Petition for Writ of Certiorari — Eimco Corp. v. Peterson Filters & Engineering Co.

Supreme Court brief1969

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GUPR&aMB COURT. UB | | Ee D

MAY 23 Js89

IN THE |

Supreme Court of the Unite

October Term, 1968.

No. 1 42 4.

JOHN F. DAVIS, CLERK

THe Eimco Corporation,

3 Petitioner,

Prererson Finrers aND ENGINEERING Company and

KoMuIne-SaNnDERSON ENGINEERING CORPORATION, .

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

_ THE UNITED STATES COURT OF APPEALS

FOR THE TENTH CIRCUIT

GRANVILLE M. BruMBAUGH

Marx N. DonoHUE

Attorneys for Petitioner

90 Broad Street

New York, ‘New York 10004

(212) 344-5888

Of Counsel:

BrumBaucH, Graves, DononvE & RayMonp

‘TABLE OF CONTENTS

PAGE

Opinions BrLow 0.0.0... Sai GeeentiNs. nineties exits 2

I sic ee te "a eee ee 2

Questions Presentep ror Review... 2

CONSTITUTIONAL Provisions AND Srarures INVOLVED |... 4.

STATEMENT. OF THE OASE 0... occ 4

Subject Matter Involved 5)

Belt Discharge Filters 5

Filter Belt Alignment Problems... 6

The Peterson Patent .....0000000..oocccccccccccceeeeecc wt 7

The’ Issue Concerning Obviousness ..... 7

The Issue Concerning the Scope of the Patent

PUMP pratt oeNe ee 9

Reasons ror Grantine tHe Writ 13

1. The. decision of the Court of Appeals upholds

the monopoly of a patent which fails com-

pletely to meet the ‘‘nonobvious”’ requirement

of 35 U.S.C. §103 13

2.. The decision of the Court of Appeals accords

- to the Peterson patent claims a range of equiv-

_ alents foreclosed to them by. file wrapper es-

toppel ....... Cnshsiiesel SasbubevliAL hcpendaatineees lola clences. bahdees 20

ConcLusion 25

RRND a Cte LPARNER RP SRAES VES VEDESEENVSOSDEASSONSS 4 EVEN COE Peg kz SOE

eprint

2g oR Neues

SLY TE RE AREY Ge APT IO

5 ant al

ror PPL

PAGE

APPENDIX

Constitutional Provision and Statutes Involved .... Al

Constitution cae

Article 1, Section 8 ............::::::c ets Al

Statutes

35 United States Code §102(a) and (b) ...... ners Al

35 United States Code §103 .............: es wie

Opinion of the United: States Court of Appeals for

the Tenth Circuit .............0: ease sees eiNEbeternys . A2

Findings of Fact and Conclusions of Law of the

* -Unitéd States District Court for the District’ of

Utah, Central Division .............-...++ Be era anions A18

Judgment of the Court of Appeals for the Tenth

II ao vaciacatrcates. Seen! Oe Ra eee ee jase A45

Judgment of the District Court 0.0.0... _ A46

Peterson Patent 3,077,990 (Exhibit 1, R. | ee A48

Isometric View of Belt Filter Having 3-Roll Dis-

charge System (Exhibit C, R. 780) .......... lier A53

. Cases:

III

TABLE OF CASES AND AUTHORITIES

( - PAGE

' Altoona Theatres v. American Tri-Ergon Corp., 294

U.S. 477 (1935). .......... Si eeieh \ hia adel emiion oiicine "14518 ©

A. &.P. Tea Co. v. Supermarket Corp., 340 U.S. 147

CE areHiovroecsndeys Epae ahaa dali tes alyiskold leashes eavtensrak 14, 18

Borg-Warner Coibsanities v. Paragon Gear Works, ,

Inc., 355 F.2d-400 (1st Cir. 1965) .............. ee. ee 4, 24

Exhibit Supply Co. v. Ace Corp., 315 U.S. 126

(1 Sebi SURE ie necro ne on eM ere: 3, 4, 12, 21,22, 23, 24

a icacceac th v. John Deere Co., 383 U.S. 1, 17, 18 (1966) ~..

| 13, gh Pe

Hotchkiss v. Greenwood, 11 How. 248 (1850) ........... 14

Imhaeuser v. Buerk, 101 U.S. 647, 656 (1879) 0.000000... 16

Keating v. Stearnes eo Co., 347 F.2d 444 (7th

i cpa cerita ce ences hus Acre iasctbtelesienl 4, 23

‘Kenney Mfg. Co. v. J. L. Mott Iron Works, 137 F.

431, 433 (S.D.N.Y. 1905) FUG fiend SR ea fran setvearsbice 16

Lincoln Co. v. Stewart-Warner Corp., — U. S. 545

RR tA Rael RUE eee RRP I: Se, PE ety ahi 14,18

McCullough Tool Company v. Well Surveys, Inc., 343

i Be CEE GAG, TOO) oa nsnsecsicabiccssrcesesssescsestessees ae

Parke, Davis & Co. v. American Cyanamid Co., ei

PI re Ce Ry RD esi ceccsenn sven savdinevvoconecpesrse’ 4, 23, 24

Powder Power Tool Corp..v. Powder kotonted Tool

Co., 230 F.2d 409 (7th Cir. 1956) oo... 4,23, 24 _

)

PAGE

Sinclair Co. v. Interchemical Corp., 325 U.S. 327

(1945) ............ eneciad oe. SRO BRD OOD OE PEN 14, 18

Technograph Printed Circuits Ltd. v. Bendix Avia-

tion Corp., 218 F. Supp. 1, 24 (Md. 1963); af-

firmed, per curiam, 327 F.2d 497 (4th Cir. 1964) 15

28 U.S.C. §1254(1) ou... ee anneal ceerecabetanbiae 2

Rule 19-1(b) of the Rules of the Supreme: Court ........ 2

URE 60 ...6a.....- ike aabtte 4, 9, 13, 14, 17, 20

Constitution of the United States, Article I, Section

8, Clause 8 ............. Lice sabes pihuchibesaabeisencetahticecinbcbanibamdh tind 4

Be Cre RS CF BTN GID ance csnscesesvcvessnisosepsnnsesscsonses’ 4, 9, 20

a <

IN THE

Supreme Caurt of the United States

October Term, 1968

No.

