Appendix — Architectural Models, Inc. v. Neklason

(Ex 2, pages 43-50 and 71-73)

Petition to Make Special fPrnewne

ie _ Appendix

Patent Office Proceedings on Petition to Make Special

"Affidavit of Leila M. Johnston.....

GTB Vi Seice sence

__Affidavit of Karl“A; Limbach.....

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Order of Board of Appeals

Opinion of Distriet Court (R-31-51)....

, _, Judgment of District Court (R-52, 53)..

Opinion of Court of Appeals (B-69, 70)

Claim 4 of Green et al Patent (Ex M)

Judgment of Court of Appeals (R-71).:

Claim 14 of Green et al Patent (Ex M)

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PETITION TO MAKE SPECIAL

Honorable Commissioner of Patents _

Washington 25, D. C.

Cir: . 5 eal eens cig i

Applicants in the above identified application hereby

petition to have this application made special for the reason

that one of applicants’ competitors is infringing claims.

which applicants hope to have allowed in this application.

©)The existence ‘of this infringement. is: shown by ‘the

attached affidavit of Leila M. Johnston, one of the appli-

cants, and the affidavit of one Karl A. Limbach, one of appli-

_ cants’ attorneys. - XB

_ This application has received full examination on the

merits and all of the claims in the application are now under

final rejection. As far as applicants are aware, the most per-

tinent prior art references are of record in the application.

A full response to the Examiner’s final rejection i is enclosed

. herewith by way of a notice of appeal and applicants’ brief —

on appeal. The granting of this petition is requested so that

the application may be considered special during the pen-

‘dency of the appeal and any further delay in the i issuance

of applicants’ patent may be avoided. a

The attached affidavit indicates that applicants lave :

been diligent in prosecuting this application and in present-

ing this petition to make special ever since learning of the

7 intringiag activities of applicants’ competitor.

‘ For these reasons, it is respectfully, submitted that this =:

| cad should be granted. .

bi Respectfully submitted,

_ Naytor & Neat

By Karz A. Limpacn

Attorneys for Applicants

: AFFIDAVIT OF LEILA M. J OHNSTON

State of California 2

City and County of San Francisco—ss.

Leila M. Johnston, being duly sworn, deposes and —

: oe as follows:

\: OL She is one of the applicants j in this application. and

_ » one of the owners of Architectural Models, Inc. of ‘San

Francisco, California. - :

+2. .On or about August 5, 1963, affiant learned that two |

‘ex-employees’ of Architectural Models, Inc. were engaged

in a competing business under the name of Scale Models. _

- Unlimited in Fast Palo Alto, California, and affiant sus- —

pected that these ex-employees were using apparatus simi-

- lar to that. disclosed in this - application because Scale

‘Models Unlimited had bid on a job of making a topographi- - -

cal model on which Architectural Models, Ine. had also bid.

3. On August 6, 1963, affiant accompanied by her patent

attorneys and a professional photographer visited the offi-

ees of said Scale Models Unlimited to determine whether

or not these ex-employees were using apparatus similar to

that disclosed in this application. When affiant and her at-

torney and the photographer reached the offices of Scale

__ . Models Unlimited, the ex-employees refused to permit said

attorney or said photographer to view the equipment with

_ which they made topographical models, but said ex-employ-

- ees permitted affiant to examine: such equipment. :

4 Shortly. after this examination, affiant prepared a

~. sketch of the equipment which she was permitted to exam-

-ine, and“this sketch is attached hereto. The equipment con-

sisted of a table on which a. topographical map. may be

mounted with, an overliead support mounted on the wall of

the building adjacent to the table and supporting a block

of styrofoam in inverted position over the table with a free-.

: ly movable tool mounted on the table as illustrated. i in the

< sketch for cutting the Wyretoen with. ‘an — facing

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| Appendiz. ee : a

route bit while a coaxial stylus followed. topographical

lines on the map on the table. The height of the router bit:

above the table was accurately adjustable by accurate ad-

_justment of the position of the router up and down inside

of a cylinder supported on a tripod.

5, Affiant is informed and believes that said ka =

‘ees continue to use the apparatus described above though

_ affiant has informed said ex-employees that such use. con-

_ stitutes appropriation of the. trade secrets of Architectural |

Models, Ine. and will infringe patent claims which affiant /

hopes to obtain through this siiplindbe! Said ex-employees /

refuse to discontinue use of such apparatus prior to tie

issuance of'a patent on, this application.

6. Immediately following August 6, 1963, the day on

which affiant inspected the above identified apparatus, affi-

- ant requested her patent attorneys to do everything possi-

le to speed up the issuance of a patent on this application.

7 Affianit is advised by her attorneys that. responsive: to such

i advice, said attorneys had their Washington associate in-

terview the Examiner handling this application to acgéler-

ate prosecution of the application. Such interview was\con-_

ducted as soon as it could be arranged following August 6,

_ 1963, and subsequent interviews were conducted as soon as

they could be arranged after new references cited by the

Examiner in‘the interview could be discussed with affiant’s .

attorney. Following such interviews, affiant’s attorney filed

-- an amendment on September 12, 1963 and the accompany-

_ ing petition to make special is being filed as soon as possi-

ble following the final rejection of October 10, 196% .

| 2 Lema M. Jounston

Leila M. Johnston —

Subseribed sai sworn ‘to before me, a notary public, this

7th day of November, 1963. es

| /s/ Frepertck Wiiu1aM Rors, JR.

- . Notary Public

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AFFIDAVIT OF KARL A; LIMBACH

ee | State of California

City and County of San Francisco—si

Karl A. Limbach, being’ duly worn, de teen can says as

‘ follows: fe

1, .-He is one of the siitiennve sia in the above’ ,

'” identified application. __ a

2. He has examined the sketch attached to the affidavit

of Leila M. Johnston and has made a rigid comparison of

"the device illustrated in that Sketch and described.by Miss"

Johnston with the claims of this application. }

8. In his opinion, some of the claims in this satiate Za

~ are unquestionably‘ infringed 7 said device. 3

. 4, Prior'to the filing G this application he caused to be

made a careful and thorough search of the prior art, and he .

believes that all of the claims in this‘application are patent-

able over such search art and over the references’ found

_ in the Examiner’ s independent search of the art.

Js/ Kas, A. Unsenace

ee ea eee: Karl A, Limbach ‘

; _ . Subscribed and sworn to before me, a notary public, this:

24th aa of October, 1963. , a

/s/ BarBara Ann Ety s

Notary Public

AG : Appendiz

U.S. DEPARTMENT OF COMMERCE

eed . Patent Orrice

@ | ap | Washington ‘

N ovember 27, 1963

On Petition To Make Special

The applicants petition that the above identified applica-

tion be made special on the ground of infrmgement. —

Inasmuch as the above identified application was acted

upon by the primary examiner on October 10, 1963, and now

awaits response by the applicants, the petition, to make it

special is hereby dismissed. be

Epwin L, Reynoips

e First Assistant Commissioner

Attention: :

Appendic = a

| December 4, 1963 : :

Commissioner of Patents

Washington 25, D. C.

