Petition for a Writ of Certiorari — Harrison v. United States

Supreme Court brief1963

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Olce-Supreme Court, U.S. ‘

‘FI L ED :

No. 749. ‘ JAN 16 1963

5 x : JOHN F. DAVIS, CLERK

In the Supreme Court of the

» «United States

Octoper TERM, 1962

BEATTY SAFWAY. SCAFFOLD Co.,

x Petiticner,

ees, a = Om

_ © UeRIGHT, INC., a Corporation, : 2.

{BLA Respondent. 1st

; r

Petition for Writ of Certiorari ¢

. = a

To the United States Court of Appeals for the Ninth Circuit

HENRY GIFFORD HARDY

Si4 Mills Building «

er San Francisco 4, Califormia “?

| LY Attérney forPetitioner

SORG PRINTING COMPANY OF CALIFORNIA, 180 FIRST STREET SAN FRANCISCO S -

ee a es

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< sare INDEX is

Page

\ Citations to the Opimons Below ; : stil

tur hidiction ee 2

Questions.Presented _ Rene tae

Statement of the Case » ; . 5)

Reasons for Granting the Writ a 5

Conclusion : ‘ Li

INDEX TAPPENDICES: 3

APPENDIX A : ‘

Opinion--United States ( ‘ourt of Appeals tor the Nioth Cire wut

Beatty v. Up-Right, 306 F.2d 626 : I

" ‘ e ‘

APPENDIX BK 4 E » “= a.

Unréported Opinion —-United States District Court tor the Northern

District of Texas, Dallas Division. Up-Right and Wallace j-$

Johnson v. Safway Products, inc. and Ro) Werner Co. Inc. ;

Intervener , ah “9 : $4

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"ep

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ak Co. v. ac = Works, 261 US 24; 67 L.Ed 516 (1925) 8

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~—, i CABLE OF AUTH ate’ viaoee

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CASES , Pages |

Beatty Satw ay Scatfold r ov. Up- ct, the , 06 F.2d 626 (9th Cir

' 1962). a A, Fe ie 2

“

es eo °

ledhiganiiane Wireless Telégraph v. Radio Corporation ot America,

269 USS. 459; 70 L.Ed. 457 (1926) ; ae

; .

“Se Pe - ‘

Maguire v, Harrineton-Richardsoa Arms Co , 7H * Supyt 81 (D4

ts Mass. 1948/7000 os. ~. ; an

/ a : 7 °

Panaview Door & Window Co. vy. Van Ness, 135 F Supp. 253

(D.CS.D. Cal, 1995). | a s

5 . =. ea ® ies

Shields v. Barrows, 17 How. 130;°15 L.Ed. 158 (i855)... qo 967

Up-Right, Inc. and WaHace J. 8. Johnson v. Aluminuny Satety Prod

ucts, h65 F. Supp. 742 (D.C."Minn, 1958 ¢ @ i i

Up- Right, Inc., and Wailace J S® Johnson \ . Patent Scaffold, 14 r

2d°457 (9th Cir. 1952). ; : “4

6 c 7

Wonabinai v. Mackenzie, 138.US. 252, 34 L.Ed. 923 (1891 & 8.9

3 ic +

- STATUTES

UL S. Code, Title 28, Section 1254(1). + - ee 2

Federal Rules of Civil Procedure. Rule ,2¢h)-02) . 7

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In the Supreme Court of the

: United States .. .

_* OCTOBER TERM, 19@2

‘ Sh; “tana : 6

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BEATTY SAFWAY SCAFFOLD Co., “ hs

bke -Petitianer, |.

VS. = = , =

« : city Panes.

~ UP-RIGHT, !Nc., a-Corporation, ae

ge Respondent. g

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— Petition for. Writ of Certiorari a aiaast

To the United Statesourt of Appeals for the Ninth Cireuit

To the Honorable Chief Justice and ~ Associate Justices of the

Supreme Court of the U nited. States:

Your Petitioner, Beatty Safway Scatfold Co., of Oregon. prays .

that a Writ of C lertic :: “i issue to review-a judgment of the United

_ States Court ‘a Appeals for the Ninth Circuit entere? on its —

— No. 16,490 on July 25,1962. - ae ae

ae certified transcript of the record i the above case (page

references thereto being referred fo herein as. R.)- ing&ding the

peocrnnne? in. said Court of Appeals praraas dame eae Petition.

CITATIONS TO THE OPINIONS BELOW.

; =

The opinion of the Court of Appeals for the Ninth Circuit

1S reperted in 306 ¥.2d 626. and unoffic tally in 134 | — 379.

ss”

_ under U.S. Code Title 28, Section 1254(1). :

* 1. Does the Court of Appeals

This vpimion is repréduced in its entirety as Appendix A_ to

this Petition, and at R. 495.

There is a conflicting opinion in the case of Up-Right and

Wallace J. S. Johnson, Plaintiffs, v. Safway Products. Inc., De-

_ fendant, and R. D. Werner’ Co., Inc.. Interveno* in the United,

States District Court for, the Northern District of Texas, Dalias

Division. This opinion is in letter form and is unreported. It ts,

however, reproduced and appears-in its entirety as Appendix B

to this Petition. An appeal was taken to the Court of Appeals

for.thé Fifth Circuit and the same was argued on November .14,

1962. A decision is expected momentarily. ,

a JURISDICTION

The judgment of the Court.ef Appeals was entered on Julv »