Tae Ermco’ Corporation,

Petitioner,

Vv.

Peterson Fitters anp Encineentnc Company and

Komuine- SANDERSON ENGINEERING Conronatiow,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO

_ THE UNITED STATES COURT OF APPEALS

FOR.THE TENTH CIRCUIT

Petitioner, The Eimco Corporation, prays that a writ

of certiorari issue to review the judgment of the United

Statés Court of Appeals for the Tenth Circuit entered in

this cause on December 30, 1968, holding valid and in-

fringed Peterson United States Patent’ No. 3,077 a for

Filter Medium Guide.

ater

LOSS OMNI +E OH he

ERB LET OE PUI RAS ESO NR 2 IE

’

PPPOE ONT | UE ENO OF

Opinions Below

The opinion of the Court of Appeals is not as yet offi-

cially reported (but see 160 USPQ 182) (A2-17).1. The

District Court’s Findings of Fact and Conclusions of Law

(filed in lieu of an opinion) are not as yet officially re-

ported (but see 155 USPQ 89) (A18-44). The Judgments

of the Court of Appeals and of the District Court appear

at A45 and A46, respectively.

Jurisdiction

The judgment of the Court of Appeals is dated and

was entered December 30, 1968. A timely petition for re-

hearing, filed January 20, 1969, was denied on March 17,

1969. Jurisdiction of this Court is invoked under 28 U.S.C.

§1254(1).in the light of Rule 19-1(b) of the Rules of the

Supreme Court of the United States.

Questions Presented for Review

_ Two principal questions are presented:

1. Whether a patent for a combination of apparatus

meets the ‘‘nonobviousness’’ requirement of 35 U.S.C.

_§103 where the sole element (and its function) of the

claimed combination not found in the prior art is a spring

used (for the purpose for which all springs are used)

to impart a tensioning force to a component of the ap-

paratus. - |

1. References lerein to A (followed by page number) are to the

_Appendix attached hereto. References to R. (followed by page num-

ber) are to the transcript of the.record certified to this Court by the

Court of Appeals for the Tenth Circuit..

Both courts below agreed that the sole point of novelty

in the patented (claimed) apparatus was the use of resil-

ient means or springs to impart a tensioning force to a~

component of the claimed combination. The patent dis-

closes and the original application claimed three alternative

expedients for this purpose, namely, mannatly operated

tensioning devices, springs, and weights. The two disclaimed °

alternatives, manual tensioning devices and weights, are

disclosed in the prior art. In the total absence of any

proof of (a) any long-felt but unsatisfied need for the

claimed spring-tensioned apparatus, (b) any problems in-

cident to the use of springs to accomplish the desired ten-

sion-imparting function in such apparatus, or (c) any

function imparted to the combination not inherent in and a

known function of a spring, the decisions below i ignore the

standards for patentable invention specifically stated in

30 U.S.C. §103 and are in conflict with the controlling de-

cisions of this Court culminating in Graham v. John Deere

Co., 383 U.S. 1 (1966).

_ 2. If the patent is valid, whether, under the decision

of this Court in Exhibit Supply Co. v. Ace Corp., 315

U.S. 126 (1942), the doctrine of equivalents is properly

~ available to the patentee to support a finding of infringe- |

ment of the two claims thereof by apparatus admittedly

not defined thereby. This apparatus was specifically de-

fined in original application claims which were canceled

following rejection by the Patent Office on the dual ground

of (a) lack of invention over prior art cited, and (b) mis-

descriptiveness, and the two elaims of the patent were sub-

stituted in their stead.

If Exhibit Supply Co. v. Ace Corp., supra,-is con-

trolling here, the decisions below are in conflict with

the applicable decision of this Court’ since both courts

~~.

“

‘

“

below, by resort to the doctrine of equivalents, accorded

the patent claims a construction coextensive in scope to

the original canceled application claims.

If Exhibit Supply Co. v.-Ace Corp., supra, is not con-

trolling here, because of the dual grounds for rejection-

by the Patent Office of the original claims, the decisions -

below are in direct conflict with the decisions ‘of the

Courts of Appeals for the First, Sixth and Seventh ae

cuits? on an important question of patent law having sub- >

stantial public interest which has not, been but should be

* settled by this Court. |

Constitutional Reaves and Statutes Involved

This case involves the patent clause of the Consti-

tution of the United States, Article I, Section 8, Clause

8 (A1), and 35 U.S.C. §§102(a) and -(b) and 103 (A1).

Statement of the Case

This is an action for infringement of United States

Patent No. 3,077,990 issued February 19, 1963, to J. G.

P@terson for ‘‘Filter Medium Guide.’’ The District

Court’s jurisdiction was properly based on 28 U.S.C.

-§1338(a). oF aes

Petitioner was defendant and respondents were plain-

tiffs in the District Court.

