Appeals was mis-

led in this matter and speaks of the Buick switch as hay-

ing been in interference. The District Court had made

no finding on this matter as there was no evidence offered

on it. But petitioner can take no comfort from his sue-

cess in misleading the court because the interference and

the subsequent suit in the District of Columbia denied him

priority and held that Lachapelle was the first inventor

of the single count in the interference (Gilbert v. Lachapelle

t al., 127 F. [2d] 750).

The count involved in this interference (R. 4, par. Ninth)

is really of no moment for it does not read upon the com-

mercial Buick switeh:

“A starter switch for internal combustion engines

comprising, a circuit opening and closing means, pres-

sure responsive means connected with the first named

means for operating the latter means, an accelerator

pedal, and control means for said pressure responsive

means operatively connected with said accelerator

pedal for controlling said pressure responsive means

to hold the circuit opening and closing means in cir-

cuit opening condition.”

In the Buick device neither the vacuum operated dia-

phragm nor any other pressure responsive means is “con-

nected” to the “cireuit opening and closing means” (which

must be the switch contacts). Nor is the accelerator pedal

“operatively connected” to a control means or the dia-

phragm or any other pressure responsive means for the

purpose of “controlling said pressure responsive means

to hold the cireuit opening and closing means (the switeh

contacts) in circuit opening condition”. As distinguished

from Buick, the accelerator pedal of Gilbert’s device is, in

fact, “operatively connected” to the suetion operated piston

which earries the movable switch contact to hold the plunger

down, ie., in “circuit opening condition” when the ae-

celerator is depressed.

a

1]

In view of the foregoing, the fact that some other appli-

eation of Dyer was involved in interference with Gilbert

on this count, constitutes no admission that the Buick switch

is the same as the switch of Gilbert in any particular.

If the issue of the interference did, in fact, apply to Buick

the decision of the Court of Appeals for the District of

Columbia would be an adjudication here (127 F. [2] 750),

since it would be a holding that Gilbert did not originate

it, which, on counsel’s statement (supra, p. 3) is fatal to

plaintiff's case.

The Prior Devices of Collins and Kauffman

Collins had invented his accelerator-pedal-operated

starter switeh in August 1929 (R. 441)—the date is now

conceded (R. 452)—and submitted it to defendant in Janu-

ary 1931. The original switch is in evidence (Ex. C-36 and

a photograph, Ex. C-38, R. 732). Dyer was familiar with

the Collins switch by September 15, 1931 (R. 637).

Fundamental characteristics of Collins which are pres-

ent in Buick but absent in Gilbert’s switch (R. 519):

(a) It is not a “key start” device but requires the manual

depression of the accelerator pedal to close the starting cir-

cuit.

(b) The starter switch is not normally closed.

(c) The vacuum operated member does not move the

switch contacts apart.

(d) Removal of the operator’s foot from the accelerator

when the engine stalls will not close the starter circuit.

(e) A spring is not used to close the starter switch.

(f) A spring is used to open the switch.

(g) Vacuum does not open the Collins switch, it disables

the mechanical connection between the switch actuating

_

12

lever and the accelerator pedal which permits the switch

to open by spring pressure.

(h) After the vacuum device has disabled the connec.

tion between accelerator pedal and switch lever, the ae.

celerator is free to perform its normal function in the

operation of the car and does not hold the switch open.

(i) Application of vacuum does not progressively de-

crease the contact pressure of the switch contacts.

(j) Fluctuations or ripples in the degree of vacuwn will

not cause the starter switch to chatter.

(k) Fluctuations in the vacuum ean cause no damage to

the pinion gear and ring gear of the starter system.

(1) The switeh is not held in open position by vacuun,

nor by depression of the accelerator.

Kauffman submitted several different types of switch to

defendant and Dyer knew about them before he ever heard

of Gilbert (R. 399).8

Two of the Kauffman switches (D-19 and D-27) are of

particular importance for they negative invention in Gil-

bert and a third switeh (D-23; D-24, R. 575) operates like

the Buick switch, for vacuum disconnects the actuator from

the switch. The original devices are all in evidence.

Eavhibit D-19. This starter switch was described in de-

tail by Mr. Kauffinan (R. 473-6); it was designed in 1928

and embodies a means operated by the accelerator pedal

to positively prevent closing of a suction opened control

switch when the vacuum falls and is incapable of holding

the switch open. It was installed on a Chrysler car and

was in successful daily use by Mr. Kauffman as early as

the early summer of 1928 (R. 473). J. W. MeDonald who

3 Petitioner is in error in saying that the Court of Appeals took

this statement from respondent’s brief there, and not from the record

(Pet. p. 9).

