Petition for Writ of Certiorari — Conaway v. Minnesota

IN THE

_ Supreme Court of the United States

OCTOBER TERM, 1963

SAFWAY PRODUCTS, INC, AND

R. D. WERNER Co., INC.;

\ ‘

v.

UP-RIGHT, INC.,.

‘ : - Respondent. Soe

PETITION ,FOR WRIT OF CERTIORARI

’ TO THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT .-

. PAUL CARRINGTON

MARVIN S. SLOMAN

1700 Mercantile Bank

Building, 2

Dallas 1, Texas,

Counsel for Petitioners

_ Petitioners,

: INDEX |

| | _ oO PAGE

Opinions Below — & 1

Jurisdiction * | ‘2

Questions Presented | ie ; 2

_ Statutes and Rule Involved 4

* Statement ~. . : He 5

Reasons for Granting the Writ ' nee Ts.

| | _ Conclusion. ee ee 18

| \ Certificate of Service es |

Appendix A—Illustration A 7 ; 26

~ Columnar Summary a3 . co 2

Appendix B—Opinion of the Court of Appeals 28

eh _ Letter-Opinion | of District Court 35

; Findings of Fact and-Conclusions of

+." Eaw of the District: Court aT:

| ee é udgment of the Court of Appeals 52

. CITATIONS

CASES

Bauer v. Yetter Manufacturing Company,

315 F. 2d 377 (7th Cir. 1963).

Beatty Safway Scaffold Co. v. Up-Right, Inc.,

306 F. 2d 626 (9th Cir. 1962)

Cameron Iron Works, Inc. v. S tekoll,

242 F. 2d 17 (5th Cir, 1952) —

Cimiotti Unhairing Co. v. American Fur Ref. Co.,

198 U.S, 399 (1905)

- Colgate-Palmolive-Peet Co. v. Lever Bros. Co.,

90 F. 2d 178 (7th Cir. 1937)

Continental Paper Bag Co. v: Eastern Paper Bag Co.,

210 U.S. 405 (1908) -

Dalton Adding Mach. Co. v. ‘Rock ford. Milling Mach.

- Co., 267 Fed. 422 (7th Cir. 1920) ;

Falkenberg v. Golding,

195 F. od 4 482 (7th Cir. 1952)

‘Gn Tank & Mig. Co. v. Linde Air Product Co.,

- 836 U.S. 271 (1949) st; —

Fee er Tank & Mfg. Co. v. Linde Air, Products Co.,.

339 U.S. 605. (1950)

Great A. & Pe Tea Co. ve Supermarket Equip. Corp.,

340 U.S. 147 (1950) f

. Halliburton Oil Well Ceme nting Co. v. Walker,

329 U. S.T (1846)

\

Indistrial. Instrume nt ( eo v. Foxboro Co.,

307 F, 2d 7&3 (Sth Cir. 1962

Kennatrark Corporation v. Stantey Ww orks,

314 F.2d 164 (7th Cir. 1963)

PAGE

iu

17

1

128, |

‘15

16

13

16

ar

~ 10-12

10-12

ill

| <_ _ PAGE

- Kokomo Fence Machine Co. v. Kitselman,

189 U.S. 8 (1903) o Sr ae

McClain v. Ortmayer, Sel Peete ON se

: 141 U.S. 419 (1891) — Wiens ee

Parmelee Pharmaceutical Company. y v. Zink iy he

285 F. 2d 465 (8th Cir. 1961). oe 15

Read-Mfg. Co.-v: Hobart Mfg. Co., ~ Be gpd meres

263 Fed, 713 (2d Cir. 1920) rn rot 13

‘Stelos Co. v. Hosiery Motor-Mend Corp., =e Se teorey

295 U.S.-237.(1935) | ee i!

~ Stewart-Warver Corp®v. Lone Star Gas Co. : My

195 F, 3d 645 (5th Cir. 1952) oy

‘Westinghouse Electric Corp. v. Hanovia Chem. & . /

Mfg..Co., 179 F. 2d 293 (3rd,Cir. 1949) | : We 16

eam : haart I

STATUTES\, ~ Dia pee sae

Rev. Stat. § 4888 : te |

~~” (old 35 U.S.C. $33) Sheeiaccs 4,17

- $5 U.S.C. $271 (a) am a 3 4

; \: Ag =

- FEDERAL RULES oF OW PROCEDURE/ ek oe

Rule 52(a) tens vv ths MB, G, 10, 12

_ OTHER AUTHORITIES | |

3 WALKER ON PATENTS ( — s Ed.) ¥ 450 16

:

/ 2

‘IN THE .

_ Supreme Court of the United States

_ OCTOBER TERM,- 1963

arse

No.

.SAFWAY PRopucts, INC. AND

R. D. WERNER Co., INC., :

; | ay Petitioners,

Vv.

Up-RicH?, INC., ae :

cs be _ Respondent.

PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS»

FOR. THE FIFTH CIRCUIT 3

Petitioners pray that a writ of ofrtiorari issue to review

the judgment of the United States Court of Appeals for the

. Fifth Cireuit; entered in the above-entitled case on March

29, 1963. ‘ See

OPIN IONS BELA Ww

The Letteleopinkin of the District Court R. 366-367) is

unreporttd and is printed in Appendix B hereto, infra, ~

p. 35; the findings of fact and-conclusions of law of the

. District’ Court (R. 368-381) are ptinted’in Appendix B

——_

& ,

& * ie

hereto, infra, p. 37. The opinion ‘of the ues of inate

printed in Appendix. B hereto, a ‘p. 23, is paises! in

315 F. 2d 23. J as

oo: ISDICTION. is

JURISDICTIO iy

-The juilgioent of the: ‘Court of hei was entered on’

March 29, 1963 (R. 870), Appendix’ B, infra, p. 52. A .

timély petition for rehearing (R.'871-885) was denied on .

May 14, 1963 (R. 894). The jurisdiction of this court is

invoked under 28 U.S.C. § 1254(1).

—S

; QUESTIONS | PRESENTED’ |

1. ‘The Court of Appeals ruled inapplicable i in this vabiint

"suit the provisions of Rule 52(a) of the Federal Rules of

: Civil Procedure’ which require that findings of fact be af-

firmed unless clearly: erroneous, and that due regard be~

given to the opportunity of the trial court to-judge of the

- eredibility of witnesses. The Court of Appeals, without hold-

"ing the findings of fact: of the District Court ‘clearly erro-

neous, reached its own original’factual conclusions. The first ”

question presented i is whéther Rule 52(a), F. R.C.P., is appli-

cable so as to require the affi irmance by the Court of ——

of the findings - non- -infringement herein.

.. Whether, upon subsidiary’ findlinigs of fact iy the trier.

of fact that an alleged infringing machine, as against a

machine set. forth i in. patent claims, has such changes i in loca- -

tion of its members as to result in entirely different relative —

motions and intercooperation of the parts thereof, the ac-

a

° SSnateneniens

3

- cused device as a matter of law i is outside the protection XK :

. the patentee afforded’ by his patent claims. .

3. Whether so much of an alieged invention as ig asserted

by a patentee in litigation to be a*part of his alleged inven- —

tion, but which was not claimed as part of the alleged i inven-

tion in. his patent, is in the public domain’ and available for

_ Appropriation by ‘others. Further; whether that same, nar: -

- row claim can be expanded to cover the asserted but un-

‘claimed different machine, by the doctrine of eqaneatonte.

4 Whether the doctrine. of file wrapper estoppel limita the |

‘scope which may now be asserted by. respondent for the.

claims ‘of. the patent in suit— :

— fa) Becauise the Patent Office required the satomitele -

to relinquish language chosen by: him in his original

application to describe the feature of his alleged inven- -

"tion which is the feature crucial to the infringement:

issue herein involved, to narrower, more’ specific lan- ;

guage which is inapplicable to the alleged infringing

4 machine; and... °.- ks

~(b) ‘Because of the inconsistently-narrow interpre-

tation of the claims expressly represented by the alleged

inventor himself tothe Patent Office during’ the prose-

cution of the patent application. |

- In aaditi tion to the foregoing questions which form the

basis for this petition, the followi in® question’ is. presented

herein, and petitioners wish to raise the same upon, a grant |

7 ae

of even’ ieee: Wheth er Claims 1 and 2 of Putent No.

: 2 488, 173 are Ky valid asa matter of law-2 ty

So as to cover petitioners’ aceused device ;

-* (bi. Alternatively, because the device claimed therein

Wis not patentable i in view, of the prior art and because

involying only the exercise of ‘the ordinary skill of a

person familiar w ith that art. *

_. STATUTES AND RULE INVOLVED

The statutory provisions involved are:

’ (1) 33 USC. 8 271a): oe

’ “Except as otherwise provided in this title, whdever

without authority: makes, uses.or selis\any patented

invention, within the United States during the term of

Ake patent therefor, infringes the patent.”

(2) Rev. Stat. § 4888: (old 35 ULS.C. § 83%:

“Before any inventor or diseoverer shall receive a

patent for his invention or discovery he shall make ap-

plication therefor, in cw riting, to the Commissioner of

Patents, and shall filé in the Patent Office a written

description of the same, and of the manner and process

of making. constructing, compount#a@, and using it, in

such full, clear, concise, and exact terms as to enable’

any person skilled in the art or science to which it ap-

pertains, or with which it is most nearly connected, to

make, construct, compound, and use the.same: and in

case of a machine, he shall explain the principle there-

fal If Cltims 1 and Z are stretched by interpretation ?