The District Court adjudged the two claims of the

patent to be valid and infringed by petitioner, and the

Court of Appeals affirmed. |

2. See Borg-Warner Corporation v. Paragon Gear Works, Inc., .

355 F.2d 400 (1st Cir. 1965) ; Powder Power Tool Corp. v. Powder

Actuated Tool Co., 230 F.2d 409 (7th Cir. 1956) ; Keating v. Stear-

nes Imperial Co., 347 F.2d 444 (7th Cir. 1965) ; Parke, Davis & Co.

v. American Cyanamid Co., 207 F.2d 571 (6th Cir. 1953).

i) |

Subject Matter Involved

The patent in suit relates to an apparatus to stretch,

tension and maintain the alignment of a filter medium,

sometimes called web or belt, used on rotary drum vacuum

belt filters having a discharge section spaced from the

drum. Filters of this type are sometimes referred to as

belt discharge filters. For convenience, Exhibit C (R. 780),

an illustrative isometric drawing of one of petitioner’s belt

discharge filters is included in the Appendix hereto (A53).

Belt Discharge Filters

Belt discharge filters. utilize a cylindrical filter drum

having closed ends but having perforations in the cylin- ;

drical or ‘‘deck’’ surface. The drum may vary in size.

In operation, the cylindrical deck surface is covered for the

greater part of its periphery by an endless filter belt. The

perforated deck is connected by ‘pipes to an automatic

rotary valve. The drum is positioned with respect to a

tank containing a slurry of liquids and solids so that, as

the drum rotates, a portion thereof, covered by the filter

belt, is immersed in the slurry. By means of the rotary

valve, a vacuum i8 pulled on the underside of the filter

drum so immersed and for a short period thereafter. The

liquid phase of the slurry is thus drawn through the filter

belt to the interior of the drum, and thence directed to

settling tanks. The solid material (sometimes called cake)

is deposited on the surface of the belt (R. 1493- ates

As the drum rotates, the filter elt, on which the cake

has been deposited, leaves the slurry and, as the drum

continues its rotation, the filter belt is withdrawn from the

Sons.

6 ‘“

drum and passes over a discharge roller where an abrupt

change in the direction of travel of the filter belt causes

the cake to fall off the belt (R. 1494).

The filter belt then passes (a) directly to the return roll

*(two-roll system), or (b) over one or more wash or idler

rollers, and thence to. the return roll (three and five roll

“systems). From the return roll the belt passes directly -

back to the drum, where it again engages the perforated

deck of the drum for a repetition of the filtering cycle (R.

1494).

Filter apparatus as described above was, admittedly,

not the invention of Peterson but constitutes the environ-

ment in which the Peterson apparatus was intended to be

used.

Filter Beit Alignment Problems

In normal operation of a belt discharge filter, the belt

sometimes tends to track, laterally to one side or the other

of the drum. In such cases, if the mistracking is not cor-

rected, the, belt will mistrack onto the filter drum ‘and some

of the perforated area of the drum that should be covered

by the belt when the drum is immersed in the slurry will

be exposed to the slurry. When this occurs, the filtraté

will be contaminated and eventually the filter will’ become

inoperative (R. 930).

Mistracking occurs for many reasons, such .as inac-

curacies in the manufacture of the belt (R. 1501) or the

filter drum (R. 930), misalignment of one or more of the ©

rolls of the filter apparatus, variations in the load of filter |

cake carried by the belt, or incomplete discharge of filter

cake from the belt (R. 977).

Over the years, a varfety of devices have been and still

are used by the filter industry to correct for misalignment

of the filter belt (R. 1450- 1452).

The Peterson Patent

The Peterson patent in suit (Ex. 1, R. 656, A48-52) dis-

closes and claims one type of filter belt aligning. device.

The claimed device is, essentially, a combination of ap-

paratus comprising the following components: (a) the re-

turn roller of the filter apparatus (over which the filter

belt passes Just prior to returning to the drum and an

essential component of any belt discharge filter); (b) a

filter belt having beaded edges; (c) two pairs of guide

wheels or roilers, one pair to coact with each of the beaded

edges of the filter belt; (d) mounting means for mounting

the pairs of guide’ wheels or rollers adjacent each end of

the return roller; and (e) adjustable spring or other re-

silient means (as distinguished from an adjustable. manual-

ly operated tensioning rod or a weight system, also dis-

closed is the patent) associated with each of the pairs of

guide wheels or rollers to impart a tensioning force to each

of the pairs of guide. wheels to urge such guide wheels lat-

erally outwardly of the path of travel of the belt so as

to maintain the belt stretched and in alignment.

The Issue Concerning Obviousness

The patent specification and drivinws (A48- 52) disclose,

and the original application claimed (Ex. 2, R. 669-672)

three alternative ‘‘embodiments’’ of the Peterson ‘‘inven-

FOTN T TI sete Deeg

Se Ce a ne nee Rn eed ee ee

c we

tion”, each embodiment differing from the others only by

_ the employment of a different méchanical expedient for in-

ducing a tensioning force or pressure to urge each of the

two pairs of guide wheels against the beaded edges of

the belt and laterally outwardly of the path of travel of the

belt. These expedients included (a) a system of weights

(A49, Figure 5, application claim 9, R. 671); (b) a system

employing a manually operated threaded tensioning rod,

adjusted by a hand wheel connected to the rod (A48, Figure

2, application claim 10, Ex. 2, R. 671); and (c) a system

of springs (A48-49, Figures 3; 4 and 6, application claims

3, 8 and 12, R. 669, 671, 672).°

The manually operable tensioning rod system in sub-

stantially the same form as shown in Figure 2 of the Peter-

son patent is disclosed in prior art Swiss patent (Ex. U,

R. 794) where it serves to apply a tensioning force to op- -

positely disposed pairs of guide wheels coacting with beaded

edges of a web or belt to guide and align the web or belt.

