Petitioners Brief — Blanc v. Cayo

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BRIEF IN SUPPORT OF PETITION FOR WRIT

OF CERTIORARI.

Opinions of the Courts Below.

The findings and conclusions of the United States Dis-

trict Court for the Western District of Michigan, Southern

Division, were filed May 18, 1943, (R. 18) and the decree

entered pursuant thereto on May 24, 1943 (R. 29). The

findings and conclusions adopted by the Court are reported

in 50 Fed. Supp. 552.

The opinion of the Circuit Court of Appeals for the Sixth

Cireuit was filed December 16, 1948 (R. 254). It is re-

ported in 139 Fed. 2d 695. Petition for rehearing ( R. 257)

was denied February 14, 1944. (R. 281.)

Jurisdiction.

Note petition (supra, p. 2).

Statement of the Case.

The essential facts of the case are stated in the accom-

panying petition for writ of certiorari.

Specification of Errors.

The errors which petitioner will urge if a writ of cer-

tiorari is issued are that the Cireuit Court of Appeals for

the Sixth Cireuit erred:

1. In holding that claims 4, 5, 7, 8, 9, 10 and 11 (of

which claims 4, 8 and 10 are typical) of the Machine

Patent were not infringed.

2. In holding that claims 1-6, inclusive, (of which claims

4and 6 are typical) of the Cutter Patent were not infringed.

3. In failing to adhere to the guiding principles set down

by the Court in its prior decision in Blanc v. Curtis, 119

akon. og

it,

Hed. 2nd 395, on which to determine infringement in this

cause, and which failure so to do has resulted in confusion

and lack of uniformity of decisions within the Sixth Cireuit,

with respect to the scope and interpretation of the Machine

and Cutter Patents.

4. In failing to follow its prior decision in the case of

Blanc v. Curtis with respect to the determination of in-

fringement in this cause, thus leading to a conflict between

the decision in this case and District Court decisions in the

Eighth Circuit based on said case of Blanc v. Curtis as a

precedent.

ARGUMENT.

Validity of Machine and Cutter Patents Sustained.

The validity of the original and Reissue Machine Patent,

as well as the Cutter Patent, has been sustained by the

Court of Appeals for the Sixth Cireuit in this cause and

in its prior decision of Blanc v. Curtis, 119 Fed. 2nd 395,

the Court of Appeals for the Eighth Cireuit, 109 Fed. 2nd

911, and the District Court for the Southern District of

Iowa, Southern Division, 58 U. S. P. Q. 54, 42 U.S. P. Q.

497, 35 U. S. P. Q. 150, and 33 U.S. P. Q. 466. Such findings

should not be disturbed by this Court, (Goodyear Tire

Rubber Co., Inc. v. Ray-O-Vac Co., 60 U. S. P. Q. 386, 388;

Williams Co. v. United Shoe Machinery Corp., 316 U. S.

364, 367), and the issues herein should be limited to the

determination of infringement of the patents.

It is urged that in presenting this petition, respondent

does not desire a retrial of the facets, but only a proper

application of law which has been established with respect

to these patents, in the determination of infringement in

this cause.

Machine Patent.

The machine of this patent is essentially a root cutting

machine and in this respect it differs from all sewer clean-

ing machines of the prior art. Petitioner started where

the prior art machines left off and created for the first

time a new combination of elements which in operation will

not only perform the functions of the prior art devices,

which is that of merely ramming or dislodging the stop-

page in sewers to release the same, but in addition, will

perform, for the first time, the operation of cutting large

and small roots of trees and shrubs which penetrate and

are frequently found in sewer pipes and which create there-

in the main and most frequent cause of sewer stoppage.

The Circuit Court of Appeals for the Sixth Circuit in its

decision in the case of Blanc v. Curtis, 119 Fed. 2nd 395,

recognized petitioner’s contribution in the art, wherein it

stated on page 396:

‘‘However, the problem of cutting roots in sewers

is a different problem from that of merely ramming

out debris collected in the sewer, and this new and

valuable result was accomplished for the first time in

Blane.’’*

A specific embodiment of petitioner’s invention is shown

in the patent (R. 213; see also Sheet 1 at end of brief).

