# Petition — Bolt, Beranek & Newman, Inc. v. McDonnell Douglas Corp.

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385003_1321%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1976
- **Citation:** 423 U.S. 1073

## Text

im
3

~~ *

Zl

,

Supreme Court of the United States.

Ocroser TERM, 1975.

No. fa i () a
BOLT, BERANEK AND NEWMAN, INC.,
PETITIONER,

Vv.

McDONNELL DOUGLAS CORPORATION,
RESPONDENT.

Petition for a Writ of Certiorari to the
United States Court of Appeals for the
Eighth Circuit.

Rosert H. Rives,
RinEs AND RINEs,
10 Post Office Square,
Boston, Massachusetts 02109.
(617) 482-3289
Netson H. SHaptro,
SHAPIRO AND SHAPIRO,
600 New Hampshire
Avenue, N.W.,
Washington, D.C. 20037.
(202) 338-5500

ADDISON C. GETCHELL & SON, INC. - THE LAWYERS’ PRINTER - BOSTON

Table of Contents.

Opinions below
Jurisdiction
Question presented
Constitutional and statutory provisions involved
Statement of the case
A. Nature of the case
B. The holding of ‘‘obviousness’’ of claim 13
1. The first fiat of the Court of Appeals
2. The second fiat of the Court of Appeals
3. Conclusion as to the fiats of obviousness
Reasons for granting the writ

I. The admittedly hostile environment of the
Eighth Circuit deprives patentee litigants, in-
cluding petitioner, of any semblance of the
American concept of judicial impartiality and
due process and requires swift and strict su-
pervisory action by the Supreme Court

Il. The conflicting standard as to ‘‘obvious-
ness,’’ presumption of validity and due proc-
ess for patentees between the Court of Appeals
for the Eighth Circuit on the one hand and
this Supreme Court and the other circuit
courts for appeals, requires immediate reso-
lution

Conclusion

Appendices
Appendix A
Appendix B
Appendix C

aon fF FF &O WH WH bo

10
13
14

14

ii TABLE OF AUTHORITIES CITED

Table of Authorities Cited.

CasEs.

Agrashell, Inc. v. Hammons Products Company,

413 F. 2d 89 (8th Cir. 1969) 15
C. H. Boehringer Sohn v. Watson, 256 F. 2d 713
(D.C. Cir. 1958) 18

Blonder Tongue Laboratories, Inc. v. University

of Illinois Foundation, 402 U.S. 313;

91 S. Ct. 1434; 28 L. Ed. 2d 788

(1971) 2, 14, 18, 19
Graham v. John Deere Co. of Kansas City,

383 U.S. 1; 86 S. Ct. 684; 15 L. Ed. 2d

545 (1966) 3, 6 10, 13, 17, 19
Jungerson v. Ostby & Barton Co.,

335 U.S. 560; 69 S. Ct. 269; 93 L. Ed.

235 (1949) 18
Woodstream Corporation v. Herter’s Inc.,
312 F. Supp. 369 (D. Minn. 1970) 14, 15

CONSTITUTIONAL PROVISIONS.

United States Constitution

Article I § 8, el. 8 2, 3

Amendment 5 2, 3
STATUTES.

28 U. S. C. § 1254(1) 2

35 U. S. C. § 101 3

§ 103 4

§ 282 4, 7n.

TABLE OF AUTHORITIES CITED

MISCELLANEOUS.

Boretsky, ‘‘Trends in U.S. Technology:
A Political Economist’s View,’’
63 American Scientist 70 (1975)

Gausewitz, ‘‘Brief in Support of Proposed
Amendment to Section 103, Title 35, Patents,
U.S. Code,’’ 51 J. Pat. Office Soc. 290 (1969)

Gee, ‘‘Foreign Technology and the United States
Economy,’’ 187 Science 4177 (1975), p. 622

Koenig, Patent Invalidity A Statistical and
Substantive Analysis, Clark Boardman Co.,
Ltd. (N.Y. 1974), Table 14A, 15

PTC Subcommittee Report No. 1464, 84th Cong.
2nd Sess., 1956; 51 J. Pat. Office Soc.
292 (1969)

Sease, ‘‘The Inventor’s Dilemma: Whose Fault?’’
58 ABA J. 267 (1972)

Young, ‘‘Obviousness in the Eighth Circuit,’’
14 St. Louis L.J. 672 (1970); also
25 J. Mo. Bar 633 (1969)

Zarley, ‘‘Jury Trials in Patent Litigation,’’
20 Drake L.R. 243 (1970)

iil

19n.

17

19n.

15

19n.

16

16

16

Supreme Court of the United States.

Ocroser Term, 1975.

No.

BOLT, BERANEK AND NEWMAN, INC.,
PETITIONER,

v.

McDONNELL DOUGLAS CORPORATION,
RESPONDENT.

Petition for a Writ of Certiorari to the
United States Court of Appeals for the
Eighth Circuit.

To the Honorable, the Chief Justice, and the Associate
Justices of the Supreme Court of the United States:

Bolt Beranek and Newman, Inc., your petitioner, prays
that a writ of certiorari issue to review the decision of
the United States Court of Appeals for the Eighth Cir-
cuit entered in this case on August 15, 1975.

Opinions Below.

The opinion of the United States Court of Appeals for
the Eighth Circuit (App. B, mfra, pp. 23-35) has been
reported at 187 U. S. P. Q. 142. That opinion affirms an

2

unreported memorandum decision of the United States
District Court for the Eastern District of Missouri (App.
C, infra, pp. 37-51).

Jurisdiction.

The judgment of the Court of Appeals for the Eighth
Circuit (App. B) was entered on August 15, 1975 and
this Court’s jurisdiction is invoked under 28 U.S. C. § 1254

(1).

Question Presented.

Has petitioner, as one of many inventors litigating in
the Eighth Circuit, been deprived of its constitutional right
to fundamental due process under the Fifth Amendment and
under Art. I, § 8, cl. 8, by the Court of Appeals for that
Eighth Cireuit, which in this case has frankly admitted
it could find no prior art against petitioner’s important
patent claim,’ but nevertheless

a) made its decision in what is now conceded to be
an attitude of hostility against patents, in bold con-
travention of this Court’s recent reiteration of the
presumption of validity and public policy of inven-
tors being ‘‘favored as a class;’’?

b) imposed a free and easy fiat of ‘‘obviousness,’’
while deliberately and openly refusing to apply the
‘‘level of ordinary skill’’ proven in the case, and other

*Claim 13.

2 Blonder Tongue Labcratories, Inc. v. University of Illinois
Foundation, 402 U.S. 313, 335; 91 St. Ct. 1434; 28 L. Ed. 2d 788
(1971).

ee ee

3

tests specifically required by this Supreme Court as
to that claim ;*

ec) used a standard that nothing or almost nothing
is patentable, now statistically proven to be in hope-
less conflict with all the other courts of appeals; and
d) ignored all the unanimous testimony, on both sides,
as to the ‘‘surprise’’ of this invention, and deliber-
ately substituted its own unsupported fiats, thus de-
priving petitioner of the fundamental rights in its
trial, let alone judicial consideration by an impartial

judiciary?

Constitutional and Statutory Provisions Involved.
CoNSTITUTION OF THE UNITED SraTEs.

Fifth Amendment:

‘No person shall . . . be deprived of life, liberty, or
property, without due process of law.’’

Article I, § 8, cl. 8:

‘*The Congress shall have power .. . [t]o promote the
Progress of Science and useful Arts, by securing for lim-
ited Times to . . . Inventors the exclusive right to their
‘Discoveries.’ ’’

SrTaTuTss.
35 U. 8. C. 4 101:

‘*Whoever invents or discovers any new and useful... .
manufacture ... or any new improvement thereof, may
obtain a patent therefor.’’

’ Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17;
86 S. Ct. 684; 15 L. Ed. 2d 545 (1966).

35 U. S. C. § 103:

‘‘A patent may not be obtained ... if the differences
between the subject matter sought to be patented and the
prior art are such that the subject matter as a whole
would have been obvious at the time the invention was
made to a person having ordinary skill in the art to
which the subject matter pertains.’’

35 U. S. C. § 282:

‘*A patent shall be presumed valid. The burden of estab-
lishing invalidity of a patent shall rest on a party assert-

ing it.’’
Statement of the Case.

A. Nature or THE CasE.

The subject matter of this case is concerned with the
startling advance in silencing jet engine noise that made
it possible to quiet modern jet aircraft—in this case the
DC-10 aircraft of McDonnell Douglas—using sound-
absorbing duct lining structures in the jet engine nacelle
ducts, as provided to Douglas by the General Electric
Company.‘

This petition is concerned with a single, specific patent
claim 13 only® of petitioner’s sound-absorbing duct si-
lencer patent, which claim the Court of Appeals for the
Eighth Cireuit has agreed is not found im the prior art;
the court specifically conceding that claim 13 ‘‘was not

*G.E. ‘‘Double Diamond”’’ silencer, P. Ex. 20B, 20B’, 214A.

5 Your petitioner has been forced, under protest, to abandon
all the other broader claims since, as a practical matter, the Su-
preme Court has not granted certiorari (except for conflicting
decisions) in over 50 years on a single patent claim found in-
valid by a Court of Appeals on prior art.

= ——

5

specifically taught or disclosed in any of the publications
before the court’’ (App. B, p. 33, wmfra).

The case thus involves a highly important technology
not ‘‘specifically taught or disclosed’’ in the prior art,
the leading aircraft and aircraft engine manufacturers
of the country, and the leading modern ‘‘quiet’’ aircraft
widely used by the public including this Court.

