Appendix — Systematic Tool & Machine Co. v. Walter Kidde & Co.

Supreme Court brief1977

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Supreme Court. U. S,

™ FILED

JUL 13 4977 7

Supreme Court of the UnitetStétes® “<* |

~-_—

October Term, 1977.

No. V7- 75 ‘ia

SYSTEMATIC TOOL & MACHINE COMPANY,

et al.,

Petitioners,

WALTER KIDDE & COMPANY, INC.,

Respondent.

APPENDIX TO

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT.

ALAN H. BERNSTEIN,

CarsarR, RivisE, BERNSTEIN &

CouEN, LTp.,

Suite 804—Stephen Girard Building,

21 South 12th Street,

Philadelphia, Pa. 19107

(215) 567-2010

Attorneys for Petitioners.

international Printing Co., 711 So. 50th St., Phila., Pa. 19143 — Tel. (215) 727-8711

Court of Appeais Opinion, Fileuw March 25, 1977

. UNITED STATES COURT OF APPEALS

For rae Turmp Cmovrr

APPENDIX —

. No. 76-1660

Page —

SYSTEMATIC TOOL & MACHINE COMPANY and

Court of Appeals Opinion, SYSTEMATIC PRODUCTS, INC., and CLAYTON

Filed March 25, 1977.........+. la

E. GIANGIULIO, and DOMINIC D’AMBRO,

Filing of Petition for Appellees

Rehearing, April 7, 1977....... 22a e

Order on Petition for

Rehearing, April 28, 1977...... 23a WALTER KIDDE & COMPANY, ar |

District Court Opinion, —

Filed February 21, 1975........ 25a Own AppgaL From THe Unrrep States District Court

aos For THe Eastern District or PENNSYLVANIA

District Court Opinion, -

Filed March 19, 1976...........127a D.C. Civil No. 70-1708

. Argued January 11, 1977

Before Rosenn and Hunter, Circutt Judges, and Snyper’ *

District Judge

Gordon D. Coplein

Darby and Darby

Richard M. Rosenbleeth

William H. Roberts

Blank, Rome, Klaus & Comisky

Jacob C. Kellem

Connolly, Bove & Lodge .

Attorneys for Appellant

Alan H. Bernstein

Caesar, Rivise, Bernstein & Cohen

’ Attorneys for Appellees

* Daniel J. Snyder, Jr.. United States District Judge for the Western

District of Pennsylvania, sitting by designation.

Appeals Opinion, Fi 25, -

Court of Appeals Opinion, Filed March ao7? Court of Appeals Opinion, Filed March 25, 1977

—

(Filed March 25, 1977)

Syyver, District Judge:

Systematic Tool and Machine Co., Systematic Prod.

ucts, Inc., and Dominic D’Ambro, licensees, with Clayton E.

Giangiulio, owner of the patent, filed this action for patent

infringement. The decision of the district court found

valid and infringed Patent No. 3,369,582 (hereinafter ‘‘the

582 patent’’) issued February 20, 1968, for a hand-oper-

ated tomato-slicing device. Appeal was taken to this court

under 28 U.S.C. § 1292(a)(4) giving us jurisdiction over

‘* Judgments in civil actions for patent infringement which

are final except for accounting.’’ Since we find the subject

matter of the patent and the prior art relating to this de-

vice is obvious, we reverse under 35 U.S.C. § 103."

I. Tue Patent Iw Suir.

The patent in suit relates to a commercially success-

ful? and efficient tomato slicer. As set forth in Claim 1,

the device is characterized by the following features:

1. A pusher to hold the tomato and move it with ref-

erence to an array of blades.

2. The blade array lying at an angle less than 40°

with respect to the pusher path of movement.

3. The angle of separation between the pusher lead-

ing arm and trailing arm being greater than 90°.

1. 35 U.S.C. §103 reads as follows: “A patent may not be obtained though

the invention is not identically disclosed or described as set forth im 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 a 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. [’atentability

shall not be negatived by the manner in which the invention was made.”

2. See Appellees’ Brief, p. 7. Capable of slicing a tomato per second,

plaintiffs’ invention, it was agreed, was an improvement over slicing with a

hand-held knife or slicing with a meat-slicer which scattered individial siices,

released juice, and required cleanup procedures. Commercial success without

invention, however, will not make patentability. Anderson’s-Black Rock. Inc.

v. Pavement Salvage Co., Inc., 396 U.S. 57, 61 (1969); A & P Tea Co.

Supermarket Corp., 340 U.S. 147 (1950); U.S. Expansion Boit Company v.

Jordan Industries, inc., 488 F.2d 566 (3rd Cir. 1973).

4. The angle between the leading arm and the cutting

edge of the blades being less than 90°.

5. The trailing arm of the pusher making a small

acute angle with reference to the cutting edge of

the blades.

The plaintiffs assert that the tough skin and mushy

interior of a tomato present a unique problem in slicing

since a direct perpendicular contact of the tomato and blade

edge tends to bruise or mangle the tomato. Plaintiffs’

claimed invention solved this problem by the various angles

between the leading and trailing arms which hold the

tomato between the pusher and the angle of the cutting

edges of the blades to the pusher. The ’582 patent device

pushes the tomato in a straight line through the rack of

thin blades at an angle less than 40° with respect to the

pusher path of movement. See Figure L.

The original claims filed did not relate the angle of

the leading and trailing arms to the physical structure or

recite any particular angles for them. The Examiner

originally rejected the claims for two reasons: (1) for

indefiniteness in not stating relationships between the angles

and physical structures, and (2) for obviousness over a

combination of prior art slicers with similar structures

but having somewhat different angles relating to the

blades and pusher. The c.aims were amended to dis-

tinguish the prior art (as underlined by the patentee to

make it apparent how the claim differed from the prior

art) as follows:

‘“ . . . an [peletively smal aente] angle less than

forty (40) degrees with respect to said pusher path of

movement, the angle of separation between said pusher

leading arm and trailing arm being greater than 90°,

the angle between said leading arm and the cutting

edge of said blades being less than 90° with the trail-

Court of Appeals Opinion, Filed March 25, 1977 3a

Court of Appeals Opinion, Filed March 25, 1977

FIGURE I

ing arm of said pusher making a small acute angle . .

with respect to said cutting edge, . . . . whereby said

pusher assembly [@ehieving] achieves a smooth shear-

ing action [by seid blades through] with a tomato

urged against and through said blades to secure a

plurality of thin tomato slices, essentially undamaged,

with said tomato holding pocket slots allowing said

blades to pass through the tomato.’’ [Additions to

the claim are underlined; deletions are in brackets.]

II. Tue Accusep Devices

There are two accused devices known as the TK-I and

the TK-II machines. The TK-I, not sold since 1968, is a

virtual copy of the plaintiffs’ machine and was stipulated

to be an infringement of the patent in suit, if the court

finds the patent in suit valid. The TK-II, not sold since

1972, is a somewhat different looking method of doing that

which the plaintiffs’ device (called the ‘‘Tomato Tamer’’) ° °

achieves.* See Figure LI.

Ill. Tae Triuxt Courr’s Treatment

The district court filed a preliminary opinion and

order holding the ’582 patent valid and infringed but al-

lowed 30 days to file exceptions. Exceptions were filed and

by its second opinion, the district court denied the excep-

tions, affirming and readopting its earlier findings of fact

and conclusions of law. A third order later denied in-

junctive relief in view of the defendant’s cessation of

infringing activities in 1972.*

3. Redco, Inc. (a non-party) was the sole manufacturer of the accused

devices and sold them to defendant Kidde which, in turn, resold through dis-

tributors as well as users like Burger King Corporation, an operator of

hamburg restaurants. This action was commenced in the Northern District

of Illinois against Kidde and several of its customers, including Burger King.

It was transferred to the Eastern District of Pennsylvania, with Kidde as the

only active defendant. Suit was stayed as to all other defendants pending

disposition of the litigation before this court. a

4. While apparently counsel originally conceived that accounting would

proceed before appeal to this Court (Trial Transcript, p. 12) the three orders

dispose of all proceedings in the district court except for an accounting and

collectively constitute the requisite judgment for our jurisciction under 28

6a ;

Court of Appeals Opinion, Filed March 25, 1977 Court of Appeals Opinion, Filed March 25, 1977

FIGURE II

Plaintiff’s principal witness, Clayton Giangiulio, in-

° . ventor and former delicatessen operator, pointed out that

prior to his invention, tomatoes had been sliced with a

hand-held knife, a slow process at best, or with an ex-

pensive commercial meat slicer which scattered individual

slices, released juice, and required time consuming clean-up

procedures. He demonstrated that a tomato could be sliced

by pushing it with his hand but not as safely and efficiently

as with the patented device. He admitted that while the

basic elements of a slicer consisting of blades, pushers,

bases and relative movement were well known, innovation

was claimed in the unique arrangement of otherwise gen-

eral elements which existed in different relationships in the

prior art—‘‘the slicing of tomatoes at a rate ten times

greater than the prior art as well as providing straighter

slices held together in the form of a tomato.’’ (Appellees’

Brief, p. 14.)

, The defendant elicited through Ronald Karr, an ex-

. tensively qualified mechanical engineer, a designer, and

professor of mechanical design, that the ’582 patent was a

routine development of old elements in view of prior art

‘ patents for straight line slicing devices. He stated on

cross examination:

**Q. Now, you have testified with respect to six

patents on direct examination?

A. Yes, sir.

Q. Is it your testimony that given these patents

and put in a room you could come up with the invention

in suit?

A. I would need in that room several tools and

materials to produce the invention. And I would have

to qualify that a little bit, but yes; I could. And there

are about half a dozen others that could do that. Since

4. (Cont’d.)

- U.S.C. §1292(a) (4). Cf., Allis-Chalmers Corp. v. Philadelphia Electric Co.,

521 F.2d 360 (3rd Cir. 1975); W. L. Gore & Associates, Inc. v. Carlisle

Corp., 529 F.2d 614 (3rd Cir. 1976); Kramer v. Scientific Control Corp.,

534 F.2d 1085 (3rd Cir. 1976).

Court of Appeals Opinion, Filed March 25, 1977

I don’t know every engineer in the country, there might

be a thousand people that could do that.’’ (p. 342a).°

The plaintiff chose not to contradict this testimony but

to argue that the six prior art patents relied upon by the

defendant did not show a pusher containing slots for the

reception of blades, where the blade array lies at an angle

of less than 40° with respect to the pusher path movement

to achieve thin tomato slices in a single pass of the pusher

through the blades.

The district court analyzed the six patents from a

functional viewpoint saying for example, that the French

patent to Birambeau for a tomato slicer relied on a sawing

action which did not foreshadow a mechanical, single pass

slicer such as the subject matter of the patent in suit.

The court held that the Bever patent for a bun slicer could

not pass completely through the tomato and ‘‘(nJo reason-

able adaptation of the machine will perform such a func-

tion. Hence, we conclude that the Bever patent neither

suggests nor discloses the subject matter of the patent in

suit.’’ The court continued this type of analysis through

the other prior patents and concluded:

‘‘We have determined from the patent material

submitted by the defendant and discussed above, that

the ordinary level of skill in the art of food slicing is

that possessed by an individual performing that

task....

We have heard the evidence of defendant’s expert

engineering witness. We understand his testimony to

mean that slicers are interesting developments of

known technology and that, while a particular slicer

may be an extremely efficient, and well-designed piece

of machinery, there is no invention in putting a slicer

together. However, in light of the prior art, and of

our determination of the ordinary level of skill in the

5. Page numbers followed by “a” refer to pages in the Appendix to the

Briefs.

Court of Appeals Opinion, Filed March 25, 1977

art, we disagree with his opinion as to the obvious-

ness of the 582 patent.... We find that the subject

matter of the ’582 patent is not obvious to an indi-

vidual possessing the average level of skill in the art,

in light of the prior art existing at the time the in-

vention was developed and the application was filed;

the inventor of the ’582 patent, Clayton Giangiulio, did

not know of the existence of any device which sug-

gested to him the machine he devised. Rather, the

082 patent was the product of his own independent

and original development, and hence we disagree with

the defendant’s contention of obviousness from the

prior art.’’

In coming to this conclusion the court rejected Karr’s

expert opinion that it is routine handbook procedure first

to determine the physical nature of the object to be sliced,

and that merely to recognize the physical properties of the

common tomato*® does not reach the level of invention.

Further, the court held that the basic elements of fruit and

vegetable slicers—blades, pushers, bases and means for

relative movement—were well known in the prior art but

that innovation existed here in the synergistic result

achieved by the unique arrangement of these basic elements

which existed separately or in different relationships in

the prior art. The lower court concluded it was the plain-

tiffs’ solution to the peculiar problem of slicing tomatoes

(pressure build-up during slicing) that embodied inno-

vative and unique developmental work which resulted in

the invention.”

6. The following appears in Chapter “1876 Centennial”:

“Tomatoes have always been favorites here,” wrote John Lewis, a trans-

planted Englishman. “They generally require a person to be educated to

them. ... They ... are eaten in every possible way, mostly however

cut up alone.” From We Americans, A Volume in the Story of Man

Library, published by The National Geographic Society, p. 228 (1975).

7. The lower court stated:

“Our conclusion is based on the following factors: (1) the central factor

in the development of a food slicer is the identification of the unique

problems associated with the preparation of a particular category of fruits

or vegetables; (2) while diverse elements of food slicers are well-known

10a

Court of Appeals Opinion, Filed March 25, 1977

On infringement, the court relied on the doctrine of

equivalents, i.e., the essence of the ‘avention used is iden-

tical even though the superficial form is different. Cf,,

Graver Tank & Mfg. Co. v. Linde Air Products Co., 339

U.S. 605, 608 (1950) (‘‘if two devices do the same work in

substantially the same way, and accomplish substantially

the same result, they are the same, even though they differ

in name, form, or shape.’’) Since the TK-I admittedly

infringed upon some of the claims of the 582 patent and

the TK-II used the same element of the °582 patent (a

shallow-entry-angle pusher in relation to the blades) for

the same purpose and in the same manner, it, too,

infringed.

IV. Osviovusness

Very recently in Sakraida v. AG Pro, Inc., 425 US.

273, 279-80 (1976) the court stated:

‘‘It has long been clear that the Constitution re-

quired that there be some ‘invention’ to be entitled

to patent protection. Dann v. Johnston, — U.S. —

(1976). As we explained in Hotchkiss v. Greenwood,

11 How. 248, 267 (1851): ‘‘[U]nless 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 in-

genuity which constitute essential elements of every

invention. In other words, the improvement is the

work of the skillful mechanic, not that of the inventor.’

This standard was enacted in 1952 by Congress in 35

U.S.C. § 103 ‘as a codification of judicial precedents

: ape is the istic result of arranging these elements in a

es , thet tS dale in the issuance of a patent for the

invention; (3) it would be unusual for an engineer to have either the

need for such a device, or the method of accomplishing the desired result ;

and (4) the activity of an engineer in those circumstances would be

cumulative toward a successful embodiment of the concept, and not inde-

t of the actual creative work involved in isolating the problems

ore arriving at a solution.”

lla

Court of Appeals Opinion, Filed March 25, 1977

. with Congressional directions that inquiries ‘nto

the obviousness of the subject matter sought to be

patented are a prerequisite to patentability.’ Graham

v. John Deere Co., 382 U.S. 1, 17 (1966). Section 103

provides :

‘A patent may not be obtained though the in-

vention is not identically disclosed or described,

as set forth in section 102 of this title, if the dif-

ferences between the subject matter sought to be

patented and the prior art are such that the sub-

ject 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 said sub-

ject matter pertains. Patentability shall not be

negatived by the manner in which the invention

was made.’

The ultimate test of patent validity is one of law,

A & P Tea Uo. v. Supermarket Corp., 340 U.S. 147,

155 (1950), but resolution of the obviousness issue

necessarily entails several basic factual inquiries.

Graham v. John Deere Co., supra, at 17.

‘Under § 103, the scope and content of the prior

art are to be determined; differences between the

prior art and the claims at issue are to be ascer-

tained; and the level of ordinary skill in the per-

tinent art resolved.’ I[bid.’’

These three inquiries—scope and content of the prior

art, differences between prior art and the claims at issue,

and the level of ordinary skill in the art—are findings of

fact to be made by the district court; having resolved these

crucial factual questions, the court then draws its legal

conclusion as to obviousness. E.g., Philips Elec. & P. Ind.

Corp. v. Thermal & Elec. Inc., 450 F.2d 1164, 1173-74 (3d

Cir. 1971). In the case before us, appellants claim that

one of these factual questions—level of ordinary skill in

l2a

Court of Appeals Opinion, Filed March 25, 1977

the art—was erroneously determined and that this re-

sulted in an improper conclusion of law as to obviousness.

