Opposition Brief — American Air Filter Co. v. Continental Air Filters, Inc.

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_JOHN F. DAVIS, barns

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Senn Cont OR

In the Supreme Court of the United States

No. 764. . , .

AMERICAN AIR FILTER COMPANY, INC.,

Petitioner,

Vie:

CONTINENTAL AIR FILTERS, .INC.,

Respondent. :

BRIEF FOR RESPONDENT. IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARL.

’ Cart F. Scanwian,

* 805 National Bank Bldg.,.

. ‘ . Toledo, Ohio 43604,

"Atersy jor Rede.

INDEX.

Question Presented __.__________ oa 1

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APPENDIX:

Decision of United States Court of Appeals for

the Sixth Circuit in American Air Filter Com-

pany, Inc. v. Continental Air Filters, Inc. ______ 6

CITATIONS. s

Cases.

American Air Filter Company, Inc. v. Continental Air

Filters, Inc., 226 F. Supp. 482 (W. D. Ky.,

1963) ate 1

American Air Filter Company, Inc. v. Continental Air

—F¥ilters, Inc., 347 F. 2d 931 (C. A. 6, 1965)

om & | YT

?

Farr Company v. American Air Filter Company, Inc.,

318 F. 2d 500 (C..A. 9, 1963) Certiorari denied

375 U. S. 903 gi , 2

Sears, Roebuck & Co. v. Stiffel Co., 376 U. S. 225

(1964) ae ae 3

Statutes. ~°

35 U. S. C."Sec. 101 3, 4

35 U. S. C. Sec. 103 | 2, 3,4

me

(SA, Wahab FS

In-the Supreme Court of the United States

OCTOBER TERM, 1965,

No. yg4

AMERICAN AIR FILTER COMPANY, INC.,

Petitioner,

Vv. ~

CONTINENTAL ‘AIR FILTERS, INC.,

Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARL

American Ait Filter Company, Inc., plaintiff below,,

has petitioned for a Writ of Certiorari to review the Judg-

ment of the United States Court of Appeals for the Sixth

Circuit holding invalid Rivers Patent No. 2,807,330. \The

decision of the Court of Appeals is printed in the Appendix

hereto. ra

?

QUESTION PRESENTED.

The single question presented by the Petition is

whether or not the court below erred in holding the Rivers

ste invalid for lack of patentable invention.

STATEMENT OF THE CASE.

The present case is an ordinary patent infringement

action in which the Rivers patent was adjudicated/as in-

valid by the District Court' and'the Court of Appeals.

The patent was also held invalid by the United States

1226 F. Supp. 482.” % 7

2 Page 6, infra.

Cort of Appeal fur the Ninth Cireuit eéetiorstt denied,

375 U. S. 903.

- The Rivers patent relates. to the filtering of air by

scala Misiedhs & welsol acla oe of! ‘expansible-

compressible” filter media of which a supply is provided

_- in the form of a web wound under compression on a roll,

and which is unwound and moved across the air stream

and then rewound under compression after it has become

soiled with solids filtered from the air. The precompression

or post-compression of the filter media has no effect on

its filtering properties in the air stream. The action of the |

.. Rivers apparatus may well be compared with the method

of drawing the film from one spool to another across the

light chamber of a camera.‘ Petitioner\has conceded that

neither the filter medium nor the apparatus used to draw

it into and through the airstream was new.’ The Rivers

filter did no better job of filtering air than had been done

before; the method of operation was not new; the filtering

* medium was not new.’

Contrary to the impression: which the Petition seeks

to create, the court below did rely upon Sec. 103 of Title

"35.0. ©. C. im piterdienting ‘potent tewwalaty. The court |

' below said (page 7, infra): |

“As stated by the Ninth Circuit, the setentes, Rivers,

‘did contribute something to the agt’ and the sole

question is whether such contribution constituted

patentable invention, 35 U. S. Cy A. Sec. 101,

and something that would not have been ‘obvi-

ous at the time the invention was made to a person

pation ah I 8, art 20, ech, eet euheet

3318 F. 2d 500. d ¢

* Opinion below, infra, page 9. ~

5 Ibid, 10.

* Ibid, 14.

