Brief in Opposition to Petition for a Writ of Certiorari — General Plywood Corp. v. United States Plywood Corp.

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FILED

No. www 25 | JUL 1 1967

N °

In THE

yan Court uf the Buited States

OCTOBER TERM, 1966

GENERAL Piywoop CoRPORATION, |

: aed Sh -Petitioner,

Unrrep States Puywoop ConPoraTION,

a Respondent.

_ BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

Morrts REtson,

. 405 Lexington Avenue,

New York, New York 10017,

_ Attorney for Petitioner.

Of Counsel: ’

James M. HEiLMan,

om Fifth ‘Averiue,

/ New York, New York 10017.,

Wim F. Duping, JR.,

405 Lexington Avenue,

New York, New York 10017.

July 3, 1967

— \

‘

. oa

—

‘

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‘ AL

‘

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TABLE OF CONTENTS:

Opinions Below and Jurisdiction ...... ‘ Eee te

Question Presented ... cee se ebbas TTA EME SH

_ ‘Summary of Argument 2 ise tes <a seveetens

Statement jb ine Care WaeGee es o0¥es meee sewenk unas

1 The Essence of the Patent is Nonabrasive-

ness and Densification ..................2.:

The Accused Processes Are sbeebs} assed

Remove Rather than Densify’ the Wood .

A. The Accused ° ‘Processes Do Not Denisify

the Wood Srvorsuvetekekiwpaeddbatanest

.. The Accused Processes Do Not Mes ‘‘ Vield-

ing’’ or ‘‘Heat Insulating”’ Belts eeecceves he

4. The Aceused| Processes Use Only the Prior

Certiorari Is Not to Be Granted Merely to

Review the Weight of the Evidence ......... >

The Concurrent Findings of Noninfringement

Below Are Correct ........: ceteenbaedines ae

-_ A. The Accused Processes Are Not Abrasive

B. The Accused Processes Do not Seay

the MEE ca Ut bck otacawiecue theese ts

C. The Accused Processes Do not Use ‘‘Heat

*Insulating’’ or “‘Yielding’’ Belts ....:.:

D. There is No Infringement Because the Ac-

| cused Process Uses Kinde Prior Art aaa :

PF vc dginccustnedtrasdbacdvestweseds «ai

- Ww DO dD

ii | ‘TABLE OF OONTENTS

PAGE

3. Petitioner’s 5 Bien Is. Fanciful and Not ,

Supported by the Record ........ccccsssere 24°

4. There Are No Conflicts or Public. Questions

_ or Other Reasons Warranting Review Here.. 28

Conclusion. ..... Siselaes eee tas Es ee 31

APPENDIX:

Reply Brief for Defendant-Cross-Appellee on

Cross-Appeal No. 16,195 ........ nsua eaanes 32 |

. Crrations

Cases:

Allen v. Trust’ Company of Georgia, 326 U. Ss.

“630, 636 (1945) see eeeesveescesececceccecees 2

Casco Products Corp. v. Sinko Tool & Mfg. Co.,

116 F. 2d 119, 121 (7 Cir. 1940) ...... 000.02. 23,

Comstock v, Institutional Investors, 335 U. S.

SEL, TEA (IDET) ccc vevess yee pe mee 2

Exhibit Supply Co. v. Aes Patents Corp., 315 |

We Ws Sate Mee GIOUED braces censcesaioeasins 30

General Talking Pictures Corp. v. Western Elec.

'- Co., 304 U..S. 175, 178-9 (1937) .......... ee,

Graham v. John Deere Co., 383 U.S.1,17 (1966) 26

Graver Tank & Mfg. Co. v. Linde Products Co.,

Se Ge: Ws BE Ee BOW CEOS ccc cnnctycanapecss 2,16

Great A. & P. Tea Co. v. Supermarket Beds.

Corp., 340 U. S. 147, 152 (1950) ..:.......... 22, 23

- Just v. Chambers, 312 U. S. 383, 385 (1940) .... 2

’

TABLE OF CONTENTS =. iii

PAGE

Keller v. Adams-Campbel Co., 264 U. S. 314, 319

CHEE ceccccdvctinesdiednnabduseearvonsins 1

_ Knapp v. Morss, 150 U. S. 221, 208 (1893) ciocee’ 2B

_Kwik Set Ine. v. Welch Grape Juice Co., 86 F.

2d 945, 947 (2d Cir. 1986) ......cccccesecces 20.

Layne & Bowler Corp. v. Western Well Works,

261 U. S. 387 (1922) seetasouns wan nbned ones 1, 16

Magnum Import Co. v., De Sporturno Coty, 262

U. S. 159, 163 (1922) . onendsetcveuysssnadiens ‘3,16

Ocean Insurance Co. v. Fields, 2 Story 59, 18 Fed.

Ce ity BI ks cic eatettcecesieesssnare 31

Smith v. Magic City Kennel Club, 282'U. S. 7 84, |

789 (1930) FADE oe cesdeRinesenresxanens 30 - |

S. S. Kresge Co. v. mere 112 F. 2d 708 (8th |

Cir. 1940) FD ti HH A MN ly Cf uled -21

Stilz v. United maanes, 269 U. S. 144, 147-8

CADNE) : vavcesccevevbdowrenicessttesssesate 2,3, 21 |

Toledo Scale. Co. v. Computing Scale Co, 261 ome

U. S. 399, 425 (1922) siaeaeiunelats waeitd a «BL

United States v. Yellow Cab Co, 338 U. S. 338, ,

et eet rrrrs rere jecnna cea preeeeees 11, 115 ,

Statutes:

96 WRG MOND: oon vskicdadecys coh cece Mee ©

No. 1351

*) oi

Supreme Crt of the Rated States

OCTOBER TERM, 1966 . “4

GENERAL Piywoop CoRPORATION, — oy

Petitioner,

Untrep Srates PLywoop Conronariom,

Respondent.

és.

BRIEF FOR RESPONDENT IN OPPOSITION TO -

PETITION FOR WRIT OF CERTIORARI

Certiorari is not granted merely to review evidence

in.an ‘‘ordinary patent case, with the. usual issues of in-

vention, breadth of claims and non-infringement.’* That

- is all this petition seeks. This is an ordinary cause of

action for alleged patent infringement in which the Dis-

trict Court correctly found the patent in suit to be not

infringed. The Court of Appeals affirmed the District

Court, and re-affirmed its own decision of non-infringement

by denying petitioner's petition: for seaaoeiay,

1 Keller v. Ademe-Compbell Co., 264 U. S. 314, 319 (1923) ;

(822) Bowler Corp. v. Western Well Vv erks, 261 ) $i 387

2 Petitioner is ‘sometimes hereinbelow called General hie

ae Corporation or G.P.C. ao . Zz a

The lower court decisions do not*tonflict with decisions

~ of this Court or other Courts of. Appeals. Nor do they:

present any unusual questions of law or clea ers of any

public importance. :

Petitioner’s real complaint i is that it was Cee in

meeting its burden of bringing forth ‘sufficient ‘evidence to

support its clajm of infringement. It seéks by this peti-

tion to reargue the weight of the evidencé on the factual

issue of patent infringement,™ in direct contravention of

this Court’s oft repeated rule that ‘‘concurrent findings.

of the two lower courts will. be accepted. without re-exam-

ination of the evidence. 99 !