25, 1962 {R. 495) and Order Extending Time-for Filing this

Petition for Certiorari to and including January 21, 1963, was

issued by this Honorable Court on November 19, 1962 (Asso-

ciate Justice Douglas). The jurisdiction of this Court-is invoked

QUESTIONS |

"Three questions are presented,

the Ninth Circuit have the

power to adjudicate the merits of a case when it “affirmatively

“appears that Respondent, as the assignee of an unrecorded assign-

ment: S the patent in suit, attempt$ to maintain the suit for

infringement in its name alone, when the document of assign-

ment under which it claims was-not in evidence either in the

District Court or on the appeal : 2

4 as Doe the ‘Court of Appeals for ‘the Ninth Circuit have

jurigliction or power to adjudicate the merits. of this suit for

patent infringement if. prosecuted by an exclusive licensee in its

own name withowt joining the patent owner as a necessary party

ce Z 2

ec. Saas

(3) ‘here the license under which at claims was not in

evidence before the District Court or on appeal so the ,pro-

visions thereof could be examined and determined,

(b) where it affirmatively appears that Mr. Johnson, the

admitted owner of all right, title and interest in and to‘ the

_ patent in suit, was voluntarily dismissed as a party-plaintift,

and Pad ae a ; : 1,

a (c) wheres the Court of Appeals cdncludes sau spo

that an exclusive license per se without gegard to the cont¢nts

or provisions of the document permits the licensee to sue

for patent infringement in its own name? ‘

_@ ’

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"3. Was the Court of Appeals for the Ninth Circuit correct’

.in holding as a matter of law that the Johnson patent on a scaf-

fold was infrin, in view of the diametrically opposite result

arrived at.on the Same claims of the same patent with ‘the accused

Structifres operating ‘on substantially the same principle with

substantially the same structure ? ° a

(This Court may wish to postpone the action ori this question

-* pending the decision. by the Court of Appeals for the Fifth Cir-

, cuit, This, however, involves only one facet of this Petition. )

~~»

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‘",~—s STATEMENT OF THE CASE pee

This isa patent infringement action originally filed by Wallace

J. S. Johnson as owner of the Johnson patent in suit and his

exclusive licensee Up-Right Inc., Respondent against Petitioner,

Beatty Safway Scaffold Co., of Oregon. In the Pre-Trial Order ‘it

a >

was agreed by both parties that Wallace J. S. Johnson was the

owner of the,entire nght, title and interest in the patent «n suit

(R. 17-18). Jonson was therefore the real party in mterest under

Rule 17 of the Federal Ruies of Civil Procedure. It was likewise

There was no effort by Respondent to offer the license document

(R. 64) as counsel stated it was ipcelevant. " jo

-—<®>

. . . ’ '

agreed thac Up-Right ts and has been Johnson's exclusive licensee,

At the beginning of the’thal (R. 62) and long atter the Pre

Trial Order, counsel tor Up-Right, -Inc,. cepresented that an old >

unrecorded assignment had just been discovered and — vos

patent in suit had been assigned some tive gears earlier by Johnson

to Up-Right, inc.* The trial court permitted, the voluntary dis-

missal of Johnson as @ party-plamett without amending or alter

ing either the pleadings (R. 4, 7) oF the Pre-Trial Order {R. 62)

The record does not indicate any offer in evidence of the newly.

discovered assignment’ document _apd the court did not rule upon

its admissibility. The trial was had before a jyry. Neither tpe

exclusive license nor the assignment was in ev idence before. ‘the

trial court and was not before the Court of Appeals 6 on the hear-

ing. Thete was a fair warning by Petitioner of this failure of

ptoof (R. 176) just before Respondent, Up-Right, reste. its Case.

In spite of this failure of jurisdiction and proof, the j jury. brought

in a verdict for Respondent and a judgment wy s entered thereo

which was affirmed on appeal. The fatal error pf this” ailure of

proof aiid therefore | lack of jurisgiciion of the subjectematger was °

not relied upon by Petitioner until the appeal. There was ,a’ Peti-

tion for Rehcaring in the Ninth Ci ircutt further pointing out the ,

errors of power: and jurisdiction’ which was denied without con?

o ~

ment. : te A

Thee ; are the facts on which Questions | and 2 are based.

With respect to Question 3, Claims 1 and 2 of the, Johnson

patent in suit were relied upon to support the charge of ingringe-

ment? (R. 61). These’ claims were found by the jury to 0 be valid ,

*The Suspect Qature of the missing assignment is * ntightened by the

facts that between the date of its allered execution and the time of this

trial, Johnson was asserted as the owner of this patent in U'p-Richr and

BW’ allace J. S$, Jobnion v.° Patent Scatfold fv, 194 F.2d 457 (9th, Cir

1952) and in U p-Right and Waiiice fh S _fopngon r. pb ae Safe?)

Praducts, 165 F. Supp. 742 (D.C. Minn. 1958). Likewise in the only

license granted by Respondent, dated May 1, 1957 (R. 102, 308, Ex. 8.

R. 399.).» Respondent does not warrant that it is the on wer of this patent

but merely that ithas the right to gtant the license. cee '

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it is apparent thet the jary gave them a brosdenéd interpretatio

beyond their clear language. These very same claims were before

Judge ‘Estes in the District’ Court “in Dallas. The Aidek dpvice

which was charged to infringe in the Dallas case. 1s that shown”

» ain the Grower et-al’ U nited States patent No. a4 1, 616 which

issued: Juné 21, 1960. ‘The Court can take judicial notice of this

public document and the fact that it. issued over the Johnson

. ‘ oe. : ; ; .

patent here in ‘suit, as it shows on its. face. The Aldek detice

operates upon substantially the same principle as the Beatty device.

and this principie aud stricture Was held not to infringe the John

son et dl patent in suit under an Zppropriately restricted interpreta

tion of the sane, claims, which was supposted by Findings ot

Fact. Thus, the interpretation by the Dystrict Court in the Fifth

Circuit of the identical claims “with™espect to substantially iden-

tical structure and principle, reached a. diametrically opposite

result'¥rom that affirmed by the Ninth Circuit. the District Court

in the Fifth'Ciramt had more prior art and had the adv: antage ot”

a more informed ex Spert, with the result that the claims properky

“were given ry Barrow and restricted inte erpretation consistent with e.

their position in the art, while the interpretation approved by the

Ninth Circuit was broader than. Avas W arranted by the danguage

of the; claims, and based “upon pothing more than*the general

verdict of infringement. ,

An appeal was taken by Respondent to the Fifth Circuit Calan

of Spee After briefing. the casé.was argued and submitted on

“Novembe POG) with the ‘decision’ expected. momentarily

REASONS FOR GRANTING THE WRIT | :

55 hy)

This Petition presents important questions Wyte ts the power +

of the trial court to enter a judgement, and the tier ow the Court

<»

of Appeals to determine issues based upon such a judgment. This

1S something of general : “nportance and appligation which this¢

Court’ has not detinitivels sonsidered for over one hundred years

(see Shiflds 1. Barrows, 17 How. 130: 15 L.Ed. 158 (1855)).

