Petition for Writ of Certiorari — Chemical Cleaning, Inc. v. Dow Chemical Co.

TT Pa

y, CBRARY

SUPREME COURT. U. a

Jon F. DATS, even

% P a Pat

‘Supreme Court of the United States

> Ocroper Term, 1967

AT 3

Me UGS

; CHEMIOAL Cahn Inc., JOHN H. RUSCH and

' GEORGE Lewis, "Petitioners

v. , |

Tue Dow CHEMICAL Company, Respondent —

‘PETITION FOR WRIT OF CERTIORARI TO THE UNITED

STATES. COURT OF APPEALS FOR THE )

| ‘FIFTH CIRCUIT

Attorney for Petitioners

760 Warner Bldg.

Washington, D. C. 20004

Paras or Byson S. Apams Paiuwrina, Inc., Wasumwcrom, D.C.

SS,

" Cas

3 | . nie tore : ok, a

: r§ i ioe mS | wy ~

| — INDEX -

: sabia =: Page

Citation of Opinions Below ....... guerdvtansecheertes - }

Jurisdiction caaneees ecb ce cwseveveeseeoere ore ‘coos.

: Questions Presented for Review ........+.. Sanne or

Constitutional Provisions and ‘Statutes Involved bueee 7 4

Basis for Federal Jurisdiction of District Court .... ae 2

Statement of the Case Sie cauepeocesons pevasuve 5

_ Reasons. for Granting the Writ FEE Ts oes 10

INDEX TO APPENDIX :

’ Order of Dajunction ree ‘su ePkegaerttse weasewe ts Te

| Conclusions. of-Law ....... 2 ENRON Py tenor PED a

Judgment Filed Jan. 7, 1966 (District Court) ....... “38

Opinion (Court of Appeals) June 15, WOE se isacesuss

‘Denial of Rehearing Petition ...... er ee Pe

Judgment (Court of Appeals) iaceeceees wesececeeccs Sa”

Minute’ Entry on n Motion To Dismiss (District Court) 10a

) TABLE OF CASES:

| California Artificial Stone Paving Co. ‘Ve Molitar, 113

U.S. 609 ..... ecieaue VecsWespetes auusees +++, 9, 12

ie Graver Tank & Mfg. Co.,- Inc. v. ‘Linde Air Products |

Co., 389 US. UG oi... cccccccccvess avicevanewane 8, 10

| * pation y. | Stone, 178 F. 24515 .. 0... cesses seen ee Ty 12

- Scott “pool Co. v. Marcalus Mfg. Co. , Ine, 326 US.

ee aude y yay eee uant 8.12

|

|

es IN THE

Supreme Court of the Hnited Sites

Ocronus TERM, 1967

°

. No.

GuimicaL CLEANING, INc., Jonn H. Ruscx and

‘) —-- Gzorce Lewis, Petitioners . |

4

% “

: Ve

Go

“Tue Dow CHEMICAL Company, Respondent

eo er

d

"PETITION FOR WRIT OF CERTIORARI TO “THE UNITED

STATES COURT OF APPEALS FOR'THE —

: FIFTH CIRCUIT

- Petitioners, Chemical Cleaning, Inc., et al, ania that .

a writ of certiorari issue to review the "judgment of the _

United States Court of Appeals. for the Fifth Circuit, ©

which affirmed the holding of, the United States Dis-

trict Court for the Eastern District of Louisiana —

— were guilty of contempt. :

——

a

- 3

_ CITATIONS TO OPINIONS BELOW

The opinion of the Court of Appeals (App. .. infra,

p. 4a) is reported at 379 F2d 294, and the Judgment

is not reported (App.; infra, p. 9a). The Order of —

' Injunction issued by the Distritt.Court resulting from

. the original action between the parties (App., infra, .

p. lx) is not reported. The Conclusions of Law (App.,

_ infra, p. 2a) and Judgment (App., infra, p..3a) of the

_- District Court on the contempt hearing to show cause

are not reported. Judgment of the District Court on

Petitioners’ Motion to Dismiss the Order to Show

Cause is not reported (App. i infra, 9 Wa).

. JURISDICTION |

‘The jurisdiction of this Court is invoked under .