From the drawings and description it clearly appears that

the machine comprises: an elongated flexible element 49 of

coiled spring wire which is capable of being inserted to any

desired length in a sewer pipe and when the end thereof

is held against rotation by the cutter 56 engaging the roots,

of being wound to high tension; a reel 28 for holding and

storing the spring wire element; a guide 20 on the axis of

the reel through which the spring wire element passes

when it is fed onto and off of the reel; a motor 57 for

imparting rotary movement to the reel and to the spring

wire element; and an anti-kinking device in the form of a

tubular member 35 which imparts to the portion of the

spring wire element lying between the reel and the guide

the formation of a crank and which maintains this crank

formation against kinking under conditions of high tension

so that at all times during the operation of the device, the

spring wire element may be turned by the crank and

thereby be wound up to create a high tension required for

the cutting of the roots. This tension when released fune-

*Emphasis ours unless otherwise indicated.

tions to exert a high and quickly applied force to the root

cutter 56 which is mounted on the inner end of the spring

wire element, with the result that the roots are quickly

and effectively removed from the sewer.

The action of the high tension spring is more particularly

described in the patent (R. 214 (p. 2 of Patent), lines 49

to 59, Col. 2).

Petitioner’s commercial embodiment of the patent, Ex-

hibit IV, reproduced for convenience on Sheet 2 at the

end of the brief, answers to the above description, the same

embodying an internal type of reel, however, instead of

the external type of reel of the specific disciosure of the

patent.

The Court of Appeals for the Sixth Circuit, however,

in the case of Blanc v. Curtis, 119 Fed. 2nd 395, held that

such reels are equivalent and stated at page 397:

‘‘In appellee’s machine (Patent 1,963,561, issued

to Sanger), the shaft is coiled inside an annular space

within the periphery of the drum or reel rather than

wound on a hub in the usual manner. Appellant’s

commercial embodiment of the patent also uses an

internal reel rather than the external reel shown in

the drawings and we regard the difference between

the reels as immaterial.’’

Accordingly, the Court of Appeals in the case of Blanc v.

Curtis necessarily decided that claim 4, then in issue, was

not limited to a machine in which an external type of reel

was employed and ascribed to petitioner’s invention, as

defined by said claim, a device embodying an internal type

of reel used in conjunction with a tubular anti-kinking

device.

In deciding the case of Blanc v. Curtis, the Court of

Appeals had occasion to refer to the decision of the Dis-

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trict Court for the Southern District of Lowa, Southern

Division (8th Cireuit), in the case of Blanc vy. Weston, et al.,

42 U.S. P. Q. 427, in which claim 4 of the Machine Patent

was similarly construed.

In the more recent cases of Blanc v. Longstaff. and

Blanc v. Smith, 58 U. S. P. Q. 54, the same District Court,

in recognizing the precedent established by the Court of

Appeals for the Sixth Cireuit in Blane v. Curtis, with re-

spect to claim 4, held the defendant’s devices to infringe

the Machine Patent. Defendant Longstaff’s machine cor-

responded substantially to petitioner’s commercial embodi-

ment of the patent.

As stated by the court at page 54:

‘‘Despite what has been said in argument, it seems

to me that the machines, the accused machines here,

are studied attempts to make changes in Mr. Blane’s

disclosures in his patent and in his merchantable ma-

chine, and I can’t see very much difference in them.

They are based upon the same general mechanical

arrangement.”’

Further,

‘‘Of course that just ends the argument as against

the infringement by Mr. Longstaff here, because the

machine has all of the other elements, unless it would

be the fact that by reason of the reel being in the

nature of a cage, instead of reeling the eoil on the out-

side he takes the coil from the inside of the reel. 1

ean’t see where that would make any mechanical differ-

ence. Certainly there is no diff erentiation of that mat-

ter in the claims of the patent. Take those two things

out and as far as Mr. Longstaff’s patent is concerned,

they are practically identical.’’