The search in this branch of inquiry under 35 U.S.C.

§ 103 is for a hypothetical person * having ordinary skill

in the art to which said subject matter pertains, i.e., the

problem solver and not the user of the solution. Gass v.

Montgomery Ward € Co., 387 F.2d 129, 132 (7th Cir. 1967),

quoted in Erie Technological Products, Inc. v. Die Craft

Metal Products, Inc., 461 F.2d 5, 8 n.5 (7th Cir. 1972).

(‘*The level of ordinary skill in the field appears to be

that of mechanically inclined men with long experience in

design of auto accessories’’); Howe v. General Motors

Corporation, 401 F.2d 73, 78 (7th Cir. 1968), cert. denied

394 U.S. 919 (‘‘The level of ordinary skill in the field of

designing automobile bodies, including hinges, was that of

engineers of substantial training, and specialized skill.’’)

In the case at bar, the district court engaged in a de-

tailed analysis of the prior art as illustrated in prior

patents, admitting that the activity of an engineer, if he

were aware of the problems associated with slicing to-

matoes, would culminate ifi the patented concept. But it

then stated:

‘*(3) it would be unusual for an engineer to have

either the need for such a device, or the method of ac-

complishing the desired result; and (4) the activity of

an engineer in those circumstances would be cumula-

tive toward a successful embodiment of the concept,

and not independent of the actual creative work in-

volved in isolating the problems before arriving at a

solution.”’

8. In Tokyo Shibaura Electric Co., Ltd., et al. v. Zenith Radio Corp.,

— F.2d — (3rd Cir. Jan. 7, 1977) at p. 12, Fn. 18, (Sl. Op.) we said:

“This theoretical person of ordinary skill in the art is ‘charged with

knowledge of all that the prior art disclosed at the time of his alleged

invention, irrespective of whether persons of ordinary skil in the field,

or he himself, or anyone else, actually possessed such all-encompassing

familiarity with prior disclosures.’ Cool-Fin Electronics Corp. v. Inter-

national Electronic Research Corp., 491 F.2d 660, 662 n.7 (%h Cir. 1974),

quoting Walker v. General Motors Corp., 362 F.2d 56, @ n3 (%h Cir.

1966). Accord, Layne-New York Co. v. Allied Asphalt Co., 501 F.2d

405, 406 (3rd Cir. 1974), cert. dented, 421 U.S. 914 (1975).”

_ LL a

l3a

Court of Appeals Opinion, Filed March 25, 1977

The court therefore looked to the knowledge of persons who

perform the task of tomato slicing to determine skill in the

pertinent art. By focusing on the user rather than the

problem solver, the district court erred.

An interesting and pertinent application of principle

can be gleaned from the court’s treatment of the skill in

the pertinent art for beehive fasteners in In re Applica-

tion of Grout, 377 F.2d 1019, 1021 (3d Cir. 1967):

‘It is appellant’s position that since the combination

of elements claimed is to be used by beekeepers that it

is to this group we must turn to ascertain what would

have been obvious to them. After discussing the dis-

closures of the prior art, appellant states the position

in his brief that:

The preceding discussion calls attention to a

variety of facts, circumstances and reasons which

repel the inference that it would have been obvious

in 1961 for a man of ordinary skill in the bee-

keeping art to turn to the window shade roller art

of Andersen’s polymer film stretching device for

ways and means of improving beehive components.

Such facts, circumstances and reasons show the

difference in problems and objectives in the sev-

eral arts differ from one another and how the de-

formative measures inhering in the arts of the sec-

ondary references would be completely unsuitable

for application to bees’ wax foundation webs

which are commonly used in the invention... .

‘*Considering all the papers of record, we are not

convinced that the ‘person having ordinary skill in the

art to which said subject matter pertains,’ section 103,

is exemplified by a beekeeper. Appellant’s invention

relates to novel fastening means used in beehives. It

is alleged that a problem existed in the support of

honeycomb foundations which appellant solved. While

this problem would be encountered by a beekeeper, we

l4a

Court of Appeals Opinion, Filed March 25, 1977

think the problem naturally calls for the talents of one

skilled in the art of fasteners. Under section 103 we

must look to the person of ordinary skill in the art

to which the invention pertains, not those who may

use the invention.’’ [Emphasis supplied.]

Similarly, in Universal Athletic Sales Co. v. American Gym,

Rec. € Ath. Eq. Corp., No. 76-1023 (3d Cir. Nov. 19, 1976),

slip op. at 7, this Court looked to the problem solver in

the business when it held that the art pertinent to a weight-

lifting apparatus is the design of body-training devices.

In other words, the hypothetical person skilled in the

pertinent art is the mechanically skilled individual familiar

with the design of devices in the industry. Ene Tech-

nological Products, Inc. v. Die Craft Metal Products, Inc.,

supra; Howe v. General Motors Corp., supra. Here, then

the pertinent art is the design of food slicing devices. We

hold, therefore, that the district court’s finding as to the

level of ordinary skill in the art was clearly erroneous.

Having resolved this critical factual issue, this court

is in a position to draw the ultimate conclusion of law with

respect to obviousness. As stated in Deller’s Walker on

Patents, § 109 at 153-154 (2d ed. 1964) :

‘‘The issue of law as to whether an invention was

obvious to one having ordinary skill in the art is one

which a court of appeals is in as good a position to

determine as the district court; the latter’s conclusion

on this issue, not being on a question of fact, is not

clothed with a presumption of correctness, and instead

requires that the court of appeals make its own inde-

pendent determination thereon. Rule 52(a) does not

require the court of appeals either to accept findings

unsupported by the evidence or to require the court of

appeals to respect conclusions which do not rest prop-

erly on the facts of the case. . . . [But] such find-

ing{[s] ... of fact . . . unless clearly erroneous will

15a

Court of Appeals Opinion, Filed March 25, 1977

not be set aside by the court of appeals.’’ (Footnotes

omitted )

Had the district court applied the proper standard of

skill—that possessed by the mechanic familiar with the

design of food slicing devices—it would have had only the

uncontradicted expert testimony of Mr. Karr to determine

the question of ‘‘obviousness’’ with respect to such per-

sons.” Mr. Karr testified that it would be routine pro-

cedure for a mechanic first to determine the physical prop-

erties of the object to be sliced, see supra at 6, and that

mechanics familiar with other patents in the food slicing

industry would apply known mechanical principles to come

up with the tomato slicer in question, see supra at 4-5. He

supported his conclusion with testimony about six prior

patents which would suggest to the mechanic the principles

applied in the Tomato Tamer. Specifically, the Bever

patent (a bun slicer) had its blade fixed at the same shallow

angle to the path of the pusher, but it would not pass the

blade clearly through the tomato. The Curtis patent (a

fruit slicer) also showed an angls of less than 90° (‘‘an

angle of at least 70°’’) and contained the equivalent of the

pusher leading arm of the Tomato Tamer (p. 329a).

Mr. Karr was asked by the Court:

‘You are saying in effect .. . that given a mechanic

and designer of ordinary skill and given the problem of

cutting a tomato, that the prior art which certainly

9. The dissenting opinion expresses concern that Mr. Karr cid not repre-

sent a person having ordinary skill in the pertinent art—the design of food

slicing machines. That concern would be relevant to the issue before us only

if Mr. Karr had testified that the device in question would not have been

obvious to anyone “who had the skills of an ordinary mechanic or designer.”

Then we would have been forced to remand the case so that the lower court

could consider whether a person with the additional skills of one who designs

food slicers might have viewed the device as obvious.

As it is, however, Mr. Karr testified that the device would have been

obvious to anyone with ordinary mechanical or design skilis—skills we must

presume food slicing designers to possess. A fortiori, the device must have

been obvious to the latter group, too. There is no need, then, to remand the

case so that the impact of food slicing designers’ peculiar skills can be

considered.

Court of Appeals Opinion, Filed March 25,

l6a

has encompassed pushers with pockets to hold the

fruit or the object, blades to push them through and

means of so angling the pusher so that it goes through

the blades, that this would be an obvious thing for

anybody presented with the problem who had the

skills of an ordinary mechanic or designer?’’

His response was, ‘‘ Yes, your Honor.’ (p. 337a)

In light of this uncontradicted testimony about the

skill of mechanics familiar with the design of food slicers,

we need not remand to the district court for further find-

ings of fact. Although the synergistic combination of

known elements is one factor to consider in determining

obviousness, we cannot agree that the district court’s find-

ings reveal any more of a synergistic effect than was found

in the device to release water on a barn floor from a stor-

age tank in Sakraida, supra. See also Anderson’s-Black

Rock v. Pavement Salvage Co., 396 U.S. 57, 61 (1960). As

a matter of law, plaintiff’s slicer was ‘‘obvious.’’

Despite the commercial success of the product, there

was no ‘‘invention’’ to warrant patentability, and the

judgment of the district court will be reversed.

Rosenn, Circuit Judge, Dissenting.

What splits this panel is not the pertinent art of de-

signing food slicers but the cutting edge of the appropri-

ate principle to be applied in correcting a critical error

in the district court’s analysis. The majority believes that

remand to the district court for further findings is super-

fluous and that this court can draw ‘‘the ultimate conclu-

sion of law with respect to obviousness.’’ I, on the other

hand, believe that important and essential findings of fact

are yet to be made and the case must be remanded to the

district court before we can draw any conclusion as to

whether or not the patent is obvious.

1977

17a

Court of Appeals Opinion, Filed March 25, 1977

The question that confronts us is whether the ingenu-

ity displayed in plaintiff’s tomato slicing device rises to

the level of patentable invention. The major controversy

in this case is whether plaintiff's unique combination of

elements known in the prior art was obvious under 35

U.S.C. £103 (1970). As we recently stated in Tokyo

Shibaura Electric Co., Ltd. v. Zenith Radio Corp., No. 76-

1237, slip op. at 10 (3d Cir. Jan. 7, 1977), ‘‘ [t]he ultimate

determination of patent validity is a conclusion of law

reviewable for error, but the resolution of the obviousness

issue depends on several basic factual inquiries reviewable

under the ‘clearly erroneous’ standard of Fed. R. Civ. P.

52(a).’’

The three crucial factual inquiries underlying the de-

termination of obviousness are the scope and content of

the prior art, the differences between the prior art and

the claims at issue, and the level of ordinary skill in the

pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17

(1966); Philips Electronic & Pharmaceutical Industries,

Inc. v. Thermal Electronics Industries, Inc., 450 F.2d 1164,

1173-74 (3d Cir. 1971).

The majority has accurately pinpointed the problem

with the district court’s decision as its resolution of ‘‘the

level of ordinary skill in the pertinent art.’’ In finding

that this level of skill was that possessed by a hypothetical

person skilled in the slicing of food, the district court took

an impermissible shortcut and ended up in the wrong

tomato patch.

The district court evidently failed to realize that a

determination of the level of ordinary skill in the pertinent

art is necessarily a two-step process: first, the pertinent

art must be identified; secondly, the level of ordinary skill

in that art must be ascertained. An attempt to resolve

the issue without breaking it down into its two component

steps can only lead to confusion.

I agree with the majority that the district court erred

in identifying the pertinent art as food slicing. As the

18a

Court of Appeals Opinion, Filed March 25, 1977

majority holds, the decisions of our sister cireuits and our

own recent decision in Universal Athletic Sales Co. v.

American Gym, Recreation & Athletic Equip. Corp., 546

F.2d 530 (3d Cir. 1976), would indicate that the pertinent

art here is not the slicing of food but rather the design

of food slicing devices. Having identified the pertinent

art, however, we must still ascertain the level of ordinary

skill in that art. It is at this point that my views diverge

from those of the majority.

The majority simply assumes that the level of ordinary

skill in the art of designing food-slicing devices is that of

an ordinary mechanic. The majority then proceeds to

place great weight on Mr. Karr’s testimony that the pat-

ented device ‘‘would be an obvious thing for anybody pre-

sented with the problem who had the skills of an ordinary

mechanic or designer.’’ (Majority op. at 16.) My dif-

ficulty with Mr. Karr’s testimony is twofold: first, although

he may be an accomplished engineer of sorts, Mr. Karr’s

expertise seems to lie primarily in the design of aircraft

propulsion systems and industrial machinery. Referring

specifically to his experience in the designing of food-cut-

ting devices, Mr. Karr testified:

Q: Did you ever have anything to do with designing

any machines that could be compatible with use

in the food industry?

A: I never had occasion to design a food or bread

cutting machine. No, Your Honor.

His only experience with slicers was in 1961 and these were

film splicers, not food slicers. In short, little weight can

be attached to the testimony of Karr, a mechanical en-

gineer, who had no familiarity with the pertinent art as

we have identified it.! Secondly, Karr’s testimony as-

sumed a fact yet to be proved—that the level of ordinary

1. The majority makes no attempt to justify its reliance on Karr’s testi-

mony ; it simply ignores Karr’s near total ignorance of the pertinent art.

19a

Court of Appeals Opinion, Filed March 25, 1977

skill in the art of designing food slicing devices is the skill

possessed by an ordinary mechanic. I ean find no evi-

dence in the record to support that assumption, which the

majority treats as an established fact. Neither Karr nor

anyone else testified to the level of ordinary skill in the

pertinent art.

In telescoping what should be a two-step inquiry—

the identification of the pertinent art and the determination

of the level of ordinary skill in that art—the majority sug-

gests that ascertaining the former automatically fixes the

latter. Applying this novel theory to the instant case, the

majority holds that ‘‘we must presume food slicing design-

ers to possess [the skill of an ordinary mechanic].’’ Ma-

jority Opinion at 15 n.9 (emphasis supplied). That the

majority cites no authority for making such a presumption

as to the level of ordinary skill is not surprising since

John Deere, supra, requires that the level of skill be ascer-

tained by a factual inquiry, not somehow ‘‘presumed’’ out

of thin air.

The majority also fails to recognize that the level of

ordinary skill is defined by those who practice the art, not

by the art itself. See, e.g., CBS v. Sylvania Electric Prod-

ucts, Inc., 415 F.2d 719 (1st Cir. 1969), cert. denied, 396

U.S. 1061 (1970). It certainly does not appear self-evident

to me that because the pertinent art in the instant case is

the design of food-slicing equipment the level of ordinary

skill must be that of an ordinary mechanic. The two ques-

tions are quite distinct. The level of skill in the pertinent

art is a pure question of fact, Philips Electronic, supra,

not the result of a legal equation.

The level of ordinary skill in the art of designing

food-slicing devices can be resolved only by evidence as to

the skills of those who practiced that art at the time of

making the invention. Shankin Corp. v. Springfield Photo

Mount Co., 521 F.2d 609 (1st Cir. 1975); Application of

Trubojevich, 361 F.2d 1013, 1014 (CCPA 1966). The level

of ordinary skill may have been high or low, either capable

20a 2la

Court of Appeals Opinion, Filed March 25, 1977 ( Court of Appeals Opinion, Filed March 25, 1977

20 21

or incapable of producing the patented device. A host of : .

questions may have to be answered, such as: At the time SORES. © CUNY SIRI

of this claimed invention, who were the people actively en-

gaged in the field? What was their educational back-

ground? How much and what sort of experience had they A True Copy:

had in the field? How often had they met with success in

tackling similar problems? See, e.g., Jacobson Bros., Inc.

v. United States, 512 F.2d 1065 (Ct. Cl. 1975); CBS v.

Sylvania Electric, supra. It is even appropriate to assess Teste:

the approaches to the sort of problem here involved taken

by other practitioners of the art; evidence of the scope and

depth of their approaches might be highly probative of the a

level of skill which they possessed. See, e.g., Shankin Corp. Cre be Tad Cite 9 Cant an

v. Springfield Photo Mount Co., supra. The level of or-

dinary skill can be ascertained only by answering questions

such as these; no shortcut is defensible. Such an analysis

depends on evidence; it requires findings of fact which

only the district court can make.

Since the district court failed to answer any such

questions, either explicitly or implicitly, we have no choice

but to remand. Even if it were permissible for us to de- - .

termine the level of ordinary skill in the pertinent art, we

would be unable to do so on the basis of the present record;

the record is completely silent in this area. The testimony

of Karr, on which the majority relies exclusively, is en-

titled to little weight since Karr, a mechanical engineer, did

not provide—and could not provide—any evide’.ce whatso-

ever as to the level of ordinary skill in the art of designing

food-slicing equipment. He candidly conceded that he had

no familiarity with the art. Karr’s testimony would have

value only if we could determine that the assumptions on

which he relied were correct. The record before us, how-

ever, provides no basis upon which we can make such de-

termination, one way or the other. The case therefore

should be remanded to the district court so that it can

properly fill the gaps in the record and make appropriate

findings of fact.

