Petition for Writ of Certiorari — American Air Filter Co. v. Continental Air Filters, Inc.
Supreme Court brief1966
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SUPREME COURT. U.S ~ om)
2° : FILED \
= <= | 41965
: ; é
Iw THE 3 | JOWN K DAVIS, CLERK |
Supreme Court’ of the United States
Ocroser Term, 1965
g
: °
764
-- AMERICAN AIR FILTER COMPANY, INC,, , ‘
Petitioner,
JS
v.
CONTINENTAL AIR FILTERS, INC,
‘ Respondent.
PETITION FOR A WRIT OF CERTIORARI ae
TO THE UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
ALsBEert C. JOHNSTON
122 East 42nd Street
New York, New York 10017
- *£ — Attorney for Petitioner
Of Counsel: ’ ow
yas Fadl E. a
KgirH, corto, Isnug & DesMaAratIs
122 East 42nd Street “
New York, New York 10017
_—— anna an s-
INDEX
Petition x
Cis Wl oink Ge, eee
po BPPPET SCPE e ET rere ren ere rere:
ee errr TE er errr ree
Constitutional and Statutory Provisions Involved . .
Sendak aE Gls GOO... 65 eas. Ck.a sé 6 keds ee ek
B. The Importance of The Question ..........
Conclusion . Septet eee e cere ete ee eee ceecees
Appendix
Decision, Findings of Fact, Conclusions of ‘Law and
Judgment of the District Court Below .........
Decision, Findings of Fact and Conclusions of Law
' of the California District Court in The Farr Co.
OE i aca ce atone ect divimttave nie
>
Constitutional and Statutory Provisions Involved . .
PAGE
la
fold-out
sheet
ii’
MN OE TID ns. ovis oosocccseceds's coe
CITATIONS .
PAGE
CASES:
Barenblatt v. United States, 360.U. S. 109 (1959) 10
Berman v. Parker, 348 U.S. 26 (1957) .......... oo
Cuno Engineering Corp. v. Automatic Devices
SE Eis Gs OO CEDEE Docc cccccsevescsees 11
Dewey v. United States, 178 U. S. 510 (1900) ... 10
- Dunbar v. Meyers, 94 U.S. 187 (1876) .......... 7
Eibel Process Co. v. Minn. & Ontario Paper Co.,
261 U. $ CME) be seccetdsesensencsnns 7
Electric Battery Co. v. Shimadzu, 307 U. S. 5
caso déevesksecesedssevderstakes eee 10
Expanded Metal Co. v. Bradford, 214 U. S. 366
De (|) Bee err 7
Farr Company v. American Air Filter Co., Inc., 318
F. 2d 500 (9th Cir. 1963) cert. denied, 375 U. S. F
oles cng 6e ses 000 sveweevdeostanesen
FTC v. Simplicity Pattern Co., 360 U.S. 55 (1959) 10»
Gibbons v. Ogden, 22 U. S. (9 Wheat.) 1 (1824) .. 10
Great Atl. & Pac. Tea Co. v. Supermarket Equip-
ment Corp., 340 U.S. 147 (1950) ............. 7,14
Guaranty Trust Co. v. Henwood, 307 U. "S. 247
ele c55 4 0b 00searssieavnseriveséans 10
Helvering v. Davis, 301 U. S. 619 (1937) ........ 10
Hotchkiss v. Greenwood, 52 U.S. (11 How.) 248
Pe Gincsdeencsensrencias 6
Lincoln Co. v. Stewart Warner Corp., 303 U. S.
EE cikind veh s6nee acne wadenand¥e dean 7
1976 v. NLRB, 357 U. S. 93 (1958) ...... * 10
Mantle Lamp Co. v. Aluminum Products Co., 301 >
‘ PAGE n
ef
McClain v. Ortmayer, 141 U. S. 419 (1891) ...... 7
Mercoid Corp. v. Mid-Continent Investment Co.,
eae O0. S N. CEE) ns wn ccvewessbaradetens 9
NLRB v. Jones & Laughlin Steel Corp., 301 U.S.1
(SRI) vs vo eschew da kper Ga beeksweneees 10
Polish Aliance ¥. NLRB, 322 U. S. 643 (1944) ... 10
Potts v. Creager, 155 U. S. 597 (1894) ve teeeeees 7
Railway Employee’s Dept. v. Hanson, 351 U. S. 225
¢ BG ee -ésbbbeeanekece tmecoae 10
Sears Roebuck & Co. v. Stiffel Co., 376 U. ° 225 |
(RED ina coedpest<asessntes thee 14 oa
Secretary of Agriculture v. Central Roig Refining i ar
ew te ge. | ee ee 10
Sinclair Refining Co. v. Atkinson, 370 U.S. 195 :
° CIIRE) w .050 5.042 o tnkes 45 ate aa He eee 10 2
Smith v. Whitman Saddle Company, 148 U. S. 674
(EROUD »c0scvteceeusunasncuneusssaea eee 7 \
United States v. American Union Transport, Inc.,
ae. S406 CHING) ocd dct adnuatdacgeaectawe 10
United States v. Darby, 312 U. S. 100 (3900) 5.5. 10
United States v. Duell, 172 U. S. 5¥6 (1898) ...... 6
United States v. Twin City Power Co., 350 U.S.
Fae LUNN) 6 6.0 as sLosn can saneneseokeens 10
CONSTITUTION : ;
U. S. Const. art. I, §8 ....... ehveevsvesaeeens ae?
STATUTES: : | e way {
28 U. S.C. § 1254 & Se tame eet a pe ee 2
35 U. S.C. §101 (ccsackpeneantapeee .2, 4, 5,8, 10, 12
33 OU. SC. O98 nas ees .....2, 4, 5, 8, 9, 10, 12 |
Be 8), Ss Gy Be eicicke peer se . +++ +2, 4,5, 8, 12, 14
35 U. SUC. Bae i icaves fetes dseteee dees cwsninhy Ak
7 4
>
iv
PAGE
“MISCELLANEOUS:
)
7.
Bush, Proposals For Improving The Patent System,
Study No. 1, Subcomm. on Patents, Trademarks
and Copyrights, Senate Comm. on the iciary,
84th Cong., 2d Sess. (Comm. Print 1956) ...... 13
Chin, The Statutory Standard of Invention: Sec-
tion 103 of the 1952 Patent Act, 3 J. R. E. 317
CN crush hooks waaeen as ebeeswecneeesceess 14
Edwards, Efforts To Establish A Statutory Stand-
ard of Invention, Study No. 7, Subcomm. on
Patents, Trademarks and Senate
Comm. on the Judiciary, wm BSth , Ist Sess.
(Comm. Polat TOG) oc ccccccccovccccccees 6, 8, 14
Frost, The Patent System And The Modern Econ-
omy, Study No. 2, Subcomm. on Patents, Trade-
marks and Copyrights, Senate Comm. on the
Judiciary, 84th Cong., 2nd Sess. (Comm. Print
_—_, eesinenadinuts ogtinnelie paling 6,13
H. R. Rep. No. 1923, 82nd Cong., 2nd Sess.
edo curcrs cede. circ Gosvansei 8,9
Norte, 63 Cotum. L. Rev. 306 (1963) ........ ¢.. M
S. Rep. No. 1979, 82nd Cong., 2nd Sess. (1952)... 8,9
STAFF OF SUBCOMM. ON PATENTS, TRADEMARKS
AND CoPyRIGHTS, SENATE CoMM. ON THE JUDI-
crARY, 86TH ConG., 2p SEss., AN ANALYSIS OF
Patent LiTIGATION Statistics (Comm. Print
EE cis eens vensioibaaveceeiene Faas 13, 14
“~~
¥
IN THE |
Gupcvine Gout uth Stich Btaes
Ocroser Term, 1965
2
AMERICAN AIR FILTER Company, INc.,
Petitioner,
-, ; No.
CONTINENTAL Arr FItters, INC.,
Respondent.
PETITION FOR A WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT _ \
American Air Filter Company, Inc. petitions that a writ
of certiorari issue to review a judgment of the United States
Court of Appeals for the Sixth Circuit, affirming a judg”
ment of,the United States District Court for the Western
District of Kentucky which held Rivers Patent No.
2,807,330 invalid.
OPINIONS BELOW
The opinion of the District Court is reported at 226 F.
Supp. 482 and its findings and conclusions are printed in the
Appendix hereto, infra, pp. la-5a. The opinion of the Court
of Appeals is reported at 347 F. 2d 931.
JURISDICTION
The judgment of the Court of Appeals was éftered on
June 25, 1965. A timely petition for rehearing was denied
- arp Rivers patent No. 2,807,330 relates to industrial si Sitration
4 ded, Aeon oe ior art, as exemplified 7 in
. ‘2
on August 26, 1965, The jurisdiction of this Court is _
invoked under 28.U. S. C.-§ 1254(1).
| QUESTION PRESENTED
Does the inclusion of the phrase “invents or discovers”
in § 101 of Title 35 of the United States Code empower a
Court to invalidate a patent for want-of “invention” by the
superposition of conditions for patentability additional to
that expressly set forth in 35 U.S. C. § 103.
