# Petition — Namirowski v. Nabisco, Inc.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1978
- **Citation:** 435 U.S. 971

## Text

~ Supreme Court, U.S
FILED

No. ras of 198 FEB 24 1979

| Micuaet RODAK, JR., CLERK

!

In the
Supreme Court of the United States

OcToser Term, 1977

A. M. NAMIROWSKI,

Petitioner,
vs.

NABISCO, INC., a foreign corporation,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR
THE SEVENTH CIRCUIT

ALAN D. KATZ
BURTON S. GOULD
33 N. Dearborn Street.
Chicago, Ulinois 60602
312-782-6050
Attorneys for Petitioner
of Counsel
DAVID S. POCHIS
33 N. Dearborn St.
Chicago, Illinois 60602

ALAN D. KATZ

33 N. Dearborn St.
Chicago, Illinois 60602
312-782-6050

TR + ES TIS
UNITED STATES LAW PRINTING CO., CHICAGO, ILLINOIS 60618 (312) $25-6581

INDEX

PAGE
INILCUIIIIIND - ssicccsiscinseisScitssieinitestinasiigmsenticoseddsuiesidba> --settuslasaait 1
NETTIE. sssecesiceesnitistinibibiotaiereconpesienenetanipuiartainlabuidiiaconddbintiiieds 2
te MINIT ic dinisiscssiecubibinenisenpmaiiiiiaiiiieniiinnlatil 2
UNITII <icsssssnivitnnustcansitibesucbstaebiaiaiaioidceccniatbicehaameinbaittaei 3
I Be Ie GIS. ercktinehdieeeeetinicntietnn 9
UNITE: <icsisssuiccsiansiuatiinsdceiheeinetiseedecelalamenadesianipadiiuaeisiddietneiminiia 24
Appendix—
A Order of the Court of Appeals, entered
SUIT saciid ceieatinsinsctncccutebiepitduinebisinsiics App. 1

B Motion in Lieu of Petition for Rehearing ........ App. 3

C Order denying petition for Rehearing on
I NR TUNE -ctensaticdoeihenvaplentianeniencdnnnicsinds App. 9

D_ Rule 35 of the Court of Appeals for the
I I ticeinicticbicieanitoncciisnttenicnanioien App. 10

E Memorandum Opinion of the District Court App. 14

il

TABLE OF CASES

PAGE

Graham v. John Deere Co., 381 U.S. 1, 86 S.Ct. 684, 15
cl sibislemaaanimnmaaads 2

Sakraida v. Ag Pro, 96 S.Ct. 1532, 47 L.Ed. 2d 784... 2

Bohn Aluminum & Brass Corp. v. Storm King Corp.,

303 F.2d 425, 427 (6th Cir: 1962) ...........2............0.002-- 14
Ronal Corporation v. Anchor Lock of Florida, Inc., 5
ee ES ek Eee oor reas 14
Inglett & Company v. Everglades Fertilizer Company,
i ey I IE CI cieincrcd acest ientbitsiendniinen 14
Xerox Corporation v. Dennison Manufacturing Coi-
pany, 322 Federal Supplement 936 at Page 966 ........ 14

Dolgow v. Anderson, 438 F.2d 825 (2d Cir. Sept. 1970) 15

Buzzelli v. Minnesota Mining and Manufacturing Com-

pany, 480 F.2d 541, at page 542 oon... cscccceceeeees 16
Popeil Brothers, Inc. v. Schick Electric, Inc., 494 F.2d
ESE SRE RS One Os oO SC 17
Dann v. Johnston, 96 S.Ct. 1893 (1976) oo... 18
Chicago Rawhide Manufacturing Co. v. Crane Packing
Co., 523 F.2d 452 (1975) _ ............. ssiiaiiadeieideadladaletinidhaidiens 23
Reese v. Elkhart Welding & Boiler Works, Inc., 447
2 GF % geo fe , | Seen 23
Statutes
RR _IRSESEER LS a ene Or 16
Rule
I, a eainiaaabciiie 2

Iu the
Suyreue Court of the United States

Ocroper Term, 1977

No.

A. M. NAMIROWSKI,

Petitioner,
vs.

NABISCO, INC., a foreign corporation,
Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS FOR
THE SEVENTH CIRCUIT

Petitioner prays that a writ of certiorari issue to review
the judgment of the United States Court of Appeals for
the Seventh Circuit.

OPINION BELOW

The Order of the Court of Appeals, entered November
28, 1977, is reprinted as Appendix A, post. Motion in Lieu
of Petition for Rehearing (reprinted as Appendix B) was
denied, December 14, 1977 (reprinted as Appendix C) post.
The Memorandum Opinion of the District Court cited in
the Order of the Court of Appeals, entered November 28,
1977, reprinted as Appendix B.

2
JURISDICTION

Jurisdiction of this Court is invoked pursuant to 28
U.S.C. § 1254 (1). Questions under the United States Con-
stitution sought to be reviewed by this Court were timely
and properly raised in the Court below.

QUESTIONS PRESENTED

1. Whether the unpublished Order entered pursuant to
Rule 35 of the Court of Appeals for the Seventh Circuit
or Rule 35 itself violates the due process and equal pro-
tection provisions of the Fifth Amendment of the United
States Constitution or violates the orderly administration
of justice and appellate procedures by precluding meaning-
ful petitions for rehearing, by preventing compliance with
Supreme Court Rules governing petitions for writ of cer-
tiorari, by departure from the doctrine of stare decisis, by
avoiding accountability and precluding peer review and by
failure to specify under what guidelines of Rule 35 the un-
published order was entered so as to permit review.

2. Whether Summary Judgment was a proper procedure
under the attendant facts and circumstances and inferences
to be drawn therefrom where a jury was demanded.

a. Whether or not the requirements of Graham v. John
Deere Co., 381 U.S. 1 as to the obviousness of the invention,
to-wit: the determination as questions of fact of the issues
as to the scope and content of prior art, differences be-
tween the art and issues, the level of ordinary skill in the
permanent art, secondary considerations such a long felt
and desired need, the failure of others to solve that need
and the like precluded Summary Judgment procedure in
the instant case.

b. Whether or not under the dictates of the case of
Sakraida v. Ag Pro, 96 §.Ct. 1532, 47 L.Ed. 2d 784, con-

cerning the validity of combination patents, the District -
Court, under the facts and circumstances in the instant
case could grant Summary Judgment, where it was re-
quired to make factual determinations as to ‘‘obviousness’’
and ‘‘synergism’’ (did the combination of old elements pro-
duce or not produce a result greater that the sum of the

parts?).
3. Whether the decision of the District Court was un-

dermined by its finding that no presumption of validity
arose from the granting of the patent.

STATEMENT

This was a complaint based on a patent infringement
Jurisdiction which was predicated under Article III See-
tion 2 of the Constitution of the United States and Chapter
35 of the United States Code. The Petitioner at the time
of the filing of the complaint made a jury demand.

The fundamental allegations stated that on June 10, 1969
Patent No. 300,448,698 was issued to Petitioner and that
the Respondent had infringed on that patent.

The absence of any opinion by the Court of Appeals out-
lining the facts necessitates a recapitulation on the basis
of the contents of the Affidavits filed in connection with
the several Motions for Summary Judgments. They are
as follows:

At the time of the issuance of the patent, the Petitioner
was employed as a general laborer by Nabisco, the re-
spondent; he was a man of limited facility in the English
language. Asa general laborer, his duties involved periodic
cleaning of salt out of ovens used in making crackers, a
dirty and difficult task involving scraping the sa't from
the oven; workers inhaling it choked and their health was

4

affected; to perform this cleaning, it was necessary to
close the baking operations; the accumulations of salt
affected the quality of crackers by contamination; the burn-
ers in the oven were affected by those salt accumulations.

These salt accumulations was a recognized problem in
the industry, and was particularly troublesome to Nabisco.

Nabisco is a multi-national corporation and is the lead-
ing producer of crackers and cookies in the United States
whose net sales in 1973 exceeded one and a half billion
dollars; it maintained an engineering research and patent
departments and commencing in 1952 attempted to devise
several modes of operating the ovens to eliminate the ac-
cumulation of excess salt, all of which failed, including,
a wire mesh system. In 1965, Petitioner, after Nabisco’s
failures, set out to invent a system which delivered cracker
dough to the oven, successfully transported them to the
ovens without distortion and eliminating salt from enter-
ings ovens thereby precluding periodic cleaning, and the
attendant problems of salt accumulation (contamination of
the product, clogging of the burner put in Namirowski’s
patent). The patent issued was for a device that was pri-
marily designed to keep salt from entering ovens, thereby
reducing and eliminating the costly and unhealthy tasks of
cleaning those ovens. It was designed to apply to the bak-
ing of crackers consisting of separate pieces of dough, to
successfully transport them along the conveyor lanes and
transfer them on to the oven band into the oven without
distorting their shape or gumming up the machinery.