Edwin L. Reynolds

First Assistant Commissioner

Re: Ex parte Virginia Green et al

* Serial No. 127,211

' Filed July 27, 1961

“2 Apparatus for Making Topographical Models

On Petition To Make Special —

(Our file 914)

Dear Mr. Re¥nolds:

This letter is sent in response to your letter of November

27, 1963, dismissing applicarits’ Petition To Make Special.

Applicants hereby renew the Petition To Make Special and -

request that it be considered on its’ merits sinee applicants

had responded to the October ‘10, 1963 action of the pri- .

- mary Examiner.

The primary Examiner’s action of October 10, 1963 was

a final rejection, and at the same time the Petition To Make

Special was presented; applicants filing Notice of Appeal -

from the final rejection together with Appellants Brief on

Appeal. It is believed that such appeal constitutes 4 com-

plete response to the final rejection. No further response

to the final rejection short of appeal was made since the

merits of the application had been exhaustively considered

with the Examiner in numerous interviews and both appli-

cants and the Examiner felt that-the application was in

condition for final rejection and t appeal.

Very truly yours, !

/8/ Karu A. Loysacn

For Naytor & Near

( | U.S. Department of Commerce

Patent Office

_ Usrrep Stares Govenwaent

| MEMORANDUM

TO: Examiner, Division 340 af aie . S.

| DATE: Dec. 6, 1963.

FROM: First Aasistent Commeledonee

_ SUBJECT:, Petition to Make Special

Applicant: Virginia Green et al.

Serial No. : 127,211

The examiner will please send the file of the above iden- -

tified applicatjon to the office of the First Assistant Com-

missioner, Room 3898, indicating hereon when the appli-

cation will be reached for action. —

If an amendment or other paper is attached, it should

be entered before the file is forwarded. ‘

' This application was forwarded to the Board of Appeals

on December 6, 1963: tay [longhand endorsement]

This application will be acted upon.

/s/ Frances I. Suir

Signature of person reporting

Dee, 16,1963 —

Date of Report

Mailed Jan.—8 1964 : Rs Sais 9:8 e ae

U.S. Patent Office Boardof Appeals ©

Appeal No. 269-73 RHI

In the United States Patent Office

& &

BEFORE THE BOARD OF APPEALS

‘\

Ex parte Virginia Green

‘and Leila M. Johnston

Application for Patent filed July 27, 1961; Serial No. ts

- 127,211. Apparatus for Making i ot Models.

Naylor and Neal and Cushman, Darby & Cushman for. )

appellants.

Appellants have renewed their petition to make this case _

special for the reason—infringement—set forth in ” prior

petition .and supporting affidavits. 8

To the extent that the appeal will be expedited before

the Board of Appeals, the petition has been granted. *

- ‘The application is herewith forwarded to the Examiner

for reply to appellants’ brief.

By Order of the Board sala

q

Nicnotas Hann

Administrative Officer

gt es |

Decision of the District Court

for the Northern District of California —

_ (caption omitted) 3

| MEMORANDUM OF DECISION AND ORDER .

This suit invoices the validity and: alleged infringement _

of U. S, Patent No, 3,137,209, a device for making topo-

graphical models. It is a combination patent involving some

14 separate claims, four of which are being sued. upon by

the plaintiff, those claims. being Nos. 4,,5, 11 and 14. The

plaintiff also charges the defendants, in'a separate cause of

action, with appropriation of a trade secret.

‘The defendants have denied infringement ‘and chal-

lenged the validity of the patent on the grounds of prior art —

and obviousness, faulty inventorship, prior public use and

, failure of the plaintiff to comply with formal statutory re-

quirements, Misuse is also asserted as a defense to the pat-

‘ent infringement. claim. Defendants have filed two counter-

_ Claims. The first is for declaratory judgment that the patent

_ sued upon is invalid, to include all 14 claims, and the second

_ charges the plaintiff with unfair competition. .

Reaarpnro THE ALLEGED INFRINGEMENT, With Particuar

Rersrence to Craims 4, 5, 11 and 14:

"These four claims, of the 14 encompassed by the patent, ©

are the only ones to which the infringement suit is directed

and the only ones about which plaintiff has presented evi-

dence. It follows then that the remaining specifications are

_not in-issue as to the infringement suit.

Mindful of the advice ‘of the United States Supreme

Court that usually the better practice is,to inquire fully into

_ the validity of a patent, Sinclair v. Interchemical Corp., 325

- U.S. 327, 330 (1944), this court concludes that the circum-

stances and factual background of the case dictate a dis-

position on the ground of non-infringement without deciding

. the question of validity of the patent. |

: ” Agneta $e.

The aleve statement in Sinclair in the words of Judge

Learned Hand “was certainly not put in the form of a per-

emptory: direction, but rather of cautionary admonition, to

be followed when that is the more convenient course .

There are good reasons for allowing some latitude of. halos

A decision resting npon ea rnc is generally much

- more secure than one on invalidity. .. . That issue is a fugi-

tive, impalpable, wayward, and aii a phantom as exists .

in the whole paraphernalia of legal concepts ... A declara-

tion: of invalidity may therefore prove an ignis fatuus, as

fictitious a security to those who wish to infringe the claim,

as a declaration of validity may be a fictitious menace.”

Harries v. Air King Products Co., 183 F.2d 158, 162, 163

(2nd Cir. 1950). See also, Electrical Fittings Corp. v.

Thomas & Betts Co., 307 U.S. 241 (1938) ; Altavater v. Free-

man, 310 U.S. 359 (1942) ; Cover v. Schwartz, 133 F.2d 541 _

(2nd Cir. 1943); Lockwood v. Langendorf, 324 F. 2d 82, 91

(9th Cir. 1963).

Claitns 4 and 5 define in substance the frame ‘used to

support the material, a ‘table adapted to support a reverse.

print of a topographical map, and a free moving tool car-

rier with an electric motor mounted thereon. These claims

were at first rejected in the patent office because of the

Shaver patent but were amendéd to incorporate the use of a

reverse print as a distinguishing feature. Based upon this

amendment, the claims were approved.

Defendants do not employ such a reverse’ print. Instead,

they use a light table and a rightside print. However, it is-

plaintiff’s contention that the accused machine functions ©

-* on the print in ex&ctly. the- same way plaintiff’s machine

functions on a reverse print, that is, either the same result

is achieved by a different means, or both processes are the.

_ same-or substantially the equivalent of each other. Both

|. procedures, in effect, are adapted to support a reverse. print.

<—

This was not. ‘the argument made: to the i office.

gees plaintiff urged that the use of a reverse print dis- -

tinguished its device from the Shaver reference. “Tf a man:

skilled in the art did not conceive of applicants’ method of

using a reverse print, ‘he would have to conceive of some

other-unobvious modification of Shaver, such as making the ©

‘table 14 and map 10 transparent, in order to permit the

Woody structure to be used in the Shaver apparatus.’ ” Defs.’

Exh. 2, pp. 61, 62, 63 of the file wrapper..