The structure of respondent’s sewer cleaning machine

can be best determined from Exhibit V (R. 220, 221) and

Exhibit VI (R. 222; see also Sheet 2 at end of brief),

and as constructed contains all of the novel characteristics

of the invention of the Machine Patent and fully responds

in every respect to the definition which the Courts in the

cases above identified have given to the Blanc invention.

As shown on Sheet 2 at the end of the brief, it is clear

that the machine employs a flexible high tension spring

element 4 which is mounted upon a storage reel 21 driven

through the medium of a motor (R. 220, 221). The spring

element passes through a tubular member 27 mounted

on the axis of rotation of the reel, and which serves to

provide a guide for the spring element at the front ot the

machine while paying out and retracting the same. The

tubular member also serves as a means to prevent kinking

of the high tension spring element and disposes the same

in crank-like formation whereby torsional energy may be

wound into the flexible spring element.

The operation of respondent’s machine is described in

Exhibit V (R. 220, 221).

Of the seven claims in issue, typical claims 4, 8 and 10

are set out for convenience on Sheet 1 at the end of the brief.

It will be observed that respondent’s device responds liter-

ally and in spirit to the terms of said claims. The device

incorporates an internal type of reel which the Courts

in the eases referred to above have held to be equivalent

to the external type of reel of the specific embodiment of

the invention, as disclosed in the drawings. It is further

observed that the claims in issue are not limited with

respect to the type of reel forming an element in the

combination.

Respondent’s machine also incorporates an anti-kinking

tubular member 27 performing the same function in and

cooperating with the other elements of the assembly as

a ee

specifically taught by petitioner in his Machine Patent and

which is the very element which the Court of Appeals for the

Sixth Circuit in Blanc v. Curtis held was covered by claim 4

of the Machine Patent. This means is of vital importance

in the assembly to prevent kinking of the cable at all

times in that part of the machine which the District Court

in the cases of Blanc v. Longstaff and Blanc v. Smith (58

U. S. P. Q. 54) (8th Circuit) described as the vulnerable

spot in the entire mechanism.

It is also clear from respondent’s own admissions on

cross-examination that his device infringes the Machine

Patent (R. 162-167; also see Petition for Rehearing R. 268-

273).

The Court of Appeals for the Sixth Circuit in this

eause, however, failed to follow the established precedent

of its own decision in Blanc v. Curtis and in a perfunctory

approval and adoption of the District Court’s conclusions,

held respondent’s device not to infringe the claims in

issue, although the Court obviously intended to adhere

to the determinative principles enunciated in its prior

decision in Blanc v. Curtis, as evidenced by its specific

reversal of the District Court’s decision with respect to

claim 4 as being in contravention of the decision of the

Court in that case.

The decision in this cause is clearly against the evidence

in the case and the physical facts clearly demonstrate the

unsoundness of the same (See Petition for Rehearing R.

257).

The decision of the Court of Appeals for the Sixth

Cireuit in this cause, with respect to infringement, is in

clear conflict with its prior decision in Blane v. Curtis and

the decisions within the Eighth Circuit. Such lack of

uniformity and inconsistency between the decisions with

respect to infringement of the Machine Patent has caused

and will cause the general public undue hardship and un-

certainty in determining what machines constitute in-

fringements of the same, and will lead to unnecessary

and expensive litigation unless such conflict is determined

by this Court.

Cutter Patent.

The invention of this patent relates to a specially de-

signed and constructed cutter which is capable of fune-

tioning as the cutter element attached on the end of the

high tension spring element of the root cutting machine,

The cutter of the Patent (R. 217), the drawing for which

is reproduced for convenience on Sheet 1 at end of brief,

comprises a head adapted to be attached to the flexible

spring element at one end and having blades attached to the

other end for cutting roots and removing debris from sew-

ers. The assembly is characterized as embodying the fol-

lowing essential features, namely—

(a) The blades must diverge outwardly from the

mounting hub;