Title 28 USC 1254(1). . While review is admittedly

discretionary, it is believed that this petition should

be granted under Rule 19 of this Court since the Court

of Appeals has decided federal questions in a way in. _

-eonflict with applicable decisions of this Court ; has. -

also departed from the accepted and usual éourse of —

_ judicial proceedings; and has furthermore sanctioned es

such a departure by the District Court, as to call for

- an exercise of this Court’s power of supervision, ~

The Judgment entered on June 15, 1967 of the’ Court :

of Appeals is sought to be reviewed. Petition for Re-

hearing wag,denied on July.31, 1967. In addition, the

District Court’s judgment entered on June 21, 1963.

on the Petitioners’ Motion to Dismiss is sought to be

. yeviewed. The Motion to Dismiss ‘was -presented to

the Court of Appeals for review but was not considered

by the Court of Appeals i in its opinion and judgment. |

_ The statutory provision believed to confer on this ’

_ court meerauaas is 35 USC 282 and 283. _

)

©

| 3

: QUESTIONS PRESENTED FOR REVIEW

1. Ina contempt action for patent infringement in

‘which the accused is estopped -from contesting the —

validity. of..the patent in suit,. is the ‘accused also

estopped from asserting his right to use the prior art |

“invention of another expired patent which: anticipates —

the invention of ‘the patent in suit, and is the use of.

the inverition of the expired patent by the accused a

complete defense. to the contempt action?

eee | Tn a eontempt action .for patent. infringement,

: equivalency established between the accused process |

‘and that of the patent in suit where only facts are con-

- gidered that both processes do the samé work and ac- ©

complish substantially the same result, or does a de-

términation of equivalency require additional facts to

-be considered, such:.as the context: of the patent, the ©

prior art, the scope of the claims of the patent, ete. ?

3. Ina contempt’ action for patent infringement, is

- the accused permitted to show that he is practicing the —

_ process of his own patent, and that his process does not -

read on the claims of the patent in suit, thereby to estab-

lish that the difference between the two: processes is

E not colorable and that. a fair ground of doubt exists as _

to the wrongfulness of his conduct, thereby requiring -

wos that the issues be tried, not in a contempt proceeding,

but in a real trial of the issues | arising on. the two

eS"

‘

oly.

i a

a.

~ 4 ;

- CONSTITUTIONAL PROVISIONS AND STATUTES —

INVOLVED.

This Case involves: ae oF a

, \' fhe. Due “Process: Clause of Aiedinais 5 of the

U.S. Constitution which provides i in. pertinent part:

* * * nor shall any person * * * be deprived * * * -

"propery, without due process of law okt

+ * * * * 9

o

35 USO 282 provides in pertinent: part: |

+ *\* * The following shall be defenses in any ac-

tion involving the validity or infringement of a_

patent, and shall be pleaded :

(1) Noninfringement, absence of — for

infringement, or unenforceability, * * *.

: * pe RE a

35 USO 283 provides:

The several courts having jurisdiction of cases

under this title may grant injunctions in accord-

ance with principles of equity to prevent the viola- ~~.

tion of any right‘ secured by patent, on such terms

as the court deems reasonable.

* *% ¥ * .- %* ‘

~28 USC 1254(1) provides:

- Courts of appeals 3 certiorari—

Casés in the courts of appeals may be reviewed by |

the Supreme Court by the following methods:

(1) By writ of certiorari granted upon:the peti-

tion of any Pian to any civil * * * case * * * after

rendition o sudgment or decree * * *

*

t

wu

.

. 5 a

_ "BASIS FOR FEDERAL JURISDICTION OF

, DISTRICTCOURT:

The jurisdiction of the District Court as a court of

first instance is invoked under: ©?’

- 28 USC 1400 provides in pertinent part |

Pattee |

*** (b) Any civil action for patent infringement,

may be brought in the judicial district where the

. defendant resides, * * *. é

‘ pe pas a. # * * *

: Y: | STATEMENT OF THE CASE

ee The petitioners were. found guilty of civil contempt ;

in infringing the respondent’s patent No. 2,959,555.

