Petition for Writ of Certiorari — Myers v. FMC Corp.

LIBRARY A

_ “!/PREME COURT. U, 8 — Seek FEB 5 1203

2 : No. 79

THE F. E. MYERS & BRO.CO., =;

Petitioner, |

; ee :

FMC CORPORATION,

PETITION FOR ‘A WRIT OF CERTIORARI

; To the United States Court of Appeals

ee okt Rs For the Sixth Circuit. 3 a Se SAT API

ee ees ae | Everert R.‘HaMitton, eo Fa

: 1610 First National..Tower, ;

, Akron, Ohio 44308, | te

en Counsel for. Petitioner. ——* ne

Mack D. Cook, II, |

Jack L..RENNER, a Mate | ”

' ._Hamazton, Coox, RENNER & KENNER, , ) | 5

1610 First National Tower, “nae

Akron, Ohio 44308, _.

: Of Counsel. :

THE GATES LEGAL PUBLISHING CO., GLEVELAND, OnIO—TEL. (216) 621-8647

TABLE OF CONTENTS.

Z : of .

- Opinions Below A ee ae cokes ue .

Jurisdiction sjieieab indiana bihaeliiareia arsunanonenadateaant

Questions POON odio pci ecwencniemrenngurgmmapnnsrinm

Constitutional Provision and Statute Involved ______

Statement of the Case i srensa saa sriresnpccaersgetrcto

Argument and Reasons Relied on for Allowance of

BER WE eicicicasaciambatnini aaa

ea es Ree Set Reese ie tee

. Appendix: ;

_ Opinion of:the United States Court of Appeals

See Ter Be GI aa eeceeeee

Judgment of the United States Gout of Appeals

Sa Gt Se Ga atten eee eeee

Order Denying esiniiaies RE pared en oe tan a

TABLE OF AUTHORITIES.

Cases. ,

Aerovox Corp. v. oe Mfg. Corp., 67 F. 2d 860

(2d Se TEED sersstceocicesienbcatanecendenctiosiancumaasmens

Macbeth-Evans Glass Co. v. General Elec. Co., “246

Fed. 695 (6th Cir.), cert. denied, 246 U. S. 659

(1917), PL Se OG Peek WOM ale ren eT I

Morks v. Polaroid Corp., 129 F. Supp. 243 (D. Mass.

~~ 1955), aff'd, 237 F.2d 428 (1st Cir. 1956), cert.

denied, 352 U. S. 1005 (1957) _-____---__+-_-

31

31

. 9

Woodbridge v. United States, 263 U. S. 50 (1923) _-9, 10

: ‘Constitution and Statutes.

Constitution of the United States, Art. I, Sec. 8 oe

-28U: 8, C. § 1254(1)--__-----i ee CD

(28 U.S. C. 1338(a) _ = ee

i ee nero SF

Ge Bete

.

. : ‘

: oO FES | wn Dt ee we ae a aR ne A ne lice i RNa ARE tah AD Alt ic at A Bat ce Nima oy Rm al a

In the Supreme Court of the United States

Ce Ne ete

OCTOBER TERM, 1967.

_ THE F. E. MYERS & BRO. co,

; Petitioner,

ys. ;

FMC CORPORATION, »

| Respondent:

PETITION FOR A WRIT OF CERTIORARI

To the United States Court of Appeals

‘. For the Sixth Circuit.

Petitioner, The F. E. Myers & Bro. Co., prays that a

writ of certiorari issue to review so much of the judgment

of the Court of Appeals for the Sixth Circuit in the above

entitled case as adjudges valid United States Patent No.

2,476,960 issued July 26, 1949.

’ OPINIONS BELOW.

The opinion of the Court of Appeals is reported at

384 F.2d 4, and is reprinted in the Appendix hereto.

There was no reported opinion of the District Court.

JURISDICTION.

The judgment of the Court of Appeals was entered on

September 28, 1967. A timely Petition for Rehearing was

denied on November 8, 1967.

The jurisdiction of this Court is iivoked pormaen to

28 U.S.C. § 1254(1). .

2 ‘ " - Rah De ed is Bee 4

ae inca lei ttl att AOR a PID Si inl Mio nt i a al Rint eto grd Sand Nt

a

- QUESTIONS / PRESENTED.

. J, Whether a sworn statement by a patentee during

trial admitting the use of a functionally operable device

_ prior to the period of statutory limitation as defined by 35

U.S. C. § 102(b) shifts the burden to the patentee. to show ;

that such use was a secret or experimental use.

II. Whether a patentee is overextending his monopoly

. where he admits the use of a functionally operable device

two years prior to filing for a patent and where that same

patentee is, during that time period, enjoying the benefits

of the monopoly resulting from the grant of other ‘patents . ~

covering substantially the same subject matter.

CONSTITUTIONAL PROVISION AND.

STATUTE INVOLVED.

Article I, Section 8:

The Congress shall have power * * *.To promote

‘ the Progress of Science and useful Arts, by securing for

limited times to Authors and Inventors the exclusive niga 5

to their respective biptansins and. Discoveries. :

35 U.S.C. § 102: :

A person shalf*be entitled to a patent unless * * *-

(b) The invention was * *.* in public use or on |

vil in this country, more than one year prior to the date

of the application for patent in the United States, * * *.

‘ STATEMENT OF THE CASE.

This litigation began on June 10, 1963 when. FMC

Corporation (hereinafter FMC), Respondent herein, filed :

its complaint in the Northern District of Ohio against The

F.'E. Myers & Bro. Co. (hereinafter Myers), Petitioner. -

Although not. alleged as such, the basis for jurisdiction

in the District Court was 28 U. S. 5 aoe) and 35

U.S.C.§ 281... ; a

| FMC asserted that Myers infringed three patents:

‘ Daugherty Patent No. 2,476,960, ‘granted July 26, 1949

' (hereinafter Daugherty Patent ’960*) ; Andrews Patent No.

2,569,274, granted September 25, 1951; and a ‘third patent i

as to which the action was - ‘dismissed before the trial. —

These patents covered wane can most simply be described -

as “orchard sprayers.” ‘The District’ Court, adopting

FMC’s Finding of Fact and’ Conclusions of ‘Law as sub-

mitted, found both of the remaining patents in suit valid -

- and infringed. The Court of. Appeals for the Sixth Circuit

reversed as to the infringement of the Andrew patent and

_ affirmed as to Daugherty Patent ’960. A Petition for Re-.

_ hearing was denied, that ‘petition going toward the only

basic . issue presentéd _ to . this Court—the voy of.

Daugherty Patent ’960.