AND STATUTORY
PROVISIONS INVOL
The eighth clause of Article I, Section.8 of the United
States Constitution and Sections 101-103 and 282 of Title
35 of the United States Code are involved herein and are
printed on a fold-out sheet following the Appendix hereto.
| 4
STATEMENT OF THE CASE
The legal bases of the decisions below necessitate a close.
patent,’ American Air Filter Co. Inc. Vy
43 ‘ :
Civil No. 858-58Y;-Southern District of California. ThY
Co. case are unreported and are printed in the Appefidix
hereto, infra, pp. 6a-31a. The Court of Appeals decision ©
is reported in Farr-Company v. American Air Filter Com-
pany, Inc., 318 F. 2d 500 (C. A. 9, 1963); c. d. 375 U. S.
903 (1963). , : :
Trial was had below in May, 1959 immediately follow-
ing the California District Court trial-of the Farr Co.case’’
in which the Rivers patent was found to be valid and in- :
fringed. Detailed findings of fact, conclusions of law and ©
« judgment were entered in the Farr case on July 22, 1959
' (infra, pp. 9a-3la). The Ninth Circuit Court of. Appeals
téok almost four years to decide the Fart case appeal and
during the pendency of that appeal the District Court be-
low held this case under submission. The total time here
involved: betwicels trial and judgment was well over four
years.
In reversing the lower Court in the Farr case on the sole
ground pt lack of “inventifn”, the Ninth Circuit Court
recognized that novelty was present (318 F. 2d 500 at 503),
accepted the facts “found below (p. 502)? and posed its
view of the’sole and critical issue as follows (pp. 502, 503)
; “Whether Rivers’ contribution is of sufficient
novelty to be patentable is therefore a question of
law, based upon the rule that a ination of
<3
to those skilled in the art (Finding
48, p. 26a; Finding 60, px 28a). ‘See also Fi ings 40-61 ; pp. 23a-28a.
v5
“Including express finflngs of new function and new mode of
—_
‘4
A
“ML Swe are eensble to pee that any of the re-
“*
quisite unusual or surprising consequences resulted.” * eas
-» Shortly thereafter, the District Court below held Rivers
-‘ patent No. 2,807,330 invalid.and stated as the sole basis
for such conclusion (226 F. Supp, 482 at rete
“The ring and the reasoning ii the opinion of
Farr Co. v. American Air Filter Co. supra, is adopted
' as the law of the case.” ;
_ The findings. subsequently formulated by defendant
were admittedly “within the framework of the Farr
opinion” and are essentially nothing but either quotes from
or slightly paraphrased extracts of such opini No-
where therein is any express statement of lack of spel
of the claimed subject matter (cf. 35 U. S. C. § 102) or
ee ee eae (cf. 35
U.S. C. § 103). :
The District Court complete derogation of the statu-
tory criteria is emphasized by its first conclusion of law
(infra, p. 4a):
“The standard of patentability is a constitutional
standard; and the question of the ee of a pat-
—_ is a question of law.”
In affirming the District Court, the Sixth Cireuit Court
of Appeals stated. (347 F. 2d 931 at 932): + '
Fair reading of the District judee’s reported
- Opinion together with his coriclusions of law and the
opinion of the Ninth Circuit makes it clear that in-
_ validity was adjudged because of the conclusion that
= .@$@ matter of law the patentee, Rivers, really did not
eee ” invent discover anything when he put together the *
pee ee pleat mechanism. * U.S.C.A. § 101. We agree
a
. 5 = =
with the District Judge and the Ninth Circuit and,
therefore, affirm. :
ii ae ie ee
*** As stated by the Ninth Circuit, the patentee,” |
Rivers, “did contribute something to. the art” and
‘the sole question is whether such contribution “
constituted patentable invention, 35 U.S.C.A. r
Bt, PAR elem cats Sits
As is apparent frorg the foregoing, the Court of Appeals
expressly relies upon § 101 of Title 35 U. S. C. and in
particular to the phrase “invents or discovers” therein as
its basis for affirming the District Court’s belated adoption -
of the “ruling and the reasoning” of the Ninth Circuit and
derivative invalidation of the Rivers patent by superposi-
tion of an additional and precedént “condition” for patent-
ability to those set forth in § 102 and § 103 of the Statute.
_ REASONS FOR GRANTING THE WRIT
This petition raises an important question of federal
law concerning the scope of judicial power in relation to the
administration of the patent law which has not been, but
should be, decided by this Court. :
\A. The Present Patent Statute and Its Background
Patents in the United States exist only by virtue of
Statutes enacted by Congress pursuant to the enumerated
power set forth in Art. I, § 8 of the Constitution. (See fold
out sheet at rear) ) ee
Under such power Congress. has plenary authority to «
enact all laws consistent with the specified purpose of pro-
rc
Ce
*The Court later buttressed its conclusion by asserting that the
subject matter was obvious and erroneously such a holding
to. both the Ninth Circuit and to the Kentucky District Court. The
pe te.
ba
6
moting “the progress of science and useful arts’, and
which, in its judgment, will be best calculated to effect that
object. In United States v. Duell, 172 U.S. 576, 583 (1898),
this Court said:
“Since, under the Constitution, Congress has
* power ‘to promote the progress of science and useful
@ arts, by securing for limited times to authors aud*
inveritors the exclusive right to their respective w.: it-
ings and discoveries,’ and to make all laws which
shall be necessary and proper for carrying that ex-
pressed power into execution, it follows that Con-
ress may provide such instrumentalities in respect
of securing to inventors the exclusive right“o their
discoveries as in its judgment will suas best calculgted
to effect that object.” rf
None of the predecessor statutes to the 1952 Act set
forth any statutory “standard of invention” as a condition
for patentability,* The requirement of “invention” was
ye of judicial origin and had its genesis in Hotchkiss v.
Greemwood, 52 U. S.(11 How.) 248 (1850). That decision
introduced both the “requir t” of “invention” and set a ©
“standard” therefor in térms of “a “on of skill and
meemeny: as follows :
hale "for tmless more ingenuity and skill in ap-
plying the old method . . . were required than were
possessed by an ordinary mechani@acquainted with
ee Seite tere tie tn seresien, of Eat. degree
_ *See, e.gg,Edwards, Efforts To Establish A Statutory Standard
lecouon Study, No. 7, Subcomm. on Patents, Trademarks and
Senate Comm. on the Judiciary, 85th Cong., Ist Sess.
1% ( Print 1958); Frost, The Patent System And The
Modern Economy, Study No. 2, Subcomm. on Patents, gage
Sens 4h 00 (Cota, Senate Comm. the udiciary, 84th
Sess,47-60 ae print 1957). s “se alaam
7
~
of skill and ‘ingenuity which constitute’ essential
elethents of every invention. In other words, the
improvement is the work of the skilful mechanic,
not that of the inventor. (52 U. S. at 266)
The reasoning of this case and what followed was the
injection into the law of what has ever since been called a
requirement for “invention.” Generally, this Court applied
this requirement of invention, albeit with some verbal vari-
ances, in the ensuing years. See, e.g., Dunbar v. Meyers,
94 U. S. 187, 197-200 (1876) ; McClain v. Ortmayer, 141
U. S. 419, 425-29 (1891); Expanded Metal Co. v. Brad-
ford, 214 U. S. 366, 381 (1908) ; Eibel Process Co. v. Minn.
& Ontario Paper Co., 261 U. S. 45, 63 (1923). Other
verbal variants made their appearance and were such as to
be later readily arguable as representing marked departures °
from the Hotchkiss v. Greenwood requirement. Sea) Smith
v. Whitman Saddle Company, 148 U. S. 674; 681 (1893) ;
Potts v. Creager, 155 U. S. 597, 607 (1894) ; Mantle Lamp
Co. v. Aluminum Products Co., 301 U. S:544, 546 (1936).
In the more recent years prior to 1952, the i
and associated comments employed by this Court relative
to the delineation of the requirement of “invention” ele-
vated them “standards” which differed from those
Of earlier cdSes. See Lincoln Co. v. Stewart Warner
Corp., 303 U.S. 545, 549 (1938) ; Cuno Engineering Corp.
v. Automatic Devices Corp., 314 U. S. 84, 91 (1941).
Such terminology, coupled with the associated comments
in Great A. & P. Tea Co. v. Supermarket Corp., 340 ¥. S.
147 (1950), created Serious questions as to uniformity and
9 definiteness of the requirements for patentability in the
lower courts and, more importantly, as to whether the
requirements or standards of “‘i ion” were being judi-
cially raised to a level that would impede, rather than pro-
mote, the progress of useful arts. PEE
4
*
At least in partial response to the above, Congress, in
‘the -late 1940's, considered the enactment of a statutory
standard of invention.‘ These efforts culminated in the
enactment, in 1952, of §§ 101, 102 and 103 of Title 35 of
the United States Code (printed on the fold-out sheet fol-
lowing the Appendix hereto).
