Petition for Writ of Certiorari — Blumcraft of Pittsburgh v. Citizens & Southern National Bank
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SUPREME COURT, UW. &.- |
MAY 3° 1969
IN THE
— Supreme Court of the Unite
October Term, 1968.
No.1355
.
BLUMCRAFT OF PITTSBURGH, a Partnership Consisting f
of Hyman Blum, Max Blum, Louis Blum and Harry P. Blum, t
Petitioners,
CITIZENS AND SOUTHERN NATIONAL BANK OF )
SOUTH CAROLINA, DANIEL CONSTRUCTION COM- ;
PANY, INC. and COLONIAL IRON WORKS, INC., i
Respondents. :
PETITION FOR A WRIT OF CERTIORARI TO THE a
UNITED STATES COURT OF APPEALS i
FOR THE FOURTH CIRCUIT. E
=
i
James C. McConnon,
Henry N. Pavt, JR.,
Paut & Pavt,
1815 Land Title Building,
Philadelphia, Pa. 191106
Ratru Bamey, Jr., .
Battey & Doriry,
125 Broadus Avenue, j
"a os Greenville, S. C. 29601 ¥
Attorneys for Petitioners.
International, 711 So, 50th St., Phila., Pa. 19143—Tel. SA 7-8711 Area Code 215.
»
INDEX.
I, OrprRS, OPINIONS AND JupGMENTS BELOW .........-.
II. STATEMENT OF THE GROUND ON WHICH JURISDICTION.
oF THis Court Is INVOKED .........0 ee ee eee eeeeeees
\
~
III. QuEsTIONS PRESENTED FOR REVIEW ......-.-++++00005
IV. STATEMENT OF THE CASE ....... oe ‘deehon Pees are aay:
A. The History of the Case ..............--05- beans
B. Louis Blum’s Inventions ........ EP erp
’ C. Decisions of the Courts Below .-...........00e2008-
V. REASONS FOR GRANTING THE WRIT OF CERTIORARI ......
A. Direct Conflict Between Decisions of the Court of Ap- 2
peals for the Fourth Circuit- and the Court of Claims
B. Failure of the Court of Appeals for the Fourth Circuit
to Meet the Minimal Demands of Comity Among
Federal Courts: Conflict With Mast, Foos and Co.
v. Stover Mfg. Co., 177 U. S485 (1900) .........
C. Direct Conflict Between Decisions Rendered by Differ-
ent Panels of the Court of Appeals for the Fourth
IE wines sv gk han heise bao Ci egiewndg eennernen es
. D. Important Question as to the Construction of § 103 of
ee ee Err eres Terr er erie ee
E. Important Question as to the Application of the Patent
Act of 1952 to the Design Patent ...............55.
VI. CONCLUSION ...... eee ee ccc cece cree eeceneneenceee
11
16
2 IAS ELE EN eee
~
TABLE OF CASES CITED.
. * | Page
American Air Filter Co. v. Continental Air Filters, Inc., 347
F. 2d 931, cert. denied 383 U. S. 934 (1966) ..........-. 14
Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., Inc., cer-
tiorari granted March 24, 1969, No. 1014, October Term,
ee, eye a eye eee Pays eee Pere 1, 17, 21
Blunicraft of Pittsburgh v. Architectural Art Mfg., Inc., No.
W-4037, D. Kan. 1968, filed August 7, 1968 .........2..00 1
Blumcraft of Pittsburgh v. porns _and Southern National
Bank, 255 F. Supp. 441 (D. S. C. 1966) ...........--. 4
Blumcraft of Pittsburgh v. The United States, 178 Ct. Cl. 798,
re me Bo 0g. fee eeeeerrere rrr Ts 1,9, 10, 16, 17
Calmar, Inc. v. Cook Chemical Co., 336 Fed. 110 (8th Cir.
| ere Seo Un Ae gck eek KEE RSGL AS MER RAMA SO ae
Cincinnati Butchers’ Supply Co. v. Wa ‘alker Bin Co., 230 Fed.
453 (Gth Cir. 1916) 2. 22a. cece ccccccesccesevccwecees 14
John Deere Co. of Kansas ry et al. v. Graham, et al., 333
F. 2d 529, aff'd. 383 U.S. 1 (1965) ....---- 0+ ee eee ee 215,17
‘General Motors Corp. v. ae 65 F. Supp. 187 (S. D. Cal.
BOND) ii vevdassivnvice sn bins oxesgedeessewissaseces 14
Glen Raven Knitting Mills v. Sanson Hosiery Mills, 189 F. 2d
. ef gk ae. | rere oe ree ee ee ee ere 19
Gorham Manufacturing Co. v. White, 81 U. S. (14 I 511
LL) eee ee Oe ee ee 19
Gormley & Jeffrey Tire Co. v. United States Agency, et al.,
CF Wk OR CO Ci; FOIE oi akin Shion ses - 14
Graham v. Cockshutt Farm sana Inc., 256 F. 2d 358
‘t Ee wD. . | Peeeeerrererrr ete Terre Te Tee eee 15
Graham, et al. v. John Deere Co. of Kansas City, et al., 383 U.S:
OS) ne 17, 18, 20
Hunt et al. v. Armour & Co., 185 F. 2d 722 (7th Cir. 1950) .. 14
Jeoffroy Mfg., Inc: v. Graham, 219 F. 2d 511 (5th Cir. 1955) 15
LaMaur, Inc. v. DeMert & Dougherty, Inc., 265 F. Supp. 961
(N. D, Ill. 1965) «2.00.0 eee eee eee eebeee howe pene ' 14
*
TABLE OF CASES CITED (Continued).
