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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Appendix
- **Published:** January 1, 1977
- **Citation:** 434 U.S. 857

## Text

\ a
Supreme Court. U. S,
™ FILED

JUL 13 4977 7
Supreme Court of the UnitetStétes® “
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

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
(c) pusher assembly 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

6
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

n
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
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
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--

ax

(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
/2
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
/3
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

of

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).

Ww

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

1

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

/2

anitcipation in the prior art and the

/3
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
6

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

findings that the TK-II is the functional
/7

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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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_2211%3A2. Public record. Not legal advice.