As noted in both the Senate and House Repor‘s on the
subject legislation, “Section: 101 sets forth the subject
matter that can be patented, ‘subject to the conditions and
requirements of this titie.’ The conditions under which a
patent may be obiained follow, and Section 102 covers the
.condition relating to novelty.”* Section 102 significantly
uses mandatory language—"A person shall be entitled to
a patent unless .
The Senate and House reports also state:
. There are a number of changes in substantive
statutory law. .. . The major changes or innovations
in the ttle consist of incorporating a requirement
for invention in § 103 .
e
With respect to § 103, the Reports state:
Section 103, for the first time in our statute, pro-
vides a condition which exists in the law and has
existed for more than 100 years, but only by reason
of decisions of the courts. An invention which has
been made, and which is new in the sense that the
same thing has not been made before, may.-still not
be patentable if the difference between the new
thing and what was known before is riot considered
sufficiently great to warrant a patent. That has been ~
expressed in a large variety of ways in decisions of
"See Edwards, supra note 4 at 2-15. F
* No. 1979, 82nd 2nd Sess. 5 (1952) ; H. R.
No. 1923, Rind Cong’, 2nd Sear’ (1952) . ee ee
™Id., S. Rep. at 4; H. R. Rep. at 5.
a 9
the Courts and in writings. Sec, 103: states. this
requirement in the title. It refers to the difference
between the subject matter sought ‘to ‘be ‘patented
and the prior art, meaning what was known before
as described in section 102. If this difference is such
that the subject matter as a whole would have been
obvious at the time to a person skilled in the art,
then the subject matter cannot be patented.*
and as to the intent and purpose of Congress the Seats
continue :
“That provision paraphrases language which has
often been used in decisions of the Courts, and the
section is added fo the statute for uniformity and
definiteness. This section should have a stabilizing
effect and minimize great departures which have
appeared in some cases.”” ¢ >
It seems clear from the above thatpin the 1952 Act,
Congress enacted a cofiprehensive statute which explicitly
delineates the “conditions and requireménts” for patent-
- ability and which included, in addition to novelty (§°102)
an expressly defined statutory requirement for, and stand-
ard of,. “invention” as one. of = conditions ae patent-
ability.
The public interest is bias in the ma system.
Mercoid Corp. v. Mid-Continent Investment Co., 320 U. S.
"661, 665 (1944). -But the legislature is the prime guardian
of the public interest. This was recognized in Berman v.
Parker, 348 U. S. 26 at 32 (1957): “
“* * * Subject to specific constitutional limits-
tion, paramo gounionnraen eo
®Td., Sinus H. R. Rep. at 5.
*id., S Rep. at 6; H. R. Rep. at 5. -
° : 3
10 |
interest has been declared in terms well-nigh conclu-
sive. * * *?* be ‘
It is settled law, both as‘a-general proposition and with
respect to other enumerated powers of Congress, that
where Congress has acted, judicial power is effectively
limited to the determination of whether the legislature, in
what it has prescribed, has gone beyond constitutional
limits. In this determination the Court is-not concerned
whether the action taken was wise or expedient. Gibbons
v. Ogden, 22 U. S. (9 Wheat.) 1, 196-7 (1824) ; NLRB v.
Jones & Laughlin Steel Corp., 301 U. S. 1, 46 (1936);
Helvering v. Davis, 301 U. S. 619, 640 (1937) ; Guaranty
Trust Co; v. Henwood, 307 U. S. 247, 259 (1939) ; Polish
Alliance v. NLRB, 322'U. S. 643, 650-1 (1944) ; United
States v. Twin City Power Co., 350 U. S. 222, 224 (1956); .
Railway Employe’s Dept. v. Hanson, 351 U.S. 225, 234
(1956) ; Sinclair Refining Co. v. Atkinson, 370 U. S. 195,
214-5 (1962)." It is also recognized that the judicial
power does not extend to engraftment to, or superimposi-
tion on, legislative action. Dewey v. United States, 178
U. S. 510, 520-1 (1900) ; Electric Battery Co. v. Shim«dzu,
307 U. S. 5, 14 (1939) ; United States v. American Unit '
Transport, Inc., 327 U. S. 434, 456-7 (1946).
By its enactment of the 1952 Patent Act and including,
inter aha, § 101, 102 and 103 thereof, Congress has pre-
emptively defined the “conditions and requirements” for
patentability. § 101 explicitly defines particular types and
nature of subject matter that can be patented and § 102
1Cf. Local 1976 v. N. L. R. B., 357 U. S. 93, 100 (1958).
se ty aa a el Aah 20
604, 618, 619 (1950); FTC v. ‘Simpick Pattern Co., 360 U. S.. ”
oe (1959) ; Barenblatt v. United States, 360 U. S. 109, 132
j
™“ 7 an
il
“covers the condition relating to Per rin (supra p. 8). -
Section 103 pre-emptively defines statutory requirement
of “invention” as a condition for patentabélity in terms of
_ Obviousness, and the exclusivity of such condition for pat-
entability is further emphasized by the concluding sentence
of the section and by the Revision Notes which express a
. Congressional negation of certain previously enunciated
judicial criteria,”* as follows:
“Patentability shall not be negatived by the manner
in which the invention was made.”
The Revision Note states :¥ :
. “The second sentence states that patentability as
to this requirement is not to be negatived by the nfan-
ner in which the inyention was made, that is, it is im-
material whether it resulted from long toil and ex-
perimentation or from a flash of genius.”
The exclusive nature of the Congressionally defined
“conditions and requirements” for patentability is confirmed
by the express wording of § 282 which enumefates the de-
fenses available in patent actions and specifically refers to:
(2) “Invalidity of the patent or any claim in suit
on any ground specified in Part IT of this title as a
condition for patentability, .
(3) Invalidity of the patent or any claim in suit
for failure to comply with any requirement of sec-
tions 112 or 251 of this title,” ae
_ In the light of the foregoing, we submit that Congress,
by passage of the 1952 Patent’ Act, pre-empted the field
a i Engineering Corp. v. Automatic Devices, 314 USS. .
NG cies & Adm. News 1952, page 2411.
“
~
:- <2
and ‘so circumscribed. the power of the federal courts as
to preclude: their enunciation of any additional conditions ~
_ for patentability or standardg of “invention” and thus effec-
tively limited the function of siich courts to the tion
of- the..Congressionally enacted “conditions and require-
ments” therefor. a
In the case at bar, the Court of Appeals justifies the
superposition of a judicially enunciated “standard of in- —
vention” as a precedent “condition” for patentability by
virtue of the presence of the terms “invents orsdiscovers”
in § 101 of the statute. , By such action the Court below
is ascribing a full equivalency in meaning’ be- ’
the terms “invention” and/or “discovery” (as the
base noufi for the § 101 verbs “invents or discovers”) and -,
patentability. The error inherent therein i is made apparent
by the plain meaning of the terms in question and the fact oH
that the remainder of the § 101 terminology makes obvious
the circuity of logic involved. The error is also made
apparent by the further fact that any such asserted equiva-
lency of meaning effectively robs §§ 102 and 103 as well as
numerous other sections of the statute of any effect or mean-
ing and thereby renders the Congressional action taken in
" enacting this legislation a nullity.
Petitioner submits that the Court of Appeals for the
Sixth Circuit has improperly superposed conditions and re-
quirements for patentability upon those specified by the
legislature and that such action was beyond the scope of
Me ee ee ee
i ‘The Importance of the Question
| Congressional committee studies and legal commentators
have indicated the mounting concern with the unsettled con- :
dition of the patent law, possible disillusionment due to the
13 ao eee
high mortality rate of patents and the uncertainty and ex- |
pense incumbent upon participants in patent litigation.“
The focal peat of trouble is not difficult to recognize.” It is 7
described in a recent Staff Report of the Subcommittee‘on 4
ce ne en Cen ae rer ener
mittee on the Judiciary :
‘ The annual reports of the subcommittee have noted
the continuing gap between the views of the Patent
Office and the U. S. courts as to what is and what is
_ not patentable. No significant improvement in this
’ situation has been observed since the enactment of
section 103, which defines the d of invention
in the Patent Act of 1952. View from the experi-
ence of the past 6 years, the ‘statement in the Senate
report of 1952 that section 103 “should have a stabil-
izing effect and minimize great departures which
have appeared in some cases,” + SDpERTS. ca
optimistic.