(A.0.—U. S. Courts, International Printing Co., Phila, Pa.)

22a

Filing of Petition for Rehearing, April 7, 1977

al <i

_" ~~ - 2 — -

OFFICES

Caesar, Rivise. SRernstein & Cohen, Ltd

CAESAR, COUNSEL PATENTS TRACE MARES. COPTRIGHTS CHARLES w @ivist

— Suite 8O4-Steentn Gimaee Buronma 1@26-1e5:

2) Sout t2% Stecert

wy ©. POFOT:LOW t@euer 9-200

PeiLaocienia, PENNS TLvANIA 19107 aie etn ni

April 7, 1977 —

64-8:'62

United States Court of Appeals

For the Third Circuit

21400 United States Courthouse

Independence Mall West

601 Market Street

Philadelphia, Pennsylvania 19106

Attention: _ T. F. Quinn, Clerk

Re : Systematic Tool & Machine Co., et al

vs.

Walter Kidde & Co., Inc.

Sub : Appeal No. 76-1660

Dear Mr. Quinn:

I am hand delivering twenty-five copies of Appellees’ Petition

for Rehearing In Banc in connection with the above entitled

Appeal.

Respectfully submitted,

CAESAR, RIVISE, BERNSTEIN & COHEN, LTD

AHB: amp By ~VAmMAXS

encs. Alan H. Bernstein

cc + (2) encs.

Jacob C. Kellem, Esq.

Richard H. Rosenbleeth, Esq.

Gordon D. Coflein, Esq.

23a

Order on Petition for Rehearing, April 28, 1977

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

No. 76-1660

SYSTEMATIC TOOL & MACHINE COMPANY and

SYSTEMATIC PRODUCTS, INC., and CLAYTON

E. GIANGIULIO, and DOMINIC D'AMBRO

Vv.

WALTER KIDDE & COMPANY, INC.,

Appellant

SUR PETITION FOR REHEARING

Present: Seitz, Chief Judge, VAN DUSEN,

ALDISERT, ADAMS, GIBBONS, ROSENN,

HUNTER, WEIS, GARTH, Circuit

Judges, and SNYDER, District

Judge*

The petition for rehearing filed by

Systematic Tool & Machine Company, et al.,

AppeJiees,

in the about entitled case having been sub-

mitted to the judges who participated in the

decision of this court and to all the other

available circuit judges of the circuit in

regular active service, and no judge who

concurred in the decision having asked for

rehearing, and a majority of the circuit

24a

Order on Petition for Rehearing, April 28, 1977

judges of the circuit in regular active

service not having voted for rehearing

by the court in banc, the petition for

rehearing is denied.

BY THE COURT,

Judge

Dated: April 28, 1977

*Daniel J. Snyder, Jr., United States

District Judge for the Western District

of Pennsylvania, sitting by designation.

25a

District Court Opinion, Filed February 2l, 1975

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

IN RE: SYSTEMATIC TOOL & MACHINE CO. et al

WALTER KIDDE & CO., INC.

DATE: 2/25/75

NO: C.A. 70-1708

This is to advise you that the

Honorable Herbert A. Fogel filed an

Opinion, Findings of Fact, Conclusions

of Law & Order dated 2/21/75:

(See attached Order)

THE CLERK'S FEE IS $ 12.50

for said Opinion, Memorandum and/or Order

JOHN H. HARDING, ESQ.

CLERK

By Lena M. Easley

Deputy Clerk

Notice to:

Caesar, ‘tivise, Bernstein & Cohen

Blank, Rome, Klaus & Comisky

A. Silverman, Esq.

J. C. Kellen, Esq. (Wilmington, Del.)

26a

District Court Opinion, Filed February 21, 1975

IN THE UNITED STATES DISTRICT COURT

FOR THE EATERN DISTRICT OF PENNSYLVANIA

SYSTEMATIC TOOL & MACHINE :

COMPANY, et al

Plaintiffs

-vs- CIVIL ACTION

WALTER KIDDE & COMPANY, NO. 70-1708

INC. :

Defendant

OPINION AND ORDER

FOGEL, J. FEBRUARY 21,1975

I. HISTORY OF THE CASE AND STATEMENT OF

THE ISSUES

A. PROCEDURAL CHRONOLOGY OF THE ACTION

This is an action for infringement

of United States Letters Patent 3,369,582

(the "'582 patent"). The patent was

granted on February 20, 1968, to Clayton

Giangiulio for a "Tomato Slicer", a hand-

Operated device which can made multiple

slices of tomatoes for the food service

27a

District Court Opinion, Filed February 21, 1975

industry with rapidity and efficienty.

Plaintiffs claim that two tomato slicers

marketed by Walter Kidde & Company in-

fringe upon their rights under the '582

patent. They seek an injunction and

monetary damages.

Suit was originally instituted in

the Northern District of Illinois against

Kidde and several of its customers, but

thereafter, on motion of Kidde, was

transferred, as to it, to the Eastern

District of Pennsylvania. Action against

the customers, (who were charged with

wrongdoing through their purchases

of the challenged appliances), was

stayed, pending resolution of the aspect

of the case which is now before us.

Plaintiff, Systematic Products, Inc

(Systematic), the legal successor to

Systematic Tool & Machine Company, is a

Pennsylvania corporation; it is the

28a

District Court Opinion, Filed February 21, 1975

exclusive licensee of the '582 patent, and

manufactures and sells a device embodying

the patent under the name "Tomato Tamer".

Plaintiff Clayton Giangiulio is the holder

of the '582 patent, the inventor of the

slicer, and is currently an employee of

Systemtaic; plaintiff Dominic D'Ambro owns

an interest in the patent pursuant to a

contract entered into between him and the

other plaintiffs.

Defendant Walter Kidde & Company,

Inc. (Kidde) is a Delaware corporation

which maintains a regular and established

place of business in this district. Kidde

in the past marketed two models of tomato

slicers under the trade names "Tomato

King I" and "Tomato King II" ("TK-I" and

"TK-II"). It no longer sells these

machines, nor indeed, any other apparatus

designed for the same purpose. All of the

challenged devices were manufactured for

Kidde by Redco, a Delaware corporation,

29a

District Court Opinion, Filed February 21, 1975

which is not a party to this litigation.

The outcome of this phase of the

controversy hinges exclusively upon a

resolution of plaintiffs' claim of in-

fringenent by Kidde of the '582 patent

prior to 1972 - the year in which it

terminated the sale of the Redco-manu-

factured equipment.

B. BASIS FOR JURISDICTION

Jurisdiction is based upon 28 U.S\C.

§1338 and 35 U.S.C. §281; those sections

of the Code create a (Rit altile for

patent infringement and vést Jue tabiotion

to determine such controversies in the

District Courts of the United States.

Venue lies in the Eastern District

of Pennsylvania under 28 U.S.C. §1400(b),

because defendant has a place of business

in this district and also has allegedly

committed infringing acts within the

territorial reach of this Court.

30a

District Court Opinion, Filed February 21, 1975

C. STATEMENT OF THE ISSUES

Two encompassing issues are presen-

ted by this controversy, and may be

summarized as follows:

FIRST: The vaiidity of the patent

and, SECOND: infringement by defendant,

if, in fact, the patent is valid.

1. Criteria for Validity

Ascertainment of validity, in turn,

requires us to resolve the following

subsidiary, albeit, critical matters,

which are crucial links in the chain

plaintiffs must forge if they are to

previal: (1) anticipation of the patent

in the prior art; (2) obviousness from

the prior art; (3) the ordinary level of

skill in the art.

Moreover, a determination of these

subsidiary issues does not end the

matter; plaintiffs must also satis~-

factority establish: (a) their ability

3la

District Court Opinion, Filed February 21, 1975

to meet the requisite standards of

the so-called secondary tests of

commercial success: (i) long-felt need,

(ii) failure of others, and (iii) copying

by others; (b) their ability to meet the

standards necessary to overcor. the

factors of patent invalidation (including

proof that they did not commercially use

the device for a period in excess of one

year from the date the patent application

was filed); and (c) their ability to

prove that the patent documents set forth

the "best mode" for performance.

2. Tests of Infringement

Disposition of the second major

issue, infringement, calls for solutions

to the following problems: (1) the scope

of claims of the patent in controversy;

(2) the issue of literal infringement of

those claims; (3) the applicability of the

doctrine of "file wrapper estoppel";

32a 33a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 21, 1975

(4) the relevancy of the “doctrine of equi- : . hensive briefs in support of their

valents"; and, finally, (5) plaintiffs'

proof of willful and wanton infringement.

We begin with the threshold question

of validity of the ‘582 patent. Only

after a positive finding as to that matter ~

can appropriate inquiry be made into the

claim of infringement.

As a result of our review of the

entire record of this case, which consists

of: (a) the testimony and exhibits

adduced at thetrial; (b) agreed-upon sti-

pulations of fact; (c) certain answers

to interrogatories; (d) agreed-upon

portions of pre-trial depositions, to-

gether with other documents and data

developed in the discovery phase of the

litigation; (e) the final pre-trial Order

of the parties; (f) the requests for

findings of fact and conclusions of law;

and finally, (g) the arguments and compre-

respective contentions; we make the

following:

II. FINDINGS OF FACT

Procedural History of the Action

1. Plaintiff Systematic is a

Pennsylvania corporation doing business

within the Eastern District of Penn-

sylvania. Systematic is the exclusive

licensee of the ‘582 patent, and manu-

factures and sells a device under the

name "Tomato Tamer". Plaintiff D'Ambro

owns an interest in the '582 patent.

2. Defendant Kidde is a Delaware

corporation with a regular and established

place of business within this district.

By stipulation, Kidde has committed an

act of alleged infringement in this

district after the date of issuance of

plaintiff's patent.

3. Defendant Kidde has sold, but

34a 35a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 21, 1975

has never manufactured, the "TK-I" and the

: (b) slicing by means of commercial electric

"TK-II" tomato slicers. Neither appliance

meat slicers, or (c) slicing on large-

is now sold by Kidde. Both modles of the

scale multi-purpose food processing

device were manufactured by Redco, a

machines. None of these techniques was

Delaware corporation, which is not a party

Suitable for the entire spectrum ot food

to this suit.

service establishments which use sliced

4. This action was originally begun

tomatoes in vastly differing quantities,

in the Northern District of Illinois

the volume varying with the nature of

against Kidde and several of its customers.

the particular operation, and with

It was subsequently transferred to the

changing demands within any given esta-

Eastern District of Pennsylvania, with

blishment itself, depending upon the

Kidde as the only remaining active

° ij nature of the particular business.

defendant. Suit was stayed as to all

6. The hand-wielded knife can

other defendants, pending disposition of

make only one cut at a time; the evenness

the litigation before this Court,

of the slices depends upon the accuracy

Background of the Patent in Suit

of the wielder; personal injury may result

5. Prior to May 4, 1957, the

: from the bare knife blade; the heel of the

date that application Serial No. 636,176

tomato may be too difficult to cut, there-

was filed, tomato slicing by those en-

; by creating waste; use of a knife requires

gaged in the business of food preparation

extensive physical handling of the fruit;

and service was accomplished by such

increasing the danger of bacteria,

diverse methods as: (a) hand slicing,

36a

District Court Opinion, Filed February 21, 1975

spoilage and general lack of sanitation;

this method intensifies exposure to air on

all sides, thus increasing the rate of de-

terioration of pre-sliced tomatoes.

Finally, it is difficult to reassemble

the individual slices for storage in a

manner that will shield the individual

slices for storage in a manner that will

shield the raw edges from exposure to the

atmosphere.

7. The commercial meat slicer is

relatively expensive, usually costing over

$500.00 per machine. Production is at the

rate of one slice per pass; the individual

Slices scatter about the pan, and the

decomposition problems presented parallel

those arising from the use of a knife. The

mass of the follower, an integral part of

the machine, can squash part of the tomato

with resultant waste. The cutting process

releases quantities of juice, frequently

37a

District Court Opinion, Filed February 21, 1975

causing time-consuming clean-up procedures.

Acids in the juice attack the slicer parts,

particularly the blades, eventually resul-

ting in damage to the equipment. Moreover,

since the primary purpose of the slicer is

to cut meat, its diversion for tomato-

slicing frustrates the achievement of op-

timum efficienty in connection with over-

all food preparation.

8. Multi-purpose slicing machines

will slice tomatoes; however, this equip-

ment typically costs at least $2400.00 per

unit.

9. Hand operated mechanical ve-

getable slicers, such as the "Vegematic",

cannot slice tomatoes; they mangle them

instead.

Development of the Patent in Suit

10. Clayton Giangiulio, while opera-

ting a delicatessen in 1965 and 1966, was

struck by the absence of relatively inex-

pensive and simple equipment to slice

38a 39a

District Court Opinion, Filed February 21, 1975 . District Court Opinion, Filed February 21, 1975

tomatoes. After rejecting all of the

devices on the market because of various

infirmities, he set about to invent such

an implement. His criteria for the

machine were: (a) moderate purchase

price, (b) ability to slice tomatoes of

different size and texture, (c) ease of

cleaning, (d) speed of repetitive slicing,

and (e) creation of a non-temperamental

instrument.

11. Mr. Giangiulio's analysis of the

problems which made other machines, such

as the common "Vegematic" device, unsatis-

factory for commercial tomato slicing, led

him to focus on the nature of the fruit

itself. Tomatoes possess the peculiar

features of a very tough outer skin and

a soft, virtually structureless interior.

This contrasts sharply with foods such as

onions or apples, which have considerable

structural integrity, even when quite

ripe. Unripe or barely ripe tomatoes may

possess such rigidity, but ripe and over-

ripe tomatoes, in a word, are mushy. - Such

tomatoes create serious problems for pre-

parers because the practice in the food-

service industry is to purchase in bulk,

typically enough for a week, in order to

take advantage of the attendant savings.

By the end of a week, a large quantity

fo the supply becomes soft, and, therefore,

would be wasted, if ordinary slicing methods

had to be employed.

12. Typical existing slicing machines,

at the time, forced the blades through the

fruit; pressure buildup inside the tomato

then either exploded it, or if the first cut

were accomplished, the skin, more often

than not, would be shredded. Further

pressure on the damaged tomato would squash

the fruit, although once the tomato was

sliced about one-third through, direct

pressure could be applied to complete the

slicing action without additional damage.

40a

District Court Opinion, Filed February 21, 1975

The basic solution, Mr. Giangiulio con-

cluded, was the creation of an appliance

which could pierce the skin smoothly, be-

fore pressure had built up within the

tomato.

13. Mr. Giangiulio, drawing upon his

experience as a tool and die maker, worked

for several months on the project and

finally produced an operable prototype in

March, 1966. The machine incorporated

a racked set of thin, non-serrated blades,

a supporting base, and a pusher mechanism.

The fruit was introduced into the blades

at a shallow angle. A shearing apvien

generated by the movement at this shallow

angle to the baldes would, and did pierce

the skin of the softest tomato before the

pressure reached a point that shattered the

fruit; it was then pushed through the blades,

until the slicing operation was complete.

The pusher design which controlled the

path along which the tomato was moved,

4la

District Court Opinion, Filed February 21, 1975

constrained the fruit within relatively

narrow limits. The pusher was slotted to

match the spacing of the multiple blades,

with the result that several slices could

be made simultaneously, and the tomato

could consequently be passed compietely

through the blades. The instrument was

hand-operated, could be fabricated in a

machine shop at a relatively low cost, and

was capable of repeatedly slicing whole

tomatoes in any stage of ripeness, at a

rate of approximately one tomato per second.

Very little residue remained, and such

leavings could be removed easily, with

the result that the cleanup process was

a simple one; the device was easy to

operate; it did not expose the tomato's

interior to atmospheric contamination;

physical handling was limited t» placing

the fruit in the slot of the pusher and

picking up the still-assembled sliced

tomato; slices were uniform, and no waste

42a 43a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 21, 1975

resulted, even when over-ripe tomatoes

were cut in this manner.

14. Mr. Giangiulio was advised

to make his preferred embodiment marketable

after he sought advice with respect to pat-

entability. He therefor made changes to

improve the aesthetics, the ease of tooling,

Operation and cleaning, and the longevity

of a production model. One of these

machines, called the "Lexan machine",

(because of the piastic composition of

the pusher), was given to a patent attorney

for the preparation of drawings and the

filing of an a May, 1966.

The "Lexan machine" was never sold to the

public because (1) the tooling and material

costs for a plastic pusher were discovered

to be far too high for the production con-

templated at that time, and (2) the

blades tended to catch in the pusher slots

about ten per cent of the time, thereby

jamming the machine during those periods of

operation. Substitution of an aluminum

pusher solved both problems. In July, 1966,

the first twenty-five production machines,

which had aluminum pushers, were ready.

