# Opposition Brief — 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%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1966 - **Citation:** 383 U.S. 934 ## Text Sen + COUR, On a ‘DEC sis — ion semen meenaemiael _JOHN F. DAVIS, barns my 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 SS Or a GD ieee sicsicctcinieriorarnsipinicainnits 1 TI, seiceincinscicsetinnsisitiatnciaiias dit isabiaiapiaaa dial 3 ee en np aanbiaseGaninanencatndin 5 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. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385602_1177%3A2. Public record. Not legal advice.