Not oly is the standard of tuvenean iat ie
uncertainty but the various circuits are unable even
to agree as to the legislative intent expressed in sec-
tion 103. One view holds that the standard of patent-
ability was unchanged ‘by the enactment of section
103, while the other position is that it was the intent
of Congress to relax the rigid test of patentability
ee ce sat the eel ete
‘ ° aoe
- Bush, Proposals For I: The Patent System,
Rte tBu, Proporale For . Sty Ne
on The Judiciary, Se toe 7 119’ (Comm. Print ge
1956; Frost, supra note 3 at 58-60; Starr or Suscomm. ON Pat °
ENTS, TRADEMARKS AND Copyricuts, Senate Comm. ON THE
Jupiciary, 86rH'Conc., 2p Sess., An ‘ANALYsis or ‘Patent Lim-
GATION STATISTICS iii, 1-2, 6 (Comm.. Print 1961). 7
4 a ‘ANALYSIS oF PATENT eet SraTISTIcs, supra ‘note
14, at
lie, (™ a1
14
‘- Analyses of the situation by case compilation by circuit
have been made by Congress** and by others*’. These anal-
yses have revealed. widespread doctrinal diversity among
the various curcuits not only as to the effect of the 1952
Act but also in the application of the so called judicial
“standards” of invention. In fact, one of the very problems
that Congress was attempting to solve by the 1952 Act was
the wide doctrinal diversity that had developed in the appli-
cation of the judicially defined “standards of invention”,
which, apart from the recognized semantic problems in-
volved,”* posed essentially varying subjective criteria that
inherently resulted in wide variation in result as applied to
differing facts by differing judges or even, as here, as ap-
plied to similar facts by different judges.
In the recent case of Sears, Roebuck & Co. v. Stiffel Co.,
376 U. S. 225, 231 (1964), this Court, per Mr. Justice
Black, again recognized that under the Constitution it is
Congress that determines the national policy with respect
to patents and.that such policy should be applied uniformly
throughout this country. Congressional policy is incorpo-
rated in the 1952 Act which preemptively establishes the
test of obviousness to “a person having ordinary skill in
the art...” as the “condition for patent ability” for uniform
application by the triers of the facts in the District Courts
throughout the country.
While this Court has recently recognized the unsettled
condition of the patent law and has heard argument in
several cases involving § 103 of the Statute, petitioner sub-
mits that none of such cases raised the basic question here
presented and whose resolution is essential to permit the
16E-dwards, supra note 3, at 17-24; An ANALYSIS OF PATENT
Litication STATISTICs, supra note 14.
1tNote, 63 Corum. L. Rev. 306 (1963); Chin. The Statutory
Standard of Invention: Section 103 of the 1952 Patent Act, 3 J. R. E.
- 317 (1959).
18See, Great A. & P. Tea Co. v. Supermarket Corp., 340 U.S. 147
at 150-1 (1950).
15: \
1952 Patent Act to feiacii to promote “the | progress of
science and the useful arts, .
“It is submitted that the foregoing clearly cir
the importance Of the question presented and the making of
this case an appropriate vehicle for the grant of certiorari
“ CONCLUSION
For the reasons stated, this ,Petition for a Writ of-
Certiorari should be granted.
Respectfully submitted,
'
ALBERT CG, JOHNSTON
122 East 42nd Street
_* New York, New York 10017
; Attorney for Petitioner
Of Counsel: is
—a E. Isner
KEITH
KeirH, Jounston, Isner & DesMaralis
122 East 42nd Street
New York, New York 10017
o
ar nee ee tM a te
Findings of Fact and Conclusions of Law
s IN THE
UNITED STATES DISTRICT COURT,
- For THE WESTERN DIstRIcT OF KENTUCKY
AT LOovIsvILLE
AMERICAN AIR FILTER COMPANY, Inc.,
_ ~Plaintiff,
v. Civil Action
No. 3534
CONTINENTAL Arr FILTERS, INC.,
3 Defendant.
FINDINGS OF FACT
1. Plaintiff, American Air Filter Company, Inc., and
defendant, Continental Air Filters, Inc., are both corpora-
tions of Delaware having regular and established a
of business at Louisville, Kentucky.
2. This is a suit for infringement by defendant of
United States Letters Patent No. 2,807,330 issued to plain-
tiff on September 24, 1957, as assignee of Richard D._
Rivers, for “Method and Apparatus for Filtering Air”.
Since that date plaintiff has been and still is the Owner of
said Letters Patent. er
3. This Court has jurisdiction of the parties and the
subject-matter of the action.
Oe etch rte ORONO Tatae
en ee eee nen
Findings of Fact “t. — of Law
4. The Rivers patent setates toa peri for filtering air.
The device, as disclosed, is a roll filter which comprises (1)
a frame having an upper portion in which is mounted a
rolled uff supply of a web-like filter media, (2) a central,
open, air filtering area across which the web of filter media
is moved by a conveyor and where the air to be filtered is
moved through the media and (3) a take-up roll located
beneath the filtering area and onto which the dirtied media
is rewound. The web of media used in the device of the
patent is “expansible-compressible”. It is wound on the
supply roll under compression, expands as it leaves the
supply roll, remains expanded in the:air filtering area and
is re-compressed as it is re-wound on the take-up roll.
5. The Rivers patent contains five claims; they define
a roll of filter webbing, a method of manipulating the web-
bing in a roll-type filter, and a filter apparatus. Specifically,
Claim One claims a preformed supply roll consisting of a
strip of “expansible-compressible” webbing tightly wound
on a mandrel or spool so as to be compressed to less than
half its expanded thickness. Claims Two and Three claim
the method for progressively removing and expanding from
the supply roll the “expansible-compressible” web, moving
it through an air stream and thereafter progressively re-
compressing and winding the used web onto a take-up spool
to form a disposable package; and Claims.Four and Five
claim a meati§ to condition and manipulate the webbing i in
the manner specified in Claims Two and Three.
6. Roll filters were not new in the art. The concept of
placing a web of filter media in roll form and feeding this
web from its supply roll across an air stream and thereafter
rerolling the dirtied web into a roll which could be thrown
away was taught by Plaintiff's earlier commercially sold roll
"™ a
: | Ja
Findings of Fact and Conclusions of Law
filter designated “Auto-Airmat” and by prior patents ex-
emplified by Christofferson No. 1,982,639 and Dollinger
2,016,991. The “Auto-Airmat” used a thin diaphanous
paper media in roll form. Christofferson describes a web-
bing composed of “very finely ‘carded cotton fiber” which is
“loosely felted” and “of exceptionally low resistance to the
passage of air therethrough while at the same time having
maximum efficiency in removing impurities”. Dollinger
describes a roll filter material of “extremely fine fibers of
paper, cotton, wool, asbestos, etc., lightly held together to
form a relatively thick filtering medium in a very loose or
porous condition”. ;
7. The “expansible-compressible” filter media disclosed Z
in the specification of the Rivers’ patent is a fibrous glass
web of the type which plaintiff had manufactared and had
sold under the designation.“Amer-glas”. Prior to the date
of the Rivers’ conception pads of this media and webs of,
it in roll form had been compressed by plaintiff to save:
space in handling, storage and shipment. This media, in the
form of pads, as purchased, or cut from rolls and inserted
in unit filter frames, was used ‘by purchasers for filtering’
air, but the record does not disclose the prior use of that
media in roll type filter apparatus. __
8. The filter media suggested by Rivers for use in a
roll type filter apparatus had the same air filtering proper-
ties when used in such an apparatus as when used in unit
air filter frames prior thereto. Its use ina roll filter brought
no improved result in the cleaning of air.
9. In addition to plaintiff's “Amer-glas”, “varioua other
_ types of filter media had been employed in uriit filter frames.
Acunit air filter is much less convenient than a roll filter;
the former employs a single section or pad of webbing,
\
i;
i
4a
q Y
_ Findings of Fact and Conclusions of Law "
rigidly held in a frame or cell, which must be manually re- +
placed at relatively frequent intervals. 3
10. There was nothing unusual or surprising about
a compressed supply roll of “expansible-compressible” web-
bing wound on a mandrel, as claimed in claim 1 of the
patent. Long before Rivers’ conception this particular
kind of webbing or media was not only known and in gen-
eral use for filtering air, but also was’ commonly wound
in tight rolls to facilitate handling and storage. The Rivers
patent taught the winding of webbing on a spool in the
usual way that elongate strips*of material are wound on
spools and it is clear that neither the web nor the spool —
took on new qualities or functions by being so brought into
concert. ,
11. Rivers did not achieve any unusual or surprising
consequences by the series of steps of manipulating an
old air filter materjal in an old air filter apparatus by the
method which he claimed in the patent (claims 2 and 3);
nor in the means which he claimed for practicing that
method (claims 4 and 5). The means was no better than
the method.
12. In view of the Court’s opinion and the conclusions
herein that the claims of the patent are invalid for lack of
patentable invention, no findings are made with respect to
other defenses urged by defendant against the validity of
the patent in suit.
CONCLUSIONS OF LAW
1. The standard of patentability is a constitutional
“standard; and the question of the validity of a patent is a
question of law.