- matter, pertains’ rag PE 108 aphosis

added.) LHe Ee

that the Rivers concept is too obvious’ to’ b patentable: ¥

This holding resulted from an: ‘examination

of the entire record of the edse from which the court con-

cluded nee

invalid.”*

At best the Rivers concept represents a‘ slight tech-

nological advance which both courts below as well as the

Ninth Circuit found to be unpatentable. In Sears, Roe-

buck & Co. v. Stiffel Co., 376.U. S. 225 (1964), this Court

tecpenined the danger in granting such patents by stating

(p. 230):

“To begin with, a genuine ‘invention’ or ‘discovery’

_ must be demonstrated ‘lest in the constant demand.

for new appliances the heavy hand of tribute be laid

on each slight technological advance in an art.’ Cuno

Engineering Corp. v. Devices Corp., 314

U. Sr 84, 92, 62 S. Ct. 37, 41, 86 L, Ed. 58 (1941);

see Great Atlantic & Pacific Tea Co. v. Supermiarket

' Equipment Corp., 340 U. S, 147, 152-153, 71 S. Ct.

127, 130, 95 L. Ed. 162 (1950); Atlantic Works v.

Brady, 107 U. 8. 192, 199-200, 2 S.Ct. 225, 230-231,

27 L. Ed. 438 (1883).” : wii

The opinion of the lower court shows.that the Rivers

concept did not meet the _conditions. and.requirements—

prescribed in Section 103 of the Patent Act.’ “In. its opinion

_ the lower court did refer to Section 101 in posing the sole

Seen eee Sn a te Poe © te

* Opinion below, oe

, §

>

| 4° as

question as to:whether the Rivers contribution constituted

patentable invention but coupled this with a quotation of

the pertinent language of Section 103 and.also cited that -

The heading of Section 101 is “Inventions Paten

able.” It provides that “Whoever invents or discover

* * * may obtain a patent therefor, subject to, the con-

ditions and requirements of this title.” Therefore, to be

patentable an invention must Meet the conditions and re-

quirements for patentability set forth in the sections fol-

lowing 101, including Section 103. This is the exact ap-

proach which the lower court followed in arriving at its

conclusion: “as a matter of law that plaintiff's patent is

invalid.”

_ After making an independent examination of the

entire record the lower court said (infra, page 15):

“We agree with the District Judge and the xi Cir-

cuit in holding that the concept is too obvious to be

patentable.”

_ Thus, there wa3#no “superposition” of a judicially

enunciated standard of invention. Because the Rivers con-

cept was obvious under the provisions of Section .103, a

condition for patentability was not met and Rivers did not

qualify for a patent under Section 101. There is no lan-

guage in the opinion of the lower court which would justify

the afsertion that the court-below applied any test other

than the test of obviousness of Section 103.°

> Petitioner has failed to show that the court below did

not apply the proper standard” in determining lack of

- patentable “xs regen Petitioner¢ argument based upon

® Another defense which the court below found unnecessary

ee a oe panes to Savells for ovens (infra,

page 15). ,

the contrived and obscure question presented in the Peti-

tion ignores the reliance of the court below-upon the ap-

plicable provisions of the present Patent Act. Any doubt

as to this is dispelled by a reading of the carefully con-

pgtentccnerimte:gadey sation tn mit ed

the nature of Rivers’ contribution are discussed. a

+: 7

CONCLUSION.

The disposition of this action by the lower court was

on no different basis than that on which numerous other

patent infringemeng actions have been determined. The

. opinion of the United States Court of Appeals for the

Sixth Circuit raises no issue of patent law which should

be decided by this Court. Two courts of appeals have con<

curred in holding the Rivers patent invalid. The Petition

indicates nothing more than the dissatisfaction of a private

litigant and presents no valid redson for review.

It is respectfully submitted that the Petition should

be denied. : .

. Cant F. ScHaFrer,

P

©

Cue

6

OPINION OF THE CPURT OF APPEALS.

~ No. 15725.

UNITED STATES COURT OF APPEALS _

seg » __ For rue Srxrn Cracurr. : |

“ AMERICAN AIR FILTER COMPANY, INC.,

Plaintiff-Appellant,

Fe) Aisi diets NB

CONTINENTAL AIR. FILTERS, INC.,

Defendant-Appellee.

-

'- Appga, From tue Unrrep Srares Distrraicr Court

| £ For rue Western Distarct or Kenrucay.

Decided Junt 25, 1965.

. Before Cecm and O’Suttivan, Circuit Judges, and _

Kenr, District Judge. , |

O’SuLLIvaN, Circuit Judge. This appeal asks reversal

of : a judgment holding invalid U. S. Patent No. 2,807,330,

owned by plaintiff-appellant American Air Filter Cort-

"pany, Inc. as assignee of the alleged inventor, Richard D.