“of, andthe best mode in which he has contemplated

applying that principle, so as to distinguish it. from

. Other inventions; and he shall particularly point out and

distinctly claim the part, improvement, or combination

which he claims as:his invention or discovery.”

¢ .

a AS

o

4 . . ; 5 “ = one

mae Also involved is Rule 52(a) of the Federal Rules of Civil.

_ Procedure which provides in pertinent part: _

“Findings of ‘fact shall not be Set aside unless clearly

erroneous, ard due regard shall be given to the oppor-

iunity of the trial court.to Judge of the-credibility of

the witnesses,”

STATEMENT

Respondent and jts president, Johnson (the alleged inven-

tor), sued petitioner ‘Safway Products, Inc. alleging in-

fringement of Johnson et, al. Patent No. 2,438,173 relating.

to portable, collapsible scaffolding units, Jurisdiction of the

District Court was invoked because the case arose under the

patent statutes. Petitioner R. D. Werner Co., Inc., -manufae-

turer of. the allegedly infringing Aldek folding stairway

scaffold, intervened (R. 66), Together, petitioners joined in

““.” -eommon defenses asserting invalidity of the Johnson Patent:

Claims 1 and 2 (t6 which plaintiffs had’ limited their com-

“plaint at the first pretrial}, and-non- infringement by the

* Aldek scaffold of Claims 1 and 2:of the Johnson pat tent iR.

36, 39, 42, 58).

recioce 1 of the Johnson patent reads as follows (R. 399) :

ZZ. A scaffoid unigicomprising a rigid platform_sec-_ .-

¢ tion, a-rigid supporting section at each end ofthe

platform section, a hinged connection between ad jom-

ing ends of the platform and supporting “sections, a

ty ladder section hingedly connected at.one end to the end

of one supporting section at the junction between it and

the platform section, ‘and a detachable. connection be-

tween the other end. of the ladder section and the other

Supporting section’ at the end of the lafter oyiposite its

conne¢tion ‘with the platform section.”

s

eS

Claim 2 is identical. except in further providing for a de- —

tachable brace extending between the two end sections of the

scaffold in order to give it rigidity (R. 399). |

The Aldek scaffold (upon which a patent also issued, over -

| “the Johnson patent, R. 744) contemplates having the detach-

able connection which Johnson in‘all his claims specifically

locates at the bottom of his ladder section, at the junction

between one end section and the platform section.. Where

Johnson in all his claims specifically requires a “detachable

- connection”, Aldek has provided a hinge about which one end- |

frame and the ladder member rotate in the folding opera-

_tions. In order to achieve flat folding with these differently

located connections, the Aldek scaffold requires throughout a

complétely different relative positioning of the various mem-

bers from Johnson. (R. 397).

The differences in the operative functioning of the respec-

~ tive devices, on account of Johnson’s having a detachable -

connection as specified by Johnson in his claims and employ-

ing. the relative positioning iffustrated in his drawings, and

the departure by Aldek therefrom, are shown in actual cém-

mercial practice for ‘the Johnson scaffold sequentiaily in

_ Exhibits DI-4, 3, 2 an@ 1, (R. 490, 489, 488 and 487, re-_

| :

spectively!, and as to the Aldek scaffold in Exhibits DI-55 =

‘and DI-56 (R. 724, 725). The differing relative inter-coop-

eration of parts of the devices is shown ‘schematically and

with parts differently colored for comparative analysis in

Exhibit DI-82 «R. 773). The differences are illustrated dia-

gramatically in the drawing included as part of Appendix

7

A hereto, infra, p. 20, which includes also 4 columnar com-

parative summary.

Operation of the devices high in the air is shown at ‘R.

426, 719-20. |

"Trial was teal upon detailed fact issues framed in two

pre-trials by the parties (R. 70-76) and finally in proposed

findings of fact submitted by the parties before trial to the

District Judge as part of trial briefs (e.g., R. 775-824): The |

trial, to the District Court without a jury, lasted three days.

Five live witnesses (including mechanical experts and safety

experts! testified (R. 98, 184, 209, 221, 265) and the depo-

sitions or prior testimony of eight witnesses were read in.

part (R. 194- 204, 246, 248:'165-183). Many demonstrations

of apparatuses sealed ade in the courtroom during trial

Ae.g., R. 114, 116, 118, 120, 134, 142, 160, 226, 227, 308,

348, 351),-and one morning was spent during the tria! but

off the record in demonstrations and experiments at a local

warehouse, witnessed by the Court and the expert mechanical

‘and safety ‘witnesses, with the lower and upper sections of

the Johnson scaffold, and of the Aldek scaffold, and other

full-size scaffolding exhibits which plaintiffs had themselves

prepared and offered in evidence (R. 191- 192, 213, 214, 235,

318, 320-821). 9 |, oe

The trial below was o¢cupied almost entirely with the

. irreconcilable testimony" and other evidence of. the re

"On yn mechanical theory Johnson and Chesnut wholly disagreed. “On

actual speed and efficiency Johnson differed entirely from Brush and

Cannon. Middleditch and Johnson testified on safety facts, but only

. Closser as an éxpert; the Court adopted Classer’s opinion.

Respondent put jn issue Chesnut’s credibility resolved against re

spondent.

Johnson's credibility too was in issue-—resolved aipninat respondent.-

8

spective parties as to the materiality and consequence—in

terms of mechanical theory, and of actual efficiency, speed,

and safety—of the differehces in struciure and mode-of op-

eration and results accomplished by the Johnson and Aldek

equipment. Kokomo Fence Machine Co. v. Kitselman, 189

USS. 8, 24 (1903) ; Stewart-Warner Corp. v. Lone Star Gas

Co,, 195 F.2d 645 (5th Cig. 1952). |

Under date of June 20, 1961, the Court delivered its

letter-opinion (R. 396-267), announcing its decision that

the Johnson patent had not been infringed by the Aldek

device because: .

“* * * Plaintiff’s patent, a combination patent in a

very old and crowded art which embodies no new indi-

vidual elements, is entitled at most to only a very nar-

row range of equivalents. The accused device does not

fall within this range. The Aldek device is simpler,

safer and more efficient in operation, and’ is substan-

‘tially and materially different in structure, mode of

operation, and result.” °

The District Court’s findings of fact ‘herein called “PF”,

_and reprinted in Appendix B. page 37, infra) were in

detail to the same effect: and the Court further stated as

facts that Aldek “does not have” the Johnson structure, “has

an entirely different mode of opexation and operative fune-

tioning,” and “reaches different results” (Conclusion a;

R. 380). The District Court also*made detailed findings —

, i concerning the prior art artd its limiting effect on ‘the scope

of the alleged invention as claimed in Johnson Claims 1 and

2 (FF 22-32: R. 376-379). It also found that the actual

conception of- the alleged inventor was not as asserted by

plaintiffs (FF 12, 13; R. 372-373).

>

>

9g. >

FF 14 (R. 373 deals with the Johnson Patent file wrap-

per (R. 406, 410-11). Johnson in order to secure his patent

* was required to relinquish the broeder term “articulate”

for the narrower term “hinged” to describe the connection

at the’ intersection of the platform member and one end-

support member, at which intersection Aldek has a detach-

able connection. The file wrapper also shows that in defin-

ing the nature of the invention. Johnson represented tothe

Patent Office that he had a hinged connection.at the point

in question. In his testimony Mr. Johnson’ definitely recog-

nized the distinction between a detachable connection and a

hinged connection, as did petitioners’ mechanical expert (R.

- 357). The District Court found them not equivalent (FF 16,

R. 373).

Judgment for petitioners, holding Johnson Claims 1 and

~ 2 not infringed | by the Aldek scaffold, was entered June 30,

1961.

.

ae

— —~--

_ Respondent aaa te the Court of Appeals, w hich re-

versed. The Court of Appeals treated the infringement ques-:

tion as a question of iaw and determinable “free of the clear-

ly erroneous rule.” App. B, infra, at p. 31. It, accordingly,

determined for itself the faet questions involved on the

. issue of irifringement, and found infringement of Claims 1

ind 2 by the Aldek scaffold. It held there was no basis for

file wrapper estoppel in the’ case. It announced a rule that

the patent was not limited to the “preferred embodiments >

shown in the claims or drawings.” Accordingly it t remanded

for a determination of validity.

10°

REASONS FOR GRANTING THE WRIT ©”

1, The decision of thie Court of Appeals is in conflict with -

the decisions of this Court in the two cases of Graver Tank

& Mfq. Co. v. Linde Air Products Co., 336 U.S. 271 (1949)

and 339-U:S. 605 (1950). The findings of the District Court

in the case at bar were based on fact inquiries and stipula-

‘tions emanating from .two pre-trials of the action (R, 65-87),

and on evidence of record, the numerous demonstrations dur-

ing trial in and out of the courtroom, and the opportunity of

the trial court to judge of the credibility of three conflicting

_ expert witnesses as well as other witnesses.