Page
Mast, Foos and Co. v. Stover Mig. Co., 177 U. S. 485 (1900)
1], 12, 13, 15, 16
Nickerson v. Kiitschera, 390 F. 2d 812 (3rd Cir. 1968) ..... ae’ a
Novadel-Agne Corporation v. Penn et al., 119 F. 2d 764, cert. |
denied 314 U. S. 645 (1941) ........ + PAN a tenes ad an |
Parsons Non-Skid Co. et al. v. E. J. Williams -Co., 190 Fed.
VE go et Serre See rT eet Ee 14
* Pavement Salvage Co., Inc. v. Anderson’s-Black Rock, Inc.,
4 Cir., 404 F. 2d 450, certiorari granted March 24, 1969,
- SG. CES, CAO GCM, FI TO go icc eer eeswwess 16, 21
Robertson Rock Bit Co., Inc. et al. v. Hughes Tool Co., 176
F. 2d 783, cert. denied 338 U.-S. 948 (1950) ............ 14
Schnell v. Peter Eckrich & Sons, Ine., 365 U. S. 260 (1961) 4
Smith v. Whitman Saddle Co., 148 U. S. 674 (1892) ...... 19
Stoody Co. v. Osage Metal Co., Inc., 95 F. 2d 592 (10th Cir.
RRA ET ire iy AN gt tye Rett ane rare 14
Technograph Printed Circuits, Ltd. $ Methode Electronics
Corp., 285 F. Supp. 714 (N. D. Ill. 1968) ............ 12
Technograph Printed Circuits, Ltd. v. Packard Bell Electronics _
Corp., 290 F. Supp. 308 (C. Be EE soos vac cree 12
Textile Mach. Works v. Louis Hirsch Textile Machines, Inc.,
BPP. SU Ae CD. BF. Ie Be BPSO) nics cndsvccees tis ) 28
Triplett v. Lowell, 297 U. S. 638 (1936) fig be ebadeseenke > 12
Warren Bros. Co. v. City of said York, 187 Fed. 831 (2d Cir.
SUED wir ceueh ee kdcaweta idee eRE Chic ee Kane eee te 6 13
Williams v. Hughes Tool Co., 186 F. 2d 278, cert. denied 541
Rey ee WE UNO ET SVUN Sc tde esas es cdeseyaes patil ie a al 14
STATUTES AND PERIODICALS CITED. :
. Page
Act of May 9, 1902, Chapter 783, 32 Stat. 193 ............ 19
Blaustein, The Presidential Commission and the return to the
Patent Act of 1753, 53 A. B. A. J. 911 (1967) ......... 12
House of Representatives Bill HR-13951, November -9, 1967 .. 12
Patent Reform Act of 1967, February 21, 1967 ............. 12
SOUR TOS era, COCOUUOE DO, FOE cece sscvaccsessoes 12.
ee ee Ga I Gch N Soa Keak re cee a Cen Rb eke heed eee 2
Be 0. Bes EE Ch ca nae vctcsbakbatnebun oeees hceeevbek 2
ea A Es os orawnns vebe ba WR s Ooo sevcenseeD Fs Mae
BDU. S.C. BIT coco seccccesesevinensecnscesvssuscens 19
PETITION FOR A WRIT OF CERTIORARI TO THE —
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT.
To the Honorable, the Chief Justice and Associate Justices
of the Supreme Court of the United States:
Your Petitioners, Blumeraft of Pittsburgh, a Partner-
ship consisting of Hyman Blum, Max Blum, Louis Blum
and Harry P. Blum, pray that.a Writ of Certiorari be issued
to review the Decision and Order of the Court of ‘Appeals
for the Fourth Circuit entered on February 19, 1969 and
that this case be listed for argument to follow An#erson’s-
Black Rock, Inc. v. Pavement Salvage Co., Inc., cert. granted
March 24, 1969, No. 1014, October Term, 1968. .
I.
ORDERS, OPINIONS AND JUDGMENTS BELOW.
(a) Decision and Order of the Court of Appeals for
the Fourth-Cireuit, Appeal No. 12719, February 19, 1969,
not oificially reported, unofficially reported at 160 U. S. P. Q.
642. |
(b) Opinion and Order of the District Court for the
District of South Carolina, May 29, 1968, 286 F. Supp. 448, -
158 U.S. P. Q. 642 (1968).
-(c) The patents here in suit are also before the United
States District Court for the District of Kansas in the fol-
lowing case, as yet untried:
Blumcraft of Pittsburgh v. Architectural Art
Mfg., Inc., No. W-4037, filed August 7, 1968.
(d) The design patent here in suit has also been ad-
judicated in the United States Court of Claims in
Blumcraft of Pittsburgh v. The United States.
178 Ct. Cl. 798, 372 F. 2d 1014 (1967).
Fe EE Ee Te Ie ee ee
es SE ed ee oad ee ee hd ee Be en
2 Petition for a Writ of Certiorart
Il.
STATEMENT OF THE GROUND ON WHICH
JURISDICTION OF THIS COURT
IS INVOKED.
(a) This is a suit arising under the patent laws of Bis
United States, Title .28 § 1338, of the United States’ Code.
(b) The jurisdiction of this Court is invoked under '
Title 28 § 1254 of the United States Code.
(c) The date of the Decree which the Petitioners seek
to have reviewed herein is February 19,969. No petition
for a rehearing was filed.
ITI.