In short, this petition presents no “special and important ©

reasons’ for this Court to intervene by’ granting. a writ ~~

a certiorari.

‘ Opinions Below and Jurisdiction

.. The opinions below and jurisdictional requisites. are ~

adequately set forth in the petition.

_ . The petition asserts a fanciful question.’ It is.premised

on ‘four assumptions, which as will be shown below have

soa at BE , is 4 question of fact has been éstab- ;:

i oMe¥. United States, 260 U. S. 144, 147 -

* Allen v. Trust Compan f Georgia, 526 . £ Ge

ey Mere Talk. "emees. Corp..v. Western. Elec. 4

. 175, 1 1937) ; Comstock v. Institutional Investors, 3

S. 211, shiz eral Just v. Chambers, 312 U. S. 383, 385,

j (ioe). Mfg. Co. v. Linde Products Co, 336 U. S.

“ee a ae 19 of this Court,

(1940)

° 3 i it ; 1

no basis in. the record here. These invalid assumptions

are:

Le That the patented process represents a “‘substan-

tial. advance in the art.’’ '

2. That the lower courts held. that patent infri

ment was avoided merely by ‘‘varying the of

the apparatus employed in performing process.’’

3. That the accused processes involved ‘‘no departure ©

. from the mode of operation or the result” of the

patented process. ©” 3

‘4. That the ‘patent claims .do not preclude’? the

variations employed in the accused. processes.

In addition, the Question i is premised on the patent’s being |

valid. This prémise is challenged by the companion peti- .

tion for writ.of certiorari in United States org Cor-_

poration v. General Plywood Corporation, No. 1 :

The only possible question here. is one of fact, ie,

whether the patent in suit has been infringed.* Thus,

the real\issue is whether petitioner, who lost on the fac- °

tual issue’-of infringement in both courts below, should.

be given still another hearing: to. reargue this issue before

this C This Court has: already answered. this ques-

tion in: mae megative i in the same situation.” -

~Stimmary of Argument

ake

, The petition should be denied because 7

1..Certiorari is not ‘ta be granted merely to: review

~ the weight of evidence. © ~ °%* :

2. The concurrent garnet of non-infringement helow a

“are: econ eh

ep for 6. oh Sport

yen < 4 ot ‘ a yer h fo Fi. » 1:

‘'

3 Petitioner’s ‘‘question rare is’ fanciful and

not supported by the record. joe "i

4. There are no conflicts between’ cirenita or public

questions or other reasons which warrant review

here.

Each of these reasons is demonstrated i in the Argument |

below.

be Statement

' Respondent? wunit dentebe the case to inform this. Court

: adequately of the facts relevant: to whether a writ of:

certiorari should be granted here.

1. The Emence of the Pattnt Is Nonabresveness and.

Densification ~.

. The patent i in suit. (3056a)* concerns 2 method for densi-

. fying a wood: surface by nonabrasively buffing it under

- heat and pressure with\a machine-driven nonabrasive

buffing belt. The patent contrasts this with the prior art

practice of sanding wood surfaces (‘as smooth as pos-

sible’’ (3057a, col. 1, line 23) by stating that the patented ©

process densifies the wood surface(by ‘‘frictionally heat-

ing the surface of the wood sufficiently to soften” it and

| simultaneously ‘‘eompressing the woed while the surface

i . wood is softened so as to densify”’ it (3057a, col. 1, lines’

64-69). .

_’. The rubbing suction’ of the buffing belt of the ise is

“preferably composed: of cork’? (3057a, col. 2, line 71);

‘however, it may be made of ‘‘an oth flexible, yielding

relatively nonabrasive frictional g medium or fric-

tional belt material, such as canvas, or other cloth’’ (3058a,

‘col. 3, lines 14-18). The patent further specifies-that the

; “e eilaiahaiee hereinbelow called United States Plywood Corpora-.

_' tion. or “USP”. |

FES en ‘the indicated page of the record printed

forthe Gat of Ropes :

si Oe

ed 4 : Py

‘surface of the: buffing belt must be ‘‘non-metallic’’ and —

‘‘heat-insulating’’ (3058a, col. 3, lines 24-26).

Densification of the wood surface is essential ‘to the

patent process. As petitioner stated in its brief to’ the

Court of Appeals: - eS

‘“(I)f there is no densification the ‘pikes’ is asitty’' 5:

valid on that fact alone, for the — requires it. a

(Petitioner’s emphasis) *° ‘:

N onabrasiveness. of. the rubbing belt is as essential. _

because abrasion of the wood' surface would remove rather

than densify the surface. The patent emphasizes this

contrast between the patented nonabrasive process and

the prior art abrasive sanding’ process stating:

_ “Tt should be noted also. that ‘my process does not

make a rough’ surface smooth, nor does it involve

the abrasive cutting or removal of any material. 7

(3058a, col. 3, lines 28-30)... a yi

- This basic distinction between prior — nail waitin

. and the nonabrasivé densifying of the patent is reflected

in every claim of the patent. Claim ‘11 was treated as

typical by both of the lower courts. It is reprinted here -

with emphasis added to the mncuceresirets on nonabrasiveness ;

and densificati ,

1 The seithed of providing a , substantially flat

wood surface with a glossy and relatively non-porous -

finish comprising: non-abrasively. buffing the surface

Faith 6 hafiag widine: hadiag: @ Adelle piclding ede-

bively nonabrasive frictional heat insulating rubbing .

suaface moving at a prédeterniined buffing speed, com-

. ‘pressing the buffing medium-between @ backing mem-

ber and said wood surface to press the daa / medium *:

10 GPC Reply Brief in Appel No. 16, 195, page. 29 set fotth

at page 32 hereof. All emphasis. and. bracketed matter are herve

throughout this brief unless otherwise noted. Os

a hie inte ‘fiine: and intimate contact. with ocid, curtace; and

_ orrelatively controlling the buffing speed, pressure

_and time to compress, pressure smooth and densify

the surface wood without scorching. - (30628)

All of the other claims of the patent are likewise limited

to a nonabrasive wood densifying™ process.

- The history of the proceedings before the. Patent Office

which culminated in grant of the patent also establishes

that nonabrasive densification is a critical and essential

‘ featare of the patented process.. Originally the patent ap-

plication simply claimed heating and compressing the wood

surface so as to densify it, without regard-to how the heat

and pressure were generated and applied (2941a). These |

claims were rejected on prior art cited by the Examiner

and were then abandoned by petitioner. GPC then. nar-.

_ rowed: its claims to heating and compressing the wood by ‘

means of a ‘‘flexible relatively non-abrasive frictional rub-

bing surface’’ (2946-7a). Following this, the Examiner

rejected (2963a) the application on the prior art Mac-

Donald patent (3070a) which showed ‘wood polishing by

sandpaper which was ‘“‘worn down substantially”? (3072a,

col. 3, lines 28-29). GPC responded by arguing that the

MacDonald process would not work because ‘‘the sanding

art cannot be used for non-abrasive polishing’’, whereas the

. applicant Alexander’s wood densification stemmed ‘‘from |

his use of a-relatively non-abrasive medium’ (2972-3a).