‘The patent claims cover a -one-step process using an. a

w 2.4 dqueous acid solution for cleaning and removing in-

erustations from the inside walls of steam generating

-boilers. The claims state that the solution also con-

tains one of five specific chemical compounds (urea

__ derivatives), which compounds prevent copper. (dis-

Pa solved in the solution from the, incristations) ‘from

- being re-deposited ‘on the inside boiler surfaces. As a

practical matter, only one of the claimed compounds -

is used. commercially and that is thiourea.

. ° Petitioners were using the process and thiourea of ~

_ the respondent’s patent atabout the time the patent is-

sued in November of 1960. Thereafter, petitioners

started negotiations with respondent for a license under

the patent, and while negotiations were in progress,

_petitioners were sued for infringement of the patent

by respondent/on October 26, 1961. Petitioners de-

Sided’ not t contest the infringement suit and entered

into a consent decree on December 7, 1961. |

“

oe .

6

> Petitioners thereafter began to practice a two-step

process for cleaning and removing the incrustations

from boiler walls which mainly comprised an alkaline

; solution. The two-step process,is the subject matter

. of US. patent. No. 3,000,767 owned by the petitioners.

An aspect of this two-step process is one final step of

clean-up wherein thiourea is used to keep copper in

solution and is somewhat similar to the process step

_ of respondents patent 2,959,555. _Accordingly, peti-

tioners were apprehensive, because of the injunction,

_ about the use of thiourea in the clean-up step and:

another chemical compound was’ developed, through

_ extensive research, which kept copper in solution. A

ee)

patent was applied for on the use of the newly de-

veloped compound, monomethylolthiourea, in the proc-: |

ess and the patent issued to petitioner Chemical Clean- —

ing, Inc. as Patent No. 3,074,825. The US. Pitent Office. -

Was aware of respondents patént 555 and considered

it,as prior art when it issued petitioners. patent

3,074,825. ; |

Respondent filed a contempt action alleging that.

petitioners’ use of their newly-developed ‘compound

was a violation of the injunction of the Consent Décree

since it infringed the respondents’ patent 555. Peti-

tioners denied the allegation. The case was heard in —

July, 1962, before the District Court but no decision

was given by the Court, due to the almost unheard, of

situation, that the Court. Reporter was incompetent

and ‘the two days of trial were lost. Although con- —

tempt actions should be promptly heard, nothing

further trauspired until June 16, 1963 wher petitioners

(uneagy at the delay and failure to reschedule the

hearing) filed a Motion, To Dismiss the Contempt

Action based on legal authorities which held that if -

x

7

the alleged conteniptor’s conduct was not merely ‘color-

able and that a fair ground of doubt existed, that the

contempt action should be dismissed. California Arti-

_ — ficial Stone Paving Co. v. Molitar, 113, U.S. 609, 618;

- 5 8. Ot. 618, 622. Patton v. Stone, 178 F2nd 515. It —

' -was argued that since petitioners have a patent 825

on their process and that the patent did not vis-a-vis

- conflict with respondents patent 555, that clearly the

alleged contemptuous act was not colorable anda fair

ground of doubt existed. The District Court sum-

-marily dismissed the Motion To Dismiss with no

opinion. « * pas’

Not until October, 1964 (two years and 3 months

after the first hearing) did the District Court hold a _

re-hearing on the contempt action: The employee ex-

‘pert witness for the respondents and evidence he pre-

sented were in almost total disagreement with the peti-

tioners’ independent expert witnesses and their evi-

dence as to the facts on the question*of whether or not

the petitioners” patented’ compound, monomethyle-

thiourea, was the factual equivalent of respondents’

eompound thiourea. Arguments were again presented

to the District Court that the contempt action should

be dismissed and a regular infringement action be in-

stituted to determine the legal rights involved among

the patents of petitioners and respondent.

(_“-

Ea _ Furthermore, at the ‘hearing the petitioners at-

tempted and were denied entry into evidence an ex-

pired patent. The purpose was not to attack validity —

of the respondent’s patent, but for the purpose of

establishing that, in the event the District Court held

° that the use of petitioner’s patented compound mono-

methylolthiourea, was in fact the use of thiourea, then

petitioners were following the process of the expired

—«8

\ ‘

patent. The expired patent showed the-use of thiourea

in a cleaning solution for removing incrustations from

boiler walls, and, therefore, infringement was avoided

in accordance with the concept that anyone is free to

_ practice the teachings of an expired patent. The right

, to use the teachings, of an expired patent gre para-

- mount, and is a complete defense to an infringement

action where the alleged infringing device is ‘that of -

- the expired patent. Scott Paper Co. v. M. arenes Mu Mfg.