For purposes of this petition it is not believed neces-
sary to consider the claim language in detail,® other than
to point out that claim 13 calls for a sound absorber that
does not absorb through the use of fiberglass fillings or
other fibrous or bulk absorbing fillers of prior art duct
linings, but through the action of a thin highly perforated
sheet secured to and dimensioned with a honeycomb-like
core in a critical manner.

It further calls for making some of the transverse walls
of the honeycomb that constitutes its central core acousti-
cally transparent, by introducing holes or apertures in
such walls (App. A), while specifically keeping other sets
of honeycomb walls solid or acoustically opaque. This
unusual construction of having mixed sets of some walls
with perforations, alongside other walls kept solid, was
discovered by petitioner’s inventor, Watters, to enable the
structure to absorb many different frequencies of sound
simultaneously, even though the honeycomb tubes were
of fixed dimensions and thus presumably only one-frequency
or one-tone sensitive.

It is this constr: ction in cooperative function with the
other parts that admittedly imbues the McDonnell Douglas
GE absorber used in the DC-10 with its ability to effect
the broad-band frequency silencing required in jet engine
nacelle ducts.

*In Appendix A hereof, a drawing and simple reference to
the claim language is provided.

6

It is this construction and result of claim 13 that the
Court of Appeals for the Eighth Circuit concedes is not
‘*taught or disclosed’’ in any of the prior art.

It is this construction of claim 13, moreover, that each
of the defendant’s technical witnesses (and, of course, pe-
titioner’s experts) never even saw in the prior art, as
later quoted.

But it is this construction that the Court of Appeals
for the Eighth Circuit has nonetheless denied to petitioner
on its holding of ‘‘obviousness.’’

And it is this action, which petitioner believes, and
will now demonstrate, is fostered by an illegal and uncon-
stitutional hostility to patents in the Court of Appeals
for the Eighth Circuit—hostilitvy .uat has not just created
a grievous injustice to petitioner, but shakes the basic
foundation of trust in our judicial system.

B. Tre Howprne or ‘‘Osviousness’’ or Cram 13.

The Court of Appeals for the Eighth Circuit frankly
concedes that the District Court made no explicit finding
as to the level of ordinary skill in the pertinent art (foot-
note 3, App. B).

It will be recalled that this Court mandated such find-
ing in Graham v. Deere, supra (p. 18):

‘‘We believe that strict observance of the require-
ments laid down here will result in that uniformity
and definiteness which Congress called for in the 1952
Act’’ (emphasis added).

When it came to claim 13, however, as to which as be-
fore stated, the Court of Appeals frankly conceded there
was no specific teaching or disclosure in the prior art,
the Court of Appeals itself also declined to follow the
requirements of Graham v. Deere, supra.

7

It ignored all the testimony of the defendant’s and
petitioner’s witnesses as to the actual (not hypothetical)
level of skill and knowledge of not only those skilled in
the art, but even experts; all the testimony—unanimously
concurring on both sides—of what those skilled in the
art struggled to produce until the structures of this suit
were finally evolved ; all the testimony on both sides (quoted

._ briefly, infra) as to the ‘‘surprise’’ and unexpected re-

sult involved in the phenomenon; and all the evidence as
to the success of the same.

The defendant, and the District Court in folluwing the
defendant, had tried to prove the invalidity of claim 13
by alleged disclosure in specific priv: art. This tack was
overruled by the Court of Appeals for the Eighth Circuit
in its frank concession that the system of claim 13 is not
taught or disclosed in any of the prior art before the court.

It is thus evident that the plaintiff is not being accorded
the statutory provisions of requiring the defendant to
sustain the burden of proving invalidity."

To the contrary, in the EKighth Circuit, at least, your
petitioner has been stripped of the statutory presumption
of validity and of the statutory requirement that the de-
fendant must sustain its burden of proving invalidity.

Instead, the Court of Appeals, finding nothing in the
prior art, became the petitioner’s new legal adversary in
place of the defendant, and proceeded to create its own
hindsight-conceived fiats of obviousness in utter disregard
for the record, as follows:

735 U. S. C. § 282:

‘*A patent shall be presumed valid. The burden of establish-
ing invalidity of a patent shall rest on a party asserting it’’
(emphasis added).

8

1. The first fiat of the Court of Appeals
(footnote 4; App. B).

‘‘any person of ordinary skill in the art [of ‘silencing
of noise in ducts’] would look to the non-fibrous tech-
niques’’ (emphasis added).

The proven facts—unanimous on both sides—as to what
those skilled in the art actually did look to for this duct
silencing problem demonstrate the complete falseness of
this fiat. The fact is, that those skilled in the art (in-
cluding the defendant McDonnell Douglas, General Elec-
tric and NASA) did not ‘‘look to the non-fibrous tech-
niques,’’ but persisted in the fibrous techniques, and des-
perately tried to make them work, but without success.

Each of defendant’s technical witnesses concurred with
the testimony of plaintiff’s witness, Dr. Leo Beranek °
(A. Vol. 1, pp. 83-94) that the structures evolved and
used by those: skilled in this art (before Watters) for
lining ducts subject to engine generated or similar aero-
dynamic forces, noise frequencies and attendant condi-
tions, relied upon fibrous absorbing layers or fillers, as in
P.E. 27 and Baruch patents P.E. 2-4:

McDonnell acoustics department head, McPike (A.
Vol. II pp. 383-384); ‘‘fiberglass material.’’

General Electric engineer, Smith (A. Vol. I, pp. 316,
340); ‘‘protected fiberglass.’’

8 Professor at Harvard and M.I.T.; fellow and past president of
Acoustical Society of America and Institute of Noise Control
Engineering; fellow of American Institute of Physics, Institute
of Electrical and Electronic Engineers, American Academy of
Arts and Sciences, National Academy of Engineering; copious
text book writer in acoustics and noise control, over a hundred
published scientific papers, and lectures all over the world (App.
Vol. I, pp. 75-80).

—

9

Defendant’s trial expert, Yerges (A. Vol. I, pp. 252-
253) ; ‘‘filled with a fibrous mineral or glass wool.’’

At the time of the Watters invention, indeed, as Dr.
Beranek aptly put it (A. Vol. I, p. 155):

‘‘The whole direction was in the direction of thicker
sheets with bigger holes and putting the absorbing
material behind and not going in this direction’’ (i.e.
of Watters).

Indeed, when NASA, as late as the mid-1960’s, instituted
a research program, including McDonnell Douglas (A. Vol.
Il, pp. 383-385), to try to find a satisfactory answer for
absorbing jet engine sounds, those skilled in the art did
not ‘‘look to the non-fibrous techniques’’ as hypothesized
by the Court of Appeals, but, to the contrary, adopted
initial structures that were these very prior art type of
fiber-filled structures with ‘‘stainless steel felt,’’ ‘‘sintered
woven screens,’’ etc. (A. Vol. I, p. 154); or in the words
of McDonnell Douglas’ acoustic head, McPike, ‘‘a Brillo
pad’’ (A. Vol. II, p. 383). These fiber absorber-filled
panels are shown, for example, in P.E. 26 and the NASA
report, P.E. 25, as are other structures experimented with
over the years.

The defendant’s acoustics department head, Mr. McPike,
graphically described the difficulties and failures with such
prior-art-based approaches that those skilled in the art
actually struggled with, including ‘‘fiber metals . . . scat-
tered around the City of Long Beach”’ (A. Vol. II, p. 384).

In addition, the General Electric Company did not in-
stitute until as late as 1967 its own ‘‘intensive develop-
ment effort’’ trying, in the words of their engineer Smith,
to develop an absorber with no ‘‘metal or rigid fiber glass,
no bulk absorber’’ (A. Vol. I, p. 348).

10
2. The second fiat of the Court of Appeals (App. B, p. 33).

‘*. . . although this technique was not specifically
taught or disclosed in any of the publications before
the court, the method was one which would be ob-

vious to a person of ordinary skill in the art... . ob-
vious alternative .. . to connect some of the chambers
by means of slits or perforations.’’ .

In the first place, the finding that this ‘‘would be ob-
vious’’ (by hindsight), is not the test of Graham v. John
Deere Co. of Kansas City, 383 U.S. 1, 86 S. Ct. 684; 1c
L. Ed. 2d 545 (1966), or of the statute, that is con-
cerned, to the contrary, with what ‘‘would have been ob-
vious at the time the invention was made.’’

Apart from this, all the acoustic and technical expert
witnesses, on both sides, agreed that the phenomenon re-
sulting from the new structure was a decided ‘‘surprise,’’
and in a direction away from what those skilled in the
art had actually been doing or even thought possible!

Only the Court of Appeals for the Eighth Circuit found
the structures of claim 13 ‘‘obvious.’’ Not a single tech-
nical witness for either side made any such statement.

The record is abundantly clear, as before quoted, that
with all the prior art before them, none of the researchers
at NASA, the General Electric Company, or the defend-
ant McDonnell Douglas found it obvious to evolve the
Watters type of structure of claim 13, even as late as
the mid and late 1960’s!

More than this, the defendant’s chief acoustics engineer,
McPike, frankly admitted that his knowledge of the state
of the acoustics art and that of his colleagues (including
specifically the prior art cited by defendant and referred
to by the Court of Appeals) initially led them away from
making the Watters discovery that broad frequency band

11

absorption could be obtained with a thin, appropriate
small-hole and small center-spacing sheet alone, without
absorptive filler, rigidly supported by constant-dimensioned
closely spaced honeycomb supports, as incorporated in
claim 13:

‘*[w]e in acoustics knew better ... and that in fact
we would only achieve a significant reduction at a
single frequency.’’ (A. Vol. LI, pp. 385-386.) (Empha-
sis added.)