Rivers. Plaintiff American brought this action charging

infringement of. the patent against defendant-appellee

Continental Air Filters, Inc. in the United States. Dis-

trict Court for the Western District pf Kentucky. The

’ District Judge, having heard the proofs in the case at bar,

withheld decision until the Ninth Circuit announced its

opinion in Farr Co. v. American Air Filter Co., 318 F (2)

500 (1963), cért. denied, 375 U.S. 903 (1963), holding the

- ¢ game patent invalid. The District Judge followed this deci-"

#

&

‘q

sion in his opinion, whieh is reported as American. Air

Filter Co.:v. Continental Air Filters, Inc.,-226.-F. Supp. 482

(W.D. Ky. 1963). He ruled that, .

“While it is recognized that the holding of the Ninth

Circuit that the patent iu suit is invalid is not con- ’

trolling here, yet it should be followed unless the deci-

sion discloses ‘a very palpable error in law or fact.’

Cold Metal Process Co. v. E. W. Bliss Co., 285 F.2d

231, 236 (6th Cir.. 1960); Cold Metal Process Co. v.

Republic Steel Corp., 233 F.2d ‘828, 837 (6th Cir.

1956); Cincinnati Butchers’ Supply Co. v. Walker

Bin Co., 231 F. 453, 4546 (Oth Cir. 1916). .” 226 F. Supp.

482. s ~

Fair reading of the District Judge’s reported opinion

together with his conclusiéns of law and the opinion of the

Ninth Circuit makes it clear that invalidity was adjudged

because of the conclusion that as a matter of law the pat-

entee, Rivers, really did not invent or discover anything

when he put together the patented mechanism. 35 U.S.C.A.

§ 101. We agree with the District Judge and@he Ninth

Circuit and, therefore, affirm.

The patent: here: involved :related to cunstod acl

material for operatiig air filtering eqdipment. ‘The growth

Le Ge eee like others in this mechanical

been characterized by continuing improvement.

by the Ninth Circuit, the patentee, Rivers, “did

soutcintormothing io $e ae Gh de cheat

whether such contribution constituted patentable inven-

tion, 35 U.S.C.A. § 101, and was something that would not

have been “obvious at the'time the invention was made to

a person having ordinary still in the art to which said sub-

ject matter pertains.” 35 U.S.C.A. § 103. —

Air if’ commonly filtered by passing it against and

through a screen or obstruction of such material as to

-n

: - a3

strain: out some or all of its various contaminants.’ A

variety of such. straining materials—referred to in this

context as the filtering media—have been employed to

meet “particular needs. Such media have been made of

“cloth, metal, Fiberglas and other materials. Some are dry,

relying on the obstructive qualities of the material; others

_ are known in the industry as the viscous impingement

type. In the latter media, the screening material is tréated

with some viscous (oily) substance which adds to its filter-

ing capacity by giving it a tacky quality similar to fly paper.

We deal here with such media.

For a period prior to the application for the patent in

suit, August 4, 1954, filtering media with components of

Fiberglas and other materials treated with viscous sub-

stances had come into use. Plaintiffs version of this prod-

that this medium represented an inventive advance, and

other manufacturers developed similar media. It was char-

acterized as an “expansible-compressible filter medium”

which could be tightly wound on a spool or mandrel, reduc-

ing its thickness, but which resumed its original thickness

upon unwinding, not unlike the unrolling of a package of

cotton.. This compressible quality had been useful to re-

duce the bulk of the material for shipment and storage.

These differing media have been presented to the con-

are broadly divided into automatic and unit varieties. In

the automatic group the filtering medium is moved through

the airstream by mechanical means, while the unit style

places the filtering medium in a fixed apparatus which is

manually removed when necessary for cleaning or re-

placement. In one common type of ‘automatic filter the

filtering medium (usually metal screens) is mechanically

moved through the airstream, and then on through an oil

bath at the bottom of the apparaths: which cleans it and:

renews its tacky or viscous quality. In both the automatic

and the unit types the filtering medium was sometimes

taken out of the apparatus and either'disposed of or, in

- other styles, cleaned, treated and reused.

The general plan of the Rivers patent was to place a

roll of the expansible-compressible viscous impingement

filter medium at the top of an apparatus and to have it

automatically unwound and passed through the airstream

to be rewound on another spool at the bottom’ of the ma-

chine to await disposal. The action may well be compared

with the method of drawing the film from_one spool to

another across the light chamber of a camera. The pat-

éntee describes what is claimed as invention in his claim 2.