Plaintiff therefore takes inconsistent positions. To the

patent office, it was claimed that the use of a reverse print

was critical; to the court, it is suggested that the use of a

_ reverse print is either not essential or that it should be

given a broad construction. “...a party cannot take incon-

sistent positions concerning the same subject matter in dif- ,

ferent transactions. Hence, a patentee cannot argue a |

narrow construction of his claims when speaking to the

Patent Office and then argue a broad construction to ensnare

an infringér... A claim, having been narrowed i in order to

obtain allowance thereof by distinguishing it from a prior

patent cited by the Patent Office, cannot be broadened in an |

infringement suit to make the claim read on a structure

identical with that of such prior patent.” ere Walker

on Patent, Volume 4, §234.

The Ninth Circuit in Lockwood v. Senpendeet, 324 F.2d

82, 88 (1963), supports this position: “Also where, as in

this case, an applicant has been. required -to narrow his.

claim in order to distinguish it, any contention of the appli-

cant that such claim is not-essential or that it is infringéd

by an equivalent in the accused article, should be consid- |

ered with care and subjected to a narrow rather than a

-liberal construction.”

Claim 11 is directed solely at the definition of vertical

adjustment i in the router: jememtly. ms is limited to an inter- |

‘ . Appendia me gee

_ nally threaded sleeve and an electric motor threadedly re- _

ceived in said sleeve. Defendants do not however use this

exact method. Rather, they employ a rack and pinion to

accomplish a vertical sliding motion. In order then to estab-

lish infringement, this claim must be given the benefit of —

the doctrine of equivalents. In a combination patent such as

this, every element of the claim or its functional equivalent’

- must be found in the accused device. O-Tips v. — é

Johnson, 207 F.2d 509 (3rd Cir. 1953). ees

. In this regard it should be noted that plaintiff kent never

incorporated the principle of vertical adjustment in the

router assembly in a working model. The existence of

- plaintiff’s device does not extend beyond a paper sketch. It’

is no more than a paper patent, and its claims should be

given the most meager range of equivalents. Irvin & Co.,

Inc. v. Westinghouse Air Brake Co., et al., 121 F.2d 429

(2nd Circuit 1941). A paper patent must be strictly con-

strued. Modern Prod. Supply Co. v. Drachenberg, 152 F.2d

203 (6th Cir: 1945) cert. den. 327 U.S. 806 (1946). Further,

- in an infringement suit, the issue of paper Patent may ap-—

pear either as a challenge to validity or as a legal reason -

for restricting the scope of the patent.‘General Motors -

Corp..v. Kesling, 164 F.2d 824 aie Cir. 1947),. cert. am. Be

333 U.S. 855 (1948). .

It is therefore possible for the court to rule that claim

11 is not infringed by defendants’ machine by narrowly

construing the claim and its equivalents. “The mere fact”

that the accused article performs the same function and

achieves the same result as the patented article does not

necessarily establish infringement unless it can be found

that this is accomplished in substantially the same way and

where, as in this case, the art is fairly crowded and the main

elements of the patent are found or indicted i in peiet art,”

Tee Fe gf AES

this issue should be determined. narrowly. rather than liber-

ally. If in fact, not merely colorably, the accused article

departs from the teaching of the patent in the means by

- which it achieves the result there is not Gisee kee is

Lockwood v. . Langendorf, supra.

Claim 14 also defines verticle adjustment but is broader

- in scope than claim 11. “. . . adjustable connecting means

interconnecting said sii and: said body for adjustably

positioning said -ronter at a plurality of front positions

along said axis .. .” If this claim were literally construed,

there appears little doubt. that it would read upon the ac-

cused machine, since any method employed for vertical ad

justment would be preempted by the above definition. How-

ever, 35 U.S.C.A. § 112 states: “An element in a claim for

8 combination may be expressed as & means or step for

performing | ia specified function without the recital of struc-_

- ture, material, or-acts in support thereof, and such claim

shall be construed to cover the corresponding ‘structure, —

material, or acts described in the specification and. equiva-

- ‘Tents thereof:” As such, we must look back to claim 11 to

7 ‘ determine what means are employed by plaintiff to achieve

vertical adjustment, the specific method. not having been

defined by 14, - :

Any reference back to claim 11 would again involve a

discussion of the doctrine of equivalent and the law appur-

tenant to paper patents. In both bases the result should be °

the same, i.e., the accused. device does not infringe upon

plaintiff's patent.

| THE Aiecep Trave SEcret |

Plaintiff’s second cause of action which relates to unfair

_ competition alleges the appropriation of a trade secret, i.e.,

_ the concept of putting the sole vertical-adjustment in the

router assembly. Jurisdiction of the court is based-upon the

ae peoelaiaas of 28 U:S.C.A: §1338(b), It is plaintifi’s position

\,. that the defendants learned of this trade secret during their =

~\ employment by plaintiff and that they appropriated and —

incorporated this concept of vertical adjustment in the.

router assembly into a similar apparatus with the intention ee

of competing with plaintiff. poe

“ The evidence adduced at trial fails to support this conten-

tion. The, concept of putting the vertical adjustment into

the router by using a threaded sleeve and motor was admit-

tedly' conceived by Virginia Green during a conference on

April 25,'1961) \with her attorney who drow's a sketch em-

bodying this principal.

No evidence was presented which would establish that

either defendant had access to or in fact saw the drawing.

Rather, the plaintiffs rely in total upon the testimony of one

Wold that Neklason. had discussed this concept with him

_ while in the employ of plaintiff, but at-a time some. time

hefore.the aforementioned conference. The testimony at best

was vague. Neklason on the other hand stated he could not

recall any such conversation.

It is interesting to note that defendant N usbaum was ad-

mittedly.not involved in this alleged’ appropriation, but it

was he, not defendant Neklason, who suggested the idea of _

- putting the sole accurate vertical adjustment into the de- ©

ey router. (6 Tr. 711,712) Mi A

CoUNTERCLAIM Fon. Usvam Comperrrion—

Defendant’s cause of action arises out of statements made

by Leila Johnston to certain persons and the San Francisco

Redevelopment Agency that defendants had appropriated

‘plaintiff’s trade secrets and infringed its patent. As a result

of these statements, defendants alleged they withdrew their

bid on a Redevelopment project even though it was the low =

AIG — Appendite

“ehh The profit that would. have been made on tts project

te the eum total of the prayer for damages. Moreover, de-

“2 tendanté have not attempted to establish that they have been

ih any Way injured in their trade or profession biy the state.

ments made to others than the San Francisco Redevelop- —

ment Agency.

oe ,

Since a qualified priyilege exints to. charge one ewith patent

infringement even though that claim may later prove erro- -

neous, defendants must prove lack of good faith by the

‘apeaker in the trath of the utterance and inalice, In neither

‘of these. reapects have the defeadants carried their burden -

of proof, :

Ooearmcnane ror Sicisineiie St UDGMEN'T |

As siuaaly noted, the plaintiff has. charged the defend.

ant with infringement of only four of the fourteen claims

* that comprise the patent. Defendants however pursuant to

the provisions of 98 U.S.C.A, § 2201 request a determina- —

~~ tion of validity_as to all claims, Plaintiffs have questioned

<

~ the power of the court to pass upon the merits of more than fc

the four cited claims. rc

The finding of ‘non-infringement forecloees any need to ,

discuss the merits of the defenses related to- alleged: in-

validity as. to any and all clainis. “To hold a patent valid

if it is not infringed is to decide a hypothetical. case.” .

