# Appendix — Popeil Bros. v. Zysset > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1452%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1964 - **Citation:** 376 U.S. 913 ## Text a) Oltrce Supreme Court, U.S FILED _ . |. O8T 15 1963 S54... : . ~~ JSORR F. DAVAS, CLARK IN THE Supreme Court of the United States hiseus nr Trem, 1965. POPEIL BROTHERS, INC. - Petitioner, "9. KARL ZYSSET and’ NEW-NEL KITCHEN i RODUCTS COMPANY, Respondents. & Petition ee a Writ of Certiorari té the United’States Court of Appeals ‘for the Seventh Cireuit. i . ‘APPENDIX TO PETITION FOR CERTIORARI GEORGE KB. CHRISTENSEN 38 South Dearborn Street Chieago 3, [hinois DtGaLp S. McDovuGaL. 13 South LaSalle Street. Chicago 3. [lhimots Jay ERENS 100 South Wacker Drive “Chieago 6, [linois Counsel] for Petitioner Worston, Straws, Surtti & Parrersos Qoms, MceDoveats & iat ’ ey ee ounsel, . The Scheffer Press, Inc—ANdover 3-6850 ; { c a , INDEX TO APPENDIX * PAGE Constitutional provision aad statutes involved . Te Court of Appeals’ apinion -of whieh review is pray ed, ST TS SEA ih ccvecau cans asus akicatacoensris eemmacaneemalaautialaeaiediess 7a Original opinion of District Court on merits, 167 F. SPP Ps BOD ccesssscesseeescesesessnesessnessnesseessnans spetndoaseeiakerMiganisnntsy: Zia First opinion of Court of Appeals, 276 F. 2d 354 ........ 36a Findings and Cone lusions, of District Court re Wilson & Macallay patent, 199 PF. Supp. 594 cn. cence: $a Findins. c onclusic ms and Judgment of District c ourt re aamages Order of District Court denying relief from judgment 69a Eixcerpts from testimony of Lawrenee C. Kingsland .. Coa Iixcerpts from file wrapper of patent im suit wo... 74a Mandates of Court of Appeals .....0.. ee paieisapecaics 88a ‘e re, ) e s ge a. la — APPENDIX ” CONSTITUTIONAL PROVISION AND STATUTES _ INVOLVED | -. CONSTITUTION oF THE UNITED STATES: “Art. 1§8: “The Congress shall have Power “To promote the ‘Progress of Science and uset uMaArts, by securing for limited Times to’Authors and hiventors the exclusive Right to their respective Writings and D.- “’ « .** coveries : FORMER PATENT ACT RECOVERY SECTIONS Section 70 U.S. C. Prior to 1946: : “The several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunetions according to the course and principles of court of equity. to prevent the vidlation of any rigi.t secured by patent, on such teyms as the @ourt- may deen reasonable ; and upon a qweeree being rendered in any such case for an infringement the complainant shall be entitled to recover, in addition to the profits to be aecounted for by thie ds fendani, tue damages, the cemplainant has sustaine i thers by, ead’ the court shall assess the same or cause the sam i . - “ . ° . o . to be assessed. under its direction. Tt on the proots it shal: ‘apperr that the complainant has sutfered.damage from ti» infringenient or that the defendant has. realized protit- therefrom to which the complainant is justly entitled, b that such damages.or profits are not susceptible of eateula tion and determination with reasonable certainty, the eourt may, on evidence tehding.to establish the same, in ats es cretion, receive opinion or expert testimony, Which is her - d — 2a é— . hy ‘deélared to be eompetent and admissible, subject to the general rules of evidence applicable to this charaéter of testimony >and upon such evidence and all other * evidence — in’ the record the court may adjudge and decree the pay. ment by. the defendant to the complainant of a reasonable sun as profits or general damages for the infringement. ra we (42 Stat. S92, 35 USC See. 70 (1940 Ed.}) a "Section 70 U. 8. Code 1946 to 1952: “The several courts vested with jurisdiction: of cases arising under the patent laws shall have power to grant: injunctions according to the course and pranciples of courts of equity, to. prevent the ciolation of any right secured by patent, on such terms as the court may deem reasonable ; - und upon a judgment being re indered in ‘any case for an infringement the comptaimant shall be entitled to: recover general damazes which shall be due compensaiion for mak- inw, using, or selling the invention, not less than‘a reason able rovaity therefor, together with such costs, and inter- est, as may be fixed by the court. The court may in its ‘diserction award reasonable attorney's fees to the prevail Ing-party upon the entry of judgment on any patent tase. : “he court iscauthorized to receive. expert oF opinion evidence upon which to determine in conjunction with any other evidence in the record, die gompensation for mak. ine, using, or selling the invention, and such expert or opin’ lon evidence 1s deégiared to. be competent and admissible! subject to the general rules of evidence applicable thereto ee e160 Stat. 778, 95 TSC 60 (146 ed.) ) —3a-— . The Patent Act, 35 U.S. Code, Sections as follows: M8134. Appeal to the Board of Appeals “An applicayt for @ patent, any of whose claims has been tWice rejecyéd, may appeal from the decision ‘of the pri -mary examiner to the Board-ot Appeals, having once paid the fee. for such appeal. July JY, 1952, 6. 990, $1, 66 Stat. fae aa . “$14. “Appeal to Court of Customs aid Patent Appeits “An applicant dissatistied with the decision of the Board , of Appeais niay appeal tothe Umited States Court of Cus toms and Patent Apporls, thereby waiving his right to pro ceed under section 149 of this title. A party to an inter ferences dissatisticd with the decision of the board of pat ent interferences on the questioncof priorny may appeal te the United States Court of Customs and Patent Appeats, : but such appeal shall be distaissed if any adverse party to “such interference, Within twenty days after the appellant has filed: notice of appeal aceording to section 142 of this title, files notice with the Commissioner that’ he elects to have all further proceedings conducted as provided. in sec tion 146 of this tith. ‘Thereupon the appeliant shall have thirty days therearter within which to file a etvil: action - under section 146, in defanit of which the decision appealed from shall govern the further proceedings im the ease. July 19, 1952, 6. 940, 01, 66 Stat. $02, F “A142. Notice wor appe al: { . ‘ “When an appeal i-taken to the United States Court, of Customs and Patent Appeals,.the, appellant shall give notice therecf to the Commissioner, and shall. tile in th Patent Oilice jis reasgns of appeal, specitically set forth —4a— in writing, within such time after the date ef the deeision appeuied from, not Jess. than sixty days, as the Commis- sioner appoints. July 19, 1952, ©. G40, 41, 66 Stat. S02. “S145. Proceedings on appeal “The United States Court of Customs and Patent Ap? peals shall, before hearing such appeal, ri. notice of: the thine and place of the hearing to the Commissioner and the parties thereto. The Comnussioner shall transmit to the court certified copies of all the necessary original papers and evidence in the case specified by the appellant and ans additional papers and evidence specified by the appeiies and in an ex parte case the Commissioner shall furnish the court with the grounds of the decision of the Patent Office, In Writing, touchins ‘all the points involved by tie reasons of appeal. July 19.1952, 6. 950, 61, 66 Stat. S02. ss “S144. Deciston on appeal “The Lnited States CoutM of Customs and. Patent Ap. peals, on petition, shall lear and determine such. appeu! on the evidence produced before the Patent Otheé, and the decision shall be confined to th pomts set forth an th reasons ot appeal. Upon its determination the court shal! return: to the Commissioner a certificate of its proceedings and decision, which shall ke entered of recor Lin the Pat ent Office and govern th: further proceedings In the case ~ July (YW. 132, 6a, ST, 66 Stat. SOZ. “S140. Creel action to obtain pritent “An applicant dissatustied with the decision of the Board of Appeals may unless appeal has been taken to the United States Court of Customs and Patent Appeals, have remeds by etvil action against the Commissioner ino the United States District Court for the District of Columbia if com G> — ° c A . meneed within such time after such decision, not less than sixty days, as the Commissioner appoints. The eourt mas adjudg« that such appleant is entitied co receive a patent for his invention, as specified inany of his claims invobyod in the decision of the Board of Appeal, as the facets ia the ‘i . ° a . ” x ease may appear and such adjudication shall authorize the Comimissione: to issue such patent on compliance with the requirements of law. All the expense. of the proceedings. - shall be paid by the. applicant. July 1, 1902, 6. 950, V1, 66 Stat. SOS" ; (PRE Presumption of validity. detenses “A patent shall be presumed valid) “The burden of estat lishing invalidity oP patent shall rest oma party assertims 1t. . “The following shali be defenses mans action involving the validity or lafringement of a patent and shall be pleaded : "C1) CNommtrihgemensy, absenes of liability for mt rings ment Or unentoreeability , | eey st (2) Tmvahidit,s of the patent or any elamiaim suit on any ground speettied on part PP oof this tithe as a eondigiot ‘for patentability, e "oy Pmvalidity of the patentoor ans elaim i suit for failure to comply with ans requirement or sections T]2 er PL of this title. : i . ‘ ' "(4) Any other fect.or act ridide stecdeterse by thix tith ou GQ a “$234. Damages “Upon finding for the claimant the court shall award ‘the claimant damages adequate to compensate for the infringement, but in no eveht less than a réasonable rovalty for the use made of the invention by the in- fringer, together with interest and costs as fixed by the court. + “When the damages are not found by a jury, the court shall assess them. In either event the court may increase the ‘damages ap to three times the a camount found or assessed. “The court may reecive expeit testimony as an aid to the determination of damages or of what royalty would-be reasonable under the circumstances.” = ww poe, nen (The Court Of Appeals Opinion Of Which Review ° r Is Prayed) (7 Civ. JIS F.2d FOL, 37 USPQ 694). ZYSSET et al. v. POPLIL: BROTHERS, INC. Nos. 13939, 13940, 14007 “June 3, 1Y65 . [Paragraph Numbers Supplied | Before Scunackexpers, Castiz, and Kinicy, Cireuit Judges. Castiy; Circuit Judge. (1) Karl Zysset, patentee, and New-Nel Kitchen Prod- ucts Company, his livensee, sued Popeil Brothers, Lae, for infringement of Zysset Patent No. 27susle. A> trial restricted to the issues of validity of the patent-and its infringement resulted: in a judginent for the plaitiffs entered in October 195s. Defendant's appeals from that judgment, and from -the Distriet Court's dental of 4. subsequent motien for relief therefrom on the basis of newly -discovered evidence, were considered by this Court in Zysset ve Popei! Brothers, Inc. 7 Cir, 276 Fitd 354, 124 USPQ 20, cért. den. 3864. US. 826, 127 USPQ D0. A detailed description of thie Zvsset device, a vegetable shredder or Ghopper, and. its manner of operation, to- gether with the claims of the patent, are set forth in that opinion (pp. 355-356, LA USPQ ar 260-251) end need not be repeated here. This Court affirmed.’ except as te claime 1, the judzment order of the Distriet Court ‘finding the Zysset patent to be valid and infringed and enjoining the defendant from turther mfringement, , ‘Opinion filed February 11, 1960: modified and rehearing denied Apri! 14, 1960, 125 USPQ°152; mandate issued May 18, 1960. : ‘hie oat ‘ [2] On the subsequent trial of the issue of plaintiffs’ ‘damages, and of the defendant's counterclaim for breach of contract and unfair competition,.the District Court awarded judgment for the plaintiffs for $182,320.38, repre- senting $126,103.12 for damages and $56,222.26 for plain- tiffs’ attorneys’ fees and disbursements, and for costs. The judgment was entered July 13, 1962. (3] -Prior to the trial of the issue of plaintiffs’ dam- ages the defendant on December 29, 1960, filed a motion’ seeking that the accounting which the District Court had : _ ordered be terminated and that a final judgment be en- tered for nominal damages. This motion was grounded on the conte ntion that claim 2, the remaining claim of the patent in suit. lacked noselty and patentable invention over Wilson & MeCaliay Patent No, 207,146, presented as ‘ a’newly discovered prior-art reference. The motion was heard on its merits and denied. {4] Both plaintiffs and detiodiont appealed from the July 13, 1962 judgment. Subsequently, on November 5, 1962, the defendant filed in the District Court a second motion for relief from judgment on the basis of ‘certain Swiss patents presented as newly discovered evidence ot prior art invalidating the Zysset patent.’ The motion was denied. [5] ‘Plaintiffs on their appeal (No. 13939) contend that the damages awarded are inadequate. Defendant on its * The motion although captioned “Motion For Mitigation Of Damages Or For Application Of The Rule De Minimus Non Curat Lex’ was on defendant’s motion’ treated as a motion under Rule 60(b) (2), Federal Rules of Civil Pro- cedure (28 W'S.C.A.), for relief from the October am08 judg- ment of validity and inffingement. *The motion prayed for issuance of a certificate to this Court requesting a remand of the cause pursuant to the pro- cedure outlined in Binks. Mfg. Co. v..Ransburg Electro-€oat- ing Corp., 7 Cir., 281 F.2d 252, 260-261, 126 USPQ 318, 326. . — 9a— e cross-appeal (Na. 13940) and on its appeal (No. 14007) contends that the court erred in denying the defendant's _.Tespective motions for relief from judgment on the basis of newly discovered evidence—erred in not holding claim 2 of the Zysset patent invalid—and, in. any event, that the. court erred in awarding attorneys’ fees and disbursements, and costs, to plaintiffs. [6] Contrary to the interpretation defendant secke to place on Zysset v. Popeil Brothers, Inc., supra, upon which faulty premise defendant bases the relevancy of its newly cited prior-art references, it is abundantly clear that it is the single-piece sinuous blade in .combination with the sinuous slot of the wiper cup, the housing, indexing” feature and torsion elutch. all of which are included in claim 2, which was held to constitute patentable invention. It is the combination which was held valid and infringed. —not any particular element thereof, peor se. In Zusset v. Popeil Brothers, Inc., it was pointed out (276 F.2d 354 at 357, 124 USPQ 250, 252) that the sinuosity of the . blade and slot in the wiper cup was an important element in the “combination (lain. -d in the patent” and that: “Tt eliminated the problem of particles wedging between multiple blades without loss of the advantage: of the additional chopping surfaces, and in. combina- tion with the indexing feature produced a result. beyond that of inere mechanical: improvement over > existing arf. .A novel idea was incorporated. While it took meehanical skill to adapt the idea to practical use, and although the mechanies employed may have been obvious, the idea was not. It possessed the ‘im- palpable something which distinguishes invention > am simple mechanical skill. Great At lantic & Pacifie Tea Co. v. Supermarket. Equipment Corp.. 340 Tas. 140, 71 S.Ct. 127, 128, 95 L.Ed. 162, 87 USPQ 303, 305." (Emphasis supplied.) — 108 — - [7]}) We deem it unnecessary for the purposes of this case to consider or pits s upon the propriety of the Distvict | Court's action. in entertaingng the defendant's motions of December 29, 1960 and November 5, 1962, either from the’ standpoint of their timeliness under the limitations of Rule 60(b)¢ or in view of the previous mandate of this Court affirming the validity... of the patent elaim tke motions attack anew. ayer ee such considerations we are’ not persuaded by de ndant’s contentions that its = failure to produce the newly cited prior-art referen ces at the 1958 trial on the issue of validity was not due to lack of diligence on its part. But more. important we perceive nothing in this newly tendered prior art which requires a change in the original conclusions of law and judgment. ‘with respect to thre validity of claim 2 of Zvsset Patent No. 2,782,826. [8] The newly cited vrior-art reference’ relied upon im _connection with defendant's Devember 29, 1960, motion Ts Wilson & MeCallay Patent No. 207,146 covering a device for use in cutting yfug tobacco during the process of manufacture, the chjeet being to eut pieces of plug tobacco in a zigzag or curved form to facilit. e the adherence of the sections one to another when subjected to pressure in the finishing process and: to enable consumers to identify the manufacturer by the shape of the pieces. Curved or Zigzag knives were emploved in the cutter- head,.and_ be- tween them corre sponding|y- formed clearing plates. After a cut is made the pieces gre separately coverea with a &) wrapper.and then brought together under pressure to form a single ‘plug which can be broken apart for the retail trade. Except for disclosing a sinuous type of knife blade Wilson & MeCallav is no better a pricr-art ‘reference than those original cited, and considered and rejected, “Cf. Marcon’ Wireless Telegraph Co. Vv. United States, 320 U.S. 1, 47-48, 57 USPQ 471, 491. | Agus es in Zysset V. -Popeil Brothers, Inc., supra.’ Its disclosure of a sinuous blade and a-clearing plate is not an enticipa- tion of the combination of Zysset. Nor ix Wilson & McCal- lay addressed, to either the purpose or problems of Zysset It uses a plurality of knives in a single cutting actin -to obtain pieces of desired shape so that they will adhere when re-united and when eventually re-separated will serve to identify the product. Jt is not a shredder or chopper using a single sinuous blade in repeated cutting operations, each from a ‘different position than the previ- ous cutting stroke, and incorporating the combination ° of features which endowed Zysset with the quality of inven- . tion over the separate clements employed. a, “{9] The newly cited prior-art referen@@s now ried upon by defendant in connection with its November 95, 1962, motion consist of Galant, Swiss Patent No. 261,313 and Hofmann, Swiss “Patent No. 269, 458° Neither’ of these discloses or anticipates the combination of Zysset. Galant, a fruit and vegetable cutter, and Hofmann,- an onion chopper, each disclose a wiper or brush-off vai through which operate multiple straight blades set ata angle to each other. Except for disclosure of a saa ‘thiev are no better prior-art references than those origi- . nally relied upon. [10] Defendant’s contentions with respect to the dis- _closwres-of Wilson & MeCallay, Galant and Hofmann are ’ See 276 F.2d 854, pp. 356-857, 124. USPQ 256, 251,-for ‘prior-art references considered , cand rejected. > ; © Defendant’s motion also tendered Piller, Swiss’ Patent No. 272.785: as -newly discovered evidence but defendant . abandoned such assertion when it was revealed that it had .been cited in an interrogator” answer filed. by plaintiff Zysset in May 1958. Piller, an onion cutter, like Galant and Hofmann, had a wiper but the multiple blades were slightly curved. — 12a — : lb predicated upon its faulty assumption that it is one ele- | ment, cr something less t! xn the whole of the combined elements, which is relied upon in Zysset to constitute patentable invention), And such is not the case. [11] On the question of defendant’s diligence: in tae discovery of these belated references it is noted that all three of the newly cited patents are shown by the record to be classified, and copies thereof physically present, “in. the same Patent Office classification, Class 146, Sub-class'S > * 160, as Zvsset Patent No. 2,782,826, Defendant attempts to negate lack of diligence’ on its part-in connection with its faure to originally cite Galant and Hofmann by reference to an affidavit by a Washington, BD.C., patent attorney that although Galant wasYeecived in the Patent Office in 1949 and Hofmann in 1950, the affiant, iy 1962, . ‘could tind no reference in the routing records of the Patent Offiee Library to show’*that they had been -re- ferred, to Division 5 which issued the-patent in suit al- though they were then in the files of such Divisio., But the ack of a reeord of such. routing dees not serve to esiablish that these two Swiss patents were not available in Class 146, Subclass 160 and that a proper search prior to the 1990S trial or. the issue of validity would not have revealed them. It does not serve to excuse what on its face shows lack of diligenciton defendant?s part in so far ‘as discovery of this particular, although worthless, prior. art ix concerned. Defendant offers no valid reason to excuse its apparent lack of diligenct witu respeet to the discovery of Wilson & MeCallay, similarly a reference of ne import. As to Wilson & McCal lay, defendant appears to rely on the faulty premise that i —o t-until the ‘opinion of this Court in Zysset v. Podeil Brothers, Inc., 976 Vdd 354: 124 TSPQ 25t, that Wilson & \eCallay became of, significance But such arguinent falls with the premise, heretofore dboonsty ted unsound upon which - jit is based. —13a— ° {12} We ' perceive nip error in the Di: strict Court's” denial of defendant's motions tor ‘relief fron. jadgmeat. : We proceed to consideration of the issues present ted in connection wWitlr the ‘damages awarde d and the allowance of attorneys’ fees and costs. ° *(13) A statement ef account filed by the defendant pursuant to.order «f the District Court disclose~ that it manufactured, and sold 3,152,578 infriaging food choppers. The dollar amount of such sales. is stated. to be $2.98], 464.70. On the basis of cost items set forth an the state. ment of account the court found that the net profit accru ing to the defendant fron. the manufacture and sale of infringing devices was $455,293.01, in the computation: of. which amount: deductions as casts, objected to by’ the plaintiffs but allowed by the court, were made in the amount of $42,830.59 representing expenses incurred by defendant for attorneys’ fees and disbursements in this litigation, 100,192.44 representing a proportionate alloca- tion to the: infringing products of the compensation fais ; to defendant's officers, and $2u.. S56.0S representing & loss sustained by the defendant in connection with® the sale of tht infringing deviees during -the period sommencink August 1, 105%, and terminating Fehbruery 12. 1960. AL though -al! three deductions were : allowed hy the eourt in its, findings, in its ronelusions ef daw th eourt conchided thit a “defend ee costs of litization,.* * *-and salaries -of officers in 2 closely held carporttion are not properly deductible in arriving at the net profits”. {14} ‘The District Court found that an award té plam . tiffs based only upon a reasonah le rev altyv would be in con ’ formut? with the law; thar upon thi basis of the testimony: a farr. royalty r avinent would be 4 cents for each of the infringing devices sol’ by defendant; and that an award to plair‘iffs based upon seh reasonable rovalty “would. 2 the effect that in such a ease “if profits are susceptible ‘of determination, no royalty should be awarded”. [18] .The action of Congress in adding its sanction to the already judicialty. approved use of a “reasonable royalty” to measure damages for infringement (Cf. Dowagiac Mfg. Ceo. v. Minnesota. Moline Plow Co., 235 “U.S. 641, 648),-and establishing such measure-as marking the ‘minimum below which such damages should not fall, certainly evinces no intention to substitute “reasonable royalty” as ati exclusive measure of damage.’ This is fully borne out by the record of the committee hearings® on the proposal,.to add the provision relative te reasonable royalty to 38 U.S.C: § 74, the section from w Rich pyesent § 284 is derivative.. crf does trot tamer the RPVICRTLOTE OF The Pruie’ to suach ; ' wes : i R MEUALIONS Mor UNiteale ACNIMST Is apuieation fore . -- s . ne rer 5 . . . Lott. The Distreet Courts rereetom of protrs as a > . a ‘ e4 , > ee rs . : Vey sea e + > 4 ; Leesan are, of darrages att Us adoption a Wl ing frum: the evidence fo comsfiture a reasonable tovdice whiter . * +e . « rs Come the: withs “rr had oh Feagdy Watt . abe kbwere fo “+o LeeIgte. culipernsatien for defemdarn s crcromwernmrn' annedqes. cp - de predicated upotorts tindeng ae USPQ i Ma ee ss : o - —lia— teen Sa [T |his: is one of those rare: cases in which an infringesie nt has been a blessing im disguise; t only the skill, salesmanship and business acumen of: defendant and its principal affies a agen Popette has brought a financial reward to the plaimti? in the form of a fortuitous windfall if this mula ie finally collee ted. eee ae . ¢ [22] The record does disclose that defendant was industrious in the pursuit of its @fringitte activities and - through ‘employment of demonstration: techniques: and a ~ “sales pitch” sought: to TWH exploit the marketability off ‘food choppers Incorpyrating the combirintian features: of the Zvsset patent. Prt it required no unusual business neumen to fecognize the existence of a wide-sprend aarkef for such a household ‘device. and the possibility cof profit inherent oan att: marketing. The inferenes. that at wa: only the “saleonan “ship” of the defendant that: anabled at to dispose of it took mooskall fo mfringe, and ,lolors infringing chop pers for $ 26 | 464 70 during the period of its infringemenP ofthe Zyoset pi! entas withont substantial support in the reeord. Comparison of ror parable production’ periods of the defendant and New Nel, the ‘plaintiff-licenset:; shows no’ great disparity mn the sales of either. Moreover, when after February 12, 1960 the defendant altered its remnoning stotk Of infringing - chopper: to make therm non-infringing. ‘and gnanufartured : e } + ; ’ ra ‘ cre -ONnIV MON-INTring~ing choppers, Eney Were Ming oo ~ » With the purchase of one ef defendant’s other product: . . . , - : 5 - altro . @ salad maker. bheag . ; . : 797 r ‘ Lat - § ; ° 4uyt . - * . . ficr* fe ana . oreo ‘ Lew pe) Abe iY. ‘a iS event Jue Ae. ONGaN WNARCIA =e , : +s 7? aoe ? >. 