‘*T’ll confess that those of us in acoustics were
terribly embarrassed because as a result of our tests
in our chamber of this type we found that lo and be-
hold . . . we obtained reduction over a band of fre-
quencies. And at that time, we took with us into
our discussions with G.E. the general approach that
we would want to use an installation in the DC-10
which was in fact a honeycomb core behind a per-
forated plate material.’’ (A. Vol. II, p. 387.) (Empha-
sis added.)

‘*Q. You were surprised, weren’t you?

‘*A. Yes, we were not aware... again, our state
of the art in Douglas at the time did not tell us that
we would achieve this resistance under the conditions
of the engine.’’ (A. Vol. II, p. 393.)

Mr. McPike also frankly conceded (A. Vol. II, pp. 393-
394) that others of the ‘‘ten or twelve’’ engineers in his
group having degrees ‘‘in physics and engineering and
very knowledgeable in acoustics,’’ also, ‘‘did not know
about it’’ before these surprising results were obtained.

He further stated that before his 1967 tests, he had not
seen this structure ‘‘described in any publication’’ (A,
Vol. II, p. 399).

12

And similar comments were made by General Electric
engineer Smith, who conceded that the concept of not
using ‘‘any of this fibrous bulk material’’ for silencing
jet engine noise ‘‘had never been done before’’ to his
knowledge (A. Vol. I, p. 349); and that prior to 1967, he
had never ‘‘seen a panel with a very thin surface sheet,
a lot of perforations, a closely-spaced cellular structure,
some of the walls of which were slotted and in between
some walls that were opaque for use as an acoustic ab-
sorber’’ (A. Vol. I, pp. 349-350) (emphasis added), i.e.
claim 13.°

It is not only significant that no technical witness for
the defendants ever testified that the Watters invention
was ‘‘obvious,’’ but also that not until the suit, was any
issue of possible invalidity-for obviousness or any other
reason ever raised by either McDonnell Douglas or Gen-
eral Electric in its communications with plaintiff (P.E.
18-D, IL.)

In the face of this uncontroverted record, the Court
of Appeals for the Eighth Circuit has boldly become the
new adversary with the new theories, and has constructed
its own ‘‘hypothetical’’ skilled worker in this art, has ig-
nored the imposing record of what the real skilled workers
had been able to do and what they had not recognized,
and has ignored the telling fact that all of the technical
and fact witnesses for both sides have testified to the
surprising nature of the phenomenon.

® The plastic perforated sheet and core structures of the G.E.
absorbers (P. Ex. 20B, 20B’, 21A)—claim 13—were not among
those held by the District Court not to be infringements; and
the Court of Appeals chose to ‘‘express no opinion, on the ques-
tion of . . . MeDonnell Douglas’ . . . infringement.’’ Even a
surface comparison of App. A with P. Ex. 21A shows the clear
infringement of claim 13.

13

A serious injustice has thus been done petitioner by
this destruction of its patent.

But an even greater blow has been dealt the trust in
the judiciary.

3. Conclusion as to the fiats of obviousness.

It should be reiterated, particularly with regard to
claim 13 as to which there was no prior art, that the
Court of Appeals deliberately not only refused to accord
the statutory presumption of validity and the required
burden on the defendant, but it openly refrained from
applying any of the tests required by Graham v. Deere,
supra.

Despite the finding that the level of skill was high, the
Court ignored the copious and non-conflicting testimony
of both sides that with that level of skill, the phenomenon
still surprised all the engineers at McDonnell Douglas!

All of this is a far cry from the mandate of Graham
v. Deere that the other courts of appeals are at least
trying to follow to achieve the uniformity of decision-
making sought in the 1952 Act.

While it may not be considered of sufficient importance
to grant this writ merely because the Court of Appeals
for the Eighth Cireuit was arbitrary and unlawful in this
case, adequate reasons will be apparent in the following
section demonstrating that this action by the Court of
Appeals was:

a) in furtherance of a consistent policy of the Court
of Appeals for the Eighth Circuit to destroy patents
for ‘‘obviousness’’ even in contravention of Graham
v. Deere;

b) in keeping with a now openly conceded hostility
against patents in that circuit, in direct contraven-

14

tion of this Court’s reiteration of presumption of
validity and the public policy of favoring patentees
(Blonder Tongue Laboratories, Inc. v. University of
Illinois Foundation, 402 U.S. 313; 91 S. Ct. 1434; 28
L. Ed. 2d 788 (1971));

c) the result of the adoption of a standard that
nothing or almost nothing is patentable, now statis-
tically proven (infra) to be in hopeless and not just
accidental conflict with all the other courts of appeals;
and

d) an insensitive deprival of due process to peti-
tioner by deliberately ignoring the record at the trial.

Reasons for Granting the Writ.

I. Tue Apmitrepty Hostite ENviroNMENT OF THE EIGHTH
Circuir Deprives PaTeNTEE Liticants, IncLupING PE-
TITIONER, OF ANY SEMBLANCE OF THE AMERICAN CONCEPT
oF JUDICIAL IMPARTIALITY AND Dug Process anp REQUIRES
Swirr anp Strict Supervisory ACTION BY THE SUPREME
Court.

Unprecedented is the now admitted campaign of patent
destruction to which the Court of Appeals for the Eighth
Circuit has committed itself, and which has engulfed the
petitioner as the latest patentee-victim.

From the judiciary itself we hear that:

‘‘The courtrooms within the province of the Eighth
Circuit Court of Appeals do not afford a congenial
forum to the holder of a United States patent. A
reading of the decided cases clearly reflects this. It
is especially true since 1966 following the Supreme
Court’s expressions in Graham v. John Deere Co.,
383 U.S. 1, 86 S. Ct. 684, 15 L. Ed. 2d 545, I can find

15

no record of the Eighth Circuit Court of Appeals
upholding the validity of a patent since Graham. It
did so sparingly before Graham.’’ Woodstream
Corporation v. Herter’s Inc., 312 F. Supp. 369, 370
(D. Minn. 1970).’°

And from the Court of Appeals itself in Agrashell, Inc.
v. Hammons Products Company, 413 F. 2d 89, 93 (8th Cir.
1969) :

‘*We are aware of the suggestion that the Eighth
Circuit has not upheld any patent since the Supreme
Court decided Graham v. John Deere Co.... This
may be so. Whether this fact should be a matter
of concern to the judges of this court is not important
on the appeals before us’’ (emphasis added).

From studies of legal statisticians," it appears that
during the period of 1953-1972, the Court of Appeals for
the Eighth Circuit heard 56 cases adjudicating the issue
of patent validity, with your petitioner’s case being the
57th through 1974.

The percentage of invalidity decisions for this period
in the Court of Appeals for the Eighth Circuit is 90 per
cent with your petitioner’s case. The average percentage
of invalidity of the other courts of appeals as a group
was 59.7 per cent with no other court of appeals as high
as even 80 per cent.

10 Responding to the District Court’s frank statement, the Court
of Appeals for the Eighth Circuit still declined in the Wood-
stream case (446 F. 2d 1143 (8th Cir. 1971)) to make its own
statement of validity, but merely ruled that the defendant had
failed to carry its statutory burden of proving invalidity.

™ Koenig, Patent Invalidity A Statistical and Substantive Anal-
ysis, Clark Boardman Co., Ltd. (N.Y. 1974), Table 14A, 15.

16

The probability of the Court of Appeals for the Eighth
Cireuit applying the same law, and being inadvertently
in such a variance with all the other courts of appeals,
is less than one chance in 18.

Only one case was found valid and infringed by the
Court of Appeals for the Eighth Circuit in the last 13
years, and that, as a result of faulty evidence of the de-
fendant. (See footnote 10.)

Present recognition of this open hostility also comes
from diverse legal writers in the nation’s bar journals
and law reviews:

‘*For example, the Patent and Trademark Commit-
tee’s Committee Report for 1968-1969 of the Missouri
Bar called the record of the Eighth Circuit Court,
which has ruled on seventeen patents since Deere
and has held all invalid, ‘appalling.’ ’’ *

‘*The Court of Appeals for the Eighth Circuit in
over sixteen cases since these decisions, [Graham v.
Deere, 383 U.S. 39 (1966)] has yet to find a single
patent to be valid. In the face of such precedents,
a trial judge has little recourse but to determine why
the patent before him is invalid’’ (emphasis in orig-
inal; footnote omitted).

‘*Ts it worthwhile to obtain a patent . . . ‘The court-
rooms within the Eighth Circuit Court of Appeals

' Young, ‘‘Obviousness in the Eighth Cireuit,’’ 14 St. Louis
L.J. 672, 673 (1970); also 25 J. Mo. Bar 633 (1969).

Zarley, ‘‘Jury Trials in Patent Litigation,’’ 20 Drake L.R.
243, 243-244 (1970).

17

do not afford a congenial forum to the holder of a
United States patent.’ ’’ **

‘The Court of Appeals for the Eighth Circuit ...
has ruled on sixteen patents since these Supreme
Court decisions. All sixteen were held invalid... .
‘an especially devastating effect upon the independent
inventor . . . Investment in inventions, in consequence,
is discouraged since the property value thereof is de-
precia 9 99 15

In the case at bar, the Court of Appeals for the Eighth
Cireuit knew that the obviousness test of Graham v. John
Deere Co. of Kansas City, 383 U.S. 1; 86 S. Ct. 684; 15
L. Ed. 2d 545 (1966), was to be used and purported to
apply the test in part to some claims; but it did not apply
the test to claim 13, where it could not find prior art and
where all the evidence was contrary to obviousness.