GPC distinguished MacDonald from Alexander by repre-

senting to the Patent Offiee that MacDonald ‘‘produces

‘sander dust’ in noticeable quantities’™: whereas Alex-

ander’s patented process operates ‘‘without any noticeable

‘production of ‘sander dust’’’ (2979-80a). In so doing,

GPC defined the criterion for qveeniaing: whether a

18 Claim 12 of ‘thie 3062a the ord “glossif

“instead ‘gf “densify”, but pent (30624 Paes saan tone cA

the same ‘here.

tition $admitsion quoted on page 5 above that the patent “re

quires

™ Petitioner’s emphasis. win

2th

; process lies within’ ‘i. -prior art shenineisaiiilil category,

_ or whether it is in the class of the patented nonabrasive

process: that criterion is whether or not the process pro-

duces. noticeable sander dust.

With further regard to the ‘meaning of 7 pee OP

and ‘‘relatively nonabrasive’”’ as used in the patent, GPC

told the Patent Office, ‘‘ Anyone reading this application

will readily understand that ‘relatively nonabrasive’ means

‘something that does not, noticeably cut-away the wo

and further that a nonabrasive medium ‘‘wears the wood

away at a relatively —— or slow rate approaching

- gero’’ (2978a).

The Examiner was still not csutineslt haa again rejected

the application (2999a): Alexander then successfully ap-

pealed to the Patent Office Board of Appeals, repeating the -.

same arguments summarized above, emphasizing the non-

abrasive’ buffing (3003a, 3004a, 3005a, 3007a) and stating

‘“*a relatively nonabrasive medium is essential’’ (3008a).

The Board was persuaded by these arguments. The Board

stated that the patent proeess proposed ‘‘to present the .

surface of the wood, after the final sanding operation, to

the buffing action of a flexible belt such as canvas or tork’’

(3017a). At found that even worn sandpaper will be abra-

sive (80198) and that Alexander distinguished from the

prior art, which ‘‘would necessarily result in removal of

wood rather than a buffing action’? (3019a). On this s basis,

elaims were allowed. : .

Thus, in order to avoid the prior art GPC represented to

the Patent. Office, and indeed emphasized, that the patented

process uses a nonabrasive buffing medium: GPC urged

that this buffing medium produces no noticeable wood re:

‘ moval or gander dust, as contrasted with abrasive processes

which do prodace’ wood «removal ‘and sander, dust.. The

Be teed of the buliing or polishing moedinm and the

;

~_ VT. < ~

Coe hi ot Stiss £7

consequent absence of senate removal we sander dust j in the

process are therefore critical and essential features of the —

renee process. .

2. The oe Processes Are Abnabies They aii

Rather Than Densify the Wood

. Respondent USP uses 8/0, 9/0 and 10/0 sanding belts

in the fourteen different accused processes (DX 2083,

3559a)."* .These sanding belts are surfaced with rigid,

sharp-edged, upright particles (called ‘‘grits’’) of alu- —

minum oxide which are uniformly spaced on a belt back-

ing of cloth or paper (DX 2056, 3533a). Aluminum oxide

has a hardness of 9.8 on the Moh scale, hardnesses on this

seale ranging up to a maximum value of 10 for the hard-

ness of diamond (187a). Each extremely hard sharp

grit of aluminum oxide acts like a small cutting knife, and

sanding is effected by the cumulative cutting action of

the multiplicity of these small knives which remove wood

to a depth dependent on the size of the grit. The re-

moved wood is the well known sander dust. A

» In smoothing wood, successive sandings are performed.

with successively finer grits, ¢.g., from a .coarse grit,

through medium, fine and very fine grits, dependesit on

the economies of the operation, i.e., the cost of processing

versus selling price of the article (820a-822a). Each sand- —

ing operation removes enough wood to substantially elimi-

nate the scratch pattern of the previous coarser sanding

operation, leaving its own characteristic new finer scratch

pattern. Sanding in “this manner smooths the wood and ‘

thereby produces two significant results. First it glossifies

the wood; that is, the surface reflects more light. Second,

2 These sanding belts are identical in structure to 7/0, 6/0 and

coarser sanding belts, differing only in grit size. Grits from 6/0

to 10/0 are all designated “very fine” /0 and 7/0 belts are con-

ceded not to infringe (Petition, P. 11, footnote >).

it reduces absorbency for liquids used in , finishing opete. 3

tions; absorbency is reduced as -the surface . becomes :

smoother, because the shallower remaining grooves of the.

finer scratch pattern can trap less liquid and because the

‘smoother surface presents less area for absorption than the

- more deeply grooved surface produced by coarser —

(570a-71a ; PX 1027, 2914a).

As- would be expected, the properties of the wood sur-

face change gradually as the grit size used for. sanding

is progressively reduced; there is no abrupt transition. .

The. progressive sanding by. finer and finer grits leads to

greater smoothness, evidenced by more shininess and

glossiness (2163a, 2259a-61a, 2271a, 1978a, 344a-45a, 1714a-

15a, 305a-06a). The major result desired is greater smooth-

ness; the glossiness is\ the evidence of smoothness, and

decreased porosity and absorbency are a consequerice

of greater smoothness.”

The evidence offered at the trial” overwhelmingly es-

tablished that USP’s sanding belts used in‘ the accused

processes are abrasive. .

USP’s expert" made enlarged photos of denones sanded

with different grits, such as 3/0, 6/0 and 10/0 (524a-26a;

_PX 1024). These photos showed clearly that wood was

cut away in all cases, leaving a grooved scratch pattern,

which was merely finer for ‘the finer grits. No significant

** Buffing is to be distinguished from sanding; it involves rub- '

bing or, polishing with a cloth or the like, which does not remove

wood or cut the surface, but pushes’ down any fine projecting

fibers or ridges. “Burnishing” signifies only that shininess or polish

is imparted, regardless of how that result is attained (448a, 456a).

4 Prof. A, G. H. Dietz of the Massachusetts Institute of Tech-.

nology, active in the field-of wood erat wd over 30 years, and

a consultant to the U. S. Forest Products Laboratory and the Na-

tional Lumber Manufacturers Association. He has also lectured

wneny both in the: United States and abroad (517a-19a).

difference existed as between new and worn sanding belts ;

both were abrasive (632a-39a, PX 1039-1051). |

Abrasiveness was also shown by using 10/0 belts for

sanding panels held stationary for differing periods of

time. In each case the belt gouged the panel (even to |

. the extent of sanding through the entire face panel),

showing abrasiveness (199a-207a; DX Gen, 348, lla;

PX(USP) 138-142; PX 1004, 2891a; 232a-43a). This was

the same test by which GPC persuaded the Patent Office

that the worn sandpaper of the prior art MacDonald pat-

ent was abrasive (2985a) in contrast with what happened

when GPC’s cork belt was substituted (2989a).

The very standard for non-abrasiveness proposed by

- GPC to the Patent Office established abrasiveness here.

That standard required absence of sanding dust and ab-

sence of wood removal, for non-abrasiveness to exist.

Operations observed by the District Court himself and

observed. by and testified to by nearly a dozen witnesses

-(ineluding GPC witnesses) showed that.clouds of sander

dust were produced by the accused processes, so that

special dust removal equipment had ‘to be used with each

accused operation, while users of the patented process

needed no such equipment."

Testimony was given of actual measurements of the

amount of sander dust produced, and 314. pounds of col- «

lected dust were offered in evidence (250a-55a, 577a-80a ;

__PX 1006, 2908a-09a; PX 1028). . : ote

Abrasiveness was also shown by the removal of wood.