_ sia

15

was associated in business with Kauffman from 1927 to

April 1929, corroborated the identification of the exhibit

and stated (R. 498) that he had seen it installed on the

Chrysler.

This switch is much like that of Gilbert in that the switch

is operated by vacuum and held open by the accelerator

pedal. Thus, as admitted by plaintiff’s counsel, Gilbert can

not prevail against defendant in any event, for he can not

establish priority over Kauffman (R. 68).

Exhibit D-27. This switch of Kauffman is important

hecause it was shown to defendant a few days after August

31,1931 (and therefore earlier than Gilbert’s first assertion

of submission). It is an improved form of D-19, operating

in the same way, but designed for a different form of

starter drive.

On August 27, 1931 Mr. Kauffman wrote (Iix. D-1; R.

733 to Mr. Mooney, then vice-president of defendant in

charge of exports and told him about the switch of Exhibit

D-27 and asked him for a letter of introduction. They

had been classmates at the Case School of Applied Sciences

in Cleveland (R. 457). On August 31, 1931, Mr. Mooney

gave Kauffinan two letters of introduction (Ex. D-3 and

Ex. D-4; R. 736-737) and between that date and Labor Day,

he showed drawings (Exs. D-7, 8, 9; R. 741-743) of his

switch and modifications of it to Mr. C. E. Wilson (R. 459),

vice-president of defendant. Then on October 16, 1931,

Kauffman showed Exhibit D-27 to Mr. Hunt and left draw-

ings of the device with him, and these drawings were sent

on to Mr. Prescott at the Deleo-Remy division at Ander-

son, Indiana.

It is clear from the foregoing that a starter switch device,

including means operated by the accelerator pedal to pre-

vent closing of the switch at low vacuum, was submitted.

to defendant prior to any claimed submission by Gilbert

of such a device. Therefore the defendant can owe noth-

ing to Gilbert, even if defendant had used such a device,

which it did not do.

14

Errors Urged by Petitioner

We shall now take up point by point the errors urged by

petitioner and the reasons assigned for seeking a Writ.

The record demonstrates, we believe, that the Courts below

correctly found the facts and applied the law in dismissing

the complaint.

Error 1 (petition, p. 6): The fact is that there was no

evidence whatsoever that Findley informed other em-

ployees what he learned about the device Watkins showed

to him. Lovett, the patent attorney assigned to Delco (R.

408), Halblieb, general manager of the plant (R. 366),

and Wallis, research engineer (R. 367), all knew and

worked with Findley but never heard him mention Gil-

hert’s starter, and no report was found in the files. Like-

wise Dyer specifically testified that he first learned of the

Gilbert switch in the Spring of 1932 (R. 350) and had

never even heard of Gilbert or his switch when he designed

the Buick switch (R. 384). Petitioner admitted in his brief

before the Court of Appeals that he had failed to make his

point (p. 31). When Dyer did learn of Gilbert’s switch he

adapted none of it (R. 522).

Error 2 (petition, p. 6): The submission to a manufac-

turer of a device devoid of novelty without any intention

or understanding, by either party, that it was in confi-

dence, raises no trust relationship with respect to the de-

vice. Neither Watkins nor anyone else stated that any of

plaintiff's submissions were intended to be in confidence

and Watkins’ call on Findley was entirely voluntary (R.

101) and not at the request of Findley or anyone else in

defendant’s employ. But even if the law were otherwise,

defendant did not in fact adopt plaintiff's switch nor profit

by the submissions and there ean be no liability under such

a state of facts as this.

15

Error 3 (petition, p. 6): Petitioner’s only witness to the

structure of defendant’s switch was Mr. Frank Keiper,

petitioner’s attorney, and he admitted he could not tell how

the device operated (R. 232). Petitioner makes no men-

tion of his testimony. The burden of proving similarity

of two devices just as in proving infringement in a patent

case rests upon plaintiff who asserts it. But defendant

did in fact prove, through its witness Dyer (R. 516-522),

and by demonstrating the devices to the trial court, that

the Buick switch is totally unlike that of Gilbert, in strue-

ture, mode of operation and result. Both courts found for

defendant on this point (R. 39, findings 2 a to 2 j and

R. 866).

Error 4 (petition, p. 4+): The fact is that there is substan-

tial evidence in the record that the Buick switch and that

of Gilbert are so essentially unlike that one could not have

been copied from the other. The testimony of Dver estab-

lished the essential differences and there is no testimony

to the contrary. The concurrent findings of the Courts

below should not be disturbed for there is no conflict with

courts in other Circuits.

