Petitioners Reply Brief — Tansel v. Photon, Inc.

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IN, THE

Supreme Court of the Hurd tte

OcTOBER TERM, 1965

d No. 817

Ceci. L. TANSEL, assignee of the chose in action from

Harris-Intertype Corporation, Petitioner, ‘

v.

Puoton, Inc., Respondent.

4

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—_ PETITIONER'S REPLY BRIEF

fr

The Brief for Respondent in opposition to our Peti-

tion for a Writ of Certiorari 1 in this cause makes three

points.

"1. It is alleged that the Petition should be denied

because we have not presented a.question as to in-

fringement.

The decision of the Circuit Court of Appeals. (Ap-

pendix to the Petition, page A-1) makes no mention

whatever of infringement. We are petitioning for

<7

2

a review of: that decision, not the decision of the Dis-

trict Court.

The District Court held (R. 563-564) that ‘‘it is

perfectly clear that every one of the claims charged

to be infringed herein reads on the Photon machine.”’

The District Court held that the Photon machine was

different because of its use of the photocell-slit ar-

rangement instead of the breaker point device. It

necessarily follows that if Tansel invented the photo-

ceell-slit arrangement and if his patent validly covers

that arrangement, reversal of the decision of the Court

of Appeals would reverse the decision of the District

Court.

2. The second point in Respondent’s Brief is that

both the District Court and the Circuit Court of Ap-

peals held the Tansel patent invalid by application

of the law of the A.&P. Tea.Co. case, 340 U.S. 147.

This much is so. A careful reading of the District

Court’s opinion, however, will show that there, the

question was whether the breaker point device suffi-

ciently distinguished from the prior art. <>)

The Court of Appeals brushed that question aside,

and held that the photocell-slit arrangement also did

not distinguish from the prior art. This is an entirely

different ground, and one not supported at all by the

record. Counsel for Photon always admitted that this

photocell-slit arrangement was patentable.

3. The third point in Respondent’s Brief is that

Harris-Intertype did not commercialize Tansel’s in-

vention as soon as it should have. This cannot deprive

Petitioner of his rights.. Continental Paper Bag Co.

3

v. Eastern Paper Bag Co., 210 U.S. 405, 52 L. Ed.

1122.

In the Argument of Respondent’s Brief it is said

that the statement of the Court of Customs and Patent

Appeals as to the nature of Tansel’s invention, upon

which we rely, is a purely gratuitous statement out-

side the bounds of justiciable subject matter, and,

therefore, to be disregarded.

While obiter dictum is not controlling in subsequent

litigation, it should be respected. Cohen v. Virginia,

6 Wheaton 264, 399, 5 L. Ed. 257, 290; Humphrey’s

Executor v. United States, 295 U.S. 602, 627, 79 L. Ed.

1611, 1618-1619; Gabbs Exploration Co. v. Udall, 315

F. 2nd 37, 39 (CA—District of Columbia).

We admit that the decision of the Court of Customs

and Patent Appeals is not res judicata on all of the

issues raised in the suit for infringement. Infringe-

ment was not involved in the litigation in the Court

of Customs and Patent Appeals.

There were certain things agreed upon in the Patent

Office and im the Court of Customs and Patent Ap-

peals, however, and where these are set forth in the

opimon of the Court, they should not be treated as

obiter dicta. They are in the nature of stipulations

approved by the Court. They create an ‘‘estoppel by

judgment,”’ or ‘‘collateral estoppel,’’ as-those terms -

are explained in Commissioner of Internal Revenue

v. Sunnen, 333 U.S. 591, 598, 92 L. Ed: 898, 906; and

United States v. International Bldg. Co., , 345 U. S. 502,

97 L. Ed. 1182,

Counsel for Photon always agreed that the photo-

composing machine having a photocell-slit arrange-

4

ment for controlling the timing of the flashes of light

was patentable.* |

The question of whether Tansél was entitled to a

patent on a machine using a photocell-slit control for

the flashes of light was squarely before the Qourt of

Customs and Patent Appeals. That was the ‘‘device

in issue.”’

Tansel’s original application for patent, Serial No.

604,474. filed in 1945, had only one arrangement for

controlling the flashes of light. This was a photocell-

slit arrangement. The question before the Court of

Customs and Patent Appeals was whether he was en-

titled to the benefit of the disclosure in that applica-

tion. The Court said: me

**Tansel filed his original application No. 604,474

July 11, 1945, the specification and drawings of

which disclosed the photo-electric flash control

device im issue.”’ ‘ :

—Quoting from 215 F. 2nd 459 and Appendix,

page A-8, to the Petition herein.

The Court of Customs and Patent Appeals ruled

that Tansel was entitled to the benefit of the earlier

* The District Court did not hold that the machine with the

photocell-slit control was not patentable. Indeed, the District

Court held that the Photon commercial machine was different from.