QUESTIONS PRESENTED FOR REVIEW.
In 1954, the U.S. Patent Office issued a design patent
to Petitioner for a unique ornamental railing design com-
patible with contemporary rather than traditional architec-
tural styles. Also, in 1959, the U. S. Patent Office issued to
Petitioner a patent on a unique mechanism for connecting
a handrail in spaced relation to a post particularly adapted
to the needs of modern architecture. The U. S. Govern-
ment sought to use one of these patents without compensa-
tion to Petitioner. . Upon suit in the Court of Claims the |
design patent was held valid and infringed and the Govern-
ment did not seek review therefrom. This decision was
cited with approval by another panel of the Court of Ap-
peals for the Fourth Cireuit. Respondents have used the
same patents without compensation.
On essentially the same record and the same evidence
as was before the Court of Claims the District Court inde- |
pendently held the design patent valid and infringed after
finding as a fact that the design was novel and non-obvious.
The District Court likewise held the mechanical patent valid
and infringed. The Court of Appeals for the Fourth Cir-
cuit, however, without giving any weight whatsoever to
Petition for a Writ of Certiorari | 3
the Court of Claims decision, without resort to any evi-
dence other than that in the earlier case and that presented
at the contest in the Patent Office, reversed the Distriet
Court decision and held that both patents were invalid. The
sole basis for its decision wag that, even though the prior
art did not reveal the novel subject matter, of the patents,
highly skilled persons could have redesigned the prior art
to achieve the .structures- and designs set forth in the
patents at issue. Therefore, the questions presented for
review are:
(a) Did the Court of Appeals err in declaring
the design patent invalid when it (a) basically accepted
the District Courts’ finding that the ‘design was not
obvious because unusual and contrary to any normal
expectation, requiring considerable thought and sub-
stantial redesign of the prior art but, (b) went on, on
a basis unsupported by the record, to conclude that
persons highly skilled in the art could have redesigned
the prior art to achieve.the design?
- (b) Did the Court of Appeals err by applying
standards of patentability which conflict with § 103 of
the .Patent Act of 1952 and prior decisions of this
Court?
(c) Did the Court of Appeals err by giving no
consideration or weight whatsoever to the fmal ad-
judication of validity of the same patent by the U. S.
Court of Claims, thus denying comity to a final deci-
sion of a coequal federal court?
(d). Should the doctrine of comity among federal
courts be developed by this Court so as to limit the
endless relitigation of the validity of a single U. S.
patent in each of the Circuits. producing contrary re-
sults on the same record?
are ee eee:
4 Petition for a Writ of Certiora
IV.
STATEMENT OF — —
‘ The History of the Case.
The present law suit began on September 27, 1962 ds ©
the result of controversy between Blumeraft of Pittsburgh,
owner of the patents in suit, and Architectural Art Mfg.,
Inc., involving the infringement of Blumcraft’s patents by
ornamental railings advertised by Architectural Art. The
suit was brought against. the defendants, customers of
Architectural Art, as statutory infringers, when the specific
railings in suit were discovered, upon Avciltodasal Art’s
refusal to admit the manuvfa-ture and sale of the railings it
advertised.
Plaintiff attempted to have Architectural Art made a
party defendant on the basis of Architectural Art’s com-
plete control of the defense and counterclaim in this case.
After initially granting plaintiff’s motion, the District Court
reversed itself on the authority of Schnell v. Peter Eckrich
dé: .Sons, Inc., 365 U. S. 260 (1961). Blumeraft of Pitts-
burgh v. Citizens and Southern National Bank, 255 F.
Supp. 441 (D. 8S. C. 1966).’
The trial of the case began on May 17, "1967 and the
District Court rendered its decision on May 29, 1968, hold-
ing both Blum patents valid and infringed. Upon defend-
ants’ appeal to the Court of Appeals, the case was argued
on December 2, 1968 and on February 19, 1969 the Court of
Appeals for the Fourth Circuit rendered its decision re-
versing the District Court on the issue of validity of each
of the patents. The District Court’s findings of infringe-
ment were not touched upon by the Court of Appeals. The
Mandate of the Court of Appeals was stayed on March 19,
1969 to permit this petition to be filed.
1. The matter is somewhat confused by the Court of Appeals’
treatment of Architectural Art as a party actually before the court
(Appendix -p. 47a, third. paragraph).
Sa]
Petition for a Writ of Certiorari
B. Louis Blum’s Inventions.
About sixty years ago, Hyman Blum, an ornamental
iron worker who had-served his apprenticeship as a boy in °
Russia, established his business in Pittsburgh, Pennsyl-
vania. He made out of wrought iron the articles created
py architects for use in monumental buildings. His three
sons joined their father in his work. For more than forty
years, Louis Blum has been personally responsible for the
manufacture and even the design of many beautiful orna-
mental metal structures such as railings, grille work, com-
munion rails and lighting fixtures. In the railing field his
work initially followed the traditional patterns of orna-
mental railing design. ’
In 1952, Louis Blum was determined to develop a new
and original railing which would be compatible in design
with the growing number of monumental buildings being
designed by architects using contemporary rather than tra-
ditional techniques. He created a railing design in which
a plurality of rectangular vertical posts formed one plane
and a plurality of flat horizontal rails formed a separate
plane, parallel to the first plane, connected in a way to
produce a visual floating effect. After twenty-five years
of creative endeavor this was the first design for which
he filed a patent application. He obtained his patent in
1954.
When the Blumeraft firm began marketing the new rail-
ing design it met with an immediate, astounding success.