As one of its defenses, and the ‘eal one in issue here,

Myers argued that the Daugherty Patent ’960 was invalid’

under 35 U.S. C. § 102(b) due to a prior public use. The ~

basis for this defense came from the testimony of the in-

ventor himself, the pertinent testimony being. ane in

the Sixth Circuit decision: ;

) “Q. When did you first. ert ined a iene

of the type which was disclosed i in this patent? -

*The Daugherty patent ’960 was. granted on , application

Serial No. 639;949, filed January 9, 1968. ; ;

4

es We first started, pected work on it in

late "42 and early *43. |

Q _And when did you first oberite a machine of

the type that is shown in that patent?

A.cIn’’44 sir,

Q. Did it operate satisfactorily?

A. Yes,-sir, it did.

| Q. When did you actually start marketing a ma-

chine of the type shown in the patent in suit?.

A. In ’45.” -(App. p. 17, infra.)

-. Thus it became evident that the period immediately

_ prior. to 1946, over twenty years ago, was to become. a

critical period in this litigation. It seems. that Mr.

Daugherty was in po hurry to obtain patent protection

on the machine which operated satisfactorily in 1944, the

application not being filed until 1946: The reason for this .

dilatory action is illuminated when the other contempo-

raneous patents of’ Mr. Daugherty are considered. These

patents consisted of patent. No. 2,220,082 (hereinafter

Daugherty I); patent No. 2,331,107 (hereinafter Daugh- _

erty II); patent No: 2,358, 318 (hereinafter Daugherty III);

‘and patent No. 2,423,008 (hereinafter Daugherty IV).

_ Mr. Daugherty was in no hurry to obtain still further

patent protection on the orchard sprayer which operated

satisfactorily in 1944 since these prior patents covered

’ much the same apparatus. For example, every element

in claim 16 of thé Daugherty patent ’960 is found in

-. Daugherty I, except-one element which is found in Daugh-

- ‘erty Ii. Next, the Daugherty III patent issued; further

extending the monopoly. Claim 13 of Daugherty III re-

cited-an “air tunnel” as being new. However, this elément

was found in claim 1 of Daugherty I ana » om 13 of

Daugherty II.. Daugherty III also recited- a “means for-

creating an air blast through: said tunnel.” This. element _

»

cy

. oe

5

4

is alsé er in Daugherty I and IL The only element in

claim 13 of Dougyerty III not literally found in: his previ- |

ous patents was “an end limit plate.” Three years. later

(in Daugherty IV) FMC obtained another patent to

“greatly increase” ‘the efficiency of the machine embodied _

in the Daugherty: III patent. Again, however, only the.

basic elements of the previous patents were recited. .

Quoting from the main brief of Myers to the Sixth |

Circuit:

| “It is therefore elton < that throughout the pat- .

* ent evolution of the Daugherty-SPEED SPRAYER—

‘from 1936 to 1944—some things always remained the

same. Every machine had a tunnel—long in the first.

machine, shorter in the second, third and fourth ma-

chines. Every machine had a propeller—mounted on

“an axis for,rotation in the tunnel. Every. machine .

had, nozzles and piping for supplying insecticide ma- .

terial into the air blast.” (Emphasis in original.)

The Sixth Circuit decision made note of the only pos- ©

_ sible difference between the 960 patent and: the other |

Daugherty patents. It was said that “the air is drawn into

the machine * * * axially at the rear of the machine, and

after traveling toward the front is dischatged radially from

- the sides.” (App. 13-14, infra.)

Thus FMC had several variations of an orchard

spraying machine available for testing during 1944. There

is no one better qualified than the inventor to relate when

the testing o. demonstration of a particular variation took —

place. . That is why the above quoted: testimony of Mr.

Daugherty as to the 1944 satisfactory use of the ’960.ma-

chifie became so critical to this case.

To better determine what was taking place in the

critical period of 1944-1946, Mr. Daugherty was asked

what was done in attempting to market the machine, to

~

saitie.

6

which -he replied that “the first place we took it for

' demonstration—except for a-few acres in citrus—we took

it to Hagerstown, Maryland * * * and made a demon-

‘stration there” (R. 469). (Emphasis added.): Mr.

Daugherty testified that he personally took a movie of that

demonstration (that testimony is reproduced at pages -

15-17 of Myers’ Petition For Rehearing) in Hagerstown,

Maryland; not in Orlando, Florida where the Speed

mpenges factory was located and where, in 1944, there |

were “a few acres of citrus” available for testing. °

This movie is identified as plaintiff’s Exh. 20 and was

shown to the District Court during the testimony of plain-

- — tiff’s witness Carr. (This testimony is reproduced at pages

13-15: in Myers’ Petition For Rehearing. )

This movie is typical of a “satisfactory operation” of

an orchard sprayer. As Mr. Daugherty testified, his frame

-ofreference for suecess was actual control of the pests

'. (Ri 464-65), It is also evident that to know whether an

orchard sprayer operates satisfactorily, it must be tésted

in an orchard to determine “the capabilities of the ma-

chine in reaching larger trees”; to see that the “material

_ penetrates into the interior of the tree [which] is vital to

a good spray job for the control of the‘trees”; and to

demonstrate that the spray “is actually penetrating into

the tree and through the other side.” (See excerpts of

the Carr testimony commenting on the movie, R. 43-44.)

It* was Supon basically these summarized facts that .

' Myers sought a rehearing in the Sixth Circuit and. now . _

‘seeks the granting of its Petition for Certiorari in this

‘Court. : —_

iin li ica eR " Lehisdtinaiit Se ee kee]

@:

ARGUMENT AND REASONS RELIED ON FOR

ALLOWANCE OF THE WRIT.

- ;

The Sixth Circuit held: “a

“The party asserting patent — on the basis

- of public use prior to the period of limitation must

show such use by evidence which is at least clear and

convincing, Atlas v. Eastern Air Lines, Inc:, supra,

311 F.2d at 160 [1st Cir. 1962]; McCullough Tool Co.

v. Well Surveys, Inc., supra, 343 F.2d at 381; Julian v.

Drying Systems Co., 346 F.2d 336, 338 (7th Cir.

-1965) ; cf. United Parts Mfg..Co. y, Lee Motor Prod- >

ucts, Inc., 266 F.2d 20 (6th Cir. 1959). ‘However,

once a prima facie demonstration of the claimed use

has been made, the inventor carries the burden of

“ showing that the use was not of a functionally opera-

tive device, or was substantially used for experi-

mentation or testing purposes * * *’ Atlas v. Eastern

Air Lines, Inc., supra, on F.2d at 160.”. (App. pp.

. 18-19 infra.)