wy * In a method of filtering from an air stream solids

borne thereby, the steps consisting of progressively

\

10

/c-) emoving-and.expanding from .a:compressed: supply

web; thereof.and [sic] .expansible-compressible filter

“ing the thus exposed medium, carrying the solids

_ Fetained in it, into a disposable package:” 7

We need not consider, any,of the other claims of the patent

because plaintiff concedes that “if method claim 2 is invalid

for lack of ‘invention’ all of the other claims are likewise

invalid for the same reason.” <

Plaintiff markets the product of its claimed patent

under the trade name of Roll-O-Matic. Plaintiff concedes

that neither the filter medium nor the apparatus used to

draw. it into and through the air-stream was new. He

contends that. the claimed invention resides in the com-

bining of such well known components into a new method

of operation. Thus the use of an upper and lower spool for

unwinding the filter media and rewinding it after passing

it through the air stream was clearly disclosed in the Chris-

tofferson patent No. 1,982,639 issued December 4, 1934,

and was at least suggested in other prior art. Plaintiff

points out that the Christofferson patent was not designed

for use with the viscous impingement type of filter media

and that it had never been put to commercial use. THi#S is

true, but the plaintiff itself as early as 1949 or 1950 had

put to commercial use its own “Auto-Airmat” which as

described -by plaintiff's witness “has a roll at the top and

feeds media across an air stream and is rewound at the

bottom.” The Auto-Airmat, however, used.a dry medium

as distinguished from the viscous impingement medium

used in plaintiff's Roll-O-Matic.

- .. After Rivers’ application forthe patent ‘in suit, the

defendanj developed a machine for the use of a viscous

impingement medium similar to plaintiff's Amer-glas, and

x

11

now markets it under the style of Cunomatic. Defendant

concedes infringement if the Rivers patent is valid.

In view of the informative material in the Ninth Cir-

cuit’s decision in Farr and the District. Judge’s reported

opinion in the case at bar, reference to them will suppie-

ment our writing and probably better describe the contest

we deal with. We have gone into some background

detail, however, to demonstrate the fact that we arrive at

the conclusion we do upon our own evaluation of the evi-

y dence, aided and supported of course by the’ good reason-

ing of the Ninth Circuit in its Farr decision. Appellant

suggests that the District Judge did not independently ar-

rive at his conclusion of invalidity, but merely accepted as

dispositive the Farr decision. We do not so read the District

Judge’s opinion, especially as we have examined the Find®

ings of Fact and Conclusioris of Law which supplement his

reported opinion. His Findings of Fact are adequate and

are not in substantial conflict with what appellant claims

here. The following are his decisive Conclusions of Law.

. °“L. The standard of patentability. is a constitutional

' eas Sialat A ieee eat

is a question of law. —__-.

“2. The nature of Rivers’ iiitellaatioas’ in view of the

state of the prior art does not meet the standards of

patentable invention. :

‘2 Each of the claims of the patent in suit is invalid."

~ Farr Company pv. Sn Aenean Inc.,

: 318 F.2d 500 (C.A. 9).”

The basic: facts from: which we ‘must. ‘eteiibine

whether the Roll-O-Matic air filter contains “invention”

are not in dispute and the quéstion, therefore, is to be re-

solved as a matter of law. Monroe Auto Equipment Co. v.

Heckethorn Mfg. & Supply Co., , 332 F(2) 406, 409-11 (CA

6, 1964), cert. denied, 379 U.S. 888 (1964). This essential

2 12

agreement onthe basic facts, reflected in the Findings of

Fact plaintiff proposed to the District Court, obviates the

need for further detailed analysis of the proofs. Such pro-

posed Findings contain the following: 7

- materials [filter media], which had long before 1954

been used as filter media in' unit viscous impingement

type filters, were a group which had certain physical

properties in the sense that they were resilient and,

when compressed for an interval, would return, upon

release of ion, to their approximate original

thickness. These properties of such filter media had

long been recognized. As early as 1925, it has been

recognized that such properties of such materials

could be useful in ‘unit’ types of filters where it was

desitable to compress the media during use and to

later expand it for cleaning. *|* * —_

“16. The relatively thick pads of resilient filter media

used in the ‘unit’ type viscous impingement filters

were available to the industry from a very early date.

The resilient properties of these materials and of ma-

terials of a generally similar nature were well known

nd were also utilized in fields other than air filtering

* where resilierice to accept compression was of value.

*¢ + ;

“17. In thé period prior to 1954, the glass fiber filter,

“15. Among these relatively thick pads of filamentous |

~

IZ «

“27. All of the tools used by Rivers in the practice of

» his new mode of operation. had long been available in

” the filtering art.” 3

“30. Rivers did not develop fesingeiccerntte or pro-

pose the use of any new filter media. The materials

. contemplated by Rivers as those adapted to his new

“mode of operation. were expansible-compressible

materials which had been available for many years.

. Among these were specific materials which by reason

_ of cheapness, availability and other favorable. con- .