The business of the firm jumped 1700% within a period of
five years. In the same period its payroll grew from eight
or ten employees to between ninety and one hundred. These
results. were directly attributable to the ornamental and
" esthetic effect of Louis Blum’s new railing design, especially
upon architects who seized upon the design as one adapted
for use with a myriad of contemporary buildings. As
the Blumeraft design became successful, other manufac-
b pial 3 bia OE
SOE SETI
EB erwin eo
6 . Petition for a Writ of Certiorart
turers began copying it, including Architectural Art Mfg.,
Ine., an early customer of Blumcraft. ;
In 1956, Louis Blam perfected a unique mechanism for
attaching a handrail in spaced relation to a post particularly
adapted to the needs of modern ar chitecture in that the con-
necting function was substantially minimized. This was
accomplished by utilizing a dovetail-shaped base portion of
the handrail in cooperation with a pair of V-shaped clamps
which served to connect the rail to the posts, spacing the
rails from the post and at the same time producing the
rigidity and strength required: in railing structures. In
‘this mechanism, Louis Blum presented for the first time in
the art a bracket in which the clamping function was in-
tegrated in the spacing connector element. This invention,
was also exceptionally well-received in the art and achieved .
considerable success and was also copied by Architectura!
Art.
C. Decisions of the Courts Below.
All of the expert witnesses who have testified either
for or against Louis Blum’s design patent and all of the
courts that have judged it have agr eed on one point: that
Louis Blum did create an original railing design which had
never been seen before and this design was ornamental and.
entirely compatible with modern architecture. Except for
the Court of Appeals below, the design has been consistently
found (by the seven judges of the Court of Claims and the
trial judge in this case) to be characterized by the follow-
ing distinctive features:
1. A plurality of spaced parallel posts generally
rectangular in cross section and arranged so as to
- present a series of spaced parallel vertical surfaces ;
9. A plurality of spaced parallel handrails gen-
erally flat or rectangular in cross section and arranged
in the same vertical plane so as to present a series of
parallel horizontal surfaces ;
Petition for a Writ of Certiorart 7
3. Connecting brackets attaching the underside ‘of
each handrail to the adjacent. edge of each post, each
bracket comprising a vod-like member extending at
right angles to. the post and a substantially flat tri-
angular member extending upward from the rod-like
member to the center of the underside of each rail leav-
ing the rail uncbstructed throughout the hand-gripping
portion thereof ;
4. The aforesaid elements so designed and. ar-
ranged as to cause the handrails to appear to float in
space away from the posts.
At the trial, the evidence developed Louis Blum’s
efforts to produce the design and its immediate impact
upon the art. It was established through plaintiff’s expert
witness, Dean Henry L. Kamphoefner, architect and Dean
of the School of Design at North Carolina State University
that, beginning after the turn of this century, a modern
school of architecture developed and grew in this country,
in which design was characterized by the elimination of
rococo features and by the utilization of broad, straight
lines and shaped surfaces and by the separation of planes
and surfaces to produce dramatic visual effects entirely
consistent with the functions of the articles themselves.
To satisfy the need for a railing in a building designed
in accordance with modern principles, an architect was com- ~
pelled to resort to commercial railings incompatible. with
modern architecture or to provide an individual railing on
a job-by-job basis for each particular building design.
There was no railing compatible with the requirements of
contemporary, design. The testimony established the sig-
nificance of each of the distinctive features of the design in
producing the overall visual effect and that the market
impact of the railing design was based upon its esthetic
appearanee. Catalogs published by numerous’ competitive
¢
2 amie cl ARS OE ARE
.
Bou s Petition for a Writ of Certiorart
manufacturers ‘after the Blum design achieved its success
showed the widespread adoption of all of the aforemen-
— tioned distinctive esthetic features of the Blum design. No
evidence was offered to show the imitation or adoption of a
single one of the prior art railing designs.
Against Louis Blum’s design patent the defendants
‘amassed, in their own words,,‘‘a labyrinth of prior art”’
which was pieced together at the trial by their expert wit-
ness Clarence ‘T. Fishleigh with the aid of charts and
diagrams he had prepared. Plaintiff challenged both. the’
testimony of Fishleigh and his exhibits. He was entirely
lacking in any qualifications in the ornamental railing art
and had nothing to do with the selection of the prior art
and had no knowledge of it other than as it was presented
to him by defendants’ attorneys. The charts and diagrams
were elaborate mosaics created by Fishleigh from separate
pieces of prior art according to his own definition of Louis
Blum’s-design. The prior art showed numerous manufac- .
tured railings with the rails intersecting the posts in the
traditional manner. Presented as the closest prior art was
the principal reference cited against tlie Blum application
in the Patent Office which showed a plurality of parallel
_ handrails intersecting round posts. The remaining prior
_ art showed individual railings designed by architects for
particular buildings in which a single rail was spaced —
apart from a supporting structure in the way that wall
rails had been mounted for ages. ;
No prior art showed, the design of the particular con-
necting brackets of the Blum railing nor did any prior
art show a plurality of handrails spaced apart from a
plurality of posts forming separate planes, presenting the
opposed vertical and horizontal surfaces characteristic of
~Louis Blum’s design. In contrast to the experience with
the Blum railing design no prior art design was shown
to have been used more than once, if at all, or by any
person other than the one who made it.
ow eaailan ell
Petition ae a Writ of Ce rtiorart ; i
The District Court teen the design novel and non- .
obvious on the basis of 35 U. S. C. $103. It also found
that the testimony of the defendants’ own expert strongly
supported the conclusion of non-obviousness (Appendix -
p. 13a). The decision of the United States Court; of
Claims in Blumcraft of Pittsburgh v. The United States,
supra, holding the Blum design patent valid, was found to
be persuasive but the Court ar rived at its own i independent
decision (Appendix p. 14a).