The

Court continued:

“There is no hint that the successful operation of

the machine in 1944 was a public use as compared

with a private use. Appellant has not carried its bur-

den of going forward with the evidence on this

point * * *, There is no evidence that the successful

operation did not occur in Daugherty’s workshop

rather than an orchard, or that (assuming that the

testing site were an orchard) precautions had not.

been taken to veil the operation from the public.”

(App. 19,.infra.)

It is the propriety of this latter ‘quoted passage that

Petitioner questions. . Petitioner submits that having

shown a use.in 1944, a use that proved the machine ‘“‘satis-

factory”; having elicited from the inventor himself that a

use occurred in a few acres of citrus prior to the demon-

A aL 6 he Shaan tae ete mes BQ outo-saiie

>.

stration embodied in the motion picture (Exh. 20); having

heard the testimony of the inventor and of ‘the witness

Carr to the effect that a successful testing and demonstra-

tio occurs in an orchard; and having. the motion picture

in the record which shows that a use, to be successful,

must occur in an orchard; it is evident that Petitioner

did satisfy its burden of showing a use according to 35

U. S. C. § 102(b) and: thereafter the burden. of proof

_ shifted to the patentee to show that it was experimental '

rather than public. Remembering that ‘the patentee him-

self said the use was not experimental, all that FMC could

have proved was ‘that the use was secret. However, no.

such evidence was forthcoming, and it seems that it could

not have been—for, how can one veil an orchard?

Nevertheless, as stated by J udge Learned Hand in.

Aerovox Corp. ‘v. Polynet Mfg. ‘Corp., 67 F.2d 860, 861

(2d Cir. 1933): ; an

’ “Certainly when the — ae use is s by the ai

entee, it is fairer to put the burden on him, since it is

-he who has access to the evidence.”

- Further, “one who alleges a anak use should offer

evidence: to sustain it.” Marks v. Polaroid Corp., 129 F. ;

Supp. 243, 253 (D. Mass. 1955), aff'd, 237 F.2d 428 (1st

_ Cir. 1956), cert. denied, 352 U: S..1005 (1957). !

| In the Aerovozx decision, Judge Hand pointed out that

the Circuit Courts were in conflict as to the above quated

law. This fact was emphasized to the Sixth Circuit in the

present case in Petitioner’s Petition for Rehearing. Hav-

ing denied this Petition without opinion or clarification, .

the conflict between the circuits, at least the Sixth Circuit

and the Second Circuit, has become magnified.

Thus, the Petitioner requests that the Supreme Court

grant certiorari on ‘this issue to resolve this conflict which

involves.a most important question in patent law.

li,

As to the issue involving an overextension of the.

| monopolies previously granted’ Mr. Daugherty and FMC, ~

the Sixth Circuit’s decision was seemingly silent. It made

no comment about this Court’s decision of Woodbridge v.

United States, 263 U. S..50, 56 (1923), where it was held

that “any practice by the.inventor and applicant for a-pat-

ent through which he deliberately- and without excuse

postpones beyond the date of actual invention, the be-

ginning of the term of his monopoly, and thus puts off

the free public enjoyment of the useful invention, is ar

evasion of the statute and defeats its benevolent aim.”

Petitioner contends that the inventor in this case, Mr.

. Daugherty, “postponed,” with full knowledge of FMC, the

filing of the application so that-his then existing monopoly

__(Daugherty T-IV, inclusive) would be extended.

It is true that an inventor is not required to apply for

a patent. Instead, he may maintain his invention in

secrecy. However, he cannot attempt to-maintain secrecy .

(which FMC did not attempt to prove) for a period of

time after a successful operation of the invention, and

then later file for a patent to get seventeen more years of

protection. He must make an election. See Macbeth-

Evans Glass Co. v. General Elec. Co., 246 Fed. 695 (6th

Cir.), cert. denied, 246 U. S. 659 (1917).

' This very argument was presented to the Sixth Cir-

cuit. Its silence on this question can either mean that they

disagree with the Woodbridge decision; that they believe

that the Woodbridge decision should not apply -to the facts

herein; or that they failed to.consider the question. |

If the Sixth Circuit disagrees with the decision of this .

Court in the Woodbridge case, then the conflict necessary

to form the basis for granting certiorari is present. If the

Sixth Circuit either failed to consider the issue or did con-

moletiteatt danse ons vw

| 10 a

sider the issue but found that Woodbridge: does net apply

to these facts, it is submitted that this.case affords this

Court an excellent’ opporjunity to confirm the very im-

portant doctrine expounded in the Woodbridge case.

,

CONCLUSION. ay

. < . ere ’ 7

For the reasons stated herein, Petitioner respectfully

requests that this Petition for Certiorari be granted.

ec ‘

Respectfully submitted,

EvERETT R. HAMILTON,

Counsel for Petitioner.

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¢ _ APPENDIX.

OPINION OF THE UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT. .

Decided ‘September 28, 1967.

a O’Sunirvan, ‘CELEBREZZE and Pack. Circuit

Judges. ° ‘

Peck, Circuit Judge. This patent case commenced

when plaintiff-appellee, FM¢ Corporation (hereinafter

“FMC”) filed a complaint in the United States District

Court for the Northern District of Ohio charging defend-

_ant-appellant, The F. E. Myers & Bro. Co. (hereinafter

“Myers”) with infringement of three patents owned by

FMC. Myers denied in its answer ‘that the patents were

valid and had beén infringed. Subsequent to dismissal of

the action as to one of the patents in suit by stipulation

of the parties, the cause was tried before the District

Court, which found for FMC, holding that both ‘patents

were valid and had been infringed: : —

_ Upon submission of the cause following trial, the

District Court requested both parties to file proposed find-

ings of fact and conclusions of law; plaintiff’s proposed

findings and conclusions were thereafter adopted by the

court as submitted, st aa the basis for the mn

entered.

Both combination ‘iitiite in suit,. Secilewty Patent

No. 2,476,960, granted July 26, 1949, on application filed

January 9, 1946 (hereinafter “Daugherty patent ’960”),

and Andrews Patent No. 2,569,274, granted September

25, 1951, on application filed August 25, 1947 (hereinafter

“Andrews patent”), and the accused devices of Myers,

relate to air blast sprayers. used in spraying or dusting. -

orchard trees with insecticide or the like. These machines .

12

basically consist of a ‘wheeled diestia (suitable for being

pulled by a ‘tractor or other vehicle) upon. which there is

a storage tank for the insecticide material, a source of

power for the spraying apparatus. (usually an internal

combustion engine), and the spraying apparatus. itself.