454 i™~ a. ty ' *Suce con” if rege ping 4s vile A 58 6 ifi. inge rT yes nits if t ? 7 7) reor ‘ hie rn r rating chopper: and br- aucresaive. prine reduntiona culronating . db PE es > _ tr Aves ‘ ~ wee tito - appro: imate: au’, actnieved an .increaaec S2ies YOIUMNEe. : 18a . Tecovery of but the statutory minimum, measure of dam- ages—a reasonable royalay. é A ahs (24) From our-examination of: the record we conclude that the District Court erred in not awarding plaintiffs damages measured by defendant's’ profits from infringe- ~ ment. The court did make findings with Tespect to such profits. It is unnecessary to a ‘proper consideration and disposition here that further findings be made. We need but “consider whether the court in its computation of profits erred in allowing the deductions to which plain- tiffs objected. ' ( {25} The deduction sian for expenses incurred by defendant for attorneys’ fees and disbursements in this litigation was improper. Graham v. Jeoffroy Mfg., & Cir. .253 F.2d 72, 76, 116 USPQ 542; 545; Oud W ell Improve- ments Co. v. Acme Foundry d Machine Co., 8 Cir., 31 F.2d 898, 900;°Cf. Computing Scale Co. v. Toledo Com puting Scale Co. , 7 Cir, 279 F. 648, 660, 677. And the lose sustained bythe. defendant when it dras- tically reduced the price of its infringing choppers to® ward the. termination of the infringement period was not a permissible deduction from the profits it had thereto- fore made. Duplate Corp. v. Triplex Safety Glass Co.,. 298 U.S. 448, 457-458, 29 USPQ 306, 310; Starr Piano Co. v. Auto Pneumatic Action Co., 7 Cir. 12 F.2d 586, 589.°, 26] The $109,192.44. which represents a proportionate allocation to the infringing products of. the compensation paid to. defendant's three corporate officers, who are the owners of the corporation, is not a permissible deduction. . Graham v. Jeoffroy-Mfg., 5 Cir. 253 F.2d 72, 76,:116 USPQ; 542, 545; Flat Slab Patents Co. v. Turner, 8 Cir., 285 F. 257, 283. Q plaintiff: s. —19a—..: [27] Adjustment of the defendant's profits, as found. * by the District Court on the basis of defendatit's acéount- ‘ing statement, by the elimination of: these three deduc- tions-which the court allowed over the objections of the plaintiffs, results in the profit figure $636,672.12. It is our conclusion that the plaintiffs are entitled to Nae tal | for that amount. coe . . The District Court’s inclusion of piaintiffs’ ‘attorneys’ fees and disbursements in the judgment it awarded was not predicated upon a finding of “exceptional circum- stances” justifying such an allowance under 35 U.S.C.A § 285—but was ostensibly for the purpose of augnmienting .the award of damages computed on a reasonable royalty basis. We are of the opinion that the interest of justice» do not require ‘that we remand for a finding as to the existence of a basis for an award of attorneys’, fees to © . (28) ‘The question of costs is‘in our view mandatorily governed by 35 U.S.C.A. 288. “That section provides: ' “Whenever, without deceptive intention, a claim of © a patent-is-invald, an action may be maintained for the infringement ofa claim of the patent which may - be valid. The patentee shall recover no costs unless ga disclainter of the invalid clkim has been entered at the Patent Oftice before the Tmencement of the: suit”. : ; Plaintiffs’ disclaimer cf ENTER 1 was not filed ‘until July 12, 1960, Jong after che comluencemént of this suit, and subsequent to the determination madé by this Court on the appeal of the judgment of validity and infringement (276 F.2d 334, 124 USPQ 250). In view of this the plaintiffs are precluded from recovery of costs in the District Court or upon these appea's. Liquid Carbone Co. v,.Gilchrist, 7 Cir, 253 F. 54, 58-59; Gottschalk Mfg. - Fy .4 ; — 20a — : Co. v. +. Bptthotia Wire & Tinsel Co., 1-Cir., 75 F.2d bur 908-909, 24 USPQ. 423, 424.- @ [29] In Appeals Nos. 13939 ani 13940, the judgment order of the District Court entered July 138, 1962, is re-~ versed in so far as it awards damages and ‘attorneys’ fees and disbursements in the sum of $182,325.38, and costs; the cause is remanded to the District Court with ingtruc- _tions to vacate that portion of its ‘judgment order of July 15, 1962, and with directions to enter judgment for . the plaintiffs inthe sum of $636,672.12, without costs but . with interest from the date of its entry. In Appeal No. 14007, the judgment order of the District Court entered November 13; 1962, is affirmed. Neither party is allowed costs in this, Court in these appeals. + * a f ; | @ 6 . 2 —21a— cree cee (Rarlfer Opinions In The any ORIGINAL OPINION OF DISTRICT COURT | a - ON MERITS . : tCaption— iv. ,.* No. 57 C7643) * maa — States District Court’ . | _D. Iinois, E..D. sty et ! Oct. 3, 1958, (167 F.Supp. 362) | PERRY, District Judge. This action came before the Court on the Amended fs -Complaint of the plaintiffs against defendant, charging ° infringement by defendant of United States Letters Patent No. 2,782,826 ‘isgned to Kar! Zyssét, on February 26, 1957. Defendant filed a Counterclaim praying for a declaratory judgment findmg the patent. in aN be invalid or not_ 5 infringed by defendant. The structuré charged to infringe , both claims,of the patent in suit by the Complaint is a . food shredder identified herein as- Plaintiffs “Exhibit 12. ~~" Defendant “subsequently amended its counterclaim to ask for, a declaratory judgment that» the ring and, sleeve to be fade in an integral unit instead of in two separate units. Le ‘ 8. The patent in suit is not limited ‘as to tin ‘Means of mounting” the blade on the actuating ‘stem. ~) 8a— y * 17°. The defendant has. cited | ae “substantial | number of prior \re patents and: publications, | Defendant. s Exhibits, 5a to SK inclusive, including : epi at i os -* gq Blake Soo No. 95,309 Hard es 137,074 © *. Allen 7. ~ 267,127 Hansen’ >") ° — | 1,023, 517 Hanel (\. - — * 7 2,140,010° y - Clark... ee BARRO... + BS Zeller { — 2,623,563 | Zysset ( Austrian) 7, 180,369 Zysset :(German) . 235,749 ~~ Suter (Swiss) Bie a © 155 720, > and excerpts from the publication “Ingenious Mechan- "se 4 ” ad isms . ’ ‘. 3 . ~The Zysset enti referred to in. the foregoing group were issued upon the applications of Karl Zy sset and do” ‘not represent’ prior art as to the patent in suit. s\ss patent -No. 155,7 20:were expressly considered by .18. The Hane! patent No. 2,140,010 and the Suter om h United States* Patent Office before grant of the patent in suit and none of the other references in the prior art - cited by defendant ¢an be Ponsidered as better or closer prior art than those expres ssly considered by tke Patent Office. : a _19.. None of the references cited by the defendant dis- closes in combination the structure of the patent in suit and it does not appear from any evidence that any of such disclosures would have suggested to a person skilled in the art the vegetable ‘shredder or chopper invente dd: ‘by Karl Zysset at the time of his invention thereof. 20. One of the patents primarily relied upon by de- fendant in Hanel patent No. 2,140,010 which was. ex- ‘) : {— i? =? a ae \ €3% 2 . , } pressly considered’ by the Patent Office before the patent ry in suit was allowed, and the Hanel patent does not dis- close. a structure which will operate to perform the fune- . tions desired and intended by the patent in suit. Im the Hane! patent, the. ‘blade is not advanced in the mannet disclosed by the Zysset patent in suit:to eut up the food — to be chopped in the manner disclosed by Zysset. Ate the trial, defendant .produced Mr. Hanel as a witness, although no previous notice. thereof was given te plau- tiffs and although 70 — or structure known to Mr.--Hariel, other, than. that ‘shown 2,140,010 was-set up in the pleadings or in any notice as a — matter of defense. The only address of Mr. Hanel as to which plaintiffs were given any information either, in the pleadings er by notice was the address given in the Hanel patent as Jackson Heights, / Hane) testified at the trial th New York. However, Mr. athe had not lived in Sack- -son Heights for a considerable period and that he does reside at R. D. No. 1, Box 942, jona Lake Road, F yaarktin- - ville; New Jersey. Over ‘the objeetions of plaintiffs that. there was no basis in any pleading orf notice for such’ testi mony. Mr. Hanel testitied fhaf in about 1988 he made madels of one or more onion choppers, ‘one of which, | Defendant’s Exhibit 16, corresponded tg Fig. 5°o0f his patent... Te also testified that Exhibit 12, which he said he duced at the trial eould “h another model, -Defendant’s had mads and which he pre ave been modified roe per- form .one of the functions of the Zysset “patent in suit, namely, rotation of the blade in the latter part of the upward stroke thereof. While plaintiff* objections to the testimony of Mr. Hane! for lack of notice may have been proper\ the Court finds that Hanel’= testimony as Te what, | he. actually: didy even, if true’ and even if property corre ‘borated, would not ave amounted te the eombination disclosed and claimed. in the t « Zysset patent in suit! Wiat ) in his patent No“ @ eee ee “He Mr. H4n>! may: now believe that he could have done after be has knowledge of the Zysset patent and its strue-, ture is of no consequence. 21. None-of the prior art patents or publications antici- pates the claims \f the patent in suit and it would not have been obvious to one skilled in the art, at the time ‘that any of such prior.art disclosures were made, to have made therefrom or in combination with the other prior art patents the invention described, disclosed - and cefined in the patent in suit. 22. Each of the claims of the patent in suit clearly and definitely defines a combination of elements coop- erating together to. provide a novel food shredder or chopper possessing -many advantages over any of the structures of the prior.art. 93. The patent in suit is a clear, concise and exact description of the Zysset invention, in such ferms as to ‘enable one skilled in the art to make and use the same.” _ 24. The invention. defined by claims 1 and-2 of the patent in suit was not patented or described im any . printed publication or patent in this country or any foreign country before the filing date of the patent in suit. > 95, The Zvsset German patent No. 935,749, Defend. . ant’s Exhibit 5i, was not patented in Germany in accord. . ance with the meaning of the United States Statutes, until November 24, 1955, which is “the. “ausze sehen” or ‘publication date of the Gernian alent, and that is the effective date of said patent for the purposes of this suit rather than the filing date of the German application namely, March 10, 1954, as claimed by defendant, > ° — 3la — 96. ‘The record contains no evidience of prior saventsla, public use or sale of the invention described and claimed in the patent in suit prior to the filing date of the appii- cation ‘therefor, which would render the patent invalid. 27. The file wrapper of the patent in suit shows that there:were no acts, express or implied, taken by the appli- eant for the patent in suit whieh ereate any estoppel or restriction of the’claims in suit in se far as their present interpretation is to be made. The, claims of the. patent in suit as first presented) were rejected by ‘the Patent Office because of formal matters only and. ro amendmen s or changes were made 40 avoid prior art which would co reftriet either claim of the patent in-suit as to avoid infYingement by the’ defendant in its manufacture and Plaintiff Karl Zysset is and has been the owher of United States Letters Patent No. 2,782,826 . since said patent was issued to him en February 26, 1957. : 3. The pjaintiff Sew-N Nel Kitchen Products Company - is the exclusive ticensve under the patent in suit by wurtue of an exclusive license agreement dated April 2, . oe Plaintiff's Jexhiljit. 4, and’ the usrigniment thereof dat: “ad ‘July 10, 1957, Plaintiff’ s Exhibit ?- 4. United States thers Patent No. 2782826 and both of the claims thereof are good and valid: in law... — — 34a — “5. Both of the claims of the patent in suit No. 2,4 782,826 have been and are heing infringed, by ‘the defendant in ‘the mazufacture and sale of devices of the kind exempli- fied in Plaintiff's Exhibit 12 and Plaintiff's’ Exhibit 34 and as illystrated in the drawing marked Plaintiff's Ex- hibit 33 and as exemplified in the devices marked De- fendant’s Exhibits. 