# Petition for Writ of Certiorari — American Air Filter Co. v. Continental Air Filters, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385602_1177%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1966 - **Citation:** 383 U.S. 934 ## Text SUPREME COURT. U.S ~ om) 2° : FILED \ = 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 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 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. “ ~ :- 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 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 20a 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 22a ~ } . ae 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 23a 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- . a 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 eo! | 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 * sTSry or a) + 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, + i) 2 z! * 2" EA eae 2 4 jie 4 & BPE Re ip WON a pe seT ctor Hi te > a sgl Be ROE Get P, 2083 er 3 Ae dd --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385602_1177%3A1. Public record. Not legal advice.