The volumtary withdrawal of Johnson as a party-piaintitt left

; only Respondent. Up-Ripht, fric., as the’ party, asserting, any inter:

est uv the Patent. Its interest uk stated to be based upon a newiy

discovered ‘unrecrded apsigainent which? was not, p! laced in evi

dence ands was therefiire not “before the trial court.or the Court

of Appeals. Without proot of thissdocument of eo ment fohn-

+ ¢ j

SON. remained. the only « party invinterest and so wis the indis-4

‘nsable party. The effect of this Failure of proof sae the trial

court in ther positi m of entering a judgement without having before

it the only party essential fo the’ merits of the question. -

“This Court in Shields Ut al : « Bareott. 17 How. 130, 136; 15

L.Ed. 158; 461. held: wees ou

“It remains true, notwithstanding the Act of Conzress and

the 47 "th rule, that.a citcuit court can make no decree atfecting

the rights of an absent person, and can make no -decree

Setween the- parties. before it. which so far involves or de-

pe nd8 sHpon the righYs ofan absent person. that complete

and final justice cannot be done between Fhe parties to the

- Suit without atfecting those rights.” ae

And. again at page 163, this Court held:

. “It is enough to say that the defenda ants to it were never

lawfully before the court: that the court never obtained

. . jurisdiction over those of the partes who were citizen of

the State of Loaisianayand-aragnest-thentaras—Fhomas-R-

Shields, who. though made a mart ro the original hill by

amendment, as a citize n of Mississippi: leaded that he Was

a citizen of Loutsiana, and wes thereupon stricken out of

the original bill|.and was only a defendant to the CrOgs-

bill: that it never had fawfully before it such patties as

were indispensable to a decree for the specific performance

oft the contract, of compromise, or far the rescission thereof.”

e mie ° + A. E

° “9

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ce ts 7 >

This decision rested on the broad ground directed to the power

> of the court to “adjudicate. a person's rights without that party

being actually or constructive ‘ly before the Court, Ww hich" Is exactly

the situation here. \ While the Shields case (supra) Was “one in

equity, it would appear that the § same rule must surely apply in

actions at law such as the action here. ine ,

The voluntary withdrawal Gf Johnson. the admitted real party‘in.

interest, combined with the failure to prove the assignment P

Up-Right, Inc.. not. only deprived the District Court of juris:

diction of the patent subject matter of the action; buf left the

District Court without *power to enter any judgment affecting

these patent rights. It ®ould seem elemental that the Disfrict

Court and the Ninth C ircult Curt of “Appeals had no power to

- adjudicate or affirm patent “rtehts in ‘the absence of the admitted

owner, Johnson.” ¢

The objection as to the lack of jurisdiction of the patent subject

matter in this action ané@ the lack of power in the court to enter

any judgment with respect thereto, ‘can be made at any time, and

it was here made upon the appeal to the Ninth Circuit avithout

success. Rule 12 of the Federal Rules of Civil Procedure sub-

paragraph (h)y—-(2) states in part:

“* * * that whenever it appears by the suggestion of the

parties or otherwise that the court lacks jurisdiction of the

subject matter, the court shall dismiss the action.”

The ruie gives the courts no option or alternatives. This is pro- ;

ceduraj confirmation of the fundamental that the court does not

have the power to grant any judgment or to approve the same.

when it- appears that it does not have jurisdiction of the subject

matter. ‘

It is necessary for this Court to rcaftirm the doctrine of Shields

*y, Barrow (‘upra) in order to prevent the lower COUTES from

expanding, their power and to prevent adjudication of rights in

the absence of the party who admittedly owns them.

° - a

It has. beet’ something over seventy vears since the Court in

‘ : x . >

Waterman v. Mackenzie. 138 US. 252, 34 L.Ed. 923 (1891)

enunciated the principle in Patent Law that only the Bwner of a.

patent could sue for the infringement thereof, and that a licensee

of Wpatent who does not receive the rights to manufacture, use

and séll has no right to sue for infringement in bis ewn name.*

The nature of this principle has to be constantly re-emphasized

to protect those accused of infringement from oppressive litigation.

If it be considered here that U p-R. ht. Inc., could not or did

not prove its assignment of the patentghere in suit, then being

the only partyepiaintiff, i was incumbent upon it to prove that

it received by its license the full rights tantamount to a transfer

of title, and this can only be accomplished by reference to the

license document. Respondent made no effort to produce the

license document in order to show what@vas conveyed because

its counsel said it was irrelevant (R. 64). The license document

was not before the District Court or before the Court of Appeals.

There is nothing in the record to show the terms of this license.

except that it is called an “Fxclusive License”. Such an allega-

tion standing: alone is. not sufficient to establish that Resp nident

‘had the right to- sue in ats own name for infringement, Panavieu :

Door W indou Co. v. Van Bess, 135.F. Supp. 253 (D.C. SD:

Cal. 1955); Maguire v. Harvington-Richardson Aan Co., 79 F.

Supp. 81 (D.C. Mass 1948). Accordingly. “nor only dbes the

proof show that. Up-Right could not sue-for infringement in its

. .