27 and 28 and as illustrated in the drawing marked Defendant's Exhibit 32. 6. None of the prior art re ferences phe ee the com: / bination of a housing having a socket provided” with helical grocves - cooperating with an indexing device for - advancing a food chopper blade near the end of the upward stroke nor do they disclose a sinuots blade operat. - ing through a sinuous slot in a wiper plate. Such a structure as shown and defined.in the patent in suit con stitutes a patentable invention and the patent in suit was, legally and lawfully issued by _the United States Patent __ Office. -—- ice a 7. The Zysset patent discloses an operative structure and clearly describes the construction and operation thereof in such terms as to be clearly understood by those skilled in the art to which the patent appertains. 8. German patent No. 935, 749, Defendant's’ Exhibit 5i, does not constitute prior art against the patént in suit. - 9 Plaintiffs are. entitled to an injuriction restraining the defendant against. committing further acts of in- fringement of either of the glaims of the Zysset patent in suit No. 2,782,826 in the manufacture or sale of vegetable shredders of the Kind exemplified in Plaintiffs’ Exhibits 12-and 34 and ilustrated in the drawing, Plaintiffs’ Ex- hit 33 and as exemplified in Defendant's: Exhibits © 27 and 28 and illustrated in the drawing: Defendant's Ex- hibit 32. 10. Plaintiffs are entitled ts recover from defendant the damages or profits as provided in the patent statutes ~ of the United States which have been onensiniged by de fendant’s infringement of the Zysset patent No. 2,782,8: 26 together with interest thereon and the costs of this suit. i. Plaintiffs are entitled to an accounting by defend- cant t&® determine the. damages which plaintiffs shall re- cover from de fendant and the Court, upon, appropriate — application, will appoint a Master for the purposes of such an accounting. After such accounting has been. had,.: > the Court will defermine whether in view of. the willful | nature of defendant's infringement the amounf of damages —-— ‘so found shall be increased ay. provided by Statute and the Court: shall at the same time determine the amount which shall’ be allowed to plairitiffs for their eosts and disbursements herein. When the amount. of the judgment, including costs, shall have’ been finally determined, plain. ° tiffs shall have judgment therefor and shall be entitied to ataaities thereon. / 12. Defendant is not : entitled ‘to any relief under its counterclaims herein, and the same should be distuissed with prejudice and with costs to plaintiffs. ; | a) tl —. 36a —- FIRST OPINION OF COURT OF APPEALS ree (Caption: Nos: P2492, 12753) il ose United States: Court of Appeals Seventh Circuit. Feb 11, 1960. (276 Fo 2d B54) 0 ee Rehearing Denied. April 14, 1960. ‘Before ScHNACKENBERG and CasTLe, Circuit Judges, and Meacer, District Judge. CASTLE, Circuit. Judge. Kar] Zysset, patentec,_ and New-¥ 4) Kitchen Peoducts Company, his licensee, plaititiffs-appellees, sued Pope! Brothers, Inc.» deferidant-appeliant, for patent: infringe. ‘ment and unfair competition. Trial of the issues involv. ing ‘validity of ‘the patent and its infringement re ‘sulted in a judgment.fo; plaintiffs in the Distriet Court finding the Zysset. patent valid and infringed and’ enjoining: de. fendant from making, using or selling the aceused devices _or any other embodying the invention of claims 1 or 2 of Zysset patent 2,782,826. The issues involving unfair com petition and plaintiffs’ damages resulting fron a ment reauwained to be tried, Defendant appealed and contends that the District Court erred: in holding the Zv ase patent: met “the standards ré- ‘quired for. patentable invention ovey the non-ecited prior art and, in any event, Zysset’s claims are narrowly limited and not infringed by defendant's devices. Subsequent to defendant's appeal we remanded to the District. Court te ¥ wt] — 3ia— ese it consider 1 new evidence, the District € ‘ourt having certified | that there appeared to be ‘sufficient cause at ‘law to war-_ rant reopening of | the District Court's judgment order pursuant to. Rule 60(b) of the Federal Rules, of Civil” Procedure, 28 U.S.C.A. After hearing on re mand the District Court found that no new evidence was presented which required change of the Court’s original conclusions of law and judgment. Defendant's motion for relief from ‘the original judgment was denied and defendant's second appeal followed, The contested issues are (k) the vailidity of Zysset's 3 ie 4 patent 2,782,826 and (2) whether defendant's arcused -de- vices are infringements. © ' In the Zysset patent, applied for March 11, 1954 and issued February 26, 1957, there as illustrated and ‘de ‘seribed a vegetable shredder or chepyper conipris ing a — two-part, bell-like housing having an upper * portion and a lower portion ‘adapted to be phiced over, the goods te be shredded and a. sinuous single-piece knite. blade mounted at the lower’ end. ofan actuating spring-loaded | shart which is manually per to place the several cutting portions of the ‘knife blade “into chopping re lation with the goods to he Shredded. Adjatvent the lower end yor tion of the stem is lveated a checking member attached | _to the stem and cartying-a sleeve having two diametrieal cams on the outer face thereof a helieal torsion spring disposed in the sleeve and coiled about the stem, one end ‘of the spring being anchored. Inside thy top bell-tike portion, there is located a socket haveng a plurality: of? interna! helical grooves. W hen the stem is depressed, the spring ‘clutch is diseng raged and the knile blade does not rotate in its dewnward moveme ‘at. However, on its vaup- ware movement near the end thereot, the eas on. the: checking member enter the hélica). crooves and the stem x @ « toe ; — 38a — : . . oe at that time being engaged by the spring clutch, the stem and the «sinuous: blade mounted thereo move into new position, different from the position of the blade as ‘made on the previous chopping stroke, Within the housing is . Jocated a wiper cup or plate having a sinuous opening which conforms to the shape of the blade and vegetable. portions which’ may’ adhere to the blade-are cleared tere- from on the upward st roke during which the: wiper wipes / such vegetable fragments from the blade. oe . The claims of the patent are: “). ‘Ine a vegetable shredder comprising a two-part. bell-like housing having an upper and a lower portion and” adapted to be put over. the goods to be shredded, and a knife blade manually depressible by a spring-loaded actu- ating stem which has @ lower end portion, said: blade being mounted on the latter and on each actuation being. angularly movable by an’ automatically-operating index- ing device, the improved indexing device including a socket in the upper housing portion, said socket having a plural- ity of internal helical grooves, and a checking member rotatably but ‘axiail!y immovably mounted on the Jower “end-portion. of the stem, said chefKing member comprising a ritg seated on said stem portion, a sleeve mounted on said ring and having two diametrical cams engageable in said grooves, and a_ helical - torsion spring disposed in said sleeve and coiled sbout said stem portion, one end of the spring being anchored in the sleeve.and the other ‘bearing on said. ring; the whole in such ‘combination that ‘on depressing the stem the checking’ meimnber in the first - stage is rotated. in one direction relatively to the. stem and the spring is disengaged from the latter, while the stem ard knify blade dre hot rotated, and that in the last “stage of the stem’s upward movement the spring engages 4 ‘ee g - 39a — ur 4 ee the stem and the -latter together with the ae mem- ‘ber and knife blade are rotated in the other dire ction “2 A vegetable: shredder, as set out in claim 1, in which the knife blade is sinuous, a wiper cup is rotatably ,but axially immovably mounted in the lower portion’ of | “the housing for. clearing the blade on tht upward stroke _thereof, said blade. passing through a conXnucus slot in- the bottom of the wiper cup, and a blade-harrying rod passing. in tight fit through ‘a plurality of openings in the blade and being secured to the lower end portion of the “stem.” wl . The feature contended by plaintiffs to be novel and to 7 constitute patentable irivention is the combination of the | elements of (1) the repositioning of the chopper blade by automatic rotation occurring only in the last stage of the. apward stroke when (.e blade is withdrawn from. and in a position not to move or disturb the. goods being shredded or chopped and (2) the utilization of a sinuous blade which although having the advantage of multiple blades eliminates ‘the wedging of particles of the goods between blade sections; the sinuous, blade wiping clean on each upward stroke by “a. continuous sinuous slot in a wiper plate or: cup. which rotates with the sinuous chopper blade. “ The prior art: cited*to the. Patent Office. consisted . of Hane] 2,140,010 and Suter, Swiss. patent’ 155,72 20, Hane] (1938) discloses a housing fo be placed ‘over the material to be chopped,-a blade, and a, stem having a “spiral ‘slot coeperating with a sieeve having ears pro-. troding into the spiral-slot for giving a rotary motion to the blade. It does not have a sinuous blade, nor a wiper cup, nor are means provided for’ permitting the blade to travel upwardly in a straight line and away from — 40a —_—- aie he 2 the chopped. material before the rotary motion is im-. U - ; parted. ete ; l \ . Suter (1932) shows merely a blade attached to a stem and handle so that they may be manually worked up and down in an open hollow cylinder having a working base looselysinserted at the bottom. Three blades arranged in - the shape -of.an “N” or a zigzag blade were disclosed. ‘Suter does not. disclose a sinuous blade, nor wiper up, nor any automatic indexing feature. Wiha Prior‘art not cited to the Patent Office- but relied upon by defendant includes Blake 95,309, Hard 137,074 ‘and Clark 2,422,340. oy ; ; ' Blake (1869), a’ meat chopper, disclosed a partia] rota; . tion or indexing of the rod and knife blade which does -. ‘sot take place until it is lifted nearly out of the receptacle -. os so that the eéntcats being chopped will not be disturbed by .the partial revolution. - HardeA 1873), another meat’ : chopper, disclosed the same feature. Clark (1947), a food -- chopper, disclosed a rotation and indexing feature which — conld by adjustment of: the position of a ratchet dis on ~ . the rod or stem holding the blade be made’ to index only on the last stage of the uptrard Stroke. . Y A:1952 Zeller patent 2,623,563 is illustrative of plain-. tiffs’ exhibit 17. a Zello.onion chopper, and similar té. plaintiffs’ exhibit 16, the Provit “device. In these there | was a housing and multiple blades which were operated hy a stem anc knob to-chop food. There. was no rotation or indexing of the blades. although they were wiped ‘by -. withdrawal into a.slotted eup which sheathed them. The blades were not sinuous. ‘Particles’ wedging between the blades could cause them to stick: ~ | . .The District ‘@ourt found that none of the prior art references discloses in combination the structure of the eo . the blade to the blade earrying rod by the use of slots rather than to project. the rod through holes: ri “ring” and “sleeve” described in. the claims of the patent in. suit were made es part rather than two No change in functioning o\ manner of operation resulted. om | . _ 4 a.’ ae 2 S — 42a — Infringenient is not avoided by making into one part that which .has been shewn as _two where there is no change im the function or manner of operation ‘of the ejement. ‘ In this connection it was pointed out in- Spec ialty E quip- ment & Machmery Corp. vy. Zell Motor Car Co., 4 Cir, 195 r 2d D515, ds: - . . =ments, exhibits, | records, vouchers and other documents relating to the above matters, shall be kept intact by the defendant and remain: in its — ready to be produced upon further order That defendant be enjoined from disposing of, or wasting or linprope ‘tly disposing of, any of its assets without order 6f the court exeept for such disburse- ments and expenditures other than cash as aTe neces- sary to carry on its norma) and ordinary course of business. ° eae On June 30, 1960 the District Court entered an Order pursuant to the opinion’ of the Court of Appeal? dated April 14, 1960 finding claim 1 of the Zysset patent in suit, No. 2,782,826, invalid. | . : II. On October 18, 1960, District