It was designed to prevent salt from entering the oven
which, through accumulations on the burners, affected the
temperature, the baking process and the quality of the
product being baked.

5

It was designed to recapture the salt in such a manner,
without contamination of the salt or the distortion of the
salt crystal, so as to allow for the reuse of that salt.

These results were achieved in the invention through the
use of:

a. A salt separating machine on a cracker line that
uses a wire mesh belt without a side chain drive;

b. A wire mesh belt that works on small diameter
noser roll;

ce. A wire mesh belt that has small openings to sup-
port the premium line that is of a balance weave
design ;

d. A wire mesh belt that permits the salt to pass
through;

e. <A noser roll sssembly of small diameter that has
a plate or tracking guide or device; which per-
mitted the successful transfer of the separate
eracker dough into the oven;

f. A noser roll assembly that is split to prevent
bending or bowing;

An air device or blower on the lower flight to
remove any excess salt and prevent such salt
from entering the oven;

53

h. A device to recapture the salt for recycling.

After issuance of a patent and its publication, Nabisco
incorporated all of the ideas in the Namirowski patent on
certain cracker baking lines in Chicago with the result
that salt was eliminated from ovens and Namirowski patent
involved recapture of the salt thereby allowing reuse of
tons of salt in Nabisco’s operation. It also appeared that
the ideas incorporated in the Namirowski patent were
used by Nabisco in a cracker line in Atlanta, Georgia which

6

marked success, illustrated by letters from Nabisco’s su-
perintendent in Atlanta claiming such success from the
elimination of salt from the ovens with the elimination of
periodic cleaning and attendant problems of salt accumu-
lation.

Indeed, certain drawings used by Nabisco for the Atlanta
operation were identical with the drawings in the Nami-
rowski patent. All of the foregoing facts were not dis-
puted by the affidavits submitted by the respondent in its
several motion for Summary Judgment.

When Nabisco, after the successful elimination of salt
from entering the ovens using Namirowski’s patent, at-
tempted to remove one of those ideas, namely, an air blower
operating on the steel mesh, the problems of salt accumu-
lation in the oven and periodic cleaning returned, which
prevented salt from accumulating on the steel mesh, which
accumulations would have been transferred into the oven.

In June of 1974, the Respondent filed its first Motion for
Summary Judgment submitted with memorandum and affi-
davits which Motion was denied on September 12, 1974.
Thereafter, in June of 1975, the case was taken off of the
eall of Judge Lynch and transferred to the calendar of
Judge Flaum. In June of 1975, the Respondent filed a new
Motion for Summary Judgment.

The Second Motion of the Defendant for Summary Judg-
ment was based in the main, on the Affidavits and the
facts related therein of:

a. John Barratt, Director, Simon-Vicars Limited—a
manufacturer and seller of baking apparatus based in Great
Britain but selling its apparatus in the United States and
throughout the world, of London, England. (Record, Item
63, Attachment 1)

7

b. Joseph F. Lynch, Vice President, Schulze and Burch
Biscuit Co. of Chicago, Ilinois—a manufacturer of crack-
ers including saltines and other baked goods. (Record Item
63, Attachment 2)

ce. James E. Tiefenthaler, Jr., President, Tiefenthaler
Machinery Company, Milwaukee, Wisconsin—a seller of
baking equipment manufactured and mostly sold in the
United States. (Record Item 63 Attachment 3)

d. Thomas R. Lugar, President, Thomas L. Green and
Company, Inc., Indianapolis, Indiana—a manufacturer and
seller of baking equipment in the United States. (Record
Itcm 63, Attachment 4)

e. Walter Salter, Vice President, J. W. Greer, Inc.
Wilmington, Massachusetts—a manufacturer and seller of
baking equipment in the United States. (Record, Item 63,
Attachment 5)

f. Harry A. Fischer, Market Manager, Biscuit, Crack-
er and Confectionery, Baker Perkins Inc., Saginaw, Mich-
igan—a manufacturer and seller of baking equipment in
the United States. (Record Item 63, Attachment 6)

In joining issue with the Second Motion for Summary
Judgment, namely the Vicar’s Patent, anticipation, prior
art, novelty and obviousness, as created by the six affi-
davits the petitioner filed, among other documents, the affi-
davits of Adam Namirowski, inventor, Record Item 82,
and Ronald Dorkin, an expert, Record Item 80, which
contested the Vicar’s Patent and the Affidavits items by
item, affidavit by affidavit, fact by fact, applicability by in-
applicability.

Read side by side with those affidavits filed in support

of the second motion for summary judgment, the Nami-
rowski and Dorkin affidavits raise factual contests on the

8

elemental issues of anticipation, prior art, novelty and
obviousness. The affidavits of Namirowski and Dorkin
deny that the devices outlined in the defendants affidavits
or that the device described in the Vicar’s Patent are
‘*identical in nature, function and purpose to the invention
described in the Namirowski Patent’’. Those factual dis-
tinguishments are outlined in detail in the Dorkin Affi-
davit (Record Item 80) Pages 15 through 30 and in the
Namirowski Affidavit (Record Item 80) Pages 18 through
39. The Namirowski and Dorkin affidavits factually deny
that the Namirowski Invention was precluded by anticipa-
tion, prior art, lack of novelty, or obviousness.

It is because of the very existence of these disputed ques-
tions of fact and the inferences to be drawn therefrom
raised by these contrary affidavits as to the issues of an-
ticipation, prior art, novelty and obviou.ness, that the plain-
tiff Namirowski maintains that the Second Motion for Sum-
mary Judgment should have been denied as was the First
Motion for Summary Judgment.

Thereafter, on September 22, 1976, Respondent’s Motion
for Summary Judgment was granted. On November 28,
1977, the Court of Appeals entered its Memorandum Order
not to be published affirming the decision of the District
Court granting Summary Judgment.

On December 12, 1977, the Petitioner filed a Motion in
Lieu of a Petition for Rehearing attacking the validity of
the unpublished Order and respectfully requests the Court
for a published opinion and for other appropriate relief;
that the Motion in Lieu of the Petition for Rehearing was
denied by the Court of Appeals on December 14, 1977.

REASONS FOR GRANTING WRIT

I.

THE UNPUBLISHED ORDER ENTERED PURSUANT
TO RULE 35 OF THE COURT OF APPEALS FOR THE
SEVENTH CIRCUIT, OR RULE 35 BY ITSELF, VIO-
LATES THE DUE PROCESS OF EQUAL PROTECTION
DIVISIONS OF THE FIFTH AMENDMENT OF THE
UNITED STATES CONSTITUTION AND VIOLATES
THE ORDERLY ADMINISTRATION OF JUSTICE AND
APPELLATE PROCEDURE.

Rule 35 of the Court of Appeals for the Seventh Circuit
(Appendix D) is a rule promulgated by the Court of Ap-
peals itself permitting the issuance of public opinions or
unpublished orders. The Court in the instant case elected
to decide the cause under an unpublished order. The dic-
tates of Rule 35 command that such an unpublished order
shall be typewritten and reproduced by copy machine, shall
be distributed to the District Judge and the counsel or the
news media, shall be available for listing periodically in
the Federal reporter showing only the operative words
of the order that is, affirmed, ete. and shall not be used or
cited as precedent, that is, fall within perimeters of stare
decisis.

In particular, unpublished orders may be filed in ap-
peals which are:

1. Frivolous.
2. Present no question sufficiently substantial to require

explanation i.e. a controlling statute or decision which
determines the appeal or the issues which are factual only

10

and the judgment appealed from is supported by the evi-
dence or where the order appealed is non-applicable or
the court lacks jurisdiction or the appellant lacks standing.

Alternatively, unpublished orders may be utilized in ap-
peals which are not frivolous but present arguments con-
cerning the application of recognized rules of law which
are sufficiently substantial to warrant explanation but are
not of general interest or importance.

It should be noted that under these categories, the guide-
lines do not contain the requisite finding by the Court
issuing the unpublished order to designate under what
portion of Rule 35 the unpublished order is based.

The failure of the guidelines to contain this requirement
precludes the litigant and more importantly the Supreme
Court from determining the validity of the basis for the
issuance of such an unpublished order.

The failure of the guidelines to contain this fundamental
concept thus bars the litigant from testing the accuracy
and fairness of the Court issuing the unpublished opinion.
Procedures are established with unbridled power and are
violative of any minimal standards regarding due process
of equal protection of the law.

Moreover, the very existence of Rule 35 allowing un-
published orders without such limitation serves to ex-
tinguish a significant and vital appellate procedure, name-
ly, the Motion for a Rehearing. That procedure has been
attendant in appellate litigation at every plateau; it offers
an opportunity to point out to the Court wherein it’s felt
its reasoning and yationale has departed from precedent
or the decisions of higher courts.

The unpublished order renders such a procedure a nul-
lity. It would appear that if appellate review is to be
limited, such limitations should not be promulgated by

11

the very Court that is obligated to make the decisions.
The extirpation of this valuable right is clearly violative

of the due process and equal protection provisions of the
Fifth Amendment.