The spraying is accomplished by use of a propeller, or

+ impeller, which creates a blast of air within the machines

* that is then deflected toward, and ‘carries the mist-like

insecticide material to the trees to be sprayed.

Mr. George Daugherty had, prior to the grant of

Daugherty patent ’960, contributed substantially to the

air blast sprayer field, as evidenced by several earlier

patents on said machines or improvements thereof. Prior

to the invention of the machine disclosed in the Daugherty

patent in suit; the record shows that air blast sprayers

utilized a propeller which created a “flat wall” blast of air

within a tunnel in the machine. This was directed toward

the trees by a deflector system consisting of deflectors,

referred to as a “Venetian.blind” type, which are ayes

times referred to as “guide fins” and ‘ ‘elevator vanes.”’,, .

In these earlier model sprayers, the air entered the ma-_

chines radially through air intake seétions on the side of

the machine, traveled longitudinally. through the tunnel

portion of the sprayer and exited at the rear, where the

deflectors were situated.

The purpose of the inyention disclosed.in Daugherty ~

patent ’960, as stated in the specifications, was “to contrib-

ute to the art a spraying or dusting machine that is

extremely effective in the generation of a large volume of .

insecticide carrying air that may be subjected readily to

deflection and other controls.” Claim 4 of the Daugherty

patent in suit, not alleged to be infringed by Myers, is here

set forth for \the limited purpose of illustrating or describ-

ing the invention disclosed;

13

“4. In a machine of the class described, a tunnel,

- an air propeller having a central imperforate hub

@ortion. and a‘series of blades; means .mounting said

propeller for rotation in an axis longitudinal and

substantially central of said tunnel for: developing a

flow of air longitudinally through said tunnel, a »

cylindrica] shell substantially the sd#me in diameter

as the hub portion of said air propeller secured in —

said tunnel coaxially with said propeller and forming .

_ with said tunnel an air ring for the passage of the air

blast generated by the blades of said propeller, a ring

deflector forming substantially a continuation of the

~ exhaust end: of said cylindrical shell ‘and curved

radially outwardly to deflect the ring of air radially

and outwardly of said air ring toward the foliage to —

be sprayed, a complementary curved ring deflector

secured at the end of the tunnel, and means for feed-

ing an insecticide or the like positioned relatively to

> said air ring whereby the ring-like blast of air gen-

erated. through said air ring will pick up the in-

secticide fed by said means and form it into a fine

fog.”

In lay language, it may be said that a ring of air is gen-

erated by a propeller having a central imperforate hub,

which ring-like blast of air is maintained between the tun-

nel or confining surface about the propeller and a cylindri-

cal shell which runs through the center of the tunnel.

Further, the center shell is about the same diameter as

the propeller hub, and is connected to the narrow diameter

portion of a “trumpet-shaped” or “morning glory” type

deflector, which, as the-name implies, looks similar to the ,

bell-shaped portion of a trumpet, and which’ performs the

function (in conjunction with a complementary deflector

of the same general nature) of deflecting the air radially to .

the machine. In addition, the air is drawn into the

machine disclosed in Daugherty patent ’960 axially at the

<

14

rear of the machine, ‘and afier traveling toward the front

is discharged radially from the sides. FMC alleges that

this last mentioned feature of axial intake and radial

‘discharge is a great improvement over earlier models

where both intake and discharge were radial, in that re-

circulation of insecticide laden air is reduced to, a mini-

mum thereby: improving overall efficiency and preventing

corrosion caused by the insecticide material.

' As mentioned above, it is appellant’s position that the

‘Daugherty patent in suit is invalid. Except as hereinafter

noted, there is ne=dispute that two of the three explicit

conditions to patentability, novelty and utility, have been

satisfied. Myers does argue, however, that the disclosure: ’

~ lacks patentable invention under 35 U. S.C. § 103. . °s.

Not every new device or process is patentable; there -

must be a difference between the new device or process.

.and the prior art which is sufficient to warrant the grant-

ing of a patent monopoly, i in which the public as a whole

has an interest. This requirement: is set forth in section

103 of Title 35:

| “A patent may not be obtained though the invention is

not identically disclosed or described as set forth in

section 102 of this title, if the differences between the

_ subject rhatter sought to be: patented and the prior

art are such that the subject matter as a whole would

have been obvious at the time the invention was made

‘to'a person having ordinary skill in the art to which

» said subject matter pertains. . . -.”

The Supreme Court has recently stated that this section,

which was first enacted in the 1952 Patent Act, was “in-

tended merely as a codification of judicial precedents

-.embraeing the Hotchkiss condition ... . (Graham v:

John Deere Co., 383 U.S. 1, 17 (1966) ), that a patentable

invention evidence more: ingenuity and skill than that

sf

Dinictaing stati cic? nei it Sar te si AE asic

|

15 . ;

possessed by an ordinary mechanic acquainted with the 7

business. _

The record in this case, - which contains the file -wrap-

per of the Daugherty patent in suit, shows that Daugherty

had some difficulty obtaining his patent from the Patent

Office. On May 13, 1946, the Examiner rejected all 28

claims i in the application on the ground of undue multi- »

plicity, and further rejected 17 claims on the. additional

. ground as “defining nothing patentable over applicant’s

prior patent 2,358,318 taken in view of the other refer- .

ences cited. . . .” Following further correspondence by

Daugkherty’s attorney, the Examiner stated that 14 claims

which ‘recited the limitation that the fan hub be of the

same diameter asthe inner shell were “rejected as not

patentable over Daugherty in view of Ponomaroff [sic]

and Blumenthal since no invention is ayfparent in using

either the annular form of-air tunnel nor the Blumenthal |

deflectors.” After subsequent amendments of: the claims

and interviews with the Examiner, the patent was granted. ~

Despite the doubt expressed by the Examiner as to

the propriety of allowing certain claims in light of the ten

prior art references cited by the Patent Office, appellant

relies on only one of said prior art references for \its

defense, an earlier patent issued to Daugherty (No.

2,358 318). Appellant also relies on four patents not cited

“by the Patent Office, three other Daugherty patents and

Ponomareff (No. 2,169,234). The three Daugherty patents —

- not cited all involved spraying machines which utilize

‘elements generally found in the instant patent, such as a

storage tank, a ‘tunnel, a propeller, and a deflector system.

These earlier air blast sprayers of Daugherty do not, how-.

ever, employ a ‘ring-like blast of air deflected by a trumpet —

shaped deflector system, but rather, as mentioned above,

create a “flat wall” blast of : air which is deflected by Ve-

5.