.” Sa
Findings of Fact and Conclusions of Law
2. The nature of Rivers’ contribution in viéw of the
state of the prior art does not meet the standards of patent-
able invention.
"3. Each of the claims of the patent in suit is invalid.
Farr Company v. American Air Filter Company, Inc.,
318 F. 2d 500 (C. A. 9).
4. Where patentable invention is clearly ‘lacking, fac-
tors, such as commercial success, which may tip the scales
in favor of invention where the question is close and the |
court in ‘doubt, do not make for patentability. Farr Com- -
pany Vv. American Air Filter Company, Inc., supra.
5. The complaint should be dismissed with prejudice
with costs to defendant. ©
Dated this 3rd day of October, 1963.
Henry L. Brooxs
United States District Judge
Copies to: ° wate z , re
« - Squire R. Ogden
Keith, Bolger, Isner & Byrne
Carl F. Schaffer
Peter, Heyburn & Marshall
104-63 Im
a
‘ Decision .
IN THE
UNITED STATES DISTRICi COURT
SouUTHERN District oF CALIFORNIA
CENTRAL DIVISION
.
AMERICAN AIR FILTER Company, INC.,
Plaintiff, eo
vs. Civil Action
4) : N oO. 858-58Y
Farr Company, :
Defendant.
DECISION
The above-entitled cause heretofore tried, argued and -
submitted is hereby decided as follows:
Judgment will be for the plaintiff that the patent in
suit, United States Letters Patent No. 2,807,330, is good
en et Se ee ee ee
defendant.
After Judgment shall have become final, question: of
damages will be referred to a Master, to be appointed. by
© the Court.
Costs to the plaintiff. No attorneys’ fees.
Findings and Judgment to be prepared by counsel for
the plaintiff under Local Rule 7.
. Comment
I am of the view that Patent No. 2,807,330 issued to
R. D. Rivers on September 24, 1957, and duly assigned
to the plaintiff is valid and infringed by the defendant’s
ewes
7a
Decision
device. My only misgivings as to the validity of the Patent
[155] arose as to Claim 2, which reads:
“2. ‘Tri a method of filtering from ay air stream .
‘solids borne thereby, the steps consisting of pro-
gressively removing and expanding from a com-
pressed supply web thereof and expansible-compres-
sible filter medium, moving the medium into and
through said air stream and thereafter progressively
recompressing the thus exposed medium, carrying
the solids retained in it, into a disposable package.”
And it concerned the question whether the Claim was .-
sufficiently distinct as required by Séction 111 of Title 35
U. S. C. A..A study of the matter, in the light of the
voluminous record made in this case convinces me that the
particular Claim read with the details in the specifications
has the certainty required by law. This being so, it follows
that the other Claims have similar certainty.
In my view, Rivers taught the art something which is
not found in the prior art and, especially, in the Patent to
Christofferson, No. 1,982,639 issued December 4, 1934,
which the defendant’s expert claims to contain more of the
features of the patented device than any other. The fact is
that the defendant did not copy Christofferson, which was °
before the Patent Examiner, or any of the additional ones
referred to at the trial. They claim to Have embodied a
device described by the plantiff in one of its bulletins more
than one year before the date of the application (15
U. S..C. A. §'102(a)). I am convinced that the defendant
copied the device described in the patent. And if the com-
mercial device manufactured by the plaintiff deviated from
that described in the Patent, the plaintiff was entitled to
avail itself of the doctrine of equivalents because the de-
ab
¢
8a
Deciston
vice described was only one. of the modes [156] “con-
templated by the inventor” for “carrying out his invention”
(35 U.S.C. A. § 112).
Hence the ruling above made.
Dated this 2nd day of June, 1959.
/s/ Leon R. YANKWICH,
Judge. [157]
[Endorsed]: Filed June 2, 1959.
. 9a
Findings of Fact and Conclusions of Law (Farr Case).
In THE
UNITED STATES DISTRICT COURT
SouTHERN District OF CALIFORNIA
CENTRAL DIVISION
AMERICAN AIR FILTER Company, INC.,
Plaintiff,
os Civil Action °
: No. 858-58Y
Farr CoMPANY,
Defendant.
>
Findings of Fact, Conclusions of Law and Judgment
Pursuant to Rule 52 of the Rules of Civil Procedure,
this cause having on for trial before this Court on
May 13, 1959 before the Hi morable Leon R. Yankwich,
District Judge, and Plaintiff and Defendant having pre-
sented their evidence and having orally argued in ‘support
of their respective contentions, and this Court having en-
tered its Decision herein dated June 2, 1959, and having
directed counsel for Plaintiff to prepare Findings of Fact,
Conclusions of Law, and Judgment pursuant to the pro-
visions of Local Rule 7, the same are hereby adopted by
the Court as its Findings of, Fact, Conclusions of Law,
and Judgment:
FINDINGS OF FACT .
1. Plaintiff corporation. is, and has been for many
years, a manufacturer and seller of various air filters, dust
collectors, and of air filtering and dust collecting systems.
10a ° |
Findings of Fact and Conclusions of Law.(Farr Case)
2. Defendant corporation is, and has been for some
years, a manufacturer and a seller of various air filters and
air filtering systems.
3. The United States Patent in ‘at No. 2,807,330,
was issued to Plaintiff on September 24, 1957 as the assignee
of the patentee, Richard D. Rivers; since that date Plaintiff
has been and still is the owner of said patent.
4. Plaintiff has placed the required statutory marking
on air filtering apparatus manufactured and sold by it under
said United States Patent No. 2,807,330 since the date of
issuance thereof.
5. Mr. Richard Rivers, a young physicist of very limited
experience in the field of air filtration, conceived the ted
inventions in January, 1953 while observing, as an ker,
certain tests being performed by others in Plaintiff’s re-
search laboratory and with ee tests he had no connection
or responsibility.
6. After Rivers demonstrated that the patented inven-
tions could be practically attained, the design of commercial
units embodying the same was undertaken by Pilaintiff’s
Development Department. /
7. The patented inventions were thereafter embodied
in commercial air filters manufactured and sold by Plaintiff.
These filters were then and, for the most part, are now
identified to the trade by Plaintiff as “ Matic” filters.
The initial sales to the trade of te Roll-O-Matic filter,
known as the Model A, eagly 1954. The initial
sales of a‘redesigned Roll-O-Matic filter, known as Model
~
-~
3 , ila
Findings of Fact and Conclusions of Law (Farr Case)
B, to the trade commenced in December of 1956. Both the
Model A and Model B Roll-O-Matic filters are constructed
and operate in accordance with the teachings of the patent
in suit and come within the scope thereof.
8. Defendant saw Plaintiff’s “Roll-O-Matic” filter lit-
erature, and the methods described therein at least as early
as the middle of 1956 and thereafter took steps to build and
market a virtual copy thereof. 3 v
9. Defendant’s infringement of the patent in suit was,
caused by the popularity of plaintiff’s patented filters with
the trade and by the demands of the Defendant’s sales rep-
resentatives for such a product. *
10. Defendant first sold,its infringing filters i in Janu-
ary, 1957. ‘
11. Defendant’s copying of Plaintiff's filter and meth-
ods brought immediate success to Defendant and by No-
/ vember, 1958 Defendant had sold about 250 units.
12. The filtering of air, or other gas, ta. remove solid
particulate matter borne thereby, is an Sa and crowded art.
13. -Air borne solid particulate matter is broadly classi-
fied as “atmospheric dust” and “process dust”. “Process
dust” refers to all particulate matter generated by or as-
sociated with some industrial process, It is usually homo-
- geneous in character, frequently covers a rather narrow
~range of particle sizes and usually occurs in high concen-
trations. The collectioff.of lint in textile mills and paper
dust and ink mist in newspaper press rooms are two ex-
amples of process dusts. “Atmospheric dust” réfers to a
° . -
a |
Findings “bf Fact and Conclusions of Low (Farr Case)
complex mixture of particulate matter commonly found in
the atmosphere for the particular area or location in ques-
tion. It generally covers a wide range of particle sizes,
occurs in relatively low concentrations and is quite hetero-
geneous in nature. Its constituents vary with the geography
of the location, the season of the year, the wind direction
and othes general factors, A sample of atmospheric dust
at any one point‘will generally contain particles of prac-
tically every material common to the locality together with
other wind Sorne particulate matter originating in distant
places. Typical constituents may include minute particles
of clay, silica, soot and carbon, decayed animal and
vegetable “matter, organic plant fibers, lint, pollen, mold
spores, bacteria and other microorganisms. Atmospheric
dust particles. will rangé from submicron-sizes, su 1 as
“smokes, up to particles at the threshold of visibility, about
50 microns. There are 25,400 microns to the inch. %
14. The problems encountered in removing atmos-
pheric dusts from air are different frdm those encountered
-in the removal of process dusts. The removal of atmos-
pheric dust from the air is a specialized art and the de- _ -
vices used to effect the removal of such atmospheric dust *.
are known to those skilled in this art as “ventilating air ,
filters”. |
15. The heart of a ventilating air filter is the filter
medium. The filter medium is a structure,or thing de-
signed to allow the air to pass but to hold and retain such
solid particulate matter as it is desired to remove from ;
the air stream. To effect the desired filtering action in a
ventilating air filter, the air is positively driven through the
13a
Findings of Fact and Conclusions of Law (Farr Case)
caused to contact the surfaces of the filter medium and to
_be retained thereby. Ventilating air filters for the removal
of atmospheric dust have been broadly classified by the art
in accordance with their operating characteristics and prin-
ciple of operation as “viscous impingement type” filters,
“dry type” filters, and “electrostatic type” filters. The choice
of a particular typeof ventilating air filter for effecting the
removal of atmospheric dust depends tpon'a number of
factors which include the desired degree of dust removal
and pertinent practical and economic considerations.