The Court of Appeals for the Eighth Circuit’s ‘‘appal-
ling’’ attitude towards patents can in no way provide the
impartial atmosphere that is basic to the American judi-
cial system and which has been denied petitioner. This
pre-conceived anti-patent attitude has no place in the Amer-
ican judicial system requiring ‘‘due process of law,’’ and
should be corrected forthwith by this Court.

14 Sease, ‘‘The Inventor’s Dilemma: Whose Fault?’’ 58 ABA JJ.
267, 269 (1972).

15 Gausewitz, ‘‘Brief in Support of Proposed Amendment to
Section 103, Title 35, Patents, U.S. Codc,’’ 51 J. Pat. Office Soe.
290, 292 (1969).

18

II. Tue Conruictine Stanparp as To ‘‘Osviousness,’’ Pre-
SUMPTION OF VALIDITY AND Due Process ror PaTENTEES
BETWEEN THE Court oF APPEALS FOR THE EicutTu Cir-
CUIT ON THE One Hanp anp Tus Supreme Court anp
THE OrHer Circuir Courts ror AppEaLs, Requires Im-
MEDIATE RESOLUTION.

As above shown, the statistics demonstrate that the
Court of Appeals for the Eighth Circuit is patently out
of line with all other circuits.

In an earlier era, the present Chief Justice recognized
the Court-imposed ‘‘barriers to patents far more stringent
than contemplated either in the first instance by the Con-
stitution or later by Congress,’’ and the Court’s ‘‘inhospi-
table attitude toward patents.’’ C. H. Boehringer Sohn v.
Watson, 256 F. 2d 713, 714 (D.C. Cir. 1958).

The late Mr. Justice Jackson spoke frankly of an earlier
United States Supreme Court’s attitude that:

‘*the only patent that is valid is one which this Court
has not been able to get its hands on.’’ Jungerson v.
Ostby & Barton Co., 335 U.S. 560, 572; 69 S. Ct. 269;
93 L. Ed. 235 (1949).

But in Blonder Tongue Laboratories, Inc. v. University
of Illinois Foundation, 402 U.S. 313, 331, 335; 91 S. Ct.
1434; 28 L. Ed. 2d 788 (1971), this Court seemed again to
have acknowledged the will of Congress:

‘*We fully accept congressional judgment to reward
inventors through the patent system. . . . patentees
are heavily favored as a class of litigants by the
patent statute.’’

It is imperative, in these critical times when national
survival depends upon re-establishing technological pre-

19

eminence, and when the American people—including law-
yers—need to look to their courts with confidence, that
this Supreme Court promptly and clearly tell the Court
of Appeals for the Eighth Circuit that the above pro-
nouncement in Blonder-Tongue is not mere lip service.

The damage and discouragement done by this kind of
conduct afforded your petitioner is being decried in the
technological and innovative communities.”

To preserve and to deserve confidence in our judicial
system, this Court should promptly intervene.

The Supreme Court’s supervisory authority should be
promptly exercised to insure a judicial attitude in which
patentees are favored as called for in Blonder-Tongue,
supra; to insure that patent litigants in the Eighth Cir-
cuit are provided the benefits of the same tests of obvi-
ousness as in all the other circuits and in accordance with
the Supreme Court’s mandate in Graham v. Deere, supra;
to insure in the Eighth Circuit the fundamental principles
of due process that the courts of other circuits follow in

16‘*'The large number of patents held invalid has an especially
devastating effect upon the independent inventor of small finan-
cial means. Because of the probability that infringement litiga-
tion will result in judgment for the alleged infringer, it encourages
a tendency to ignore the rights of patentees even where the patents
are valid. ... Investment in inventions in consequense is dis-
couraged since the property value thereof is depreciated.’’ PTC
Subcommittee Report No. 1464, 84th Cong. 2nd Sess., 1956; 51
J. Pat. Office Soc. 292 (1969).

Decline in the rate of growth of technological innovation and
rapid dissemination throughout the world of U.S. technology—
Boretsky, ‘‘Trends in U.S. Technology: A Political Economist’s
View,’’ 63 American Scientist 70 (1975).

Shrinking in U.S. technology-intensive products since 1970 to
the extent of negative trade balance for the first time in this
century—Gee, ‘‘Foreign Technology and the United States Econ-
omy,’’ 187 Science 4177 (1975), p. 622.

20

respecting the evidence adduced at trial; and to avoid a
stigma for the courts of the kind to which the Executive
branch has recently been subjected.

Conclusion.

This Court could be of no better service to America on
the eve of its Bicentennial, than courageously to restore
due process of law to patentees and thus encourage the
innovative community to build America to its former role
as the world leader in invention and technology. A writ
of certiorari should issue to review the judgment of the
United States Court of Appeals for the Eighth Circuit.

Respectfully submitted,

ROBERT H. RINES,

RINES AND RINES,
10 Post Office Square, |
Boston, Massachusetts 02109.
(617) 482-3289

NELSON H. SHAPIRO,
SHAPIRO AND SHAPIRO,
600 New Hampshire

Avenue, N.W.,

Washington, D.C. 20037.

(202) 338-5500

21

APPENDIX A

WATTERS
PATENT EMBODIMENT
OF P EX. 21A

SMALL SUPPORTING CELL
L. MUCH GREATER THAN a

22 23

Appendix B.
Court of Appeals, Eighth Circuit

Bolt, Beranek and Newman, Inc.
v. McDonnell Douglas Corporation

Nos. 74-1607 and 74-1608

Decided Aug. 15, 1975

Appeal from District Court for Eastern District of Missouri,
Wangelin, J.

Action by Bolt, Beranek and Newman, Inc., against McDonnell
Douglas Corporation for patent infringement. From judgment
for defendant, plaintiff appeals. Affirmed.

Robert H. Rines, Boston, Mass., for appellant.
Frederick M. Woodruff, St. Louis, Mo., for appellee.

Before Jones, Senior Circuit Judge,* and Heaney and Henley,
Cirenit Judges.

Heaney, Circuit Judge.

Plaintiff acoustics consulting firm is assignee of a pat-
ent on a silencing device issued to Bill G. Watters in 1963
[the ‘‘Watters Patent’’], which patent has never been
commercially exploited. It brought this action against
McDonnell Douglas Corporation, alleging that a silencing
device being used in the latter’s DC-10 jet engines infringes
the Watters Patent. The District Court held that the
Watters Patent was invalid for lack of invention, because

* Warren L. Jones, Senior Circuit Judge, Fifth Circuit, sit-
ting by designation. :

24

it was ‘‘obvious’’ within the meaning of 35 U.S.C. § 103,
and that there was no infringement in any event, because
the devices being used by McDonnell Douglas were not
covered by the Watters Patent. We affirm the District
Court’s holding of invalidity, and express no opinion on
the question of whether McDonnell Douglas’ devices would
be an infringement were the patent valid.
The Watters Patent is described as

* * * sound-absorbing structures * * * for lining ducts
and similar passages for the purpose of absorbing
and silencing the acoustic energy accompanying the
flow of a fluid medium, such as air, through the ducts.

In the form of the patent which is being litigated, a por-
tion of the internal surface of a duct is replaced by a
thin metal or plastic perforated sheet (facing), which is
backed by acoustical cavities formed by a supporting honey-
comb structure which holds the facing away from the wall
of the duct. A cutaway view of the device gives the ap-
pearance of a metal or plastic sandwich.

The plaintiff alleges that structures used by McDonnell
Douglas in its jet engines infringe the following claims
of the patent:

1 Section 103 provides:

A patent may not be obtained though the invention is not
identically disclosed or described as set forth in section 102 of
this title, if the differences between the subject matter sought to
be patented and the prior art are such that the subject matter as
whole would have been obvious at the time the invention was
made to a person having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be negatived by
the manner in which the invention was made.

ee

25

1. A sound-absorbing panel for lining a portion
only of a duct and the like having, in combination
with the duct, a thin limp relatively flexible porous
sheet having an impedance to acoustic energy that
is appreciably resistive, a plurality of relatively rigid
supporting members defining spaces therebetween and
secured at one end to a surface of the duct and at
the other end to the sheet, said duct having a fluid
passage therethrough adjacent said sheet with a cross-
dimension normal to said sheet, the spaces of the
suporting members being large compared to the pores
of the sheet but small compared to the said cross
dimension, the said spaces being also sufficiently small
to provide support for the relatively flexible sheet in
order substantially to prevent its sagging and flexing.

2. The panel of claim 1, said supporting members
having substantially equal height.

* a o
11. The panel of claim 1, said supporting members
being substantially acoustically opaque.
° . *
13. The panel of claim 1, some of said supporting

members being substantially acoustically opaque and
some substantially acoustically transparent.

16. The panel of claim 1, the portions of said sheet
between successive supporting members having a plu-
rality of said pores and said panel having a cover ex-
tending between said sheet and said duct surface.

26

17. A sound-absorbing structure having, in combi-
nation, a duct, and a plurality of sound-absorbing
panels spaced apart to define a fluid passage therebe-
tween with a cross-dimension between said panels,
each of said panels comprising a thin limp relatively
flexible porous sheet having an impedance to acoustic
energy that is appreciably resistive, a plurality of
relatively rigid supporting members defining spaces
therebetween and secured at one end to a correspond-
ing surface of the duct and at the other end to the
sheet, the spaces of the supporting members being
large compared to the pores of the sheet but small
compared to said duct passage cross-dimension, said
spaces being also sufficiently small to provide support
for the relatively flexible sheet in order substantially
to prevent its sagging and flexing.