Aiposher v: Froomem, 219 0.8. 860, 363 (1942). ° )

_ Moreover, the court need not decide the issue of whether

“@e- not jarisdiction exists under 28,U.S.C.A. § 2201 to pass

upon the validity of the ten non-asserted claims. In this

_wegard, two clearly established principles must be kept-in

_ waind. First, a patent is presumed to be, valid. 35 U.S.C.A.

§ 282; secondly, even where jurisdiction to render a declara-

| tery judgment exists, a court may, in the exercise of its...

a.

a pre oe AT

2 sound Alscretica, refase to" render the decision scght if.

+ it ds unnecessary to a practical solution of the —

~ Moore’s Federal Practice, § 57.20.

! SRS, the court finds as follows: un : s :

Finprxas or Facr |

Patent Infringement

i, Architectural Models, Inc, is a California eigiintins )

having its principal place of businéss in San ey .

- California, 7 :

“9—Nils Gy Neklason is an individual residing in East

Palo Alto, California. ee fas

3, Donald Nusbaum is an individual residing in 1 Palo

Alto, California.

4, Nils ©, Neklason and Donald scoioai are a ieee

: business é as partners under the name and style Scale Models

Unlimited i in East Palo Alto, California. 3

5. This is a suit for patent infringement and for appro- __

- priation by defendants of an alleged trade secret of plain- _

tiff. Defendants deny. infringement and assert invalidity :

on various grounds including lack of patentable invention “: °

(35 U.S.C. 108); public use and/or sale of the invention

more than one year before the patent application -was filed |

(35 U.S.C. 102 (b)); and failure of the-elaims to point out

. the invention’ (35 U.S.C, 112), Defendants also assert mis-

“use of plaintiff’s patent as a defense and they counterclaim —

for unfair competition by. plaintiff arising out of facts

geanreny mailer to the ‘facts upon which misuse is ' predi- .

cated.: d

a Plaintiff sues only on Claims! 4, 5, 11 and 14 of its

_ patent. Defendants assert and plaintiff denies that the

_other claims of the patent (Claims 1, 2, 3, 6-10, 12 and me

are at issue with i a to their meager

Pa

Als Appendiz

7. Tho only claims asserted by plaintit! are claims 4

5, 11 and 14.

7 Claims 4:and 5 are‘ to the apparatus as a whole,

including the framework which supports a contour map on

a table below and a workpiece above, as well as the router

assembly. Each of these claims states that the map-

. supporting table is “adapted-to support a reverse potas of

a topographical map.”

_ 9% Literally, any table, including the lower table of de-

fendants’ apparatus, is adapted to support a reverse print

of a topographical map.

10. However, this feature—“adapted to support 4 re-

. verse print of a topographical map”—was introduced by

amendment to overcome a ground of rejection and it was

~ _ emphasized during prosecution of.the patent application

in the Patent Office as a feature which distinguishes the

invention from the cited prior a¥t. To give Claims 4 and 5

a broader interpretation and, in effect, to treat the language

“adopted to support & ‘reverse print of a topographical

map” as meaningless surplusage would be to give these

edeoahabilacinnae Gad dasa e enh tabticheet

by the Patent Office and would recapture subject matter

that was relinquislfed in the Patent Office in order to obtain

allowance of claims. More particularly,\to give Claims 4

and 5 a scope which would cover defendants’ appartus, in ?

which there is a translucent table equipped with lights be-

neath (such being referred to as a “light table”), and

which. makes it possible to use a positive or right reading

map with its attendant advantages over the.use of a reverse

print, would be to give Claims 4 and 5 a scope broader than

was intended by the Patent Office and broader than was

represented by the plaintiff to the Patent Office. Such

eee

—_

Avpendia a9

ants’ light table and use of a right reading print) is.

reinforced by the following argument presented by a

tiff to the Patent Office 0 Se ee ee

Defs’. Exh. 2, page 63): ~

“Thus, the modification of Shaver to Seidel:

opposed tool and stylus from Woody would require

the conception of a method of use of the apparatus

which would not be ébvious toa man skilled in the Art.

Tf a man skilled in the art did riot conceive of appli-

' cants’ method of using a revérse print, he would have

_ to-conceive of some: other unobvious modification of

Shaver, such as making the table 14 and map 10 trans-

parent, in order to permit the Woody structure to be

used in the Shaver apparatus.”

The references “Shaver” and “Woody” in the above ex-

cerpt are to two patents cited by the Patent Examiner and

which plaintiff sopght to overcome by arguments including

the argument quoted above.

11. Claim 11 io directed $0 the. adjustable renter as-

sembly itself, apart from the rest of the machine. This

claim is limited in its wording to (a) an internally threaded

sleeve, such as the sleeve 24 in Figure 2 of the patent and

(b) an externally threaded motor which is threaded into

the sleeve as shown at 28 in Figure 2, such being the means

for effecting vertical adjustment by screwing the motor

_ down into or up out of the sleeve.

12. Defendanis’ appartus does not employ this construc-

tion. Instead, defendants’ router assembly employs a rack

and pinion and the motor is moved up and down by sliding

it within an outer sleeve. It is-not moved by screwing it »

down into or up out of the sleeve.

13. In view of the fact that the apparatus of Figure 2

was never built, tested or used by plaintiff, the rackand

pinion construction of defendants’ machine is not the equiv-

A20 Appendiz

Seah ih eemists tpn cf cectAbcien ef Piguee 2 ond

_of Claim 11 of the patent. hg

- 1& Claim 14 is broadér in terminology than Claim 11

because, instead of reciting a threaded sleeve and a thread-

ed motor, it recites “adjustable connecting means intercon-

necting said motor and said body for adjustably positioning —

said router,” etc. However, viewed in the light of 35 U.S.C.

112, third paragraph, which reads as follows :. |

“An element in a claim for a combination may be ex-

presaed as a means or step for performing a specified

function without the recital of structure, material, or

acts in support thereof, and such claim shall be con-

strued to cover the corresponding structure, material

or acts described in the ‘specification and eqitivalents

thereof. ,

Claim, 14 must be limited to the Figure 2 structure and

equivalents. Having found that the rack and pinion con-

struction of defendants is not the equivalent of the threaded, ~

screw-in type of structure of Figure 2, it follows that Claim

14 is no broader in scope than Claim 11 and that defendants

do not employ the structure of Claim’14.

The Alleged Trade Secret:

15. Defendant Neklason was employed by Plaintiff and

and its partnership predecessor.from May, 1958 to Septem-

ber 28, 1962.