16 |

netian blind type deflectors. The uncited Ponomareff

‘ patent entitled “Blower Apparatus” discloses a propeller

with what appears to have a “central imperforate hub.

portion” adjacent toa “central or core sleeve . . . whose

upper end is .". . of substantially the same diameter as

the hub, ...” Appellant contends that the Examiner

should ie applied this uncited patent and held that the

subject matter of the claims reciting an “imperforate hub

portion” of the propeller were obvious in view of.the prior

_ Daugherty. patents.

Aside. from the remarks of the Patent, Examine

found in the file wrapper of Daugherty patent '960, we

- are shown no evidence introduced at trial tending “to

establish the nature and. extent of use of the alleged prior .

art “trumpet-shaped” deflector. However, the fact that

_this element, and the element consisting of 2 propeller

' with an imperforat ‘adjacent to a central sleeve of

‘substantially the é didmeter, may have been old in

the arts per se is not sufficient to permit appellant to pre- ©

vail here. “The very essence of a combination patent is

that it is made up of a number of elements, some or all of

which mag be old. Its claim to a patent grant is that it is

a new combination or grouping of the elements which

accomplishes a new. and useful result.” (Firestone v.

Aluminum Co., 285 F.2d 928, 930 (6th Cir. 1960) ). Thus

with respect to the combination disclosed in Daugherty ,

patent ’960, it is here determined that the District Court

correctly‘ concluded that the evidence adduced did not ©

show that the invention was the result of mere mechan-

ical skill rather than inventive ingenuity. That is, the

-District Court properly held that the presumption of

validity to which a patent is entitled (35 U.S.C. § 282) had .

~~ not beén overcome by the evidence presented.

' Appellant’s next contention is that Daugherty patent.

j , aa es

boo 17 |

’960 is invalid because the invention disclosed was in

- public use for more than one year prior to the application

for @ patent, as proscribed by 35 U.S.C. § 102(b) which

provides that an applicant will not be entitled to a patent if

“the invention was patented or described’ in a printed

publication in this or a foreign country or in public use

or on sale in this country, more than one year prior to te

date of the application for patent in the United States. .

This defense is based on the following testimony

elicited from Mr. Daugherty at trial: |

“Q. When did you first start making a machine of.

the type which was disclosed in this patent?

“A. We first started experimental work on * in

late ’42 and early °43.

| “Q. And.when did you first operate a eee of

the type that is shown in that patent?

. “A. In ’44 sir. . q

i * ‘Did it operate satisfactorily? _

“A. Yes, sir, it did.

“Q. When did you actually start marketing a

~ machine of the type shown in the patent in suit?

cA In "45. ”

On cross-examination it was further established that the

machine which was operated successfully in 1944 was “the ~~

. same, fundamentally,” except for some changes in the

guide vanes and airfoil sections, as the machines which’

were later marketed and for’ which the patent in suit was —

obtained. - |

: Generally, any non-secret use of a completed and op-

erative invention in its natural and intended way is a “pub-

_ lic use” within the meaning of this section. Atlas v..

Eastern Air Lines, Inc., 311 F.2d 156 (1st Cir. 1962), cert.

‘denied, 373 U.S..904 (1963). Of course, “the public use

must be open to the public or where any member of the

| public can see it if such a member so desires.” 1 Walker,

18

Patents § 65 p. 313 (Deller ed. 1964). And a single public

use is sufficient to invalidate a patent. Consolidated Fruit

Jar Co. v. Wright, 94 U.S. 92 (1876) ; McCullough.Tool Co.

v. Well Surveys, Inc.; 343 F.2d 381 (10th Cir. 1965), cert.

denied, 383 U.S. 933 (1966). However, not every use is a

public use under section 102(b)..

While “the purpose of the 1-year statutory bar is to

‘preverit an inventor from obtaining profits on his inven-

tion for a number of years and then at a later date obtain-

_ ing a patent,” Ushakoff v. United States, 327 F.2d: 669,

672 (Ct. Cl: 1964); see also Pennock v. Dialogue, 27 U.S.

1 (1829); Andrews v. Hovey, 123 U.S, 267 (1887), aff'd

on rehearing, 124 U.S. 694 (1888), the necessity of per-

mitting a period of experimentation has been recognized.

Thus, an exception to the public use provision is made

where the use is one “which may be properly character-

ized as substantially “for purposes of experimentation,”

Smith & Griggs Mfg. Co. v. Sprague, 123 U.S. 249, 256

_ (1887). During this period the inventor may- use his in-

vention without concern for the statutory bar “for the

purpose of testing the machine,” Ibid., or “in order to

bring the invention to perfection... .” Elizabeth v. Amer-

ican Nicholson Pavement Co., 97. U: S. 126, 134 (1877).

~ ‘The party asserting patent invalidity on the basis of

public use prior, to the period of limitation must show such

_ use by evidence which is at least-clear and convincing, —

Atlas v. Eastern Air Lines, Inc., supra, 311 F.2d at 160;

~ McCullough Tool Co. v. Well Surveys, Inc., supra, 343

F.2d at 381; Julian v. Drying Systems Co., 346 F.2d 336,

338 (7th Cir. 1965); cf. United Parts Mfg. .Co. v. Lee

Motor Products, Inc., 266 F.2d 20 (6th Cir. 1959). “How-

ever, once a prima facie demonstration of the claimed use

has been made, the inventor.carries the burden of show-

ing that the,use was not of a functionally operative device,

: 4 rf .

19

or was substantially used for experimentation or testing :

purposes. ...” Atlas v. Eastern Air Lines, Inc., supra, 311

F.2d at 160. Koehring Co. v. National Automatic Tool Co.,

- 362 F.2d 100 (7th Cir. 1966)..

The District Court made no ea of fact on this

critical issue of prior public use, as required by Rule

52 (a), Federal Rules of Civil Procedure. While this Court

generally requires strict observance of this Rule relating

‘ to the sufficiency of the findings of fact (Deal v. Cincinnati

Boardof Education, 369 F.2d 54 (6th Cir. 1966); Tappan

Co. v. General Motors Corp., ___ F.2d ___ (6th Cir., July

17, 1967) ), the record itself is unsatisfactory on this point

and affords scant basis for a determination. While such

evidence as is contained in the record, viewed most favor-

_ ably from appellant’s position, could support a finding that

a prior use had occurred, there is no hint that the success-

ful operation of the machine in 1944 was a public use as

compared with a private use. Appellant has not carried

its burden of going forward with the evidence on this point ~

by assuming that the use must. have occurred in an or-

chard, arguing, “how else could one know that the sprayer

operated satisfactorily except in a grove where anyone

could see... .” There is no evidence that the successful

operation did not occur in Daugherty’s workshop rather

than an orchard, or that (assuming the testing site were

an orchard) precautions had not been taken to veil the

operation from the public.