From these the District Court made comprehensive find-

ings as to the structure, mode of operation and resuit of the

device in Claims 1-and 2 ofthe Johnson Patent and the

Aldek device (FF 7-12, 16-21; R. 370-375). It also found

that the subject matter of the alleged invention was not as

claimed by Johnson and respsndent in this litigation (FF. |

12, 13:.R. 372-373). It also found that the alleged invention

‘in the claims if so. broad as to comprehend Aldek,: pre-

existed in the prior art (FF. 32;°R. 378-379). e

This Court in thé first Graver cave, 336 U.S. at 274, 275,

said of the provisions of Rule 52/a); F.R.C.P., quoted

supra, p. 5, in language pointedly applicable here:

“To no type of case is this-last clause more appro-

priately applicable than to the one before us, where the

evidence is largely the testinfony of experts as to,which - .

a trial eourt may be enlightened by scientific demon-

strations. This trial occupied some three weeks, during

which, as the record shows, the trial judge visited lab-

oratories with counsel and experts to observe actual

11

demonstrations of welding as taught by the patent and

' of the welding accused of infringing it, and of various

stages of the prior art. He viewed motion pictures of

various welding operations and tests and heard many

experts and other witnesses. He wrote a careful and“

succigct opinion and made oe ss all the

factual i issues.

“The rule requires that an prmenert court wae al-

_lowance for the advantages processed by the trial court

in appraising the significance of conflicting testimony

and reverse only ‘clearly erroneous’ findings.”

- There was. not any such allowance made by the\ Court of |

"-. Appeals in this case. Had the Court of Appeals deemed Rule

—52(a) applicable, the record herein would require affirmance

of the findings of fact in the trial court, each being over-

‘whelmingly supported and, as we would fully demonstrate

in a brief on the merits, required, by an’ ‘abundance of record.

evidence. Though applicable generally in patent actions as

held in the first Graver case, Rule 52(a) is made expressly

_ applicable to findings of fact on the issue of equivalency in

_the second Graver.case, supra, 339 U.S. at 609-610.

The pretermission of Rule 52(a) by the Court below in the

instant case is irreconcilable with the Seventh Circuit deci-

sions in Kennatrack Corperation v. Stanley Works, 314

F, 2d 164 (1963) and Bauer v. Yettér Man.facturing Com-

pany, 315 F. 2d 377 (1963), where ‘patent findings based -

on physical demonstrations and org] testimony are held to

particularly require application of the Rule,

The Court of Appeals deemed itself free of the provisions

of Rule 52(a) F.R.C.P., on the authority of its decisions in °

Cameron Iron Works, Inc. v, Stekoll, 242 F.2d 17 (5th Cir.

12.

1952), and Industrial Instrument Corporation v. Foxboro

Co., 307 F.2d 783 (5th Cir. 1962). The assumed conditions

on: which those decisions were invoked by the Court of Ap-

peals, even if proper as exceptions to the Graver decisions,

are So demonstrably absent from this case that the “decision

below constitutes a rejection of the authority of Graver. A .

summary of the record basis’ démonstrating the absence of

any such conditions, and of facts called “undisputed” by -

_ the court below, ‘is set forth in paragraphs 1-9 of petitioners’

petition for rehearing in the Court of Appeals, R. 872- 878.

Under the decision -by which the ‘Court Appeals herein

declares itself free of Rule 52(a), the Rule is susceptible of

being ignored .in all patent cases except: the few where proc-

esses or mechanical operations are unobservable or unseen.

Such inoperation of ‘the Rule is not contemplated by the |

language of, or the principles of judicial administration

underlying, Ruie 52(a) and this Court’s Graver decisions

thereunder. It likewise is wasteful of the time and energies

- of the District Courts, of litigants and witnesses, and their

counsel, in their efforts to resolve once and finally (in the ab-

sence of clear error) fact controver sies by u raditional means

‘of testimonial and documentary and demonstration evidence.

The de novo. factual. decision below in the case at bar merits

reversal by this Court in order that these. principles of ju--

dicial administration be vindicated on behalf of all patent

_ litigants. :

2. The Court.of Appeals’ decision is directly in conflic

with the decision of this court in Cimiotti Unhairing -Co. v.

13 :

_ American Fur Ref. Co., 198 v. S. 399 (1905). ‘That decision

establishes as a matter of law that: fees te

“If, however, such changes ‘of size, form, or Soaedion

effect a change in the principle or mode of operation

sueh as breaks up the relation and co-operation of the

parts, this results in such a change in the means as ~

- displaces the conception of the inventor, and takes the

_ new structure outside of the patent.”*

The Court’ of Appeals decision is also conflicting with the.

‘rules announced in and the’ principles governing the decisions

of the Seventh Circuit in Dalton Adding Mach. Co. v. - Rock-

ford Milling Mach, Co., 267 Fed. 422, 427 (1920) and the

Second Ciretit in Read Mfg. Co. v. Hobart Mfg. Co., 263

Fed.. 713, 718 (1920).

‘vie, the deckaton of the Court. of Appeals bypassed

the subsidiary facts found by the District Court (FF 24,

= 32, R. 276-379) that the device in Johnson Claims 1,and

2, if those claims, were broad- enough to comprehend the

accused Aldek device, preexisted © in ‘the prior art. In this

further respect, the decision below rejects ‘the contrary ‘au-

thority of the Cimiotti and Dalfon Adding Machine cases,

; making unavailable as -an asserted ‘equivalent one already

known to the art.

~The above euthorities, which appear to be controlling au-

thorities establishing non-infringement herein. as a matter

of law upon the subsidiary facts found by the District Court

~ in the instant case, were completely ignored by the Court of

Appeals: -and hence rejected as totally inapplicable.

~ *Emphasis ours throughout.

?

14

‘In the more ‘than fifty-five years since this Court’s deci-

siyn in the Cimiotti case it has been thought to be controlling

. on infringement issues such as those herein until its rejec- |

tion in the case ‘at bar. The importance to the industrial com ae

. munity ‘of the standards of law governing questions of.

ivalency regarding machines with parts relatively inter-

if, cooperating, merits the reversal of the decision below herein

and the assurance of this Court as to the continued viability

of the Cimiotti test, And this is of equal importance where’

as in the case at: bar the conflict is created sub silentio, but

nevertheless will be noticed by the patent bar, and others a

interested, as ‘a departure - from the — previously

established by this Court.

_ 3..The decision of ‘the Court of Appeals is in n direct con-

flict with ‘the long-established rule of this Court as set forth -

in its decision in McClain v. Ortmayer, 141 U.S. 419 (1891).

In order for Johnson . Claims 1 and 2 to embrace ‘the Aldek

_ seaffold, they must be enlarged so as to erase the. specific A;

limitation Johnson’ imposed on himself of the location of”Ris =

detachable connection at the bottom of his stairway. In order

that Aldek infringe these claims, they must cover a stairway

scaffold which folds by ‘any ‘of. the means asserted by plain-

- tiffs below but not in fact ever conceived (see FF. 6, 13 R.

- 369-370, 372). But even had Johnson’s mental concept been

50 broad. as to embrace the Aldek machine, : the rule of

McClain. v. Ortmayer specifically confers on the public the

right to appropriate the portion of tie alleged ‘broader inven-

tion w hich was not claimed in the patent. This Court said in

that decision (141 U.S. at 423):

“Nothing is better settled in- the law of. patents than

that the patentee ‘may claim the whole or only a part.

a

et

of his invention, and that if he only describe and claim

a part, he is presumed to have abandoned the residue

to the public.” : 4 *

The basis for decision in Colgate-Palmolive-Peet Co. v.

Lever Bros. Co., 90 F.2d 178 (7th Cir. 1937) is similarly

contrary to'the decision below with respect to an asserted—"

but not claimed—invention. There the Court held (90 F.2d

at 194): | : | fF pee

«“* * * However, Lamont chose to make the claims .

more rigid and specific and must be bound thereby. He_

chose his own language.. We must accept his words as:

_ they were presented to, and accepted by, the Patent -

Office. We are not permitted to rewrite a claim even

though. ‘Lamont’s -discovery would have justified a

broader one. Nor can we do indirectly, that is by con-

struction, what we can not do directly.” °

The principles of McClain and Colgate guard against the

_ stultifying prospect of unknown, and unknowable, preten-

_ sions of patent monopoly. When these principles are ignored,

the benefits to the public, and ‘the business community espe-

cially, of the patent system will be accordingly diminished.

With regard to the complete absence: from the Johnson

‘claims (and, in fact, from the patent in, suit as.a whole),

of any conception of the different Aldek means, the'decision -

below is contrary to the governing principles ‘of. patent

law announced in Halliburton Oil Well Cementing Co. v..

Walker, 329 U.S. 1,°10;13 (1946), Similarly, the deci-- |

sion below conflicts ‘in -principle with the decision of the

Eighth Circuit in Parmelee Pharmaceutical Company v.

Zink, 285 F.2d 465, 471 (8th Cir. 1961), holding that

the doctrine of equivalency cannot be used to-expand the

confines of a special claim, for to do so would override the

a

16. +

requirements of the patent statutes which must initially be

met by a patentee. cee ae a

Further, these authorities conflict with a rule first an-.

" nounced by the Court of Appeals.in this ease, that a patentee

is not. limited ‘to the “preferred: embodiments shown-in the

claims or. drawings.” 315 F.2d at 27 (Appendix B, infra,

p. 32). Such a rule has been rejected outright by-this Court.

Continental Paper Bag Co. v. Eastern Paper Bag Co,, 210

U.S. 405, 419 (1908). See 3 WALKER ON PATENTS ( Deller’s

Ed.) § 450, p. 1681. a aa

- 4, The decision below conflict: in principle with the deci-

sions in: Falkenberg v, Golding, 195 F.2d 482 (7th Cir.