The prior art Warner patent (Ex. Z, R. 794) shows a

system of weights and pulleys substantially similar to those

shown in the Peterson patent to apply a -tensioning force

to roller members in a web stretching device.

"The record does not show what motivated Peterson to

select springs or other resilient means—to the exclusion of

the other alternative expedients. disclosed, in his patent

- and originally claimed ‘as species of the same genus—to

provide the tensioning force for his guide wheels.in the

claims that issued in his patent since neither the Swiss

3. Original claims 1, 2, 4 through 7 and 11 were generic to all

three of the illustrated expedients for imparting a tensioning force

to the guide wheels. -

patent nor the Warner patent, referred to, were. brought

to the attention of the Patent Office (but were before the

courts below).

However, because the prior art did nak disclose the. use

of springs, or other resilient means (District Court, A26-

27; Court of Appeals, A6), to apply a tensioning force to

guide wheels ceacting with beaded edges of’a belt to ten-

sion and center the belt, both courts below held (District

Court, A27-28; Court of Appeals, A8-11) that this single

point of difference between the prior art and the combina- -

tion claimed by Peterson. was sufficient to justify the hold-

ing that the claimed combination satisfied the nonobvious

requirements of §103.

In reaching this holding, the courts below have either

confused the ‘‘novelty’’ requirements of §§102(a) and (b)

with the ‘‘nonobvious”’ | requirements of §103, or have

ignored the mandate of this Court in Graham v. John Deere

Co., supra, for determining nonobviousness of the claimed

subject matter. In either case, the decisions below are in

clear conflict with the decision of this Court i in Graham v.

John Deere Co., supra.

- The Issue Concerning the Scope of the Patent Claims

Claims 1 through 10 of the claims submitted with the -

Peterson application as filed specified that the ‘guide

rollers’’ of the claimed combination be mounted ‘‘adjacent

the drum’? of the filter apparatus (R. 669-671).

These ten original claims, along with original claims

_ 11 and 12 which positioned the guide wheels as “juxta-_

posed the return roller’? (R. 672), were rejected in the

second Patent Office Action (Ex. 2, R. 683, 684) on the

grounds (1) that they were ‘‘indefinite’’ and ‘‘somewhat

misdescriptive’’ and (2) were ‘‘fairly met’’ by. cited prior.

art. : |

“fhe applicant forthwith canceled original claims 1

through 12 and submitted in their stead application claims

18 and 19 (Patent claims 1 and 2 as issued). These

substituted claims are identical in substance—apart from

form—to canceled original claims’ 3 and 8 except that

patent claims 1 and. 2 specify that the guide wheels be

mounted ‘‘adjacent each end of. the return roller’’ of the

filter apparatus, whereas original claims 3 and 8 positioned

the guide wheels ‘‘adjacent the drum.’ This modification ®

of. the claims was deliberately made. The remarks accom-

panying the amendment contained the statement:

‘*Claim 18 is written along the lines of Claim 11

pointing out more particularly that the filter medium

rollers are placed adjacent a return roller and have

placed between them .the filter medium with the edge

bead on the outside.’’? (Emphasis added) (R. 685-688)

At the trial, respondents’ expert testified (R. 1263-1264,

1409) that ‘‘adjacent each end of the return roller’’ as’

used in the Peterson patent claims meant positioned along

the edges of the belt at a point where no other: element

of the filter apparatus intervened between the guide wheels

and the return roller.» While neither of the courts below

4. Application claim 3 is dependent upon and must be read: with

application claim 1. Application claim 8 is dependent upon and must

_be-read with application claim 7. .

Fal

5. In the courts below petitioner contended that the phrase

“adjacent each end of the return roller” meant, in addition, Jaterally

adjacent the ends of such roller as shown in the Peterson patent _

Figures 2, 3, 4, 5 and 6. e ;

stated specifically what was meant by the limitation ‘‘ad-

jacent each end of the return roller’’ in the patent claims, ;

both adopted the testimony of respondents’ expert and

held that petitioner’s device positioned at a point about

midway between the return roller and the: next preced-

ing wash roller,® position A or the sketch below, was mount-

ed “adjacent cach end of the return roller’? and infringed

the Peterson claims literally ; but that petitioner’s devices

‘mounted at positions B and C did not infringe in terms ei-

ther claim since petitioner’s devices, at these positions, were

not mounted ‘‘adjacent each end of the return roller’’ be-

cause other rollers in the filter system intervened between

the guide wheels and the return roller (A12, 35). Indeed, .

when mounted at position C, petitioner’s apparatus was

‘‘adjacent the drum’’ (according to the definition ascribed

to the word ‘‘adjacent’’ by respondents’ expert). and hence

directly within the scope of canceled original claims 3

and 8.

6. For convenience, petitioner has reproduced below a schematic

diagram that depicts a basic three-roll belt discharge filter (based on

Ex. B,-R: 779) and shows (1) the relationship of the drum, discharge.

roller, wash roller and return roller as normally used in such filters, :

and (2) three different positions designated A, B and C at which pe-

titioner’s accused web guiding mechanisms have been installed. Peti-

tioner’s devives, installed at position C, have been mounted at sev-

eral locations along the path of travel of the web designated generally

by the bracket associated with the letter C on the sketch.

ROLL

ONE TINNED AEE,

Both courts below nevertheless held that because pe-

» titioner’s devices, mounted at positions A, B or C, served

to align the belt, all three were equivalents an::, under the

doctrine of equivalents, were encompassed by and _ in-

fringed the Peterson patent claims (A12-15, 35-36).