The utilization of the unpublished order further serves
to deprive the litigant of a most significant right, that is,
the right to petition for a writ of certiorari in the Supreme
Court of the United States. While the right to a review
on a writ of certiorari is not a matter of right, the petition
is part and parcel of orderly appellate procedures sance-
tioned since the birth of the Federal judicial system.

Within the perimeters of the rules of the Supreme Court
concerning the petition for writ of certiorari, in particular,
the rules with respect to brevity and in particular, with
respect to Rule 19 (1b). concerning the special and im-
portant reasons necessary for the successful granting of
the writ, the unpublished order serves to effectively bar
the presentation of a petition that conforms with said rule.

In the instant case, without the benefit of the specificity
that a published opinion would provide, considering that
the record on appeal was in excess of 1,000 pages, involv-
ing multiple depositions and multiple affidavits as well as
contesting briefs filed in the Motions for Summary Judg-
ment, a brief of the Petitioner consisting of 69 pages, a
brief of Respondent consisting of 67 pages and a reply brief
of the Petitioner consisting of 12 pages. It is impossible
to distill under the guidelines of brevity and the elements
that the Supreme Court is to consider of importance .. .
for the granting of the writ. The Petitioner, through the
unpublished order is prevented from showing that the
Court of Appeals ‘‘has rendered a decision in conflict with
the decision of another Court of Appeals on the same
matter ... or has decided an important question of Fed-

12

eral law which has not been, but which should be settled
by this Court; or has decided a Federal question in a way
in conflict with applicable decisions of this Court; or has so
far departed from the accepted and usual course of judicial
proceedings or so far sanctioned such a departure by a
lower court as to call for an exercise of this Court’s power
supervision. . .”’

The preparer of a petition for a writ of certiorari faced
with an unpublished order must speculate and conjecture
as to what the Court of Appeals had in its mind when it
issued that unpublished order.

Most significantly by permitting the Court of Appeals
of the Seventh Cireuit to establish a Rule which in effect
determines what cases shall be added to the body of stare
decisis and which cases will not is destructive of the very
basis for stare decisis which is the bulwark of the common
law. In effect, the Court of Appeals has removed from
peer review a mass of cases from which the prior doctrines
of stare decisis are effectively barred because no lawyer,
no judge, not even the Supreme Court has a reasoned
opinion upon which to determine whether or not the Court
of Appeals has followed stare decisis. This lack of ac-
countability creates a reservoir of cases that defy inspec-
tion. These cases are immune from analysis; Rule 35
represents a return from the Courts of common law to the
Court of a sovereign that is, giving reasons for its deci-
sion. This lack of accountability creates a reservoir of
eases where unpopular decisions, or decisions that do not
follow the doctrine of stare decisis, may be buried. This
lack of accountability creates a reservoir of cases which
subjects appellate tribunals to the ‘‘appearance of im-
propriety’’, a world of watergates, procedures which allow
such speculations by lay persons should not be sanctioned.

13

The writer of this petition is not unmindful of the
enormous burden placed upon Courts of review by dint of
the multiplication of law suits and appeal procedures.
It is felt that the answer to those problems is not in the
expedient of Rule 35 and requests that the Supreme Court
of the United States subject that rule to its scrutiny.

It is time for the Supreme Court to require the Court
of Appeals for the Seventh Circuit to inform the litigant
under what provisions or guidelines it is issuing its un-
published order.

II,

SUMMARY JUDGMENT SHOULD NOT HAVE BEEN
GRANTED TO THE PETITIONER UNDER THE FACTS
AND CIRCUMSTANCES OUTLINED BY THE CON-
FLICTING AFFIDAVITS. THE TRIAL COURT WAS
PRECLUDED FROM DECIDING THIS CASE BY WAY
OF SUMMARY JUDGMENT UNDER THE AUTHORITY
OF THE GRAHAM AND SAKRAIDA CASES; THE
TRIAL COURT IGNORED THE DEMANDS OF THOSE
DECISIONS; THE TRIAL COURT IGNORED THE BA-
SIC REQUISITES UNDERLYING SUMMARY JUDG-
MENT; THE COURT OF APPEALS BY ITS UNPUB-
LISHED ORDER SANCTIONED SUCH DEPARTURES
BY A LOWER COURT AS TO CALL FOR AN EXER.-
CISE OF THE POWER OF SUPERVISION OF THE
SUPREME COURT.

The petitioner contends that the use and granters of the
Second Motion for Summary Judgment was inappropriate
and erroneous, that the affidavits of Namirowski and
Dorken created disputed questions of fact or undisputed
facts that gave rise to inferences that precluded summary
judgment as a means of disposing of this litigation.

It is axiomatic that summary judgment can be granted
only if ‘‘there is no genuine issue as to any material fact

14

and that the moving party is entitled to a judgment as a
matter of law.’’ (Rule 56, Fed.R.Civ.Procedure)

With respect to summary judgment in patent cases, the
standard to be applied in passing on motions for summary
judgment was stated in Bohn Aluminum & Brass Corp. v.
Storm King Corp., 303 F.2d 425, 427 (6th Cir. 1962), as
follows:

‘*In ruling on a motion for summary judgment, the
court must construe the evidence in its most favorable
light in favor of the party opposing the motion and
against the movant. Further, the papers supporting
the movant are closely scrutinized, whereas the op-
ponent’s are indulgently treated. 6 Moore’s Federal
Practice Par. 56.15 (3), pp. 2123-2126.

‘Tt has been stated that: ‘The purpose of the hear-
ing on the motion for such a judgment is not to re-
solve factual issues. It is to determine whether there
is any genuine issue of material fact in dispute * * *,’
6 Moore’s Federal Practice Par. 56-11(1), p. 2057.
See also: Poller v. Columbia Broadcasting System,
Inc., 368 U.S. 464, 82 S.Ct. 486, 7 L.Ed.2d 458 (1962).’’

It would appear that under the application of this prin-
ciple that summary judgment in Patent cases is the rare
exception, Ronal Corporation v, Anchor Lock of Florida,
Inc., 5 Cir. 1963, 325 F.2d 889 and not the rule in patent
infringement cases. Inglett d Company v. Everglades
Fertilizer Company, 5 Cir. 1958, 255 F.2d 342...

The Courts have in reviewing the applicability of the
Summary Judgment process in Patent disputes, stated that
‘*ynusual Caution must be exercised before Summary Judg-
ment is granted in a patent case and that the defendant
in the patent infringement action bears a heavy burden of
showing that no genuine issue of fact exists.’’ Xerox Cor-
poration v. Dennison Manufacturing Company, 322 Federal

15

Supplement 936 at Page 966. Continuing this case in de-
tail considered the range of Motions for Summary Judg-
ment and stated ‘‘In considering defendants’ Motion for
Summary Judgment, we are governed by the basic prin-
ciple that defendants bear the heavy burden of showing
that no genuine issue exists as to any material fact neces-
sary to establish defenses entitling them to dismissal as a
matter of law. Dolgow v. Anderson, 438 F.2d 825 (2d
Cir. Sept. 1970).”’

Indeed it ought be noted that such reluctance to grant
Summary Judgment should be magnified where in this
ease a jury has been demanded, Therefore the customary
procedure in patent cases of a Judge sitting both as the
trier of facts, and their inferences or the trier of law does
not exist in this case. The distinction between questions
of fact and law should be keenly observed, particularly
in Motions for Summary Judgment in order that the plain-
tiff not be deprived of a trial by jury.

What are the factual considerations to be determined in
deciding the validity or invalidity of a patent. The Su-
preme Court, in Graham v. John Deere Co., 383 U.S. 1, in-
specting the Patent Act of 1952, declared, at page 17,

‘While the ultimate question of patent validity is
of law, A. & P. Tea Co. v. Supermarket Corp., supra,
at 155, the £ 103 condition, which is but one of three
conditions, each of which must be satisfied, lends it-
self to several basic factual inquiries. Under § 108,
the scope and content of the prior art are to be de-
termined; differences between the prior art and the
claims at issue are to be ascertained; and the level
or ordinary skill in the pertinent art resolved. Against
this background, the obviousness or nonobviousness of
the subject matter is determined. Such secondary con-
siderations as commercial success, long felt unsolved
needs, failure of others, ete., might be utilized to give

é

16

light to the cireumstances surrounding the origin of
the subject matter sought to be patented. As indicia
of obviousness or nonobviousness, these inquiries may
have relevaney. See Note, Subtests of ‘Nonobvious-
ness’: A Nontechnical Approach to Patent Validity,
112 U. Pa. L. Rev. 1169 (emphasis added).’’

That pronouncement has formed the backbone in defining
what constitutes the battleground of ‘‘contested or dis-
puted’’ issues of fact. If such a contest exists, the summary
judgment shorteut is forbidden.

