# Petition — Globe Linings, Inc. v. City of Corvallis > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385004_2682%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition - **Published:** January 1, 1977 - **Citation:** 434 U.S. 985 ## Text Supreme Court, U. FILED OCT 13 1977 MICHAEL RODAK, JR., CLERK In The Supreme Court of the United States October Term, 1978 N. 37-554 GLOBE LININGS, INC., HOWARD D. WEBB and ARTHUR M. LOCKHART, U. CITY OF CORVALLIS, Petitioners, Respondent-Defendant and Third-Party Plaintiff-Appellee, v. S & T CONSTRUCTION COMPANY, INC., Respondent-Third-Party Defendant and Fourth-Party Plaintiff-Appellee, Uv. FIRESTONE TIRE AND RUBBER CO., Respondent-Fourth-Party Defendant-Appellee. PETiTION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT FRANCIS A. UTECHT Suite 910 Fidelity Federal Plaza 555 East Ocean Boulevard Long Beach, California 90802 Attorney for Petitioners TOPICAL INDEX GP UME a ccbvcccdccenesses eeececvesessececes IE A Wan 5:60:06 0sctdncnenaneucedansiersdamnsese QUESTIONS PRESENTED ...............cseeeeeeevees CONSTITUTIONAL AND STATUTORY PROVISIONS AND RULES INVOLVED ..................006.. SURES HE BEE SEMEED 6 06 o cdccresevcccsccecssces REASONS FOR GRANTING THE WRIT ................ A. Petitioners have been deprived of their prop- erty (the patent in suit) without due process of law in violation of the Fifth Amendment by the failure of the Ninth Circuit Court of Appeals to interpret 35 U.S.C. 103 in accordance with the directions set forth by this Court ............... B. The conduct of the Appellate Court calls for an exercise of this Court’s power of supervision to prevent a grave miscarriage of justice not only in this case, but also in future patent cases ...... ENT oh eno 58.0bh 00006 eeesanseaeNsceaceteeeeanen APPENDIX 1. Opinion of the District Court ................... 2. Opinion of the Ninth Circuit Court of Appeals ... 3. Order of the Appeals Court denying petitioners’ PN eT WII oo cn bcc sccccesccasacecedss 4. Allen U.S. Patent No. 2,497,850 ................ 5. Feild U.S. Patent No. 2,461,537 ........cccccees 6. Dial et al Patent No. 3,313,443 ................. Page 16 17 TABLE OF AUTHORITIES CITED Cases Page Anderson '’s-Black Rock v. Pavement Salvage Co., Aedes cdakadedes bene Goss buse ake 2, 10, 14 Blonder Tongue v. University Foundation, RR ES ee ere 9 Cuno Engineering Corp. v. Automatic Devices Corp., ee oe eee ee ieeaekabasyeees 8,13 Graham v. John Deere Co., EE coe as cea ee umes seueadauenne 2, 4, 10,11 Grannis v. Ordean, re oo cae Cee banabse eee eseres 9 Iowa State University Research v. Sperry Rand Corp., ee Sk rere 9 Kamei-Autokomfort et al v. Eurasian Automotive Products, cde sheeee hhh 6dt0cs6e'acusabursnbecss keene 16 Regimbal v. Scymansky, Ne a Se ot i cael poe e eae Re Keeeds 8 Sakraida v. Ag Pro, DPM io ouch Guus uubetalesr des badanceys 06% 2, 10, 14 CONSTITUTIONAL PROVISIONS, STATUTES AND RULES U.S. Constitution, Fifth Amendment ...................4+- 2,9 U.S. Constitution, Article 1, Section B, Clause 8 ........ 11,17 BD BT. BIGED cc ccc cccavctvccsccncesedzscnvscevseescs 2 Fe Wr EE hocks Se vcsccccencs 2, 3, 6, 9, 10, 11, 13, 14, 16 CN NGS EEE EE RAL OLCOTT TET 9 IN THE SUPREME COURT OF THE UNITED STATES OCTOBER TERM, 1978 GLOBE LININGS, INC., HOWARD D. WEBB and ARTHUR M. LOCKHART, Petitioners, U. CITY OF CORVALLIS, Respondent-Defendant and Third-Party Plaintiff-Appellee, U. No. S & T CONSTRUCTION COMPANY, INC., Respondent-Third-Party Defendant and Fourth-Party Plaintiff-Appellee, U. FIRESTONE TIRE AND RUBBER CO., Respondent-Fourth-Party Defendant-Appellee. PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT Petitioners pray that a Writ of Certiorari issue to review the Judgment of the United States Court of Appeals for the Ninth Circuit entered on June 14, 1977, affirming the Judgment of the United States District Court for the onli District of Oregon and the Order denying petitioners’ Petition for Rehearing entered August 4, 1977. Opinions Below The opinion of the District Court is reported unofficially at 185 United States Patents Quarterly 807 and appears at Appendix 1 herein. The opinion of the United States Court of Appeals for the Ninth Circuit is reported unofficially at 194 United States Patents Quarterly 415 and appears at Appendix 2 herein. The Order of the Appeals Court denying petitioners’ Petition for Rehearing appears at Appendix 3 