Court, entered an Order in the accounting proceeding directing defendant to file a statement of. account setting forth the quantity of vegetable shredders found fo infringe which defendant had sold, the prices recei ived therefor, and the items of nd Ee. —52a— cost claimed by the defendant. On December 6, 1960, de- fendant served its statement of-account which has been received in evidence -herein as Plaintiffs’ Exhibit 101. III. On° January 5, 1961 defendant filed: its Motion for Mitigation of Damages or for Application of the Rule De Minimis Non Curat Lex, and on January 17, 1961 the District Court denied the said motion without ‘adjudica- tion of the merits thereof and also entered an order for ‘an interlocutory appeal from*the denial of said motion. ' The defendant thereupon filed its petition for allowance — of an interlocutory *ppeal under 28 U.S.C.A. 1292(b), and on F ebruary 28, 1961 the.Court of Appeals denied the - said petition. Thereupon defendant renewed its motion to limit damages and the.matter was set.for the reception of evidence as to United States patent 207,146 issued to *Wilson and MeCallay and, the ‘bearing thereof upon the issues herein, and the testimony in the accounting pro-’ ceeding was staved pending the further. order of the court. Thereafter evidence in open court was heard and, on Sepiember 19, 1961, defendant's Motion for Mitigation - ‘of Damages. or for, Appligation of the Rule De Minimis Non Curat Lex was denied and costs and attorneys’ fees occasioned. by def fendant’s motion were assessed in favor of plaintiffs and against defendant, and Findings. Fact and Conclusions of Law: were filed and entered in support. of said Order. Thereupon defendant moved to vacate the said Findings of Fact and Conclusions of Law ‘en- tered. on September 19, 1961, or in the alternative to amend and modify the same. On October 25, 4961 the District Court entered a new Order and new Findings ° of Fact and Conclusicns of Law in support, thereof pro- viding tliat defendant's .otion for mitigation of damages be denied and that costs and attorneys’ fees orcasioned by defendant’s motion be assessed in favor of plaintiffs —53a—. and against defendant. (131 “USPQ 178) The court re. quired a $10,000.00 bond to, insure the payment of. plain- tiffs? costs and attorneys’ fees, and di fendant deposited government bonds in that amount with the Clerk of this Court. On November: 12. 1961 defendant aypeated. from ‘the, Order of October 25, 1961 to the Court-of Appeals for the Seventh Circuit, Appeal No, 15,593, Plaintiffs moved to dismiss the appeal and, on January 31, 1962, the motion was. granted at costs of Popeil. : IV. . Testimony in the accohitins proceeding comp priked the following depositions: * a ; ‘Witness Date Exhibit No. Philip Rootberg | 12 G1. ‘PX 102-4 Samuel J. Popeil 112 61 PX 102-b - Philip Rootherg || Lisl PX 102-¢ Philip Rootherg 3/16/61 *. - PX.102-d Philip Rootherg 1561 | PX 102% Samuel J. + Popei! 1/29/61 |. . -PX 102-f - Samuel Pope! 11 15°67 PX 102-g and testimony he love the court on February 21, May 8, May 14, May.15, and May 18, 1962. _ Arthur O. Nelson and Roy H, Olson testified in behalf of ‘plaintiffs, and Harold Newman and “Arthur 0. Nelson, counter defendants, were callad by defendant, and Messrs. Stanley, Hoods, _Saunvel, J. Popeil, John D. Rumbough, and Lawrence { - Kingsland testified in behalf of defend. ant. V. The character-of* the Zysset: invention is'set forth in the Findings of Fact and Conclusions of Law slitered. _ by the District Court ‘on October 3, 1958 and the Opinion of the Court of ca filed Fy bruary 11, 1960. As pointed out above. claim 1 oof the Zvsset _tatent im suit. ‘was found invalid ss the Courtvef Appe: als on April 14 1960 but the Judgment of this court, entered’ on October pa ta — 54a. f. ms 3,. 1958, was affirmed in all other respects. Therefore, »° both forms of defendant’s devices -have been held to be ‘infringements: as set forth in the Judgment of October 3, 1998. & | (— \VI1. Prior to the manufacture and ie of vegetable. = choppers: by the. defendant, plaintiff Karl Zysset had — manufactured and sold, in this country and in Europe, - vegetable choppers embodying’ the ocigeninn invention. | VI. .The defendant purchased a sample of Zysset’s , vegetable: chopper, took it apart, examined it, and copied ' it, as fully established in the record at the trial and: in , testimony at the accounting proceeding. VIll. Prior to. the issuance of ‘the. Zysset patent in ‘suit on February 26,,1957, the defendant Popeil carried * on negotiations for the purchase of Zysset choppers which were miade by the paténtee in, Switzerland or for a license + under the patent which defendant was informéd was about - to be granted. Such negotiations commenced in about February 1956 but included a statement by Popeil’s attor- ney that Popei! intended to continue to make. the CHOP-O-MATIC devices oe of herein. without atithoyity from Zysset. IX. ‘After it had been found by the Court on October 3, 1958 that defendant had: infringed the patent in suit, defendant eontinaed to manufacture and gel] its infringing vegetables choppers without chenge until February 12, 1960. X. Subsequent to the decision of the Court of Appeals Pope i] continued in the vegetable chopper business, manu: — facturing and: selling choppers having the same outside- -appearance as those enjoined by the court but being. modified internally to omit the rotation feature and the wiper cup. For these. Popei! continued to use the dies and molds previously employed in the manufacture of 3 . ee : ee an — 59a — choppers but, at a later time, some of ‘he dies and molds were modified and other changes we re made. Mr. Popeil * testified that 1,275,000 Aroppers withoit antomatic rote tion and vithout wiper cips were thade and. sold by his company. ) | XI.° Arthur O. Nelson and his. associate Harold New: man visited Karl Zysset in Switzerland and ne gotiated | the lheerise agreement which has been identified as PI ain tiffs’ Exhibit 4. Tt provided for a liegnse foy the mann facture and sale of the patented. invention upon the fol. lowing terms : 7 > For the first vear commencing Ma iv 15, 1958: Swiss franes-—.45° per vegeti ible shredder on a minimum of 200,000 devices; c \: . ” For subsequent vears, after May 15. 1959: Swiss trancs—.45 per device for the. first 100,000; Swiss” 6) franes—.35 per device for each deview in UXCESS “of, 100,000; Swiss franes—.30 per deviee for each device exceeding 300,000. . : , Licensees agree to pay a reyalty on a minimum 200,000 vegetable shredder: annually commercing May 15, 1958, but Licensor agrees te reduce the 200,000 minimum-after May 15, 1961, if Licensees are unable to maintain it. [It is andersteod and agreed that if Licensees are unable to mamifacture and sell thy mpinimun of 20,000 devices due te an aet ef Godoy other reason bevond their control, upon which sproe! ean be and is ‘supplied by Licensees, Licensess will be relieved of the minimum nimber reqnirement and in such case only the devices actnaliv manufactured and sold shall be subject te rovalty payment te 1 censor, | | . ° e ° (A Swiss frane had a value of 22.1¢ United Star currency.) nN 3 / “4 i wn na a i al nN The License Agreement dated April 2; 1957 (Plaintiffs’ P ‘ kK xhuibit 4) has not been modified and is,in full foree- and effect.” New-Nel-Kitehe -_ roduets Compan? has not made final. settlement for thefovalties accruing‘since May 15, 1928 but, in addition to the $21,000.00 originally paid, has incurred its attorneys’ fees and disbursements in this ease aniounting to $21,928. 26 dup to May 1, 1962) with the expectation of applying them on any. unpaid royalties . upon the conclusion ef this litigation. (That. amount does “not include Zysset’s litigation expense.) | New-Nel manufactured and sold approximately 238,619 of the patented food choppers from the time: it: started in business after the License Agreement (Plaintiffs’ Bx: hibit 4) dated April 2 2, 1957 was entered into, until May 15, 1958 which wa. the end of the period covered, by the first rovalty payment of $21,100.00 .as required by the License Agreement. Frofn May 15, 1958 to Februgry 15, 1962 New-Nel manufactured and seld 289,945 ‘of the patented food choppers. | During» the infringing. period New-Nel had a capacity for making and selling the patented food choppers of from 2500 to 38000 devices per day, working one shift. ‘With additional: shifts, and thé acquisition of adeitional facili. lies, if needed, New-Nel had ample capacity for th, man: facture and sale of the infringing choppers made‘and sokt by the ‘def ‘endant, 1... ° B.S DTS | betwee en February. 26, 1957 and Wehruary 12, 1960. NIT. Daring the t taking of the testimony. before the court there wer: offered and received in evidence the — following exhili.s. XII}. The defendant's Statement of “Aceoufit (Plain- tiffs’ Exhibit 1Q1) reports ‘the manufacture and sale of 3,152,575 of the infringing’ fvod choppers. The amount of . Laz e —S7a—- the sales reported is $2,981,464. 74, » After making certain deductions as sect forth in said. Statement, ‘defendant. re- - ports het profits before income -tax of $455,293, Ol. Plain.» tiffs accept the defendant's statement 6f net profit before “income tax of $455,293.01 exeept that plaintiffs object to the deduction from defendant's “profits of $42,830.59 for. expense of this litigation which is part of the item of “General and Administrative $615,061.32" given in. said statement and referred:to in the testimony of defendant's accountant Philip Rootberg on = ember 15, 1961 at page 128° (Plaintiffs’ Exhibit 102- . and excepting also the ‘deduction from defendant’ . ie 3 of the sum of $109,192.44 which represents ‘defendant's ofticers’ compensation allo- cated to the infringing produets, and which amount is part of the item © General and Administrative $615,061.32” given in said statement and as referred to in the testi- mony of defendant's accountant Philip Rootberg on No- ° vember 15, 1961 at pages 104, 105, 110 and.125 and in his letter of March 1, 1960 (1901) ( Plaintiffs’. Exhibit 104), and exeepting also the defendant's deduction of the ‘loss as set.forth in Plaintiffs’ Exhibit 105 in the amount of $29,356.08. aan 7 ~ The court allows the aroresaid deductions and finds the net profits before income tax assessme nt to be $459,293.01. NIV. . Roy W. Olson, Chicage patent attorney, whose ition: Were not questioned, testified. as an expe rt. “in behalf of. plaintiffs as to a reaso nabl® revalty pursuant to Section 284 of Title 85° U.S. Code. Mr. Olson testified a reasonable royalty for the manutgeture and sale of. the patented deviee, and as manufactured and sold by the defendant and found to he infringements herein, would be not less than 10¢ pet unit. XV. Defendant callet as a ‘witness Stanley Hootls, house patent attorney for Ekco Products Company of ‘ 58a . 3h 2 Chicago, manufacturer of household items, who testified that the average royalty paid or collected by his company . for various household items was from 2.5% to 5° of selling pricgs. Mr. Hoods adinitted, however, that. the patents he had,under consideration in his testimony in- eluded design patents and no statistics: were given as to the pereentage of design or mechanical patents or whether . they had been adjudicated. as valid and. infringed as in- the instant suit. Mr. Hoods testified that his company has no standard practice as’ to royalties which it charges or which it pays. The company evaluates each license on the facts pertaining to a particular case. He testified that an exclusive license calls for a royalty fee which‘is higher than for a non-exclusive license and where licensor is to have competition, a, higher fee is required. In* one case where Mr. Hoods’ company paid a 5° royalty the patent "in suit was subsequently found to be invalid and the li- eense in that ease was nonexclusive. Mr. Hoods testified that as long as there is a va alid claim remaining in a patent the, royalty is ordinarily continued even though some claims might be found invalid. XVI. Defendant also called as a witness John D. Rum- bough who testified that he was a former vice-president of The Enterprise Manufacturing Co. of Philadelphia, | Pennsvivania, nnd, as such, negotiated a lyeense under Zeller. patent. 