That model, with some further non-functional

aesthethic changes, is still the device

that is currently marketed by Ssytematic

under the name "Tomato Tamer”.

15. Sales were immediate and satis-

fying: over 20,000 machines had been sold

at an average price of $79.00 per unit when

this action was tried. Ths is impressive

volume, particularly in view of plaintiffs'

modest promotion and advertising campaign,

the general pattern of single purchase

(blades can be replaced without need for

a new unit), and the specialized use of

the apparatus, which slices tomatoes only,

and is not interchangeable with meat slicers,

or other multi-purpose food-cutting equip-

ment.

44a

45a

District Court Opinion, Filed February 21, 1975 . F District Court Opinion, Filed February 2l, 1975

The Patent in Suit

etek 17. The '582 patent discloses the

16. The initial application for ° ,

. ; method of solving the problem associated

patent, Application Serial No. 636,176,

[ with high-speed mechanized slicing of

was filed on May 4, 1967, and was ex-

: tomatoes, and a specific embodiment of that

pedited because of a suspected infringe-

solution, In essence, it reveals a base,

ment. That application with subsequent

: a rack of blades and a pusher assembly

amendments was initially rejected for

5 mounted on the base, a means to move the

two reasons: FIRST, indefiniteness, and

base and the blades relative to each other,

SECOND, alleged obviousness, based upon

and certain angular relationships among the

two prior patents reviewed by the Examiner.

component parts.

A meeting was held with the examiner, as ° ’

18. The '582 patent further discloses

a result of which the claims were clarified

ae that the path of movement is to be at an

by additional specifications for certain . »

angle of less than 40°, and preferably

angular relationships. The rejection for

30°, to the cutting surface of the blades.

obviousness was withdrawn, and, on

19. The '582 patent also describes

February 20, 1968, the patent was granted

; ‘ , a design of pusher assembly, consisting of

on new claims which essentially repeated

a a leading arm, a trailing arm, and a curvilinear

those originally put forth, as augmented

fillet called the pocket; that portion of

by the information with respect to the

the device is a "Y" shaped array capable

angular relationships and the basis for

of supporting a tomato. The pusher

their measurement.

is cut by slots which permit it to mesh

with the blades so that the tomato is

46a 47a

District Court Opinion, Filed February 21, 1975 s District Court Opinion, Filed February 21, 1975

sliced completely. the pusher travels along a straight path.

20. he ‘582 t j 1 : >

The ‘5 patent aiso reveals VALIDITY

certain angular relationships among the yr ;

g P g Anticipation

blad dg d the leadi arm, the

mo Se eat 7 : 23. The following six patents were

trailing arm, and the path of Savau: cited by defendant as establishing the

so that a tomato is confined laterally, ‘

scope and content of the prior art for the

and can be introduced into the blade array a

purpose of showing anticipation of the

at a specified angle. , ,

patent in suit:

21. The effect of the angular

French Patent 1,085,144 (Birambeau)

United States Pat. 2,009,913 (Bever)

. 5 503,903 (Curtis)

a smooth shearing action as the tomato ; ‘ . ; 236,178 (Rice)

3g , ° ° 1,882,139 (Giuffre)

" " " 2,466,121 (Norman)

relationships is described as achieving

is pushed against and through the blade

array in a manner that uniformly makes . ‘ 24. The Birambeau patent describes

thin tomato slices, essentially un- a hand-held pusher shaped to fit a spherical

damaged, while the tomato holding pocket fruit such as a tomato, with slots de-

slots allow the blades to pass through Signed to fit the blades in a hand-held

the tomato entirely, thus achieving the (not patented) multiple blade slicer. The

goal of rapid slicing of pieces of purpose of the invention was to permit the

uniform size. fruit to be forced all the way through the

22. The preferred embodiment suggests blades without cutting the operator's

certain materials for some parts, and fingers. It operates through the place-

involves rectilinear operation, in that ment of the pusher over a partly~-sliced

tomato, which is then put through the rack

48a

. . . . 49a

District Court Opinion, Filed February 21, 1975

of blades under the pressure created while , ,

apple slices, the fingers of the pusher

ushing it th h with ki back

Pp g rough with a rocking back and are engaged with the blades whenever the

forth motion.

fruit is positioned between them. The

25. The B d

e Bever patent describes an blades themselves are perpendicular to the

apparatus to slice buns into two or more

‘et path of movement of the fruit. They are

ts. rt i f h b ith-

parts consists of a heavy blade with thick and rigid.

in a housi i "jJ"-

using, together with « “J'-shaped 27. The Rice patent describes a

ocket t 1 ‘

poe o pull a bun past the blade The rotary device, with a radial blade array

blade is fixed at an angle to the direction

staggered along a central axis which also

of its own motion. ,

Supports a pusher. There is a right-angle

26. The Curtis patent discloses an ; :

P relationship between the path of movement and

inst t 1 h t tu-

StEUMERE CO GLLGS APPLES BAS OEREE SnEUEtE the cutting surfaces of the blades. The

rally solid fruit into multiple slices, pusher does not provide support for a tomato

with each slice positioned individually as it moves through the blades

after cutting is completed, so that it may D8 The Giuffre patent discloses an

dry prior to canning. It is described as an implement for passing a loaf of bread dough

inprovenent upon existing machines for thet through a rack of fine wires, thereby cutting

purpose. To perform this task, it relies the loaf into multiple slices. The blade

upon an array of blades staggered one to rack is mounted to move radially along

another, and perpendicular to the motion . : an axis almost in the plane of the dough

of the pusher. To prevent distortion of holder.

the blades and resultant shredding of the . : 29. The Norman patent describes an

50a

District Court Opinion, Filed February 21, 1975

appliance for mechanical slicing of re-

latively rigid vegetables into convenient

lengths for food preparation. The machine

is nominally a rotary machine, and the

blades, during the slicing process, are

perpendicular to the path of movement of

the fruit.

Obviousness

30. The basic elements of fruit and

vegetable slicers, consisting of blades,

pushers, bases, and means for relative

movement, were well-known in the prior art.

31. The United States Patent Office

has long recognized that innovation can

exist in particular unique designs and

Original arrangments of otherwise general

elements which may have existed separately or

in different relationships in the prior art.

32. The peculiar qualities of tomatoes--

their tough outer skin and soft, juicy

interior -- create a critical problem

of pressure build-up during slicing.

5la

District Court Opinion, Filed February 21, 1975

Plaintiff's solution embodies innovatice and

unique developmental work which resulted in

this invention.

Secondary Tests

—_—_—_——-~- -

1. Commercial Success

33. When placed on the market, the

patented equipment enjoyed outstanding

commercial success. Over twenty thousand

units have been sold to a broad variety

of food preparation and purveying esta-

blishments. The food preparation and food

products sales industries have whole-

heartedly received the slicer. Customer

reaction has been uniformly enthusiastic.

34. No other device existed, until

plaintiffs' invention came on the market,

which could efficiently and economically

slice tomatoes at a high rate of speed

for food service operations.

35. The patented machine enjoyed

such outstanding success that other

manufacturers have developed competing

52a

District Court Opinion, Filed February 21, 1975

products which also perform the sole

task of slicing tomatoes.

2. Filling a Long-Felt Need

36. No apparatus was available on

the commercial market which could slice

tomatoes rapidly, with minimum mess and

waste, at a reasonable cost to potential

users, before the emergence of the "Tomato

Tamer".

37. Evidence with respect to prior

patents establishes that specialized slicer

markets have existed for many years.

38. The evidence has also demon-

strated that a need existed for an effective,

simple, and inexpensive tomato slicer for

many years.

39. Plaintiffs' applicance has been

accepted with unqualified approval by ope-

rators who run the gamut of food service

enterprises.

3. Failure of Others

40. Prior to Mr. Giangiulio's

53a

District Court Opinion, Filed February 21, 1975

invention, no reasonably priced devices

were on the market which could slice

tomatoes efficiently, quickly, without

waste and without temperament.

41. Demand for such a tomato slicer

had existed for many years, and it created

an incentive of long duration to develop

a unit that would solve the problem peculiar

to this particular foodstuff.

4. Copying

42. The "TK-I" was virtually a

direct copy of the preferred embodiment

of the '582 patent.

43. The incentive to copy the '582

patent was to compete with that machine

for sales in the same market. at

Invalidation Issues

Re Public Use

44. Whether it was an early version,

or the final version of the slicer which

was used for tests at the delicatessen

prior to May 4, 1966, the machine was kept

54a 55a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 21, 1975

from public view.

45. Irrespective of the particular

unit which was subjected to testing at

the delicatessen prior to May 4, 1966, the

products of those experiments were de-

stroyed, and were not consumed in sandwiches

or platters that were publicly sold.

46. Any use of a final prototype

for the purpose of slicing tomatoes, if

such a machine were so employed more than

one year prior to the May 4, 1967 filing

date, was solely experimental, and for the

sole purpose of definitively improving

the equipment.

47. There was no sale or offering

for sale of the subject of the patent to

the public prior to May 4, 1966.

2. Failure to Set Forth the Best Mode

48. The '582 patent specification

states the pusher is preferably made of

a strong hard plastic. It has been found

that a polycarbonate resin, a thermoplastic

material, is satisfactory. A suitable

such resin is that sold under the trade-

mark Lexan of the General Electric Co.

The specification also states that "the

pusher [is] preferably of plastic, although

other materials may be used." Additional

directions in the psecification establish

that the pusher is to be impermeable to

the liquids unleashed by a sliced tomato,

and sufficiently rigid to permit it

to push a tomato through the rack of blades.

49. The performance of the "Lexan

machine" equals that of the aluminum

machine when the width of the slots is the

same on both pieces of equipment.

50. No specification as to the

width of the slots was given in the patent.

Instead, the patent claims and specifications

disclosed that the pusher must mesh with

the blades; thus these claims give guidance

to anyone trying to fllow or understand

the Claims.

56a

District Court Opinion, Filed February 21, 1975

51. The tooling costs for equipment

to produce plastic pushers were estimated

to have been at least $11,000 in 1966,

and are, in fact, currently over $22,000.

Aluminum pushers, however, can be made on

existing equipment with an outlay of some

$2000 for an extrusion mold. The cost

differential was prohibitive for the small

production run contemplated in 1966; it far

outweighed any savings in labor which

would result from the production of plastic

pushers. _Moreover, the same extrusion

mold can be used for manufacturing any

pusher, irrespective of the spacing of

the slots and blades, while a new injection

mold is required for each slicer which

differs in size and spacing. This is a

critical cost factor, because the only way to

change the size of the slices is to change

the spacing between the blades.

52. Regulations of the Food and

Drug Administration have changed the grade

57a

District Court Opinion, Filed February 2l, 1975

of "Lexan" required for use in equipment for

food preparation. These regulations require

a quality of "Lexan" which would cost more

than five times as much as the material

contemplated originally.

INFRINGEMENT

53. Defendant does not dispute its lack

of authority from plaintiffs to use the

"582 patent.

54. The material elements of claims

l and 8 of the '582 patent are:

(a) base

(b) array of blades mounted on

a base

(d) means to move the blades and

the pusher assembly relative

to each other

(e) pusher with a leading arm and

a trailing arm

(£) pusher arms which create a

tomato-holding pocket

71 The phraseology is ours and is not

— a verbatim quote from the '582

patent.

58a

District Court Opinion, Filed February 21, 1975

(g)

(h)

(i)

(3)

(k)

(1)

(m)

(n)

35.

pusher arms with slots for the

reception of blades

blade array at an angle of

less than forty degrees to the

pusher path of movement

angle between pusher leading

arm and trailing arm that is

greater than ninety degrees

angle between pusher leading

arm and cutting edge of blades

that is less than thirty degrees

small acute angle between trailing

arm and cutting edge of blades;

whereby

the pusher achieves a smooth

shearing action

with the tomato urged against and

threugh blades.

with slots which allow the blades

to pass through the fruit

The "TK-I"

The defendant has stipulated

that the "TK-I" infringes at least some

of the claims of the '582 patent.

56.

The deposition evidence

establishes that some sales (although

the precise number is uncertain) occurred

after the date of issuance of the

‘582 patent.

57.

The "TK-I1"

Defendant has stipulated that

59a

District Court Opinion, Filed February 21, 1975

there were sales after February 20, 1968.

58. None of the claims of the '582

patent can be read literally to cover the

"TK-II" machine.

File Wrapper Estoppel

59. There was an initial rejection of

all of the claims of the patent; some were

rejected on ground of indefiniteness, and

some on the basis of unpatentability, be-

cause of the existence of two prior art

patents. Original claim 1 was rejected

for both of these reasons.

60. The new claims 11 and 18, which

were submitted after a conference with

the patent examiner, were substantially

identical to the original claim 1; the

differences are found in the explanation

of the angular relationships.

61. The new claims, with the

Clearer description of the means of measure-

ment of the angles, were accepted by the

patent examiner, and a patent issued on the

60a

6la

District Court Opinion, Filed February 2l, 1975

District Court Opinion, Filed February 21, 1975

basis of these amended claims. The objection

along a path of movement which is at a

of lack of patentability was dropped.

shallow angle to those blades. Slicing

Doctrine of Equivalents

at this shallow angle is maintained for

62. The particular angular relation-

at least the first third of the process.

ships related in the claims of the '582 patent's

DAMAGES

pusher are descriptive of a surface which

67. The case has been bifurcated

can control and constrain the path of the

and assessment of damages, if any, has

tomato within specified limits.

. been deferred, pending disposition of the

63. The pusher of the "TK-II"

liability aspects of the matter.

controls and constrains the movement of

III. DISCUSSION

the tomato so that it follows a designated

: Background of the Patent in Suit

and predictable path through the blades.

Application Serial No. 636,176 was

64. The pushers of the two tomato

7 filed with the United States Patent Office

slicers ("Tomato Tamer" and "TK-II") are

on May 4, 1967. Prior to that time, those

interchangeable without disrupting the

engaged in the myriad operations which are

operations of either machine.

part and parcel of the food service industry

65. The crucial phase of the cutting

sliced tomatoes through any number of

cycle is the first third, at which stage

methods.

the skin of the tomato is pierced and slit.

‘ Employees could be detailed to slice

66. The pushers of the “Tomato Tamer"

tomatoes by hand with ordinary paring or

and of the "TK-II" bring the tomato into

kitchen knives, the same technique which

contact with the cutting edges of the blades

. ‘ is most commonly employed when tomatoes

62a |

District Court Opinion, Filed February 21, 1975 63a

District Court Opinion, Filed February 21, 1975

are prepared for domestic consumption

in the home. While this procedure may storage during slack hours, 1s critical to

be suitable for occassional small-scale the operation of these businesses. In all

— . . ; ion ; = + _

tomato slicing, it has serious drawbacks of these situations, time-consuming Pre

in large-scale feeding operations. Testi- paration by hand is economically unsatis~

factory.

mony adduced at the trial established

that one large restaurant in the Phila- Problems presented by hand slicing

delphia suburban area, for example, required are detailed in Finding of Fact 6; they

over 20,000 slices of tomatoes each week. relate to speed, uniformity, safety, waste,

Volume of this magnitude makes hand slicing hygiene, spoilage, and the need for advance

impractical. Fastfood operations also use preparation and storage during peak needs.

vast quantities of sliced tomatoes, as do This evidence supports the finding that

ici nd is not satis-~-

institutional operators. At the other end manual slicing was not, and 1S not §

of the scale are the delicatessen and factory for commercial food service.

"hoagie" shops, which use sliced tomatoes Attempts to mechanize the slicing of

purveyed for retail on-the-spot, or take- Large multi-purpose machines are available

— ’

out consumption. Volume of use in these from manufacturers such as Hobarth, but

establishments, obviously, is sharply below the price of $2400 or more per machine 1s

ee! 11

that of the large chains and restaurants, one that may be prohibitive to the sma

: i tting this

but the need to have slices instantly commercial user, thus pu g

available for rush periods, with suitable equipment beyond the reach of the average

private entrepreneur who owns or operates

64a

District Court Opinion, Filed February 21, 1975

a delicatessen 6r small restaurant. Electric

meat-slicers are, at times, used to slice

tomatoes. These machines usually cost $500.00

each, or more. However, this machinery 1s

primarily designed for meat slicing, and uti-

lization for tomato preparation requires

diversion from the intended purpose. Othci

problems, as detailed in Finding of Fact 7,

also make this machine unsatisfactory for

slicing tomatoes on a commercial scale.

The variety of hand-operated vege-

table slicers simply cannot slice a tomato.