Its application is best exemplified in Buezelli v. Minne-
sota Mining and Manufacturing Company, 480 F.2d 541, at
page 542:

‘*Several factual inquiries must first be made under
35 U.S.C, § 103. The court must ascertain the status
of the particular art at the time of invention, the
difference between the state of the art at that time
and the claims at issue, and the level or erdinary skill
in the art during the questioned period. Graham v.
John Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15
L.Ed.2d 545 (1966).

Upon the basis of conflicting affidavits, the District
Court resolved factual issues relating to obviousness.
The determination of this issue calls for a factual in-
quiry regarding the experience of those skilled in the
art. The affidavits are in conflict on this crucial
factual question, creating a genuine issue of material
fact.

We, therefore, hold that the Distriet Court erred in
granting summary judgment.’’

In the instant case the undisputed facts that there was
an industry problem of salt accumulation which Nabisco,
with its vast resources could not solve; which Nabisco at-
tempted to solve and failed; the adoption by Nabisco of
all of the ideas in the Namirowski Patent and its success-

17

ful use in Chicago and Atlanta all point to the inescapable
conclusion that the Namirowski invention was not obvious;
yet the District Court had to conclude, to enter summary
judgment, that it was obvious and in doing so entered into
the arena of fact determination.

The importance of those findings by the trier of fact
was stressed in a non-summary judgment decision in the
7th Cireuit, Popeil Brothers, Inc. vy. Schick Electric, Inc.,
494 F.2d 162 (1974) at page 167:

‘*The Disiriet Court additionally premised its con-
clusion as to the invalidity of the patent in suit on
the finding that the patent was obvious under 35 U.S.C.
Sect. 103. In determining the obviousness or non-
obviousness of a purported invention, the Trial Court
must make a number of factual inquiries and specifical-
ly express, as did the District Court herein, its find-
ings as to each. Rockwell v. Midland Ross Corpora-
tion, 438 F.2d 645, 651-652 (7th Cir. 1971); Gass v.
Montgomery Ward & Co., 387 F.2d 129, 130 (7th Cir.
1967); Cloud v. Standard Packaging Corporation, 376
F. 2d 381, 391 (7th Cir. 1967). The Court must de-
termine: (1) the scope and content of prior art; (2) the
differences between the prior art and the claim or
claims at issue; (3) the level of ordinary skill in the
pertinent art; (4) the presence or absence of such
secondary factors as commercial success, long felt but
unsolved needs and failure of others. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 86 S.Ct. 684, 15 L.Ed.2d
545 (1966)."’

If such an expression of the state of the law is valid
and appertains, in the instant case, where a jury has been
demanded, where the District Court is thereby excluded
from factual decisions or any considerations of inferences
to be drawn from those facts if there are any questions
of fact on these issues, the error in utilizing the summary
judgment route is doubly magnified.

18

It is significant that nowhere in the District Courts’
opinion were the tenets of the Graham Case set forth;
nowhere were the findings or non-findings of fact inter-
preting the opposing affidavits, by this land-mark case
explored or analyzed.

The Court of Appeals for the 7th Cireuit by its unpub-
lished order buries any explanation of the apparent con-
flict between the decision of the District Court and the prior
decisions of the Court of Appeals for the 7th Circuit.

This further illustrates the inappropriateness of an un-
published order under Rule 35 without any specification.

The Court of Appeals by its unpublished opinion has
sanctioned such a departure by a lower Court from the
accepted and usual course of judicial proceeding as to call
for an exercise of the Supreme Court power of supervision.

The District Court in its Memorandum Opinion (Ap-
pendix E), at App. 23 declared:

‘*Thus, before a Court even considers whether or not
there does exist a long-felt need for the purported in-
vention, the Court must determine that the combina-
tion of old elements produces a result greater than
the sum of the parts.’’

The Court arrived at this conclusion on the basis of what
it considered the meaning was in the Supreme Court’s de-
cision in Sakraida v. Ag Pro, Inc., 96 S. Ct. 1532 (1976)
and Dann v. Johnston, 96 8. Ct. 1393 (1976). The District
Court declared that those cases ‘‘make it clear that the
plaintiff’s claim 4 is obvious and invalid. In Sakraida
the Court pointed out that even if a device is commercially
successful and fulfills a long-felt need in an industry, a
combination patent is still obvious and invalid where the
reordering of known elements fail to produce a synergistic
result. 96 S. Ct. at 1537.”’

19

The irony of this interpretation is that it required the
District Court to make a factual determination ‘‘that the
combination of old elements produces a result greater than
the sum of the parts.’’ This fact consideration is pre-
cluded in a motion for Summary Judgment, particularly
in the light of the claim of Namirowski that his invention
kept salt from entering the ovens and eliminated the prob-
lems of salt accumulation; in particular the cleaning of the
ovens, which accomplishment and result was never con-
tradicted by the Respondent’s Affidavits.

The irony was that the Namirowski invention did pro-
duce a result greater than the sum of its parts. It pre-
vented salt from entering the oven; it eliminated the clean-
ing of the ovens, a result, it is claimed, which was never
achieved in the cracker baking industry.

As previously observed in this argument, the District
Court in its Memorandum Opinion, pages 13 and 14 took
the position that the Sakraida case, 96 S.Ct. 1532 (1976)
authorized and required the District Court to remove from
its constderation the need for such a device (the Namirow-
ski Invention) the industry problem, the unsuccessful at-
tempts by Nabisco to solve the problem, the ‘‘success’’
of the Namirowski Patent, in short to disavow the factual
considerations required in the Graham v. John Deere case.

This simply is not accurate. The Court in fact, reaf-
firmed the precepts of the Graham case. It stated at page
1535,

‘*The ultimate test of patent validity is one of law,
A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 155,
71 S.Ct. 127, 131, 95 L.Ed. 162, 168 (1950), but resolu-
tion of the obviousness issue necessarily entails sev-
eral basic factual inquiries, Graham v, John Deere Co.,
supra, 383 U.S. at 17, 86 S. Ct. at 693, 15 L.Ed.2d
at 596.

20

‘*Under § 103, the scope and content of the prior art
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 resolved.’’
Ll bid.

In the Sakraida case there had been a trial in the Dis-
trict Court and the District Court, as the trier of fact on a
disputed issue, made findings of fact upon which it con-
cluded obviousness.

Said the Supreme Court at page 1536,

‘‘Our independent examination of that evidence
persuaded us of its sufficiency to support the District
Court’s finding ‘as a fact that each and all of the
component parts of this patent ... were old and well-
known throughout the dairy industry long prior to the
date of the filing of the application for the Gribble
patent ... (w)hat Mr. Gribble referred to .. . as
the essence of the patent, to-wit the manure flush
system, was old, various means for flushing manure
from dairy barns having been used long before the
filing of the application .. .’”’

No such trial, no such finding of fact attends the Nami-
rowski case. The question of ‘‘obviousness”’’ as a fact is
hotly contested in the Namirowski and Dorken affidavits.

What the Supreme Court said in the Sakraida case is that
the Cireuit Court of Appeals should not substitute its
judgment for that of the trier of fact.

The District Court in its Memorandum Opinion in the
Namirowski case, in order to find whether or not the Nami-
rowski Patent did or did not produce a synergistic result
‘‘must determine that the combination of old elements pro-
duces or not produces a result greater than the sum of
the parts.’’ (App. 23, 24, 25)

ie

21

Such a determination clearly demands an evaluation of
material facts which are disputed; whether or not the de-
vices and procedures outlined in the affidavits filed by the
Respondent in its Motion prevented salt from entering the
ovens with the attendant problems of salt accumulation in-
cluding cleaning; the prior art before the Namirowski In-
vention; wether or not the devices cited by the defen-
dant are congruent or identical with the Namirowski In-
vention; whether or not they achieve the same result;
whether or not they were intended to achieve the same
result.

Under the law applying to motions for summary judg-
ment the District Court was precluded from making a
determination.

Accordingly, the District Court could not utilize Sakraida
to avoid the factual considerations commanded by the
Graham case in the motion for summary judgment.

In the instant case, the Namirowski Patent in fact pro-
duced a ‘‘new or different function’’. It, in effect, as
demonstrated by the ‘‘commercial success’’ eliminated salt
from the oven and consequently periodic cleaning. It cured
and eliminated the problem created by accumulations of
salt within the oven.

Synergistic is generally defined as a new result or func-
tion arising from the combination of elements that sever-
ally could not produce the functior. or result achieved.

Sakraida v. Agpro, Inc., 965 Ct. 1532, at page 1537 defined
synergistic as

‘‘resulting in an effect greater than the sum of the
several effects taken separately.’’ Anderson’s-Black
Rock v. Pavement Co., 396 U.S. 57, 61, 90 S.Ct. 305,
308, 24 L.Ed.2d 258, 261 (1960).

22

In the Sakraida case the flushing produced the same ef-
fect or result as its several parts, albeit more rapidly
and efficiently. The combination did not produce a new
function or a new result as did the Namirowski Patent.