2,623,565 for the manufacture and sale of afy onion chopper-known as the Swiss: House which was in evidence at the trial of this cause and identified as Plain- tiffs’; Exhibit 25. Mr. Rumbough testified that the Swiss | Horse chopper is,no longer manufactured but during the | form of the lieense and royalty was 2¢ per device which . The license agreement under which Enterprise. Manufacturing Co. operated was iden- | tified as Defendant’s Exhibit 117 and it showed, among other things, that it included Canada as well as the United: ; e- l . . . — 59a — States; and.also Mr. Rumbough testified that the Zeller patent had not been adjudicated. Also the licensor sold to Enterprise $20,000.00 worth of inventory and equip- ment whith was td ve paid for by licensee by an additional royalty of 8¢ per device and not less than $2,000.00 per year. Failure to pay was cause for cancellation of the license. In addition Enterprise was to assume licensee's contracts for the purchase of parts and cartons as set forth in the written agreement, Defendant's Exhibit 117. Licensor agreed to supply to. lieensee, without eost or ‘charge, certain art work. ents. mats, electrotype and all advertising and publi, » material relating to the food chopper as set forth in Paragraph 14. These and other’ variations are apparent from the written agreement, sO that the Enterprise license is not helpful in determining: a reasonable royalty in. the instant CASE, : XVII. Samuel JJ. Popeil, pres sident of defendant com- pany, identified his patent 2.599.!12 and a doughnut maker made of: plastie hr his, company under said patent. The patent was never adjudicated. He identified a license agreement (Defendant's Exhibit 113) permitting D.RMew Corporation to make doughnut makers of metal for a royalty of 2¢ per device. There is nothing in the agree- ment about the price of licensee's doughnut makers and Popeil retained for itself the right to make dou chnut raakers of -plastie which sold for 471 o¢ each. XVII. Lawrenee (. Kingsland, former Comimissioner of Patents, testified that a reasonable royalty under the _ Zysset patent claim 2 would be 146 per chopper. He stated that he based this opinion upon the testimony of Mr. Hoods which, as he heard it. was to the éffect that 214% on deviees of this character would be re asonable. Commisstner Kingsland’s qualifications, experience and standing in the patent field were made a part of the record — 60a'— and are unchallenged. The court attached much greater “weight to his.testumony than to that of the other wit- nesses. His opinion of a fair royalty, together with all ‘of the t facts and circumstances known to the courts in this cause, has brought this court to the ultimate conclusion | that a fair royalty payment in this ease is 4¢ for each of the 3,152,578 accused units sold by defendant. XIX. An award to plaintiffs based only upon -a rea- sonable royalty would be.in conformity with the’ law. An award to plaintiffs based on reasonable rovalty would, together with attorney's fees, be adequate compensation for defendant's infringement of the patent in suit, taking all things into consideration. Es. When sold as retail shelf merchandise, without aid of a “sales. piteh’’ or demonstration as Popeil ‘did, plaintiff Zy sset’s commercial food chopper was not a com-* mereial success ins the United States. Only 3.883 units. were shipped . plaintitt Zvsset for sale in the United States during the.six-year period from 1952 through 1957. XXTI. On June 12, 1958 defendant filed a counterclaim. which charges plaintiffs Karl Zysset_and New-Nel Kitchen Products Conipany, and, in addition, Arthur O. Nelson, individually and doing business as Crestline Products or Crestline Company; Harold’ Newman: and Crestline Prod- ucts Company, 2 corporation; with breach of an alleged oral contract and unfair, competition in ‘connection with defendant's food chopper. Defendant. in that counter- ‘elaim, also alleged that it owned a trademark CHOP-O- MATIC and that the trademark is the subject matter of United States Trademark Registration No. 656.075. Ad. ditionally, defendant alleged that it owned unpublished manuscripts protected by United States Capyright Regis- trations Nos. €-9560. C- 9637 and ©-10296.: XXII. The con*ract which defendant alleges Nelson entered into with it was an alleged oral agreement rela- tive to the sale by Nelson of Popeil's CHOP-O-MATIC devices. Nelson testified that there was a discussion about - a proposed agreement té be submitted to him in writing. Several months after that discussion, and after Popeil submitted a proposed written agreement dated December 28, 1956 which contained several provisions’ never previ- ously discussed between Nelson or anyone on his behalf, and Popeil Brothers. Nelson never signed or accepted the proposed agreement. ,Defendant was unable to produce’ any notes made at the meeting between Popeil and Nelson relative to the contents of the, proposed written agree- ment. Mr. Popeil testified that there was no proposed | agreement with Harold Newman or New-Nel Kitchen Prodacts Company. The proposed agreement required Nelson, who. was doing business under the name of Crest- | line Products, not to sell any competing choppers for a period ‘of tive years. Such provision would be in violation of the arititrust laws. Another of the provisions of the agreement .was that it was to last five vears. At the. trial Popei! testified that the five-year period was to. start ‘at the time Nelson first started to sell Popeil’s CHOP-O- © MATIC devices in the summer of 1956;. but, in a deposi- tion previously taken, he testified that the five-year period: Was to start on December 28, 1956, which is the date of the propssed written agreement. ‘The proposed agree- ment contained several other provisions which Nelson testified were not-acceptadle to him at the time he first saw the propesed agriement of December 28, 1956. Testi- mony was taken relative to the alleged oral agreement hetween Popeil Brothers and Arthur ©. Nelson, doing: business as Crestline Products, but, the evidence does not satisfy this court that there was anv agreement of the nature ‘charged by defendant entered at any time between -— 62a — Popeil Ni on the one khend, and Arthur O. Nelson, individually or doing business as Crestline Products Co., on the other hand. XXIII. No ‘evidence was: introduwed which shows in ‘any way that Arthur 0. Nelson or any of the counter- defendants éver used, infringed, traded upon, disparaged or in any other way ‘committed any act in violation of the rights anyone, including “Popei! Brothers, may have -in the name ‘or trademark CHOP-O-MATIC. The evidence adduced does not establish that “Popeil Brothers is the owner of Trademark Registration No. 656,075, a’ registra- ‘tion far CHOP-O-MATIC. XXIV. No evidence was introduced to ‘show that Nel son or any .of the other counter-defendants ever used, | copied, inftinged or in any other way appropriated, any part of, or the whole.of, any of the manuscripts corre- sponding to United States Copyright Registrations C- 9560, C-9637 and C-10296. _ XXV.. The fact that Arthur 0. Nelson may haye had access to the copyrighted manuscripts and that one or two salesmen who purchased food choppers -from Crest- line Products observed a demonstration by Samue! Popeil or one oceasion, and perhaps observed demonstrations of food choppers by persons selling CHOP-O-MATIC. food - choppers on other oecasions, is insufficient to establish, and does not’ satisfy this court, that Arthur ©. Nelson or any one of the other counter-defendants used that copyrighted -material, or copied that copyrighted material either in verbal or #n written form. In fact, the only direct testimony introduced by defendant Popei! Brothers on that point was through Mr. Samuel Pope?! and he testi fied that no information ever eame+to him whieh indi- cated that Mr. Nelson or anyone working for Mr. Nelson, or on behalf of Mr. ar ever. made any uae/of the copyrighted manuscripts and that Mr. Popei! hyd no way | of knowing whether Nelson®had ever nr 1 suel manuscripts. or encouraged’ their use. OXXVEL dp 1956 Popeil said Crestline 10¢ ° bw the infringer. together with interest and” costs as fixed by the court | i *- When thy damages are not found by ‘a Jury, the court. shall assess” them. - In either event the court may increase the damages up to thres tunes the amount found or assessed. The Court may receive export testim TLV: ‘is; ‘ats nid to the dete rmunat ion “of damages or of what rovalty ° =n would be rea sonable under the circ ulustances.” — 66a — 2. It is well established that a patent, owner in @& patent infringement action is ‘entitled to recover the profits - which the infringer has made by reason of his infringe- ment. The defendant's costs of litigation, income taxes and. salaries of officers in a closely held corporation are not properly deductible in arriving at the net profits to. which the patentee is entitled, The court is réquired to _ make an award to the patent Gwner not less than a reason- able royalty for the use’ of the patented invention. The court has received expert testimony as an aid to the deter- mination of damages as to the amount of a reasonable. royalty under the circumstances in this case. A reasonable royalty for the right to manufacture and | sell vegetable choppers of the patent in suit during the period from February 26, 1957 to February 11, 1960 woald be nat less than 10¢ per device. 3. A manufacturer who continues to manufacture a _patented device “with knowledge ef the patertt but with- out a license does not have the right to demand, after ‘having been held to infringe. that the measure of.damages for his infringement is the amount which would have been’ a reasonable royalty for a license over the ‘period of his infringement. The reasonable‘ royalty referred, to in the statute. is not a limt to the amount of oe for infringement but is’ a lower limit which must he j any event awarded -to ‘ patent ewner if there are not other satisfactory proofs of profits and damages result- ing from the infringement. In this case, there is satis- factory evidence .of the profits and gains which defendant made from its infringement-and, under the evidence, the award ‘to pldintiffs herein should not be limited to p reasonably: royalty. 4. Defendant, in its counterclaim, charges plaintiffs with breach of contract dnd unfair competition arising é. —67a— by reason of an alleged agreement ssibaseans defendant, Popeil Brothers, Inc, and Arthur 0. Nelson, individually ‘and doing business as Crestline Products. The defendant also charges. counter-defendants with the commission of acts in violation of its alleged trademark rights and copyright rights. As far as Kar] Zysset, New-Nel Kitelien’ Produets Company and Harold: Newman’ are concerned, ‘there is no evidence which connects them with the alleged _ contract, with the alleged breach of contract, with any Xx acts of unfair competition, or With any violation of copy: | right or tradémark right helonging to Popeil Brothers. No evidence as to damages was introduced by Popeil ' Brothers: Defendant's counterclaim as °to, Karl Zysset, New-Ne] Kitchen Products Company and Harold) Now. man is dismissed. | 5. In te : : @ JA. Yes, there was a Origimaliv., as V-reeall it there were certain Claims submitted which meluded among them the subject-matter of whateultimately | enine claim 2.) That is, it was direeted to this continu. ous sinnous krite end the clearancve-—-or cleaning-plate. wiper plate, with. a’simuous slotoim it, and that) wa- claimed, and my recollection is that the Patent Office, ethe examimer at the trne said that that in itsell Was - nit patentable subyect matte ~Q. With respect to tour last statement | would tike to reaa fo vou trom Piaintits Exhibit 3. the tile wrap per ot the Zysset- patent mi sur . « . . se 8 The addition of a wiper oromeans fo chonur the -Blade gr handleown the upward stroke Hhereafois held ta be an ebviens expedient whieh does not invelye iiVvention Is that the stateinent to which vou had reference ?. . all * e ° Mr. Horton: TP object, that wis exammmation as te the tile avzapper aod the seope agd interpretation ot the clainais a matter whieh is net ‘before vour btioner and whieh eannot be before your Honor, in view ot the mandate of the Courtoor Nppeals, and it's strictly a question qs to what the Wilson and Mcaliay pater: — 73a — is, whether that is, truly newly discovered evidence and whether that affects the judgment. The Court: Well, I believe, Mr. Horton, ‘if that is ’ admissible, however, evidence on that, | think then 28b they would be allowed to ask questions comparing the two patents. I think I will have to let it in. Objection overruled. . A. That was the statement that I had in mind, and simply illustrates, as 1 believe, what | understand to be the practice. In other words, later on I think you will find in that file wrapper after the examiner came to the conclusion that what ultimately became claim 1 of the patent was allowable, then this same subject matter, which became subject matter of claim 2, was simply allowed as a matter of course,:;which followed the practice that | attempted to elucidate a few min- utes ago. ’ ~ The Court: Well, is it your.testimony that they - didn't thoroughly examine 2-but just allowed it. to go int Is that your opinion? , . The Witness: No, | don’t think it’s a question of fayrness at al!. I thirk that the whole matter is this = “The Court: [ didn’t mean fairness. | meun after they had alliewed | to go in then, as i understand 1°, 2, being a dependent claim in vour viewpoint, thes didn’t really examine into 2 berause they thought it wasn't necessary. - Is that what vou mean? . The Witness: Well. what [ mean is this: -Thes dont go to th: pry rart after they have found that there is allowable subject matter and then a depenc ent elann is pdded, because the dependent clan tenc- to narre subrect matter whieh they nay airead found to he aliewab. / —T4a— (Exhibits From The Record Below) PORTION OF PLAINTIFFS’ EXHIBIT 3-—- - FILE \,RAPPER OF PATENT IN SUIT “Claims of Original Application 4156284 - What I claim as new and desire to secure by Letters Patent, is: . 