16.'. Defendant Nusbaum was employed by Plaintiff

from November 1, 1961 to September 28, 1

17. Since about October 1, 1962, Deferidants Neklason |

and Nusbaum have been doing business under the partner-

ship name Scale Models Unlimited at 2534 ne Avenne, _

East Palo California. _ —

‘18. Plaintiff asserts that it possessed a “sini secret

during the cc sae of defendants by plaintiff, such

ne

b

or Lae an

trade seeret arising out of and being embodied in plaintif?’s

Exh, O, which is a sketch made on or about April 25, 1961 ,

_ and which shows two embodiments of the idea of an adjust-

. able router asgembly including the screw-in type of router

assembly shown in Figure 2 of the patent.

19. Plaintiff contends that the defendant Neklason (the

defendant Nusbaum being exculpated‘altogether) heard or |

learned of this alleged trade secret during the period of

his employment by plaintiff and appropriated it to the use

of defendants after the defendants left the employ of plain-

tiff, set up their own competing business and decided to’

build a model cutting machine.

20. Defendants’ router assembly. employs the broad con-

cept of a vertically ‘adjustable router wherein the vertical

adjustment in proceeding from one contour level to another

carried out by manipulating the router assembly rather

| wee by manipulating the main frame of the machine. How-

ever, defendants’ router assembly, which is shown in Figure

1 of its own patent No. 3,224,339, Defs’. Exh. 8, and which

was exhibited in court at the trial as Defs’. Exh. 25, does not

have a screw-in type of adjustment as in Figure 2 of the

patent. Instead, it employs a rack and pinion adjustment

whereby the motor is caused to slide up and down within

a sleeve without rotating.

21. Plaintiff did not use and never ioe used its fpneee

trade secret in any form whatsoever. In selecting a design

for its second machine in 1962-63, plaintiff considered but

rejected the use of its alleged trade secret. Instead, plain-

_ tiff substantially duplicated the design of its first machine

employing jack screws, sprockets, a chain and a hand wheel.

22. Plaintiff offered no evidence that it came into pos-

session of any trade secret pertinent to this cause until on ©

or aboyt April 25, 1961. The only credible evidence on this

paint is that plaintiff first acquired knowledge and posses-

: -gonerete -enibodiments. of the - alleged trade secret, As—

‘atated, plaintiff makes no claim of appropriation of a trade

. seoret by the defendant Nusbaum, The defendant Neklason

3

sion of the allegtd trade secret on or about April 25, 1961,

at which time a sketch, Pl’s, Hxh, O, was prepared.

$8.» There te no evidence that either of the defendants:

saw or had access to Pl’s, Exh, O or to plaintiff's patent

application before the patent iasued, These were the only

testified without contradiction that he did not see Mxhibit

Q or plaintiff's patent application until after plaintiff's.

patent issued, The only evidence that Neklason knew of the.

alleged trade aeoret is the testimony by deposition of plain-

tiff’s witness Woldy which was read into the record at 5

Tr. 541-582, that in a conversation between (Wold) and

Neklason, the broad idea of putting -the vertical adjust-

ment into the router was discussed, Wold’s recollection was

that the subject was discussed only in a very general way.

It was described repeatedly by Wold as a “passing ae"

and without any details being discussed.

4. Wold clearly recalled that this discussion with Nek-

lason occurred within a week or two after tho first machine

was’ delivered to plaintiff. Inasmuch as this first machine

was delivered in June of 1960, this places the asserted ¢on-—_

versation (if in fact it took place) in June or July of 1960.

25. Neklason testified that he did not learn of the alleged

trade secret during his employment by plaintiff and that he

had no recollection of any such conversation with Wold. If

there was such a conversation and if it included a discussion

of or reference to a router assembly having a vertical

adjustment feature, this establishes that such idea was _

to Neklason prior to the time any rights were ac.

in the idea by plaintiff. Plaintiff could not have ; ac-

quired knowledge, hence possession, of the alleged trade

secret until about April 25, 1961. _—

/ : Appendia | A23

26. es of the date of the alleged Wold-Néklason conver-

~ sation in June or July, 1960, neither Wold’s testimony nor ~

any other evidence attributes to plaintiff or to Virginia .

Green or to Leila Johnston the idea of putting the vertical _

adjustment into the router assembly. Insofar ag the evidence —

sliows, such idea may have been originated by Wold or by

‘Neklason or by some other person other than plaintiff,

Virginia Green or Leila Johnston.

27, There is no evidence that any of the ‘employees of

plaintiff, including Wold. and Neklason, was under any

obligation to communicate ideas to plaintiff or to assign

ownership of ene ideas and patent rights therein to _ os

tiff,

, 28.. When defendants left plaintiff's employ ond set up

their own competing business and decided to build a model

making machine, it was Nusbaum who first suggested that

the vertical adjustment to be placed in the router assembly,

and it was Neklason who thereafter, in response to Nus-

_baum’s suggestion, suggested the rack and pinion mechan- |

"ism which is shown in Fig. 4 of defendants’ patent 3,224,339,

‘Defs’, Exh. 8 and which was embodied in defendants’ actual

router assembly, Defs’. Exh. 25.

29. There is no evidence that plaintiff advised or in 1 any

manner brought home to its employees, including defend-

ants, that any of the following items were secret and/or -

were to be treated in confidence:

. (a) Its model making machine or components thereof.

(b) The broad idea of putting the vertical adjustment

into the router assembly.

(c) The.specific ideas set forth in Ps, Exh. O, including ©

the screw-in type of arrangement shown in Exhibit O and -

reproduced in Figure 2 of the patent.

At the time defendants left the employ of plaintiff they

were warned that plaintiff’s machine was plaintiff’s prop-

Pi

am tie; (

erty and was the subject of a pending patent application.

However, any knowledge that defendants may have acquired

“of the alleged trade secret A acquired hefore this warn:

Ang Buch warning was, at Most, ea. pot facto-in nature,

Moreover, the asserted warning did not. _ out any trade

necret,

30. Apauming the salabenee ofa trade weored with respect

to Pls. Rxh, O, that defendants learned of this secret and

that they appropriated it to thelr jie, it ‘was not a trade

wecret weed in plaintiff's business atid ite-use by defendants

alid not canee damage to plaintiff, ~

Counterclaim for Unfair Competition:

Si, The defendanta have not proven that plaintiff or

~ anyone acting on behalf of plaintiff has made any atatetient

to a customer or prospective customer of the defendants

which damaged the defendants in any way, ;

S32. The defendants -have not proven that plaintiff or

~ anyone acting on behalf of plaintiff has made any statement

to any customer or prospective customer of the defendants

which was either false or nialicious or intended to, drive the

—— out of the model making business,

Counterclaim for Declaratory Relief:

33. The Green et al Patent contains three ‘groups -of

claims, namely (a) claims directed toward the type of ma-

‘chine shown in Figs. 1 and 2 of the patent, (b) claims

directed toward the type of machine shown in Figs. 3-5 of

_ the patent, and clcims which are generic té both types of

waachines. Plaintiff has charged the defendants with in-

’ fringement of some of the claims in the first group men-.