The same panels were successively sanded with a 10/0 ©

belt (the finest grit belt accused) until the entire face ply

‘was removed. This required 19 passes with a new belt

and 28 passes with a used belt (2452-50a). The testimony

561 oe 2186, 255a-56a, 266a-67a, 3392, 405a-06a, 472a,

Stes, "Mons: 96te, $7 975a-78a, 990a-93a, '1125a-26a,,. 82a,

3827 a-

- ee en re ees

11 a

was unequivocal that in USP’s production wood is cut

away from the face of.every panel (218a). :

It was on such a record that the Court of Appeals held

that there was ‘‘substantial evidence’’ that USP did re-

move ‘‘significant. amounts of stock’? in the accused

processes, and that the trial court’s view of the evidence

was ‘‘at least a L areca 16 one’? (Patios, p. 58).

A. The Accused Preniees Do Not Density the Wood

Since the accused operations are abrasive, they cannot

densify wood in the manner described and claimed in the _

patent, because they remove rather than densify the top

surface of the wood.. As GPC emphasized to the Patent

Office (see pages 4-7 above), an abrasive sanding op-—

eration cannot ‘densify: wood. | |

But more direct evidence of absence of densification

in the accused processes was presented tod the courts be-

low. Specimens of wood finished by the accused opera-

tions were microscopically examined and photographed.

Analysis of these photographs showed that there was no

densification present (536a, 537a, 543a, PX 1024). Also

the density of a thin top slice. of these specimens was

actually measured, and the density compared with that of

normal-density wood. This comparison definitely proved

that no densification occurred in the accused processes

(611a-632a, PX 1037, PX 1038, 2920a-33a).

As further proof of the absence of densification in the

accused processes, the patent specifies a minimum of 400° F .

as the temperature required for densification (3059a, .

col. 6, line 23), while temperature measurements: on the

accused operations showed that’ the requisite. 400-degree

minimum temperature for the wood. to;. soften’ was : not

reached (675a-79a, PX 1029, . ‘MilSe-0e). This. was also ©

| oo oting this ‘Court’s dailtin in Onited. States. ve “Yellow Cob

om 342 (1939).

» 12 .

confirmed si the fact that the accused processes operate

at far below the temperature set by GPC, which ‘is just

below the scorch point (2109a); no significant scorching

‘is experienced i in the accused operations (2509a-11a), only a

2 or 3 isolated instances having occurred in 7 years of

“operations (584a). |

Thus, the direct idea of microscopic examination,

density measurements, and temperature measurements, all —

demonstrate absence of densification in the ‘accused

processes. .

ee Do Not Use “Yielding” or “Heat

Insulating” Belts - ;

In addition to requiring ican of a buffing means which

is nonabrasive, the patent also requires that the buffing

means must have a surface which is ‘‘yielding’’ and ‘‘heat

insulating.’”". The purpose of the ‘‘yielding”’” <u

is best explained by a related patent of GPC :*

“The good performance of the cork belt has been at:

tributed to the resiliency of the cork particles, which,

when they are subjected to’ rubbing pressure, causes

them to. yield and thus promote uniform frictional

weapon: contact and_demote rapid wear.’’ . “

The purpose of the ‘heat insulating’’ requirement is -to

- insure. that the’ operating temperature of the buffing

medium exceeds the 400°F which the patent specifies as

the minimum required for densification (3059a, col. 6, line

23). As Van Ormer, the Carborundum Company abrasives .

man who collaborated with GPC in the development and

promotion of the patented process explained, the belt must

_ be heat-insulating in order to ‘‘minimize the transfer of

- ™ See claim 11 reprinted above at page 5.

PrN ae (GPC) patent No. 2,949,623, 2588a, col. 1, lines 36-

the heat from the wood into the belt and to maximize the

heat effect on the wood’’ (1901la). Both of these yielding

and heat insulating characteristics are provided in Alex-

-. ander’s process by the cork surface, cork being both yield-

ing and an outstanding heat insulator.

The surface of the belts used by USP in the accused

‘processes are neither yielding nor heat insulating. USP’s

aluminum oxide grits are extremely hard and rigid in com-

parison with the resilient cork particles of GPC’s cork belts.

‘Aluminum oxide grains have a’ hardness of 9.8 on the Moh

hardness scale (where diamond has a hardness of 10).

In contrast, cork has a hardness of less than 1 on. this

same scale -(187a). The aluminum oxide grits must be

_ hard and rigid in order to efficiently cut away the wood;

_ they cannot be accurately characterized as yielding. . Thus,

USP’S aluminum oxide belts are at the opposite end of .

the ‘‘yielding’? range from GPC’s cork belts, because they

are designed to cut away rather than pressure smooth

‘ (densify) the wood. —

Additionally, USP’s aluminum ae belts are not ‘heat

insulating’? as that term is used in the patent. The

aluminum oxide of the cutting surface of USP’s belts is 60

times poorer as a heat insulator than cork (3711a).° The

cork belt is also 24% times thicker than the grits (3709a-10a), .

so that the grits are effectively 150 times poorer as a heat

insulator. Indeed, USP’s aluminum oxide grit belts should

remain cool rather than hot, just the opposite of GPC’s

cork belt. ‘As abrasives expert Baker from Minnesota Min-

ing & Mfg. Company (3M) testified, :

‘*Heat i is one of the most detrimental factors in coated.

abrasive performance.” (352a) ”

In short, in the words ‘of another 3M abrasives man Judd,

the cork belt “is. a different animal’? from the aluminum

oxide belt Fee re

i‘ 14

" ‘The Accused Processes Use Only the Prior Art

Thieré is no dispute that the USP’s. ‘accused processes

‘ . used a prior art Timesaver machine and prior art sanding

belts. The Timesaver machine had become available in

mid-1954 (359a-360a, 862a), and the 8/0, 9/0 and 10/0 belts

had been available since the 1930’s (1829a).°

Timesavers Inc. issued operating instructions with each

of its machines. These instructions as early as. September

1954, told the operator exactly how to adjust the machine. .

in order to- ‘perform the accused processes, stating:

“Tf too much stock is being removed or if the pulp

between grain is being removed, causing an uneven

surface, move the feed rolls away from the machine

to set up a counter weight for the feed roll. This

will reduce the pressure on the feed roll. ... . It will

be necessary to run a few pieces to ascertain the best

position of the counter weights for your particular

_-job. In running wide stock it is sometimes advisable

to’ remove the counter weights as all the pressure

available is needed. . . . This gives three adjustments

to getting just the finish you want and also for clean-

' ing up stock even though rough. First is the adjust-

ment of the feed roll, next the grit of the abrasive and

finally the adjustment of the counter oe

At the right side of sedi is your infinitely

variable speed selector. . . . A little experimenting will

provide the best speed for your set up. Ordinarily

we suggest slower feed for rough work where con-

'. giderable stock has to be removed and faster speed for

polishing. «

_ The wonderful variety of abrasives offered by most

' manufacturers affords you the ey to get just

_.the right type for your work. . . To arrive at the best

* 39 Petitioner concedes that the machine ham in the seis

i a prior-art eupchine (Petition, p. 1).

abrasive, make some runs with different types to find

the kind which suits you best and saves you money us

(2684a-2685a )

This totally adequate prior art teaching was made even

more explicit by Timesaver’s. advertisements of January

and February, 1955* in the nationally distributed trade.

journals ‘‘Industrial Woodworking’ (PX TS 3, 2851a)

and ‘‘Veneers & Plywood’? (PX TS 5, 2852a). These ad-_ .

vertisements stated the Timesaver machine was ‘‘ideal for .

sanding and polishing” of plywoods, and that for this

purpose, ‘‘Grits as fine as 9/0 can be used successfully.’” .