20. The structure of claim 17, said panels being
substantially parallel.

[1] The patent examiner considered ten United States
Patents and seven Foreign Patents as prior art. The Dis-
trict Court found that there were several additional items
of prior art which were not considered by the examiner,
thus weakening the ordinary presumption of patent valid-
idy. See Ralston Purina Co. v. General Foods Corp.,
442 F.2d 389, 390, 170 USPQ 202, 203 (8th Cir. 1971);
American Infra-Red Radiant Co. v. Lambert Industries,
Inc., 360 F.2d 977, 989, 149 USPQ 722, 727-728 (8th Cir.),
cert. denied, 385 U.S. 920, 151 USPQ 757 (1966). Spe-
cifically, it found that claims 1, 2, 11, 16, 17 and 20 were
anticipated by two articles in the September, 1951, issue
of the Journal of the Acoustical Society of America —

27

one article by Ingard and Pridmore-Brown, and the other
article by Ingard and Bolt. It further found that claims
17 and 20 were anticipated in an article by Ira Dyer in
the May 19, 1956, issue of Noise Control, that claim 1
was anticipated by Goldstein Patent ’857,? and that claim
13 was anticipated by Kjaer Patent ‘685. After com-
paring the prior art to the patent in suit, the District
Court found that the Watters Patent comprised ‘‘only
an amalgam of known elements,’’ and that ‘‘the combina-
tion of old elements is obvious to the hypothetical per-
son skilled in the art.’’ \

The standard for our review of the District Court’s
finding of obviousness was set forth by the Supreme Court
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ
459, 467 (1966) :

While the ultimate question of patent validity is
one of law, * * * the § 103 condition, which is but one
of three conditions, each of which must be satisfied,
lends itself to several basic factual inquiries. Under
§ 103, the scope and content of the prior art are to
be determined; differences between the prior art and

2 The plaintiff urges that the patent examiner did consider the
Goldstein Pa‘ nt as prior art. We are satisfied that the record
supports the District Court’s contrary conclusion. Until the very
end of the patent proceeding, the examiner repeatedly rejected
Watters’ application on the basis of Goldstein, and Watters re-
peatedly urged that Goldstein’s application, filed on March 6,
1956, was not relevant as prior art because Watters had filed an
affidavit swearing that he had completed his own invention and
successfully tested it prior to March 6, 1956. The record at trial,
including the plaintiff’s answers to interrogatories supports the
conclusions that the affidavit was false and that Watters did not
conceive of his device until after March 6, 1956. Although the
record is ambiguous on the patent examiner’s reason for ultimately
allowing the patent, despite Goldstein, it supports the District
Court’s conclusion that the examiner relied on the false affidavit.

28

the claims at issue are to be ascertained; and the
level of ordinary skill in the pertinent art* resolved.
Against this background, the obviousness or nonob-
viousness of the subject matter is determined. * * *

[2] Applying this standard to the record before us,
we find no clear error in the District Court’s factual find-
ings as to the scope of the prior art* and the comparison
of that art with the Watters Patent. We are satisfied
that the court’s legal conclusion of obviousness was proper
in light of those findings. Indeed, we find support for the
conclusion of invalidity, not only in the items of prior
art enumerated by the court, but also in various other
publications and patents which were introduced at trial.

3The uncontradicted testimony by one of defendant’s experts,
brought out in cross-examination, was that

* * * (i]n this particular art it has been demonstrated at the
trial that the level of skill is quite a high level. It is a level
of persons who have degrees and occasionally graduate de-
grees in engineering and usually related to this type of en-
gineering. * * *

Although the District Court made no explicit finding as to the
level of ordinary skill in the pertinent art, the plaintiff does not
deny that the level of ordinary skill is quite high.

4 The plaintiff asserts that the only relevant prior art concern-
ing the silencing of noise in ducts involved acoustically trans-
parent heavy-gauge facings holding a cushion filling such as fibre
glass, rock-wool or packed felt. As will be seen, however, the
prior art dealing with the silencing of noise in rooms had not
been limited to such techniques for at least thirty years. Several
witnesses testified that fibre blankets or cushions could not be
used in high velocity ducts because there would be ‘‘fuzz’’ all
over the place. This was such an obvious fact that any person
of ordinary skill in the art would look to the non-fibrous tech-
niques which were being used in rooms. Accordingly, we are
satisfied that the patent examiner and the District Court properly
concluded that the prior art directed to sound-absorption in rooms
was within the scope of the relevant art.

29

The obviousness of the Watters Patent can perhaps be
best demonstrated by discussing the various techniques
which Watters combined to create his device.

First, the technique of using a perforated facing with
an air cavity behind it, thus forming a ‘‘ Helmholtz resona-
tor,’’ was well known in the prior art of acoustical si-
lencing devices. Examples of its use are abundant, and
include: Trader Patent ‘180, issued in 1925; 1949 article in
a French journal by Jacques Brillouin; the 1951 Ingard
and Bolt article; the 1951 Ingard and Pridmore-Brown
article; Kjaer Patent ’685, issued in 1952; lectures given
by Ingard and Bolt at General Electric in 1955; Watters
and Baruch Patent 151, filed in 1955; Goldstein Patent ’857,
filed in 1956; and Baruch Patent ’675, issued in 1956.

Second, the technique of rendering a thin perforated
facing acoustically resistive by combining it with a non-
perforated membrane such as ‘‘tea-bag’’ paper, and the
technique of forming an air cavity Helmholtz resonator
behind such a facing were known in the prior art. The
Kjaer Patent taught the use of a facing combined of per-
forated and nonperforated elements, and both the Bril-
louin and the Ingard and Bolt articles suggested that
such a facing could be constructed. In declaring that his
preferred embodiment would use such a combined facing,
Watters’ original application openly stated that he was
taking that construction from the previously filed appli-
cation for Baruch Patent ‘675. The Baruch application
had disclosed a fa ng comprised of two thin perforated
plastic sheets sandwiching a layer of nonperforated tea-
bag paper or cellulose film. Watters’ application sug-
gested that this facing be used, stating that it was the
addition of the tea-bag paper or cellulose film which ren-
dered the facing acoustically resistive.

30

Third, the technique of rendering a thin facing acousti-
cally resistive without use of a nonperforated membrane,
by selecting proper dimensions of thickness, porosity and
pore size, was known in prior art. That is to say, it was
already known that a thin perforated facing could itself
be acoustically resistive if properly constructed.’ Although,
as stated above, Watters’ preferred embodiment would
involve the combined facing disclosed by Baruch ‘675,
Watters declared that, as an alternative, one could use a
single perforated sheet which was acoustically resistive.
The application instructed the reader that, if this alterna-
tive were to be chosen, the reader could copy the technique
which was disclosed in the previously filed application for
Watters and Baruch Patent ’151. The Goldstein Patent
also had disclosed this technique. Both the Goldstein Pat-
ent and Patent ’151 showed the use of such a facing in
front of air cavities which amounted to Helmholtz re-
sonators.

[3] Fourth, the technique of partitioning behind a facing
to set up a series of Helmholtz resonators was well-known
in the prior art, and the literature made it clear that the
use of such partitions made the device far superior where

5 At trial, plaintiff endeavored to show that the true break-
through in the Watters Patent was the discovery that, in a high
velocity environment, a facing which would be acoustically trans-
parent in still air suddenly became acoustically resistive. A\l-
though the record shows that defendant’s engineers expressed
surprise at this phenomenon, it contradicts the plaintiff’s asser-
tion that Watters had discovered the phenomenon. Watters did
not claim or even intimate before the Patent Office that moving
air or the velocity thereof had any effect in determining the proper
hole size necessary to render the facing acoustically resistive.
Instead, he used the identical formula for determining hole size
as had been disclosed in Watters and Baruch Patent ’151 for
ceiling devices. Moreover, the text of Watters and Baruch Patent
‘151 warns the reader that

31

the angle of incidence of the sound was not ‘‘normal’’
(i.e., perpendicular to the facing) and where high fre-
quencies were involved. The technique was taught in the
Kjaer and Goldstein patents, and had been discussed at
great length in the Brillouin, Ingard and Bolt, and Ingard
and Pridmore-Brown articles, as well as in the General
E}sctrie lectures. It has already been seen that Watters
was taking facings which had previously been used to
form Helmholtz resonators in ceilings and was simply
placing those facings in a duct environment. In light of
the fact that the incidence of sound traveling through a
duct is primarily not perdendicular to the facing, it would
have been extraordinary for him to have ignored the re-
peatedly published statements and mathemathical formulae
demonstrating that partitions behind the facing would
make the resonator vastly superior. Watters’ decision to
place partitions behind already known facings was, with-
out question, an obvious one.®

* * * If the openings are of the size ordinarily used in other
types of sound-absorbing ceilings * * * such as openings on
the order of 1/16 of an inch in diameter, more or less, rela-
tively closely spaced from, one another, then the resistance
presented to the incident sound energy in the audible fre-
quency range is too low to be effective to dissipate sound
energy through the action of the perforations alone. * * *

Had defendant’s engineers consulted the Watters Patent and fol-
lowed through on its reference to Watters and Baruch Patent 7151,
therefore, they would have been led away from, rather than
toward, their discovery that holes 1/16 of an inch or larger be-
came suddenly acoustically resistive in high velocity wind settings.