— 1952), and Westinghouse Electric Corp. v. Hanovia Chem.

& Mfg. Co:, 179 F.2d 293 (8rd Cir. 1949), as_to the scope -

of the doctrine of file wrapper estoppel. The Court of Ap-

_peals‘in the instant case decided, “there was simply no basis

for file wrapper estoppel,” because, “there was no attempt -

to recapture, revive; or restore something that had }wen.

abandoned or surrendered in the patent office.” 315 F.2d -

at 27 (Appendix B, ap fra, p. 32.) The decisions of the

Seventh and Third Cireuits in the’ cases cited,.on the other

hand, ‘clearly regard an-estoppel as arising whenever a

‘patentee in litigation attempts to attribute to the claims of

his: patent a broader eonstruetion and meaning than that.

which he placed upon them in his representations and ad-

thissions in the Patent Office. - eee

* Further, the doctrine of file wrapper estoppel even as

conceived by the Court of Appeals herein was misapplied

(R.. 879-880). a a eG a

ce 17 ,

5. As to the Fifth Question ‘(conditionally presented) : «

Petitioners sought below a declaratory judgment to the ef-

fect that, Claims 1 and 2 were invalid TR. 53). [In a case

and on‘a record wholiy alien to petitioners, a jury decision

; of validity and infringement was affirmed in Beatty Saf-

way Seaffold Co. v. Up-Right, Ine;, 306 F.2d-626 (9th Cir.

-. 1962), cert. den., 83. Sup-"Ct. 881. (196314. Invalidity as a

matter of law was urged upon the Court of Appeuls as a

ground for. affirmance of the judgment’ of the District

Court. We seek reversal of’ the judgment of the’ Court ef

Appeals, api affirmance of: the judgment of the District

Court, upon such ground here as well. Stelos Co. v. Hosie ry

Motor-Mend Corp., 295 U.S, 237 (1935).

Petitioners urge that under the District Court’ 5 subsid-

iary finding 32 (R. 378-379), Section 4888 of the Revised

Statutes (old 35 U.S.C.,.§ 33) in effect at the time of the

Johnson application, and the decision ofthis Court iti Halli-

~ burton Oil Well-Cementing Co. v. ker, 329 U.S. 1, 10-

13 (1946), require that if the Johnson patent be “inter- ~

preted” so as to cover the Alde ‘Seaffold it is void...‘

Petitioners also urge the invalidity of. Johnson Patent

Claims 1. and 2, upon the authority of Great A. & P. Ted Co.

| :, Supermarket Equip. Corp., 340. U.S. 147. (1956). The >

sein prior art disclosures are already the subject of

complete findings of fact herein, FF 22-32 (R. 376-378),

"and testimony that mere mechanical skill was ‘involved in

designing the. Johnson seaffold over the prior art was Un-_-

disputed (R. 8Y0-315, 168-169). None of the prior art dis-

.- closures in FF 24-31 was befare, the Patent Office when it

issued the Johnson Patent (R. 400).. a

18

CONCLUSION

?

For the above reasons, this petition for writ of certiorari

should be granted. i

= Respectfully submitted,

PAUL CARRINGTON-

MARVIN S. SLOMAN

Coun sel for Petition?rs

%

CARRINGTON, JOHNSON & STEPHENS

~ 1700 Mercantile Bank eee

Dallas 1, Texas “aa

Of Counsel A - echt oh

CERTIFICATE OF SERVICE

' The undersigned, a member of the Bar of: this Cour:

hereby certifies that a copy of the foregoing Petition for

Writ of Certiorari was this @ay served upon counsel for the

respondert herein, by depositing sume in a United States ©

Post Office, -with first-class postage prepaid, addressed as-

' - follows:

ra ; ‘

Oscar A. Meilin, Esq.

Messrs. Mellin, Hanscom & Hursh

34] Sutter Street |

“ San Francisco, California

{by Air Mail! -

FE. Hastings Ackley, Esq.

~ 700 Wilson Building

Dallas, Texas |

Dated: Fuly 20. 1963.

19

APPENDICES

"iat

Ay

oe es

APPENDIX A_

270°~

Illustration A

45° ~

-ALDEK

JOHNSON |

Ae

The following salient differences in the Johnson and.

_ Aldek devices are apparent from Illustration A:

JOHNSON '

(a) = hinges ‘at both

’ ends of platform sec-

tions where end sections

adjoin.

(bi

right where end séction

adjoins; is offset up-

- ward, important to flat.

~ folding.

Ladder see otion is iiss

at upper left only, and

is detachable at lower

right. Ladder is offset-

hinged upward.

(cl

Ladder’ section (is

straight, and attaches

radially to bottom of

end frame.

id)

Johnson folds ‘about

a ‘horizontal platform

section.

fe!

In -collapsing, (i) left

end section and ladder

_ section rotate to fold

against bottom of plat-

form section, and (ii!

right end section ro-

tates ta fold against top

of platform section.

(fr

Hinged connection at

ALDEK

-Has_ hinged saiidaitans at

left and detachable connec-

tion at right,‘ where end

sections adjoin platform.

Platform. section - attaches

radially at upper right:

Ladder section is hinged.

at both ends. Upper ladder

hinge is a “straight”, er

radial, hinge.

Ladder section is bent or

‘angled off a straight line, at

-one end, to achieve flat fold-

ing; offsetting is important

to parallel flat folding.

Aldek folds about a diagonal

ladder section.

In collapsing, ‘i! left end

section rotates to fold

against “bottom” of fadder

section, and (ii) be inning

first the platform section © -

_and then following it the end

section rotate to fold against

“top” of ladder section. —

(Continued)

22

JOHNSON

end . section. must be

swung out far beyond -

the erected-framework

outlines of the unit, and

up and over and then.

down on top of-the plat-

form section; through

an. are of 270°.

Aes

{g) In collapsing, the right-

ALDEK

In collapsing, every member

is rotated through an are

of 45° only. Every forée is

-directed to work within the

erected-framework outlin< =.

‘and every member follows.

an arcuate path within the

erected-framework outlines

only.

The two devices are shown as when collapsed, in photo-

- graphic exhibits of record—Johnson in Ex. DI-4 (R. 490)

and Aldek in Ex. DI-55 (R.

7245. The following salient

differences are apparent from a comparison of the folded .

‘devices:

J OHNSON

( hi The bottom ieg énds are

pointed in opposite &

rections. —

(i) The ladder section pro-

trudes, without protec-

tion for the gooseneck

connections.

(j) The “package” so viewed

is 3 tube diameters thick,

. Package thickness is ap-

proximately 61. inches.

; ALDEK -

The bottom leg ends are

pointed in the same direc-

tion.

The ladder section is con-’

tained in the principal out-

lines.of the “package”, and

_the right end section pro-

trudes- with the leg ends

protected ‘by the casters. | ya

The “package” so viewed is

‘and must be because. of

principle and method of fold-

ing! 4 tube diameters thick.

Package thickness is approx-

imately 8!» inches.

28

APPENDIX Bo’ o 8

OPINION OF THE COURT OF APPEALS

} [Caption Omitted ]

(March 29, 1963)

.

Before BROWN and Bell, Circuit Judges and SIMPSON,

District Judge. eee

BELL, Circuit Judge: Suit for infringement of United °

States Leters patent No. 2,438,173 relating to portable,

collapsible scaffolding units was brought against Safway

Products, Inc., a distributor of the accused Aldek Scaffold. -

R. D. Werner Co., Inc., the manufacturer of the AMek scaf-

fold, was permitted to intervene. The charge of infringe-

ment was limited te claims 1 and 2 of the patent in suit.’

. Two general -issues? invalidity and infringement, panned

out of the prolix pieadings so often prevalent in patent liti-

gation. The issue of infringement involved the subsidiary

issue of file wrapper estoppel. —

» =

Claim 1 -- A scaffold unit.comprising a rigid platform section, :a rigid

supporting section at each end of the platform section, a, hinged

‘connection betwen adjoining’ ends of the platform and support :g

sections, a ladder section hingedly connected at one end to the end

of one supporting sectinn’at the junction between it and the plat-

form section, and a detachable connection between the other end of

the ladder section and the other supporting section at the end of the

latter opposite its connectton with the platform section.”

Claim 2 — Sdme as claim 1 with ‘the following additional] clause

added at the end thereof:

‘.., and a brace extending vetween, the supporting ‘sec-

tions-and detachabiy connected thereto at coinciding points

intermediate the end thereof.” : a

ro

Va

: snk. 24 °

The court, upon reaching its decision, advised counsel

for the parties of its views by letter, and this letter was

made a part of the judgment. It, follows in pertinent part.

The reference to the Johnson. gence ‘is tothe patefit baal

_— - oo

suit.

“Gentlemen: ;

“Having heard and viewed the kines presented

and studied thoroughly the excellent briefs presented .

to the court, I have determined that plaintiffs’ John-

son patent has not been infringed by the accused Aldek

device of Defendant and Intervener. Plaintiffs’ patent,

a combination patent in a very old and crowded art

which embodies no new individual elements; is entitled

at most to only a very narrow range of equivalents.

The accuseddevice doés not fall within this range. The

= de +=

Aldek device -is simpier, safer and more efficient in _

. operation, and is substantially and materially differ-

ent in struéfure, mode of operation, and result.