herein. Jurisdiction The Judgment of the Court of Appeals was entered on June 14, 1977, a timely decision for rehearing was denied August 4, 1977, and this Petition for a Writ of Certiorari was filed within 90 days of that date. The jurisdiction of this court is invoked under 28 U.S.C. § 1254(1). Questions Presented 1. Did the Court of Appeals deprive petitioners of their property (the patent in suit) without due process of law in violation of the Fifth Amendment by refusing to interpret Section 103 of Title 35 of tae United States Code in accordance with this Court’s direction set forth in Graham v. Deere, Anderson’s-Black Rock v. Pavement Salvage Co. and Sakraida v. Ag Pro. _ 2. Did the conduct of the Court of Appeals call for an exercise of this court’s power of supervision to prevent a grave miscarriage of justice, not only in this case but also in future patent cases. Constitutional and Statutory Provisions and Rules Involved This case involves the Due Process clause of the Fifth Amendment of the Constitution of the United States and Section 103 of Title 35 of the United States Code. Statement of the Case This is an action for infringement of Claim 5 of Dial et al United States Letters Patent No. 3,313,433, filed June 26, 1964, and issued April 15, 1967, for a “Floating Cover For A Liquid Storage”’ (Appendix 6). The invention was developed by plaintiff Globe Linings, Inc., a small business located in Long Beach, California. The invention consists of a floating cover for an open water reservoir to prevent contamination of the stored water by deleterious substances such as dirt, falling leaves, chemical sub- stances in the air, bird and animal waste and refuse thrown in by vandals. Although smaller water reservoirs can be provided with fixed protective roofs, such a roof construc- tion is too expensive for reservoirs of large surface area. The patented invention solved the vexing problem of removing rainwater from a flexible floating reservoir cover. This action arose when the defendant City of Corvallis, Oregon, had an infringing cover constructed for its Baldy — Reservoir by defendant contractor S & T Construction Co., Inc. The latter defendant utilized materials and engineering provided by defendant Firestone Tire and Rubber Co. For the purpose of this Writ, it is important to note that the invention of the patent in suit had no trouble meeting the ‘“‘secondary considerations” referred to in this Court’s direction in Graham v. John Deere Co., 383 U.S. 1, at 35- 36. Undoubtedly, the most striking evidence in this regard was the failure of the U.S. Army and large manufacturers (including the defendant Firestone herein) to solve the problems inherent to a floating roof cover. Such failure was well documented by a confidential Army Report which detailed the unsuccessful attempts to solve such problems from 1943 to the subsequent abandonment of the project in approximately 1965. The Army Report summarized the failure of the whole project as follows: ‘There does not appear to be a simple method of handling water removal” (page 129); and “patterns of rainwater accumulations on the surface of a reservoir cannot be predicted or controlled with any degree of certainty” (page 132). (Emphasis added) Further evidence of nonobviousness was the skeptical attitude those skilled in the reservoir art assumed towards petitioners’ patented reservoir cover, the three-year period required to develop such cover and the commercial success achieved by the cover for the struggling plaintiff Globe Linings, Inc. Yet another indication of nonob- viousness was provided by the recognition by defendant a City of Corvallis that the patented cover of Globe Linings, Inc. could solve the City’s contamination problems, such recognition taking the form of an invitation to Globe Linings to bid on the City’s reservoir cover. Unfortunately for Globe Linings, defendants Firestone and S & T Construction Company, Inc. made a lower bid. The lower bid reflected the fact that neither of such defendants needed to recoup the cost of developing and promoting the infringing cover, but instead could merely copy plaintiffs’ patented cover. There appears herebelow a copy of FIGS. 1 and 3 of the patent in suit with the basic elements of Claim 5 at issue thereof identified: = weer eee iad crocs tne ew ee ed tyr wu eos we emer ps be ow oe coors ed eee TT aie’ » fT | FLOAT MEANS CONTINUOUS