* As the District Court properly pointed out, the Watters ‘‘sup-
porting members’’ are not limited to honeycomb forms, but would
encompass laterally spaced apart planar walls. Such planar walls
were one obvious way to accomplish the partitioning which was
known in prior art, and, indeed, were used in the Kjaer Patent.
Even assuming, however, that the Watters Patent claimed the

32

Fifth, the technique of locating the partitions so that
the distance between partitions is smaller than the cross-
dimension of the duct, yet larger than the cross-dimension
of the pores in the facing, was in the prior art. The Kjaer
and Goldstein patents disclose devices which have just
such relationships between the stated dimensions. Fur-
thermore, the Brillouin and Ingard and Pridmore-Brown
articles discussed the proper sizing of the series resona-
tors at great length and disclosed much of the mathemat-
ical theory underlying the selection of proper sizing.’

From the foregoing, it is readily apparent that claims
1, 2, 11 and 16 of the Watters Patent were, as the Dis-
trict Court held, ‘‘only an amalgam of known elements.’’
Moreover, the Goldstein Patent had combined all of the
elements in virtually the same manner as set forth in those
claims. We agree with the court’s conclusion that it would
have been obvious for a person of ordinary skill in the
art to attempt to place Watters’ minor variation of Gold-
stein’s device in a duct.

Three claims remain to be disposed of. Claim 17 is a
restatement of claim 1, with the provision that there

honeycomb structure as such, that structure was equally obvious
and known in the prior art. The Goldstein Patent clearly dis-
closes such a supporting structure, and the English translation
of the Brillouin article, which was received into evidence with-
out objection, uses the word ‘‘honeycomb’’ to describe a possible
means of partitioning.

7In the origina! application, Watters in effect conceded that
the first four techniques discussed above were in the prior art
and had been used in combination. He declared, however, that
two problems remained: the flexing of the facing and the per-
sistence of high frequency resonance. He then stated: ‘‘These
problems underlying the present invention have been completely
overcome with a particular critical kind of dimensioning of the
spaces between supporting members * * *.’’ (Emphasis supplied. )
The supposedly ‘‘critical dimensions’’ had been used by both
Kjaer and Goldstein.

33

should be more than one of such panels placed in the duct,
and claim 20 states that the panels should be parallel.
The court properly concluded that the technique of lining
more than one surface in a duct or room is an obvious
one, and that the technique of erecting the panels in par-
allel formation is also obvious. Dr. Bolt testified by de-
position that he had seen ducts where all four walls were
lined, and the Dyer article disclosed ducts lined on four
sides and on opposite, parallel walls.

Finally, claim 13 states that some of the supporting
members can be substantially acoustically opaque and some
substantially acoustically transparent. The patent indi-
cates that this may be done by perforating some of the
partitions, and that the purpose of such perforation is
to ‘‘tune’’ the device so that it is capable of absorbing a
broader band of frequencies. We are satisfied that, al-
though this technique was not specifically taught or dis-
closed in any of the publications before the court, the
method was one which would be obvious to a person of or-
dinary skill in the art. It was well known that, in order
to deal with a broad band of frequencies, the honeycomb-
ing or other partitioning could be constructed so that differ-
ent sized chambers in the supporting mechanism resulted.
The Brillouin, Ingard and Bolt, and Ingard and Pridmore-
Brown articles discussed this concept of ‘‘tuning.’’ Given
the honeycombing structure which was already known to
the art, there would be two obvious alternative ways to
enlarge some, but not all, of the air cavities or series re-
sonators: to move some of the partitions so that different
sized chambers were constructed from the outset, or to
connect some of the chambers by means of slits or perfora-
tions. The Watters Patent application implicitly recog-
nized the obviousness of the latter approach:

34

If it is desired to introduce particular frequency re-
sonance phenomena, of course, the acoustically opague
[sic] supporting members * * * may, in some areas,
be rendered substantially transparent. * * * (Empha-
sis supplied.)

In sum, we affirm the District Court’s conclusion that
none of the allegedly infringed claims met the statutory
requirement of non-obviousness. The oft-quoted statement
of Justice Clark in Graham v. John Deere Co., supra at
19, 148 USPQ at 467, is once more to the point:

* * * We have been urged to find in § 103 a relaxed
standard, supposedly a congressional reaction to the
increased standard’’ applied by this Court in its de-
cisions over the last 20 or 30 years. The standard
has remained invariable in this Court. Technology,
however, has advanced — and with remarkable rapid-
ity in the last 50 years. Moreover, the ambit of ap-
plicable art in given fields of science has widened by
disciplines unheard of a half century ago. It is but
an even-handed application to require ‘iat those per-
sons granted the benefit of a patent monopoly be
charged with an awareness of these changed condi-
tions. * * * He who seeks to build a better mouse-
trap today has a long path to tread before reaching
the Patent Office.

[4] Since we affirm the court’s finding of invalidity of
the Watters Patent, we need not rule on the question of
whether or not the defendant’s structures are such that
they would have infringed on that patent, had it been valid,
and we express no opinion on that issue.

a

35

[5] The defendant cross-appeals from the District
Court’s denial * of an award of attorney fees before that
court under 35 U.S.C. § 285. The determination of whether
or not an action is an ‘‘exceptional case’’ within the mean-
ing of § 285 is a matter for the sound discretion of the
trial court. See Technograph Printed Circuits, Ltd. v.
Methode Electronics, Inc., 494 F.2d 905, 909, 179 USPQ.
206, 209 (7th Cir. 1973) ; Q-Panel Co. v. Newfield, 482 F.2d
210, 211, 178 USPQ 521, 522 (10th Cir. 1973). The de-
fendant urges that that discretion was abused because the
trial court made no ruling on the issue of fraud. Mere
failure to rule on that issue, standing alone, however, is
not objectionable for

* * * [t]he trial court need not make specific findings
on all facts and evidentiary matters brought before
it, but need find only the ultimate facts necessary to
reach a decision in the case. * * * United States v.
F. D. Rich Co., Inc., 489 F.2d 895, 899 (8th Cir. 1971).

The trial court had sustained the defense of obviousness,
and the alleged fraud was simply an alternative defense.
As was the case in Indiana General Corp. v. Krystinel
Corp., 421 F.2d 1023, 1033-1034, 164 USPQ 321, 329-330
(2nd Cir.), cert. denied, 398 U.S. 928, 165 USPQ 609 (1970),
we cannot say that the court abused its discretion in
withholding a ruling on the fraud issue and in denying
attorney fees.

The judgment of the District Court is affirmed.

8 We find no merit to the defendant’s implication that the
trial court made no ruling on its request for attorney fees. The
request was made and was not granted, despite the court’s award
of costs. Under the circumstances, the denial of the award was
clear.

eee

36

37
APPENDIX C.

UNITED STATES DISTRICT COURT
for the

EASTERN DISTRICT OF MISSOURI

ORDER

(Filed in U. S. District Court June 18, 1974)

In accy dance with the Memorandum of the Court filed this
date in this action and incorporated herein,

It Is Hereby Ordered, Adjudged and Decreed that the plain-
tiff take nothing from the defendant; and

It Is Further Ordered that the plaintiff pay costs.
Dated this 18th day of June, 1974.

/s/ H. KENNETH WANGELIN
United States District Judge

MEMORANDUM
(Filed in U. S. District Court June 18, 1974)

This matter was tried to the Court without a jury and the
Court has been duly advised by testimony, documentary evi-

38
= -

dence and briefs of all the parties and makes the following
findings of fact and conclusions of law:

This is an action for infringement of a patent brought pur-
suant to the Patent Act, Title 35, United States Code. This
Court has jurisdiction under 28 U.S.C., Sections 1338 and
2201. Venue is proper under 28 U.S.C., Section 1400(b).
Plaintiff is a Massachusetts corporation having its principal
place of business at Cambridge, Massachusetts. Plaintiff is the
assignee of United States Patent 3,113,634, granted on De-
cember 10, 1963, the patent allegedly infringed in this suit.
The defendant is a Maryland corporation with its principal
place vi business at St. Louis, Missouri.

Patent 3,113,634 (herein known as the Watters Patent) is
described as a sound-absorbing panel for lining a duct and
similar passages for the purpose of absorbing and silencing the
acoustic energy accompanying the flow of a fluid medium, such
as air, through the ducts. The Watters Patent claims are:

What is claimed is:

1. A sound-absorbing panel for lining a portion only
of a duct and the like having, in combination with the
duct, a thin limp relatively flexible porous sheet having
an impedance to acoustic energy that is appreciably re-
sistive, a plurality of relatively rigid supporting members
defining spaces therebetween and secured at one end to
a surface of the duct and at the other end to the sheet,
said duct having a fluid passage therethrough adjacent
said sheet with a cross-dimension normal to said sheet,
the spaces of the supporting members being large com-
pared to the pores of the sheet but small compared to the
said cross dimension, the said spaces being also sufficiently
small to provide support for the relatively flexible sheet
in order substantially to prevent its sagging and flexing.

. ais

2 ee

39
=

2. The panel of claim 1, said supporting members hav-
ing substantially equa! height.

3. The panel of claim 1 the said sheet being substan-
tially U-shaped and said supporting members having suc-
cessively increasing and then successively decreasing
height, whereby said pancl is substantially U-shaped.

4. A sound-absorbing panel as claimed in claim 3
and in which the supporting members in the region of
the crest of the U-shape thereof are of substantially uni-
form height to provide a substantially flat neck region.

5. A sound-absorbing panel as claimed in claim 3 and
in which the sheet is interrupted in the region of the crest
of the U-shape thereof to expose the panel to acoustic
energy directly and not through the resistive sheet.

6. A sound-absorbing panel as claimed in claim 3 and
in which the exposed crest region of the U-shape thereof
is bounded by acoustically opaque baffles.

7. A sound-absorbing panel as claimed in claim 3 and
in which the maximum height of the U-shaped panel is
tuned to the intermediate frequencies of the band of
sound frequencies to be transmitted along the duct.