The District Court, in the instant case, confirmed the fact
that combination in the Namirowski Patent resulted in the
elimination of all excess salt from the oven (Opinion pg.
14). In so doing the District Court confirmed the elimina-
tion of periodic cleaning, for no salt means no accumula-
tion, means no ‘‘problems’’. In so doing, the District Court
confirmed the new function, the new result, the synergism.

The Court of Appeals for the 7th Circuit by its unpub-
lished order buries any explanation of the apparent con-
flict between the decision of the District Court and the
Sakraida decision.

This further illustrates the inappropriateness of an un-
published order under Rule 35 without any specification.
The Court of Appeals by its unpublished opinion has

sanctioned such a departure by a lower Court, such a de-
parture from the accepted and usual course of judicial
proceeding as to call for an exercise of the Supreme Court
power of supervision.

ITI.

THE BASIS %F THE DECISION OF THE DISTRICT
COURT NAMELY, THAT NO PRESUMPTION OF
VALIDITY AROSE FROM THE GRANTING OF THE
PATENT WAS ERRONEOUS AND UNDERMINED THE
GRANT OF SUMMARY JUDGMENT.

The District Court in the instant case on App. p. 19 (Ap-
pendix E) of its opinion as a basic predicate for its deci-
sion, declared:

‘*Moreover, although the plaintiff argues that the
presumption of patent validity mandates extreme
caution in summary judgment motions challenging a
patent’s validity in this case, no such presumption
exists. . .’’

Such a perception is inaccurate in the light of the de-
cision of the Court of Appeals for the 7th Circuit, in
Chicago Rawhide Manufacturing Co. v. Crane Packing Co.,
a non Summary Judgment case, 523 F.2d 452 (1975), that
Court at page 457, stated:

‘*Plaintiff’s principal argument is that ‘the district
court erred as a matter of law in failing to heed prop-
a patent is presumed valid’. . .
erly the mandate of the statute 35 U.S.C. Sec. 282 that

Section 282 provides, in part:

‘A patent shall be presumed valid. Each claim of a
patent (whether in independent or dependent form)
shall be presumed valid independently of the validity
of other claims; dependent claim shall be presumed
valid even though dependent upon an invalid claim.
The burden of establishing invalidity of a patent or
any claim then shall rest on the party asserting it’.

There are two aspects to the presumption of validity.
First, as a matter of procedure, Sec. 282 places the burden
of persuasion on the party attacking the validity of the
patent. This burden remains upon the alleged infringer
throughout the proceeding and is in no sense dependent
on the character of the proceedings before the Patent Of-
fice or the amount of prior art cited to, or considered by,
the Patent Examiner. In its first aspect, the presumption
ts constant.

Indeed, it would appear that to overcome that presump-
tion there must be clear and convincing evidence of in-
validity. See Reese v, Elkhart Welding & Boiler Works,
Inc., 447 F.2d 517, 527 (7th Cir. 1971).

24

It thus appears that the District Court, in prefacing its
decision that there was no presumption of validity (a pre-
sumption being a legal fact or a factual equivalent) such a
finding undermines the very foundation of a decision hav-
ing as its focus whether or not there were any material
questions of fact.

It thus appears that the District Court failed to put
the dependent’s motion and affidavits to the test; that the
presumption of validity must be overcome by clear and
convincing evidence of invalidity.

The Court of Appeals for the 7th Cireuit by its unpub-
lished order buries any explanation of the apparent con-
flict between the decision of the District Court and the
prior decisions of the Court of Appeals for the 7th Circuit.

This further illustrates the inappropriateness of an un-
published order under Rule 35 without any specification.

The Court of Appeals by its unpublished opinion has
sanctioned such a departure by a lower Court from the
accepted and usual course of judicial proceeding as to call
for an exercise of the Supreme Court power of supervision.

CONCLUSION

For all of the foregoing reasons, it is respectfully prayed
that a Writ of Certiorari issue to the Court of Appeals
for the Seventh Circuit.

Respectfully submitted,

Avan D. Karz
Burton S. Goutp

Attorneys for Petitioner
Of Counsel:
Davin 8. Pocus
and
Auan D. Katz

APPENDIX

APPENDIX A

Unpublished Per Curiam Order

UNITED STATES COURT OF APPEALS
For Tue Sevents Crrcuit
Chicago, Illinois 60604

November 28, 1977

Before
Hon. Robert A. Sprecher, Circuit Judge

Hon. Philip W. Tone, Cireuit Judge
Hon. William J. Bauer, Cireuit Judge

A. M. NAMIROWSKI,
Plaintiff-Appellant,
No. 76-2152 vs.
NABISCO, INC., a foreign corporation,
Defendant-Appellee.

Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division
No. 73-C-196
Joel M. Flaum, Judge.

This cause came on to be heard on the transcript of the
record from the United States District Court for the
Northern District of Llinois, Eastern Division, and was
argued by counsel.

On consideration whereof, it is ordered and adjudged
by this court that the judgment of the said District Court
in this cause appealed from be, and the same is hereby,
AFFIRMED, with costs, in accordance with the order of
this court entered this date.

App. 2

UNITED STATES COURT OF APPEALS
For Tue Seventu CIRcuitT

Chicago, Illinois 60604

(ARGUED SEPTEMBER 15, 1977)
November 28, 1977
Hon. Robert A. Sprecher, Circuit Judge
Hon. Philip W. Tone, Cireuit Judge
Hon. William J. Bauer, Circuit Judge

Unpublished Order Not To Be Cited
Per Circuit Rule 35

A. M. NAMIROWSKI, Plaintiff-Appellant,
No. 76-2152 Vs.

NABISCO, INC., a foreign corporation,
Defendant-A ppellee.

Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division
No. 73-C-196
Joel M. Flaum, Judge.

ORDER

The court has examined the briefs and the record and
concludes that the judgment must be affirmed. We are not
insensitive to the plaintiff’s sincere belief that he made a
valuable invention. It is not within our authority, how-
ever, to reward merit whenever we conceive it to be de-
serving. We are obliged to apply the principles of the
patent laws to determine whether the plaintiff’s patent is
valid, and when we do so we are forced to conclude that it
isnot. The reasons that require that conclusion are those
stated in the Memorandum of Opinion and Order entered
by the District Court on September 15, 1976, which opinion
we adopt.

The judgment is affirmed.

App. 3

APPENDIX B

IN THE UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT
No. 76-2152

A. M. NAMIROWSKI,

Plaintiff-Appellant,
No. 76-2152 vs.
NABISCO, INC., a foreign corporation,

Defendant-Appellee.

Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division.
Honorable Joel M. Flaum, Judge Presiding.

MOTION IN LIEU OF PETITION FOR REHEARING

Now comes the Plaintiff-Appellant, A. W. Namirowski,
and moves the Court to strike the unpublished Order not
to be cited per Circuit Rule No. 35 entered by this Court
on or about November 28, 1977 affirming the Memorandum
of Opinion and Order ente ed by the District Court on
September 15, 1976 which opinion was adopted in said
unpublished Order and respectfully requests the Court
for a published opinion and for such other relief the Court
deems fit and proper on the following grounds:

1. That said unpublished Order is contrary te orderly,
judicial and appellate procedure in that without the
specifications or the reasoning of the Court as to the basis
of their opinion, the Plaintiff-Appellant, A. M. Namirowski,
is precluded from filing a Petition for Rehearing in which
the Plaintiff-Appellant might point out to the Court any

App. 4

errors in its reasoning or basis for its Order or decision;
that deprivation constitutes the loss of an important and
significant right, namely, the right to Petition the Court
for rehearing.

2. That said unpublished Order is contrary to the Fifth
Amendment of the United States Constitution in that the
Plaintiff-Appellant, A. M. Namirowski, is deprived of due
process of law because the rendition of the Order without
specifications or reasons as to the basis of the said decision
and the Order precludes the Plaintiff-Appellant from filing
a meaningful Petition for rehearing as allowed under the
Federal Rules of Appellate procedure wherein the Plaintiff-
Appellant is thereby precluded from informing or pointing
out to the Court any errors that underlie any Order or
decision.

3. That said unpublished Order is contrary to the Fifth
Amendment of the United States Constitution in that the
Plaintiff-Appellant, A. M. Namirowski, is precluded from
drafting and formulating from within the Supreme Court
Rules of the United States a meaningful Petition for a
Writ of Certiorari to the said Supreme Court based upon
specific claims of error in the Appellate Court of Appeals
Order of opinion; that the said unpublished Order serves
to prevent the Plaintiff-Appellant from such specificity as
to the issue and opinions rules on the Court of Appeals
under which the Supreme Court might take the case on
appeal.