Co., Inc. 326 US 249, .257.

The District Court, on anuary 7, 1966 (one year and

3 months after the second hearing), entered judgment

adjudging petitioners guilty of willful civil contempt. —

No opinion was written by the District Court and it

‘adopted 28 Findings of Fact which respondent pre-

sented (although not called for by the Court) with its

- post-trial brief. No attempt’ was: made by the Dis-

trict Court to explain how it arrived at the conclusion

that the contempt was willful in view of the fact peti- v

tioners were practicing their own patent and also.that~—

the respective experts were in complete disagreement

_ on the facts. The. Distriet Court also held that peti-

tioners’ solution containing the compound, mono- -

methylolthiourea, was the full equivalent ‘of the solu-

tion of the patent in suit since jt does the same work .

and accomplishes the same t as thiourea, citing

Graver Tank & Mfg. Co., Inc. v. Linde Air Products —

Co., 1950, 339 US 605, 608, 609. Furthermore, the Dis-

trict Court held that the only question in the contempt’

proceeding was whether the modified composition is

| equivalent to the original in relation to the patent in

_- suit. The Court completely ignored the other facts (set

forth in detail in petitioners’ post-trial brief) necessary

to be considered before infringement can be found based

_——

od

9

on the Graver Tank.case, It would appear that the com-

plexity of the chemistry involved.in the facts, and the

legal principles involved. in patent, infringement (es-

pecially where equivalency is involved) were more -—,

the District Court could cope with *

_ On the appeal taken to the Court of Appeals, for

the purpose of simplifying the issues, only three is-

, Sues involving error were presented for review, al-_ .

though petitioners disagreed with many of the findings -

of fact. The first dealt with petitioners’ arguments

based on. Patton v. Stone and Califorma Artificial -'

Stone Paving Co., supra, that the Motion To Dismiss , —

sHould have been granted. The Court of Appeals in

its opinion and decision did not mention this issue, and

completely ignored appellants’ arguments.

The second issue before the Court of Appeals was.

that the District Court erred. in_ the: application ‘of

the law of the Graver Tank Case in finding full equiv-

~alence. The Court of Appeals agreed with the District

Court that only the factual equivalance (doing the

same work, employed in the same way, accomplishing |

the same result) was necessary to establish the equiv-

alence, and disregarded petitioners’ arguments ‘that

the equivalency must be determined against the con-

text of the patent, the prior art, ete. —

The third issue before the Court of Appeals was that

the District Court erred in refusing to permit entry

into evidence of an expired patent which could have

established that Petitioners had avoided infringement..

The Court.of Appeals dismissed this issue by garbling

it with the issue of equivalence and the Graver Tank

ease. Possibly feeling that it was an insufficient_rea-

son, the Court then enunciated an estoppel against.

petitioners stating that pétitioners should have adduced

a.

10

the expired ‘patent at the original infringement pro-

ceeding. Sueh a holding was a complete disregard of

petitioners’ rights since respondent never presented

such an estoppel; no inquiry was made to determine ©

whether or not this patent was known to petitioners

at the time of the: pommel action; and no antecedent -

basis was establishé to invoke the estoppel. ©

3

REASONS FOR GRANTING THE WRIT ie

The petitioners j in this case have been i shabbily treated

by the District Court-and the Court of Appeals. Both

gourts have departed from the accepted course of

judicial proceeding in disregarding petitioners’ briefs

and arguments and rights. Both courts have utterly

misapprehended the plain arguments set forth on

_ €quivalency, which arguments are based on this court’s

‘enunciations in Graver Tank and Mfg. Co., Ine.

v. Linde Air Products Co., 1950, 339 U.S..,605. The

two lower courts have blindly adhered ‘to the concept

that doing the same work, employed .in the same way,

and accomplishing'the same. result establishes equiv-

alency and no other facts are necessary. This is not

the case and other facts must be considered as this

Court stated in the Graver Tank case:

~~ “What constitutes equivalency must be determined

against the context of the patent, the prior art,

and the particular circumstances of the case. * * * |

An important factor is'whether persons reasonably

_ skilled in the art would have known of the inter-

~ ehangeability of an ingredient not contained in the

patent with one that was. [Emphasis- added]

In ignoring petitioners * arguments on the equivalency

question, the lower courts havé effectively deprived

them of the elementary right of a day in court and due

?

nu”

process. In the Graver Tank case, this court indicated

guidelines to obtain uniformity i in court decisions deal-

- ing with equivalency questions on patent infringement.