(b) The blades must be capable of flexing inwardly

and outwardly in such manner that they may be

pressed together so as to enter and pass through

small restrictions in pipes, such as encountered at

inlet openings and at joints and bends therein, and

when once inside to again expand to their original

positions;

ting edges which will exert a holding action for stop-

ping the end of the wire spring to cause the same

to wind up to create the required high tension therein,

and at the same time exert a draw cutting action to

sever the roots when the spring tension is released

and high rotary motion is imparted to the cutter;

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(d) The leading ends of the cutter must be turned

inwardly to produce a sled-runner action in sliding

over and passing restrictions and bends in the pipe;

and

(e) The blades must have such flexibility as to be

capable of responding to centrifugal force produced

by the high speed rotary motion created when the

high-tension spring is released, so as to be expanded

by such force to a maximum divergence and to there-

by engage the inner surface of the pipe or sewer,

irrespective of the size thereof, and to cut the roots

flush with the pipe surface, with the result that the

pipe is entirely freed of all roots growing therein.

The action of the cutter is described in the specification

of the patent (Ree. 218 (p. 2), lines 6 to 19, Col. 1).

Petitioner’s Cutter Patent was recognized by the Court

of Appeals for the Sixth Circuit in Blanc v. Curtis, 119 Fed.

2nd 395, as covering a pioneer implement and should be

liberally construed. As was therein stated on page 399:

‘‘Appellant’s cutter is a pioneer implement, and

should be given a construction sufficiently broad to

realize the purpose of the patent. It is a meritorious

improvement, substantially advancing the art, and is

entitled to a liberal construction. National Battery Co.

v. Richardson Co., 6 Cir., 63 F. 2d 289, 293. Appellant’s

and appellees’ cutters are substantially identical, op-

erating on the same principle and accomplishing the

same result in substantially the same way. Cf. Sani-

tary Refrigerator Co. v. Winters, 280 U.S. 30, 50 S. Ct.

9, 74 L. Ed. 147; Sun Ray Gas Corp. v. Bellows-Claude

Neon Co., 6 Cir., 49 F. 2d 886. The use of a knife

practically identical with one of the accused cutters

was held in Blanc v. Weston, 35 U. S. P. Q. 150, to

violate the injunction issued in Blanc v. Weston, 33

U.S. P. Q. 466.”’

The scope and interpretation given to claims 3 and 6 by

the Court of Appeals in holding the same infringed by

appellee’s cutters conforms in all respects to that of the

District Court for the Southern District of lowa, Southern

Division, in the cases of Blanc v. Weston, 33 U.S. P. Q., and

Blanc v. Weston, 35 U.S. P. Q. 150, referred to and aequi-

esced in by the Court of Appeals in deciding that case.

As with respect to the Machine Patent, the case of Blanc

v. Curtis established a precedent which was followed in the

cases of Blanc v. Longstaff and Blane v. Smith, 58 U.S. P.

(). 54, wherein the District Court for the Southern District

of Iowa, Southern Division, again reiterated its position

with respect to the Cutter Patent in holding claims 1-6, in-

clusive, valid and infringed, and stated at page 55:

‘“* * * 61 don’t know whether the thought orig-

inated when | wrote the opinion or not, but whether |

did then or not, I have since felt—and I am glad to

see it was the same thought held by the writer of the

Opinion of the Sixth Circuit Court (49 U.S. P. Q. 282),

Judge Allen—that Mr. Blane in his knife has a basic,

fundamental and pioneer patent.”’

Respondent’s cutters are fairly represented in Exhibit V

(R. 220) and Exhibit VIT (R. 223; see also Sheet 3 at end

of brief), and possess all of the peculiar characteristics

and special features above enumerated which identify peti-

tioner’s contribution in the art, as is apparent from the

descriptive matter appearing on exhibit V (R. 220, 221).

The cutters are designed to be introduced through a small

opening of a pipe, and then expand to the diameter of the

large tiles under the action of centrifugal force, and finally

engage the roots, exert the holding action requisite for wind-

ing a high tension in the flexible element (where such ac-

tion is necessary), and chop the roots flush with the tile

wall.