4. That said unpublished Order is contrary to the Fifth
Amendment of the United States Constitution in that the
Plaintiff-Appellant, A. M. Namirowski, is deprived of due
process of law because the rendition of the Order without
specifications or reasons as to the basis of the said decision
and the Order precludes the Plaintiff-Appellant from draft-

App. 5

ing and formulating a meaningful Petition for a Writ of
Certiorari to the said Supreme Court based upon specific
claims of error in the Appellate Court of Appeals Order
of opinion; that the said unpublished Order serves to pre-
vent the Plaintiff-Appellant from such specificity as to
the issue and opinions rules on the Court of Appeals under
which the Supreme Court might take the case on appeal.

5. That the said unpublished Order is contrary to or-
derly, judicial and appellate procedure in that the said un-
published Order is by reason of its matter and secrecy
does not subject the Court of Appeals to peer scrutiny or
accountability to the judges, lawyers, legal scholars or the
general public; that accordingly, such unpublished Orders
are contrary to a free and open society; that further the
use of said unpublished Orders is violative of the common
Appellate Law based upon the doctrine stare decisis in that
said unpublished Orders and opinions may well be based
on principles of law contrary to stare decisis; that said
unpublished opinions by reason of their secrecy with
respect to their legal predicate and reason and reasoning
by their said decision makes such a manner of decision
subject to the use in matters that are unpopular and that
such secrecy carries within it the potential of abusive
power.

6. That the said unpublished Order is contrary to the
Fifth Amendment of the Supreme Court in that the Plain-
tiff-Appellant, A. M. Namirowski is deprived of due process
of law in that said Order without s »cificity or the reasons
upon said Order is based in that the same violates the prin-
ciples of stare decisis.

7. That the said unpublished Order is contrary to or-
derly, judicial and appellate procedure in that the same
violated the guidelines of Rule No. 35 of the Seventh Cir-
euit Court of Appeals.

App. 6

8. That the said unpublished Order is contrary to or-
derly, judicial and appellate procedure in that the same
violated the guidelines of Rule No. 35 of the Seventh Cir-
cuit Court of Appeals in thai the said unpublished Order
failed to set out and specify under what provisions of Rule
No. 35 it was being issued and the reason for it being
issued under said Rule No. 35; that said failure precluded
any appellate review of the courts decision to so decide
the cause as an unpublished opinion.

9. That in the instant case involved substantial questions
as to the use of Summary Judgment procedure in patent
cases where a jury trial has been demanded whether or not
there were any material facts that precluded Summary
Judgment in the instant case; whether or not the District
Court erred in failing to take into consideration for deter-
mination the requirements of Graham v. John Deere Co.,
383 US 1, to-wit: the Scope and Content of prior art,
differences between the prior art and the claims at issue;
the level of ordinary skill in the pertinent art; secondary
considerations such as long felt but unresolved need,
failure of others and the like; on all of which factual issues
the Appellant claimed issues of material fact or inferences
of fact favorable to the Appellant; whether or not the
Court in a Motion of Summary Judgment could make a
determination on the subject of combination patents as
apposed in the Sakraida Case 96 C. Ct. 1537, 47 L. Ed. 2d
784 (1976). whether or not the invention of the Plaintiff-
Appellant constituted a ‘‘new or different function or re-
sult’’ under the Sakraida case; whether or not the inven-
tion of Plaintiff-Appellant, A. M. Namirowski was ‘‘syner-
gestic’’; that ali of the foregoing issues were covered in
the instant case with an Appeal records in excess of 1,000
pages involving multiple depositions and multiple affidavits
as well as briefs filed in two separate Motions for Summary

App. 7

Judgments in the District Court, an Appendix consisting
of 178 pages, brief of appellant consisting of 69 pages,
brief and argument of Appellee consisting of 67 pages and
a reply brief consisting of 12 pages; that the issues raised
in those briefs concerned interpretations of previous in-
terpretations of the United States District Court and their
appeals to the instant case; that under the standard set
forth in Rule No. 35 the said cause should properly have
been decided under a written opinion and that the use of the
unpublished Order substantially deviated from the guide-
lines of the said Rule No. 35.

10. That accordingly, the said unpublished Order en-
tered on or about November 28, 1977 per Rule No. 35 is
defective in that it fails to show under what standard of
Rule No. 35 it was issued; that said failure precludes any
effective inspection by which to contest said Order and its
issuance.

Wherefore, plaintiff-appellant, A. M. Namirowski, prays
judgment that the Court strike the unpublished Order en-
tered on or about November 28, 1977 and requests the
Court for a published opinion and for such other relief
the Court deems fit and proper.

/s/ Alan D. Katz
Alan D. Katz, Attorney
for Plaintiff-Appellant

Please Take Notice That on December 12, 1977 I filed
a Motion in Lieu of Petition for Rehearing in the United
States Court of Appeals for the Seventh Circuit on the
ease of A. M. Namirowski vs. Nabisco, Inc., a foreign cor-
poration.

/s/ Alan D. Katz
Alan D. Katz

App. 8

I, Alan D. Katz, being duly sworn under oath, deposes
and says that he served this Motion in Lieu of Petition for
Rehearing in the United States Court of Appeals for the
Seventh Circuit to Sidly & Austin, One First National
Plaza, Chicago, Ill. 60602, by mailing a copy this 12th
day of December, 1977.

/s/ Alan D. Katz

App. 9

APPENDIX C

UNITED STATES COURT OF APPEALS
For Tue Seventu Circuit
Chicago, Illinois 60604

December 14, 1977.

Before
Hon. Robert A. Sprecher, Circuit Judge
Hon. Philip W. Tone, Circuit Judge
Hon. William J. Bauer, Circuit Judge

A. M. NAMIROWSKI,
Plaintiff-Appellant,
No. 76-2152 vs.
NABISCO, INC., a foreign corporation,
Defendant-Appellee.

Appeal from the United States District Court for the
Northern District of Illinois, Eastern Division
No. 73-C-196
Joel M. Flaum, Judge.

ORDER

On consideration of the motion in lieu of petition for re-
hearing filed in the above-entitled cause by plaintiff-appel-
lant, all of the judges on the original panel having voted
to deny the same,

It Is Hereby Ordered that the aforesaid motion in lieu
of petition for rehearing be, and the same is hereby,
DENIED.

App. 10

APPENDIX D

Circuit Rule 35. The following rule is the Plan for Publica-
tion of Opinions of the Seventh Circuit promulgated pur-
suant to resolution of the Judicial Conference of the United
States.

(a) Policy. It is the policy of this cireuit to reduce the
proliferation of published opinions,

(b) Publication. The court may dispose of an appeal
by an order or by an opinion, which may be signed or per
euriam. Orders shall not be published and opinions shall
be published.

(1) ‘‘Published”’ or ‘‘publication’’ means:
(i) Printing the opinion as a slip opinion;

(ii) Distributing the printed slip opinion to all fed-
eral judges within the circuit, legal publishing com-
panies, libraries and other regular subscribers, inter-
ested United States attorneys, departments and agen-
cies, and the news media;

(iii) Permitting publication by legal publishing
companies as they see fit; and

(iv) Unlimited citation as precedent.

(2) Unpublished orders;
(i) Shall be typewritten and reproduced by copy-
ing machine;

(ii) Shall be distributed only to the cireuit judges,
counsel for the parties in the case, the lower court
judge or agency in the case, and the news media, and

App. 11

shall be available to the public on the same basis as any
other pleading in the case;

(iii) Shall be available for listing periodically in
the Federal Reporter showing only title, docket num-
ber, date, district or agency appealed from with cita-
tion of prior opinion (if reported) and the judgment or
operative words of the order, such as ‘‘affirmed,’’ ‘‘en-
forced’’ ‘‘reversed,’’ ‘‘reversed and remanded,’’ and
so forth;

(iv) Except to support a claim of res judicata,
collateral estoppel or law of the case, shall not be cited
or used as precedent (a) in any federal court within
the circuit in any written document or in oral argu-
ment or (b) any such court for any purpose.

(c) Guidelines for Method of Disposition.

(1) Published opinions: Shall be filed in signed or per
curiam form in appeals which

(i) Establish a new or change an existing rule of
law;

(ii) Involve an issue of continuing public interest;
(iii) Criticize or question existing law;

(iv) Constitute a significant and non-duplicative
contribution to legal literature

(A) by a historical review of law;
(B) by describing legislative history, or

(C) by resolving or creating a conflict in the law;
or

(v) Reverse a judgment or deny enforcement of an
order when the lower court or agency has published
an opinion supporting the order.

App. 12

(2) Unpublished orders:

(i) May be filed after an oral statement of reasons
has been given from the bench and may include only,
or little more than, the judgment rendered in appeals
which

(A) are frivolous or

(B) present no question sufficiently substantial to
require explanation of the reasons for the
action taken, such as where

(aa) a controlling statute or decision de-
termines the appeal:

(bb) issues are factual only and judgment
appealed from is supported by evidence;

(cc) order appealed from is non-appeal-
able or this court lacks jurisdiction or appel-
lant lacks standing to sue; or

(ii) May contain reasons for the judgment but
ordinarily not a complete nor necessarily any state-
ment of the facts, in appeals which

(A) are not frivolous but

(B) present arguments concerning the application
of recognized rules of law, which are suffi-
ciently substantial to warrant explanation
but are not of general interest or importance.