_ tioned above, but has not charged the defendants with in-

fringément of any of the remaining claims in the patent.

a

: Appondie Seas A

84 Tn cicanaiies with the defendants’ use of, the ac-

cused machine illustrated in Exhibit Q, plaintiff seeks re-

lief for patent infringement solely on this basis of Claims

4, 5, 11 and 14 of the patent, and were those claims either

invalid or not infringed, the defendants would prevail in

the patent. infringement action,

85. No useful purpose would be served By rendeting

a declaratory judgment of invalidity or non- infringement —

- .. of claims 1-3, 6-10, 12 or 13 of the Green et al Patent.

Conciumoms:. !

I

This court has jurisdiction of the subject matter of the

patent infringement claim, the plaintiff's claim for unfair

competition for theft of trade secrets, the defendants’

counterclaim for unfair competition, and the defendants’

. counterclaim for declaratory relief, and this court has jur-

isdiction over the parties, Venue is properly laid.

II

Claims 4, 5, 11 and 14 of the patent are not infringed. by « “a

defendants because, if they are correctly interpreted under

35 U.S.C. 112, these claims are limited to a particular form

of device (a vertically. adjustable router assembly as

shown in Figure 2 of the patent). Defendants do not em-

ploy that form of device or its equivalent. Also, Claims 4 &

and 5 require the use of.a reverse print which is not. re-

quired or used i in defendants’ device. ove

.

Ii |

Plaintiff’s cause of action for appropriation of trade

secret fails because of lack of proof of: — ;

(a) The existence of a protectable trade secret.”

(b) —- of a trade secret by Plaintiff,

828 ) 4

(©) Kudwiedse by dalusntts of any 5 nds secret,

such knowledge being acquired by defendants wader

circumstances that would give rise to an obligation not

to use the same.

‘ (d) Use by defendant’ of any trade secret. _ a ‘

‘(e) Damage to plaintiff arising out of use of

rade secret by defendants. . |

Plaintiff has not competed unfairly with the defendants.

“Plaintiff i is entitled to a judgment dismissing defendants’

: counterclaim for unfair ——

aD ie

_. With respect ‘to the application for attorney fees on the

part of the defendants, the court denies ‘the application ~

under 35 U.S.C. § 285 and finds that it is fair, equitable and

just that both parties pay their own shcarhida fees. and

+. costs, *

oS Jr appropriate jodguest may. ;be ceerea & defendants

consistent’ with the foregoing. 7

Dated: seca 24, 1967.

perry <2

dl

eo

/8/ GrorcE B. ‘iin

United, States District J udge

ge coe oo

al ) °

"acne G. Lowburet : | ee

2500 El Camino Real

Palo Alto, California —

82r-61I0 tis

‘ Gregg & Stidham

Edward B. Gregg a

- 483 Mills Building |

San Francisco, California : s

781-1448 ; az

: Attorneys for Dislihiiaite epee

In The United States District Conte

Northern District of California —

Civil sessed 0. 42,812

~ ARCHITECTURAL Mobzts, Inc., a Califoznia \

| corporation,

Petitioner,

vs. |

a C. Nextason_and Donatp Nusspaum

| _ doing business as ScatE Movers Unum-

: ' ITED, — :

Defendants.

FILED—March 10, 1967

' Clerk, bes S. Dist. Court San Francisco

ae : _ JUDGMENT

- This cause iis been tried, bijefed and ‘argued and ~

« this Court having, on February 24, 1967, renderéd a:Memor-

~ andum of Decision and having on such date entéred its

Findings of Fact and Conclusions of Law, it i is ordered and

‘adjudged as follows: |

ree * Defendants have not inbrinaed Claims 4, 6, 11 and

-14, or any of them, of Piaintiff’s U.S. Patent No. 3 ,137,209,-

¥

a

‘tion of trade secret ‘is dismissed. - cy

such claims ing | ‘the ensky: claims asserted by plaintiff

ae against defendants.

IL. Defendants, and neither‘of. ner is liable to plain ne

for appropriation of a trade secret. ~~

Til. Plaintiff's First Cause of Action for iabent in-

fringement is dismhissed. » &y, ae

UIV. . Plaintiff’s: Second Cause of Action for. appropria-

V. _ Plaintiff has not unfairly Ear with bs dafaestate

VI. Defendants’ Second Counterclaim for unfair com-

petition is dismissed.

VII. No judgment i is rendered as 5 to the validity of any

; of the claims of patent No. 3,137,209 nor on any of the

other defenses asserted in defendants’ Answer or re- -

asserted in defendants’ First Counterclaim except the judg-

ment of non-infringement of Claims 4, 5, 11 and 14 set forth

in paragraph I of this judgment.

VIIl. Each party shail pay its own costs and attorney x

fees. -

Dated this 10 day of March, i967."

/s/ GzorcE B, Harris 3

U. S. District J udge

* Approved as to form:.

/s/ Karz A. Limpacu

. Attorney for Plaintiff

ers es ha

United States Court of. Appeals for the Ninth Circuit

+

vee a *

_ No. ca ses

AROHTTeCroRAL’ Monzrs, Inc., a . California.

ee

_ Appellant, 7

vs.

Nits C. NEkiason and Donato Summeonl e

doing business as ScaLz Mope1s yum-

JTED, =

Appellees.

[July 11, 1968] : -

Appeal from the United States District Court

for the Northern ee of Sacconmesinans

Before: ELY and CARTER, Cireuit a and REAL, —

District J udge®

PER CURIAM:

‘This is an action for infringement of Patent, No. 3, 137 209, | :

, issued to Virginia Green and Leila Johnston, thereafter

assigned to plaintiff (Appellant) Architectural Models,

Inc.; resulting in a judgment for defendants (Appellees). —

The complaint also contained a cause of action for unfair .

competition in the use of a trade secret.of plaintiff by de-

fendants. This issue was decided adversely to the plaintiff

at the trial, and no appeal has been: taken from this part of

the’ judgment.

Oe

'*Hon. Manuel Real, United States District Judge, Central -

District of California, sitting by designation.

«4

PADIS ALMA ALOE ES EP OR En

Pee tee

Hci ala Bais 6 BAS

‘A30 Soe. se, 22H A li ia te a

__ In view of the eare with which the trial court approached —

the problem and tried the case, the oral testimony which

§ taken as to the entire controversy, the credibility of the :.

-witnesses and the weight to be given to their testimony, <

which were entirely for decision by the trial-court;.and in

further view of the fact that the patent was a combination

patent in a crowded field, we cannot say that the trial judge ©

was clearly wrong. — é

* The judgment is affirmed

ad

\

a

<dosendie pee . ant

Ee United States Court of Appeals for the Ninth Circuit.”

+ § No, 21826 pe ee:

og

oe, _ AncHrreqgunat Moos, Ine. » a a California

al egies

: oa, “Appellant,

rf oo

Nus C: Nexiason and Donarp Nospavae

the Soata Mopvets UNLIMITED, . .