- This, the decisions of the courts below have accorded

the Peterson claims a construction that enables Peterson

to recapture the precise subject matter of ‘eaneeled orig-

inal claims 3 and 8.

-Petitigner submits that in so holding, the decisions of

the courts below either (1) conflict directly with the decision

of this Court in Exhibit Supply Co., supra, or (2) raise an

_ important question of patent law as to the extent to which

the file wrapper estoppel rule applies to claims submitted

in lieu of canceled claims where the canceled elaims were

rejected both on prior art and for informalities in claim

language, a question which has not been but should be

settled by this Court.

In any event the decisions below impose limitations on

the file wrapper estoppel rule that conflict directly with

the applicable decisions of the Courts of Appeals for the

First, Sixth and Seventh Circuits.

Reasons for Granting the Writ .

1. The Poenewen of the Court of Appeals upholds the

' monopoly of a patent which fails completely to meet

the “nonobvious” requirement of 35 U.S.C. §103.

This Court,.in Graham v. John Deere Co., 383 U.S. 1

( 1966), stated that 30 U.S.C. §103 (A1), was not intended

by Congress to change the general level of patentable in- |

vention for subject matter sought to be patented and not

identically disclosed in the prior art, but was intended to

impose on the courts, in such instances, the directive to

inquire into the obviousness of the subject matter sought

to be patented as a prerequisite to nn. (383 U.S.

at p. 17). .

The Court then said (383 U. S. at p. 17): :

‘‘While the ultimate question of patent validity is

one of law, A. & P. Tea Co. v. Supermarket Corp., su-

pra; at 155, the §103 condition, which is but-one of three |

conditions, each of which must be satisfied, lends itself”

to several basic factual inquiries. Under §103, the

scope and content of the prior art are to be determined ;

differences between the prior art and the claims at |

issue are to be ascertained; and the level of ordinary _

skill in the pertinent art resolved. Against this back-

ground, the obviousness or nonobviousness of the sub-

“ject matter is determined.- Such secondary considera-

tions as commercial success, long felt but unsolved

needs, failure of others, ete., might be utilized to give

light to the circumstances’ surrounding the origin of the.

‘subject matter sought to be patented. As indicia of

obviousness or nonobviousness, these inquiries may

have relevancy. wl

and coutinued with the admonition that (383 U.S. at p. 18) :-

‘strict observance of the requirements laid down here

will ‘result in that uniformity and definiteness which

Congress called for in the 1952 Act.’’

In. this case, it is immaterial whether the subject matter ©

of the claims of the Peterson patent in suit is tested against

the nonobviousness requirements of §103 as set forth in

Graham or against the judicial precedent for §103 as ex-

pressed in A. & P. Tea Co. v. Supermarket Corp., 340 U.S.

147 (1950) ; Altoona Theatres v. American Tri-Ergon Corp.,

294 U.S. 477, 486 (1935) ; Sinclair Co. v. Interchemical Corp.,

325 U.S. 327 (1945), and Lincoln Co. v. Stewart-Warner

Corp., 303 U.S. 545 (1938), among others.

In either case, the combination of the Peterson claims

fails completely to satisfy the tests steadfastly adhered

to by this Court since’ Hotchkiss v. Greenwood, 11 How.

248 (1850) as justification of a private grant on the public

domain. |

The web aligning und tensioning apparatus of the Peter-

son claims, at best, required a very low order of skill for

a mechanic working in the filter field. See, for example,

the unequivocal statement of patentee Peterson (R. 964,

965) that ‘‘* * * at the time of this concept I wasn’t in-

telligent enough to know that the cloth had to slide at that

time on the return roller * * *’’—as the belt passed over

the return roller when the guide wheels were positioned

at the end of the return roller as in Figure 2 (A48) of

the patent. | |

The prior art Clark patent (Ex. K, R. 786) disclosed

a belt discharge filter, including a drum, discharge roller, —

wash roller and return roller which employed a filter belt

with beaded edges. The use of guide wheels coacting with

the beaded edges of a belt and one of the three expedients

disclosed by Peterson for imparting a tensioning ‘force to

such guide wheels (the tensioning rod system) to cause them

to coact with the beaded edges of the belt to tension and

center the belt are shown in the Swiss patent (Ex. U, R.

794). The Warner patent disclosed another of Peterson’s

expedients for imparting tension to the guide wheels

(weights and pulleys) in a slightly different environment

(Ex. Z, R. 794).

Thus, as each of the courts below held (A6, 26-27), the

only feature of the apparatus claimed in the Peterson

patent claims not shown in the prior art discussed above is

the use of springs or other resilient means to impart the

tensioning force to the guide wheels—and that feature is

shown in the patent as an alternative expedient to the prior

art tensioning rod and weight systems which Peterson

originally claimed as species of his inventive concept.

In the circumstances, the comments of the Court in

Technograph Printed Circwits Ltd. v. Bendix Aviation

Corp., 218 F.Supp. 1 (Md. 1963), affirmed, per curiam,

327 F.2d 497 (4th Cir. 1964), seem particularly apt. There

it-was said of the Kisler patent in suit in that ease (218

F.Supp. at p. 24):

‘“The case * * * is that of one who thought his inven-

tion was a pioneering one, and who therefore initially

claimed more than he himself later realized could be

claimed; and who therefore disclosed in his specifica-

tions a number of equivalents. Many if not all of these

a |

ws Neher arcnpe

were clearly within the prior art. If in fact they, or

any one of them, is within the prior art, and they are

equivalents, there is no invention in the substitution of

one for any other.’’