(d) Disposition is to be by Order or Opinion.

(1) The determination to dispose of an appeal by un-
published opinion shall be made by a majority of the panel
rendering the decision.

App. 13

(2) The requirement of a majority represents the policy
of this circuit. Notwithstanding the right of a single fed-
eral judge to make an opinion available for publication, it
is expected that a single judge will ordinarily respect and
abide by the opinion of the majority in determining whether
to publish.

(3) Any person may request by motion that a decision
by unpublished order be issued as a published opinion. The
request should state the reasons why the publication would
be consistent with the guidelines for disposition of appeals
as set forth in this rule.

App. 14
APPENDIX E

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

A. M. NAMIROWSKI1,
Plaintiff,
vs.

NABISCO, INC., a foreign corporation,
Defendant.

73 C 196

MEMORANDUM OPINION AND ORDER
Joel M. Flaam, District Judge:

This cause is before the court on defendant’s motion for
summary judgment.' Defendant seeks: (1) the dismissal
of plaintiff's complaint; (2) judgment on its counterclaim
declaring invalid U.S. Patent No. 3,448,698 which was is-
sued to plaintiff on June 10, 1969. For the reasons set
forth infra, defendant’s motion is granted.

A. Nature of U. S. Patent No. 3,448,698

The nature and operation of plaintiff’s device is quite
simple. The patent describes an apparatus which is used

‘It should be noted that this is defendant’s second motion for
summary judgment. However, because the defendant has presented
this court with relevant information not accompanying its first motion,
i.c., the deposition of Ronald Dorken, this court can properly accept
and rule on the pending motion. See Brownfield v. Landen, 307
F.2d 389, 393 (D.C. Cir.), cert. denied, 371 U.S. 924 (1962);
Allstate Fin. Corp. v. Zimmerman, 296 F.2d 797, 799 (5th Cir.
1961) ; 6 J. Moore, Federal Practice § 56.14{2] (1974).

App. 15

in the handling and making of food products, particularly
crackers. In the usual production of crackers, the raw
dough is placed in separate pieces onto a conveyor belt
which is passed beneath a salt-spreading machine used to
deposit salt onto the dough. These uncooked pieces of
salted dough are then moved by the conveyor into an oven
where the cooking of the crackers takes place. Plaintiff’s
‘‘improvement’’ consists primarily of two parts: first, a
wire mesh conveyor belt, containing openings small enough
to support the dough but large enough to allow salt to pass
through, which accepts the unbaked cracker dough from a
separate conveyor system before the dough reaches the salt-
ing machine and which carries the dough beneath the salt-
ing device thereupon depositing the salted dough pieces on-
to a third conveyor belt which leads to the oven; and
second, a collecting means, 1.e., a pan, located beneath the
wire mesh conveyor belt and the salting machine which
collects the salt not deposited on the unbaked dough after
it passes through the wire mesh belt. Furthermore, the
patent describes an air blowing device which directs forced
air against the wire mesh belt on its return trip thereby
forcing any salt which adhered to the belt to fall into the
collecting means.

The purpose of the invention is also quite simple. By
means of a wire mesh conveyor belt, any excess salt which
is not placed on the unbaked dough will pass immediately
through the wire mesh and never reach the baking ovens.
This is important in the cracker industry as when salt
enters the ovens periodic cleanings are needed which de-
lay production. Plaintiff claimed in his patent that
‘virtually all’’ the salt not deposited onto the separate
pieces of dough will fall into the collecting means and
avoid entering into and fouling up the oven.

App. 16

Plaintiff’s claims in his patent are only five in number.

In claim 1, plaintiff claims as his invention:

‘*[A] conveyor belt ... defining a plurality of spaced-
apart openings having a maximum dimension where-
by adequate support will be provided for the pieces
and a minimum dimension which will permit passage
of salt through the belt, said belt supporting said pieces
as salt is deposited thereon and being completely inde-
pendent of the conveying means for transporting the
pieces to and from said station, whereby virtually all
of the material which is not deposited on said pieces
falls through the belt and is, therefore, not transported
to said oven, and including a collecting means for said
material located beneath both the upper and lower
flights of said conveyor belt whereby said material
passes through both flights before being collected by
said collecting means,

Claims 2 through 5 all refer back to claim 1, with claim 2
- describing the conveyor belt as a wire mesh belt, claim 3
describing the collecting pans as being removable so that
the salt collected therein can be recycled, and claim 5
describing the collecting pan as portable so that it can
be removed and replaced without disturbing the continuing
operation of the machine. Claim 4 describes the air blow-
ing device.

B. Defendant’s Challenge to Plaintiff’s Suit for
Infringement

In the present motion for summary judgment, defendant
asserts that plaintiff’s patent No. 3,448,698 is invalid and
therefore an action for infringement will not lie. As to the
primary claim 1, as well as claims 2, 3, and 5, defendant
relies on 35 U.S.C. §$102(a), (b) in arguing that the
Namirowski invention is unpatentable. Sections 102(a)
and (b) provide:

App. 17

A person shall be entitled to a patent unless—

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

(b) the invention was patented or described in a
printed publication in this or a foreign country or 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....

Thus, defendant argues that the invention described in
claims 1, 2, 3, and 5 was: (1) in prior publication before
1965, the earliest date ascribed to the invention’s dis-
covery; (2) anticipated by a prior patent and publica-
tions; (3) in prior public use and on sale in the United
States more than one year before plaintiff’s application for
his patent; and (4) not new or novel in the light of prior
art.

As to claim 4, defendant argues that it must fail since
first, it is dependent for its validity on claim 1 which
is invalid, and second, the claim violates 35 U.S.C. § 103 in
that

the subject matter as a whole would have been obvious
at the time the invention was made to a person having
ordinary skill in the art to which the subject matter

pertains.

1. The Validity of Claims 1, 2, 3, and 5.

In support of its position that the Namirowski patent is
invalid on the grounds of prior publication and public use
or sale, lack of novelty, and anticipation, defendant relies
on British Patent No. 507,931, issued in 1939 to T. & T.
Vicars Ltd. (‘‘Vicars patent’’), as well as machines used
or sold by Schulze and Burch Biscuit Co., Tiefenthaler

App. 18

Machinery Co., Thomas L. Green & Co., Ine., J. W. Greer,

Inc., and Baker Perkins, Inc. The Vicars patent involves

a device for ‘‘improvements in biscuit making machinery,’’
in which ... salt... for dusting or spraying from
the dusting or spraying device which does not come
upon any dough biseuit is collected after passage
through the open space of the reticulate conveyor
{comprising an interlinked wire meshwork] and re-
turned to the dusting or spraying device.

The other machines mentioned above, all in use prior to
1965, comprise devices used in the production of crackers
in which unbaked cracker dough is sent by conveyor to a
wire mesh belt positioned beneath a salting machine and
which have a collecting mechanism to collect any excess
salt which falls on the wire mesh belt. The collecting
means in each machine is removable so that the collected
salt can be reused in the production process.

Before proceeding to diserss the merits of defendant’s
arguments, the court notes that the greatest scrutiny of
the record is required prior to a determination of a motion
for summary judgment in a patent case. However, the
Seventh Circuit has approved of summary judgment in
patent litigation when it is clear that there are no genuine
issues of material fact and a trial on the merits would be
useless. See Ropat Corp. v. McGraw-Edison Co., 535 F.2d
378 (7th Cir. 1976); Research Corp. v. NASCO Indus., 501
F.2d 358 (7th Cir.), cert. dented, 419 U.S. 1096 (1974).
Moreover, although the plaintiff argues that the presump-
tion of patent validity mandates extreme caution in sum-
mary judgment motions challenging a patent’s validity in
this case, no such presumption exists. Thus, the cases of
Fredman v. Harris-Hub Co., 442 F.2d 210 (7th Cir. 1971),
T. P. Laboratories, Inc. v. Huge, 371 F.2d 231 (7th Cir.

tal

App. 19

1966), and Scott Paper Co. v. Fort Howard Paper Co., 432
F.2d 1198 (7th Cir. 1970), cert. denied, 401 U.S. 913 (1971),
establish the principal that, ‘‘[T]here is no presumption
of patent validity when the pertinent prior art was not
before the patent examiner.’’ Fredman v. Harris-Hub Co.,
442 F.2d 210, 214 (7th Cir. 1971). In the case at bar,
neither the Vicars patent nor the other machines mentioned
before was cited to the patent office in Namirowski’s ap-
plication for patent. Therefore, there is no presumption
of validity as to U.S. Patent No. 3,448,698.