Thompson Spot Welder Company v. Ford Motor

Company, 265 U.S. 445, 447.

Texas & New Orleans Railroad et al. v. Brotherhood

of Railway & Steamship Clerks et al., 281 U.S.

548, 558.

General Talking Pictures Corp. v. Western Electric

Co. et al., 304 U.S. 175, 178.

Error 5 (petition, p. 6): Dyer made drawing A-17 (R.

643) on September 29, 1931 (R. 359) and the Court of Ap-

peals, affirming the District Court, correctly found that

Dyer invented the defendant’s switch. The court below

likewise was not in error in holding that Dyer had the

benefit of Collins and Kauffman; Dyer testified (R. 399)

that he knew about Collins and the fact is also mentioned

by Dyer in his report dated September 15, 1931 (R. 637).

16

Dyer also testified about his knowledge of Kauffman (R.

399) before he learned of Gilbert.

Error 6 (petition, p. 7): There can be no interference,

as a matter of law, between two devices which are so en-

tirely dissimilar in fact as those of Buick and petitioner,

Error 7 (petition, p. 7): Petitioner misconstrues the sig.

nificance of Lachapelle. The switch of petitioner and that

of Lachapelle (R. 500; Ex. E-2, R. 779) have three im-

portant features in common: both are “key-start” devices,

in both vacuum pulls the switch contacts apart, and in

both the accelerator pedal is used to prevent the closing

of the switch contacts but performs no function in closing

the switch. Applications covering these two switches were

in interference and Lachapelle was awarded priority of the

eount by the Patent Office. Then followed an unsuccess-

ful suit by plaintiff under Revised Statutes Section 4915

(385 U. S. C. 63 and 72a), aflirmed on appeal by the

Court of Appeals for the District of Columbia (127 F.

[2d] 750). Therefore, between Gilbert and Lachapelle the

latter has been determined to be the first inventor of the

subject matter of the interference. As Lachapelle’s as-

signee, defendant would be entitled to avail itself of

the priority award to Lachapelle as against Gilbert but

this has nothing to do with the present controversy because

defendant does not manufacture and sell a starter which

employs the three distinctive features common to the switch

of Lachapelle and Gilbert, nor one which embodies the count

of the interference (supra, p. 10).

Error 8 (petition, p. 7): The courts below committed no

error in regard to the proper interpretation of the Fed-

eral Rules of Civil Procedure and the evidence clearly es-

tablished that plaintiff failed to prove his case.

Error 9 (petition, p. 7): The record conclusively proves

that there is no novelty in the Gilbert switch and that de-

fendant did not copy any feature of it—cither in structure

_<————

17

or operation. Independently of Gilbert Dyer designed an

entirely different switch for Buick which in its principal

features of construction and operation was the same as

the earlier devices of Collins and Kauffman.

Petitioner’s Reasons

1and 2 (petition, pp. 7,8): The decision in the case at bar

is not in conflict with the case of Hoelthke v. C. M. Kemp

Mfg. Co., 80 F. [2d] 912, nor with any of the cases cited

on page 9 of the petition for the reason that the courts

below concurrently found as a facet, upon substantial evi-

dence, that the device of defendant and that of plaintiff

were not similar and that defendant had not copied any

feature of the plaintiff’s switch.

On page 8, petitioner again states that in the inter-

ference Dyer swore that the Buick device was essentially

the same as that of plaintiff; this is not the fact. The Dyer

application there involved was not the Buick switch, as we

have shown above (p. 9).

3 (petition, p. 9): This “reason” is based upon a mis-

interpretation of the Court of Appeals’ opinion; what the

Court did say in regard to Collins and Kauffman is sup-

ported by the evidence (R. 865, 866) :

“In doing his work Dyer had the benefit of some other

devices which had been submitted to the defendant

and which should be mentioned briefly. One was by

Collins * * * a man by the name of Kauffman also sub-

mitted several devices which Dyer had available for

use before he perfected the Buick switch and before

he became acquainted with the plaintiff’s switch.”

Dyer knew of Collins in September, 1931 (R. 637) and of

Kauffman (R. 399) by October, 1931, whereas he did not

learn of Gilbert until the Spring of 1932 (R. 350, 384).

4 (petition, p. 10): This section of the petition is so con-

fused that it is impossible to understand what petitioner

18

intends. The only point about Lachapelle is that Gilbert

cannot claim to be the inventor of even the count of the

interference for priority was awarded to Lachapelle, so

that if the count did read on Buick the plaintiff could not

prevail in this case. However, defendant does not employ

a structure which is within the description of the only claim

involved in that interference (supra, p. 10). Certainly the

cases cited are in no way in point and the case at bar is not

in conflict with them.