Thus, from the evidence presented on this

scrre, we conclude that a reasonably priced

tomato-slicing device, which was capable

of doing the job in an afficient and eco-

nomical manner was not available to the

food-service trade. Moreover, none existed

which did not have serious attendant

difficulties and disadvantages. It was

against this backdrop that Mr. Giangiulio

developed the invention that is the basis

65a

District Court Opinion, Filed February 21, 1975

of the patent in suit.

The development and nature of this

patent are the subject of Findings of Fact

10 through 22. These have been analyzed on

the basis of the documents and other evidence

that constitute the record in this case. Re-

petition of the salient facts is superfluous.

Therefore, we will proceed to a review of the

legal questions raised by this litigation.

The threshold issue is the validity of

the ‘582 patent.

VALIDITY

We have concluded from the information

cited in the introduction to this opinion

that the '582 patent possesses both

novelty and utility. 35 U.S.C. & g101-02.

The validity question is essentially three-

fold: (1) Anticipation - Was the

patent disclosed in the prior art? (2)

Obviousness - Was the patent a natural, non-

innovative outgrowth of the prior art?

(3) Invalidation - Has the privilege of

66a

District Court Opinion, Filed February 21, 1975

patent protection been defeated by certain

actions or inactions of the inventor?

Within this structure, several

additional factors must be considered.

In deciding the issue of anticipation, the

prior art must be determined. In discussing

obviousness, one looks at the level of

skill in the field, the nature of the change

from the prior art, and the input from the

secondary tests for commercial success:

filling a long-felt need, failure of

otners, and copying. Invalidation encom-

passes the issues of public use and failure

to state the best mode. We will discuss

each of these factors within the frame-

work of the particular parent issue to

which it is subsidiary.

Anticipation

The defendants have cited six patents,

one of which is a foreign patent, in order

to establish the scope and the content of the

prior art. See 35 U.S.C. gl02- These patents

67a

District Court Opinion, Filed February 21, 1975

are as follows:

French Patent 1,085,144 (Birambeau)

United States Pat. 2,009,913 (Bever)

. , ’ 503,903 (Curtis)

. . ” 236,178 (Rice)

- as a 1,882,139 (Giuffre)

= 7 - 2,466,121 (Norman)

We will discuss each seriatim.

1. The Birambeau patent describes

a hand-held pusher shaped to fit a spherical

fruit, such as a tomato. The pusher has

slots which mesh with a hand-held rack of

thin blades. The patented device was

designed to solve a problem created by the

hand-held slicer. One introduces a tomato

into the blades and saws through it with a

reciprocating motion. — At a certain point,

the blades get very close to the operator's

fingers. The operator may at that point

move his hand to the underside and pull the

tomato through. The pusher allows the

operator to continue pushing, and eliminates

the danger of cutting his own fingers along

with the tomato. The tomato slicing must

be started by hand, and the device will

68a

District Court Opinion, Filed February 21, 1975 9a

District Court Opinion, Filed February 21, 1975

complete the process only after initial

in suit.

slicing by hand. We conclude that this

3. The Curtis patent describes a

machine does not foreshadow or disclose a

device designed to slice apples and oth

mechanical, high-speed, single-pass slicer g pples and other

structurally solid fruit into indivi

such as the subject matter of the patent Y individual

' : pieces which are separated in the process

in suit.

so that the d ing.

2. The Bever patent was designed as y may dry prior to canning

The patent describes itself as an improve-

a bun slicer. Its avowed purpose was to

ment upon existing machines for that

split buns into two or more slices. It P g

consists of a heavy blade placed at an purpose. To produce slices and lay them out

angle to the direction of motion on » *9% separately, it uses an array of blades that

’

are staggered one to another. The blades

shaped pocket designed to pull a bun past

. are laid out perpendicularly to the path of

the blade. The pocket design of the Bever

patent does not restrain a tomato, so that movement of the fruit and pusher. In order

us ’

' to prevent distortion of the blades and the

it passes cleanly through a blade, or an

, eT resultant shredding of the apple slices,

array of blades; the blade design 1s inca~

pable of passing cleanly through a tomato the fingers of the pusher are engaged in the

, ; , blades whenever the fruit is situated

and producing multiple slices. No reason~

able adaptation of the machine will perform between them. The patent thus presents

such a function. Hence, we conclude that yet another example of known elements,

the Bever patent neither suggests nor (pusher, blade rack, base), performing

discloses the subject matter of the patent the operation of slicing a particular

kind of fruit in a particular manner for a

70a

District Court Opinion, Filed February 21, 1975

particular purpose. The device is incapable

of high-speed, repetitive slicing of a

tomato into multiple slices; it would

destroy the structural integrity of the

fruit. The blades are at a perpendicular

to the path of movement. They are also

quite thick and rigid, and thus cannot

Slice an entire tomato rapidly at a single

pass. The pusher design is utterly in-

capable of supporting and guiding a soft

fruit through the blades without totally

demolishing it. The Curtis patent does

not disclose or suggest the subject matter

of the patent in suit.

4. The Rice patent was also designed

for slicing apples and other structurally

rigid fruit. It consists of a rotary

device, with a radial array of blades

staggered along a central axis which also

supports a pusher. The relationship

between the path of movement and the blade

line is tangential at any blade; that

8 ae eee eee ee

7la

District Court Opinion, Filed February 21, 1975

is, at a perpendicular. If the Rice device

were utilized in an attempt to slice a tomato,

it would destroy it. The angle between the

pusher and the blades is such that those

members would squeeze and thus obliterate the

fruit; moreover, there is not enough support

for the tomato as it passes through the blades.

The patent does not itself disclose or

suggest a successful, high-spped, mechanical

tomato slicer such as the subject matter

of the patent in suit.

5. The Giuffre patent describes a

device for slicing a loaf of raw bread

dough into a row of individual slices. This

is achieved by passing a rack of fine wires

through a loaf of dough on a slotted holder.

The rack of wires is mounted so as to move

radially along an exis almost in the plane

of the dough holder. Such a machine is

not capable of slicing a tomato cleanly;

in all probability, it would dent or squash

the tomato. No obvious modifications would

72a

73a

District Court Opinion, Filed February 21, 1975

overcome the problem. The blade line is

Thus, an analysis of the prior art

essentially at a right angle to the path of

° leads us to conclude that plaintiffs' patent

movement during the entire slicing operation. ;

was neither disclosed, nor suggested by it.

The blades could not provide the resistance :

We also have determined that the prior

to flexing necessary to pierce the skin. ’

art consisted of designs for pushers, blade

The Giuffre patent does not disclose

racks, means of moving the pushers and the

or suggest the subject matter of the patent

blade racks, both separately as well as in

before us. ,

relation to each other, and bases to support

6. The Norman patent discloses a

| the entire mechanism. All or some of these

device for mechanical hand slicing of a

elements can be and have been arranged in

relatively rigid vegetable into convenient vt

: . specific patterns in order to accomplish

lengths for preparation for consumption.

particular functions.

Essentially, the slicer is a rotary machine

Obviousness

with the pusher pivoting along an axis in

The prior art is reflected ina

the plane of the stationary blades. The

variety of slicers and choppers, each

relative path of movement of the fruit is .

designed to deal with the specific

perpendicular to the blades. The Norman

probelms which are peculiar to a variety

machine could not slice tomatoes cleanly, |

of individual foods and to perform different

smoothly, or quickly. Hence, we conclude .

tasks in connection with the cutting or

that the Norman patent does not disclose _

slicing of particular foodstuffs. While

or suggest the subject matter of the ar

it is true that the individual components

patent in suit. a

' : and elements are well known in the prior

74a

District Court Opinion, Filed February 21, 1975

art, there is a synergistic result obtained

through particular relationships among them.

Trio Process Corp. v. L. Goldstein's Sons,

Inc., 461 F.2d 66, 71 (3d Cir.), cert.

denied, 409 U.S. 997 (1972). See 35 U.S.C.

g103.

We find that the crucial development

work on this patent was the result of a pin-

pointed analysis of the difficulties in

slicing tomatoes in large quantities, which

thereafter resulted in the creation of a

device to solve these particular problems.

We refer to the difficulty of pressure

build-up and the related obstacles that

are caused by the combination of a tough

outer skin and an interior with no structural

integrity. The solution required develop-

ment of a process for piercing the tough

outer skin without creating interior

pressure that would destroy the soft in-

ternal mass of the fruit. Thus, the key to

the solution was putting together known

elements -- blade racks, pushers, means for

75a

District Court Opinion, Filed February 21, 1975

relative movement, supporting bases -- in

an assembly which would perform this

task quickly, smoothly, and economically

without either waste of the food itself,

or of the time of the operator performing

the function. Nothing in the prior art

could accomplish this.

We note that the prior art did, in

fact, consist cf patents issued for

machines designed to solve the particular

slicing problems peculiar to individual

foodstuffs; this further buttresses plain-

tiffs' thesis that the United States Patent

Office has frequently found patentable

innovation in solutions which overcome the

unique dilemnas associated with the mass

cutting or slicing of particular foods.

Patents are presumed valid. 35 U.S.C.

g282. This is particularly so when, as

in the instant case, significant prior

art is cited. See, €.g-, Anderson Co.

v. Sears, Roebuck & Co., 265 F.2d 755

76a

District Court Opinion, Filed February 21, 1975

(7th Cir. 1959). The recurring pattern

of patent issuance for means which deal

with specialized problems further suggests

that we examine this patent with a presump-

tion of validity.

There was no additional evidence sub-

mitted to establish the ordinary level of

skill in the art. We have determined from

the patent material submitted by the de-

fendant and discussed above, that the

ordinary level of skill in the art of

food slicing is that possessed by an

individual performing that task. Our

conclusion is based on the following

factors: (1) the central factor in

the development of a food slicer is the

identification of the unique problems

associated with the preparation of a parti-

cular category of fruits or vegetables;

(2) while diverse elements of food slicers

are well-known in the art, it is the syner-

gistic result of arranging these elements

77a

District Court Opinion, Filed February 21, 1975

in a specific manner that is significant in

the issuance of a patent for the invention;

(3) it would be unusual for an engineer to

have either the need for such a device, or

the method of accomplishing the desired

result; and (4) the activity of an engineer

in those circumstances would be cumulative

toward a successful embodiment of the con-

cept, and not independent of the actual

creative work involved in isolating

the problems before arriving at a solution.

This conclusion is consistent with

the result in prior cases which have held

that patentable invention can lie in the

as in the actual construction of an embodi-

ment of that solution. 1 Deller's Walker

on Patents 2d ed. g43 (1964).

We have heard the evidence of de-

fendant's expert engineering witness. We

understand his testimony to mean that

slicers are interesting developments of

known technology and that, while a particular

- 79a

Court Opinion iled Feb F oe :

District Cour p , F ebruary 21, 1975 District Court Opinion, Filed February 21, 1975

slicer may be an extremely efficient,

and weil-designed piece of machinery,

there is no invention in putting a slicer

together. However, in light of the prior

art, and of our determination of the ordi-

nary level of skill in the art, we disagree

with his opinion as to the obviousness of the

'582 patent. This does not mean that one

could validate a patent for a different

Slicer for each fruit or vegetable that

is purveyed in the United States. What

we hold is that the problem posed by the

need to find a fast, efficient, and econo-.

mical way to slice tomatoes in large

quantities did present the singular challenge

that called for a unique answer. We find

that the subject matter of the '582 patent

is not obvious to an individual possessing

the average level of skill in the art,

in light of the prior art existing at the

time the invention was developed and the

application was filed; the inventor of the

"582 patent, Clayton Giangiulio, did not

know of the existence of any device which

suggested to him the machine de devised.

Rather, the '582 patent was the product of

his own independent and original develop-

ment, and hence we disagree with defendant's

contention of obviousness from the prior

art.

Secondary Tests

This conclusionis buttressed by the

evidence relative to the secondary tests

to be considered. The criteria are set

forth in Graham v. John Deere Co., 383 U.S.

1 (1966), and recently were repeated in

the Third “ircuit's opinion in Trio Process

Corp. v. L. Goldstein's Sons, Inc., 461 F.2d

66, 70-71 (3rd Cir.), cert. denied, 409

U.S. 997 (1972). These tests include

commercial success, filling a long-felt

need, failure of others to develop the

invention, and copying by others. We will

discuss each category separately.

80a

District Court Opinion, Filed February 21, 1975

l. Commercial Success

There is overwhelming evidence of the

immediate and astounding commercial success

of Plaintiffs’ invention in the market.

Sales records show that over 20,000 slicers

have been sold since the first productior.

commenced in mid-1967. This sales volume

is extremely significant, because most

purchases are one-time affairs, with re-

placement parts only, such as new blades,

the subject of reorders thereafter. Further-

more, there has been virtually no advertising

by the plaintiffs, with the result that

most of the purchases came through recommen-

dations by satisfied customers to other

potential users.

The testimony was undisputed with re-

spect to the exceptional performance of the

"Tomato Tamer" in achieving the desired

goals for its users. A diverse market

exists, ranging from large institutional

and fast-food chain operations to smaller

District Court Opinion. Filed February 21, 1975

restaurants and local sandwich shops.

The sales results point up the signi-

ficance of the secondary test of commercial

success -- the reception given this device

in the market place is an indicator of the

innovative character of this patent. The

test is not one which is determinative of

validity. However, it does help "to give

light to the circumstances surrounding the

origin of the subject matter sought to be

patented.” Graham Tank, supra, at 17-18.

The reaction in the market place is a

factor to be considered by the Court, which

is most ill-fitted to discharge the technolo-

gical duties cast upon it by patent legis-

lation***., In serves to "'guard against

slipping into use of hindsight,'***and to

resist the temptation to read into the

prior art the teachings of the invention

in issue." Id. at 36. Thus, the test

provides practical guidance to tf Court,

even though it is not legally dispositive

82a

District Court Opinion, Filed February 21, sal

83a

District Court Opinion, Filed February 21, 1975

of the issue of validity. We conclude

increasing need and desire as mass food

that the evidence of commercial success of

: operations have grown over the years. That

the "Tomato Tamer" is additional support for * od Y

wai oe market has not, as defendant has argued,

the proposition that it is a new and useful

, ; been created solely by the development of

innovation worthy of patent protection.

ee the fast-food industry. The diversity of

2. Filling a Long-Felt Need

; the good operations of the purchasers con-

This secondary test is akin to the 9 P P

tradicts defendant on that score. Indeed,

tests of commercial success and failure of

the food slicer patents introduced into

others to achieve that success. That a P

ese. evidence by defendants go back man

receptive market, which was not satisfied, Y g Y

; ; , decades, and reveal that the long chain

existed for this device over a long period

oe of efforts to develop specialized slic

of time suggests that others would be striving , siicers

is not a new development. To the contrar

to produce the subject matter of this patent, P Ys

| we find that a market has existed for

and hence underscores the conlusion that the

; , well over a decade for a machine which would

invention was not obvious to those who did

. eliminate slicing tomatoes by hand, and

work on it. Evidence was presented at

would also obviate the necessity of using

the trial which demonstrated the absence

; expensive electric machinery for that same

from the market of a commercially feasible

purpose. The "Tomato Tamer" has been widely

machine which could slice tomatoes for mass

acclaimed for its ability to satisfy those

food preparation.

fa . needs in the market for which it was designed.

We are satisfied that an eager food

Failure of Others

trade was waiting for such equipment with

‘ Prior to the introduction of plaintiffs’

84a

District Court Opinion, Filed February 21, 1975 85a

District Court Opinion, Filed February 21, 1975

device, no products on the market existed

that were capable of performing the task machine was apparently developed from a

which plaintiffs' invention so successfully description of the "Tomato Tamer". It has

performs. We are satisfied, as noted, that been stipulated that the "TK-I" device, which

the market for this equipment existed was manufactured by Redco, infringed upon

for an appreciable period of time, at least some of the claims of plaintiffs’ patent.

in excess of a decade, and that such a In fact, but for some significant stylistic

market indeed created an incentive for details, the "TK-I" is a virtual copy of the

inventors to produce a successful tomato "Tomato Tamer"; thus, the evidence establishes

Slicer. The inference is that other po- that the "TK-I" was produced in order to

tential inventors would have developed such compete with the plaintiffs" machine on

a slicer, had they been able to do so. The the market.

vacuum which existed until Mr. Giangiulio While it is clear that there is no

invented his machine is again valid se- legal impediment to copying an unpatented

condary evidence of the non-obviousness of article, see Sears, Roebuck & Co. v.

the subject matter of the '582 patent. Stiffel Co., 376 U.S. 225, 231 (1964), and

4. Copyin the evidence of copying prior to issuance

Evidence was put before the Court of a patent is therefore irrelevant to the

that a tomato slicer, known as the "TK-I", issue of infringement, such evidence may

and marketed at one time by the defendant, be pertinent for other purposes. See Troy

was developed by non-parties to compete with Co. v. Products Research Co., 339 F.2d

The 364, 367 (9th Cir. 1964), petition for

the machine produced by plaintiffs.