With respect to Myers’s defense of noninfringement,

the accused machines are quite similar to the machines

disclosed by Daugherty patent ’960.: However, in the

Myers machines the propeller, or impeller, is situated ad-

jacent to the trumpet-shaped ‘deflector at its narrowest

diameter; these machines thus have a more limited con-

fining surface about and downstream of the ; propeller

20

. than, as depicted in the drawings accompanying’ the

“Daugherty patent, the Daugherty devices. Appellant

therefore argues that the accused machines do not contain

the elements of 1) a tunnel, 2) a shell securéd in said

tunnel and 3) the extension of.the propeller hub formed

by the outer surface of the shell, as required by some of

the claims allegedly infringed.

While it is true, as appellant contends, that every

element of a claim charged to be infringed must be found

in the accused device and that the omission of any one

element precludes infringement (Sears, Roebuck & Co. v.

Minnesota Mining & Mfg.-Co., 249 F.2d 66 (4th Cir.

1957), cert. denied, 355 US. 932 (1958) ; United” States

Rubber Co. v: General Tire & Rubber Co., 128 F.2d 104

(6th Cir. 1942) ), it is equally clear, as was recognized in

the above cases, that the doctrine of equivalents applies

to combination patents just as to any other type of inven-

tion. Aluminum Co. v. Sperry Products, Inc., 285 F.2d

911, 923 (6th Cir. 1960), cert. denied, 368 U.S4890 (1961) :

3 Walker, Patents § 625 (Deller ed.) cited in United States

Rubber Co. v. General Tire & Rubber Co., supra, 128 F.2d

at 109. ;

In the instant case the District Court found as facts

that the confining surface about the propeller in ‘Myers’ s

machines was a “tunnel” as that term is used in the claims, |

and that the trumpet-shaped "deflector used in appellant’ s

equipment was “‘a shell. as that term is used-in the

claims of thé Daugherty patent since it acts as an exten- |

sion of the propeller bub” and “helps to maintain the ring-

. like form of the air” as it is passed through the machine.

In light of the teachings of the Daugherty patent in suit:

that the tunnel’ (and necessarily the shell secured therein)

may be “long or relatively short” (Specifications to

. Daugherty patent ’960), it cannot be said that these find-

21

ings are clearly erroneous. Moreover, in the final anlysis,

infringement is not a mere matter of words; the question —

is one of Substantial identity. Nickerson v. Bearfoot Sole

_ Co., 311 F.2d 858, 881 (6th Cir. 1962), cert. denied, 375

US. 815 (1963). The evidence here permits of no conclu-

sion other than that the disputed elements found in the

accused. machines are equivalents to those set forth in the

claims of the patent, and that both machines perform the

same, or substantially the same, function in substantially

the same way to obtain the same results. Nickerson v.

Bearfoot Sole Co., supra, 311 F.2d at 879; Thabet Mfg. Co.

v. Koolvent Metal Awning Corp., 226 F.2d 207 (6th Cir.

1955): The differences-between the accused machines and

those constructed in accordance with the teaching of the

‘Daugherty patent may fairly be characterized: as differ- —

ences in degree which are insufficient to negate the conclu-

sion of infringement. ed a . .

Claims 13 and 15,* which are charged to be infringed,

do not call for any of the three disputed elements dis-

cussed above.. With. respect. to these claims, appellant

argues that certain phases, such as “ring-like form of the

air. blast” and “maintained,” should be given a narrow

interpretation in view of the patent specifications. How-

* Claim 15 reads in its entirety as follows: _

“15. In‘a machine of the class described, an air propeller

having a central imperforate hub portion having substantially no

air blast generating function and a-series of blades extending

from said hub portion adapted to generate a ring-like blast of air,

a confining surface about said propeller.defining the outer periph-

ery of said ring-like blast of air, a deflector for said ring-like

blast of air forming substantially an extension of the outer periph-

ery of said central hub portion whereby to maintain the ring-

like form of the air blast generated by said series of blades by

defining the inner periphery of said air blast, said deflector curv-

ing radially outwardly relatively to the axis of rotation of said _

propeller to deflect the ring-like air blast radially of the propeller

axis, and means for feeding insecticide to said ring-like blast of

air to.be carried thereby to the foilage.”

sents atcha a ake i crn bianca Saale Salsa ainda ahah tel tat Bp ae

AI EAI SR is he WS) Ci aa lm oN

22

ever, there appears to be no justifieation for attributing

. «..the restrictive meaning to the disputed phrases as they are

‘used in context in the claims, as appellant urges, and this

contention is rejected. ‘ Therefore, the judgment of the

District Court relative to the issue of infringement must

be affirmed.

The second patent involved in this case is Andrews —

patent No. 2,569,274, also owned by FMC. The purpose of”

this combination improvement patent was to increase the |

efficiency of spraying machines such as those covered by

earlier Daugherty patents, including the Daugherty pat-

ent in suit. Although, Andrews states that his invention is

“readily applicable” to structures of the type set forth in

Daugherty patents other than patent ’960, in view of the -

representations by Daugherty and his attorney-to the Pat-

ent Office during the prosecution of patent ’960 that “the

machine of this application is so superior to the older ma-

chine covered by applicant’s older patents, that the older

machine is no longer being manufactured,” it may there-

fore properly be assumed that Andrews’ invention was

intended to be, and in fact is, being used principally in con-

nection with the type of sprayer disclosed in the Daugherty

patent in suit. ae

One of the principal difficulties or r problems encount-

"ered in machines constructed in accordance with the

- Daugherty patent_in suit was that by use of a “trumpet-

shaped” deflector, the ring-like blast of air was deflected

radially over a 360° area, or in the words of one of FMC’s

chief witnesses, James Carr (Chief Engineer of-the Ag-

ricultural Department of the John Bean Division of plain-

tiff corporation), “the air was diverted radially by the |

. trumpet in all directions, that is vertically, horizontally—

‘ vertically, both top and toward the ground.” The air thus

diverted toward the ground not only would cause dust to

a ee ee : . yay

23

be thrown up by the sprayer, but, as is obvious, was not

utilized in carrying insecticide material to the trees.

Daugherty’s solution to the problem was the placing of a

piece of sheet metal with extended leaves below the en-

tire deflector system, it being the function of the leaves to

“receive the air that is directed radially downward . . .

and to redirect that air upwardly and to each side of the

machine.”.. Mr. Carr testified as to Daugherty’s solution

and its disadvantages: |

“Daugherty attempted to avoid difficulties with the air

which was directed toward the bottom and wotld

cause dust to be thrown up by blowers that went

through the orchard by placing a plate:at the bottom

of the blower, and shaping it so that it was generally

—bounce the air back up toward the sides. This had

the big. disadvantage of ‘causing turbulence in the

lower part of the discharge of the blower, since the

force components of the air being diverted from the

- blower. were not in the same lineal direction as the

air flowing from the main section of the blower. . . .”