“It is therefore unnecessary to decide the issue of

the validity of plaintiffs’ Johnson patent. -

o > *

Thereafter findings of fact, conclusions of. law, and final

judgment were ente! ‘ed.

The patent in suit covers an jnteetally connected as-

semblage of s¢affold elements which may be easily erected

for use as a tower type scaffald unit..and which may be

éasily collapsed or) folded into a relatively smail compact

. package for transportation or storage. The essential part

are permanently connected together by hi nged joints, thus

eliminating the loss of parts, and increasing. the ease with .

which the scaffold may be handled and stored. Each unit

“includes a ladder. The units may be placed when erected,

one on top of the other, to reach desired heights. .

re re ont

e

. Appellant, assignee’of the patent, was founded to manu-

‘facture and distribute scaffolds made to the teachings of

__the > patent. Sothe 53,000 units have been manufactured and

sold for use in construction and: maintenance work, and as

one piece folding radio tower , sections. There was testi-

mony describing the erection of a 350 foot high tower in

one day, The United States Government has taken a license:

under the patent so that they may be manufactured by

‘others far the government. The Army Signal Corps has

- purchased units valued at more than one million. dollars,

and they are used in forming towers, including use on the

‘Distant Early Warning System in northern, C anada. They

are also’ used by the major telephone companies in the

" United States. Sufficient units can be loaded on a single

truck to erect a 200 foot high tower.

These units are simple in design. They are of open frame

or tubular construction. Each consists of a platform section

hinged to two end or support sections with a diagonal lad-

der section hinged at the juncture of the platform and one

of the end sections, The design is based on a triangular

conception with one end section, the ladder section and the

platform section forming the triangle. The other end section

supports the corner of the triangle where the ladder is

affixed at the juncture of that end section and, the platform,

and is perpendicular to the platform and parallel to the

opposite end section’ when the unit is in the erected posi-

~ tion. The ladder is used for the purpose of ascending to and

“descending from the platform séction. The width of the

ladder takes up one half of the width of the supporting ends

26

of the platform section, leaving room for a deck covering

the other half of the platform section from which to

work. Additional units may be stacked, one upon the other,

by fitting the legs of the upper unit into holes provided in

tue four corners of the end sections of the lower unit. As

“noted in Footnote 1, the only difference between claims 1

and 2 is the brace betweer! the end sections added in claim

2. It is not involved in this litigation.

The crux of the infringement controversy lies i in the dif-

ference between the device made according to the specifics

of the patent, and the accused device. It is necessary in

order that the unit be foldable and portable that one end

of the triangle be detachable. The patent sets out the point

of detachment as being where the lower end of the ladder

joins the bottom of the end section, i.e., the end side of the

triangle. The other corners of the triangle. are hingedly

connected, as is.the end section which is not a side of the -

triangle, but which, along with the eer end, supports

| the platform.

The patent in. suit, immediately preceding the claims,

provides: .

“While we have shown the preferred form of our

invention, it is understood that various changes may

be made-in its construction by those skilled in the art

without departing from the’ spirit of the invention as

defined in the appended claims.”

The differences between the device of the patent and

the accused device are ‘nil-for the purposes of this litiga-

* tion-insofar as they appear erected. Such differences as

form the issue of infringement are two, one resulting from

27 .

the other. Rather than having the Jadder detachable from

the bottom of the end section which forms a side of -the

_ triangle, appellees have put the point of detachment where |

the platform joins. the end section of the triangle. The’

- ladder, on their device, is hingedly connected at each end

but occupies the same diagonal position as taught in the

_.patent, This change results in a different folding and un-

folding method. In substance, the only change has been to

move the point of detachment. of the triangle from one

corner to another. -

_ The resulting difference in folding and unfolding occurs

in two respects ; in movement, and in the form of the folded

' package. The device of the patent in the folded or collapsed

position -is the thickness of three of the metal tubes form-

ing the framing of the unit. The end which does not form

a part, of the triangle lies on the bottom of the package

with the ladder on top of it, fitting partially into the open

part of the platform section which comes next above the

ladder, and with the end section which is a part of the

_ triangle resting on top, making the folded package.

It is erected from a folding position, as the erector faces

‘ the package, by swinging the end piece which is on top

through a one hundred eighty degree are to:the right so

that it is again parallel to the ground and an extension of

the ori.zinal package. Next the platform and end section

are raised at the joint where the platform hinges .to the —

now ‘extended end section. This in turn commences the

‘forming of a triangle consisting of the end piece, platform

and ladder, pulling the outer end of the end section back

28

toward the package until the bottom of the ladder section -

can be attached to the rung on the bottom of the end section.

Finally, the opposite end of the platform is raised until the

_ platform is parallel to the ground and-the opposite end

section, which is not a side of the triangle and which is on

the bottom of the package, swings into place parallel to

the other end section. As “erected the end pieces are per-

pendicular te the platform and the ladder is in a diagonal

position. This procedure is reversed to collapse and fold

the device of the patent.

The accused device in the folded position is the-height —

of four tubes. The end section, which forms a side of the

triangle, rests at the top of the folded unit or package. The .

platform section is next, then the ladder, with the other

end section beirig on the bottom. It is erected by raising.

the top end section to the right through an arc of forty five

degrees; the platform section is then raised until it -ean

be attached to the already raised end section. At this point

the basic triangle has been formed consisting of one-end. -

section, the platform section and the ladder section. Finally,

. the platform section is raises so. that it? is ‘parallel to the

- ground. As this is done the remaining end section swings

into place, parallel to the other end section and 1 perpendicu, a

lar to the platform.

The change which results from a selection of ‘a different

corner of the triangle as the detachable corner is evidenced

by the fact that no member of the accused device moves

more than ninety degrees in the folding or. unfolding proc-

ess, while in the device of the patent it is necessary to

29

move the end piece forming the side of the triangle two

hundred severity degrees. However pn examination this is

a difference of little distinction.

No evidence was offered as to the difference ne

quired to erect or fold either af the units, but the trial

court did witfiess a demonstration and concluded that the

accused device was simpler, safer and. more efficient in

operation, and also that it was substantially and materially

different in structure, mode of operation, and result from

the device of the patent. Coupling this with the finding that

the combination patent of appellant pertained to an old and

crowded art, embodied no néw elements, and was entitled

at most to a narrew range of equivalents, the court con- +

cluded | that thee was no infringement. The court con-

cluded ‘that there was no wide iffterest beyond that of the’

parties in the validity or invalidity of the patent and did»

-not reach that question. We hold that the eourt. erred on

the question of infringement, and in not reaching the ques-

- tion of invalidity.

“It has, of course, been held that it is not necessary for

the court to rule on validity in an infringement case w here’

_a@ narrow improvement patent. is involved and its validity

vel non is of no geat public importance. Industrial Instru-

ment Corporation v. The Foxboro Co., 5 Cir., 1962, 307 POS

2d 783; and Stewart-Warner Corporation v. Lone Star Gas

‘Company, 5 5 Cir., 1952, 195 F. 2d 645. But we pointed out in

Industrial - Instrument Corporation, citing Sinclair ‘«& Car-

- roli Co., Inc. v. Intercher ical Corpordtion, 1945, 325 U.S. -

327, 65 S. Ct. 1148, 89 L. Ed. 1644, that the better pract ice

i

is to inquire fully into validity. And the question here is

important. The facts show'a substantial pubiic interest in

this patent, and. the question of validity also bears heavily

on the question of infringement. .

“We begin with the proposition that an inverttor, with |

respect to his patent, is entitled to a range of equivalents

commensurate with the scope of his invention. Southern

Saw Service, Ine. v. Pittsburgh-Erie Saw Corporation, 5

Cir., 1956, 239 F. 2d.339. We are not here dealing with a.

' pioneer patent but considerable -improvement in the scaf-

fold art does appear to have resulted from the teachings of

this patent. A comparison with the prior art makes this

clear. It is true that every element in the scaffold of the

patent.is old in the art but none had apparently t: ought

of this particular combination or the result that it obtained.

The District Court recognized that the patent was entitled |

‘to the protection of a limited range of equivalents, but held

that the accused device did not fall within the range. We

are unable to discern that any range was applied. Finding ©

file wrapper estoppel, and’ relying on the. specific language

of the claims, appellants were réstricted to the scaffold unit

of the patent. .

‘And in ‘reaching our conclusion we proceed under the

authority -of Cameron Iron Works v. Stekoll, 5 Cir., 1952,

242 F, 2d 17: LL

. that where, as here, the facts are undiaputed

~ and a caSe can be determined by a mere comparison

of the structure, and extrinsic evidence is not needed

_for purposes of explanation., or evaluation of prior art,

7

-

- 3) f "Ene

or to resolve questions of the ‘application of descrip-

tions to subject-matter, the. question of infringement

may’ be determined as a question a ai

8m also InduStrial Instrument Corporation .. . The For-

* boro Co., supra, where it was pointed out that:

“We may reverse free of the clearly erroneous rule

where, as is the case here, the issue revolves around

an ultimate fact question as distinguished from sub-

sidiary fact questions, or where mixed questions of

law and fact are presented when there‘is error as to

the law. Galena Oaks Corporation v. Scofield, 1954, 5

Cir., 218 F.2d 217. 5 Moore’s Federal Practice, 2 Ed.,.