. ‘Appellees

——

APPEAL from the United States District Court for the

Northetn District of California. -

THIS CAUSE came on to be heard’on-the Transcript of

the Record from the United States District Court for the

Northern District of California ... and was duly submitted.

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 hereby - is

affirmed. — € *,

Filed and entered July 11, 1968

«

“_

CLAIM 4 OF PETITIONER’S PATENT EX\ M

4> Apparatus for making threé dimensional topographi- |

cal models which comprises:

a support frame having; a generally horizontal table _

_ thereon adapted to support a reverse print of a topo-

graphical.map representing the model which is t® be

made; work holding means rigidly mounted on said

frariie above said table for supporting above said table -

a mass of. material from which said model is to be

made; a tool carrier resting on said table and freely

|

* A382 — Poe Agpindle

, ‘movable over the surace of said table; an édectvio motor

_ mounted on said tool carrier an having; a tool receiv-

* ing chuck mounted hereon rotation about a gen-

~ erally vertical axis respaaSive to operation of said

moter, a rotary tool received in said chuck and pro-

jecting*upwardly from said motor and movable over ° . ae

sail table with said carrier, said tool generating a

cylindrical cutting shape responsive to operation of

_ said motor, a generally circular,stylus mounted on «~

said carrier adjacent to said ‘table with said stylus e

being coaxial with said axis of rotation of said chuck

and having a diameter substantially equal to the di-

ameter of said cutting shape and with both said chuck

and said stylus positioned between said table and

_ said work holding means; and, adjusting means form- ,

ing a part of said carrier for changing the distance be--

' tween said cutting tool and said canes |

CLAIM 14 OF PETITIONER’S PATENT EX M

. A tool for making three. dimensional topographical’

models which comprises :

a frame having; a base portion adapted to rest on and :

be moved freely over a flat. surface;'a body portion ~ °* ©

mounted on the base portion; a router mounted on |

.said body portion and having; a cutting tool thereon

facing away fromm said base portion with said rofffer- _—— -}-—

‘ positioned for rotating said-tool about an axis general-°

ly perpendicular to the flat surface on which said base

portion rests; adjustable connecting means intercon-. .

necting said royter and said body for adjustably posi-

tioning said router as a plurality of different positions

along said axis; and, a generally cylindrical stylus

mounted on said base portion adjacent to the surface on

which said base portion rests with said. stylus having

a circular end coaxial with said axis and bcc in, di-

ameter to the diameter of said tool.

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+ (IBRARY res

| FILED

In the Supreme | Court: o de -*

ii

|. IGHN F. paws, CLERK

United‘ States Siac =

OctoBER — 1968° = ae wear

No. 600 ‘

%

. 3 ‘

‘kacceonenas: MopELs, Ixc,, a 1 California

corporation,

- « Petitioner’

vs. '

Nus C. Nexiason and ‘Dowatp Nusbaum

doing business as Scate Movers Unum: .

ITED, - |

oa : Recsvndents:

Brief: in Opptattion t to

Petition oid Writ of ‘Certiorari -

: Ff

eA

‘Epwarp B. Grece

483 Mills Building

220 Montgomery Street - |

‘San Francisco, California 94106

‘i (415) 421-6581

ae : ., .° Attorney for Petitioner

Harvey G. LowHvurt »

2500 El Camino Real -

Palo Alto, California 94306

- (415) 321-6110

- Lipprncort, Grea, Henpricson & StmHAM

483 Mills Building

220 Montgomery Street 4

’ San Francisco, Californai 94106

. (415) 421-6581.

* Of Counsel

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| ma the SupremeC Carnet of the

‘United. “States 7 -

- Ocronen ‘Tunic, 1968

No. 600

? ARCHITECTURAL Movais, wi a California

——s ot

| ’ Petitioner, . Me

i Mites:

_ Nuays.C. Nexkiason ‘and DonaLp Nussaum

Ca _ doing dnsiness as’ Scats MopELs Ustam- ce

“Respondents.

Brief in Opposition.to ”

Petition for Writ of Certiorari 8

INTRODUCTION. )

Respondents et submit that the Petition should. es

_ be denied for the following reasons : poses

- 1: The Petition omits facts swhich are *cistibiad to fon-

, sideration of the questions presented. Therefore, the Peti-

tion does’ not comply with Rule 23°(1) (nhs of the | Rules of

3 this Court. 3

.: Q- No conflict of authorities is asserted except for an

~ alleged (but nonexistent) conflict between the Patent Office

on the one hand and the lower courts on the other hand as"

to the interpretation of a statute (35 USC 112, last para-

o

etd

graph). No authority and no reason are given why. the clear’

‘and unambiguous ae of this statute means anything

- else than it says..

_ 3.. No important question of law is 2 ae ; no Teason’

_ is given for departure from the “fwo-court rule” of Graver

Tank & Mfg. Co. v. Linde Air Products Co., 336 US 271,

"274, 275 (1949) ; and no reason is given for departure from

” the rule of file wrapper estoppel as’stated in Exhibit Supply —

Co. v. Ace Patents Corporation, 315 US 126, 135, 136 (1942).

- These reasons are elaborated ‘below. An appropriate’.

introduction is the following paragraph from the opinion —

of the Court of Appeals.in this case which appears in the

Petition at A 30' and which is reported at 158 USPQ 583.

“In view of the care with which the trial court ap-

proached the problem and tried the case, the oral |

testimony which was taken as to the entire contro-

versy, the credibility of the witnesses and-thé weight

to be given to their testimony, which were entirely for .

decision by the trial court; and in further view of the ~

_ fact that the patent. was a combination patent in a

crowded field, we cannot say that the trial oo was

clearly wrong.”

° DISCUSSION

hk The Petition Omits Facts Material to Consideration of the

As to Claims 4 and 5, the question, setsieeed is whether

the language “adapted to support a reverse print” limits

these claims to apparatus which requires and uses a reverse

print. Petitioner’s apparatus requires and uses a reverse

1. Reference to Appendix to the Petition is given by the letter

. A followed by the page. Reference to the Reporter’s Transcript, _

Vols. 2-6 of the record here, | is given by the letter Tr. followed a

the page.

©:

a”

-pendix hereto. This relevant fact—omitted from the

estoppel and the authoriti¢s relied upon in the

print; Respondents’ soparstan does o< won and does

not use a reversesprint.

‘The Petition omits mention of the ms that. this leagungs

(more particularly, the reference’ to “reverse print”) was

inserted by amendment in response to. arid to overcome a

rejection by the Patent Office. See Finding of Fact. No. 10

at A 18, 264 F. Supp. at 318, 319. The importance of a

reverse print was ra th® Patent Office; see Ap/”

tion—brings into the play, doctrine of file

(See this Brief, pages 6 and Timfra). . — ed

The Petition also omits mention of the fact that Respond-

ents’ apparatus, because it employs a light table and there-

fore dispenses with the need for a reverse print, provides

advantages. These advantages are referred to in the opin- .

ion of the District Court-in Finding No. 10 at A 18, 264

F. Supp..at 319. These advantages were the subject of testi- |

mony at the trial. Tr. 683-687.