In the present case there can be no valid contention that

the substitution of springs for weights or springs for manu-

ally operated tensioning rods involved invention.

All three of these mechanical expedients were shown as

permissible alternatives and within the concept of the in-

vention for which Peterson originally filed application for

patent (Ex. 2, R. 657).

No function other than that inherent in the spring is

served by the spring means claimed. Weights and springs

have been judicially recognized as mechanical equivalents

in a machine since at least as early as 1879 (Imhaeuser v. .

Buerk, 101 U.S. 647, 656 (1879)). Indeed, as was caid in

Kenney Mfg. Co. v. J. L. Mott Iron Works, 137 F. 431, 433

(S.D.N.Y. 1905), ‘‘the interchangeable use of weights and

springs is the stock: illustration for equivalents.’? The

use of tensioning rods is but another equally available and

well known mechanjcal, expedient and was recognized as

such by Peterson in his patent (A48-52). Each of these

expedients is endowed with its own inherent advantages

and disadvantages; and all were equally well known in the

mechanical arts long before Peterson entered the field.

The selection of one in the place of another was wholly

dependent on the extent to which the inherent function-

ing of the expedient selected met the requirements of the

mechanic.

There is no suggestion in the record of this case of any

problems incident to the adoption or use of springs in the

Peterson combination. Indeed, the Peterson patent clearly

indicates the absence of such problems.

Nor is there any indication that Peterson’s use of

springs in his claimed combination served to make available

an apparatus that satisfied any long-felt but unsolved prob-

lem. ‘On the’ contrary, the record shows-by wholly uncon-

troverted testimony that (notwithstanding the complete

lack 0° wy use by either respondent of any device such as

disclosed by the Peterson patent, A28-29) when a desire -

was voiced for spring-biased guide wheel mechanisms to

align filter belts, such device was immediately forthcom-.

ing, produced by petitioner’s engineers prior to the issu-

ance of the Peterson patent and without benefit of the dis-

closures of that patent (R. 1454-1462)..

In tbe circumstances, Peterson’s selection of spring

means for his claimed combination in lieu of the manually

operated tensioning rod or weight disclosed in the. prior

art‘ and shown as alternatives in his patent certainly was

no less obvious than was: ae

(1) Graham’s inverting .and fnodifying the coupling

of a chisel plow shank with respect to the hinge’ plate

to effect free flexing of the shank, which this Court held

did not meet the nonobvious requirements of §103 in

Graham v. John Deere Co., supra. |

(2) Gessler’s selection of known ingredients (each

endowed with its own inherent characteristics) to eom-

pound a quick drying ink which this Court held to be

CE PTR RSS By

Pou

unpatentable in Sinclair Co. v. Interchemical Corp., 325

U.S. 327 (1945).

(3) Vogt’s selection of a flywheel to assure accuracy

and precision of film movement in apparatus for reecord-

ing and reproducing talking pictures, which the Court

held to fall short of patentable invention in Altoona The-

atres v. American Tri-Ergon Corp., 294 US. 477 (1935).

(4) Turnham’ ’s eashier’s counter and movable frame,

held to be unpatentable in 4. & P. Tea Co. v. sa dbl

Corp., 340 U.S. 147 (1950) ; or

(5) Butler’s utilization of an improved coupler in an

old combination of elements comprising a lubricating ap-

paratus, which this Court held to be an aggregation. of

known elements, each serving its intended function and,

hence, failing to reach the dignity of a patentable inven-|

tion, in Lincoln Co. v. Stewart-Warner Corp., 303 U.S. 545.

(19388). .

In each of the last two cited cases (A. & P. Tea Co.,

supra, and Lincoln Co., supra), as here, the District ‘Court

had found the patent in suit valid and its judgment was

affirmed by the Court of Appeals. This Court, in each

‘instanee, considered carefully the ‘‘combinations’’ of the

patents there in suit and concluded that they failed to meet

this Court’s requirements for patentable invention. The

Court said, in A. & P. Tea Co. (340 U.S. at pp. 152, 153-

154): | e

‘Courts should scrutinize’ combination patent

claims with a care proportioned to the difficulty and

- 19

improbability of finding invention in an assembly of —

old elements. The function of a patent is to add to

the sum of useful knowledge. Patents cannot be sus-

tained when, on the contrary, their effect is to sub-

‘tract from former resources freely available to skilled

artisans. A patent for a combination which only

unites old elements with no change in theiy respective

functions, such as is presented here, obviously with-

draws what already is known into the field of its

monopoly and diminishes the resources available to

skillful men. This patentee has added nothing to

the total stock of knowledge, but has merely brought

together segments of prior art and claims them in

congregation as a monopoly. ;

* * *

‘“The questions of general importancé considered here

are not contingent upon resolving conflicting testi-

mony, for the facts.are little in‘dispute. We set

aside no finding of fact as to invention, for none has

been made except as to the extension of the counter,

‘which cannot stand as a matter of law. The defect

that we find in this judgment is that a standard of

invention appears to have been used that is less ex-

acting than that required where a combination is made

up entirely of old components.’’

In the present ease, neither Peterson nor either of

the courts below has suggested that Peterson’ invented

the spring or any particular apparatus for adapting a

spring to the other elements of his claimed combina-

tion, all of which were per se old. In the Peterson

claimed combination, the spring is used for the same pur-

pose for which all springs are ,used in machines, to impart

a tensioning force or pressure to a component of the ap-

paratus, and neither Peterson nor either of the courts be-

PERO SH LPL I |

ee on .