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me sid ° é

*This Couii teatiirmed this principle tn Cron x t. Nye Tool Work,

261 U.S. 24: 67 L.Ed. S16 €1923) in. considering an assignment. And

wean in Iusependent SV @leis Telegraph +. Radio Cas povatran of Ames-

269 U.S. 459; 70-L-Ed. 357 (1926), where the Courtheld: (p 468 )—

The presence of the owner of the patent asta party is indis

pensable not only to -give jurisdiction under the patent laws but

also, in Mest cases, tO enable the alleged infrin rer tO re “spond In

ome action to “all claims of infringe ment for?his act, and thus cither

to defeat all claims in the one action, ur by sati Sfying one AMverse

decree to bar all subsequent actions, * . " }

name alone under its license and that Johnson was an indispensable

party, being the owner of the patent, but also shows that the bring-

ing of the suit originally in the joint names, the parties themseives

did not coaidcs that Respondent, Up-Right, Inc., Could maintain

a sutt for infringement in its own name under its license.

Since Johnson was an indispensable party and since under the

rule of Waterman i. Machenzie. (supra), Respondent could not

maintain ap action tor infringement in its Own name, Johnson

became an indispensable party. W hife itis true that under Rule

21 of the Federal Rules of Civil Procedure, the adding or drop-

ping of parties may be made at the discretion of the trial court,

the voluntary withdrawal of the real party in interest deprives

the court of jurisdiction of the subject miatter. Such lack of

jurisdictiap cannot be waived. but may be brought to the court's

attention at any time. As stated earlier, Petitioner did not raise

this issue until the appeal to the Court ot Appeals for the Ninth

Circuit.

This Court has not spoken ‘direetly with respect to the power

of the District Courts and the Courts of Appe al to sua spont:

determine that a document termed an “exclusive license” and

which is denied (R. 7). gives jurisdiction of the subject matter

without having the document itself in evidence to determine the

substance ci he provisions conveying the rights.

“-

While this case may seem like the fall of a sparrow! néVerthe-

less, the basic considerations are fundamental and far reaching.

and even the meanest of litigants should be protected against the

oppres ion of the courts.

It 1s necessary for thissCourt to: intervene in order to eliminate

the aggressive threat of the nareexectamms of the Johnson patent

. d

masquerading as and being asserted improperly as broad claims,

establishing an unwarranted monopoly to dominate and control -

the entise industry of lightweight falding scaffolding.

No question of validity of the Johnson patent m= suit ts in-

volved. The direct conflict of decisions of the District Court in

10 °

the Fitth Circuit and the Ninth Circuit ¢ ourtof Appeals aS h re

spect to the werpretation of acd the scope to be given to the clauns , +

of the Johnsvé patent. In other words, the extent of the monopoly

attorde 4-by the patent claims. The Distr&t Court in Dallas held

“that the claims of the Johnson patent in the light of the priore

patents and uses were directed to,a combination of indiyiduai

elements in a very old and crowded art and involved Pace

“elements. Accordingly, the clauns were given only a very narrow

range of equivalents and interpretation,. and when so viewed, the

accused Aldek device did not infringe. “The intepretation ot- the

claims was made to accommodate their proper relationship to the

prior art, and this interpretation was supported further by search-

ing Findings of Fact and Conclus‘ons of Law. In® the U p-Right

case aiitimed by the Ninth Circuit, the jury merely fd that

the claims %were infringed. There were no special findings with

respect to infringement, and there is no wey of determining just

what caused them to render such a verdict, what relative ettect

they gave to the prior patents and uses, and to give the ciaims

a broad range of equivalents which far exceeded the normal

language of the claims themselves. The complete unreliability

of such a verdict in patent cases 15 apparent and this Court should

grant the Wr in order to reconcile the conflict between the

careful consideration of the prior art by the trial judge in the

District Court in the Fifth Circuit supported by appropriate a

Findings, with the unpredictable and unsupportable interpreta- -

tion of the jury verdict sustained in the Ninth Circuit, .

It is necessary to reconcile this conflict of interpretation in

order to avoid confusion tn this industry. A ianafactores ‘who ————————

makes, sells or uses a folding scatfold structure within the borders

of the Fifth Circuit may do so freely, while to make, use or sel!

the identical structure or substantially identical structure in the

Ninth Circuit is at present illegal, and is completes unpredic table

in the other eight circuits. Likewise, the United States Govern-

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ment would -be forced to continue to pay tribute under the broad

: ‘interpretation of these claims, as it does at the present tume (R.

308, 399) all in order to prevent an aggressive multiplicity of

Lawsuits under the Johnson patent., The » vigorous, litigious char-

acter of Respondent is well-known in the courts.

f : .

cin CONCLUSION

For each and all of the foregoing reasons, this Petition for

Writ of Certiorart should be granted.

Respecttuily submitted,

os]

HeNry Gs¥ForD Harpy -*.

Attorney for Petitioner

( Appencices Follow)

* ; / Appendix A :

litted States Court af Ap peais

turtoe Nin Cercuit

No. 16.490 July 25. 1902

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Up-Right. Inc. a Corporation,

i 4 : Ap pelice

Appeal trom the U sited’ States District Court

tor the District of Orevor

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Betore. HAMErY and Rott ser. Crrcurt Judges and

Bow) nN. District Judge Pe

PER CURIAM

Thiy is a patent intringement. case in which a jury. returned

a Verdict in-_faver of the appelice and against appellant, respec-

nively plagmitt and detendant in the ‘Tria! Court, tor mtrnge

ment or appellee's patented device by appellant s accused device.

and for damages incident to the infringement Appellant tunely

moved tor a directed verdict and for udement mow. or for a

new tral aid to alter or amend the judgment entered on the

verdict’ which motiens were demed. and Mis appe tollowed

The Tfiat Court bad and this Court has junsdiction. 28 US¢

1338 and 1291 . .