16. The classical differences generally expressed by the
separation of ventilating air filters irto “viscous impinge-
ment type,” “dry type” or “electrostatic type” by the art
are as follows:
“Viscous Impingement type” air filters slaty
use the higher range of conventional air velocities
through the media—these being in the order of 300 to
500 feet per minute. They have a moderate order of
effectiveness in the removal of the dust and a high order
of dust holding capacity per unit of media area, all of
which is quite satisfactory for many purposes. The
media employed in such filters is generally formed of
elements spaced relgtively widely apart and in such wise
as to give the media appreciable effective depth. Such
configurations offer a relatively low resistance to. air
_ flow through the media and provide a high air handling
capacity. The surfaces of the media elements are gen-
erally liberally coated or treated with some viscous
“s material (often referred to as “oil”) which serves to
Positively retain and hold dust particles which im-
pinge on the coated or treated surface (i.e., in the man-
ner of “fly paper”).
“
=
—
4a
Findings of Fact and Conclusions of Law (Farr Case)
“Dry type” air filters generally use, and are limited
to, the lower range of air velocities—these being in the
order of 10 to 100 feet per minute. They possess a rela-
tively high order of effectiveness in the removal of dust
land a generally low dust holding capacity per unit of
' media area. The media employed in such: filters is gen-
erally formed of small elements spaced closely together
to provide a dense mat-like structure with tortuous air
paths therethrough and, generally, the elements, are
arranged in dense sheets.of moderate or small depth.
These configurations lend an inherent high resistance to
air flow through the media and so limit air handling
' capacity. The surfaces of the elements forming the
media are generally not treated with a viscous or oily
substance, although in some instances small amounts |
of oil are employed to enhance performance.
“Electrostatic: type” ventilating air filters, which
were introduced about 1937, utilize an electrostatic
force, rather than the driving action of the air, to eff
impingement of the dust particle on the filter medi
Filters which employ media which have been liberally
coated or treated with a viscous or oily substance are often
loosely called “viscous impingement filters”. Those which
do not utilize filter media which has been so coated or
treated are often loosely called “dry” filters. In addition
the term “dry” has been loosely used‘in other connotations,
_Such as denoting an automatic viscous impingement type
‘filter characterized by the absence of a bath or tank of oil.
17.. Ventilating! air filters of both the <vinsiad tan-
Sioeieiiia tied” and the “dry type” are further sub-classi-
fied by the art into “unit” or “automatic” air filters and .
each of these sub-classifications are further sub-divided into
15a »
A #
Findings of Fact and Conclusions of Law (Farr Case)
“permanent” types and “disposable” types in accordanée
with whether the particular media employed was recondi-
tionable by cleaning or whether it was thrown _ and
a replaced by fresh unused media.
18. In the past 30 to 40 years many substances and
structures have been proposed as filter media, but the prac-
® >stical art has generally used the following types of media:
—-toetal-igembered media built up of metal plates,
screens, wirés or sheets
—filamentous media such as animal hair, metallic
wool, glass fibers and, sometimes, vegetable fibers in
kinked or shredded form
—paper, woven cloth or fabric felts and the like.
19. Regardless of whether an air filter is, or was,
characterized as a “viscous impingement ” or “dry
type” filter, air filters always present the problem of clean-
liness in the sense that as the atmospheric dust accumulates
on the filter medium during the filtering of the air there
comes a time when the resistance to the flow of air, caused
by this dirtying of the filter medium, increases beyond
practical limits and, therefore, it becomes desirable to clean
or renew the filter medium. This cleaning or maintenance
problem, which is as old as the art of air filtering, involves
~maifitenance,. the possibility of improper maintenance or
untimely maintenance and, further, usually necessitates the
shutting down of the*air WBEIRK, psetssrendipl tes
newal process.
20. Prior to about the middle 1920’s the viscous im-
pingement type and dry type filters commercially used in
— 4
16a
Findings of Fact and Conclusions of Law (Farr Case)
the filtering of atmospheric dust from air were largely of
the “fixed”, “panel”, “cell”, or “unit” type (hereinafter
called “unit” type), these terms all denoting the fact that
cleaning or renewing of the filter medium was not auto-
matic but was. accomplished by the shutting down of the
filtering process at intervals to effect manual cleaning or
replacement of the dirty filter medium.
21. In or about 1926 there first commertially appeared
in this country the so-called “automatic” air filters. These
were machines so designed as to automatically clean, renew
or replace the filter medium, the objective being to decrease
the day by day maintenance and attention, and to prevent,
to a considerable extent, the necessity of shutting down the
filtering process.
22. The automatic “dry see of ventilating air filter
is exemplified by the Mickle, Dollinger, Wolthuis, Birkholz
and Christofferson patents, which were cited during the,
Patent Office prosecution of the patent in suit. These patents
do not disclose the patented inventions or provide any teach-
ing that might be considered to render the patented inven-
tions obviows_or apparent to those skilled in the art. These .
‘automatic “dry type” filters proved commercially unsucocess-
ful as ventilating air filters for the removal of a heric
dust, due to inherent air flow limitations and ent ~
limited air handling capacity where the media was disposed
¢in a straight line across the air stream, and the practical
difficulties of effecting the presentation of extended areas
of filter media surface to the air stream in the air filtering
zone by zig-zagging or pleating thereof.
23. The only true “dry type” automatic machines oper-
ating today are used for the collection of process dust. The
a
eee '
i 17a
Findings of Fact and Conclusions of Law:(Farr Case)
conventional type usually employs a bag or cylinder of a
dense felted or fabric media and is cleaned by beating or
blowing the accumulated process dust off the media surface
from time to time. Another automatic machine which has
been loosely and inappropriately termed a “dry type filter”
' and which is in successful operation today‘in the collect-
ing of certain large sized process dusts in limited applica-
tions, such as textile mill lint and press room ink mist,
employs an extremely thin, flimsy disposable paper filter
media of a hybrid character that is, because of its porosity
and thinness, devoid of practical utility in the filtering of
atmospheric dust in the general ventilating field. Such a
lint collector has, since 1950, been sold by plaintiff under
the name “Auto Air-mat”.
24. Pijaintiff’s “Auto Air-mat” unit, apart from being
devoid of practical utility in the removal of atmospheric
dust from air, did not, and does not, incorporate the inven-
tions of the patent in suit nor did it provide any teaching
that might be considered to render the patented inventions
obvious’ or apparent to those skilled in the art.
25. The automatic ventilating dir filters of the viscous
impingement type of the prior art proved to iad rae |
cially successful as ventilating air filters; from
starting in or about 1926 and extending to date, there
have been sold, and commercially used, automatic viscous
impingement type aif filters which operate on the follow-
ing principles: the filter medium is made of metal-mem-
‘bers such as plates, wire screens, sheets or the like; a tank
or bath of viscous or oily liquid is associated with the filter
and provides a reservoir from which the desired viscous
material may be. applied to the surfaces of the met&l-mem-
182 a
Findings of Fact and Conclusions of Law (Farr Case)
bered ‘filter medium; and the “automatic” feature is pro-
vided either by means. for moving the metal-membered
‘filter medium on an endless track into and through the
oil bath or tank, thereby to simultaneously remove at least.
a portion of the dirtied oil from the surfaces of the medium
‘and to renew those surfaces with a coating of fresher oil,
or, the metal-membered filter medium is fixed and from
time to time the dirtied surfaces thereof are cleaned and
renewed with fresh oil by flushing or otherwise causing
oil to move across the fixed surfaces of the medium. Filters
constructed according to these principles have been utilized
for over thirty years in the automatic filtering of atmos-
pheric dust from air. Such devices have been, and presently
are, manufactured and sold by many of the manufacturers
of air filtering equipment, including both the plaintiff and
the defendant. «
26. The disadvantages of the use of such automatic
viscous impingement type filters utilizing metal-membered
filter media and, in conjunction therewith, a bath or tank
of oil, were, and had been, well known to the art. Such dis-
yadvantages arose in large part from the presence of the
_ oil bath and of liquid oil and included: periodic removal of
a messy oil-dirt sludge from the filtering operation; main-
tenance and inspection to insure that the oil was being prop~
erly applied to the filter media ; difficulties and expense caused
by the maintaining of, or failure to maintain, the many
mechanical moving parts; requirements often made by the
Fire Underwriters that fire prevention systems be installed
because of the presence of large volumes of oil; periodic |
inspection is required to insure that oil levels are main- —
tained in the oil bath or tank, that water or other liquid
_ impurities are not present in the oil tank in harmful amounts
(19a
Findings of Fact and Conclusions of Law (Farr Case)
and that the type of oil desirable for best operation is used
for replacement; problems, caused. by.the probability that
the air, in passing through the filter medium, would remove
from the surfaces of that medium excess oil which
would be entrained or carried by the air to contaminate
some product or area contacted by the filtered air; and
periodic manual cleaning of the filter media made necessary,
or desirable, by physical entanglement. of dust or dirt in ©
the metallic media in such wise that it is not removed by
the normal application of fresh oil to the surfaces of the
media. Additional draw backs of such filters included ex-
cessive weight arising from their metallic construction and
necessary appurtenances such as tanks and pumps; and the
fact that such filters could not readily be placed in other
than a vertical position because of the necessity of main-
taining the oil levels and oil flow.