It is the court’s conclusion, after reviewing the Vicars
patent, and the affidavits presented describing the other
machines used in the United States to bake crackers,
that claims 1, 2, 3, and 5 are invalid pursuant to 35 U.S.C.
$§ 102(a) and (b) on the grounds of prior publication and
use, anticipation and lack of novelty. Claims 1, 2, 3, and 5
refer to two components which delineate the patentable
aspect of plaintiff’s device; a wire mesh conveyor belt
that has holes large enough to allow salt to pass through,
and a means for collecting the salt that fails to land on the
unbaked cracker dough. All the machines mentioned pre-
viously, as well as the Vicars device, contain the identical
wire mesh belt and portable collecting mechanism. As
stated by the Seventh Circuit in Popeil Bros., Inc. v. Schick
Electric, Inc., 494 F.2d 162 (7th Cir. 1974):

In essence Section 102(a) requires that a method or
device, in order to be patentable be novel. Under the
statute such novelty is lacking where a purported in-
vention has been anticipated by a foreign or domestic
patent or printed publication or domestic knowledge
or use prior to the inventor’s date of invention. A
previous patent, printed publication or domestic prod-
uct anticipates a purported invention only where, ex-
cept for insubstantial differences, it contains all of the

App. 20

same elements in the same fashion to perform an
identical function.

Id. at 164 (emphasis supplied).

Plaintiff does not dispute that the Vicars patent and
the other machines cited by defendant contain the same
elements described by his patent in claims 1, 2, 3, and 5.
Rather, plaintiff argues: (1) that the devices cited by the
defendant are unworkable in that periodic cleaning of the
baking ovens is still required whereas such cleaning is not
required with the Namirowski patent and that the machines
cited by defendant were not designed to pe:form the funce-
tion of ‘‘eliminating’’ salt from the baking ovens; (2) that
none of the devices cited by defendant contain a ‘‘noser
assembly’’ as described in plaintiff’s patent which supports
the uncooked dough as it passes from conveyor to conveyor;
and (3) that the Namirowski patent aliows for reuse of the
collected excess salt in a ‘‘quality control’”’ situation where-
as the defendant’s devices pulverize the salt making it
unfit for use in a ‘‘quality control’’ operation. However,
on the basis of undisputed facts, these arguments do not
rebut the arguments by defendant that the devices cited
by defendant are identical in nature, function and purpose
to the invention described in claims 1, 2, 3, and 5 of the
Namirowski patent.

As to plaintiff’s first argument, it is clear that the de-
vices cited by the defendant were designed to eliminate
salt from the baking ovens. Calling the Vicars patent a
‘*recovery’’ device rather than an ‘‘elimination’’ machine
can not dispel the clear language of that patent which
states:

By the present invention any desired treatment by
powder . . . may be applied to the biscuits whilst
ensuring that excess material does not pass into the
oven.

App. 21

Thus, the purposes of the Vicar patent and the Namirow-
ski patent are identical.

Moreover, plaintiff’s arguments that the Vicars patent
is unworkable and that all the devices cited by defendant
do not eliminate periodic cleaning of the baking ovens
are without merit. First, plaintiff’s sole basis for the
belief that the Vicars patent is unworkable is his ‘‘opinion,’’
and that of Mr. Dorkin, that the machine will not work.
Neither man has seen a Vicars machine in operation and
their ‘‘opinion’’ is based solely on a view of the patent’s
specifications. The affidavit of Mr. Barrett, a director of
Simon-Vicars Ltd., conclusively shows that the Vicars de-
vice can operate to eliminate salt from entering the baking
ovens during the baking of separate pieces of cracker dough.
This affidavit is uncontroverted by plaintiff on the basis
of any personal knowledge held by plaintiff. Second, al-
though it is true that none of the affidavits presented
concerning the operation of the devices cited by the defen-
dant indicate whether or not periodic cleaning of the ovens
is still necessary, this fact is irrelevant in the light of
plaintiff’s own admission that his machine, as defined in
claims 1, 2, 3, and 5, will not eliminate salt from entering
the baking ovens. Thus, on page 7 of plaintiff’s own
affidavit in opposition to defendant’s motion, plaintiff
admits that even with the wire mesh belt as he designed it,
‘‘after a while this excess salt built up on the wire mesh
belt [and] would be thrown onto the oven band and into
the oven.’’

In regard to the second and third arguments raised by
plaintiff, all that need be noted is that neither the ‘‘noser
assembly’’ nor the device used to prevent pulverization of
the salt were ever mentioned in any of the patent claims.
Thus, since the law is clear that it is the ‘‘claim of the
patent [which] measures the grant,’’ Popetl Bros., Inc. v.

App. 22

Schick Electric, Inc., 356 F. Supp. 240, 252 (N.D. Tll. 1972),
ajj'd 494 F.2d 162 (7th Cir. 1974), such factual distinctions
are irrelevant to whether or not the devices cited by the
defendant anticipate the invention claimed by Namirowski
in his patent. In other words, these factual differences do
not create a genuine issue of material fact.

Therefore, since there are no genuine issues of material
fact, claims 1, 2, 3, and 5 are declared invalid in that be-
fore 1965 there was in existence devices and prior publica-
tions deseribing devices which contained all the elements
enumerated in those claims, which performed the same
function in the same way as the machine defined in those
claims, and whose purposes were to perform the same
function as was performed by the device described in those
claims. 35 U.S.C. $$ 102(a), (b); Popeil Bros., Inc. v.
Schick Electric, Inc., 494 F.2d 162 (7th Cir. 1974).

2. Validity of Claim 4.

Claim 4 describes a device containing a wire mesh con-
veyor belt and collecting means, as defined in claim 1,
as well as an air blower which forces air against the wire
mesh conveyor belt’s return trip in order to dislodge any
excess salt which might become stuck in the wire mesh
openings. Defendant argues that, pursuant to 35 U.S.C.
$ 103, claim 4 is invalid in that all the elements included
within the claim were in existence prior to the date of in-
vention and that the combination of these known element
would have been obvious to one skilled in the art. In sup-
port of this argument, defendant presents several affidavits
which state that air hoses were located along the cracker
baking line although defendant does admit that air blowers
were never attached to and in constant operation with the
wire mesh belt. Plaintiff does not deny that all the ele-
ments of the device as described in claim 4 existed prior to

App. 23

his discovery, but he argues that his invention could not
have been obvious in light of the long felt need for such a
device and the fact that Nabisco, a huge multinational cor-
poration with a large research and patent department,
could not solve the problem.

However, the recent Supreme Court decisions in Sak-
raida v. Ag Pro, Inc., 96 S. Ct. 1532 (1976) and Dann v.
Johnston, 96 S. Ct. 1893 (1976) make it clear that the
plaintiff’s claim 4 is obvious and invalid. In Sakraida,
the Court pointed out that even if a device is commercially
successful and fulfills a long-felt need in an industry, a
combination patent is still obvious and invalid where the
reordering of known elements fails to produce a syner-
gistic result. 96 S. Ct. at 1537. Thus, before a court even
considers whether or not there did exist a long-felt need
for the purported invention, the court must determine that
the combination of old elements produces a result greater
than the sum of the parts. As the Court stated in inval-
idating the patent in issue in Sakraida,

this patent simply arranges old elements with each
performing the same function it had been known to
perform, although perhaps producing a more striking
result than in previous combinations. Such combina-
tions are not patentable under standards appropriate
for a combination patent.

Id.

In the case at bar, the ‘‘striking result’’ which occurred
by the elimination of all excess salt from the baking ovens
does not counter the fact that each old element still oper-
ates as it did prior to its repositioning in claim 4. In this
regard, the facts of Sakraida are quite similar to the facts
here. The patent in Sakraida involved a system using
water to clean animal wastes from barn floors. The prior
art disclosed that spot delivery of water by high pressure

App. 24

hoses was used to clean barn floors in the past. The patent
in issue provided for an abrupt release of water from a
tank directly to the barn floor cleaning the floor in minutes.

As to Namirowski’s claim 4, the prior art undisputedly
shows that compressed air was used to clean the wire mesh
belts and equipment in cracker manufacturing. All that
claim 4 achieved, as did the Sakraida device, was a direct,
continuous application of a prior known method. As such,
claim 4 is obvious as it is simply not new.

C. Conclusion

Therefore, for the foregoing reasons it is this court’s
opinion that summary judgment is appropriate in this case
as there exists no genuine issue of material fact. As
the Supreme Court has stated in Great A ¢ P Tea Co. v.
Supermarket Equipment Corp., 340 U.S. 147 (1950).

Courts should serutinize combination patent claims
with a care proportioned to the difficulty and improb-
ability of finding invention in an assembly of old
elements.

Id. at 152. It is the court’s conclusion that the Namirowski
patent does not contain that element of ‘‘newness’’ which
is required to overcome the ‘‘improbability’’ of finding
‘‘invention’’ in a combination of old elements. Defen-
dant’s motion for summary judgment is hereby granted.

It is so ordered.
Joel M. Flaum
United States District Judge

Dated: September 15, 1976.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385005_0522%3A1. Public record. Not legal advice.