5 (petition, p. 11): This section of the petition is based

upon a misdescription of the Buick switch and a confusing

comparison of an electric light socket for which there is

no basis in the record. Also there is no basis in fact for

reference to two helical springs above and below the dia-

phragm, “designed to force the contact points into the same

place” (p. 12); it is merely an unjustified attempt to argue

sinilarities in operation between Buick and Gilbert which

do not exist. We have already stated the essential differ-

ences (supra, p. 5) between Gilbert and the Buick switch

and they need not be repeated.

The footnote on page 3 asserts a date of 1928 for the

invention of Gilbert’s Exhibit 3 but the fact is that Gilbert

failed to prove any date prior to the fall of 1931 for his

switch. He had not one iota of documentary proof earlier

than the application date (Oct. 10, 1931) and all his physical

switches in evidence are of vague origin (R. 93) or admit-

tedly constructed merely for the purposes of the trial.

6 (petition, p. 13): Petitioner asserts that Rule 36a was

misconstrued by the Court of Appeals but none of the cases

cited is an authority for the assertion.

The facts are these: prior to the trial plaintiff served

upon defendant certain requests (R. 619) for admissions,

each of the requests was duly answered and the answers

(R. 855) served upon plaintiff and filed July 30, 1940. It

is true that the answers were signed by one of defend-

ant’s attorneys and not sworn to, but plaintiff raised no

19

objection at the time. Six months later the case went to

trial and still plaintiff made no point of the lack of oatii

to the answers; indeed he himself offered proof as to the

subject matter of many of the requests and made no ob-

jection to defendant’s offer of proof which conclusively

established that plaintiff had not proven his case. Then

after the conclusion of the trial plaintiff raised a question

about the answers in a brief but thereafter seems to have

abandoned it again for at the hearing on the settlement

of findings of fact and conclusions of law before the Dis-

trict Judge, he made no mention of the matter and did not

suggest a finding or conclusion in regard thereto. Cer-

tainly the Rules of Civil Procedure were never designed

nor intended to permit plaintiff to stand by, and only after

his own evidence and that of defendant had demonstrated

he had no case, then to raise a technical objection which

could have been corrected had the point been raised at

the proper time. Rule 1 points to the intention and pur-

pose of all the rules:

“These rules * * * shall be construed to secure the

just, speedy, and inexpensive determination of every

action.”

It would be contrary to every principle of justice to

sustain a default based upon a point like this, tardily

raised, and of no inherent merit. The opinion of the Court

of Appeals remarks that it thought that if the absence of

an oath to the answers was itself an admission of the truth

of the requests, then plaintiff must prevail. The Court is

in error about this for the requests (if deemed unanswered)

do not establish that defendant has used the switch of

plaintiff nor that there is any novelty in Gilbert’s switch.

The contrary to these two necessary elements of plaintiff's

case have been established by clear and convineing evi-

dence. The question of the interpretation of the Rule is

moot in view of the proof that plaintiff, on the facts, is

entitled to no recovery from defendant.

20

Petitioner’s Summary of Facts and Law

Petitioner states nothing which warrants the grant of

the writ; the essential facts were correctly found by the

courts below upon ample proof and the law correctly ap-

plied thereto. We call attention to the unjustified remarks

under section (+) on page 19 of the petition; they are not

only irrelevant to the issues here involved but are untrue;

defendant did not “lie” to Kauffman nor is it true that

it “stole” his invention. Also the assertion that the sub-

mission by Kauffman on October 16, 1931, was “too late”

is not in point for Kauffman first got in touch with de-

fendant on August 27, 1931 (R. 733), through his old friend

Mr. Mooney, Vice President of defendant, and had ex.

hibited the drawings (R. 741-743) to Mr. Wilson, President

of defendant (R. 459), before Labor Day, 1931. This was

all prior to Gilbert’s first submission in Rochester and

long before Dyer ever heard of Gilbert.

Conclusion

We submit that there is no conflict of decision between

different Circuits and no question of public importance in-

volved; that the facts found by the Courts below, coneur-

rently, establish that defendant did not copy anything sub-

mitted to it by petitioner and therefore the case of Hoeltke

v. Kemp, and other cases cited by petitioner, do not apply

and the judgment is not in conflict with them. Wherefore

the petition should be denied.

Respectfully,

Drury W. Cooprr,

ALLAN C. BAKEWELL,

Attorneys for Respondent.

(9871)

ah

niga)

eI FOr ANF oe