SHEET RESERVOIR PERIPHERY RAINWATER COLLECTION SUMP = a RAINWATER COLLECTION SUMP CONTINUOUS SHEET FIG.3 \ FLOAT MEANS . RESERVOIR PERIPHERY Such asic elements of Claim 5 at issue are: (1) a continuous, flexible relatively thin sheet which completely overlies the stored liquid - this provides an inexpensive cover for large surface areas and one which is conformable to the reservoir configuration; (2) the side of the sheet being larger than the reservoir periphery - this provides excess material capable of forming depending folds; and (3) “float means”’ on the sheet and supporting the sheet such that (or “whereby’’) the unsup- ported sheet portion “forms a depending rainwater collection sump” outwardly of the supported sheet portion. After the trial at Portland, Oregon, the trial court held Claim 5 of the patent in suit invalid and unenforceable for obviousness under 35 U.S.C. 103 based solely upon the three references set forth herebelow. The court did not rule on the issue of infringement: — oa 1. ‘The U.S. Army Report describing the aban- doned experiments referred to hereinabove, such report being dated December, 1965. 2. Allen U.S. Patent No. 2,497,850, issued February 21, 1950, Appendix 4 (cited during the prosecution of the patent in suit). 3. Feild U.S. Patent No. 2,461,537, issued February 15, 1949, Appendix 5 (not cited). In finding obviousness, the trial court particularly relied upon the Army Report, since such report was directed to the rainwater collection problem, while Allen merely discloses a rigid floating cover for a petroleum storage tank, and Feild merely discloses a floating cover for a closed tank. The trial court also ruled that applicants’ claimed combination of old elements failed to “produce an unusual or surprising result”’. On appeal, petitioners pointed out that since the patent in suit was filed June 26, 1964, and the Army Report was not published until December, 1965, such report could not possibly constitute prior art, and accordingly that it was error for the trial court to utilize the Army Report in holding the patent claim invalid for obviousness and in evaluating whether or not plaintiffs’ invention produced unusual or surprising results over the prior art. In its opinion (Appendix 2) the Court of Appeals agreed with petitioners that the Army Report could not be considered prior art. Rather than remand the case to the trial court, the Court of Appeals then proceeded to hold = the patent in suit invalid for obviousness on the basis of solely the Allen patent or the Feild patent! Specifically, the Court of Appeals held that: (1) since both Allen and Feild utilized covers having a peripheral sump wherein liquid could gather, the applicants’ use of such a sump was not patentable “‘because a change in use is not a patentable quality unless it is patented as a process’”’; (2) the use of the trough together with the inner floats which automatically diverted rainwater from the main body of the roof into the sump involved insufficient ingenuity and was “no more than that to be expected of a mechanic skilled in the art” citing Cuno Engineering Corp. v. Automatic Devices Corp., 314 U.S. 84; and (3) the claimed invention consists only of a combination of ideas which produces results that would be “expected by one of ordinary skill in the art and hence the patent claim did not exceed the sum of its parts in “an unusual or surprising way” so as to meet the “rather severe test’ for the patentability of a combination patent required by the Ninth Circuit Court of Appeals in Regimbal v. Scymansky, 444 F.2d 333 (1971). The invalidity ruling of the patent in suit by the Ninth Circuit Appellate Court has destroyed a valuable property right of plaintiffs. In particular, plaintiffs’ competitors can now sell copies of plaintiffs’ floating roof cover at a lower == price than plaintiffs, since plaintiffs’ competitors need not amortize the cost of developing and promoting their covers. With respect to a large competitor, such as defendant Firestone, plaintiffs do not have a country-wide marketing organization. Accordingly, plaintiffs cannot possibly meet Firestone’s competition now that plaintiffs have been deprived of their legal monopoly afforded by the patent in suit. Reasons for Granting the Writ A. Petitioners have been deprived of their property right (the patent in suit) without due process of law in violation of the