Ir. the specifications to Andfews’ patent it is stated

that “i’ has been found that there is considerable loss in

efficiency because of this diversion of part of the air blast

ini the machine of the Daugherty Patent No. 2,476,960,”

and that his invention consisted of means for “utilizing

efficiently that portion of the air blast that is developed at

the lowermost portion of the machine of the class set forth

in the Daugherty patents.” Briefly stated, Andrews’ in-

. vention consists of placing a funnel, or auxiliary deflector,

in the path of the lowermost angular sector of the ring-like

blast of air, which funnel directs the air upwardly and

em such manner that it augments that portion of

the air blast deflected by the Daugherty deflectors. As

Andrews attorney. sejes in a letter to the Patent Ex-

* a

Len SO La antl pd Cente ake

24

. aminer during the pendency of the application, and re-

ceived in evidence: a ,

“The air [which is shielded at the bottom of the de-—

‘ flector in Daugherty patent ’960] then is forced to

move circumferentially and to join-the air that has |

been given motion radially of the machine. Because _

the circumferentially moving air must thus join with’

the radially moving*air, it is quite obvious that losses

must occur. It is for the purpose of obviatirig these

losses that applicant conceived the structure of this

application.. Thus, applicant presents a funnel for ac-

cepting that portion of the air that would normally be’

directed circumferentially in the Daugherty structure.

Applicant then funnels the air to augment the air

"directed by the remainder of the deflector system.

* * * &

“It is respectfully submitted that in order to define

specifically the structure of the present invention, it is

necessary to claim that construction relatively to the

_ construction of the Daugherty application. As a mat-

ter of fact, applicant could claim the present invention

specifically. by describing the Daugherty application

and then saying that the improvement in this case is

the cutting away of a part of the deflector ring system

of the Daugherty application and substituting therefor

a funnel used to direct the air to augment the air mov-

ing radially through the operation of the ry

deflecting system.”

Not every model of Myers’s air blast s sprayer embodies

an auxiliary deflector of the type which allegedly infringes _—

the Andrews patent, and the District Court held that only

those accused machines which did have the auxiliary de-

flector infringed the Andrews patent. The evidence shows

that the auxiliary deflector in the accused sprayers con-

. sists generally of “a baffle which is curved with a’ larger

radius of curvature than the periphery of the general

round structure, but which extends axially across the an-

rr 25

nular path behind the fan. This is a curved baffle that

. divides the annular space in a segment—modified seg-

ment at the bottom.” This baffle is supported by a single

strut situated below the center of an imaginary horizontal

diameter of the trumpet-shaped deflector. Below the

’ baffle is the deflector means which “split{s] . . . the air

at the center” near the supporting strut, and directs it

radially of the longitudinal axis of the sprayer. The

' bottom portion of the machine, below the auxiliary de- ’

flecting means, “is simply a plate across the bottom of the

blower.” vt es

As with the Daugherty patent in suit, Myers denies

validity and infringement of the Andrews patent. While

it is undoubtedly the “better practice,” because of the gen-

eral public interest upon which the’ patent system is

founded, .to inquire fully into the validity of a patent which

constitutes the basis of an infringement action (Sinclair

~ & Carroll Co. v. Interchemical Corp., 325 U.S. 327 (1945);

The Tappan Co. v. General Motors Corp, supra), we do

not reach the District Court’s decision regarding the va-

lidity of Andrews patent due to special circumstances ‘ex-

isting in this case. Appellant’s present counsel entered

the case at a relatively late date, appearing as counsel of

record subsequent to the death of appellant’s original at-

torney during the discovery phase of the proceedings.

On appeal, Myers complains of the alleged abuse of dis-

cretion of the District Court in overruling its motion for

continuance of trial, which motion was based primarily -

on the ground that more time was needed in order to

fully. prepare appellant’s case. This motion was fully

argued on: briefs and we cannot say that the district judge

abused. his discretion in denying it. However, , without

expressing or intimating any view on the adequacy of ap-

pellant’s defense relating to the validity of the Andrews ~

26:

patent, it seems likely that a more complete developmient

of this phase of the case might have been presented absent

the unfortunate circumstances mentioned. Because of this

fact, and more particularly because it appears that a deci-

sion on the infringement issue will’be dispositive of the

appeal concerning the Andrews patent, only that issue is

here considered. :

Of the seventeen claims in the ‘Andrews patent, claims

1, 2, 3; 4, 6, 10, 12, 13 and 14 are charged to be. infringed.

With respect to these nine claims, six recite the element

of.a “funnel.” We agree with. appellant that claims 1,3

aid 6, which are -distinguisMable over the prior art.

Daugherty machines only by the recitation of an “auxiliary

deflector” which is defined, not by its structure, but by

the function it performs, are functional claims and must

be construed “to cover the corresponding structure, ma-

terial, or act$ described in the specification and equivalents

thereof.” 35 U.S.C. § 112. To the extent that the “air fun-

nel is really an auxiliary deflector,” as stated in the speci-

ficatioris, the question initially presented with reference

to all disputed claims is whether the element of a “funnel,”

or its equivalent, is found in the accused device.

A patent must be construed in light of the state of

the art to which it pertains. Maytag Co. v. Murray Corp.,

318 F.2d 79 (6th Cir. 1963); Remington Rand v. Meilink,

140 F.2d'‘519 (6th Cir. 1944). And “the claim of’a patent

must be read in the light of the invention disclosed and

cannot be given a construction broader than the teachings

_ of the patent as shown by the drawings and specifications.”

Blanc v. Curtis, 119 F.2d 395, 397 (6th Cir. 1940), cited

' in Maytag Co. v. Murray Corp., supra, 318 F.2d at 85.