- But thé decisions of the two lower courts do not follow

the guidelines and render uniformity impossible. The

courts have applied their own test-of equivalency. In

this case, the courts would not consider petitioners’

‘arguments with respect to the prior art, the scope of the

claims, ete. The District Court would not permit any

. prior art to be admitted into evidence, and would not —

even permit reference to petitioners’ patent. In view

of the restrictions placed on petitioners regarding evi-

dence, the blind disregé@d of petitioners’ arguments,

it is wholly unjust to permit the finding of equivalency

- to stand and thus éstablish that ica ‘are med of

contempt.

* * _* * *. =

A further circumstance wherein petitioners’ rights

were denied by the lower courts is the fact that peti-

tioners were not permitted to put into evidence an ex-

pired patent. Petitioners wished to avail themsélves

of every distinct defense as provided by .35 U.S.C.

282(1). They were ready to prove (apart from the

question of equivalency) that everything they were’

_ doing was taught by the expired patent, and further-

more they were using the process of the expired patent.

The District Court r¢fused entry of the expired patent

into evidence inspite of petitioners’ protestations and

‘arguments that anyone has a right to do exactly what

an expired patent discloses. The Conrt of Appeals

when presented with this question cémp letely misap-

prehended the question and confiised it: with the equiv- _

alefigy arguments. Furthermore, the Court of Appeals

elicited an estoppel against petitioners, by arbitrarily

opining that the expired patent ‘should have been ad-

La |

. duced at the ovations! infringement proceeding.” N )

inquiry was made as to whether or not this evidence

was available to petitioners originally. ,

The lower Courts’ decisions’ in refusing to permit

entry of the expired patent and thereby not permitting

petitioners to show that they were practicing the ©

-process-of the expired patent, are in conflict with the :

- decision of this ¢ourt. in Scott Paper Co. v. Marcalus.

_ Mfg. Co., Inc., 326 U.S. 249, 257, wherein the court

clearly established the prineiple that even though one is

estopped from contesting” validity of a patent he is —

allegedly infringing, he is not estopped from asserting

his right to use the prior art invention of another

expired patent which anticipates that: of the patent in

_ Suit, and he has a complete defense to the infringement

action where the alleged infringing device is that of the »

_ expired patent. The lower courts’ denial of the right of

presenting this defense was a shocking violation of due

_ process.

This case should never have been tried in a contempt

' proceeding: Petitioners filed a motion to dismiss -

(which was denied) in the District Court alleging that

‘since petitioners were granted a patent on the process

they were using, that their acts complained of could’

not possibly be- -merely colorable and a fair ground of

doubt existed as to the contempt. It was carefully

pointed out to the court that the petitioners’ process

did not read on the claims of the respondent’s patent.

In ‘line with the decision of this court in California

Artificial Stone Paving Co, y. Molitar, 113 U.S. 609,

the contempt action should have been dismissed. . The

Court of Appeals when presented with the question

and a decision of the Fifth Circuit (Patton v. Stone,

5th Cir., 1949; 178 F, 2d, 515, ais. almost eeey | in

=

13

potat, ‘did not even. bother to respond thereto in its ie

* opinion. :

It is submitted, that when two. patents are in conflict ;

that the proper forum is not in a contempt action but

: gin a real trial of the issues arising on the two patents.

From the facts of this. case, it is quite clear that

‘ petitioners have been denied their rights. of defense

and due process. The mere fact that it took almost

four years for the District Court to find petitioners

guilty of ‘contempt is a denial of petitioners’ — to

a speedy trial.

2a The court i is respectfully urged to grant this petition.

: Respectfully submitted,

M. Tep Raprss .

- Attorney for. Petitioners.

7160 Warner Bldg. _ 7

_ Washington, D. C. «20004

we