Fifth Amendment by the failure of the Ninth Circuit Court of Appeals to interpret 35 U.S.C. 103 in accordance with the directions set forth by this Court. Patents have the attributes of personal property: 35 U.S.C. §261. The patent owner has a vested property right that can be cancelled, revoked or amended only by judicial proceedings that afford due process of law: Jowa State University Research v. Sperry Rand Corp., (C.A. 4, 1971), 444 F.2d 406, 409. The fundamental requisite of due process of law is the opportunity to be heard: Grannis v. Ordean, (1914), 234 U.S. 385, 394. Petitioners submit that due process requires not only that judicial proceedings be held, but that they provide the patent owner with a “fair opportunity procedurally, substantively and evidencially to pursue his claim”: Blonder Tongue v. University Foundation, (1971), = 402 U.S. 313. A holding of patent invalidity, in effect, destroys a patent owner’s property. It amounts to a taking of his property. If the holding of invalidity is based upon substantive interpretations of the applicable patent statutes which so far depart from the standards set by this Court that they do not offer a patent owner such a “‘fair opportunity”, petitioners submit that the property, the patent, is taken without due process of law. In this case, petitioners were deprived of a fair opportunity substan- tively to pursue their claim. The Ninth Circuit Court of Appeals, rather than interpreting 35 U.S.C. 103 in accordance with the direction set forth by this Court in Graham v. Deere, 383 U.S. 1; Anderson’s-Black Rock v. Pavement Salvage Co., 396 U.S. 57, and Sakraida v. Ag Pro, 425 U.S. 273, applied its own standards of ob- viousness in holding the patent in suit invalid. Addi- tionally, the Appellate Court went off on a legal frolic of its own in holding the claimed combination invalid because one of the claim elements had been used for a different purpose in the prior art. It is true that the Appellate Court, as usual, paid lip- service to Graham v. Deere, stating that the well-known mode of analysis set forth herebelow should be followed: “While the ultimate question of patent validity is one of law . . . the §103 condition . . . lends itself to several basic factual inquiries. Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art oe, ene ne a a re et oe —\ resolved. Against this background, the obvious- ness or non-obviousness of the subject matter is determined.” After approving the above language, the Appellate Court then ignored one of the most critical directions thereof, i.e., a determination of “‘the level of ordinary skill in the pertinent art”. A review of the Court’s opinion (Appendix 2) reveals that the Court did not make any attempt to evaluate the level of ordinary skill in the reservoir art. The failure of the Appellate Court to determine the level of skill in the reservoir cover art made it quite impossible for the Appellate Court to intelligently apply the re- maining factual criteria of Graham v. Deere. This is true since what may not have been obvious to one having a lower than ordinary level of skill might be obvious to one having a higher than ordinary level of skill. In this case, it is clear that the Appellate Court did not bother to determine the level of skill in the art for the simple reason that such Court had no intention of applying the statutory test for patentability set forth in 35 U.S.C. 103. Instead, the Court applied a hindsight test based upon the Court’s “‘gut’’ reaction that the cover con- struction of the patent in suit was so simple as to not be entitled to the legal monopoly promised by Article 1, Section 8, Clause 8 of the Constitution. Such hindsight approach was demonstrated by the Appellate Court’s dissection of the Feild and Allen patents and rearranging the elements thereof to synthesize Claim 5 at issue. =27(1) Change in use is not patentable quality unless patented as a _ process. 10. Patents has already been put to use, albeit in a different manner, is invalid; in order to be valid over the prior art, it must claim not novel use, but novel concep- tion. Beckman Instruments, Inc. v. Chemtron- ies, Inc., 428 F.2d 55, 561 (5th Cir.), cert. denied, 400 U.S. 956, 91 S.Ct. 353, 27 L.Ed.2d 264 (1970), quoted in Exer-Ge- nie, Inc. v. McDonald, 453 F.2d 132, 134 (9th Cir. 1971), cert. denied, 405 U.S. 1075, 92 S.Ct. 1498, 31 L.Ed.2d 809 (1972). denied, 405 US. L.Ed.2d 809 (1972). 