The function and operation of the cutters is identical to

that of petitioner’s patented cutters (R. 158, 159, 160).

While respondent’s cutters are formed with the blades in

opposite relation to one another, this feature was consid-

ered immaterial by the Court of Appeals for the Sixth Cir-

cuit in the case of Blanc v. Curtis, 119 Fed. 2d 395, in con-

formity with the broad interpretation placed upon claims 3

and 6 then in issue.

The Court therein stated on page 399:

‘*In view of the construction that we give this patent

we do not consider these variations material, nor that

the rearward inclination of the blades as distinguished

from that of the cutting edges is the gist of appellant’s

invention. We agree with the Court of Appeals for the

Eighth Cireuit (Blane v. Weston, 109 F. 2d 911, 912)

that an essential characteristic of the Blane cutter pat-

ent is a thin flexible cutting member of very high re-

silience. * * *”’

Similar cutters were held to be infringements of the pat-

ent in the case of Blane v. Curtis (Exhibits X-A to X-E; R.

224, 225, 226; See also Sheet 3 at end of brief).

That the Court of Appeals for the Sixth Cireuit intended

to decide the present case in contravention of the earlier

decision of the Court in Blane v. Curtis, is negatived by the

statement of the Court in its decision. Accordingly, the

decision in this eause now stands in direct conflict with the

Court’s prior decision.

The decision is likewise in conflict with the District

Court’s decisions in Blanc v. Weston, 33 U. S. P. Q., and

Blane v. Weston, 35 U. S. P. Q. 150, (8th Cireuit), in which

cutters practically identical to the cutters of the Blane v.

Curtis ease were held to infringe the patent. (See Blanc

vy. Curtis, 119 Fed. 2d 395, 399).

The decision is also in conflict with the decision of the

District Court in the cases of Blane v. Longstaf and Blanc

vy. Smith, 58 U. S. P. Q. 54, 55 (8th Cireuit) which spe-

cifically referred to the decision in Blanc v. Curtis as a

precedent in holding the accused cutters to infringe the

patent.

While the Court of Appeals for the Sixth Cireuit in de-

ciding the case of Blane v. Curtis referred to and agreed

with the conclusions reached by the Court of Appeals for

the Eighth Cireuit in the case of Blanc v. Weston, 109 Fed.

2d 911, it nevertheless gave to the claims of the Cutter

Patent an interpretation broader than accorded claim 6

by the Court of Appeals for the Eighth Circuit im that case.

The cases may be reconciled, however, as to infringement,

for the reason that the cutter involved in the Weston suit

embodied rigid blades, whereas the blades of the cutters

in the Curtis suit were flexible and resilient.

The situation with respect to the Cutter Patent, as it

now presents itself to the public generally, is an array of

conflicting decisions within the Sixth and Eighth Circuits,

whereby it is impossible to determine whether or not in-

fringement exists with respect to any particular cutter. It

must be recognized that the hopeless confusion which now

exists relative to the question of infringement of the Cutter

Patent exists because of the fact that the Distriet Court in

this cause completely failed to follow its own appellate

court’s decision in the earlier case of Blanc v. Curtis, 119

Fed. 2d 395, as a precedent, and the Court of Appeals’ ac-

ceptance and acquiescence in the District Court’s conclu-

sions in apparent disregard for the legal precedent estab-

lished by said earlier case of Blane v. Curtis, though it evi-

denced an intention not to decide the present cause in con-

travention to the decision of the earlier case, and even

though the District Court of the Eighth Circuit in the cases

of Blane v. Longstaff and Blanc v. Smith, 58 U.S. P. Q. 54,

Blane v. Weston, 35 U. S. P. Q. 15 and 33 U.S. P. Q. 466, has

PEE ELAN POSES ME PLOTS PH

consistently and uniformly construed and interpreted the

claims thereof in accordance with the construction placed

upon them by the Cireuit Court of Appeals in said earlier

ease of Blanc v. Curtis.