‘ cert. dismissed, 381 U.S. 930 (1965) Cf.

86a

87a

District Court Opinion, Filed February 21, 1975

Substests of "Nonobviousness": A Nontechni-

patentable under the basic tests found in

cal Approach to Patent Validity, 112 U.Pa.

- 35 U.S.C. § g101-103 (Utility, novelty, non-

L.Rev. 1169, 1178-80 (1964). The inferences

obvious subject matter), the patent may yet

that may be drawn from copying here are two-

be invalid for failure to meet several other

fold. First, copyign suggests that there

secondary conditions. The rationale for these

was significant innovation in the invention

qualifications stems from the purposes of

which has been patented. Second, it

the patent laws, designed as they are, to

suggests that the invention is significantly

"preomote the Progress of***useful Arts, by

useful so that competitors must react in some

securing for limited Times to***Inventors

way if they are to remain in business.

the exclusive Right to their***Discoveries”.

While neither of these inferences can be

U. S. Const. art. I, §8- Because the Con-

considered in connection with the threshold

stitution envisaged a limited monopoly

question of obviousness, they are significant

“ in return for full disclosure of the

secondary indicators and are relevant to

"8 invention, and because progress was felt

a finding of non-obviounsess.

to be enhanced by disclosure of invention

All of the pertinent secondary tests

and hindered by secrecy, the statutes of

support the conclusion that the '582

Congress which were derived from the consti-

patent is preliminarily valid, and has met

tutional clause have all included incentives

the fundamental tests of novelty, utility

for speedy and full disclosures. These

and non-obviousness.

incentives may also be viewed as penalties,

Invalidation Issues

through denial of patentability, when there

Even though an invention may be found

is failure to note a prompt, complete, and

88a 89a

District Court Opinion, Filed February 2l, 1975

District Court Opinion, Filed February 21, 1975

public dislcosure of the subject matter

of the invention. See Graham v. Jon Deere

Co., supra. In the case at bar, defendant

has averred that plaintiffs' non-compliance

with two fundamental precepts has invalidated

the patent, and the challenged conduct con-

Sists of: First: the alleged public use

of the patent's subject matter more than

one year prior to the filing of the appli-

cation in contravention of the provisions

of 35 U.S.C. g§102, and, Second: the

alleged failure on the part of the inventor

to set forth the best mode contemplated

by him for carrying out his invention, as

required by 35 U.S.C. §112. We will deal

with each point separately.

1. Public Use

The public use doctrine is derived

from 35 U.S.C. §102(b):

gl02. [in pertinent part]

A person shall be entitled to a

patent unless--

(b) the invention was***in public

use or on sale in this country, more

than one year prior to the date of the

application for patent in the United

States***,

The Supreme Court has held this

concept to mean that any use for profit,

or other competitive exploitation of an

invention for more than the permitted

period after the invention is patentable

will invalidate the patent. Judge Leanred

Hand has suggested that the limitation may

be viewed as a period of grace during which

the inventor is given time to decide whether

to prepare the application. If that period

of time is exceeded, he suggests that the

inventor is left with the choice of secrecy,

or of no protection of any kind.

72 Electric Storage Battery Co. v. Shimadzu,

~~ 307 U.S. 5,20 (1939).

/3 Metallizing Engineering Co. v. Kenyon

—~ Bearing & A.P. Co., 153 F.2d 516, 520

(2a Cir.), cert. denied, 328 U.S. 840

(1946); Aerovox Corp. v. Polymet Mfg. Corp.,

67 F.2d 860, 862 (2d Cir. 1933). When the

earlier case was decided, an inventor was

allowed two years of public use.

90a

District Court Opinion, Filed February 21, 1975

In the instant case, the patent

application was filed on May 4, 1967. The

question, therefore, is whether there was

a patentable machine or invention prior

to May 4, 1966, and, if so, whether there

was commercial use of that invention prior

to May 4, 1966. The evidence presented

to the Court shows that the final embodiment

of the invention was not ready as of March

30, 1966. On that date, Mr. Giangiulio was

advised by a patent attorney to return to

the workbench for further development of

the slicer. There was evidence that

experiments were conducted by Mr. Giangiulio

at the delicatessen which he formerly owned,

subsequent to the March 30 date and prior

to May 4, 1966. It is not clear from the

evidence which machine -- the final version

Or an intermediate experimental version --

was used for these experiments. However,

we find it unnecessary to decide that

question. Even assuming that the machine

District Court Opinion, Filed February 21,

9la

1975

used was the final embodiment of Mr. Gian-

giulio's idea which was then presented

to the patent attorney on May 24, 1966, we

have not been convinced that any products

of the machine were used for commercial

purposes or for profit. Wer are pursuaded

that the invention was kept in secrecy

while in development, and that any usable

model of the slicer was kept from general

public view. We have also concluded from

the evidence before us that tomato slices

made on the slicer were destrobyed, and not

used in sandwiches for public sale. Any

slicing of tomatoes was entirely experi-

mental with a view toward further develop-

ment and improvement of the invention, and

thus did not cause the statutory period to

begin to run. Defendant has not met the

burden of proof required to establish this

affirmative defense.

We note for the record at this

point that there is a dispute between the

92a

District Court Opinion, Filed February 21, 1975

parties as to whether the applicable stand-

ard of proof is “clear and convincing" or

"beyond a reasonable toche.* It is

unnecessary to resolve this issue because

defendant has not presented evidence that

would even satisfy the lesser standard.

2. Failure to Set forth the Best

Mode

The rule of invalidation for failure

to set forth the best mode is derived from

35 U.S.C. §1l2:

§112. [in pertinent part]

The specification***shall set forth

the best mode contemplated by the in-

ventor of carrying out his invention.

74 Defendant cited the following for the

proposition that the standard is by

"clear and convincing evidence":

Julian v. Drying Systems Co., 346 F.2d

336 (7th Cir. 1965). Plaintiffs, who

propound the standard of "beyond a

reasonable doubt", have cited: Jones

Knitting Corp. v. Morgan, 361 F.2d

451, 455 (3d Cir. 1966).

93a

District Court Opinion, Filed February 21, 1975

This statutory directive is designed

to further the general purposes of the patent

laws by requiring disclosure of the best

method of performing the task the patent

is intended to accomplish, so that the

public may obtain maximum benefits through

complete revelation by the patentee, the

guid pro quo for the grant of a legal

monopoly over the subject matter. Hence,

the statute requires good faith state-

ments of the best method of achieving

the desired result known to an appreicated

as such by the inventor. Defendant relies

upon Engelhard Industries. Inc. v. Sel-Rex

Corporation, 253 F. Supp. 832, 837 (D.N.J.

1966), aff'd, 384 F.2d 887 (3d Cir. 1967),

for the appropriate standards to be applied

in determining if the patentee has satisfied

this statutory requirement. That opinion

cites with approval the following language

from Benger Laboratories Ltd. v. R.K. Laros

Co., 209 F. Supp. 639, 644 (E.D. Pa. 1962),

94a

District Court Opinion, Filed February 21, 1975

aff'd per curiam, 317 F.2d 455 (3d Cir.),

cert. denied, 375 U.S. 833 (1963):

A patentee must disclose the

best method known to him to carry out the

invention. Even if there is a better

method, his failure to disclose it will

not invalidate his patent if he does not

know of it or if he does not appreciate

that it is the best method. It is enough

that he act in good faith in his patent

disclosure. On the other hand, if he

knows at the time the application is

filed, of a better method to practice the

invention and knows it for the best, it

would make no difference whether of not

he was the discoverer of that method.

Defendant states that the pusher

of the machine was changed from "Lexan"

(a specific kind of thermoplastic resin)

to aluminum in the final commercial

version which has been marketed by plain-

tiffs, because the "Lexan" pusher did not

operate as well as aluminum; hence,

Kidde argues that the consistent use of

aluminum in all machines that have been

made and sold establishes that there was

a failure to state the best mode of carry-

ing out the invention in the patent, which

95a

District Court Opinion, Filed February 21, 1975

had described "Lexan" as a possible pusher

material. See Finding of Fact 48. Kidde,

thereafore, contends that we must invalidate

the '582 patent for failure to adopt the

best mode, just as the court did in Engel-

hard Industries, supra. We disagree.

First, the specification in the

patent states only that "the pusher [is]

preferably of plastic, although other mat-

erials may be used." In the same speci-

fication, a particular plastic is suggested. .

Additional directions in the specification

make it clear to the user of the patent that

the pusher is to be impermeable to the liquids

unleashed by a sliced tomato, and rigid so

as to permit it to push a tomato through the

racked blades. See Findings of Fact 48.

We conclude that the specification adequately

discloses the criteria for selecting pusher

material and that whle it suggests one

possible material, it does not limit the

choice to that plastic exclusively.

Second, the "Lexan machine" can be

96a

District Court Opinion, Filed February 21, 1975

operated properly. The difficulty to which

defendant refers is the occasional catch-

ing of a pusher arm on the blades, thereby

jamming the machine. For this litigation,

Mr. Giangiulio prepared a machine with a

"Lexan" pusher which did not have this

difficulty. A simple change in the slots

on the pusher solved the problem. By

widening the area between the slots so that

the spacing is the same as that of aluminum

pushers, the supposed defect was rectified.

Slot width was not specified in the patent.

It was clear that the pusher would have to

engage the blades. Any individual of average

skill in the art would realize that the

slots must be sufficiently wide to permit

free passage of the pusher arms through

the blade rack. Thus an adequate descrip-

tion of the method for obtaining a pro-

perly performing plastic pusher was made.

On this basis alone we are satisfied

to reject defendant's contention. However,

97a

District Court Opinion, Filed February 21, 1975

there are additional factors which support

this conclusion. There was considerable

testimony at the trial relative to the

selection of aluminum as the material for

the pusher. We accept the uncontradicted

statements of Mr. Giangiulio that he chose

aluminum when the Food and Drug Adminis-

tration changed its regulations and required

a special grade of "Lexan" to be used in

food processing equipment. This grade costs

over five times as much as standard commer-

cial "Lexan" material. In addition, an in-

vestigation into tooling costs for "Lexan"

disclosed that the special dies needed for

injection-molding the plastic would have cost

at least $11,000 in 1966. That tooling

cost has continued to rise to over $22,000

now. In contrast, the aluminum pusher can

be made on existing equipment with specialized

tooling of only $2,000 for an extrusion mold.

The differential in the cost of labor, which

is higher for aluminum pushers than for

98a

District Court Opinion, Filed February 21, 1975

plastic pushers, does not come close to

this significant initial tooling cost.

Moreover, a new injection mold would be

required ror each prototype that has

blades which bear different spatial re-

lationships to each other if the pusher

were made of plastic, while only one ex-

trusion mold is required, irrespective of

the width of the spacing between blades.

when the pusher is made of aluminum.

The rule in Engelhard Industries and

in Benger Laboratories, supra, is good

faith in the choice of methods disclosed.

If an inventor does not appreciate that

one method is better than another, he is

not to be penalized for failure to give the

alternative method. We are satisfied that

Mr. Giangiulio did not knowingly choose to

disclose other than that which he believed

to be tne best method at the time. We

are persuaded that he made his choice

for disclosure in complete good faith, and

99a

District Court Opinion, Filed February 21, 1975

that he thought that plastic was in fact

. the best mode for carrying out the inven-

tion. Moreover. the evidence does not

support the contention that plastic is not

the best mode; plastic is an available

and satisfactory material as set forth in

the specification.

Finally, we have examined the original

opinion in Benger Laboratories. Immediately

before the passage cited in Engelhard

. Industries, Judge Kirkpatrick stated:

The defendants' argument depends

for most of its force upon the fact

’ that the plaintiff has from the

beginning used in its commercial

production a method differing in

some particulars from any method

of manufacture disclosed by the

patent and has been conspicuously

successful in marketing its product

on a world-wide scale. Of course,

there may ve many reasons why the

plaintiff adopted this methed in

preference to others, and I do not

regard the fact that a patent

owner adopts a certain method for

its commercial production as by any

means conclusive or as compelling

a finding that it is the best

method althcugh it must, of course,

be considered. There is also

100a

District Court Opinion, Filed February 21, 1975

always a question as to what is

meant by the "best" method. There

could easily be cases where reasons

of economy or other considerations

would call for the use of a certain

method for production on a large

commercial scale, although a

greatly superior product might

be produced if smaller quantities

were desired.

Benger Laboratories, supra, at 644. We

believe that this observation squares

with our decision in this case, and chat

the result is consistent with accepted

precedent in this Circuit, and with the

general law on the subject.

Thus we conclude that, given all

the primary and secondary tests, as well

as consideration of the affirmative

defenses, the '582 patent is in fact

valid. The only remaining issue at

this stage of the litigation is that of

infringement.

INFRINGEMENT

Defendant has sold two models of

machines which allecedly infringe the

'582 patent -- the “TK-I" and the "Tk-II".

10la

District Court Opinion, Filed February 21, 1975

The issues with respect to infringement

. are distinct as to each of them.

The statutory section governing

infringement is found in 35 U.S.C. §271(a):

{[W]hoever without authoricy makes,

uses or sells any patented inven-

tion, within the United States

during the term of the patent

therefor, infringes the patent.

Three separate elements must be

established before there can be a findince

of infringement: (1) the invention be made,

used or sold (2) during the term of the

patent (3) by one without authority to

do so.

1. Alleged infringement by the "TK-I"

Kidde does not dispute that it

lacked authority to use the patent. Indeed,

the parties stipulated that the "TK-I"

infringed some of the claims of the '582

patent. ‘rhe only issue in dispute is

whether there was such use during the

term of the patent. One of defendnat's

: agents, the General Manager, suggested

102a 103a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 2l, 1975

that saies dropred off sharply after

introduction of the "TK-II", which was

prior to the issuance of the '582 patent

on February 20, 1968. Another agent of

defedant, the Restaurant Products Manager,

gave a firmer cutoff for sales, at a period

in mid- to late 1968. We are persuaded

that some sales in all probability did

take place after the issuance of the '582

literal infringement. The ailegedly

offerding product is examined to see if

each and every element of a claim of the

patent is present in that product.

In the words of Mr. Justice Jackson:

In determining whether an

accused device or composition

infringes a valid patent, resort

must be had in the first instance

to the words of the claim. If

accused matter falls clearly

within the claim, infringement is

atent. An accountin which will be -

P ge made out and that is the end of it.

ordered in connection with the determina- ;

- Graver Tank & Mfg. Co. v. Linde Air Prod.

tion of dam P ill reveal the amount

" a ee — Co., 339 U.S. 605, 607 (1950). We have

of sales, so that damages, if any, may . determined the elements of the '582 patent

be calcul dad with certainty. , ; ;

ae Y in order to comply with this directive.

2. Alleged infringement by the "TK-II" :

Z ag a | See Finding of Fact 54. The plaintiffs

Similarly, Kidde does not essert , ; ;

have argued ingeniously to convince us of

authority to use the '582 patent. In

F ' the literal infringement of these elements.

this connection, the parties have sti- '

Bias thn However, it is just not credible that the

1 i that sales occurred after Februar ;

puiate ° . Y detailed provisions of claims 1 and 8 of the

2 Ss F h th

ae me Ce 6 oe " '582 patent are literally present in the

"TK-II" “used" the ‘582 patent. The

"TK-II".

primary test for use is what is known as

104a

District Court Opinion, Filed February 21, 1975

Failure to find literal infringement

does not end the matter, however, the guide-

lines of Graver Tank, supra, are still

the rule in this Circuit. See Trio

Process Corp. v. L. Goldstein's Sons, Inc.,

supra. The Court in Graver Tank refused

to subordinate substance to form by demanding

precise literalness, a rule that would make

a mockery of patent protection. An imitation

can be substantially the same as the

claimed patent, while not falling absolutely

within its literal hounds. The doctrine

ef equivalents therefore becomes significant

in developing realistic protection for

a patentee. The doctrine, which is

effective both for a primary invention and

for a combination invention, is based upon

the thesis that "'if two devices do the

same work in substantially the same way,

and accomplish substantially the same

result, they are the same, even though they

105a

District Court Opinion, Filed February 21, 1975

differ in name, form, or shape. "/5

_—_—

-——. - ea ee —

/5 This quote occurs in the context of the

following declamation of patent protection:

But courts have also recognized that

to permit imitation of a patented invention

which does not copy every literal detail

would be to convert the protection of

the patent grant into a hollow and use-

less thing. Such a limitation would leave

room for - indeed encourage - the unscru-

pulous copyist to make unimportant and

insubstantial changes and substitutions

in the patent which, though adding nothing,

would be enough to take the copied matter

outside the claim, and hence outside the

reach of law. One who seeks to pirate

an invention, like one who seeks to pirate

a copyrighted book or play, may be expected

to introduce minor variations to conceal

and shelter the piracy. Outright and forth-

right duplication is a dull and very rare

type of infringement. To prohibit no

other would place the inventor at the mercy

of vertalism and would be subordinating

substance to form. It would deprive him

of the benefit of his invention and would

foster concealment rather than disclosure

of inventions, which is one of the primary

purposes of the patent system.