¢ 52.03/13) p. 2631; Baron and Holtzoff, Wright: Ed.,

Fed. Practice and Procedure, $ : 1437, Pp. 560.”

The fagts of this case meet both tests. The onl dispute

concerns the ultimate fact question. as distinguished from |

subsidiary facts, and even the subsidiary, facts. are not in

dis pute. The prior art needs no explanatien and the stru

tures are simple in design. And, under the circumstances,

we assume the validity of the patent.

The views of the District Court’ regarding file wrapper

estoppel mayehave been the prime cause of the error on

the questiog of infringement. in the original application,

claims 1 and 2 contained, instead of-the w ords “a hinged”

*%

and. “hingedly” as they now appear, the words “an articu-

late” and .“articulately’’, respectively. This change or

amendment was required .to, meet the rejection of the claims

by the examiner, The term “articulate” was used, accord-

ing to appellees, in ‘the ‘fense of “consisting of segments

united by joints” ; Appellees argue that appellant is

estopped to claim more ‘than what was agreed to in the

/

«82. :

patent office. They contend that by accepting the sub-

stitute terms, the restriction of the claim is not only to

“hinged” ‘connections -instead of “articulate” connections

but that the “hinged” connections as distinguished from the

._ “detachable” connection must be located as th@claims set

out. This would leave appellees, as they did,_free to choose

another corner of the triangle for the detachable connec-

tion, but this connection fails. The location of the detach-

able connection was in ro wise changed by. the new lan-

guage. It continued to be located where it wus originally

stated to be located. The substitution of hinged connections °

for articulate connections at the non-detachable points in

no way indicates an abandonment of the principle of a

detachable corner, or a restriction as to its location. There

was simply no basis for file-wrapper estoppel. There was

no attempt to recapture, revive, or restore something that :

had been abandoned or surrendered in the patent office.

cr. Edward Valves, Ine. 2 Cameron Iron Works, Inc., 5

Cir., 1961, 286 F. 2d 933.

Having elii ainaated the question of file w rapper estoppel

‘from the case, we apply the doctrine of equivalents ta de-

termine the question. of-infringement. And in so doing, we

adhere to the established rule that the patent was. not

_ limited to the preferred emt odiruents shown in the claims

or drawings. See Continental Paper Bag. Company v. East-,

ern Paper Bor Co., 1908, 210 U.S. 405, 28 S. Ct. 748, 52 L.

_ Ed. 1122; Thurber Cc orpo, ation v. Fairchild Motor Corpora-

~ tion, 5 Cir., 1959, 269 F. 2d 841; Bryawv. Sid-W. Richard- -

son, Inc. 5 Cir., 1958, 254 F. 2d 191; and Cameron Iron

Works v..Stekoll, supra. We approach this question on the

Reet 2

assumption of,validity, and without making anv determi-

nation that the patent is to be accorded anything :ore thun

a narrow range of equivalents.

The law is that substance is not to be subordinated to

form so as to deprive one of the benefit of his invention. -

‘And it is settled that if the accused device performs sub-

stantially the same function in substantially the same way.

to obtain substantially the same result, it infringes. Graver —

- Tank & Mfg. Co. v: Linde Air Products Co., 1949, 339 U. S.

605, 70 S. Ct. 854, 94 L. Ed: 1097; Bryan v. Sid W. Rich-

ardson, Inc., supra; and Industrial Instr ument Cor ‘porati: iz

v. The Foxboro Corporation, supra. .

_The accused device is not only identical in appearance to

the device made from the patent, but it performs the same

function and obtains the same result in substantially the

same way. It differs in structure only by having the detach-.

able corner of. the triangie at one corner of the triangle

rather than at another, The- évidenée’ was clear from a

court-room demonstration, indeed undisputed; that the ac-

cused device was operable, when the detachable corner of it

was moved to the corner taught by the patent. The evidence

was also clear that thé device of the patent ;was operable _

when its detachable corner was moved to the corner used on—

the accused device. Either; with the change, -could be used

commercially with minor mechanical] adjustments.

The mode of operation, ie., folding and unfolding, dif-

_Sers in the manner and degree heretofore described, and °

this- differenee results entirely from the selection of a

_.different detachable corner. It results in arsimpler folding

Qq . |

‘

—

34

_and unfolding procedure, and no doubt a somewhat safer

procedure than that of the device of the- patent. All move- ~

ment of the parts of the accused device takes place within

the perimeter of the unit, whereas one end of the device

of the patent in the folding and unfolding procedure pro-

trudes its full length beyond the perimeter of the device of

the patent. We hold that-this, however, is not such sub-

_ stantiality of difference in the mode of operation as to be

without the range of even the narrow equivalents which

_ we accord this combination patent. The accused device

under the doctrine of equivalents clearly infringed the

claims of the patent in issue, and we reverse in this respect.

We remand the case for a determination of validity.” If

the patent was.or is in fact volid, it nevertheless would

have little, if any, value if such a minor change as was

m.‘e in the accused, device could avoid infringement. A

‘ finding of validity would have posed the question in the

District Court of the worth of the patent in the light of the

alleged infringement.

The when - wait was held valid and infringed in Beatty Safway Scaf-

fold lip-Right, Inc., 9 Cir., 1962, 306 F. 2d 626, cert. den.,

Mareh “4, ‘1963, 31 Law Week 3281. The accused device there was no

differerit in form from the accused device here.-

Of course, it was not the same device and defense counsel here are

different. There was apparently no showing of finding there that

the accused device was safer or more efficient but both are inherent

in any examination of a device such as that accused.

. REVERSED and REMANDED for further proceedings

- not inconsistent herewith.

e A true copy

Test: EDWARD W. W ADSWORTH

Gierk, U. S. Court of Appeals, Fifth Circuit

By Clair R. James

Deputy

New Orleans, Louisiana, June 20, 1963

; . 35 | °

LETTER-OPINION OF THE DISTRICT COURT

United States District Court,

Northern District of Texas.

Dallas 21, Texas.

June 20, 1961.

Chambers of

Joe Ewing Estes

Chief Judge

E. Hastings Ackley

Wilson Bldg.

Dallas 1, Texas

Mellin, Hanscom & Hursh

Oscar A.-Mellin

391 Sutter St.

San Francisco 8, Calif.

Cc arrington, Johnson & Stepherfs

Mr. Paul Carrington & Mr. Marvin Shoenen

1700 Mercantile Bank Bldg.

Dallas 1, Texas. —~

¢

Gentlemen:

Having heard and viewed the evidence presented and

studied thoroughly the excellent brief presented to the

court, I have determined that plaintiffs’ Johnson patent

has not been infringed by the accused Aldek device of”

-Defendant and Intervener. Plaintiffs’ patent, a combina-

tion patent in a very old and crowded art which embodies

no new individual elements, is entitled at most to only a

36

very narrow range of.equivalents. The accused device does

not fall within this range. The Aldek device is simpler,

safer and more efficient in operation, and is substantially

and materially different in structuré, mode of operation,

and result. | |

_ It. is therefore unnecessary to decide the issue of the

validity of plaintiffs’ Johnson patent.

The ‘court -is: further of the opinion that no attorney’s

fees should be aw arded i in this case.

Defendant and Intervener will prepare and submit find-

ings of fact, conclusions of law, and judgment in accordance

herewith. | 7

Very truly yours,

JOE E. ESTES

, U.S. District Judge

JEE:b- . “.

37

FINDINGS OF FACT AND CONCLUSIONS OF LAW

OF THE DISTRICT COU RT. |

| Caption Omitted. | ;

“The above-entitled cause came on regularly for trial and

the Court having duly consilered. the evidence, and being

fully advised in the premises, now makes the following:

Findings of Fact.

1. Plaintiff Up-Right Inc. (“Up-Right”) as a California

corporation having its executiye of fices and a manufactur-

ing plant at Berkeley, California, and a manufacturing —

plant: at Teterhoro, New Jersey. Plaintiff Wallace J. S- ,

Johnson (“Johnson”) is the majority stockholder and presi-

dent of Up-Right. Up-Right is the owner of U. S. Patent

No. 2, 438, 173 ‘the “Johnson patent”, which is the : natent

in suit, issued to Johnson as co-inventor and assignee of

Thomas Harvey. . |

2. Intervener - Defendant R. D. Werter Co., Ine.

(“Werner”) is a Pennsylvania corporation with its €x-

ecutive offices and a manufacturing plant at. Greenville, |

Pennsy lvania, It is the manufacturer of a folding stairway

scaffold device (the “Aldek"’. scaffold) alleged by plaintiffs

to infringe Claims 1 and 2 of the Johnson patent. Werner

is the owner of U.S. Patent No. 2,941,616 issued to Charles

F. Grover and Richard L. Werney, assignors to Werner;

the Aldek scaffold is the scaffold illustrated, described and

claimed in said patent. Defendant Safway Products Inc.

(“Safway”) is a Texas corporation with its principal offige

4

38 ° é, ’ >

in Dallas; Texas. Safway“is a distributor of the Aldek

scaffold. |

3. Plaintiffs charge defendants with infringement of

Claims 1 and 2 of the Johnson patent by the manufacture

-and sale by Werner, and the sale by Safway, of the Aldek

seaf fold. :

4. Each defendant contends it has not sical Claims

1 and 2 of the Johnson patent by the manufacture and or

sale of the Aldek scaffold, or otherwise. Each defendant

contends that Claims 1 and "2 of the Johnson patent are

. invalid on the grounds of overclaiming ‘and failure to com-

ply with Rev. Stat. 4888 (former 35 U.S.C. § 333, now

U‘S.C. § 112), and alternatively on the grounds of lack of

patentability over the prior art.