4: fn @ vegetable chredder comprising @ Lell tet ree tite tod te be put omer she goodie 40 be shredded; ond mamnsliy deprenuble by @ opring-londed weluating stem sid ert ting meane on eneh aetnation being angularly mor the provisten of a seeket tn the upper portion of wetted treehertetet, oatd socket having « plurality Of intermel helien! ttre: of @ cheeling mentns tronted an the tower end portten of satd etem Sone SnenennG TENEREr CoMENNNNG Fhe Sine m - — 75a — Plaintiffs’ Exinibit No. 3. * satd Hotes and spring means adupted to prevent the eredtoney te rotate tt the tact stage of tte epward meventent xt wegetable Go seb Ons te late + te wehtehk the ehe- Chetry sember acl pas cael eects rotatably tote iG Shane oF he ks A a trtegratty en satd: steete: and « heltedt torsion oping eoted abort He Sten; ere ; end of satd spring being anchored tn atid sleere se thatthe . spring + detaphed from the stent on depression theres? and frie. Honity engaged thereto on the tepreatd stroke theres? en ardor to anequinrty rotate the steve and He entting mer Faby. 3 st eegeteHe shredder 49 se Ores tre bette 4, tm tehtek hose std to eonsitinted of tie ttereonnectetie panties, Fee COE SF tHE seoteetetty Geet eneteellyy tormented / mounted tn the Per mnp rete be of wegetable shredder 9 eet out tn elaine on vette the ent deep recone ts alee oeol tiie Sieh pesoce Se eaetaanetiodiadkane : trots atet of ontd epee. . 4156285 ae ee er Ht vegetable shredder @9 et out én elaine 4, te tehtel & red t+ seerered do the tower end of the stem wt wight Ht tet bbe rn a ‘of opentngs tre ORE HtEtEe Insert A’ 415628—6 — 76a — 4 - Plaintiffs’ Exhibit No. 3. Paper No. 3. Address only The Commis- All comr.-nications respect- sioner of Patents, Wash- ing this application should ington 25, D.C. | zive the serial number, date i of filing, and name of the applicant. (Stamp) Mailed Oct 26 1954 Pat. Div. 5. DePaRTMENT .or COMMERCE United States Patent Office Washington Kari Zysset c/o P. E. Baumann |. Metieednte. 5 Kilchberg B. Zech. at ; fy ‘Switzerland : Please find below a communication from the Examiner in charge of this application. Robert C. Watson, Commissioner of Patents. Applicant: Karl Zysset Ser. No. - 415,628 Filed Mar. il, 194 -For Vegetable Shredder This application has been examined. References applied : ele ~ Hlanel 8.140.010 Dee 13, 1988! 146-149 Suter (Switzerland) . 155,720 Sept. 16, 1932" 146-69 (1 sht drwg., | 2 pgs. spee.) * In, the specitieation the brief descrintron of Fig. 1 should’ state Where this seetion is taken and an appropriate see, tion line should’ be shown on fle appropriate figure’ The brief deseription ‘of Fig. 3 shouid state where this ser tion is taken and steuld further state that this view shows party broken awa Page 3, line 3, the “openings” should be provided with a reference character. Line 4, the ‘knife edge’’ shouid, be provided with a reference character. Line 2, refer- ~ enee character ‘‘lo’’ sheuld be changed to. 10. o Pa = a— Plaintiffs’ Exhibit No. 3. - Page 4, lines 24 to 29, the modification described should be shown on the drawing or reference thereto in the spec- ification should be canceled. - . Claim 1 and dependent claims 2 to 5 are rejected as _ being aggregative in form in that claim 1 recites elements without setting forth the structural relationship between ag elements and the other elements recited in th: claim. . . ‘or : _ 415628—10 ‘Serial No. 415,628 —2 exanfple, in line 10, the ‘‘spring means’’ has not been structurally related to any fther element or elements re- cited in the claim. See In te Hall 614 O. G. 11; 1948 C. D. 534. The functional stateraent which follows the recitation of the ‘‘spring means’’ does not serve to structurally re- late. the ‘‘spring means”’ to the other eiements recited in the claim. ‘ Claims 1 and S-are further rejected as being unpat- entable over the disclosure of the patent to Hanel. The patent to Hanel shows a vegetable shredder which .com- “prises a bell like housing 60 which is formed of two in terconnecting portions 70a and 706. A cutting means 75 is manually depressed to.engage material being cut by means of the spring loaded actuated stem 72 and. the hand. member S2‘at the upper end thereof. The member 70a is a checking member and the portions 78a are held to be ‘the full equivalent: of applicant's two cams: which co operated with the stem 72 to retate the stem and biade during a certain portion of its movement. To place the spring 86 about the stem 72 instead of about the member Tia is held to be merely a matter of choice or design which does not invelve invention ‘ Claims 4 and 5 are rejected as being unpatentable over the diselosure-of the patent to Hanel in view of the dis closure of the Swiss patent 155.720 The manner in which the Exanmner apphes the patent te Hane! te appicant’s construction has been set forth above. To replace the blade at the lower end of the ac -tuating member 72.0f Hanel with a biade of the form shown hv the Swiss patent 155,720 would ‘not invelve in vention. In this connection attention is directed to the ‘shape of tue blade ef the Swiss patent as illustrated in “ies. 2 and 5 of the Swiss disclosure, fons ney 415628—1! — 78a — o~ Mawmtiffs’ Exhibit No. 3. Serial No. 415,628 3 The addition of a wiper or ‘means to clear the blade . of Hanel on the upward stroke thereof is held to be an obvious expedient which does not involve invention. 1 to 5 are rejected. No claims are allowed. “ C. W. Robinson, - Examiner. L.W.J. ; L. W. J ites :de 415628—12 — J anuary 28, °55 6049 ( ieeen) Mail Division Feb 10 1955 U. S. Patent Office: Received. Fet 11 1955 Division 5 pup No. 4/A. @. iw. Pat. Div. 5 Ser. No. 415,628 Filed Mar. 11, °54 Apll.: Karl Zysset The Commissioner of Patents, Washington 25, D. C. Dear Sir, : This is & response to the Ist O.a. of Oct. 26, °54. In the drawings, pleage insert the corrections given in the enclosed sketches. This, however, need not be done be- ' fore a ciuim(s) is granted. In the specificatior page 2, line 14, please insert ‘after ‘section ’’—substanti- ally o. the line 1-1 of Fig: 2—; line 17, insert after ‘‘Fig. 1’’—on the line 3-3 of Fig. 2 with parts vroken away—; page 3, line 3, after ‘‘openings’’ insert —Sa—-; line 4, i after ‘‘edge’’ inserjg—Sb— ; page 4, cancel the liness24 # 29, line 25, cance} “une” page 3, line 26, insert—helical—before ‘“guide grooves’ | — 79a —- _ ™ Plaintif's’ Exhibit No. 3. Claims : Cancel the claims 1 to 5 and write instead : s ‘ag _Cont’d Beer ~— *(1)_ 6 Ina vegetable shredder comprising a two-part bell-like _ , housing *(HAVING AN UPPER AND A LOWER PORTION AND) adapted to be put over the goods to be shredded, and 2 : a knife blade manually depressable by a spring- loaded actua- . ting stem *°(WHICH HAS A LOWER END POR. TION), said blade *(BEING MOUNTED ON THE LATTER AND) on each actuation being an- gularly movab- ; le by an automatica!ly-operating indexing device, the impro- . ‘ved indexing device inciuding a socket ir the upper housing ; * portion, said socket having a plurality of internal helical grooves, and a checking member rotatably but axially immovab- ~ s . ly mounted on the lower end-portion of the stem, - said checking member comprising a ring seated on said stem portion, a slee- ; ee ve mounted on said ring and having two diametra] cams enga- : eas ‘ geable in said grooves, and a helical torston spring dispo- sed in said sleeve and coiied about said stem por- tion, one end of the spring being anchored in the sleeve and the other __bearing“tr said ring; the whole in such combina. - tion that on depressing the stem the checking member in the first stage * yes Ye 445628—13 Aq 7? ‘Is rotated in one direction relatively to the stem. and the a, mat spring is disengaged: from the latter, while the stem and kni- . © Matter in parentheses inserted. | cee | * — 80a — Plaintiffs’ Exhibit No. 3. . blade are not: rotaied, and that 1 in the last stage of the stem’s upward movement the spring engages the stem and the “latter together with the checking member and knife blade are rotate. in the other Svoution: °(2) A vegetable shredder as set out in claim *(1) 6, in which the © knife blade is sinuous, a wiper: cup is rotatably ' but axially perB immovably mounted in the *(LOWER) brent portion of the housing for . clearing the blade on the upward stroke thereof, said blade ‘‘-C: passing ‘through . a, continuous *(SINUOUS) ‘ meander slot in the bottom of = =§ ~ the wiper cup, and a blade-carrying rod passing ; in tight fit -** 83 through a plurality of openings in the blade * ( AND BEING SECURED TO THE.LOWER END ~PORTION OF THE STEN). = References applied : Hanel’s. chopper has an action similar to that of my shredder, but its construction is complicated. The. prin- cipal difference lies in the stem which comprises helix ele- ments, whereas the stem in my shredder is a plain round rod. Hanel does not mentic 1 anywhere that the knife will rotaie only in the last stage of its upward stroke. - Suter’s knife (Fig. 5) is bent ir z-fo-m, while the knife in Fig. 2 is non-continuous but comprises three straight sections &, only the knife-mount 7 being continuous. Neither Hanel nor Suter show my carrier rod 7 nor my wiper cup 3. . I believe that my new claims 6. and ‘7 clear-the Exam- iner’s ’s objections based on the rua applied. Yours very truly ; Karl Zysset Encl. : | : \ . 2 sketches lees. > . A2 415628—14 * Matter tn parentheses inserted. fae / ome — 8la —\ PLAINTIFFS’ EXHIBIT 109. (Filed, August 9, 1962) U. §. DEPARTMENT OF COMMERCE United States Patent Office ; June 2. 1961 This Is To Certify that the annexed is a true copy from the records Of this office of Disclaimer, filed July 12, 1960, . ine Patent 2.752.826, granted February 26, 1957, to Kar! Zysset, for Vegetable Shredder. oa . by authority of the Cominissioner of Patents s F. R. Oliver Certifying Officer.” 2 Led" sa (See memo July 29, 1960) UNITED STATES PATENT OFFICE . Patent Offies Jul 1S 1960 * Patentec’ — Karl Zysset | Issue & Gazette Patent No. — 2782826 - ~ Branch Issued — February 26, 1957 ~ Recorded Improvement —+Vegetable Shredder U.S: Patent Office . Issue Division” rial Jul 12, 1960 To The: Commissioner O* Patents: . 't ~ DISCLAIMER. Your petitioners, Karl Zysset, residing at Lyss, Switzer _land, a citizen of Switzerland, and New-Nel Kaitehen Tred ucts Company, a corporation organized and existing un der an by virtue of the laws of the State of Dliimois. has ing its principal place of iasingss at Chicago, Tlinots, rey ¢ A ) , oy Ba resent that they are, respectively, the patentee and legal owner of, and’ exclusive licensee to make, use ‘and: sell the patented’ invention under, ao United States Letters Pat- ent No. 2,782, 826, issued to Karl] Zysset for a eertain im-; . provement in Vegetable Shredder qn February ,26,. 1957, and that.they have reason to believe that, through inad- vertence, accideut or mistake and without any fraydulent or _deceptivedntention, elaim 1 of said Letters Patent ‘is too broad or is invalid as held by the United States Court of, Appeals, for the Seventh @udicial Cireuit on April 14, 1960, as seported in 125 USPQ 152.. Your petitioners, therefore, hereby disclaim claim 1 in so far as‘it is a separate and independent claim ‘of | said patent pursuant’ to the said opinion and the mandate: of the said Court of Appeals thereunder, but do not disclaim the wording of claim 1 in so far as it forms a part of claim 2 of said- - patent by reference, having’ regard to the-holding of the said court that said claim 2 is valid. - Signed by Karl Zysset at Bern, Switzertand, thig 6th day of July, 1960." | /s/. Karl Zysget , Witnesses: . Pi MES Se pees eet eeesesesereseseserreewesresesereees = —— Illinois, this 1st day of July, 1960. New-Nel Kitchen Products .Company . By /s/ A. O. Nelson - SR ae President | Attest: /s, Mabel Nelson Secretary ~ Moe a ie ne aa aay Recorded . © U.S. Patent Office Issue Division - Jul 12 1960 y . j aie ~ Y : . ‘ . x nxiea - ‘by New-Nel Kitchen Products Company at. ts = ae Defendant’ £ Exhibit, No. 111- . ‘SUMMARY OF NEW-NEL QU ARTERLY REPORTS ‘TO ZYSSET OF FOOD CHOP PERS SOLD, ~ ee Period . Net Unite May 15, 1958 — Aug. 15, 1958 7.740 — ' Aug. 15, 1958 — Nov. 15, 1958 ah 64,584 Nov. 15, 1958 — Feb. 15; 1959 19,835 Feb. 15,:1959 — May 15, 1959 13,446 - May 15, 1959 — Aug. 15, 1959 48,547 ~ Aug..15, 1959 — Nov. 15, "1959 | 11,463 — _ Nov. 15, 1959.