As a general rule, the narrower the ‘invention and the

more crowded the art, the stricter will be the construction

27

afforded the claims of a patent. See Tillotson. Manufac-

turing Co. v. Textron, Inc., 337 F.2d 833 (6th Cir. 1964),

Infringement cannot be established on the basis solely

of descriptive words, which may have different meanings

even to those skilled in the art, and thus the earlier men-

tioned doctrine of equivalents must be considered. The

essence of this doctrine is that one may not practice a fraud

on the patent by appropriating an invention through minor

and insignificant changes in a device to avoid the patent;

infringement is established once a comparison of the ac L

cused device with the patented one shows that-both per-

. form substantially the same. function, in substantially the

&,

same way to obtain the same results. “What constitutes _

equivalency must be determined against the context of —

the patent, the prior art, and the particular circumstances *

of the case.” Graver Tank & Mfg. Co. v. Linde Air Prod-

ucts Co., 339 U.S. 605, 608 (1950). Consideration of the

prior art is thus relevant for the range of equivalents var-

. ies and depends upon the degree of the invention, (Con-

tinental Paper Bag Co. v. Eastern Paper Bag Co., 210

U.S. 405 (1908)), and where “the Patent is narrow and

the art is crowded the range of equivalents is. similarly

narrow.” Maytag Co. v. Murray Corp., 318 F.2d at 86;

Parmellee Pharmaceutical Co. v. Zink, 285 F.2d 465, 472 _

_ (8th Cir. 1961) ; Kennatrack Corp. v. The Stanley Works,

314 F.2d 164 (7th: Cir. 1963); Kwikset v. Hillgren, 210

F.2d 483 (9th Cir. 1954). 7

In accordance with the above principles, it has long

~ been the established rule that “if the invention claimed

be itself but an improvement on a known machine by a .

mere change of form or combination of parts, the patentee

cannot treat another as an infringer who has improved

the original machine by use of a different form or com-

» a

«yg ”

AY

8 io.

bination performing the same function. The inventor of

the first improvement cannot invoke the doctrine of

equivalents to suppress all other improvements which are

not mere colorable invasions of the first.”. McCormick v.

‘Talcott, 61 U.S. 402, 405 (1857); see also. Industrial In-

'strument Corp. v. Foxboro Co., 307 F.2d 783, 785 (5th: -

Cir. 1962); Maytag Co. v. ne Corp., supra, 318 F. -

_ at 84.

In addition to the Daugherty patent in suit, ict

et al. Patent, No. 2,538,879, entitled “Apparatus for Spray-

ing Trees,” is prior art with.respect to the Andrews patent,

the Newcomb patent having been issued January 23, 1951,

on application filed in October, 1945. The sprayer dis-

’ closed’ in this patent creates a blast: of ‘air by propeller

- which is, deflected by means of a so-called baffle that is

_ quite similar to the “trumpet-shaped” deflector of the

Daugherty patent (hyperbolic parabolic shape), the

‘principal difference being that Newcomb’s baffle was con-

structed of. several sections pieced together, whereas the -

. Daugherty deflector had a continuous surface. The New-

comb patent also shows the use of six secondary baffles,

0

or curved deflectors, in conjunction with the main baffle. _

These secondary baffles contact the main baffle, three on.

a side, one opposite another. The specifications to the

Newcomb patent declare:

“By use of the primary baffle and the. ieiianie baffles

. that air which would normally be directed down-

wardly and therefore wasted is directed upwardly

and laterally and therefore is of substantial value.

It will be noted that,the air is turned and directed

in a very short area and is turned at right angles to

the longitudinal axis of the device and upwardly and

laterally simultaneously. .In this manner a smooth

_ turn is created and turbulence is_reduced to a mini- ©

' mum.” (Reference numerals omitted.)

a F

~-

S

Fad

29

As appellant notes, two of the secondary baffles shown in

the Newcomb patent are in substantially the same area in

_relation to the deflector as.is the baffle used by appellant.

It is clear that the Andrews patent is not a pioneer

‘patent; it is a combination patent comprised of old ele-

ments, and the patentee may fairly be characterized as a

_ arrow improver in an art which, considering its scope, is .

_ relatively crowded. Accordingly, the claims in dispute

‘should be narrowly construed.” ~~~ )

Reading the claims of Andrews patent in light of the

_ specifications and drawings, the patent teaches the-use, in

combination witha deflector system and spraying machine,

of a funnel or passageway which, in diverting the lower-

most portion of the air blast from an area where it is

neither wanted nor needed to an area where it may be

effectively utilized, confines the air within completely en-

‘Closed sidés. The auxiliary deflector system in the accused

‘sprayers confines the portion of the air blast deflected

thereby within three surfaces; Myers’s auxiliary deflector

consists of little more than. Daugherty’s deflector with both

‘the trumpet-shaped deflector and bottom plate, to which a

baffle has’ been aided across the lowermost sector of the

air blast. FMC ‘argues that Myers’s equipment incorpo-

rates- the essence of the Andrews patent since, in the |

sprayers of ,Myers, the “air which would normally be

deflected downwardly toward the ground is isolated and

directed through the machine in a separate passageway

or funnel,” thus minimizing the turbulent interaction of

air volumes. However, ‘in view of the Newcomb patent in

which the six secondary baffles positioned on the primary

deflector form what might be termed “separate passage-

ways” and in which the six baffles generally “isolate” the

air blast. being deflected, appellee’s position cannot ”

- sustained.

30 °

Considering the invention saved in the Andrews

patent, the prior art, and the foregoing principles of law

and rules of construction (many of which were not ac-

knowledged or explicitly applied by the District Court) :

it is here determined that Myers’s machines do not in-

corporate a funnel, or its equivalent, as that term id used

in.the patent in suit; while Myers’s auxiliary deflecto may

secure the same results as achieved by sprayers embody- .

ing Andrews invention, in the broad sense that the lower- .

most portion of the air blast is prevented from interfering

with the remaining portion of the air blast, and is utilized _

in carrying insecticide toward the foliage to be sprayed,

Myers secures these results by means not in all respects

the substantial equivalents of FMC’s machines, and it

cannot be said that the two sprayers operate in substan-

tially the same way. The District Court’s finding of fact

_ that the accused devices embodied a “funnel” as the term

is used in Andrews patent is thus clearly erroneous. Rule

52, Federal Rules of Civil Procedure. Accordingly, the

judgment of the District Court is reversed with reference

to the issue of infringement of the Andrews patent, and the

complaint should be dismissed as to this patent. |

Affirmed in part and reversed in part.

31

JU DGMENT OF THE UNITED STATES COURT OF Aer Enee

FOR THE SIXTH CIRCUIT.

(September 28, 1967.)

This cause camé on to be heard on the record from.

the United States District Cotirt for the Northern District

of Ohio and was argued by counsel.

On consideration whereof, it is now here ordered and

adjudged by this Court that the judgment of the said

District Court in this. cause be and the same is hereby

affirmed in part and reversed in-part, in conformity with

the opinion. No costs on appeal to be awarded to either

party.

ORDER DENYING REHEARING. -

(November 8, 1967.)

Upon consideration, it is OrpERED that the sittin

for rehearing filed by both parties hereto be and they

hereby are denied.