> .

os -

2. . Appendix

Appellee’s device in question ‘is a portable “and collapsible

scaffold patented undtr letters patent 2.438,173_on March 23,

1948. Appellee’s basic structure under the patent is a stand made

of ap aluminum alloy. It is supported on either end by two. sets

of poles upon which a platfortn rests.-A ladder which is also a

supr’rt runs diagonally from a positic mon the bottom frame bar

hetween,.the bottom ends of one set of. poles to the top of the *

ent and detachable hinges, the ladder -

other set. Due to

cand tw ot poles may] be rotated in such a way as.to col-

apse or erect the scaff®id with telative ease. and allawi ing its

transportation vi horace in its collapsed condition without taking

up much reom.

The accueil $cattold is almost identical with app@llee’s scatiold.

The only difference is in the location of the ee which results

in. collapsing and folding the accused scaffold in’ a: somewhat

different way. It has not been alleged or shown het the appel-

lant’s accused scaffold is in any way an improvement over appel-

Jee’s, but mergly thac it operates somewhat differently”

The appeal presents several questions

Jurispetion. At the tral the Court became con winced thar

the? interest of W allace J}. S. Johnsor had been cena rred, and

dismissed, the original patentee Johnson as a party plaintiff. On

this appeal“now for the first time appellant contends that after

Johnson's dismissal, the Tria! Coutt did not have and this Court

does not have jurisdiction of the action because. appellant says,

appellee did not prove its title and Johnson was and i8 a neces-

sary party. Such jurisdictional objection, as to’ timeliness, can as

appellant asserts. be made at any stage of the proceedings in,

either Court, provided the objection is based upon sufficient

grounds

That hurisdictional objection. includes the more specific con

tention that the Trial Court did not by specific order eEXpressi\

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admit in evidence as an exhibit the assignment (Fx. 1-B), from

’

On 7 peer feats r a oe a A a ae eed ene ee en ae a wT ore t

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nk, PONTE Ae mame een Benanee

CA ONO OO cme oC Pot) geen

PR ON ee Oe

Appendix

Johnson to appelice, and that without that exhibit the Court was

‘yo

deprived of necessary evidence of appellee's title. Attached to. -

appellee's brief is an athdavit by the District Court deputy clerk

‘containitig an avofficeal list of documents received in evidence

mcluding this Exhibit T-B. But, as appellant says, the record

does not show any specthe order by the Trial Judge expressly

admitting in evidence that Exhibit 1-B. We do not decide

whether or not that afhdavit and its stated facts are alone suth-

cient..to reflect the proper admission of such assignment. in evi-

dence because .our decision if favorable to appeliant would not

dispose of the matter. There yet remains to be considered im-

portant additional evidence supporting appeliee’s right to sue.

OF interest here is the landmark case-of Waterman v. Mac-

Kenzie, 138 U.S, 252, holding that any “assignment” or transfer

which ts short of grantifig the “exclusive right to make. use and

vend” the invention inf the United States is merely a license

which does not permit the licensee to sic in has awn name. Thus.

the exact Mature“of the transfer and the rights which it conveys

must be closely scrutinized: i

In connection with its consideration of the deletion of Johnson

as a°party plaintat, the Trial Court asked appellant's counset if

he had any objection, and stated “he (Johnson) claims he has

transferred al! of /gs interes: to the corporation” (parentheses

and emphasis added). Counsel-for appellant in part replied My

only objection, your Honor, ts that it comes at a very late time

I am only interested in the rght thing to do, and | have no

obiection”. This would clearly indicate that appellant then, recog

nized the existence of the assignment from Johnson to appellee,

and that appellant waived its right to object for lack of such

aaet

-~-: . , ° “a

jurisdiction, Thereupon the Court ordered de!ction of Johnson's

name as party plaintitt without objection from either party,

The information cSntained in Johnson's own claim above men-

° e A :

tioned as that Johnson “personally claimed that as a fact he had

‘a:

4 : Appendix

transferred all of his interest in the Zane to appelléa Appellee s

‘»beled that patent “as l,

and’ 1-A and q-B are the two Scams we located Siypday, and

attorney stated at the trial that ‘

they are before your Honor, show ing title in the plamtif?’ (em-

phasis added). To those statements at the trial appellant's attor-

ney made no objection. | .

~ After discussing appellee's exhibits near the close of plaintif®

"case in Chief, appellant's counsek informed. the Court that he aid

)

not wish to exercise his reserved right to cross- eymine Mr. John?

son further regaading éxhibits. and returned the exhibits inctud-

. ing the assignment frgee—Johnson to the appellee cotporation

after appellant’ s counsel had had those exhbits in his pogsession

for study overnight. oh

Respecting ‘appellant's waiver during the trial of objection to

appellee's title and right to sue, and not as proof of untimeliness

, of appellant's jurisdictional objection, the circumstances referred

-*to in the next two paragraphs are very significant and important

In its motions for directed verdict at the close of appellee's

case in chief and again upon the close of all the evidenc e, appel-

lant baséd those motions only upon aiieged: invalidity and non

infringement of appellee's patent and.lack of proof of damages.

Appellant die not at those tinfes, hor at any’time during the

trial nor until this appeal, object to the Trial Court's jurisdic-

tion, nor object that appellee did not establish its right ‘to sue,

nor did appellant during the trial dispute the fact that a// of.