_ The Court of Appeals agreed that the Blum design was
novel but reversed the District Court’s finding: of validity
upon its own assumption that the differences between
the design and the prior art were ‘‘minor’’ and that the
substantial redesigning of the prior art the District Court
found would be’ necessary to produce the Blum design could
have been accomplished by the highly skilled architects and
manufacturers engaged in ornamental railing design. The
Court of Appeals further contended that the success of
Louis Blum’s railing and its impact upon the art were
_ based solely upon the fact that it was a ‘‘prefabricated”’
railing system. (Appendix p. 51a).
- The novelty of the Blum mechanical patent was also
established in the District Court and accepted by the Court -
of Appeals. The defendants challenged the validity of the
two claims of the mechanical patent in suit on the basis of
two ornamental railing references applied against one claim
and a railroad track anti-creeping device applied against
the other. Defendants’ witness Fishleigh produced in court
a model representing a combination of the prior art pre-
sented against Claim 1 of the patent but the District Court
found in this hybrid structure strong and persuasive evi-
dence that it would not have been obvious to, one skilled:
‘in the art to make the suggested combination, ‘considering
that it required the creation of an entirely new element,
found neither in the prior art nor even in the Blum.patent.
Cp ice
10 Petition for a Writ of Certiorari
The District Court found the railroad track anti-creeping
device patent to be far removed from the ornamental railing
art of the invention and‘not reasonably available as a
source of inspiration or information to one skilled in that
art (Appendix p. 25a). |
The Court of Appeals did not comment on the evidence
which the District Court had.found persuasive but con- .
cluded that the prior art was sufficient to establish the ob-
viousness of the Blum mechanical patent. The Court of
Appeals, to support its conclusion, further resorted to the
railroad track anti-creeping device patent as prior art most
pertinent to the design of ornamental railings (Appendix
p. 54a).
| V. :
_ REASONS FOR GRANTING THE WRIT OF
‘CERTIORARI.
A. Direct Conflict Between Decisions of the Court of Ap-
peals for the Fourth Circuit and the Court of Claims.
Louis Blum’s design patent was held valid and in- .
fringed by the United States Court of Claims on a record
substantially the same as the record in this case, Blum-
craft of Pittsburgh v. The United States, supra. That case
was tried before Commissioner Donald E. ‘Lane of the —
Court of Claims during the week of September 9, 1965. In
an opinion filed September 22, 1966 the Commissioner
found Louis Blum’s patent to be valid and infringed (Ap-
- pendix p. 57a). The parties agreed upon a procedure
for accounting and the Government filed no exceptions to
the Commissioner’s report. Upon review, the Court of
Claims agreed with the Commissioner’s findings, opinion
and recommendations for conclusions of law and therefore
did not require oral argument but rendered its per curiam
opinion holding the patent valid and infringed February
wee 6
Petition for a Writ of Certiorart —-—
17, 1967. The entire record of the Court of Claims trial
was introduced in evidence in this case.
In the words of defendants’ attorney, there was ‘‘direct,
eollaboration’’ between him and the Government attorney
in the Court of Claims case, however artfully concealed.
As a result of such collaboration, all of the prior art used
by the defendants in this case was given by their attorney
to the Government in the Court of Claims case. Some of
the defendants’ deposition testimony in this case was intro-
duced directly into evidence in the Court of Claims. The
attack upon the validity of the design patent made by the
defendants in this case, as might be expected, is the same
attack that was made by the Government in the Court of
Claims.
It is manifest from the opinion of the Court of Appeals
and the District Court below that there is no significant
difference between the record in the Court of Claims case
and the record in this case. There is therefore an irrecon-
cilable conflict between the Court-of Claims and the Court
of Appeals as to the validity of Design Patent No. D-171,963
that can only be resolved by the Supreme Court.
B. Failure of the Court of Appeals for the Fourth Circuit
to Meet the Minimal Demands of Comity Among Fed-
eral Courts: Conflict With Mast, Foos and Co. v.
Stover Mfg. Co., 177 U. S. 485 (1900).
The Courts of Appeals have for some time ' been
grappling with the problem of repetitious litigation of a
single patent through several courts. The problem has
been considered by the Presidential Commission on Patent
Reform and has been the subject of proposed legislation
2. In a press release emanating from Architectural Art Mfg.,
Inc. published February 26, 1969 the decision of the Court of Appeals
for the Fourth Circuit was characterized as “contrary” to the pre-
vious decision of the Court of Claims.
ve
12 Petition for a Writ of Certiorart
in Congress: Patent Reform Act of 1967, February 21,
1967 ; Senate Bill S-52597, October 30, 1967; House of Rep-
resentatives Bill HR-13951, November 9, 1967.
A recent case and the proposed legislation involved
attempts to limit patent litigation by precluding the ‘pat-
entee from relitigating a patent once held invalid. The
C8urt of Appeals for the Third Circuit in Nickerson v,
Kutschera, 390 F. 2d 812 (1968), suggested that the Su-
preme Court’s ruling in Triplett v. Lowell, 297 U. S. 638
(1936), permitting unlimited relitigation of the validity of
the patent, ‘‘was either wrongly decided or should no
longer be given its customary clese reading”’ but de-
clined to apply a new and different doctrine in view
of the pending legislation in Congress. More than one
year has passed since that time and no further action
has been taken by Congress. This approach has met
resistance in Congress and elsewhere, Blaustein, The Presi-
dential Commission and the return to the Patent Act of
1753, 53 A.B.A.J. 911 (1967), Technograph Printed Cir-
cuits, Ltd. v. Methode Electronics Corp., 285 F. Supp. 714
(N. D. Ill. 1968), Technograph Printed Circuits, Ltd. v.