_ These, Timesaver prior art publications are an apt de-

scription of the accused processes, which utilize the Time-

. Savers machine with the belts suggested by Timesavers to

’ be used with its machines, and adjusted as Timesavers .

suggested, to obtain the desired smodthness. |

ARGUMENT

1. Cortiovari Is Not to Be-Granted Merely to Review the

Weight of the Evidence

The petition misconceives the purpose of the writ of

certiorari. Among the ‘‘reasons”’ asserted by the petition

is GPC’s claim that the decision below is ‘‘clearly erro-

neous’’ (Petition, p. 22). GPC’s extended discussion of

evidence which was rejected by both lower courts strongly

-. suggests that GPC’s ‘‘clearly erroneous’’ claim is the only

true reason for GPC’s petition." But it is not the purpose

*° Both advertisements were published more than one’ year before

petitioner’s patent application was filed and therefore are

aha a any valid patent on this. ‘subject matter. (3.

* This was also thie basis asserted for GPC’s appeal to the Court

of Appeals. a atm Magee an Oey

ae ee ae cere ee a ane Soe

d hence, not clearly erroneous”, in accord with States v: v:

| Yillow Cob Co., 338 U. S. 338, 342 (1949), where thle Coon eald

“such a choice, between two permissible views of the weight of ‘evi-

dence is not ‘clearly ‘errorieous’.” ‘Not ‘only was’ this view'“

sible”, but the Court of Appeals fodnd’ ‘it — by”

evidence’ (Pet'n, p. om

NOT AIRE TOREEE MELEE LH LOR YAM ARE OO AY ED ORT E ! EI II SANTEE ASOLO, ORRIN ~~ ’

: : ee

163 (1922). me

393 (1

i Sieaene

of certiorari ‘‘merely to give the.defeated party in the eir-

cuit court of appeals another hearing’’.”. Certiorari is to

he granted only: where the situation involves ‘‘principles

the settlement of which is of importance to the public as

distinguished from that of the parties, and in cases where |

there is a real and embarrassing conflict of opinion snd

‘authority between the circuit courts of appeal”’, %

If there is anything unusual about this case insofar as»

‘this petition is. concerned, it- is the unusual thoroughness .

with which it was tried below. The District Court heard

twenty witnesses and received over 900 exhibits in evi-

dence. The case required forty trial days, and the length

of the: transcript exceeded 9,000 pages. The trial court

‘witnessed: numerous demonstrations on the issue of in-

fringement, which were conducted by both parties, both

in open court and in. the plant facilities 6f the respective

parties.* The issues were fully briefed, and oral argu-

ment extended over a period of five days.” Losing on the

infringement issue, GPC appealed to the Circuit

Court of Apftals. The record on appeal comprised nine

printed volumes of 3,915 pages. The issues were fully

briefed and argued, with the. briefs on all ‘the issues ag-

gregating 385 printed, extra-large pages, and the Court

_of Appeals affirmed the District Court’s finding of non-

infringement. Upon losing before the Court of Appeals,

petitioner moved for a rehearing inter alia on the very

point urged here, that ‘‘The Gow erred int concluding

22 Magnum Import Co. v. De ait Coty, 262 'U. 3 4

hp,

ane Corp. v. Western Well Works, 261 U. Ss. 387,

% Note Graver Tank & Mio. Co. v. Linde Air Products Co., 336

ei S. 271, 275 (1948), where this Court held that such thorough

trial proceedings make the “clearly erroneous” rule all the more

controlling. ;

_™ Petition, page 34. Pitan

ag.

oe .

that there was no infringement.’ The Court of Appeals ©

, again rejected GPC’s argument and denied rehearing.

Thus this case has been fully tried, briefed and ‘argued |

below on the same points and evidence urged here. Both *

lower courts adjudged noninfringement on conflicting evi-

_ dence. There is(fit public’need for this Court to re-weigh

the evidence. For this reason, and the reasons discussed

bere this Court should deny certiorari. ©

2.. ini Concurrent Findings of ‘Noninfringement Below

Are Correct

GPC has the burden of proving g infringement. It failed

to sustain that burden below. GPC’s ‘‘question’’ (petition,

p. 2} purports to shift this burden onto USP by suggesting »

‘that infringement exists because thet‘ patent claims do not

preclude’’ the variations from the patented process which

are embodied in the accused processes. Under GPC’s ‘Tule,

USP is an infringer unless the claims of th patent demon-

strate that USP’s variations do not infrin is not

the rule. GPC has the burden; USP need not pyove that it

did not infringe (although USP has more than adequately

proved this here). The real issue is whether GPC satisfied

its burden of producing sufficient persuasive evidence

below to prove infringement. Both lower courts said ‘‘no.’’

Both were correct in doing so, for the reasons now stated.

A. The Accused Processes Are Not Abrasive

As already shown, the non-abrasive nature of the buffing

in the patented process is a critical and essential feature

- ‘of the process. dt is a principal distinction over the prior

art. It was so described in the patent disclosure, se argued

in the Patent Office, and so claimed in the. pates.” It is

* Petition, page 67. : : gine >,

*" Pages 4-7 above. Logs ner

also clear from the patent itself and from GPC’s arguments

in the Patent Office that the expression ‘‘non-abrasive’’ as

applied to the buffing medium means just what one would

think it means, i.e., a buffing surface which does not ‘‘re-

move a noticeable amount of wood”’ or ‘*produce a notice-

able amount of sander dust’’ when it is rubbed —— the

-wood. (Pages 6-7 above. sh “

The District Court recognized the cinta faa ee

of the patented process, and held that the accused processes —

were abrasive and thus did not infringe. The District Court

_ held that the patent ‘‘clearly contemplates the use of buffing

belts that are non-abrasive’’, as opposed to the accused

processes which the Court held involved the use of ‘‘abra-

sives’”. The District Court concluded that there was ‘‘no

foundation upon which an infringement could be based.’

The Court of Appeals expliditly affirmed this finding

and supplemented it by holding:

'¢¢General Plywood described its julie belt as ‘non-

abrasive’ or ‘relatively non-abrasive,’ ‘non-metallic,’

‘flexible’ and ‘yielding.’ None of these descriptive .

‘terms are appropriate to describe the 10/0 aluminum

oxide grit sandpapers which Umipes States . Plywood

. employed.’’”

The Court of Appeals ‘dite discussed apc ’s argument that

the abrasive belts used in the accused processes became

_ non-abrasive with use and thus began to infringe after

some indeterminate period of use, and held:

_* “We do not ignore General. Plywood’s argument that

JU. 8. Plywood’s results were really: achieved by either

~ the crushing of the grit on the ‘modified’ belts, or the

use 2 of worn belts, or by the en filling of the belts

= Petition, page 41.

*° Petition; page 57.

4 = ‘ / 19

- with wood particles Vie to terminate any substan-~

tial abrasive action. We have, however, noted in the

record testimony which certainly constituted substan-

tial evidence that the 10/0,sanding employed by U. 8.

Plywood did remove significant, amounts of stock.