The doctrine of equivalents evolved

in response to this experience. The

essence of the doctrine is that one may

not practice a fraud on a patent. Origina-

ting almost a century ago in the case of

Winans v. Denmead (US) 15 How 330, 14 L 3d

717, it has been consistently applied by

this Court and the lower federal courts,

(Con't.)

106a

District Court Opinion, Filed February 2l,

/5 Continued

and continues today ready and available

for utilization when the proper circum-

stances for its application arise. "To

temper unsparing logic and prevent an

infringer from stealing the benefit of

1975

the invention" a patentee may invoke this

doctrine to proceed against the producer

of a device "if it performs substantially

the same function in substantially the

same way to obtain the same result."

kkk

The theory on which it is founded is that

"if two devices do the same work in sub-

stantially the same way, and accomplish

substantially the same result, they are

the same, even though they differ in name,

form, or shape."

kkk

The doctrine operates not only in favor

the patentee of a pioneer or primary in-

vention, but also for the patentee of

a secondary invention consisting of

a combination of old ingredients which

produce new and useful results.

Graver Tank & Mfg. Co. v. Linde Air

Prod. Co., 339 U.S. 605, 607-08 (1950)

(footnotes and citations omitted).

107a

District Court Opinion, Filed February 21, 1975

File-Wrapper Estoppel

Prior to considering the application

of the doctrine of equivalents in this case,

we will dispose of defendant's allegation

of file-wrapper estoppel. Absence of file-

wrapper estoppel is a condition precedent

to consideration of the doctrine of equi-

valents. A pesitive finding of file-wrapper

estoppel will bar invocation of the doctrine

of equivalents by a patent-holder.

The genesis of the estoppel rule

lies in the nature of the proceedings in

obtaining a patent. When an application is

filed, it triggers a review of the appli-

cation and of applicable prior art in order

to determine whether the application presents

the innovation necessary for the grant of

patent rights. The examiner may decide

that the patent is not sufficiently innova-

tive. He may decide that the subject matter

is unpatentable under the patent laws. He

may find that there is insufficient clarity

in the papers to explain the invention to

others. If£ the examiner finds, for any

108a 109a

District Court Opinion, Filed February 21, 1975 District Court Opinion, Filed February 21, 1975

reason, that a patent should not be granted,

he issues a rejection with an explanation

of his reasons. This becomes part of the

file-wrapper, which is the official case-

history of the patent application. An

inventor is not foreclosed at this point

from obtaining a patent. The failings

cited as the basis for rejection may be

rectified. A subsequent re-application

may be submitted under the same number

and file. Ultimately, a patent may be

granted. The issue of file-wrapper estoppel

relates to the eventual grant of a patent

which is the result of this give-and-take.

If the preliminary rejection was for ob-

viousness or overbreadth of the subject

matter, and the patent was then granted

upon the inventor's narrowing the scope of

his claims to avoid covering unpatentable

or prior-patented material, that inventor

may not then have recourse in the courts

to recover what he voluntarily abandoned

in order to receive the patent.

Thus, a finding of file-wrapper

estoppel means that the inventor had

earlier given up certain claims with

respect to his patent that he is now

attempting to assert through the doctrine

of equivalents in order to establish a

basis for his charge that the patent has

been infringed.

In the instant case, there was an

initial rejection of all of the original

claims of the application. The reasons

assigned were, in the case of certain

claims, including original claim l,

indefiniteness, and, for some claims,

again including original claim l, unpa-

tentability in view of two prior art patents.

A conference was requested by counsel for

Mr. Giangiulio. As a result of this

conference, new claims were submitted.

New Claims 11 ana 18, which were accepted

and became claims 1 and 8 in the '582

110a

District Court Opinion, Filed February 21, 1975

patent, differed from the original claim 1

almot entirely in the explanation of the .

angular relationships. The basis for the

complaint of indefiniteness had been the

patent examiner's contention that he

could not relate tne angles to any physical

structure, and thus could not decipher

the patent claims. The new description

of the angles satisfied the examiner. The

objection of unpatentability in view of

prior art was dropped without any narrowing E

or refinement of the claims. In light of

this history, which has been documented ‘4

in exhibits that are part of the record,

and which has also been the subject of

oral testimony by all parties, we conclude

that there has been no narrowing of the

substance of the claims for the purpose of

obtaining a patent in view of prior art, and

therefore, the doctrine of file-wrapper

estoppel does not apply. See Trio Process

Cor. v. L. Godstein's Sons, Inc., 461 F.2d

llla

District Court Opinion, Filed February 21, 1975

66, 75 (3d Cir.), cert. denied, 409 U.S.

997 (1972). Hence we may consider the

doctrine of equivalents.

Doctrine of Equivalents

At first blush, the doctrine of

equivalents appears to create a philosphi-

cal paradox. We distinguished this in-

vention from other slicing devices in holding

that it is valid. Yet now we say we can

rely on the doctrine of equivalents to

decide the issue of infringement. Have

two different and contradictory standards

been applied in determining validity in the

first instance, and infringement thereafter?

The explanation arises from the factor

of innovation in this invention which led

us to uphold its validity -- the solution

of the problem of slicing tomatoes

mechanically, at a rapid rate, without

mangling them. These were, as we have noted,

problems which were peculiar to tomatoes.

None of the other patents was capable

ll2a

District Court Opinion, Filed February 21, 1975

of slicing tomatoes, even though they all

consisted of blades, pushers, bases, and

means for movement. It was the arrange-

ment and the special relationships among

those elements which made other specialized

fruit or vegetable slicers patentable. It

is the special angular relationship between

the pusher and the blade rack which sits at

the center of this invention. It is the

technique which makes the invention. Hence,

the patent is valid.

What then is the rationale of squaring

this finding of validity with one of

infringement based on the doctrine of

equivalents? The latter ule has been

developed to give an inventor complete

protection of his patent rights. The

rule permits a court to determine what

elements are non-essential (given the

premise that every stated element is

essential), and what differences in form

actually are insignificant. One might

understand the rule to permit the Court to

ll3a

District Court Opinion, Filed February 21, 1975

find infringement when the essence of

an invention is used, even though the super-

ficial form may be different.

The definitive statement of the

rule has been cited in the Graver Tank

case. The broad outlines of the test to

be applied are as follows:

What constitutes equivalenecy

must be determined against the

context of the patent, the prior

art, and the particular circum-

stances of the case. Equivalence,

in the patent law, is not the

prisoner of a formula and is not an

absolute to be considered in a

vacuum. It does not require com-

plete identity for every purpose

and in every respect. In deter-

mining equivalents, things equal

to’ the same thing may not be equal

to each other and, by the same

token, things for most purposes

different may sometimes be equi-

valents. Consideration must be

given to the purpose for which an

ingredient is used when combined

with the other ingredients, and the

function which it is intended to

perform.

ll4a

District Court Opinion, Filed February 21, 1975

Graver Tank, Supra, at 609.

The issue in Graver Tank was whether

an electric welding flux containing a

manganese compound infringed a patent for

an electric welding flux containing a

magnesium compound. In a landmark decision

on this point, the Supreme Court first

found no literal infringement. It then

applied the doctrine and found that there

was infringement, because the maganese

compound "'perform[ed] substantially

the same function in substantially the

same way to obtain the same result.'"

Graver Tank, supra, at 608.

A great deal of testimony was

developed in the instant case to demonstrate

the purposes behind the design of the

pusher and the nature of the path of

movement. Expert witnesses were called by

boih sides to explain their points-of-view,

give engineering descriptions of the

machines in operation, and to demonstrate

115a

District Court Opinion, Filed February 21, 1975

the functional equivalence or dissimilarity

between the "TK-II" and the '582 patent.

Several bushels of tomatoes were sacrificed

in live demonstrations of the operative

features of the "TK-II".

We conclude that the pusher of the

"TK-II" is for all operative purposes the

same as tne pusher in the '582 patent's

claims 1 and 8, and that the curvilinear

path of movement in turn is both the

functional equivalent of, and well within

the angular range contemplated for the

path of movement of the '582 patent. The

particular relationships given for the

arms of the '582 pusher are descriptive

of a means whereby the path of the tomato

can be controlled and constrained within

certain specified limits over the crucial

first third of the cutting phase. It is

not significant that one curved piece of

metal serves the functions of both

leading and trailing arms, since the same

ll6a

District Court Opinion, Filed February 21, 1975

can be said of the '582 pusher.

That the "TK-II" was demonstrated as

capable of operating with a straight pusher

surface still does not negate the

conclusions of infringement, because (1)

such a machine was never produced by de-

fendant or Redco, and is not a subject of

this suit, and (2) the straight-edged pusher

still serves the function of guiding the

tomato into the blades at a shallow angle

at the commencement of the cutting cycle,

which is performing "'substantially the same

function in substantially the same way to

obtain the same result.'" Graver Tank,

supra, at 608.

The "TK-II" uses a curvilinear path

of movement. It has been argued by defen-

dant that this is not the equivalent of

a path of movement at a shallow angle to

the blade surface. The patent makes clear

in the specification and description that

the first portion of the cutting path is

ll7a

District Court Opinion, Filed February 21, 1975

the crucial phase, for it is during the

first third of the slicing action that the

skin of the tomato is penetrated. The

motion after that is necessary to complete

the cutting action, but the process is not

fraught with the same problems which

are presented in achieving the init.al

piercing of the fruit. The factual basis

of this contention was further demonstrated

in court by experts from both sides. The

contention was then made by plaintiffs that

the curvilinear path of the "TK-II" pusher

was within the claim of the patent with

respect to this phase of the cutting operation.

Defendant's answer was that one cannot

speak of an angle to the blade surface

for a path which is not straight. We do

not agree with the defendnat. A curved path

will not maintain the same angle to the

blade surface, but the angular relationship

can be determined. In this case the range

of angles is well within that claimed by the

Lila

11%

Jistrict Court Opinion, Filed Februar 2] 197% :

: : : District Court Opinion, Filed Pebruary 21, 197%

'582 patent over the first third of the

it completely appropriate to apply the

cutting path. The claims do not specify

doctrine of equivalents to this aspect of

rectilinear motion, but qive instead

the patent and hold that the "TK-<1II"

a range for entry of the tomato into

infringes the angular relationship element

the blades. While the angles may be more

of the ‘S82 patent claim,

difficult to determine for a curved path

An additional factor in our determina-

than for a straight path, they can be

tion was the evidence that the two pushers

determined, as they have been here, and

could be, and in fact had been interchanged,

the relevant range of angles is completely

without changing the satisfactory operation

covered.

of the machines.

The "TK-11I", therefore, with respect

to the path of movement of the pusher in

relation to the blades, uses the same

elements as the '582 patent; namely, the

/6 In Graver Tank & Mfg. Co. v. Linde Air

same shallow-entry-angle technique, for Prod. Co., 339 U.S. 605, 609 (1950),

interchangeability was described as a

the same purpose and in the same manner, The siqnificant indicator of the equi-

valence of two elements:

curvature is only slight across the crucial

An important factor is whether persons

first third of the path. . Defendant was reasonably skilled in the art would

| have known of the interchangeability of

not able to demonstrate that the "TK-II" an ingredient not contained in the

er patent with one that was

could operate if the angle of approach

to the blades was changed drastically. al

Under all of these circumstances, we find

120a

District Court Opinion, Filed February 21, 1975

While it is true there are superficial

differences, we believe that the "TK-II"

is mereiy different-looking method of

doing that which plaintiff's device

achieves in the same manner and for the

same purpose. Under the doctrine of equiva-

lents, this constitutes infringement of

the '582 patent.

DAMAGES

No evidence has been presented with

respect to damages, due to the bifurcated

trial format. Pending a determination of

that phase of the case, at which time

detailed evidence will be presented

as to sales of the "TK-I" and "TK-II"

slicers, we will also hold in abeyance

any determination as to increased damages,

allowable under 35 U.S.C. §284, and

attorneys' fees, awardable in exceptional

cases under 35 U.S.C. §285.

STATUS OF REDCO

An unusual factor in this case was

l2la

District Court Opinion, Filed February 21, 1975

the failure to join as a party the manu-

facturer of the infringing machines. We

have been asked, however, to make a

declaratory ruling as to the binding

effect of this decision on Redco, the manu-

facturer. It is our opinion that such a

ruling would be in the nature of an advisory

opinion.“ If a proper case or controversy

is brought before us, we will consider the

question. Until such time, and in view

of the absence of a record on this point,

we decline to make any ruling as to Redco

at this time on the record before us.

Accordingly, based upon the entire

record, including the Findings of Fact, we

make the following:

77 See Aetna Life Insurance Co. v. Haworth,

U.S

00 » 227 (1937).

122a

District Court Opinion, Filed February 21, 1975

IV. CONCLUSIONS OF LAW

1. This Court has jurisdiction over

the subject matter of this action and over

the parties to this action. 28 U.S.C.

§1338 and 35 U.S.C. §g281.

2. Venue lies in the Eastern

District of Pennsylvania in this matter.

28 U.S.C. §1400 (b).

3. The subject matter of the patent

in suit was not disclosed by or anticipated

in the prior art. 35 U.S.C. gl102.

4. The subject matter of the patent

in suit was not obvious to a person skilled

in the art at the time the invention was

made. 35 U.S.C. g§103.

5. The subject matter of the invention

was not in public use or on sale in the

United States more than one year prior to

the date of the filing of the application

for the patent in suit. 35 U.S.C. §102(b).

6. The patent specification contains

a description of a preferred embodiment

123a

District Court Opinion, Filed February 21, 1975

setting forth the best mode contemplated

by the inventorfor carrying out his inven-

tion. 35 U.S.C. g1l2.

7. United States Letters Patent

3,369,582 is valid.

8. Defendant's commercial product

known as the "TK-I" infringes United States

Letters Patent 3,369,582.

9. There is no file-wrapper estoppel

applicable to plaintiff's patent.

10. The "TK-II" is in all respects

the functional equivalent of United States

Letters Patent 3,369,582 claims 1 and 8, and

such as such infringes those claims.

ll. There is no actual case or contro-

versy before this Court as to the non-

party, Redco, at this time.

12. Plaintiff is entitled to have

the matter proceed so that damages due

it, if any, may be ascertained.

124a

District Court Opinion, Filed February 21, 1975

—— eee

AND NOW, to wit, this 2lst day of

February, 1975, the defendant in this

action will have thirty (30) days from

the date of this ORDER to file (1)

exceptions, if any, to Findings of Fact

made by the Court, with specific citation

to those portions of the record which

constitute the bases for those exceptions;

(2) exceptions to the failure of the Court

to adopt those proposed Findings of Fact

of defendant which were not so adopted,

with specific citation to the proposed

Findings and the record citation in

support of them; (3) exceptions, if any

to the Court's Conclusions of Law and

the reasons therefor; and (4) exceptions

to the failure of the Court to adopt any of

defendant's proposed Conclusions of Law

with citations of the proposed conclusions

not adopted.

125a

District Court Opinion, Filed February 21, 1975

Defendant shall file a memorandum in

support of its position, the memorandum

to contain a statement of the factual

and legal reasons in support of its exceptions

to Findings of Fact and Conclusions of Law

and in support of its objections to the

Court's failure to make such Findings of

Fact and enter such Conclusions of Law

defendant has previously submitted to the

Court.

Plaintiffs will have an additional

fifteen (15) days in which to file their

reply memorandum, together with all

supporting documentation in opposition

to any exceptions of defendant, and to

any memoranda filed by defendant in support

of its exceptions.

If exceptions are not filed by

defendant within the stated thirty (30)

day period, defendant will be deemed to have

waived any objections to the Findings of Fact

and Conclusions of Law, and the matter will

126a

District Court Qpinion, Filed February 21, 1975

proceed to a determination of damages.

For the purpose of establishing the

machinery and procedure to be utilized in

connection with the adjudication of damages,

in the event no exceptions are filed, a

conference will be held on April 1, 1975, at

2:00 P.M. in Room 2102, United States Court-

house, Philadelphia, Pennsylvania. Otherwise,

a future schedule, if required, will be

contained in the Order ruling upon the

exceptions, if any are filed.