— Feb. 15,1960, 9.460 - Feb. 15, 1960 — May 15, 1960 ; 9,091 May 15, 1960 — Aug. 15, 1960 “. - 10,576 ‘Aug. 15, 1960 — Nov. 15, 1960 7 11.694 Nov. 15, 1960 — Feb. 15, 1961 10,086 * Feb. 15, 1961 — May 15, 1961 | 15,584 May 15,1961 — Aug 15,1961 = ¢. . "12,861 Aug. 15, 1961 — Nov. 15, 1961 16090 Nov. 15, 1961 —- Feb. 15, 1962». ) - +, 11,928 i wt . i * ; oad > gl 4 - eo? i —_ Stu — : 5 ae K. ZYSSET PATENT #2,782,826 | Feb. 26, 1957. "KK — . 2,782;826 Filed March 11, 1954 . . _ 2 Sheets-Sheet 1 it} : 8 bisied F;) ‘i ee ee a- i | AN a yt | - | | _ _ | la . ie — i Bre.2, | | 7 | 1-3 | | be l i ; i i - 3a PS igre... - *. — \ ~ ae £ a K. ZYSSET PATENT #£2,782,826. ow. "Feb. 26, 1957 Filed March 11, 1954 Fiz ome K. ZYSSET 2,782,826 wearmny SHREDDER “A a 2 Sheets-Sheet 2 « re 7 8aNN | aw : =; Se en a ' ! é ud | te gens i ee K. ZY SSET. PATENT #2 2,782,826 United States Patent Office ° 2,782,826 VEGETABLE SHREDDER _ Kart Zymset, Lys, Switzertand Appiication March 11, 1954, Serial No. 415,628 2 Claims. (Cl. 146—160) sanually operable Vegetable shredders are known which compre 4 bell-hke housing adapted to be put over the gO00ds to ‘be shredded, and cutting means disposed im said housing and depressable by hand against the atten of y spring. said means when actuated being rotated step by step ‘with the aid of ‘an automancally acuog indexing device in such known — id=:s, the cutting means such as a steel Doede provide ! with © kpife-edge, at each upward or downward stroke ts moved by the indening device . during the entice stroke - Su-h known shredders, however, do not operate satis- tactonly i that whea the knife rotates dunrg the entire upward stroke, the goods ae angularly moved on their bed by the cytting Means, thus rendering ineffective the stepwise rotation for its mayor portcn. Such adverse conditions are"aggravated when the knife rotates-dunng.. \e¢ downward stroke A further disadvantage of such apis a shredders 1s that the stem which carnes the cutnrcg mean ana the actuayng member, has to be, provided th’ helical grooves on a length at least equal to the vroke. whereby the manufacture of the shredder and. the ~ caning therdot os, rendered complicated and difficult. Sait disadvantages are eliminated by the shredder dis- closad bs my present invention in that the culting means ire moved through a definite ange Only in the last stage ot the ‘upwerd stroke . In the shredder disclosed, the cutting means are con- cuted by a single sinuous steel stmp passing through a yeous slot of a Wiper cup which is retatably disposed 1 the housing If the wave hne of such steel stmp is mace more or less sinuous, thé shredded goods are pre- \ented trom being seized between the vanous sections of rhe meander Amie. Such arrangement also eluminates the yausantage arising in shredders having a stack of parallel AMIN 19 provide tor easy cleamag of the shredder, the hous- he Suita) v is net Made of one prece but rather of two porttons detachab! ¢ trom each’ other, which when inter Lorn: nected hold a wiper cup so that the latter is “rotatable e moe atially movabic, removable when the two portions ars disengaged trom each omer One form ct my invention is shown 1a the accompany - ing drawings. in which— Fig Lis a vertical secuon substantially on the Loe 1—1 ot Fig.-2 an which the cutting means is in the paised Poumon. Fig. 2 «9 a hormzontal section on the une 2—2 ‘of Fig. '. Fig. 3 1s a section sramlar to Fig. | on the line }—3 ol Bee 2 with pafts brokea away, but in which the cut. ‘tung means 15 19 a partly lowe.ed posinon, and . Fig 41s 4 partial view of .\ checking member which \s turned through 90° from the vesition showa in Fig. | The shredder shown comprises 1 bell-Lke housing made up of a lower portion i and an wy per portion 2 of trans- parent plasbe su¢h as polystyrene These two portions are interconnectadle by means of \weads Ia and tu so whilst said wiper is readily , aa 70 ( Te ie nals our Gadi Ge cans od 0 en ee open space of the applicance. A compression spring 5S disposed between a recess 2c in a shoulder 25 of housng portion 2 and handle 6, after actuation of the latter re* turns blade 8 to its upper initial positon. A wiper cup 3 serves to clean the muttple-bent knitc blade dunng the upward stroke thereof in the operating position of the shredder, said wiper cup bears on a shoulder 14 of. cylindrical housiag portion I and is freely rotatable when the two housing portions I asd 2 are screwed together, but the wiper has practically no play in the axial direction. When the two housing por- tions are unscrewed, the wiper cup is teadily removable. From the apex of a wave line formed by a siot for koife blade 8, extend a plurality of stiffening 3a ‘from two sides, which brace the wiper cup \ As mentioned in‘ the introductory part of the descnp-: tien, the shredder is provided with an automatic index- ing device which acts to angularly move the cutting micans Said device, in contradistunction to known shredders, iniu- ate, the rotary movement only during the last stage of the upward stroke. Prises on one hand the socket 2/ with helical guide grooves 2e and, on the other hand, & checking member disposed on the lowes end portion of stem 4. This checking mem- ber compnses a metallic ring 10 which 1s freely rotatable on stem 4, a sleeve 9 which ts non-rotatabie with respect to the latter and has two diametrically opposite cams 9a, and a torsion spang Hi coiled about wem 4 and of which the lower end Ila is anchored tn siceve 9 ~=The latter ts cast or Pressed as one piece of sphnterproof plastic such as “nylcn.~ The checking: member 19 pre- vented from atial movement On one hand through a‘ stud 12 fixed to stern 4 and, on the other d, thgough rod 7 against which abuts a metallic washer. 9 of the check ingmember. , ~* ; The shredder shown operstes as foilows When ce pressing knife blade. $ by means of handle 6, the check- ing member is rotated owing to the cams 9 being engaged in two guide grooves 2e in the sense of separating the spring 11 from stem 4 The frmcuon between the oper ator’s hand and handle 6 is considerably greater than that between spmng 11 and stem 4 so that katte blade 8 cannot rotate Afier releasing the handic. the anute first moves straight upwardly under tre actwoa of spring 5 Ia the tast stage of such upwarc movemen!, the cams 92 of the checking member are engaged in Ui: guide grooves 2¢. Owing to the rotary movement of siceve 9 entorced thereby, springell is put ghtly about stem 4 whereby the latter 1s coercively rotated duping the re- maining stage of the upward stroke. After cach operanon of depressing knife 8, the latter is moved through a cer- tain angie shortly before reaching tls powuon of rest. What | claiin as new and desire to secure by Letters Patect, ts 1. In a vegetable shreddet\ comprising a two-part beil- hike housing having an upper and a lower portion and adapted (0 be put over the goods t@ be shredded, aad a knife blade manually depressable by a spring-loaded actuaturg stem which has a lower end portion, said biade Deing mounted on the latter *nd oa each actuation bewng Said d@ice 1m the present case com- . _K. ZYSSET PATENT #2,782,826 ~ é . | 2,762,080 " " 3 : P ‘ 4 > anguiarty movable by an automatically-operanng: wdex the ing member and inife biade are rotated in the in the upper housing portion, said socket having a plu- 2._ A vegetable shredder as set out in claim |. in which rality of imternal helical grooves, and a checking mem- the Knife blade is sinuous,.2 wiper cup is rotatably buf ber rotatably but axially umovably mounted on the 4 axially immovably mounicd in the lower porti8n of the lowes tnd-portion of the stem, said checking. member housing for clearing the blade on the upward stroke comprising a ming seated on said stem portion, a sleeve thereof, said blade passing through a continuous sinuous . mounted on said ring and having two diametrical cams slot in the bottom of the wiper cup, and a biade-carryipg ° engageable in said grooves, and a helical tersion spring rod passing in tight fit through a plurality of openings in disposed in said: sheeve and coiled about said stem por- 19 the blade and being secured to the lower end portico of thon, ose end of the spring being afchored in the siecve the stem. . : and the other beanng on said ring; the whole in such ‘ ; . combination that on depressing the stem the checking References Cited wi the fiie of this patent ; member in the first stage is rotated in one direction reia- UNITED STATES PATENTS _ tively to the stem and the spring is disengaged from the #3, : latter. while the stem and knife blade are not rotated, _ = 149.010 Hanel --------.------- Dec. 13, 1938: and that in the last stage of the stem's upward movement FOREIGN PATENTS the spring engages the stemi and the latter together with 155,720 Switzeriand ............ Sept. 16. 1932 e . ° . ; ‘e : a z ; : > . a $. - ° : oe itn MANDATES. 3 rs ° . (Filed Aw 7 1963). UNITED STATES OF AMERICA, SS: The President Of ‘The United. States Of America To the Honorable the Judges ‘of the United States District Court: Yor the Kastern Division Northern District of Illinois, © (Seal of U. S. Court of Appeals, Seventh Cireait) Greeting: Whereas, - lately _ in the United States. District Court for. the Northern District of Illinois, Eastern Division before you, or some of yaii, in a cause between Karl Zysset and , New-Nel Kitchen Products Popeil Brothers, Inc... Company, Plaintiffs, and Defendant, District Ceurt No. 37-C- 763, a judgment Wale entered on the thirteenth day of July, 1962; as by the inspection of the transcript of the record of the said District Court, Ww lich was brought into the United States Court of Appeals for the Seventh Circuit en Pic virtue of an appeal by K chen Products Company agre in such edse made and . provided, appears. And Whereas, in the term of September, cur Lord. one thousand nine said cause came on ‘to be heard ‘before the Enited 8S arl Zysset And New- Nel — ee ee eably to the act of Congress, fully and at large in the vear of hundred’ and sixty-two, the _— Court of _Appea! s for the Sew®mnth Circuit, on the said _ transcript of record, and was argued by counsel On Consideration W hereof, by this Court that in Appea it is ordered and adjudged ls Nos. 13939 and 13940, the ° ees States” ‘ . a " —89a— x judgment order ‘ne July 13, 1962, be, ‘and the same fs hereby Reversed in so far as it awards -ds_ damages and attorneys’ fees and disbursements in the sum of $182,- . 325.38, and costs; and that this cause be, and it is hereby Remanded to the said District Court with instructions to Wacate tha portion of its judgment order of July 13,, - 1962,. and with- directions "to enter judgment for the . ‘plaintiffs’ in, the sum of $636,672.12, without costs; but — with interest from the date of its entry. — It is further ordered and adjudged by this Court that _ in Appeal No. 14007, the judgment order of the said Dis- trict Court-entered November: 13, 1962, be, and the same is hereby, Affirmed. “ao ” It is further ordered that neither party ‘is howed eosts in this Court in these ‘appeals, in accofdance with tne > opinion of this Court filed this day, Monday, June 3, 1963 _ And afterwards, bi on the’ eighteenth day of June, _ 1963, there was filed in the office of the Clerk of this Court . . } a petition for rehearing en banc, which said ‘petition for ” rehearing en bane was denied on the seventeenth day of eee ae ae : . . ~ You, therefore, are hereby commanded that such further proceedings be had in said cause, as according’ to: right» and justice, and the laws of the United States?aught to be had, the said judgment notwithstanding. W itness, the Honorable Earl Warren.’ Chief Justice of the United States, the sixth dav of August, in the rear of our Lord. - _ one thousand gne hundred-and sixty- three. > /s/ Kenneth J. Carrick Clerk of the United States Court of Appeals for the Seventh Circuit | By: /s/ Thomas F. Struhbe, Deputy Clerk ae Se — 90a — . (Mandate in Appexl 13940 is identical with above save ~ for recital that the appeal was by virtue of = appeal by . Popeil Brothers, Inc. ee. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385601_1452%3A3. Public record. Not legal advice.