Observers testified to visible dust and the necessity of.

dust collectors on the ‘Micro-Fine’ process where Gen-

eral Plywood contends such were not a in.

microsealing. ‘was ,

The District Court had implicitly rejected this same argu-

ment by GPC by holding that no GPC witnesses ‘‘were

ever able to give the Court a satisfactory formula by which

it could be told’’ when these belts ‘‘ceased to be abrasive

and became an _—— of the process in the Alexander

patent.’

Despite these rebuffs by both lower courts on. this con-

tention as to assertedly specially ‘‘modified’’ belts which

supposedly fill with sander dust in use, GPC submits the

same argument to this Court on this petition (pp. 10-14).

These findings by the lower courts are fully supported

bythe record. As shown above, abrasivity of the accused

processes was proved by photographs,” by measurements _

of wood removal,” by plant demonstrations for the Court

* Petition, page 58.

5 Petition, page 42.

* Petitioner propagandizes by calling USP’s belts “special

dulled”. (Petition, p. 11). In this art “dulling” does not nen

diminishing’ the chradvemnie or sanding ability of the individual

grits in any way, but refers only to crushing of those few grits

which may temporarily project above the others so as to score

too deeply the first few panels being sanded (18219-18278).

** PX 1024, explained at 519a-543a.

* PX D Gen’l 348 (2509a) explained at 196a-230a :

PX 1004 (28872) ‘ 232a-243a

- PX 1005 (23893a “ & 245a-249a

PX 1006 (2900a “ © 250a-255a

PX 1039-51 (Physicals) “ — “ 623a-640a

during the trial, by courtroom demonstrations including

microscopic inspection” and by the testimony of numerous

witnesses about ‘the clouds of dust produced by the ac-

cused processes.”

_ The Court of Appeals concluded its discussion on non-

- infringement by pointing out that:

‘*¢W)hat U. S. Plywood did was essentiaily to move a

fine sanding operation which was already being used © |

‘in the industry for finish polishing to an earlier point

in the production process and apply it to wood in the

’ white panels. If ‘Alexander’s patent should be

broadly enough construed so as to apply to this op-

eration, then-it would be hard to ascribe to it the

novelty, as opposed to the prior art, which is required |

for invention.’ Mie

This also is supported by the record. -

GPC affixed to the inside back cover of its petition a

small piece of the finest sandpaper (10/0 grit) used in some

of the accused processes.** This was apparently done as

an invitation to this Court to touch the sandpaper to de-

termine its — GPC would apparently ‘substi-

USP plant demonstration at 975-9784; re plant ye

stration at 1465a-1490a.

%° PX 1019-1020 (Physicals), 406a-419a ; 258a-273a,

** Footnote 15, supra.

* GPC’s contention that pressures and sae are different from

the prior art is irrelevant. Merely the adjustments built.

into the prior art Timesavers machine to in desired results is <

obviously within the skill of the calling and. not Alexander’s in-

vention. See Kwik-Set Inc. v. Welch nites Juice Co., 86 F. 2d 945,

947 (2d Cir. 1936). -

*° Petition, page 58.

“See pages 14-15 above. tat

*: The accused processes also use 8/0 and 9/0 sandi belts which .

are rar coarser than the 10/0 belts affixed to GPC’s eee

an < —_

tute a touch test for the evidence in this case despite

GPC’s own caveat to the Patent Office that,

‘‘Sandpaper may feel smooth and still be abrasive.’

(2980a )

Samples of these belts were closely inspeeted by both

lower courts. The District Court became intimately

familiar with them during the extended forty-day trial. -

Both lower courts were convinced by the overwhelming

evidence of abrasivenéss that these fine grit sandpapers

are abrasive. This conclusion can be confirmed by simply

running one’s fingernails across the surface of these

belts.“ This finding of abrasiveness was one of fact.

‘It was not only: not clearly erroneous—it was the only

reasonable conclusion to be drawn from the evidence.

B. The Accused Processes Do Not Densify the Wood

The patent states unequivocally that operating condi-

tions ‘‘must be sufficient to produce’’ densification (3059a,

col. 6, line 69). GPC admitted in its brief to the Court of

.Appeals quoted above at page 5, that the patent ‘‘re-

quires’’ densification. .

USP’s tests described above at pages 12-13 proved that .

no densification occurs in the accused processes.

‘42 If the courts below had concluded otherwise, there would have

been a conflict with the Eighth Circuit Court of Appeals decision that

10/0 sandpaper is abrasive in S. S. Kresge Co. v. Davies, 112 F. 2d

708 (8th Cir. 1940).

** As this Court held in Stilz v. United States, 269 U. S. 144,

147-8 (1925), “Infringement is a question of fact .. .. This Court

accepts the finding of fact made by the Court of Claims and cannot

review them ne precedents), and even where a finding deter-

' mines a mix

Court is able to te the question to see. whether there is a

mistake of law. (Citing eo). Our consideration of the case

is confined to questions. o s

law.”

question of law and fact, it is conclusive unless the -

~y, .

The Court of Appeals explicitly agreed by holding that _

all USP did was ‘‘essentially’’ to adapt a ‘‘fine sanding

operation which was already being used in the industry for

finish polishing’’ to use in its accused operations (Petition,

--—p. 58). ,

The accused processes therefore do not infringe because

they do not densify.

Cc. The Accused Processes Do Not Use “Heat Insulating” or

“Yielding” Belts

The patent claims specify that the buffing surface of the

belt used in the patented process must be ‘‘heat insulating’

and ‘‘yielding’’. The reasons for this are discussed above

at page 12. |

The Court of ‘Appeals held that these terms were not

W. ropriate to describe the 10/0 aluminum oxide grit

apers’’ which USP used in the accused operation ~

(Petition, p. 57). This holding is fully supported by the

‘record as shown above at pages 12-13.

This is a further: tespect i in which the accused processes -

are non-infringing, and in which the concurring decisions

below are correct. :

D. ‘There Is\No Infringement Because the Accused Process

. Uses Only Prior Art Teachings

As this Court held in the A&P case,“

* ‘The function of a patent is to add to the sum of use-

ful knowledge. Patents cannot: be sustained, when on

_the contrary, their effect is to subtract from former

“resources freely available to skilled artisans.’ —

It therefote follows that, just as the prior art cannot be

mt so also the prior art cannot infringe. - it were

"Great A. & P. Tea Co. v. Supermarket Equip. Corp. 340.U. S.

147, 152 (1950). 7

otherwise, patents might ‘‘subtract from former resources

freely available”’ to all.* Everyone is free to use the prior

art regardless of the asserted scope.of the patent claims. -

Moreover it is not necessary that the prior art be used

exactly or identically; a patent cannot monopolize the

application of ordinary skill to the prior art, and. modifica-

tion of the prior art within the skill of the ordinary person

in the art is similarly immune from a charge of infringe-

ment, even where estopped to contest validity: —

‘**In other words if everything i in defendant’ 8 construc-

tion was taught by the prior art and no included_,

therein other than the application of such art, plus

ordinary mechanical skill, then the mere fact that the

device constructed reads upon the claims of patents

the validity of which it is estopped to deny, does not

spell infringement.’’ Casco Products Corp. v. Sinko .

Tool and Mfg. Co., 116 F. ad 119, 121 (7 Cir. 1940).

Thus, when the accused enevations arg simply ‘the ap-

plication of [the prior] art .. . plus ordinary mechanical

skill,’’ as they are here, the patentee i is placed in a dilemma: .