5. Claim 1 of the Johnson patent is for “a scaffold unit

comprising a rigid platform section, a rigid supporting

section at each end of the platform section, a hinged con-

nection between adjoining ends of the platform and sup-

porting sections,.a ladder section hingedly connected at one

end to the end of one supporting section at the junction

between it and the platform section, and a detachable con-

nection between the other end of the ladder section and the

other supporting section at the end of the latter opposite

its connection with the platform section.” C laim 2 of the

Johnson patent is identical to Claim 1, except for the addi-

tion of the following: “_.. and a brace extending between

* the supporting sections and detachably connected thereto

at coinciding points intermediate the ends thereof.”

39

6. Plaintifs cliim (Pre-trial Brief) that the invention

which Johnson produced, and which is embodied in the

Johnson patent, consists of, “A one-piece folding scaffold

unit comprising: ,

“(1) four major elements (platform; two onli: lad-

: der)

"(ay three of which (platform, end and lad-—

lader) form a triangle, and

| “(b) the fourth ‘other end) connects at a .

corner of the triangle;

“2) four connections {three -hinge and one detach-

able)

“ia) in which the three corners of, the tri-

, we angle are formed, by two hinge connec-

tions and one detachable connection, and 7

“ib) in which a hingle connection conne ts

- the other end to one corner of the tri-- |

an eit

and “without specfying one out of the. three corners of the

triangle for the detachable connection.”

7. The disclosure of the Johnson patent is confined to a

- specific scaffold unit which in the erected structure is

interconnected, has two rigid end sections, a rigtid platform

section, a diagonal! jadder section ‘Claim 1); and a ‘br ace

between the end sections in order to position vertically the

end section opposite the end section to which the bottom of

the diagonal ladder-is connected (Claim 2), as in Figures

1 and 3 of the Johrison patent. The disclosure of the Johnson .

patent is confined to a specific scaffold unit in which, in

the structure in any condition, the two rigid end sections

% °

40.

are hingedly connected to the respective ends of the plat-

form section, the upper end. of the diagonal ladder section

is hingedly connected at the intersection of the. platform

section and one end frame, and the lower end of the diag- -

oftlladder section is detachably connected at the lower end

of the opposite end frame.

8. The disclosure of the Johnson patent is confined’ to a

specific scaffold unit in which in folding for collapsing the

erected structure thereafter “collapsing” ), the brace in

Claim 2’is disconnected ‘entirely. from the unit; the free

end section is rotated inwardly and the remainder of the

unitds rotated downwardly, toward each other through an

arc of 45° until the free end section lies as close as possible

to the ladder section, w hich is at this point almost ‘horizon-

tal: the-lower end of the iadder section is disconnected from

the transverse frame member at the lower end of the end

sevtion to which the bottom of the ladder 1s. detachably

connected in the erected structure; that end section is ro-

tated outwardly and up and over and down, through an arc.

of 270 - until lying flat on top of and parallel to the plat-

form section, and at the same time lowering the platform

section through an are of 45 until next to the ladder and

free end section with the ladder and free end section ly ing

flat on the underside of and parallel to the platform section.

The disclosure of the Johnson patent is for a specific seaf-

fold unit collapsing in practice with the foregoing mode

of operation, as in Figure 3 of the Johnson patent, though

the steps'in each mode of operation are stated in a different

order, not employed in actual practice, in the description

‘in-the Johnson, patent.’ pe 3

a

«

: ~ 41

9. The dieeows re of the Johnson patént is confined to a

specific scaffold unit in, which. the members are relatively

positioned by offsetting so as to fold into a compact pack-

age in the manner described in F inding No. & employing

' the hinged ‘connections and detachable connections particu-

larly located as set forth in Claims 1 and 2,, and collapsing

by rotation ef end members and the ladder member about

(that is, rotating.and then coming to rest above and below |

the platform member. ; .

10. The disclosure of the Johnson patent is confined to a

specific scaffold unit in which, in the collapsed structure

the end section to which the bottom ‘of the ladder section

detachably connects lies flat on top of and paralie: to the

platform section, and the free end section ‘after removal

of the brace set forth in Claim 2) lies flat on the underside

of and parrale! to the. platform sectivn, making a flat ‘com-

' pact package of approximately ‘three tube diameters’ thick-

ness, as in Figure 8 of the Johnson patent and the deseri}-

tion therein.

..11. The discloure of the Johnson patent is confined to a

specific seaffold unit in which in unfolding -thereafter

“erecting”, the steps described “in the actual mode of col-

lapsing in Finding No. 8, are foliowed in reverse.-

12. The Johnson patent does not contain aie disclosure

of any seaffold other than a particular folding stairway

seaffold in which the erected structure is as described in

Finding No, 7, in which folding. is as described in Finding

Nos. 8,-9 and 11, and in which the collapsed structure is as

2 | Oo

42

described in Finding No. 10. There is no indication or

mention in the Johnson patent that the subject matter of

the alleged invention therein was- as plaintiffs claim; as

set forth in Finding No. 6. On the contrary, the dudes

of the Johnson patent is limited to the specific embodiment

of the scaffold, as above set forth.

13. The evidence does not support plaintiffs’ contention

that the subject matter of the alleged. invention was as

claimed by plaintiffs as set forth in Finding No. 6. ‘The

evidence on the whol to the contrary.

14. The file i of Patent No. 2,438,173 ‘tains

that Johnson and Harvey in order to secure their patent

substituted “hinged” for “articulate” and “hingedly” for :

“articulately” in Claims 1 and 2, during the prosecution of

their application in the Patent Office. They represented

to the Patent Office, in order to distinguish the alleged in-

- yention over ‘the discoveries of earlier inventions cited by

the Patent Office as primary references in rejecting the

claims as uiled, that they considered the distinguishing

features of the alleged invention over the prior art to be ©

(1) “the hinged connection of the platform section to. the

end supporting sections”, (2) “a ladder which is hinged to.

one end of an end and supporting section and detachedly

secured to the opposite end of the other supporting section,

so as to provide a diagonal brace’’, and (3) hinged connec-

tions which allowed “all of the sauna to be folded upon one

’ another”.

15. No reissue of the Johnson patent broadening the

"specific claims for the device in Claims 1 and 2 of the

43

Johnson patent has ever been sought, ‘applied for or re- ~

ceived. More than two years have elapsed since the issuance

of the Johnson patent on March 23, 1948. ;

16. Each of Claims 1 and 2 of the Johinsén patent calls

for a structure in which the bottom of the ladder section is

detachably connected to the lower end of the end frame to

which the bottom of the ladder is connected, and in which

the platform section is hingedly connected to the top of

both end frames. The Aldek scaffold does not ‘have or em- |

‘body a structure with such connections or any equivalent

structure. | . > fa

17. The Aldek scaffold has a hinged connection at both

ends of its ladder section, and “has a detachable connection *,

at the juncture between the top of the end section to whieh

the bottom of the ladder adjoins and the platform section. _

Further, in order that the Aldek scaffold may fold into a

flat ‘compact package ,it has for use with its particular

interconnections different rélative relationships between its

yarious elements and different offsetting between those

elements, than the scaffold device claimed, described and :

disclosed in the Johnson patent. Use of the particular de-

tachable and hinged connections employed by Aldek in the

_ device otherwise claimed, deseribed and disclosed -in the

Johnson. patent, without other. changes, would make. the -

Johnson device inoperable.

18. The Aldek seatfold does not have or + @abody a mode.

of operation like that in the specific scaffold unit to which

the disclosure of the Johnson patent is confined, nor any °

equivalent mode of operation. To the contrary, the Aldek

AA

seaffold platform and end members fold about: (that is,

fold flat against and parallel to the upper side and- ‘under —

_ side of ) the ladder section rather than the platform section — |

as in the Johnson devi ice—with the end secton to which the

~ bottom of the ladder section is hingedly connected, and then

the platform ‘section, lying on ‘the upper side of the ladder

section and with the frée end section lying on the umnlerside

of the ladder section. In collapsing and erecting the Aldek

structure, the end section to which the ladder is hingedly :

connected, and the platform section, rotate through ares of

45. only, rather than the are of 270 through which the

Johnson device end section to which the bottom of the lad-

der attaches and must rotate. In the last stage of collapsing

or the first stage of erecting the Aldek scaffold, one mem

_ ber, only, at a time is rotated through its are,of. 45°, rather

than the simultanéous rotation in the Johnson device of the

~~ end section to which- the | bottem of the ladder attaches”

through an are o£270° “and the platform section simulta-

neously’ through, an are of 45. .

19. In the Aldek scaffold when collapsed, the bottom leg

ends are pointed’ in the same direction, with the lower ends

of the free end section protruding from the main portion of

the-collapsed package. In the specifie Johnson device to

which the disclosure of ihe Johnson patent is limited, the

bottom leg ends are pointed in opposite directiens, with

the detachably connecting end of .he ladder section pro-

truding fron ee portion of the collapsed package.

20. The Aldek scaffold reaches aeerent results from

the specific devi ice to which the Johnso wal patent disclosure.