8. The panel of claim 1 said sheet comprising a thin
carrier member having the pores of said sheet laminated
with at least one flexible acoustically resistive layer which
renders said sheet acoustically resistive.

9. The panel of claim 1 said sheet comprising a thin
member of thickness d expressed in thousandths of an
inch, having a number n of pores per square inch and a
port half-cross-dimension r expressed in thousandths of
an inch, related substantially by the expression

4 logio4 = K—log, n/d

40
— 53 —

where K is a constant lying within the range of from sub-
stantially 2.39 to substantially 4.39.

10. A sound-absorbing panel as claimed in claim 9
and in which the cross dimension of the said pores lies
within the range of from substantially 2 to substantially
40 thousandths of an inch.

11. The panel of claim 1 said supporting members
being substantially acoustically opaque.

12. The panel of claim 1 said supporting members
being substantially acoustically transparent.

13. The panel of claim 1 some of said supporting mem-
bers being substantially acoustically opaque and some sub-
stantially acoustically transparent.

14. The panel of claim | said sheet being secured to
said supporting members to permit resonant vibration of
the sheet portions between successive supporting mem-
bers.

15. The panel of claim | said supporting members and
the spaces therebetween being shaped to define a cellular
supporting structure.

16. The panel of claim 1 the portions of said sheet
between supporting members having a plurality of said
pores and said panel having a cover extending between
said sheet and said duct surface.

17. A sound-absorbing structure having, in combina-
tion, a duct, and a plurality of sound-absorbing panels
spaced apart to define a fluid passage therebetween with
a cross-dimension between said panels, each of said pancls
comprising a thin limp relatively flexible porous sheet
having an impedance to acoustic energy that is appre-
ciably resistive, a plurality of relatively rigid supporting
members defining spaces therebetween and secured at one
end to a corresponding surface of the duct and at the

41
— wa

other end to the sheet, the spaces of the supporting mem-
bers being large compared to the pores of the sheet but
small compared to said duct passage cross-dimension, said
spaces being also sufficiently small to provide support for
the relatively flexible sheet in order substantially to pre-
vent its sagging and flexing.

18. The structure of claim 17 said panels having suc-
cessi' e U-shaped portions with the crests and troughs of
one panel alternating with the crests and troughs of the
other panel, the longitudinal spacing between the crests
of one panel and the adjacent crests of the other panel
being a multiple of the half wavelength of the intermediate
frequencies of the band of sound frequencies to be trans-
mitted along the duct.

19. The structure of claim 18 the maximum height of
the panels being tuned to said intermediate sound fre-
quencies.

20. The structure of claim 17 said panels being sub-
stantially parallel.

The defendant is accused of infringing claims 1, 2, 11, 13,
16, 17 and 20 of the Watters patent by the placement of sound
attenuating panels in the surfaces of the nacelle air inlet, the
surfaces of the by-pass and in certain surfaces of the hot section
near the exhaust of its DC-10 Commercial Aircraft. Such
panels generally consist of a perforated face sheet supported
by a honeycomb or cellular core and the core is backed up
by an imperforate back plate.

Validity of the Patent

The federal patent power is predicated upon the specific
constitutional provision which authorizes the Congress “To pro-
mote the Progress of . . . useful Arts, by securing, for limited

42
— _

Times to . . . Inventors the Exclusive Right to their .
Discoveries.” Art. I, Section 8, Clause 8. Circumscribed by
the Constitution, Congress may set out conditions and tests
for patentability. McClurg v. Kingsland, 1 How. 202, 206,
11 L.Ed. 102 (1843). The Commissioner of Patents and the
courts are charged with the duty in the administration of the
patent system to: give effect to the constitutional standard by
appropriate application, in each case, of the statutory scheme
of the Congress. Graham v. John Deere Co., 383 U.S. 1, 86
S.Ct. 684, 15 L.Ed.2d 545 (1965).

‘Pursuant to the Constitutional grant of power and in light
of the Hotchkiss v. Greenwood, 11 How. 248, 13 L.Ed. 683
(1951), formulation of patentability,’ the Congress in the 1952
Patent Act described the three conditions of patentability;
utility,? novelty," and nonobviousness. In the case at bar there
have been but nominal challenges as to the conditions of utility
and novelty and this Court need not consider them. The epi-
center of the validity issue relates to Section 103, which pro-
vides:

' “(UJnless more ingenuity and skill . . . were required .. .
than were possessed by an ordinary mechanic acquainted with the
business, there was an absence of that degree of skill and ingenuity
which constitute essential elements of e invention. In other
words, the improvement is the work of the skilful mechanic, not that
of the inventor.” Hotchkiss v. Greenwood, supra at 267.

2 $101. Inventions patentable. Whoever invents or discovers any
new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof, may obtain
a patent therefor, subject to the conditions and requirements of this
title.

* § 102. Conditions for patentability; novelty and loss of right to
patent. A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this country,
or patented or described in a printed publication in this or a
foreign country, before the invention thereof by the applicant
for patent, or

(b) the invention was patented or described in a printed pub-
lication in this or a foreign country or in public use or on sale

43
= =

35 US.C. § 103. Conditions for patentability; non-
obvious subject matter.

A patent may not be obtained though the invention is
not identically disclosed or described as set forth in section
102 of this title, if the differences between the subject mat-
ter sought to be patented and the prior art are such that
the subject matter as a whole would have been obvious at
the time the invention was made to a person having ordi-
nary skill in the art to which said subject matter pertains.
Patentability shall not be negatived by the manner in which
the invention was made.

The proper mode of application of section 103 was described
by the Supreme Court in Graham v. John Deere Co., supra,
wherein it was said:

Under § 103, the scope and content of the prior art are
to be determined; differences between the prior art and the

in this country, more than one year prior to the date of the
application for patent in the United States, or

(c) he has abandoned the invention, or

(d) the invention was first patented or caused to be patented
by the applicant or his legal representatives or assigns in a
foreign country prior to the date of the application for patent
in this country on an application filed more than twelve months
before the filing of the application of the United States, or

(e) the invention was described in a patent granted on an ap-
plication for patent by another filed in the United States before
the invention thereof by the applicant for patent, or

(f) he did not himself invent the subject matter sought to be
patented, or

(g) before the applicant’s invention thereof the invention was
made in this country by another who had not abandoned, sup-
pressed, or concealed it. In determining priority of invention
there shall be considered not only the respective dates of con-
ception and reduction to practice of the invention, but also the
reasonable diligence of one who was first to conceive and last to

— to practice, from a time prior to conception by the
other.

44
=

claims at issue are to be ascertained; and the level of ordi-
nary skill in the pertinent art resolved. At 17.

In considering the obviousness vel non of the patent in suit
this Court shall first examine the scope and content of the prior
art, then compare and contrast the prior art and the patent in
suit, particularly in regard to the claims alleged to be infringed,
and finally consider the level of ordinary skill in the pertinent
art.

The Examiner considered ten United States Patents and seven
Foreign Patents as prior art. However, the defendant has dem-
onstrated to this Court that several other publications and pat-
ents should also have been considered as pertinent prior art.
This Court recognizes the modern trend toward widening the
scope of prior art which can be considered pertinent. Mandel
Brother, Inc., v. Wallace, 335 U.S. 291 (1948); Gerner v. Moog
Industries, Inc., 383 F.2d 56 (8th Cir., 1967); Skee-Trainer,
Inc. v. Garelick Mfg. Co., 361 F.2d 895 (8th Cir., 1966), and
holds that the after discussed patents and publications are rele-
vant to the patent in suit. .

Perhaps the most salient of the unconsidered prior art cited
to the Court by the defendant is the article by Ingard and Prid-
more-Brown entitled “The Effect of Partitions in the Absorptive
Lining of Sound-Attenuating Ducts,” published September,
1951, in THE JOURNAL OF THE ACOUSTICAL SOCIETY OF AMER-
Ica. This article on page 589 and depicted by Fig. | discloses a
rectangular duct which is divided lengthwise by a thin per-
forated facing covered with a resistive cloth. Said facing is
supported on one wall of the duct by partitions which are placed
crosswise at regular intervals down the length of the duct. The
distance between the partitions was varied in steps from 10 cm
to infinity. Such structure when applied to the patent in suit
anticipates claims 1, 2, 11, 16, 17 and 20.

4 It should be noted that this same structure was included in a
General Electric acoustic lecture course given by Drs. Ingard and
Bolt of Bolt, Beranek and Newman on or about January 27, 1955.

45
=

A comparative analysis of the items of claim 1 and the struc-
ture of the Ingard and Pridmore-Brown article demonstrates
the following anticipation:

1. “A sound absorbing panel for lining a portion only of a
duct and the like . . .” Fig. 1 clearly shows a panel applied
to a portion of the duct wall.

2. “. . . having in combination with the duct . . .” Fig. 1
clearly shows the structure in combination with a duct.

3. “. .. a thin limp relatively flexible porous sheet having an
impedance to acoustic energy that is appreciably resistive . . .”
The structure and its description indicates the employment of a
0.4 cm thin perforated facing covered with a low resistance
cloth. Moreover, it is obvious that the cloth is acoustically re-
Sistive.

4. “...a plurality of relatively rigid supporting members de-
fining spaces there between and secured at one end to a suriace
of the duct and at the other end to the sheet . . .” According to
the plaintiff's answers to Interrogatories Nos. 100 and 101 the
Watters’ “supporting members” are not limited to honeycomb
forms but would encompass laterally spaced apart planar walls
as shown in Fig. 1. As to the method by which the supporting
members are secured to the duct and the facing such is deemed
de minimis. Watters indicates in his patent at Col. 2., lines 37
et seq. that the thin porous sheet is affixed to the supporting
members “by cementing or otherwise securing.” The phrase
“otherwise securing” is sufficiently broad to include any appro-
priate method used by a man skilled in the art.