27. The principle upon which the automatic viscous im-
pingement type filters used by the art prior to Rivers’ inven-
tion operated had been known for over. 25 years. Despite
the known disadvantages of such filters, these various auto-
matic viscous impingement type filters developed and
offered to the trade during this period differed only in de-
sign detail and involved no new principles of construction
or operation. In that period of over 25 years the develop-
ment of automatic filters had reached a plateau, in the
sense that the workers in the art worked, to improve the con-
structional details of units operating on old principles and —
developed no new approach to the subject.
28. The development, in.about 1926, and, thereafter,
the use of these successful automatic viscous impingement
type ventilating air filters of the metal-membered medium—
Nr
r
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Findings of Fact and Conclusions of Law (Farr Case)
oil tank variety did not eliminate the use of the “unit” filters,
whether of the “viscous impingement type” or of the “dry
type”. Each of these various types of ventilating air filters
has, in the years since 1926, sought its own level, that
level being primarily determined by the needs and desires
of the user. However, because of their automatic features,
the automatic viscous impingement’ type filters. came to be
used by many who had problems concerning the removal
ofthe larger particles of dirt from relatively large quantities
of air..
29. In the period prior to 1954* the “unit” type of air
filter uséd as filter medium all of the types of media pre-
viously mentioned above in Finding No. 18.
30. Throughout a peried of at least twenty years prior
to Rivers’ conception, disposable unit filters of the viscous .
impingement type used pads of filamentous filter media,of
appreciable effective depth having high air handling capacity
and large dust holding capacity. These thick pads were in-
expensive, were readily fabricated and presented a large
effective surface area which could~be liberally coated or
otherwise treated with a viscous or oily substance and
included pads formed of animal hair, certain vegetable
fibers, metallic wools and glass wools.
31. Among these relatively thick pads of filamentous
materials which had long been used as filter media in viscous
impingement type unit filters before 1954 were a group
which had. expansible-compressible properties in the sense
that they were resilient and would, when compressed
“!The date of commercial introduction of the invention of the pat-
ent in suit.
Zila
Findings of Fact and Conclusions of Law (Farr Case)
for an interval, return, upon release of compression, to their .
approximate original thickness. The expansible-compres-
sible properties of such filter media had long been
zed. As early as 1925, it had been recognized that the ex- -
pansible-compressible properties of such materials could be
useful in “unit” types of filters where it was desirable to.
compress the media during use and to later expand it for
32. These relatively thick pads of expansible-compres-
sible filter media used in the “unit” type filters were avail-
able to the industry fromra very early date. The expansible-
compressible properties of these materials were well known
and were also utilized in fields other than air filtering. Thick
pads or webs of animal hair had widespread use as uphol-
stery material, as well as for air filters. Thick pads or webs
of glass fibers had widespread use as house and sound in- .
sulation and as resilient pads, as well as for air filters. Me- ©
tallic wood were commonplace for many uses, as well as for
air filters.” 5
33. In the period prior to 1954 the glass fibered filter
media became the most popular of the disposable or “throw
away” filamentous media because of its relative cheapness,
because glass is relatively inert to chemical influence, is fire-
proof and is light i in wéight.
34. The expansible-compressible filter media and the
specified properties thereof as described and idéntified in
the specification of the patent in suit were, and are, clearly
descriptive of a well known and recognized class of filter
materials having expansible-compressible properties, and
are such as to enable those skilled in the art to readily
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Findings of Fact and Conclusions of Law (Farr Case)
’ identify, and use the same. The specific example set forth
in the specification clearly describes an example of the fila-
mentous glass. material, which, by 1954, had largely com-
mercially displaced other suitable-materials for the reasons
set forth in Finding No. 33. Any person skilled in the art
would have had no difficulty in identifying, obtaining and
using, in 1954 or today, the filter media described by way
of specific example in the specification of the patent in suit.
35. The well known and recognized class of materials
referred to in Findings 31, 32 and 34 is adequately and
distinctly éxpressed in the claims by the terms “expansible-
compressible filter medium”, “expansible-compressible web”
and “permeable expansible-compressible integral web which
will return to an expanded state when released from a
compressed state”. -
. 36. Until Mr. Rivers’ invention was commercially of-
fered to the trade in 1954 by plaintiff, the expansible-com-
pressible filter media had _ been used in the unit type
of air filter. ’ ee
. 37. Mr. Rivers did not, by his invention, develop any
new filter medium but, instead, merely used the well known
expansible-compressible, filter media which had long pre-
viously been available and which, for many years, had been
used in the non-automatic “unit” type of air filters.
38. In its preferred form the method of the Rivers’
patent includes providing a supply of the expansible-com-
pressible media in compressed roll form, progressively ex-
panding the media off this rolt and across the air stream and
then progressively rewinding and compressing the media,
a
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Findings of Fact and Conclusions of Law (Farr Case)
and its contained solids, into another roll which eventually
may be cOnveniently thrown away. ‘This is the form in
which plaintiff commercially offered the Rivers’ invéntion
to the public in 1954 and this is the form in which defendant
appropriated the invention. :
39. There was swthine new in the concept of placing
a web of filter media in roll form and feeding this web
from its supply roll across the air stream to be filtered,
and thereafter, rerolling the dirty web into a roll which
; could be thrown away. Such devices had been suggested
. Many times over the thirty year period preceding Mr.
Rivers’ invention.
40. Mr. Rivers was the first to propose the novel mode
of manipulation of the previously well known expansible-
compressible filter media, as set forth in the method claims
of the patent in suit, to produce a new class of automatic
filters and to, thereby, make possiblé the commercial use
of the cheap filamentous © SE 7
, *media in automatic air oe ;
41. There was nothing ais in winding webs on man-
drels for the — of convenience in handling and
storing.
42. Mr. Rivers was the first to propose that a web of
expansible-compressible filter media be formed into’a com-
pressed roll on a mandrel and be used as a pre-formed filter
‘media cartridge or package as a direct supply of media for
automatic air —— operations.
43. From all the facts it appears that for many years
the experienced workers in the air filtering art had avail- .
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Findings of Fact and Conclusions of Law (Farr Case)
‘able to them all of the tools, and all of the basic knowledge
used by Mr. Rivers in 1953 in arriving at and carrying out
the concepts of his invention. The commercial rewards
Aollowing from Mr. Rivers’ concepts were extensive. In
the light of these facts the simplicity of Rivers’ concept
' points to the existence of technological block in the minds
of the experienced workers of the art which was not re-
moved until he pointed out the way.
44. The inventions of the patent in suit have created
a new class of automatic ventilating air filters.
45. The inventions of the patent in suit have made
available for the first time a cornmercially practical duto-
matic ventilating air filter of the disposable media type.
46. As a result of Rivers’ invention, the commerical
art of filtering has available, for the first time, a novel,
highly practical and useful mode of operation for auto-
matically utilizing the chedp, efficient filamentous filter
media of the expansible-compressible type which had long
proved to be so useful in the non-automatic types of air
filters. .
47. The advantages flowing from the use of Mr.
‘Rivers’ invention are the following:
(a) For the first time, the useful, cheap and well
proven expansible-compressible filamentous media for-
merly used in non-automatic filters has become conveni-
ently available to automatic filtering.
(b) The filtering art has been provided with an
alternative to the long employed automatic viscous im-
pingement type filters. which used metal-membered
J
| 25a
"Findings of Fact and-Conclusions of Law (Farr Case) -
“ media and oil tanks and is, thus, in a position to avoid
the disadvantages of the older type automatic filters in
such instances where such disadvantages are unwanted ~
or ‘not tolerable.
iy (c) An automatic viscous impingement type filter
and filtering method have been provided which, if de-
sired, will operate for periods of many months and up
to as long as a year es attention. |
(d) The air filtering drt is for the first time. pos-
sessed of a method by which the inconvenience, and
uncertainties attendant upon maintenance and inter-
rupted performance is reduced to @ minimum.