° of

is limited. The Aldek scaffold is simpler mechanically, and

is simpler to operate, and is thus faster to operate and

‘more efficient. Safety is of paramount importance in seaf-

‘ folding, and particularly in towers w here one or more.units

are erected one on top the other as the Johnson and Aldek

scaffolds often are. Aldek is safer for the above reasons, °

which. result in a stronger feeling of security on the part

‘of the operator. The Aldek scaffold is also safer because it:

avoids the tendency. of imbalancing’ on account of the out-

ward swing of 270° in the Johnson device.

21. The Aldek scaffold has a different structure, a dif-

ferent mode and principle of operation, and’ different re-

sults from the structure claimed, described, or disclosed in «

the Johnson patent. (Ho

22. The Johnson patent is not a pioneer patent, it being -

simply an improvement p.tent in a very crowded, fieid. j

23. Claims 1 and 2 of the Johnson patent are “combina- |

tion” claims, the alleged invention residing entirely in the

combination of the elements recided therein, rather than in

_ the elements themselves, each of which was old and well

* known at the time the application for the Johnson patent

“was filed.

_ 24. Johnson and Harvey were not the inventors of the

| folding scaffold, as such. They’ were not the inventors of

the diagonal stairw ay scaffold i in which the stairw ay served

the cual function of bracing the structure and ‘getting a

workman up and down. They were not the inventors of a.

» portable and collapsible scaffold structure with Johnson's:

46

four or five elements (the Johnson device consisting of five .

elements including the extra crossbrace) which could be

erected and collapsed by employing the principle of a fold- -

ing triangle with two hinged corinections and one detach-—

able’ connection. They were not the inventors of a scaffold

unit relatively proportioned to accomplish flat folding.

25. The following references, each of which preceded

“ie Johnson and Harvey’s original filing. date by more than

one year, are directly pertinent items of prior art, but were °

not considered by the Patent Office during prosecution of

_ said application:

‘Blomgren and Anderson Patent” No. 69,168.

Baker Patent No. 406,617. }

“Safety Engineering as. Applied to Scaffolds’, The

Travelers Insurance Company, 1915.

Interior diagonal stairw ay scaffolds used in ae

* of the, San Francisco-Oakland Bay Bridge, 1934-1935;

the Herald Square Building. i in New York City, 1940; are

im construction projects on many other occasions since the

early part of the century. ;

Martin Patent No. 1,912,947.

Boeing Aircraft Company ‘portable diagonal stairway

seaffold, used beginning about 1941 until] 1944 toward the

ea end of Woria War II. Published in “Air Transport” maga-.

zine for May, 1945.

| Southern California Wind Tunnel scaffold, sae begin-

ning in 1941 until ey .

wooo

£

’

Cederquist Patent No. 2,312,148,

_ £6. Each of the references in Finding No. 25 not repre-

sented by patents, was used publicly more than one year

prior to the filing date of the Johnson patent. Each of the

publications referred to were published more than one year

prior tothe application for the Johnson patent. ,

27. The following publications, showing the Southern

California Wind Tunnel scaffold structure were published

before the actual alleged invention was: made by Johnson

and Harvey: '

“Engineering and Science Monthly” for July, 1945. °—

“Aircraft. Production” magazine for August, 1945. __

28. The ure of a diagonal stairway in a scaffold struc-

ture is old and has been employed since the early part of the

century; and use of a diagonal interior stairway ‘in scaf-

folding is unpatentable ovér the prior art. “Safety engi-

neering as Applied to Scaffolds”: San Francisco-Oakland

Bay Bridge; Herald Square Building.

29. A erected tubular portable structure with rigid end

"sections, a rigid platform section, and a diagonal ladder

section serving the dual function of bracing the structure

and providing # way up and down the structure is within

the prior art, as shown in Boein, Seaffold (“Air Trans- -

port” magazine for May, 1945) and Southern California

_ Wind Tunnel (“Engineering and Science Monthly” fer

July, 1945). | |

48

30. A folding seaffold with two rigid end sections, a

rigid platform section, and a ladder section, portable and

‘collapsible, relatively propor tioned to accomplish flat fold-

ing, and which was erected and collapsed by employing the

method and principle of a folding triangle with two hinged

connections ‘and one detachable connectidn at’ thé corners

of the triangle, was known to the’ prior art. Cederquist

Patent, No. 2,312,148.

31. Flat-folding of interconnected elements by means

of offsetting members, use of offset hinges or otherwise,

involves mechanical skill only, and was known to the prior

art. Tayor Patent No. 2,312,602; Martin Patent No. 1,912.-

947; Cederquist Patent No. 2,312,148.

32. If. the specific language of Claims 1 and 2: of the |

Johnson patent were stretched by interpretation to cover

the Aldek scaffold, the claims would embrace an alleged in-

vention broader than the patented invention in Claims 1

' and 2% no reissue patent was sought or applied for within’

two years after the date of issue of the Johnson patent.

_ 33. The device claimed, described nad disclosed in Wer-

ner Patent No. 2,941,616 for the Aldek scaffold was issued

by the.Patent Of fice over the device disclosed in the Johnson

patent. 1 find as facts frem the evidence in the record other

than the determination of the Patent Office to issue the

Werner Patent that such Aldek device is different in struc-

ture, mode of operation and results from the device in the

Johnson patent.

49

From the foregoing facts the Court now vides the fol-

lowing:

. Conclusions of Law

1. Plaintiffs have no cause of action against defendant

and intervener for alleged infringement of U. S. Patent

No. 2,438,173 (the Johnsoii patent).

2. Plaintiffs have the burden of proving infringement.

Plaintiffs have failed to sustain their burden of. proof that

defendant and intervener have infringed Claims 1 or 2 of

the Johnson patent. On the contrary the record in the case

clearly shows that all of the. claims of the Johnson patent

are limited to a particular form of folding scaffold and

that these claims are not infringed by the accused folding

scaffold.

3. Claims 1 and 2 of the Jolinson patent are for a com-

bination of elemerits, the claimed combination consisting in

each case, among other things, of a detachable connection

at the bottom of the ladder section and hinged connections

at each end of.the platform section at the juncture of the

» Same with the end sections. Since the Aldek scaffold does

not have a detachable connection ‘at the.bottom of its ladder

section,-and af one end of its platform section does not

have a hinged connection; and sineé the Aldek scaffold has

an entirely different mode of operation and operative func-

tioning, and reaches different results from the Johnson

device, and thus is not the equivalent thereof: the Aldek

scaffold cannot infringe either of Claim No. 1 or Claim No.

2 of the Johnson patent. | ”

-.

4. When setting out the nature of his invention and the

scope of his claims in the prosecution of his patent before

the Patent Office, plaintiff made the representations set

‘forth in Finding of Fact No. 14, which were relied upon by

the Patent Office in granting plantiff’s patent; plaintiff

is then estopped from asserting a broader or more liberal

interpretation of the claims of his patent in this suit for

infringement than the interpretation which the plaintiff

gave to those sume claims during: the prosecution ail the

patent.:

_5. The Johnson patent is a combination patent in a very

old and crowded art and not a prioneer patent. It is entitled

only to a very limited range of equivalents; and the accused

device does not fall within this range of equivalents. —

6. The issuance of U. S. Patent No. 2,941,616 covering

the Aldek scaffold does not create any presumption that

the Aldek scaffold does not infringe Johnson Claims 1 and’

2. In determining the question of infringement as a fact,

the action of the Patent Office in granting the Aldek patent

is entitled to be considered along with other evidence in the

record upon the fact questicn>of whether, between the two

devices, there is a.substantial difference.

. Where as in this case non- Aatvinapaaens is clear and -

isin is no widd interest in the commerciai community he-

yond the interests of the parties themselves in the validity |

of the patent, the Court in its discretion may determine not

to reach the question of validity. -I so determine not to reach

the question of validity of the Johnson patent.

5}

8. Intervener-defendant Werrfer contends that he is en-

titled in the discretion of the Court to the recovery of an

attorney fee under 35 U.S.C. § 285. The Court is of the.

‘opinion that no attorney’s fees should be awarded in this

case, | ;

_ 9. The action must be dismissed and judgment entered

for defendant and intervener, with costs against the

plaintiffs. . eee

Let judgment be entered accordingly.

Dated: June 30, 1961. -

JOE E. Estes,

: ra United States District J udge:

62

JUDGMENT OF THE COURT OF APPEALS

{Caption Omitted]

. Before Brown and Bell, Circuit Judges, and Simpson,

District Judge. a

JU DGMENT

This cause came on to be heard on the transcript of the

record from the United States District Court for the - -

Northern District of. Texas: and was argued by counsel;

ON CONSIDERATION WHEREOF, It is now heré or-

dered and adjudged by this Court that the judgment ofthe

said District Court in t!is cause be, and the same is hereby,

reversed ; and that this cause be, and it is hereby, remandea

to the said District Court for. further proceedings not in-

consistent with the opinion of this Court;

It is further ordered and adjudged that the appelles,

Safway Products, Ine. and R. D. Werner Co., Inc., be con-

demned, in solido, to pay the costs of this cause in this

Court for which execution may be issued out of the said

District Court.

, »

March 29, 1963

Issued as Mandate: June ii, 1963

Recoverable Costs:

Docketing Cause, ete. or $ 25.00

Cost of Printing Record . 1631.75

- $1626.75