As to Claim 11 the question presented is whethee the |

_ rack and pinion adjustment of Respondents’ machine is the

equivalent of the screw-in adjustment ‘of Applicant's ma-

chine.and of Claim 11.:

_ The Petition omits mention of the fact that Respondents’

device has advantages over Petitioner’s device; and that

there was testimony and a demonstration at the trial of .

of the differences between the two machines, of the advantages _

of Respondent’s machine, ‘and of the disadvantages of —

Petitioner’s machine. Tr. 704-711 ; 170-171; 174-177; 423-

424; 177-178.

The Petition also omits mention of the holdings by both’

lower courts that the prior art is close. See opinion of Dis-

trict Court at A 13, 264 F. Supp. at 316; opinion of Court

of Appeals RAS, 158 ae ,

o

*, |

\__ As to Claim 14, the question presented is whether its

“means” clause is entitled to a broad literal interpretation

(according to which there would be infringement) or re-

quires a narfow interpretation under 35 USC 112, last

paragraph (according to which there is no infringement).

The Petition omits mention of the fact that Claim 4 was

an afterthought which was introduced into the patent ap-

plication only aft& Petitioner had demanded and received

access to Respondents machine and had inspected it. Def’s.

Exhibit 2, pages 45-47 ; 28-29; Tr. 611-612.

' As to both Claims 11 and 14, the Petition leans heavily

on Graver v. Linde, 339 US 605 (1950)? and quotes at length

from that case at pages 14 to 16. However, the quotation

4n the Petition. stops one sentence short and is limited to

that aspect of the doctrine of equivalents. which favors

Petitioner’s side of the case -and entitles a ‘patentee to a

broad, non-literal interpretation of his claim. But the next

‘sentence of. Graver II, following case citations, presents

the other side of the coin. This side of the coin was relied

upon by the courts below. The applicable sentence (which

was omitted from the Petition) reads as follows:

* “The wholesome realism of this doctrine is not al- .

ways applied in favor of a patentee but is sometimes

‘used against him. Thus, where a device is so far

changed in principle from a patented article that it

‘ performs the same or a similar function in a substan-

tially different way, but nevertheless falls within the

literal words of the claim, the doctrine of equivalents

may be used to restrict the claim und defeat the pat-

2.* This is the second Graver case (Graver II) which dealt with

_ the issue of infringement. The earlier Graver case (Graver I), |

which is discussed below in connection with the two court rule,

dealt with validity. The parties and the patent were the same in

‘ Graver I and Graver IT.

.

— ee ne

| dithe, Po

entee’s action for infringement. Westinghouse v. Boy-

den Powet Brake Co., 170 U.S. 537, 568, 18 S.Ct. 707,

722, 42 L.Ed. 1136.”

_ It is, therefore, clear that many facts were adduced at

the trial which influenced the decision of the District Court _—

in favor of Respondents and which influenced the Court

of Appeals in its per curiam affirmance of the decision of -

the District Court. Clearly this is a case decided upon

. particular facts developed at a trial and falls clearly within

; the two-court rule of Graver I. See page 6, infra.

ll. No Conflict of Authorities Is Asserted Except for an Alleged

| (but Nonexistent) Conflict Between the Patent Office on the

One Hand and the Lower Cou:ts in the Present Case on the

Other Hand as to the Interpretation of a Statute (35 USC

. 112, Last Paragraph) . ae

\ The only asserted conflict is a supposed conflict betweea

the Patent Office interpretation of the claims, or some of

ther, and the interpretation placed upon these claims by

the courts below. Assuming that the Patent Office did in

fact interpret Petitioner’s claims, or some of them,* no

authority is cited for the proposition that a Court in an

infringement suit is bound by that interpretation. Prosecu-

tion of a patent application in the Patent Office is ex parte;

a defendant in a subsequent infringement suit is not a

party to this proceeding; and at a subsequent trial where

a defendant is represented, new facts are usually brought

out (and were brought out in this case) which were not

3. Mr. Limbach’s affidavit in support of Petitioner’s’ petition to

make special, which is reproduced at A5, merely asserts that “some

of the claims in this application are unquestionably infringed by

said [Respondents’] device”. No specific claims were identified;

therefore we do not know whether the Patent Examiner regarded

any of Claims 4,‘5, 11 and 14 as being infringed.

KAREN es LORE NTR EEE NPRM EAR AS ll RETIRE IO. ASICS ESTE at NR

before the Patent Office. Graver II is ample authority for

the proposition that the literal language of a patent claim

- providgs only a prima facie basis for determining infringe- a

ment or non-infringement and that the particular facts and

circumstances developed at a trial may lead to a construc- . - a

tion of a claim which is broader or which is narrower than

. a literal reading of the claim. In the present case, the facts

and circumstances developed at the trial: persuaded both

courts below that the claims are entitled‘only to a narrow,

non-infringing construction. The present case is clearly one

calling for application of the two court rule of Graver I.

Ill. No Important Question of Law Is Presented; No Reason Is __

Given for Departure from the Two Court Rule of Graver |;

and No Reason Is Given for Departure from the Rule of File

Wrapper Estoppel in Exhibit Supply v. Ace Patents |

No important question of law is stated in the Petition.

All the Petitior says on this point is that the case should fl

have been decided differently.

_ The “two court rule” is stated i in Graver I at 336 US 275

as follows: on

_ “4 eourt-of far such as this Court is, is, "lion than

a a court for correction of errors in fact finding, cannot _

undertake to review concurrent findings of fact by

o courts below in the absence of a very obvious,

and exceptional showing of error. Goodyear Tire &

Rubber Co. v. Ray-O-Vac Co., 321 U.S. 275, 64 S.Ct.

593, 88 L.Ed. 721; District of Columbia v. Pace, 320

. U.S. 698, 64 S.Ct. 406, 88 L.Ed. 408; Williams Mfg.

* Co. v. United Shoe Machinery Corp., 316 US. 364, 62

* — §.Ct. 1179, 86 L.Ed. 1537; Baker v. Schofield; 243 U. S.

rm 37 S.Ct. 333, 334, 61 L.Ed. 626.”

That rule is applicable here.

Regarding file wrapper estoppel, this Court in Eechibit

* Supply Co. v. Ace Patents Corporation, 315 US 126, 136

. .

(1942) stated the ‘ila that when a » tateahes ‘itrodnons lan- See

guage into his claim to overcome a rejection by the Patent ~*~

Office he may not i ignore that language in subsequent litiga-

tion. See also Lockwood v. Langendorf,’324 F.2d 82, 88

‘(9th Cir., 1963) and Top-Scor Products, Inc. v. The H. C.

Fisher Company, 257 F. Supp. 775 (D.C., N.D., Ohio, 1966).

No reason is given for departing from that rule in this case.

CONCLUSION | a

It is apparent that the Petition is without merit bind: :

should be denied.

Epwanp B. GREGG ?

Peis tts for Petitioner

Harvey G. LowHurtT

Lippincott, Grecc, HEnpricson & Smpnam

Of Counsel

ah