Jehnson’s interest kad been assigned to appellee. ° ee

Finally, standing above and controlling al! other related evi-

dence is the agreed fact of the pre-trial order which states that

appellee is the “exclusive licensee” of the patent. , i

From all of the foregoing it must be concluded that appellee

_tecersed from Johnson the exclusive right “té make, use and

vend” the appellee's patented scatfold: ire the United States, and

that appelleeemay sue in its own name for enforcemertt of its

as Appendix 5s

rights under: that patent, These facts amply mett the test laid

déwn in Waterman, supra. We accordingly hold that appellant's

objection to jursediction is not well taken:

VALIDITY OF PATENT,” Appellant contends that the normal

presumption of patent validity, with the burden of proving in-

validity resting upon the one asserting it, as provided in 35

US c A. § 282, does not “apply where the Patent Office at the

time the patent was issued did not, have knowledge of prior

patents of the prior art. In_ this cote: the Patent Office when

appellee's patent was issued. did tot have efore it knowledge of

the Martin patent 1.912.997, calling: for cin allegedly similar

scattold to the one in issuc

Appellant's contention appears to Jnisconstrue the presumption

involved. The rule ts that the presdmption always applies, but

when it ts, shown that the "Patent: Office did not have _ prior

patents before it, such patents muy rebut the presumption ot

validity, This depends. of course’ upon whether the undisclosed

prior patents are substantially the same as the later patent in

question, Thus, ar the outset the presumption is ‘still applicable.

Yt remains to be seen whether that presumption has been re-

butted by.an undisclosed and signincant prior patent. We think

as indicated by the Trial Court that consudgration of the ilus-

trative drawi Ings of the Martin patent should leave any one uh.

convinced of substantia! similarity. of the Martiné patent with

appeilee’s patent. %

App ellant contends that the des ription contained in Claim 1

Sf appellee's pateat as invalid because it omits an essential ele

ment which ts reqdired for the scatfold to operate. The omission

is of a bar /which is hot a fixed part ‘of the scaffold, but is

attaghed atrer the scattold is assembled between the two sets of

vestien poles supporting the platform, This bar.is used far addi

tional support and prevents the scaffold from collapsMe while in

use,

6 Appendix . be i

* Against that conténtion appellee urges that the essential struc;,

“"

ture patented here is a collapsible or folding scattold, and ‘th

‘>

Viewed as such, the brace omitted in Claim 1 would not

essential because tt has nothing to do with the easy erectigt

foldability of the scaffold, but, only supports tt while in use. On

the other hand, the scaffold, once erected, could not be u used with

out the omitted brace, and therefore fhe brace*is an essential

part of Claim 1 respecting operability of the patented device as a

usable scaffold, as appellant asserts.

Appeilee contends, however, that in such a situation resort

may be had .to the specifications contained in the patent which

clearly describe the brace in question. However, Graver Tank,

etc., v. Linde Air Products, 336 US, 271, held that if the claim

is avambiguous, the specifications cannot be resorted to to save

the patent. This ruling has been followed by this Court in

Winslow Engineering, ete., v. Smith, 223 F.2d 438. But the

usual situation in which this rule is applied is where the claim

% . . a ed bad .

is invalid because of overclaiming, so that specifications cannot

be used to make them less inclusive. [here is good i.ason ‘for

‘not applying that rule here, and we do not do so, because th

- . . ‘ . ~/ ® ce » 7”

claim is wder-inclusive, and therefore ambiguous, requiring a look

at the specifications to explain the gap or to fii in ‘the details.

That conclusion is, where ambiguity exists, permissible i: 1 not im-

plied in the following: excerpt from Graver Tank, supra. quoted

in Winslow, supra, at pages 443-444 of 223 F.2d: When

they (the cases) do so (imvolve overclaims) to the. point of

invalidity and are free fram ambiguity which might ustify resort

to the spectfications, we agree with the District Court that’ they

are not to be saved because the latter are less inclusive.” (paren-

theses and emphasis added)

Further, as a practical matter this discussion as to the € ‘aim,

| omission is somew hat academic bechuse even if Claim 1 is held

Appendix”

invalid, Clam > is identical except that it iichudes a dbactipstion :

of the brace omitted in Aclaim 1, and, if there, is infringement,

is would ope rate agamst Claim 2 of appe Lhe ¢> patente and require

@ . :

an affirmance of the jury's verdict. a ‘

Appellant contends that the s same basic structure patented by.

ep gence existed in the, prior art, and that Spice appelice’s patent

does 8 pot add — new to the prior art, ‘a is umstalyd as te

both Claims | and 2 eo ay sree .-

Whether F appeltce” s 5 etnicacombciied 4 patentable Mp rgvement

over the prior art ts.ultimately 4 question of law based upon the

rule that ‘The mere aggregation of asnumber of old parts or g

elements which, in’ the agerevation, perform or produce no new

_ or different function of operation than that theretofore pertprmed

or produced by them, is not patentable invention’ Lincoln Ene

Voor v, Stewart: Warner Corp., 303 US. $45; 5 9. But where there

is substantial evidence of uniting old art parts or elements im |

san manner that ‘they form or produce anew function or opera

‘tion, the question df fact as tow hether thes do so or not may

up ‘such evidence be submitted to the jurv. aS was properl

done in thas case Moist Cold Ref. Co. v. Lou Johnson CoS (9

Cir. 1957) 249 F.2d 46. 255, c&t. den. 356 US. 908) There

this” Cc court “ruled that’ ‘Again, w hether'thé claims of the patent im

sult “were sufhiciently definite to satisfy the statutory reguuirement

as te particularity is a questfo ‘ot fact, decided by the yurv in

appellant's favar~by its answer-to the special interrogatories,

“We believe the presumption of validity, arisine from the Issuance

of the patent, plus the expert testimony introduced. IS Sufficient

to make this a question for the jury to determine Very, simi

lar to that just quoted is the factual situation here °

Appellant contends that if the real invention here is tolda

bility of tharscaffold., then appellee has not -complied with 35

uke s $112 geld § $33, RS ISSS at effect when m Srellee's patent

issued), which requires that the’ Naventor roi out anid dis

8 h * Appendix

” tinctly claim the part,” improvemem or combinatien’ whjch he

claims as his invention or discovery”. Appellee’ s Claims 1 arid 2

do not expressly claim foldability, but with the specifications and

drawings do explain how the integral parts of the scattold are

“hingeably” connected or detachably conneeted. Appellant urges

that respecting foldability of the scaffold it is necessary to have

a particular type of offset hinged ceunection, as well as certain

proportions betWeen the various elements of the scattold, in order

° .