If the patent is broad enough to cover (or differs insig-

nificantly from) the accused process, it is necessarily invalid

because it also covers anticipating or invalidating prior

art.“ On the other hand, if the patent is not-that broad,

there is no infringement. . In either case, there can be no:

liability by the defendant. |

It is shown above-at page 14 that the accused operations

are nothing more than that which is set forth in the in-

structions of the prior art Timesavers publications. The

Court of Appeals held that they are ‘‘essentially’’ an

‘adaptation of a prior art fine sanding operation (Petition,

Pe 58). These accused operations therefore: cannot’ in-

arid,

4¢“That which infri , if later, would anticipate if earlier.”

Knapp v. Morss, 150 U. S. 221, 228 (1893).

fringe the patent.’ If they are described by the language

| invalid, ** and not infringed for this reason.

. Therefore, the petition should be denied beesuse there

is no merit in petitioner’s contentions.

3. Petitioner's Question. Is Fanciful and Not emnnsinl by

the Record a

The petition should. also be denied since the sole ques-

tion presented is entirely fanciful and does not exist -in

this case.

Petitioner’s ‘‘Question’’ (reproduced above in ietete

5) has no basis in fact or in this record. It is purely fanci-

ful, being premised on four assumptions, none of which is

supported by the record. These are:

_ 1, That the patented process represents a ‘‘substan-

tial advance in the art.”

2. That the lower courts held that patent infringe-

ment was avoided merely by “varying the details

of the apparatus se nid ia in performing the

process.’’

3. That the sccnsed processes involved “no departure

from the mode of operation or the result’’ of the

patented process.

4. That the ‘‘ patent claims do not preclude’’ the varia-

tions employed in the accused processes.

Treating these unfounded assumptions seriatim, the

patented process is not a ‘‘substantial advance in the art.’’.

The machine and belt used in the patented process are.

“both old, and the speed and. pressure with which ‘the belt. -

Tubs against the wood is also old. The patentee himself

47 Ibid

| on

has admitted this.“ “Nor was the ideayof polishing wood

by nonabrasively burnishing it new, the patent admitting

that ‘‘wood burnishing operations which involve friction-

ally heating wood with cloth’’ were old (3060a, col. 8, lines _

14-16). | i.

Simply stated, the patented process merely adapted a

known metal polishing process to wood polishing in a man-

ner clearly suggested by the art. This is how GPC admits

the patented process was first performed.” ’

“* The patentee Alexander testified as follows po pt :

. “Q. Now, I just want to make sure thaf’ the record

clearly on a number of points that have been labored before.

You. didn’t invent the Timesaver. Machine, did you, Mr.

Alexander? } on: ;

A. No, sir, I did not. ; .

Q. Nor its range of feed speeds? ;, }

A. No, sir, I did not. -

Q. Or its range of pressures ?

A. No, sir, I did not.

Q. Or its belt speed? .

A. No, sir; I did not.‘ ° .

Q. The ranges of feed speeds and pressures and the belt speed

are all within the range of Microsealing, are they not? °

Q. I mean to Microseal, you will operate withiw the range of

feed speeds of the Timesaver Machine, within the range of pres-

sures of the Timesaver Machine and you can operate at the belt

speed of the Timesaver Machine, isn’t that correct?

A. If I understand you correctly, it is, sir.

2. — didn’t invent the cork belt, did you? See

. No, sir. -- _

Q. Or any of the other ‘belts with which we have been con-

cerned from 1/0 through 10/0? : ,

A. I had no part in inventing any of those belts, sir.”

*° The patentee Alexander in an affidavit in his corresponding

Canadian patent application attested that the first time his patented

process was performed was when he “caused a . . . door skin panel

to be glossified by ... . Judd [3M salesman] on a 24-inch Timesaver

machine located in Louisville — 12 of the Reynolds Metals Com-

pany” (3757a). Reynolds had a Titnesaver machine and had been‘

~~ using: it with a cork belt for polishing aluminum panels (83a).

Judd testified that he merely adjusted the machine for the width of

the wood panel, and that it was then, “just a matter of feeding the

panels into the machine. . .” (84a). us, the identical machine,

with an identical cork belt, was merely — by niinor obvious

adjustments from polishing aluminum'to pelishing wood. °

GPC confuses commercial value with entaitatte prog-

ress over the prior art. A.change in a process may be

an insignificant, or even a step backward, over the pret

art and still have commercial value. A myriad of fac

having nothing to do with patentability éombine to a set

- Court recently held, commercial value ‘is but one of the

*‘secondary considerations.” It certainly cannot be

equated with a showing of a ‘‘substantial’’ patentable ad-

vance as urged by GPC, where as here the more direct

evidence shows that the advance was quite minor if in-

deed any advance at all. o

’ ‘As to the second invalid premise of’ petitioner’s ques-

tion, the lower courts did not base their conclusions of

noninfringement on the mere ‘‘varying the details of the

apparatus’? used in the accused and the patented proc-

esses. An essential requisite of the patented process is a-

tubbing medium of specific and special characteristics, i.e.,

the cork (or other nonabrasive) belt, identified by the Court |

of Appeals as a novel feature which when combined with

- others distinguished the patent from the prior art (Peti-

' .- tion, p. 54). The use of this cork belt is no mere ‘‘detail’’

but the heart of the process, and thé nonabrasive charac-

teristics of this belt constituted the’factor argued by GPC

most strenuously before the Patent Office as justifying

allowance of the patent. These same characteristics were

relied on by the Patent Office Board of Appeals in granting

the patent.: The particular belt is therefore a sine qua non

of the patented process, not a.‘‘detail’’.

- - USP’s use of a distinctively different belt (the 8/0; 9/0

; and 10/0 abrasive sanding belts) was no minor; trival

variation, but rather an omission of an essential feature

(” : and a difference creating an indapéndgnt and distinctive

result, as shown above.” i. triad on |

____ Graham ¥. John Deere Co., 383 U.S, 1; bod (1966),

Tie ome S12 eat V8 = 4

? . : . 44

Likewise, the. third premise of petitioner’s tion is

* wrong. The accused processes involve a basic “epaar

’ from the mode de of operation [and] result’’ of the paten

process. The accused processes are abrasive and the

patented process is nonabrasive. The accused process is a

sanding process, producing no densification, while the

patented process is a buffing process,. for whose patent- .

' ability densification is essential. These differences in mode

and result lie at the heart of this lawsuit."

It is true that both the accused and the patented proc-

esses use the same machine, but this machine is ‘admittedly

old. It is also true that both the accused and patented

processes use prior-art belts, which, though different from

each other, were adapted for use on that prior-art machine.

As to these featyres, there is a similarity between the -

- accused cs patented processes, but these are prior-art

features. ‘The public is therefore free to,use. them.” xd

similarity™between the processes stops there. The

esses differ in that the patented process buffs nonabr ely G :

to densify wood, whereas the accused procestes rub aw

sively to sand the wood.™ | >

These differences are controlling here; they constitute a

basic ‘‘departure from the mode of operation [and] result’’

'., ‘of the patented. process.

As to the fourth and final false premise of GPC’s ques-

tion, the patent claims do both ‘‘preclude” and. exclude

the differences employed in the accused process. GPC

itself here violates the rule which it blames the lower |

courts of. violating, ‘namely, that the claims are the ‘‘meas-

ure of the invention.’ All of the claims require the use

’

pis Ibid.