Packard Bell Electronics Corp., 290 F.Supp. 308 (C. D.
Cal. 1968).
Completely apart from the res judicata or estoppel
questions raised in Triplett v. Lowell, supra, and Nickerson
v. Kutschera, suprz, some inhibition upon the proliferation
of patent litigation can be achieved by the application of a
proper rule of comity. among Federal Courts. In Jast,
Foos and Co. v. Stover Mfg. Co., supra, the Court sum-
marized the rule of comity:
‘‘Tt demands of no one that he shall abdicate his in-
dividual judgment, but only that deference shall be paid
to the judgments of other coordinate tribunals. Clearly
it appliés only to questions which have been actually
decided, and which arose under the same facts.’’
Petition for a Writ of Certiorari 13
Comity has been applied to hold patents valid or in-
valid in numerous cases in which the courts have stated
their responsibility consistent with the Mast, Foos decision:
‘«<There can be no doubt that the doctrine of
comity not only, but the orderly‘administration of jus-
tice, requires that the Circuit Court should adopt and
and follow the decisions of the Cirevit Courts of Ap-
peals in other circuits than their own, rendered upon
facts substantially identical. Any other rule would.
lead to confusion and injustice. Of course in such cir-
cumstances the defendant in patent causes may in-
troduce new evidence of anticipation and may show
that the facts on which infringement is based are essen- .
tially different from those in the adjudicated case.
Such proof must carry conviction with it.’
‘‘ Appellant’s brief bitterly attacks this statement, _
but we understand it to be an accurate presentation of
the law and find nothing in Mast, Foos € Co. v. Stover
Mfg., 177 U. S. 488, 20 Sup. Ct. 708, 44 L. Ed. 856,
which calls for any different conclusion.’’ Warren
Bros. Co. v. City of New York, 2d Cir., 187 Fed. 831,
835 (1911). é
‘‘We could not acquit this defendant of infringe-
ment without: finding both of these courts to be in error;
but while we doubtless have that power, under Mast v.
Stover, 177 U. S. 488, 20 Sup. Ct. 708, 44 L. Ed. 856,
yet its exercise could be justified only by that degree
of certainty which amounts to a demonstration. We
tliink it is our duty here to adopt the principle declared
by Judge Lurton, speaking for this court in Penfield v.
Potts, 126 Fed. 475, 478,61 C. C. A. 371, when he said
that ‘a decent respect for the stability of judicial deci-
sions and the proper regard for the security of prop-
erty in patents’ requires that prior decisions be fol-
NP TOTES
:
14 Petition for a Writ of Certiorari
lowed, ‘unless convinced of a very palpable error in
law or fact’.’? Cincinnati Butchers’ Supply Co. v.
Walker Bin Co., 6 Cir., °30 Fed. 453, 454 (1916).
‘| | the importance of securing uniformity in
the law as administered in the several circuits in patent
causes is so great that a decision of a court of coor-
dinate jurisdiction should be followed by this court in
every case where the questions presented can fairly be
regarded as doubtful. Pratt v. Wright (C. C.) 65 Fed.
99; Enterprise Mfg. Co. v. Deisler, (C. C.) 46 Fed.
855.”? Gormley & Jeffrey Tire Co. v. United States
Agency et al., 2d Cir., 177 Fed. 691, 692 (1910).
‘‘The decision of the Fifth Cireuit . . . upon facts
substantially identical . . . while not binding upon
this court is strongly persuasive under the doctrine
of comity.’? Williams v. Hughes Tool Co., 186 F. 2d
278, 281 (1950), cert. den’d. 341 U. S. 903, pet. for reh.
den’d. 341 U. S. 934, 2d pet. reh. den’d. 341 U. S. 956.
See also American Air Filter Co. v. Continental Air -
Filters, Inc., 6 Cir., 347 F. 2d 931 (1965), cert. den’d. 383
U. S. 934: Hunt et al. v. Armour & Co., 7 Cir., 185 F. 2d
722 (1950); Robertson Rock Bit Co., Inc. et al. v. Hughes
Tool Co., 5 Cir., 176 F. 2d 783, cert. den’d. 338 U. S. 938
~ (1949), pet. for reh. den’d. 340 U. S. 923 (1951), 2d pet. for
reh. den’d. 340 U. S. 939 (1951). Novadel-Agene Corpora-
tion v. Penn et al., 119 F. 2d 764, cert. den’d. 314 U. S. 645
(1941); Stoody Co. v. Osage Metal Co., Inc., 10 Cir., 95 |
F. 2d 592 (1938); Parsons. Non-Skid Co. et al. v. E. J.
Williams Co., 190 Fed.’333. (1911) ; La Maur, Inc. v. DeMert
& Dougherty, Inc., 265 F. Supp. 961 (1965) ; General Motors
Corp. v. Leishman, 85 F. Supp. 187 (1949). Textile Mach.
Works v. Louis Hirsch Textile Machine, Inc., 18 F. Supp.
476 (1936).