5. “. . . said duct having a fluid passage therethrough adja-
cent said sheet with a cross-dimension normal to said sheet . . .”
The structure depicted by Fig. 1 shows a fluid passage with
such a cross-dimension.

46
— 9 —

6. “. . . the spaces of the supporting members being large
compared to the pores of the sheet . . .” The description of
Fig. 1 teaches that the perforation are 0.4 cm in diameter
while the spaces as defined by the supporting members ranged
from 10 cm to infinity. Such comparative dimensions meet
the size limitation of the claim.

7. “. .. but small compared to the said cross-dimension . . .”
The description of Fig. 1 provides that the cross-dimension of
the passage is 14.5 cm and the spaces between the supporting
members can be 10 cm. Accordingly, the above Watters’ limi-

tation is met.

8. “. . . the said spaces being also sufficiently small to pro-
vide support for the relatively flexible sheet in order substanti-
ally to prevent its sagging and flexing.” As the language de-
scriptive of Fig. 1 allows for 10 cm spacing of the supporting
members, such is sufficiently small to be in accord with this
limitation. | 3

Claim 2, which provides that the supporting members have
substantially equal height, is dependent on claim 1. From the
description of Fig. 1 and its depiction in the Ingard and Prid-
more-Brown articles it is apparent that the supporting members
are of substantially equal height. Claim 11.. which provides
that said supporting members are substantially acoustically
opaque, is also dependent upon claim 1. From the foregoing
article it is evident that said supporting members are substan-
tially acoustically opaque. Claim 16., which is also dependant
upon claim 1, provides that the portions of said sheet between
successive supporting members have a plurality of said pores
and that the sound-absorbing panel has a cover extending be-
tween said sheet and said duct surface. Again, from the afore-
mentioned publication these limitations are met.

Claim 17 and 20 are not distinct from claims 1, 2 and 11
and their subject matters are obvious from the teachings of

es te tn wk

47
—_—

the Ingard and Pridmore-Brown publication to those persons
skilled in the art.

In further connection with claim 17 an article entitled “Noise
Attenuation of Dissipative Mufflers” authored by Ira Dyer and
published in the May 19, 1956 issue of Noise CONTROL is per-
tinent. The import of claim 17 is the limitation of a plurality
of sound-absorbing panels spaced apart. The foregoing Dyer
article shows spaced apart sound absorbing panels lining the
opposite walls of a duct at Figures 2 and 3 on page 50. Fig. 4
on page 51 also shows a duct lined on four sides. Additional
corroboration for prior art anticipating claim 17 can be found
in the deposition of Dr. Bolt of defendant corporation at page
287, wherein he stated that he had seen ducts having four walls
lined with sound absorbing panels as of 1958, the year the
patent in suit was filed with the Patent Office.

With regard to claim 20, which is dependent upon claim 17,
the Dyer article discloses in Figures 2, 3 and 4 the limitation
in claim 20 of the panels being substantially parallel.

Additional anticipation by prior art of the Watters’ claims
can be found in an article entitled “Absorption Characteristics
of Acoustic Material with Perforated Facings” by U. Ingard
and R. H. Bolt of defendant Bolt, Beranek and Newman pub-
lished in the September, 1951 issue of THE JOURNAL OF THE
ACOUSTICAL SocrETy OF AMERICA. Fig. | of the article shows
a layer of porous material placed parallel to a hard wall and
Separated from the wall by an air cavity. Such air cavity be-
tween the porous material and the wall may or may not be
divided into cells by parallel spaced partitions. The article also
describes the use of a perforated plate with the porous material.
The authors further state at page 535 the case where the re-
Sistive porous layer is very thin, actually a cloth or a screen,
covered with a perforated facing.« From the aforementioned

_ 5° Though the above structure does not include the duct limita-
tion in claim 1. of the Watters’ patent, such is mot essential for the

48
== 6] 1.

article it is clear that claims 1, 2, 11, 16, 17 and 20 of Wat-
ters are either completely anticipated or are obvious to persons
skilled in the art.

Claim 1 of Watters teaches that the face sheet is “a thin limp
relatively flexible porous sheet having an impedence to acous-
tic energy that is appreciably resistive . . .” The specification
further describes it as “a thin, non-self-supporting relatively flex-
ible porous sheet” comprised of “a perforated, relatively thin,
preferably plastic layer carrier member . . . laminated with
either or both of outer and inner extremely flexible porous
acoustically-resistive materials, such a ‘tea-bag’ paper, porous
cellulose film, and the like.” Such sheet is either specifically
anticipated or is made obvious by the teachings of the Gold-
stein Patent No. 2,870,857, filed on March 6, 1956. The com-
parable face sheet in Goldstein is comprised of two sheets: the
outer or facing sheet made of vinyl chloride acetate plastic
and the inside sheet of tissue or foil. Said sheets are joined to-
gether by a suitable adhesive cement, or by heat-sealing or
welding."

Watters’ claim 13, dependent upon claim 1, provides the
limitation that some of the cellular supporting members are
substantially acoustically opaque and some are substantially
acoustically transparent. The specifications of Watters indicate
that the method of rendering the supporting structures acous-
tically transparent is to perforate them (Col. 5, lines 50 et seq.).
If said claim has not been made obvious by the aforementioned
prior art, it clearly is anticipated by the Kjaer Patent 2,619,685,
filed on June 11, 1946. Therein, it also provides for perfo-

anticipation of said claim. The record is replete with evidence
where the duct is equated to a chamber or a room. Moreover,
claim |. speaks of “a duct and the like .. .”

® There are differences in thickness in the sheets of the two pat-
ents, however, this Court does not consider such to be of particular
significance when viewed with respect to persons skilled in.the art.

tee teen

49
—=— _

rations in similar supporting members of a sound absorbing
mechanism.

In following that the aforementioned prior art is relevant,
then thought must be given to the fact that such prior art was
not considered by the Patent Office during the prosecution of
the patent in suit. Though a patent is presumed valid, Graham
v. Jeoffroy Mfg., 206 F.2d 769 (Sth Cir., 1953), such pre-
sumption is weakened, if not completely destroyed by proof of
prior non-considered art. Ralston Purina Co. v. Gen. Food
Corp., 442 F.2d 389 (8th Cir., 1971); American Infra-Red
Radiant Co. v. Gen. Food Corp., 360 F.2d 977 (8th Cir.,
1966), cert. den. 385 U.S. 920 (1966). Therefore, as the non-
considered art is relevant, the initial presumption of validity is
at least diminished and at most negated.

Juxtapositioning the prior art, both considered and non-con-
sidered, with the patent in suit, this Court can find only an
amalgam of known elements. Though it cannot be disputed that
plaintiff's aggregation results in a utilitarian product, such com-
bination is nothing new, surprising or novel, nor is a new func-
tion created or a useful addition of knowledge taught to the
prior art. Kell-Dot Industries, Inc. v. Braves, 361 F.2d 25, 28
(8th Cir., 1966). The Supreme Court in Lincoln Engineering
Co. of Illinois v. Stewart-Warner Corp., 303 U.S. 545 (1938),
teaches us:

The mere aggregation of a number of old parts or ele-
ments which, in the aggregation, perform or produce no
new or different function or operation that theretofore per-
formed or produced by them, is not patentable invention.
At 549.

Before the Court reaches the final issue of obviousness, the
penultimate question of knowledge of one ordinarily skilled in
that art must be considered. The proper viewpoint of such
knowledge as expressed by the Eighth Circuit Court of Appeals

50
— wa

is that “[k]nowledge of a hypothetical person skilled in the art,
who has thought about the subject matter of the patented in-
vention of that art.” Flour City Architectural Met. v. Alpana
Alum. Prod., Inc.,. 454 F.2d 98, 107 (8th Cir., 1972). This
Court finds that such hypothetical person would be able to
design the patent in suit.

Accordingly, this Court finds that the Watters patent when
considered with the prior art and particularly such art not
cited by the Patent Office is invalid because the combination
of old elements is obvious to the hypothetical person skilled in
the art.

Infringement

Even if the Watters patent were valid, the accused devices
of the defendant do not infringe. Since the Watters patent is
a combination of old elements, each of the elements must be
included to constitute infringement. Gallo y. Norris Dispensers,
Inc., 315 F.Supp. 38, 40 (E.D. Mo., 1970); Morpul, Inc. v.
Glen Raven Knitting Mill, Inc., 357 F.2d 732 (4th Cir., 1966).
Aside from the blatant difference in capabilities as the accused
devices must operate under extremes of heat, sound velocity
and sound pressure,’ claim | of Watters calls for a “thin limp

relatively flexible porous sheet.” None of the accused mecha- -

nisms have such a “limp” sheet. Rather, the counterpart in the
defendant’s mechanisms to the plaintiff's limp sheet is formed
by a heat treatment over a die, with a pulling strength exerted

* Inside the engine nacelle the temperature at take-off is 1,000°f.
the sound velocity ranger from 1,000 to 10,000 vibrations per second
(Hertz) and the sound pressure level varies from approximately
130db. to 170db. Whereas, the Watters patent is primarily designed
to be used where the temperatures, sound velocity and pressure are
considerably more mode: ate

ti nas sm cencenclll

51
—

on it of 20 to 25 tons. This, by no delimitation upon imagina-
tion, is not limp.*

/s/ H. KENNETH WANGELIN
United States District Judge

Dated this 18th day of June, 1974.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385003_1321%3A1. Public record. Not legal advice.