Tansel’s because it had the photocell-slit control; that this control

was what made it a commercial success; and that because of this

control Photon did not infringe the Tansel patents. See District

Court’s Opinion, R. 564-569. a

In so holding, the District Court overlooked Tansel’s disclosure

of the photocell-slit arrangement, and overlooked Claim 12 (R.

600) of the Tansel patent upon which review is here sought.

Claim 12 specifically calls for a ‘‘precise control device’? which

‘*includes a photocell and means (such as slits) for modifying the?

amount of light received by said photocell.”’

9)

disclosure. Any judicial pronouncements made with re-

spect to the machine there disclosed admitted by both

litigants to be patentable, surely should not be treated

as mere obiter dicta. Cromwell v. Sac County, 94 U.S.

351, 24 L. Ed. 195; Hot Springs Coal Co. v. Miller,

107 F. 2nd 677, 681 (CA-10); Minnesota Mining &

Mfg. Co. v. Technical Tape ane 313 F. 2nd 306, 309

(CA-7).

In the contest between Tansel and Higonnet et al.

in the Patent Office, Higonnet et al. brought a Motion

to Dissolve on the ground of non-patentability (PX-

54, page 479). The Examiner held that the machine

claimed was patentable, and denied the Motion (PX-

54, page 508). Under the rule of Morgan v. Daniels,

153 U.S. 120, 124-125, 38 L. Ed. 657, 658-659,, this

decision of the Examiner, being in a contested case, is

entitled to considerable weight.

What is more important here, however, is the fact

that the, Motion brought on behalf of Higonnet et al.

was based on the contention that Tansel was not en-

titled to the benefit of his disclosure in his early ap-

plication No. 604,474 filed in 1945. See particularly

the ‘“‘NOTICE” (PX-54, page 483) accompanying

the Motion to Dissolve.

It was always admitted, nay, proclaimed on behalf

of Higonnet et al. in the Patent Office and in the Court

of Customs and Patent Appeals that the machine which

had the photocell-slit control was an invention of a

high order. The quotations from the CCPA record

on page§ 15-16 of our Petition herein show this to be

so. Further, this was admitted to be so by Counsel

for Photon when he addressed the District Court. See

quotations on pages 10 and 11 of our Petition herein.

6 4

On the question of the patentability of a machine

having the photocell-slit control, it cannot correctly

be said that the difference of opinion between the Cir-

cuit Court of Appeals and the Court of Customs and

Patent Appeals is based upon a materially different

record. The situation, on this issue, was not ‘‘vitally

altered’’ in the suit for infringement. Cf. Commis-

stoner Vv. Sunnen, 333 U.S. 591, supra. No really dif-

ferent prior art was brought to the attention of the

District Court than was before the Patent Office and

the Court of Customs and Patent Appeals.

The only prior art alleged to be different is the

book, ‘‘Flash,’’ published in 1939, explaining the

Edgerton inventions’ on flash photography. But the

Edgerton inventions on flash photography were con-

sidered by the Patent Office, although not in exactly

the same form as presented to the District Court. The

Patent Office Examiner considered Edgerton’s patent

No. 2,186,613 granted in 1940, and, indeed, once based

a rejection of some Higonnet et al. claims upon it.

See PX-54, pages 203 and 22h Then the Examiner

withdrew the rejection when Counsel for Higonnet

explained (PX-54, page 233) that ‘“‘high speed flash

photography as exemplified by the Edgerton patents”’

do not negative patentability in a photocomposing

machine because ‘‘the problems are entirely different.’’

Counsel then explained why they were different. See

PX-54, pages 233-234.

Thus, the matter thought to be in dispute, and ruled

upon as decisive by the Court of Appeals for the First

Circuit, was actually first presented and ruled upon

by the Court of Customs and Patent Appeals. Be-

cause the decisions of the two Courts of Appeals are

T

in direct conflict on this matter, and because it is most

important that conflicts between the Circuit Courts of

Appeals and the Court of Customs and Patent Ap-

peals on the question of patentability be resolved, the

Petition for the Writ of Certiorari herein sought

should be granted.

Respectfully submitted,

EARL Bascock

200 Hightower Bldg.

Oklahoma City, Okla. 73102

E.iottr I. PoLtLock

1200 18th Street N.W.

Washington, D. C. 20036

Attorneys for Petitioner

SERVICE

Service of this Petitioner’s Reply Brief has been

made upon Respondent by mailing two copies air mail

and two copies regular first class mail to Melvin R.

Jenney, Esq., 24 School Street, Boston, Mass., 02108,

its attorney this day of January, 1966.

—Attorney for Petitioner