to achieve the desired result. . ' e —_

On that point appellant s contention essentially is that Claims .

| and 2 are inoperative without a more detatled description of

the type of hinges required to effect the proper folding of the

scaffold. It would appear necessary for appellee to particularly

describe the type of hinged connection in order to claim “a hinge |

Appellant charges appellee with overcaiming, and urges that

by claiming only a “hinged connection” appellee has attempted

to claim all hinges when in fact only specific hinges will accom-

plish the desired. result. The drawings in the%Spatent indicate

that three horizontal bars supporting the platform are connected

on One side on top of the trunnions, while on the other they are

connected underneath the trunmons. This “difference on either

side is referred to,as an “‘otfset hinge;’, which allows the scaffold»

to fold in the manner required. .” .*

‘Appetiee contends and we agree that the term “hinged con-

nection” can be easily explained by referring to the drawings

and specifications where the type of hinge is explained, and

for that reason we think appellee has suthciently glaihed the

hinges and other components necessary to accomplish the im-

proved foldability of appellee's device, as in effect the jury found

In this case in returning tts verdict, the jury was required

to answer the interrogatory, “Do the individual elements in the

claims when joined together prgduce a new, improved and addi.

tional result” and answered: e ° We think there is ample

evidence in this case to support that special verdict of the jury

Appendix ae

The patent in the prior arf closest to this one is the Martin

- patent. A briet comparison of the two indicates that the Martin

patent is much more cumbersome and would not bE as casily

_ adaptable to the quick tower construction” for which appellee's

structure was partially designed. The ladders in’ the Martin

patent are at cach end of the platform, » hile in appellee's patent

they are secured sately and diagona lly between the end poles.

Thoug th the same result ip accom plished, i.¢., 2 toldable scattold,

appeltec’ 8 device ureatly improves and adds to the Martin device,

and for that re dson provides a pater aitable Waproyement over the

prior art, it hi tanony with the jury's general and special verdicts.

W’ hile Ht is true in this case that appellee’ Ss ivention incorpo

rates many of the elements contained in the prior art, at Is also

true ‘that they are first, combined in su@h a wayeas to fun@ion

differently, and second. supplemented by the addition of hinged

connections wich enable the scattold to be erected and folded

quickly. Fach individual scatiold unit under appellee's patent

can be attached on top of anothgg ufit with relatively great speed,

and there is evidence in the record that appellee constructed a

204-foot tower in exght hours. In addition to witness Johnson's

testimony, also in this record :s the high!y persuasive testimony -

of the appellant's own expert witness that,in spree s patefited

Re! the prior

art. We hold that appellee's patent is valid as agaist appellant's

i ; *» e 4 .

device Lhere very detinitely was an advance

_ ° . 3 7

attatk, -

& ‘

INFRINGEMENT. Appellant contends that. there 1s no literal

re here and that the doctrine of equivalents ts not

available, for one reason because Johnson admitted that the

allecedly simular connection wece not equivalent connections.

‘Johnson was not the appellee but made that admission as a

WITNESS. ;

‘

i .

Mr. Justice Jackson stated in Graver, swprg. that there rarely

‘ °

is a literal infringement: a@d there is not literal -@nfringement

—e,

£3

—_

10 " - Appendix a

“here hectuse the hinged conmeytions are in difterent locations on

the two ‘scatfoids and the detachable connections are on different

elements. ve ; ~

As to inirmegement of appellee's patented scattold by the ac-

cused scatfold, the real question is whether the doctrine of equiva:

lents applies. The essence of appellee's clam to accomplish tolda

bility is that there be two hinged connections; then the other

parts of the scaftold can be rotated about the connections ‘to

accomplish the folding In appellee's structure, the two hinged

connections are on the upper portion of the two supporting

poles: the detachable comnection 1s on the lower portion of the

ladder: In appedlagt's structure, the hinged connections are on

either end’ of the Bavonal ladder, so that one is on top df a

supporting poie, the other on the bottom of the opposite sup-

porting pole; the detachable connection is on the upper portion

of the other supperting pole opposite the hinged connection. It

can be seen from this that appellant has merely shifted the same

basic conrtections to different locations, but in such « way as to

accomplish the same result. It is true that the folding of appel-

lant’s device 1s awomplished somewhat differently, vetsthe basic .

“foldability” 1s stili accomplished by the necessity of two hinged

and one detachable connections.

. This seems to be a perfect case torsapphication of the equiva-

lents doctrine which, among prohibited infringers, includes de-

vices substantialiy sumiMr ito the natented device. We think ;

did the jury that the “secused device of appellant ices

appgllee’s patented device.

INSTRU@TIONS. Appellant next contends that the Court erred

in failing to ,give two of tts requested instructions. The -first

of such requests 1s that. nm effect, if appellee's patent claims

hinged connections generally, and a special kind of hinge 1s neces-

sary, the claim wield be invalid? This same basic. instruction

was in substance giver to. the jury many times durittg the course

. .

: at

e : Appendix “Sy

of the Courts instructions. The Court. in effect, instructed the

jury to examine the claims and determine whether one skilled

in the art could determine whether the “hinged connections” were

sufhcientiv descriptive of the hinges necessary to accomplish

foldabslity, that they could look at the specifications and draw.

ings, not fo expand or limit the claims. but to explain them.

and that if they found that all hinges were claimed, the patent

qvas invalid, but if limited to a particular type of hinge. it was

valid. *

Appellants second requested instruction, not given by the

Court, is thay. in effect. if appellee overclaimed all types of

inges, some of which will and some vill not accomplish the

- intended result. and af a specific tvpe of hinged connection was

found to be required, then it has abandoned any special hinging

in the invention and dedicated such hifiging to the pablic. it

‘ ¥ ‘ ¢

does not appear from the finstructions that the Court gave this

one, but the Court did fully and properly instruct the jury

respecting the effects Cf overclaiming, if any was found to exist.

and did otherwise fully and properly jinstruct the jury) The

Court did not err in refusing to give appeHant’s requested:

iRstructions.