It is so ORDERED.

BY THE COURT:

HERBERT A. FOGEL J.

United States District Court

127a

District Court Opinion, Filed March 19, 1976

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

SYSTEMATIC TOOL & MACHINE

COMPANY, et al

CIVIL ACTION

-vs- NO. 70-1708

WALTER KIDDE & COMPANY, iNC.

OPINION AND ORDER

FOGEL, Cc. MARCH 19, 1976.

Plaintiffs in this action seek an

injunction and damages from defendant for

infringement of United States Letters Patent

3,369,582 (the '582 patent), granted to

plaintiff Clayton Giangiulio on February

20, 1968, for a "Tomato Slicer". Defendant

marketed two machines which allegedly in-

fringed the patent. Plaintiffs, as the

holders of the patent developed and sold

a machine based on their invention. Ina

prior Opinion and Order dated February 2l,

1975, we upheld the validity of the patent

and also found that defendants had infringed

it. Because the case was bifurcated, we

128a

District Court Opinion, Filed March 19, 1976

focused only on the issue of infringement

and did not go into damages. Findings of

Fact, Conclusions of Law, and the legal

arguments for our conclusions may be found

in an Opinion cited at 390 F.Supp. 178

(E.D. Pa. 1975), and 185 U.S.P.Q. 281

(E.D. Pa. 1975).

Subsequent to the filing of that

Opinion, defendant filed exceptions to

several of our Findings and Conclusions.

See Rule 52(b) of the Federal Rules of

Civil Procedure. These exeptions related

to the dual issues of validity and infringe-

ment considered in the initial Opinion.

A reply memorandum was submitted on behalf

of plaintiffs. We have reviewed the issues

and arguments raised by defendant and deny

all of its exceptions.

As detailed in the prior Opinon, the

validity determination is the preliminary

One to be made in an infringement action.

129a

District Court Opinion, Filed March 19, 1976

Among the issues which we had to resolve

were (1) anticipation of the patent in the

prior art; (2) obviousness from the prior

art; and (3) the ordinary level of skill

in the art. Also significant were (1)

the secondary tests of commercial success:

long felt need, failure of others, and

copying by others; (2) the questions

relating to patent invalidation (including

proof that the patent was not used commer-

cially more than one year prior to the

filing of thepatent) ; and (3) the require-

ment that the "best mode" for performance

be set forth in the patent. 390 F. Supp.

at 181.

Once validity has been found, the

focus then shifts to infringement. Here

the questions include: (1) the scope of

the claims of the patent in controversy;

(2) the issue of literal infringement of

those claims; (3) the applicability of

130a

District Court Opinion, Filed March 19, 1976

the doctrine of "file wrapper estoppel"; and

(4) the relevancy of the "doctrine of equi-

valents." Id.

Defendant did not offer any additional

evidence in support of its trial contentions

in its exceptions to our Findings of Fact.

Rather, it pointed to portions at the

record which it claimed supported certain

of its requested findings. It also ampli-

fied some of the legal arguments in favor

of its propoged conclusions of law. Defend-

ant’s principal contentions are as follows:

(1) the patent was anticipated in the prior

art; (2) our findings with respect to the

secondary tests are not supported by the

evidence; (3) the patent did not set forth

the best mode, because it did not specify

an aluminum pusher; (4) insufficiency of

the evidence of sales of one of the de-

fendant's devices during the term of the

patent; (5) our failure to find that there

l3la

District Court Opinion, Filed March 19, 1976

was file wrapper estoppel; and (6) our

erroneous finding that defendant's second

machine was the equivalent of the patent.

Defendant also argues that considerably

more weight should have been given to the

Opinion of its expert, Mr. Karr, and that

we should not have placed any reliance

unpon the testimony of plaintiffs' experts.

No exceptions were taken to forty-one of

the sixty*seven findings.7+

1. Prior Art and Secondary Tests.

Except for the specific findings dealt

with infra, we decline to grant defendant's

exceptions for the same reasons which we

/1 No objections were made to Findings

1 to 8, 10, ll, 15, 18 and 23, 25,

29, 30, 42 to 48, 50 to 55, 57 to 59,

61, 62, 54, 65 and 67. Exceptions

were lodged against Findings 9

(Background), 12 to 14 (Development

of the Patent), 16 & 17 (Patent), 24,

26, 27 & 28 (Anticipation), 31 (Obvious-

ness), 32 to 41 (Secondary Tests), 49

(Best Mode), 56 (TK-I Sales), 60 (File

Wrapper estoppel), and 63 & 66 (Doc-

trine of Equivalents).

132a

District Court Opinion, Filed March 19, 1976

set forth in the prior Opinion. See

390 F. Supp. at 189-202. It was and is

our function as fact-finder to make our

determination from the evidence offered

by the parties, and, when there is a

conflict in the testimony, to resolve the

matter based upon our view of the con-

tradictory evidence. Rule 52 of the

Federal Rules of Civil Procedure (FRCP).

The burden in a civil case of this nature

is upon the plaintiff to establish its

case by the preponderance of the evidence.

Barr Rubber Prod. Co. v. Sun Rubber Co.,

425 F.2d 1114, 1120 (2d Cir. 1970), cert.

denied, 400 U.S. 878 (1970). The fact-

finder is privileged to give such weight

as is deemed appropriate to the testimony

of witnesses, depending upon the various

observed factors including credibility,

forthrightness, consistency, and reaction

to cross-examination. Rule 52 of the

FRCP; Graver Tank & Mfg. Co. v. Linde Air

133a

District Court Opinion, Filed March 19, 1976

Prod. Co., 339 U.S. 605, 609-10 (1950).

Defendant nae not offered any new evidence,

but instead urges us to re-evaluate testi-

mony of which we were fully cognizant in

arriving at our initial decision. We

have given defendant a second bite at the

apple, but we are still convinced that

our initial findings on the questions of

anitcipation in the prior art and the

secondary tests are supported by a prepon-

derance of the evidence.

2. Best Mode

The coure of defendant's exception

to our finding on the best mode issue is

its contention that the original model for

the '582 patent, which had a Lexan pusher

to force the tomatoes through the blade

rack, did not work, until an aluminum

pusher was substituted.

“Jz Exceptions to Findings of Fact 24,

56, 27 and 28.

/3 Exceptions to Findings of Fact 32 to 4l.

134a 135a

District Court Opinion, Filed March 19, 197» , . District Court Opinion, Filed March 19, 1976

In Finding 49 we said: . ° question.

The performance of the "Lexan 3. Evidence of Infringing Sales.

machine" equals that of the aluminbim

machine when the width of the slots In order to find infringement, the

is the same on both machines.

court must find an unauthorized use of

390 F.Supp. at 187. This does not refer

the patent during the term of the patent.

to the spacing between the blades (and

Defendant says it is disputable from the

hence the thickness of a slice) but to the

evidence whether any sales of the TK-1l

Clearance on each side of a blade as it

(one of the alleged infringing slicers)

meshes with the pusher arms. Increasing fa

were made after issuance of the patent.

the clearance from that width on the model

The term of a patent does not commence until

to that width used on commercial production

the patent is issued, so there could be

machines solved the problem of the blades

, . . infringement only if sales took place

catching on the arms of the Lexan pusher.

: after issuance. The difficulty with

Since we were satisfied, as stated in

defendant's exception is that this was

Finding 51 (not challenged) that the actual

not a decision on a motion for summary

reasons for switching to an aluminum pusher

judgment. A disputed material issue of

were economic ones, including the higher

fact would be significant there. Rule 56

price for materials, machining and modi-

of FCRP. Rather it was simply the stuff

fications when Lexan is used, the occasional

of which trials are made, and it was our

problems Mr. Giangiulio had with the early . °

duty to resolve the dispute. Because of

Lexan-pusher model did not, and still do

the bifurcation order, evidence on specific

not affect our findings on the best mode : °

/4 Exception to Finding of Fact 56

'136a

District Court Opinion, Filed March 19, 1976

yuantities sold was not permitted. But

there was testimony of several of defendant's

own employees suggesting at least some

Sales. As we said in the prior Opinion:

An accounting, which will be ordered

in connection with the determination

of damages, will reveal the amount

of sales...with certainty.

390 F.Supp. at 198.

4. File Wrapper Estoppel

The coure of defendant's objections

to our adjudication relating to the TK-II

(the second of the alleged infringing sli-

cers) appears to be to our resolution of

the file wrapper estoppel questions. oe

When, as in the instant case, the aileged

infringer is not a direct imitation of the

patent, resort to the doctrine of equiva-

lents is appropriate; that doctrine holds

that a device which uses the essence of the

invention, and which differs in insignifi-

cant ways with respect to that essence, may

75 Exception to Finding of Fact 60.

—ae.-.lCUtC~C

District Court Opinion, Filed March 19, 1976

be found to infringe upon the patent.

Graver Tank & Mfg. Co. v. Linde Air Prod.

Co., 339 U.S. 605, 607-08 %1950). A

condition precedent to the patentee invok-

ing the doctrine of equivalents iis the

patentee's ability to show that the

principle of file-wrapper estoppel does

not bar his claim. The latter term refers

to the limitation of the scope of patent

claims which may occur when an inventor

seeks to obtain a patent after an initial

rejection of his application by the patent

examiner. On such occasions, the inventor

may narrow the claims sufficiently to

distinguish his invention from prior patents,

or may narrow them to eliminate unpatent-

able claims. Regardless of the reason, the

effect of such abandonment of the wide scope

of the initial application is to estop the

inventor from later using the doctrine of

equivalents to recapture the breadth of the

139a

138a

i Cqurt Opinion, Filed March 19, 1976

District Court Opinion, Filed March 19, 1976 . . District Ca P

patent which he voluntarily abandoned. ; f from those contained in the initial appli-

See Trio Process Corp. v. L. Goldstein's cation, except insofar as it was necessary

Sons, Inc., 461 F.2d 66 (3d Cir.), cert. to clarify the specific invention for the

denied, 409 U.S. 997 (1972) patent examiner. The reasons for the

’ . . .

Necessarily, because there had been initial rejection therefore are not dis-

an initial rejection of Mr. Giangiulio's positive, when the objection of unpatenta-

application by the patent examiner, we had bility was dropped ingranting the patent

to consider the allegation of file-wrapper without any narrowing of the claims. This

estoppel very carefully. It was and is critical finding on this score led us to

our judgment, based upon the exhibits and conclude that the doctrine of file wrapper

all of the testimony of the lay and expert estoppel to bar the doctrine of equivalents

witnesses on both sides, that the '582 patent ? was not applicable and never could be invoked

was granted on claims which had not been in the manner it was by plaintiffs.

5. Functional Equivalency.

narrowed from the original application in

order to obtain a patent. While the Defendant also takes exception to our

findings that the TK-II is the functional

cause of two prior art patents, as well as equivalent of the '582 patent. Particularly,

rejection had recited unpatentability be-

; da ,

indefiniteness, the claims in the second efendant cites the testimony of its expert

; on tae that th

submission did not differ significantly ere 1s not constraint on the tomato by

the arm of the TK-II, and that the shallow

76 + Findings of Fact 59 to 61.

angle of initiation is maintained for only

a small fraction of the movement of the arm.

140a

District Court Opinion, Filed March 19, 1976

As we stated in our prior Opinion, the fact

questions relating to the equivalence of

the TK-II and the patent were the subject

of substantial evidence both in weight and

in amount, produced at the trial. 390 F.

Supp. at 201. We heard from experts on

both sides. We also had the opportunity

to observe the actual operation of the

TK-II firsthand. Our findings were based

On all of the evidence presented, and

not just on the statements of a single

expert. In particular, we were able to

observe the path of the tomato and the

nature of the forces applied to it by the

pusher. Each time the machine was operated,

the path followed by a tomato was indentical.

Each time, the tomato followed a path which,

while slightly curved, was still always at

a slight angle to the blades, over the first

77 Exceptions to Findings of Fact 63 and 66.

14la

District Court Opinion, Filed March 19, 1976

third of the tomato's passage through

those blades. The arm, which was the

only object pushing the tomato, was re-

sponsible for guiding the fruit along

this predictable path. We therefore found

that the TK-II was performing the same

function in essentially the same way to

accomplish the same purpose. No valid

basis has been suggested for us to over-

turn that finding.

Defendant urges that we change our prior

Conclusions of Law because they are in-

consistent with its proposed findings

of fact. We find no contention which

questions the legal principle we applied

in determining patent infringement. Since

we have declined to accept defendant's

proposed findings, and since we instead

have reaffirmed our prior findings, our

conclusions of law will not be altered.

142a

143a

District Court Opinion, Filed March 19, 1976 .

' District Court Opinion, Filed March 19, 1976

6. Conclusion. . both that cited in the patent application,

While no further exposition is required, and the similar additional cases cited by

we believe that it would be well for us defendant in its defendse, did not consider

to repeat several facets of our original the problem; these machines had been

discussion, since it appears from the designed to deal with very different varie-

exceptions which were submitted that ties of vegetable and fruits. Thus, we

defendant is not completely cognizant of found in the '582 patent a new combination

the reasons for our conclusions. As we of old elements, arranged according to

Stated in Finding of Fact 30, the basic specified requirements for the purpose of

elements of the '582 patent were well ; solving the particular problems uniquely

established in the prior art. However, associated with slicing tomatoes.

the arrangement of these elements to solve : The Patent Office and the courts of

a problem which had evaded solution was the United States have recognized on

not known in the prior art, nor, ir our repeated occasions that patentable invention

Opinion, had it been disclosed or antici- can be found in the recognition of the

‘ ; _-

pated. The '582 patent described the pro cause Of a problem and its solution, even

blem which it had been developed to alleviate, though the particular solution may seem

and explained the cause of prior difficulties obvious, once the cause of the problems

encountered in attempting to slice tomatoes had been accruately diagnosed. See United

in a commercially operable, mechanical, high- ° States v. Adams, 383 U.S. 39, 51 (1966);

speed, single-pass device. The prior art, Application of Roberts, 470 F.2d 1399, 1401

(C.C.P.A. 1973);Application of Sponnoble,

405 F.2d 578, 585 (C.C.P.A 1969); Zysset v.

144a

District Court Opinion, Filed March 19, 1976

Pepeil Bros., 276 F.2d 354, 357 (7th Cir.

1960). On this basis, Mr. Giangiulio's

invention was patentable.

We have already disposed o the contention

about the applicability of the doctrine of

file-wrapper estoppel. With respect to

the doctrine of equivalents, we concluded

then and reaffirm now that:

We believe that the "TK-II" is

merely a different-looking method

of doing that which Plaintiff's

[invention] achieves in the same

manner and for the same purpose.

390 F.Supp. at 202. See Graver Tank & Mfg.

Co. v. Linde Air Prod. Co., 339 U.S. 605,

607 (1950); Kolene Corp. v. Motor City

Metal Treating, Inc. 440 F.2d 77, 82 (6th

Cir. 1971); Zysset v. Popeil Bros., 276

F.2d 354, 357-58 (7th Cir. 1960).

Defenant’s exceptions to the Findings

of Fact and Conclusions of Law set forth

in our Opinion of February 21, 1975, are

therefore denied, and we affirm and

145a

District Court Opinion, Filed March 19, 1976

readopt those Findings and Conclusions.

An Order to proceed on the question of

damages will issue accordingly.

BY THE COURT:

HERBERT A. FOGEL J.

United States District Court

146a

District Court Opinion, Filed March 19, 1976

IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF PENNSYLVANIA

SYSTEMATIC TOOL & MACHINE

COMPANY, et al

CIVIL ACTION

-vs- NO. 70-1708

WALTER KIDDE & COMPANY,

INC.

ORDER

AND NOW, to wit, this 19th day of

March, 1976, after consideration of

Exceptions filed by defendant to our

Findings of Fact and Conslusions of Law

entered on February 21, 1975, in the

above-captioned matter, and for the reasons

expressed in the accompanying Opinion,

the aforesaid Exceptions are hereby DENIED,

and the Findings of Fact and Conclusions

of Law set forth in that Opinion of Feb-

ruary 21, 1975, are hereby AFFIRMED and

READOPTED: and it is

FURTHER ORDERED that the parties will

meet on April 12, 1976 in Room 10614 United

States Courthouse, Philadelphia, Pennsylvania,

147a

District Court Opinion, Filed March 19, 1976

at 4:30 P.M., for the purpose of establish-

ing time frames and procedures forth dis-

position of the issue of damages.

IT IS SO ORDERED.

BY THE COURT:

HERBERT A. FOGEL J.

United States District Court

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