' siderations had been extensively used ‘as disposable

media in‘the unit ‘viscous impingment type’ filters.”’

“45. * * * The patentee’s invention brings no. im-

. proved result.insofar as the cleaning of the air is.con-

’ cerned,,. because the old and well recognized class of

filter media,,which is'‘subjected to the patentee’s new

se of manipulative operation; does not thereby be-

me enhanced in its air cléaning properties.”

waecilaaeasi the foregoing, plaintiff insists that

Rivers was entitled to a patent monopoly because he was

the first to use the roll type method of automatically pre-

senting the filter media to the air stream, suggested by the

early Christofferson and other patents and commercially

employed by plaintiff in its own Auto-Airmat, in combina-

tion with the well known Fiberglas viscous impingement

type media. We age aware. that the simplicity of an idea

does not forbid its patentability, e.g., Goodyear Tire &

Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 279; 88 'L. Ed.

721, 724 (1944); Monroe Auto Equip. Co. v. Superior

Inds., 332 F (2) 473, 477 (CA 9, 1964), cert. denied, 379

. U.S. 901 (1964) ; Allen v. Standard Crankshaft & Hydrau- ;

lic Co., 323 F(2) 29, 34 (CA 4, 1963) ; Mott Corp. v. Sun-

flower Inds., 314 F (2) 872, 880 (CA 10, 1963); Applica~

tion of Shelby, 311 F(2) 807, 810 (C:C.P.A. 1963), but

to rise to invention a combination of old elements must

“co-act to produce the result achieved, the result-‘must be

«

a Oe, af -

14

new: and useful,: andthe method: of operation must be

new.” Cold Metal Process Co. v. Republic Steel Corp.,

233 'F (2) 828, 838 (CA 6, 1956), cert. denied, 352 U.S.

891, 1 L. Ed.(2) 86 (1956). The Roll-O-Matic did not

bring about any new ultimate. .results—it did no better job

of filtering the air than had been done before; the method

of operation was not new; the filtering medium was not

new. All that can be said of Rivers’ idea was that he was

the first to use the Fiberglas medium in the basic appa-

ratus that had-been “suggested” by Christofferson and

had been put to commercial use by plaintiff's Auto-Air-

_ mat. The fact that Rivers was the first to do this will not

alone endow his idea with inventiveness.

“He who is merely the first to utilize the existing fund

of public knowledge for new and obvious purposes

must be satisfied with whatever fame, personal satis-

faction or commercial success he may be able to

achieve. Patent monopolies, with all their significant

economic and social consequences; are not reserved

for those who contribute so insubstantially to that

fund of public knowledge.” Dow Chemical Co. v.

Halliburton Oil Well Cementing Co., 324 U. S. 320,

328, 89 L. Ed. 973, 980 (1945).

We think it appropriate to add the following from

Great Atlantic & Pacific Tea Co. v. Supermarket Equip.

Corp., 340 U.S. 147, 153, 95 L.Ed. 162, 167 (1950):

“This patentee has added nothing to the total stock of

knowledge, but has merely brought together segments

of prior art and claims them in congregation as a

monopoly.”

Plaintiff, conceding that the old Christofferson patent

suggested the basic plan of the Rivers apparatus, argues

in effect that because it had not been put to use it cannot

be considered to have anticipated the patent in issue. As-

i

15 |

suming such rule, however, the early patent may be‘co -

sidered on the question whether, the Rivers concept is too‘

obvious to amount to patentable invention. . Monroe Auto

Equip. Co. v. Heckethorn Mfg. & Supply Co., 332 F(2)

406, 414-15 (CA 6, 1964), cert. denied, 379 U.S. 888

(1964). We agree with the District Judge and the Ninth

Circuit in holding that the concept is too obvious to be

patentable. , Be 9

Appellant argués that the District Judge. misapplied

the doctrines of comity in adopting the Farr decision “as

the law of this case.” Our review of the District Court

opinion and its Findings of Fact and Conclusions of Law

satisfies us that the District Judge made his decision from

his own evaluation of the record before him and did no

wrong in finding perstiasive and adopting for his decision -

the law announced by Farr. In discHarging our appellate

responsibility, we have examined the entire record of this

case and independently of, but aided by, the Ninth Circuit

reasoning in Farr, we conclude as a matter of law that

plaintiff's patent is invalid. Being impressed with the rea-

soning of the Farr case, we have found it unnecessary to

go into any. ‘more detailed discussion of the facts of this

case and the law that applies to them. |

' Our decision makes it unnecessary to consider the de-

fendant’s claim that the Rivers patent is invalid for over-

claiming. ‘

Judgment affirmed.