PResuDICAL REMARK. Appellant contends that. after’ the

jury had retired ‘to consider their verdict and then were called

back by the Court to see if they needed assistance, the Trial

Judge made a prejudicial remark in response te the foreman’s

question. The foreman ‘

of royalty, Le. the rovaity imposed tor the reasonabie use of the

invention by the infringer, was linuted to this particular case or

to “anything else’ The Court replicd that ir was limited “just

to this case” Appellant urges that it wos efror tor the Court not

the 520.42 requested by appellee for the sate of one scaffold unit

by the appellant. However it clearly appears that the Caurt hac

fully and correctly instructed the jury or the measure of damages.

isked the Court whether the GUCSHON

i2 - Appendix ®

Besides, the Judge's response ‘just to this case” was correct as

no issue was then before the Court and jury respecting the

recovery of dgmages other than those caused by the’saie of gone

accused device of the appellant. No error was “‘commutted by. the

Trial Judge by this answer to the foreman’s questien.

DAMAGES. Appellant contends that appellee did not estab-

lish any royalty rate whych could be used by ‘the jury in assessing

damages and that appellant's motion for directed verdict should

have been granted for failure to prose any damage. !

In this kind of action, the successtul patentee & entitled either

w an established royalty rate, if there is one, or, if “not, & rea-

sonable royalty, rate. There was evidence of one license granted

by: appellee iy Pe government for two patents at the rate of

S‘« royalty. The Court instructed the jury that they could con-

sider this lice 's¢ fate in determining what a-teasonable rate of

royalty would pe in this case. There was no evidence of other

royalties paid by othyer licensees to appellee The jury returned

a verdict of 312.25 based on a 3% royalty on the one $408.50

sale. .

A reasonable royalty is one which a licensee would be willing

to pay and still make a reasonable profit out of usé of the pat-

ented article. The Court instructed the jury in almost identical

terms. This appears to be a proper instruction ;

Appellant contends that the lease to the government involved

two patents, and this way nui made clear to the jury, because the

Court only instrucied them that they could not exceed the 5%

rate se by -that lease The fact that the jurv found a

se rate wed indicate thar they recognized the ditference#

between the government lease and one with private enterprise

in any event, the proper st. indard for measuring damaves Was

given to the jury and their verdict base@@&n the rate of 3/7 on

the one sate in question as found by the jury was not excessive or

unreasonable under the circumstance:

tig

: Ap pendix 13

In summary, our examination and consideration of the record

and briefs and arguments of counsel convince us that this case

was tried by experienced patent lawyers and was by the Courts

instructions thoroughly and painstakingly submitted to the jury

upon confiicting evidence as to all the material issues in the case.

In addition to requiring their genéral verdict, the Court sub-

mitted to the jury the following questions which they answered

in the following manner: |

(1) Does the written description state the manner of construct- |

“ing and using the scattold in full, clear, concise and exact terms

so*as to enable a person skilled in the art to make, construct and

use it?

Answer of the Jury: |” Yes.” ws A

(2) Do Claims | and@2 port out and distiactiy. clair inven ' ee

tion ?

Answer of the Jury) Yes. |

(3) Do the individual elements in the claims when joined

together produce a new improved and addittonal result 7

Answer of the Jury: Yes.” ;

In accordance with the three spectal findings and the general

verdict of the jury. the Trial Court properly entered its judgment

reversible error we affirm the Trial Court's action. So Orperen.

(Endorsed) Per Cartarm Opinion Filed July 25, 1962.

Frank Ho Schmid, Clerk

SS yh ee Yoendis | mr. *

United States Distreuct Court — Northern District of Texas

Dallas 21, ae ———

on Chambers of | ; :

, for iw ares Estcs .

Chiet Judge ° . . ‘ :

| | June 20,1961 ;

_ «. £. Hastings Ackley et

. Wilson Building

Dallas 1, Texas ; :

Mellin, Hanscom & Hursh

. Oscar A. Mellin

301 Sutter St

: a

San, Francisco 8, ¢ ‘slik: .

eirora Johnson & Stephens —

Mr. Paul Carrington & Mr. Marvin Sloman

_— - 1700 Mercantile Bank Bide =

Dallas 1, Texas @

Gent leme en: . S

Having heard and viewed. the evidence presented and studied

thoroughly. the-excellént briets presented te the court, T have

oi determined that plaintitts: Johnson patent has not been antringed

; #by thesiccused Aldek device of Defendant and Intervenor Plain

tiffs’ patent. a combination patent ina very old and crowded a

which embodies no new individual elements, 1s entitled ‘at most

to only ay very narrow range eof equivalents. The accused device

—————————

ine

and more effitient in operation, and 1s substantially and nPareria!ly

a lifterent im structure. mode of operatyax. and result

Z " t i J 4 « j a 4 ®

sno" tall within this range The Aldek device 1s is sumpler.esater—————

e ©

( ge

; Appendix ; is

It as theretire unnecessary to decide the issue of the validity

) *

‘ of plaintitts Johnson patent :

The court 1s turther ot the opraron that no attorney s tees should

he awarded ih this case = |

Defendant and Intervenor wil! prepare and submut findings ot

fact, conclusions of law. and judgment i accordance: herewith

Nery truly yaurs. :

: Ss. foe 1. bstes

Joe E Estes

US. Distrnt Judge

JEEcb

e ‘

' 4 Re

. r)

: }

7 o

‘ e

a ee nee ED aro

} ie

- ’& .

». *

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.