_low has suggested any change in the respective functions

of any of the components of the claimed combination. The

Peterson patent adds nothing to the sum of. useful knowl-

edge. By holding such a patent valid, the decisions of the

courts below serve only to diminish the resources available

to skillful men. }

_ ‘The decisions below are in- conflict with the controlling

decisions of this Court. The petition should be granted

to allow this Court to make it unequivocally clear that the

‘<nonobviousness’’ requirements of 35 U.S.C. $103, are not

-to be confused with the ‘‘novelty’’ requirements of §§102

(a) and (b), and as construed in Graham v. John Deere

Co., 383 U.S. 1 (1966), the §103 requirements are to be

meticulously followed by the Federal Courts.

"2. The decision of the Court of Appeals accords.to

the Peterson patent claims a range of equivalents

foreclosed to.them by file wrapper estoppel.

Both the Court of Appeals and the District Court (A

14-15, 35-36) held that the Peterson patent claims were

entitled to a range of equivalents ‘sufficiently broad to ¢n-

compass within their scope the substance of original can-

celed claims 3 and 8 (when those claims are read respec-

tively with original claims 1 and 7 on which they are de-

pendent, R. 669-671).

These claims, original claims 3 and 8, were among those

rejected by the Patent Office by the second Office Action

dated October 25, 1961 (R. 683, 684), in which the Exam-

iner stated:

‘Claims 1-12 are rejected as indefinite and some-

' what misdescriptive * * *.

“Claims 1-12 are further rejected as unpatenfable

over Alston [U.S. Patent No. 2,880,875, Ex. R, R. 794] °

in view of the British patent [British Patent No. 812, -

197, Ex. P, R. 788] or vice versa * * *.

| ‘‘Applicant’s argument has been ohrefelly consid-

ered but the claims are fairly met by the newly applied

references as above.’’ (Bracketed matter added)

Claims 1 through 12 were thereupon canceled and appli-

cation claims 18 and 19-(Patent claims 1 and 2) substituted

in their place.

Apart from form, patent claims 1 and 2 differ from

canceled original claims 3 and 8 only in that in the canceled

claims the guide wheels were required to be mounted ‘‘ad-

jacent the drum’’ whereas the patent claims call for the

guide wheels to be mounted ‘‘adjacent each end of the re-

turn roller.’’

Petitioner’s devices mounted at position C (sketch su-

pra, footnote 6, p. 11) are not ‘‘adjacent each end of the

return roller’’ and do not infringe in terms either patent

claim (A12, 35) but are between the drum and the dis-

charge roller, that is ‘‘adjacent the drum’’ by the defini-

tion urged by respondents in construing the word ‘‘ad-

jacent’’ as it is el in the Peterson claims (R. 1263-1264)

and, hence, within the scope of the substance of canceled

original claims 3 and 8.

In the circumstances, if the decision of this Court in

Exhibit Supply Co., supra, is controlling here, Peterson’s ©

patent claims are clearly foreclosed from a construction

that would encompass within their scope petitioner’s de-

vices mounted at position C, and the decision. below holding

petitioner’s device so positioned to be an infringement of

Peterson’s claims are in direct conflict with Exhibit Supply

Co.,-supra. In that case, this Court said (315 U.S. at pp.

136-137) : ;

‘‘Whatever may be the appropriate scope and appli-

cation of the doctrine of equivalents, where a elaim is

allowed without a restrictive amendment, it has long —

been settled that recourse may not be had to that doc-

trine to recapture claims which the patentee has sur-

rendered by amendment.

* * *

“6* * * As the question is one of construction. of the

claim, it is immaterial whether the examiner was right

or wrong in rejecting the claim as filed.’?

Both courts below avoided the restraints imposed by

this Court in Exhibit Supply Co., supra, with respect to

the scope and application of the doctrine of equivalents to

the Peterson patent claims by concluding (a) that, not-

withstanding the explicit language used by the Examiner

in rejecting original application claims 1 through 12 (see

supra p. 20), he did not intend to reject them on prior art

(A16-17, 33-34); and (b) the applicant did not intend, by

the limitation ‘‘adjacent each end of the return roller,’’ to

distinguish from the cited art (A16-17, 33-34). At least in

part, the courts’ conclusions on this issue were based on

the speculative opinion testimony of respondents’ expert

(R. 1259-1262) as to what was in the Examiner’s mind

when he rejected original application claims 1 through 12

and in the applicant’s mind when he substituted the pat-

ented claims for the canceled original claims (A16-17, 33-

34).

Petitioner submits that these holdings are directly in

‘ conflict not only with the letter but also with the very pur-—

pose and intent.of this Court’s decision in Exhibit Supply

Co.,. supra. Whether or not there was merit in the Ex-

aminer’s rejection of these claims on the prior art—in-.

deed, whether or -not, in retrospect, the Examiner was *

rigtt or wrong in his rejection—is immaterial.. By the

same token, it is immaterial whether the limitations in-

serted in the allowed claims were necessary to avoid the

prior art. In either event, recourse to the doctrine of

equivalents to recapture the subject matter of the surren-

dered claims is proscribed by Exhibit Supply Co., supra.

Petitioner submits further that if Exhibit Supply Co.,.

supra, is deemed not to be controlling in this case because

the patent claims in suit here were submitted by amend-

ment to avoid rejection of the canceled original claims on

the dual grounds of ‘¢misdeseriptiveness”’ and as ‘‘fairly

met’’ by the cited art, the decisions below raise a question

which per se has not been but should be decided by this

Court. ste

‘ Moreover, the decisions below are directiy in conflict

with the decisions of the Courts of Appeals for the Seventh

— and: Sixth Circuits in Powder Power Tool Corp. v. Pow-

“der Actuated Tool:Co., 230 F.2d 409 (7th Cir. 1956) ;

Keating v. Stearnes Siiiesid Co., 347 F.2d 444 (7th Cir.