1075, 92 S.Ct. 1498, 31 = {10} Both the Feild and Allen patents include a float means arranged with a flexible material to form a_ trough around the edge and the Feild patent uses floats near the periphery in a way very similar to that described in the Dial patent. The major elements of claim 5 of the Dial patent were (1) the continu- ous sheet of material extending beyond the area of stored liquid, (2) the use of a float means to support the cover and form a fold outwardly from the float means, and (3) the use of a perimeter sump to collect and remove rainwater. The collection of rainwater in the periph- eral sump was accomplished by the rais- ing of the inner floats, thus causing the rainwater to flow downward to the deep peripheral fold or trough. Because the main significant elements of the Dial patent claim 5 were already found in the prior art, the final inquiry is whether the raising of the height of the inside floats and the use of a pump to drain the water from the trough were obvious. We conclude that they were. There was testimony by appellant's ex- pert ® that the Allen patent arrangement would collect rainwater, whether or not that was its stated purpose. The use of the trough to collect water was therefore a change in use, not structure. The rais- ing of the inner floats to create a run- off was arguably a change in structure, but the ingenuity required to effect the adaptation was “no more than that to be expected of a mechanic skilled in the art.” Cuno Engineering Corp. v. Auto- matic Devices Corp., 314 U.S. 84, 92, 62 S.Ct. 37, 41, 86 L.Ed. 58 (1941). [11] Because a patentable invention is lacking, secondary considerations such as “commercial success” and “long-felt but unfulfilled needs” cannot fill the gap. Graham v. John Deere Co., 383 U.S. 1, 35-36, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 153, 71 S.Ct. 127, 95 L.Ed. 162 (1950). III. COMBINATION PATENT Appellant suggests that the float ar- rangement of the Dial patent to locate the excess material at the periphery of the reservoir was an unusual or surpris- ing result not found in the prior art. It also makes reference to the ability of the float means to keep the cover from sink- ing if punctured, and to the raising of the inner floats. In so doing, appellant attempts to persuade this court that its invention satisfies the “rather severe test” for patentability of a combination patent. See Regimbal v. Scymansky, 444 F.2d 333, 338-39 (9th Cir. 1971). We must therefore decide whether the “whole” of this patent claim exceeds the sum of its parts in an unusual or surpris- ing way. We hold that it does not, but rather consists only of a combination of ideas which produces results that would be “expected by one of ordinary skill in the art.” Hewlett-Packard Co. v. Tel-De- sign, Inc., 460 F.2d at 629-30. The judgment of the district court is affirmed. 9. Reporter's Transcript at 303. —35— APPENDIX 3 IN THE UNITED STATES COURT OF APPEALS FOR THE NINTH CIRCUIT GLOBE LININGS, INC., HOWARD D. WEBB and ARTHUR M. LOCKHART, Plaintiffs-Appellants, v. CITY OF CORVALIS, Defendant and Third-Party Plaintiff-Appellee, v S & T CONSTRUCTION COMPANY, INC., Third-Party Defendant and Fourth-Party Plainiiff-Appellee, v. FIRESTONE TIRE AND RUBBER CO., Fourth-Party Defendant-Appellee. No. 75-2848 Before: LUMBARD, WRIGHT and ANDERSON, Circuit Judges. The panel as constituted in the above case has voted to deny the petition for rehearing. Judges Wright and Anderson have voted to reject the suggestion for a rehearing en banc. The full court has been advised of the suggestion for an en banc hearing, and no judge of the court has requested a vote on it. Fed.R.App.P. 35 (b). The petition for rehearing is denied and the suggestion for a rehearing en banc is rejected. APPENDIX 4 Feb. 21, 1950 J. W. ALLEN 2,497,850 SEAL FOR FLOATING ROOF TANKS Filed Aug. 6, 1945 2 Sheets-Sheet 1 Ge 4 L20C7200" Sohn 00 4b Mere Sy Cfao a hdlét term ae os porrag Sg preyllpo Se A Be mee 2 wt me APPENDIX 5 Feb. 15, 1949. A. S. FEILD FLOATING ®O0F STORAGE TANK Filed Oct. 10, 1944 2,461,537 2 Sheets-Sheet 1 loventor: Alexander S Feild By his Attorney: aiiine APPENDIX 6 H.S DIAL ETAL April 11, 1967 3,313,443 FLOATING COVER FOR A LIQUID STORAGE RESERVOIR Filed June 26, 1964 3 Sheets-Sheet 1 ATTORNEYS err = ™= April 11, 1967 H. S. 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