48. Mr. Rivers’ inventions as described -d and claimed in
the patent in suit include a riew mode of operation and the
clothing of apparatus elements with new functions.
49, The patentee has provided an entirely new mode
_of manipulative operation and thereby has effected an old
~ result ie. the filtering of air, in a novel way which elim-
inates procedural disadvantages previously suffered in~
automatic air cleaning. The patentee’s invention brings no
improved result insofar as the cleaning of the air is con-
cerned because the old filter media which is subjected to the
paténtee’s new mode of manipulative operation does not,
thereby, become enhanced in its air cleaning properties.
50. The customers to whom filters are sold are, for
the most part, of a type well qualified to independently
judge the usefulness of the product. ry
51. The. response of the trade to thé fatented inven-
tions was spontaneous, impuediate and sohetantil. There
1 rises oda ata ae ee Ee
Findings of Fact and Conclusions of Law (Farr Case)
was immediate widvescont acceptance and demand for the
invention. o
52. atotbatte viscous impingement type air filters
embodying Mr. Rivers’ invention were an immediate suc-
cess. In the first two years of their rotary, ccegp
sold about $1y800,000 worth of such filtef’s. In period
up to January, 1959, plaintiff sold more than 12,000 sec-
tions for a total gross sales = of over $8,000,000.
53. The commercial success of plaintiff in ftnarketing
air filters ying Mr. Rivers’ invention took place with-
out the of more advertising than plaintiff normally
expended dn any of its many air filter products.
‘ F ‘
54. The patentee’s invention has been successful despite
the fact that it does not necessarily effect its automatic
air cleaning result @n dn operating cost lower than that
previously encountered in obtaining an equal result of air
cleaning by the previously used automatic machines. Often
the use of the patentee’s invention increases the operating
cost. |
55. The patented inventions are displacing the auto-
matic viscous impingement type ventilating air fifters of
the prior art. ‘ 3
56. The prior art, and other material, upon which
defendant reliés for~its defense of invalidity, -is, in all
material respects, the same as, or is not substantially dif-
ferent than, the prior art known by, and the admissions
of fact considered by, the United States Patent Office prior
-to the grant of the patent in suit.
( ‘ ; a, a
Findings of Fact and Conclusions of Law (Farr Case)
57. The arguments advanced by defendant contra the
validity of the patent in suit, are’in all material respects
the same as, or similar to, the matters considered by the
United States Patent Office prior to the grant of the patent
in suit.
58. The Patent Office Examiner who handled the
eapplication for the patent in suit also concurrently handled
an application for patent on plaintiff’s “Auto-Airmat” unit
“and: affidavits filed in the latter application clearly showed
that “Auto-Airmat” units were made and sold long prior
to’ one year before. the filing of the — for the
patent irr suit. garg koe
c y
59. The Patent Office was in no way misled “a the
applicant or his attorneys during the prosecution of the
application for the patent in suit. In fact the following
admissions made by the applicant before the Patent Office
» Examiner are as good, or better, than any of the prior art
upon which the defendant has relied:
“The. gas filtering art is not a-new one; it is, in
fact, a crowded art in which much effort has been
expended over a long period of time in devising ap-
paratus by which large volumes of gas could be
cleaned by devices requiring a minimum of main-
‘tenance cost and attention. Expansible-compressible
filter media have long been known in this art. The
— principle of*passing a filter medium from one point
* to another point and, intermediate thereof, through
a filtering area is certainly an old concept. Yet it
appears that only the applicant has thought to use
a method or apparatus in which the expansible-
compressible material is: first compressed ‘into a pack-
9
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| 28a
Findings of Fact and Conclusions of Law (Farr Case)
aged supply, is thereafter released from that supply,
expanded, passed through the filtering area and
thereafter recompressed or otherwise conditioned to
a readily disposable state. In so doing, applicant has
-removed expansible-compressible filter media from
“its restricted use as a fixed filter into a sphere where
it can be conveniently, antomatically and progres-
sively presented to a filtéFing job thus fully and
effectively utilizing the highly desirable —
of such media.”
60. None of the prior art upon which defendant relies
teaches or discloses the inventions of the patent in suit,
nor does it, taken alone or- in combination, provide any
teaching or disclosure that can be considered to render the
inventions of the patent in suit obvious or apt those
skilled in the art.
61. The defendant did not copy the prior art but rather
copied the device described and claimed in the patent in suit.
62. Defendant makes and sells a .preformed package
of filter, medium for use in its “Roll Kleen” filters. This
preformed package consists of a web of about 70 feet of
permeable glass fiber filter media convolutely wound upon
a mandrel member sized and arranged for direct insertion
- into the “Roll Kleen” filter. The media has an expanded
thickness of 2 to 3 inches and is wound in compressed con-
dition upon the mandrel into a roll of about 13 inches in
_ diameter with the convolutely wound layers thereof being
about 15/100 of an inch in thickness. The media is of such
character as te return to its expanded state when released
from its compressed state. This ‘preformed package cor-.
29a
Findings of Fact and Conclusions of Law (Farr Case)
responds bot in form and substance with Claim 1 of the
patent in suit and said claim is infringed thereby. é
63. In the operation of the defendant’s “Roll Kleen”
filter an expansible-compressible filter medium (of the
character set forth in Finding No®62) is -progressively
removed from a compressed supply web thereof, moved into
and through an air stream in expanded condition and, after
exposure in their stream to accumulate air borne con-
taminants, is thereafter progressively recompressed into a
convolutely wound roll to form a disposable package there~
of. This operation corresponds both in form and substance
with the subject matter of method Claims 2 and 3 of the
patent in suit and each of said claims is infringed thereby.
64. Deféndant’s “Roll Kleen” filter employs, as a filter
medium, an elongate permeable expansible-compressiblé
tegral web that will return to an expanded state when
released from a compressed state (of ‘the specific character
set forth in Finding No. 62). The “Roll Kleen” filter in-.
cludes a frame defining an air filtering area and a passage
for air through said area, a housing disposed at one side
of the air filtering area to receive and locate a supply of
precompressed filter mediums and defining’a supply zone,
a second housing located to receive the filter medium at a
point beyond said air filtering area and defining a discharge
zone with said two housings defining, with said air filteri
area a of filter medium*advance. The “Roll 4
filter includes a rewind mandrel and a motor drive and
associated controls therefor that serves to progressively
displace the precompressed medium in the supply zone from
its compressed state, through said air filtering area and
into the discharge zone. Also inchided is a backing strip
of Leno-weave cloth on the media which cooperates with
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Findings of Fact and Conclusions of Law (Farr Case)
the driven rewind mandrel to effect a compression of the
expanded media on said mandrel as the same is convolutely
rewound thereon and to thereby progressively condition the
media into a disposable state. This structure and operation |
corresponds both in form and substance with the subject
matter of apparatus Claims 4 and 5 of the patent in suit
and each of said claims is infringed thereby.
65. The structure and operation of defendant’s Type
H. Roll Kleen is the same as that set forth in Findings
Nos. 62-64 for the standard Roll Kleen filter except that the
media is moved in a horizontal rather than a vertical path.
‘ The structure and operation of the Type H. Roll Kleen cor-
responds both in form and substance with the subject matter
of Claims 1-5 of the patent in suit in the same particulars
as set forth in the above mentioned findings and each of
Said claims is infringed thereby.
et. CONCLUSIONS OF LAW
A.. United States Letters Patent No. 2,807,330 in suit
was diily and legally issued to Plaintiff, American Air Filter
Company of , Kentucky; said Plaintiff is the
owner of the entir right, title, and interest in and to said
Letters Patent, together with any and all rights of action,
‘claims, or demands arising out of or accruing from past
infringement thereof.
B. United States Letters Paterit. No. 2,807,330 com-
plies fully with all of the provisions of Title 35, United
’ States Code,. discloses and claims a patentable invention,
and is not anticipated by any prior art.
C. United States Detters Patent No. 2,807,330 is good
and valid in law as to all of the claims thereof; said patent
claims cover a new and. meritorious invention.
3la
Fillkings of Fact and Conclusions of Law (Farr-Case)
D. United States Letters Patent No. 2,807,330 consti-
tutes a marked advance in the art and is entitled to a liberal
construction of its terms.
E. Defendant has infringed Claims 1 through 5 of
United States Letters Patent No. 2,807,330 by the manu-
facture and sale of its “Roll Kleen” filters.
: F. Defendant has infringed Claim 1 of United States
Letters Patent No. 2,807,330 by its manufacture and sale
of initially installed media and replacement media for its
“Roll Kleen” filter.
- G. Plaintiff is entitled to a judgment for an injunction
and accounting with costs as prayed for in the Complaint
filed herein. 4,
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