“88 See pages 14-15 and 22-24, supra.

83 See pages 4-11, supra.

* Petition, page 23

- 8

of a nonabrasive rubbing mioiienn, Alt claims require

rubbing non-abrasively.. All require densifying. Most

require a ‘‘yielding”’ and ‘‘héat-insulating’* rubbing sur-

: face. Both lower courts held that the rubbing belts used

‘in the accused process were. abrasive, not yielding, and |

' not heat-insulating.“*. The patent claims therefore do

directly preclude any possible infringement by the accused

- processes. These differences go to the very’ essence of the -

patented invention. — ,

Thus, petitioner’ s question is ‘wholly fanciful. It has no

_ relation to. the facts here. No writ should be —

upon it.

'. 4. There Are Ne Conflicts or Pablic Questions or Other

Reasons s Warranting Review Here

GPC states a number of reasons for requesting certiorari

(Petition, pp. 22-23), none of which has merit here.

For its first reason, GPC asserts that the decision ‘below

is in supposed conflict with the rule that ‘‘infringement

of a process patent is not avoided by using apparatus

other than that disclosed in the patent. so long as the

nature of the process and its results remain the same.’’

The lower court decisions do not conflict ‘with this rule;

the rule is simply not applicable here. It may apply in

the case of a process which is independent of apparatus,

as in the citations given by petitioner. Here, however, the

process is necessarily limited -to specific apparatus, namely, -

the nonabrasive belt, whose characteristics as already

patent. 3 The rule coferved to is therefore not pertinent.

_ Moreover, as shown above, the lower courts found non-

infringement because of the basic difference between. the

patented nonabrasive densifying: process and the accused

_ abrasive sanding processes. This difference is basic to the

patented process. It is far more than a mere difference in

the apparatus. This first reason is thus non-existent.

4 See pages 4-13 and 17-22, supra.

GPC’s second reason given for requesting the writ is

that the question presented is of *‘major -importance’’

because it ‘‘is very likely to be faced’ with respect to every.

valid process patent’’ particularly insofar as it concerns

the problem of determining a patent scope ‘‘commensu--

rate’’ with the ‘‘substantial advance’’ of the patent. As

shown above, the question presented by this petition i _

wholly fanciful. =~ xt

Moreover, beyond making the nage assertion, GPC fails

to show any public importance to this question, or tliat the

courts below failed to follow: the principles laid down by

this Court, so as to create any ‘‘need to affirm’ any prin-

_ ciple, Neither the lower courts, nor any other courts have

for this Court to ‘‘reaffirm’’ any rule, as sought by GPC.

Virtually every patent case involves the problem of deter-

mining the scope of the.patent with regard to the value |

. of the patentable contribution. Suck a determination is

completely factual in‘ character. This Court cannot review -

the facts in all of these cases simply because one of the.

parties is, dissatisfied with the determinations below.

GPC’s third reason is that the decisions below are

clearly. erroneous. It is not the function or policy of this

Court to review findings of fact which are concurred in

by both lower courts. Certiorari is not just another avenue

‘for rearguing ‘the evidence on the multitude of factual

issues that are. embodied in the concurring Jndgments

below. :

No effort i is mode! in this brief to rebut all the argumen-

tative ‘facts’? asserted in the- petition; however, it has

been shown above that the basic finding of nonabrasiveness

of the patented process and abrasiveness of the accused °

processes is not only not clearly erronegus, but is clearly

correct. Suffice it to say as to thé other ‘‘facts’’ urged by

GPC, they have all been urged before in the lower courts,

and the lower courts have rejected GPC’s contentions.

Petitioner’s contentions (Petition, pp. 22-23) that the

courts below failed to follow three stated ‘‘rules’’ are

equally without merit. As to the first two ‘‘rules’’, relat-

ing to the claims being the measure of the ‘‘invention’’,

and construing the claims according to the disclosure, the

courts below specifically found that the very language of

the patent claims finds no response in the accused proc-

- esses, in any particular vital to the patent process...

‘Petitioner’s attempts to argue at’ page 29 that the deci-

sions below are wrong because’ (petitioner asserts) its

Tubbing belts. supposedly remove as much-~wood as the __

’ accused sanding belts, and because (petitioner asserts)

_ the courts below supposedly: fail to consider this point, .

place petitioner squarely on the horns of a dilemma. If ~

petitioner is wrong on this ‘‘fact’’, there can be no in-

fringement. If petitioner should be assumed right as to.

‘the “‘fact’’, then petitioner perpetrated a fraud on: the

Patent’ Office by falsely representing (and vehemently so)

that no wood removal or sander dust is produced, and

3 the. patented process then becomes equivalent to and thus

. invalid over the prior art sanding processes.

' ‘The fact is that the accused ‘processes produce substan-

‘tial sander dust and remove. substantial stock, as the Court

of Appeals held.* .Heré again GPC seeks. to have this

Court review merely the weight of evidence, and thus

there is no merit to this a sega reason \ for the writ sought —

ey engine /

As ‘to the third “ple”? of liberal denstraciion for which

petitioner pleads, it is sufficient to note that the estoppel .

created by GPC’s amendments’ and arguments in success-

fully: persuading the Paten Office: to ‘grant the patent

preclude ‘enlarging the patent seopé, even if it were

' (incorrectly) assumed that there is any a aeerepe be-

‘tween the re ae oe. ry: sists

eens

_ Mt sai _pibstantial

A eat pers hae ie e =

_ + This petition inyolves no more than the narrow-question

of patent infringement, which is of interest ofly to the -

parties. The concurrent judgments of noninfringement

below were reached by correctly applying rules of claim —

construction which are in complete accord with principles

enunciated by. this Court. In sum, there aré no conflicts

or important questions | presented by this Buen. which

warrant review by this Court. ere

In the words of Mr. Justice Story, in Oosen seeaiaanay

Co. v. Fields, 2 Story 59, 18 Fed. Cas. No. 10,406, quoted _

in Toledo Scale \ Co. v: Computer: Scale Co., 261 U. 8.

399, 425 (1923) : his Faq et

‘*It is for the public interest and policy to.make an

*-' end to’ litigation, or, as was pointedly said bya great

jurist, that suits may not be immortal, while men are

mortal.’ ) i, ; .

The petition should be denied.

Respectfully submitted,

July 3, 1967.

ae yee . Morris Retson, :

405 Lexington Avenue, |

_ New York, N.Y. 10017,

Attorney for Respondent. —

Of Counsel: ;

James M. Herman,

601 Fifth Avenue,

_ . New York, N. Y. 10017.

Wuuiasm F. Duprnz, JR.,

“405. Lexington Avenue, . °

_ New York, N. Y. 10017. . .

SUPPLEMENTAL APPENDIX —/

- Reply Brief bes Defendant-Cross-Appellee on |

4 se censiiian Na, 16,198. |

me Sha Sorte 9s rovngin that if theists 00 donsifon

tion the patent is flatly invalid on that fact alone, for the

patent requires.it. If there were no- densification in the

practice of the microseal process, the patent would be in-

valid and USP would not have to turn to some distorted -

argument of fraud on the Patent Office in order to estab-

lish that invalidity; and-if there were no densification in

the praetice of USP’s aceused_process, theré would be no

infringement and USP would not have to turn to a

ersatz argument it présents in this section of its brief,

for the question of infringement would be resolved. * * *

a et Bi NIP oe et ach Oe

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