No attempt was made by the Court of Appeals in the

present cause to distinguish over its prior decision and as

a result the public is faced with irreconcilable decisions

within the Sixth Circuit with respect to infringement of

the Cutter Patent because of the fact that the cutters in

both instances are clearly similar and the rule of law of

the earlier case is equally applicable to respondent’s cutters.

If the decision in the present cause overrules the posi-

tion established by the Court in its former decision in

Blane v. Curtis, the public at large has been unadvised in

this case and is unable from these decisions to determine

which decision is to be recognized as authority with respect

to infringement. Should this situation continue and the

public determine of its own accord what decision of the

Sixth Circuit is to prevail with respect to the interpretation

of and the construction to be given to the Cutter Patent, con-

fusion and uncertainty will continue, inasmuch as a determi-

nation one way or the other will be inconsistent with either

the decision of the Cireuit Court of Appeals for the Eighth

Circuit in Blanc v. Weston, 109 Fed. 2d 911, or the decisions

of the District Court in cases of Blanc v. Weston, 33 U. S.

P. Q. 466, Blanc v. Weston, 35 U. S. P. Q. 150 and Blane v.

Longstaff and Blane v. Smith, 58 U.S. P. Q. 54.

The utter lack of uniformity and consistency in the appli-

eation of established law with respect to infringement by

the Court of Appeals for the Sixth Circuit, and the conflicts

existing between decisions of the Courts of the Sixth Cir-

euit and Courts of the Eighth Circuit in interpreting the

claims of the Cutter Patent necessarily places the public

at large in an exceedingly embarrassing position with re-

Pesce wn meg ae me , 7 i

7 re

spect thereto, thus clearly presenting a situation requir-

ing the exercise of this Court’s powers to determine the

proper scope and interpretation of the claims of that patent.

For the reasons above stated, it is urged that the petition

for writ of certiorari be granted.

Respectfully submitted,

Gorvon IF’. Hook,

Counsel for Petitioner.

June 16, 1942.

S ©. BLANC

DRAIN CLEANER

Original Filed Aug 20, 1934

Re. 22,113

TYPICAL CLAIMS

4 In « cleaner for drain pipes. the combins-

tion of @ frame a flieribie shaft adapted to sup-

port a cutter element at one end and to be moved

longitudinilly into a drain pipe and to be rotated

therein. a reel tor supporting the unused end

of said flexible shaft means for rotatably mount-

img said ree) im said frame to permit tne ree!

to rotate to impart torsiona) motion to said shaft

& guide for the Glexibie shaft supported in po-

sition spaced from saic ree! anc substantially in

the axis of said rotation of the reel, the flexibie

shaft being passed from caid ree) through said

Guide. and means supper ted between the ree! and

@uide adapted to rotate with said reel for guid-

tng that portion of the fiexible shaft between the

ree] and guide to prevent Kinking and buckling

when torsional strain is applied to said flexible

shaft

8 Ip « clear for drain pipes. the combination

of @ frame. a Sexibie shaft adapted to support

@ cutter element at ome end and to be moved

tudinal) .

rotate to umpart torsiona) Motion to said shaft «

tubular shaft mounted t& rotate relative to saic

ree! and ip alinement with the axis of said ro-

tation of the reel. the inner end of said tubular

shaft being bent outwardly anc terminating at «

point near said ree! for guiding the free end of

eaid flexible shaft from said ree; through the

Outer end of said tubular shaft to prevent Kink -

img and buckling of the shaft when torsiona!

therein of sufficient magnitude to drive a cutter

required in use and serving to hold in coiled re-

lationship about said axis such portions o! saic

at al) times permitting such portion t pass @x-

lally therethrough and to twist or rotate therein

gaid ree) further serving. by rotation on said

_———————————

SHEET 1.

CUTTER MEMBER POR CLEANING DRAIN PIPES

Filed Oct. 21. 1935

TYPICAL CLAIMS

es ies SHEET- 2.

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DEFENDANTS ACCUSED CUTTERS ° SHEET-3

CUTTERS HELD TO INFRINGE CLAIMS

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