Petition for a Writ of Certiorari 15
In the present case the Court of Appeals for the Fourth
Circuit failed to meet even the minimal .demands of the rule
of comity among Federal Courts. It paid no deference
whatever to the judgment of the Court of Claims. It made
no effort to distinguish the facts in the ease, although the
full record of the Court of Claims was in evidence and it
made no suggestion that the Court of Claims had failed to
apply the proper statutory provisions or appropriate rul-
ings.of the Supreme Court. The Court of Appeals merely
reached a contrary conclusion without finding fault with
the ratio decidendi of the Court of Claims. Contrast’ this
with the treatment by the Court of Appeals for the Eighth
Cireuit in John Deere Co. of Kansas City, et al. v. Graham,
et al., 333 F. 2d 529, aff’d, 383 U. S. 1 (1965), of the prior
decisions by the Court of Appeals for the Fifth Circuit in
Jeoffroy Mfg., Inc. v. Graham, 219 F, 2d 511 (1955) and
Graham v. Cockshutt Farm Equipment, Inc., 256 F. 2d 358
(1958). In its opinion the Court of Appeals for the Kighth
Circuit gave the precise reason for its inability to follow the
prior ruling of the Fifth Circuit. a
. In the Mast, fous decision, supra, at page 489, the
Court states:
‘It is searcely necessary to say, however, that when
the case reaches this court we should not reverse the
action of the court below if we thonght it correct upon
the merits, though we were of the opinion that it had
not given sufficient weight to the doctrine of comity.’’
(Emphasis ours.)
This statement implies‘that the action of a lower court
should be reviewed to determine its correctness upon the
merits where, on its face, it has given insufficient weight to
the doctrine of comity. In this case, the Court of Appeals
having given no weight to the doctrine of comity, under the
APSE OEE RY EI Ce :
PORE LTE RPO NR RIT GION
16 Petition for a Writ of Certiorart
Mast, Foos ruling, certiorari should be granted to deter-
mine whether its decision on the merits was correct.
It is manifest that a stricter application of the doctrine
of comity among Federal Courts in patent cases would
serve to limit repetitious litigation of a single patent in
several courts whether it is held valid or invalid.
C. Direct Conflict Between Decisions Rendered by Differ-
ent Panels of the Court of Appeals for the Fourth
Circuit. ;
_ On November 6, 1968 the Court of Appeals for the
Fourth Cireuit, reversing .the judgment of the District
Court for the Southern District of West Virginia, held
United States Patent No. 3,055,280 valid. Pavement Sal-
vage Co., Inc. v. Anderson’s-Black Rock, Inc., 4 Cir., 404
F. 2d 450, certiorari granted March 24, 1969, No. 1014, Octo-—
ber Term, 1968. In reversing the District Court, the Court
of Appeals emphasized thé desirability of avoiding subjec-
tive hindsight evaluations of the prior art colored by the
knowledge of the disclosure of the patent before the Court
and indicated the usefulness of objective criteria of obvious-
ness. In support of its- position, the Court of Appeals
cited with approval, inter alia, Blumcraft of Pittsburgh v.
The United States, supra. In the present case a different
panel of the Court of Appeals for the Fourth Circuit re-
versed the District Court’s finding of validity of the very x
patent held valid by the Court of Claims in Blumcraft of
Pittsburgh v. The United States, supra. There is thus
presented a conflict within the Court of Appeals for the
Fourth Circuit regarding the soundness of the decision
-of the Court of Claims in Blumcraft of Pittsburgh v. The
United States, supra. ;
The Court of Appeals decision in Pavement Salvage
Co., Inc. v. Anderson’s-Black Rock, Inc., supra, was not
Pétition for a Writ of Certiorart 17
published prior to argument of the present case in the Court
of Appeals. However, the decision was rendered several
months prior to the decision in the present case with at least
one Cireuit Judge (Honorable Simon E. Sobeloff) sitting
on both panels. Nonetheless, in reversing the District Court
in the present case, no reference was made by the Court of
Appeals to its prior decision in the Pavement Salvage Co.
‘ease, nor did it acknowledge the conflicting treatment of
the Court of Claims decision in Blumcraft of Pittsburgh v.
The United States, supra. There is thus presented a direct
conflict between the two Court of Appeals decisions with
respect to the manner in which the question of obviousness
under §103 of the Patent Act is to be determined and spe-
cifically with respect to the decision of the Court of Claims
in Blumeraft of Pittsburgh v. The United States, supra.*
D. Important Question as to the Construction of § 103 of
the Patent Act..
By granting the writ of certiorari in Anderson’s-Black
Rock, Inc. v. Pavement Salvage Co., Inc., supra, this Court
acknowledged both the importance and the timeliness of the
questions presented. The same basic questions ‘and the
-same special and important reasons for hearing them at this
time are presented in,this case. .
The District Court in the present case followed all of
the directions of the Supreme Court in Graham v. John
Deere Co., supra, and at the same time applied the high
standard of patentability established by prior decisions of
the Supreme Court (Appendix p. 26a):
3. This is parallel to the situation in which the Court granted
certiorari in Graham v. John Decre Co., supra, one panel of the Court
of Appeals for the Eighth Circuit holding a patent valid in Calmar,
Inc. v. Cook Chemical Co., 336 Fed. 110 (1964) and a different panel
Nonna a different patent invalid in John Deere Co. v. Graham, supra.
s wey
ar
18 Petition for a Writ of Certiorart
‘‘Had the Court concluded that the combination of ele-
ments was obvious to one having ordinary skill in the
art, it would not hesitate to hold the patent invalid in
view of Great Atlantic and Pacific Tea-Co. v. Super-
market Equipment Corp., 340 U. S. 147 (1950) . . .’”
* * *
‘‘The Court should scrutinize combination patent claims
with a care proportioned to the difficulty and improba-
bility of finding invention in an assembly of old ‘ele-
ments. For patents are to ‘promote the progress of
science and useful arts’, Article I, ¢8 of the Constitu-
tion. Their function is not to bestow monopoly.’
The District Court thus made clear that it was apply-
ing the same strict test of patentability reflecting the prior
decisions of this Court. The District Court found Louis
Blum’s design patent non-obvious on the basis of the prior
art and upon the testimony of defendants’ own, expert wit-
ness Fishleigh attesting the unlikelihood of the Blum design
in view of the normal requirements of the ornamental rail-
ing art. The validity of the mechanical patent was evi-
denced by the remoteness of the prior art and the demon-
strated unlikelihood that anyone would combine the prior
art, as suggested by the defendants, to produce the claimed
invention. ; |
The Court of Appeals, in reversing the District Court,
was unable to find the inventions in the prior art. Without
supporting evidence, the Court did not undertake to demon-
‘strate that the invention was ‘‘obvious’’ as required by
§ 103 of the Patent Act but only that, because of their high
skill, those who had. produced the prior art could have re-
- designed it to achieve Louis Blum’s inventions. The. Court
of Appeals thus ignored the warning of the Supreme Court
in Graham v. John Deere Co., supra, at page 36, to ‘‘guard
Petition for a Writ of Certiorart 19
against slipping into hindsight . . . and to resist the temp-
tation to read into the prior art the teachings of the inven-
tion in issue’’.
E. Important Question as to the Aiiulication of the Patent
Act of 1952 to the Design Patent.
The Court has not adjudicated the validity of a design ©
patent in more than seventy-five years. Gorham Manufac-
turing Co. v. White, 81 U. S. (14 Wall.) 511, 524 (1871),
Smith v. Whitman Saddle Co., 148 U. 8S. 674, 677. (1892).
The statute governing design patentability has been. sub-
stantially changed twice during that time: May 9, 1992,
Chapter 783, 32 Stat. 193; 1952, 35 U. S.C. § 171. While the
courts have consistently held that design patents must
meet a test of patentability the same as mechanical patents,
they have also acknowledged that the application of the
statutory tests to the ornamental features of a design. re-
quires consideration of factors peculiar to that subject mat-
ter. Glen Raven Knitting Mills v. Sanson Hosiery Mills,
189 F. 2d 845 (4th Cir. 1951). In Smith v. Whitman Saddle
Co., supra, this Court rendered its most recent pronounce- |
ment:
‘‘The shape produced must be the result of industry,
effort, genius or expense, and’ new and original as ap-
plied to articles of manufacture. Foster v. Crossin, 44
Fed. Rep. 62. . The exercise of the inventive or origi-
native faculty is required, and a person cannot be per- —
mitted to select an existing form and simply put it to a
new use any. more than he can be permitted to take. a
_ patent for the mere use of a machine. If, however, the
selection and adaptation of an existing form is more
than the exercise of the imitative faculty and the result
is in effect a new creation, the design may be patent-
able.’? (Kmphasis added.)
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20 Petition for a Writ of Certiorart
| It is emiriently clear that the ‘considerable thought =
ae substantial redesign’’ found by ‘the District
- Court in this case to be required to produce the Blum de-
sign from the elements of the prior art more than satisfies
this test (Appendix p. 12a). . Even in the opinion of the
Court of Appeals below it is not denied that Louis Blum’s
design is ‘‘more than the exercise of the imitative faculty
and the result is‘in.effect a new -creation’’.
On the basis of the Court’s long- standing decisions in.
design cases Louis Blum’s design is patentable. The Court
has held that it was not the intent of Congress by the Patent
Act of 1952 to change the standard of invention. Graham v.
John Deere Co., supra. However, the Graham case included
no reference to any design patent or design patent case. It
would accordingly be entirely appropriate for the Court to
accept the present case for review to settle the application
of the Patent Act of 1952 to design patents in the light of -
the Court’s-prior design. patent decisions. .
VI.
' CONCLUSION.
The present case is submitted to the Court as a proper
- ease for the issuance of the writ of certiorari which, it is
recognized, is not a matter of right and only to be used -
where there are special and important reasons therefor. |
The several reasons set forth above in the aggregate present
two compelling general reasons for this case being consid-
‘a ered by the Supreme Court:
1. There are direct conflicts among the Courts on
the question, of patent validity specifically based upon -
disagreement as to the application of § 103 of the Patent
Act and the Court’s decision, in Graham ‘v. John Deere
- lagen
Petition for a Writ of Certiorart aon
_Co., , supra, to mechanical and design patents. Having
eranted ‘cortioruri in the Anderson’s-Black Rock, Inc.
ease, the Court will be able to dispose of siecle related
important questions in this case.
2. This case affords a proper occasion for the
Court to consider the vexing problem of multiple reliti-
gation of a single patent and the limitation of such re-
litigation through the sa rcs of the Federal doc-
trine of comity.
Petitioners respectfully request that this petition for
certiorari be granted and that this case be listed for argu-
ment to follow Anderson’s-Black Rock, Inc. v. Pavement
Salvage Co., Inc., supra.
——_—
Respectfully submitted,
James C. McConnoy,
Henry N. Paut, JR.,
Pau & PauvtL,
‘RaupH Battey, JR.,
Battey & Doriry,
Attorneys for Petitioners.
a
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