; 1965) ; and Parke, Davis & Co. v. eoiles Cyanamid Co.,

207 F.2d 571 (6th Cir. 1953), to the extent that they limit

application of the file wrapper estoppel rule to changes ji in

an application claim ““made,to overcome rejections by the

Patent Office for the reason that the claim was anticipated

- th prior art similarjties’? * * * and exclude its application

_ 24

to changes made in claims ‘‘where the patentee encountered

difficulties in the Patent Office because of particular word-

ing and indefiniteness of the claims’’ (A15, 43-44). They

are also in conflict with the dictum-of the Court of Appeals

for the First Cireuit in Borg-Warner Corporation v. Para-

gon Gear Works, Inc., 355 F.2d 400 (1st Cir. 1965). There’

the court made reference to the divergent views as to the .

application of the file wrapper estoppel rule in the Tenth

Cireuit as evidenced by the decision in McCullough Tool

Company v. Well Surveys, Inc., 343 F.2d 381 (10th, Cir.

1965), and the Seventh and Sixth Cireuits as evidenced,

respectively, by the decisions in Powder Power Tool Corp.,

supra, and Parke, Davis & Co., supra, but said that in its

view the conflict was largely linguistic. However, the

court’s statement in Borg-Warner Corporation, supra (355

F.2d at p. 406) that

“‘Tf an applicant who accedes fo a demand based on the

prior art is thereafter estopped to contest its neces-

sity,"he should equally be estopped to deny the cor-

rectness of a demand for which some other reason is

given. To a party examining the file to determine the

true scope of what has been granted, and finding some-

thing affirmatively disclaimed, it should make no dif-

ference what was the purpose of the disclaimer.

’ «Tn our opinion the determinative factor should be

not the reason why a change was required by the Pat-

ent Office, but what, in fact, was surrendered.” —

~ was clearly intended to express the rule to be followed in

the First Circuit. ‘The rule thus expressed appears to be

implicit from the decision in Exhibit Suppy Co., supra. It

, conflicts in substanee, and not in linguistics, from that

adopted in this case by the Court of Appeals for the Tenth

Circuit.

The file wrapper estoppel rule as expressed. by the

‘courts below can only lead to speculation and indefinite-

ness in claim interpretation, place a premium on artful

misdescriptiveness in initial claim drafting as a means to

avoid file wrapper estoppel, and promote the questionable

practice of forum shopping in cases involving this issue.

The question thus presented is an important one. It in-

volves a substantial public interest not only to patent own-

ers but to industry in general. It is a serious question

which should be definitively determined by this Court.

Conclusion

On the record in this ease, the writ of certiorari should

be issued to the Court of Appeals for the Tenth Circuit to

the end that the questions here presented may be reviewed »

and determined by ‘this Court in the interests of the or-

derly administration of justice.

Respectfully submitted,

GranvitLe M. BrumBaucu

Mark N. DononvueE

Attorneys for Petitioner

Of Counsel:

BruMmbBavucu, Graves, Dononur & RaymMonp

APPENDIX

.-o .

. » .

. A ‘ns

Constitutional Provision and Statutes Involved

Constitution

ARTICLE 1 |

Section 8. The Congress shall have the Power * * * |

To promote the Progress of Science and useful Arts,

by securing for limited Times to Authors and Inventors

the exclusive Right to their respective Writings and Dis-

coveries; * * *,

Statutes

35 UNITED STaTEs CopE

.§102. Conditions for patentability; novelty and loss of

right to patent

_ A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this

country, or patented or described in a printed’ publication

in this or a foreign country, before the invention thereof

by the applicant for patent, or

(b) the invention‘was patented or described in a printed

publication in this or a foreign country or in public use or

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

date of the application for patént in the United States, * * *.

_ §103. Conditions for patentability; non-obvious - subject

| matter J

A patent may not be obtained though the invention is not

identically disclosed or described as set forth in section 102

of this title, if the differences between the subject matter

sought to be patented and the prior art are such-that the

subject matter as a whole would have been obvious at the

time the invention was made to a person having ordinary

skill in the art to which said subject matter pertains. Pat-

_ entability shall not be negatived by the manner in which

7 ® ”

Opinion of United States Court of Appeals

UNITED STATES COURT,OF APPEALS

TENTH CIRCUIT

- DecemMBER TERM—1968

No. 9806

Tue Eimco Corporation,

: Appellant,

- - Vv.

Prererson FILTERS AND ENGINEERING Company and KoMLINE-

SANDERSON E\NGINEERING CORPORATION,

Appellees.

APPEAL FROM THE Unitrep States District Court .

ror tHe District or Utau, CentTRAL Division

(No. 33-66 Civil) , gi

Before:

Pickett, Lewis and Hickey, Cireuit Judges

Opinion of the United States Court of Appeals

Pickett, Circuit Judge |

This is a patent infringement suit in which the appel-

lees, Peterson Filters and Engineering Company and

Komline-Sanderson Engineering Corporation, allege in-

fringement of Patent No. 3077990 and seek damages,

together with injunctive relief prohibiting further infringe-

ment.’ The objects of the patent are to overeome tracking

and wrinkling problems encountered in the operation of

a rotating endless filter belt. The trial court rejected a

defense of ‘invalidity and held the patent valid and in-

fringed. | ;

The patent discloses a device for the alignment of

filter belts on an apparatus which is used in the sanitation

and industrial fields to separate liquid from solids. In

operation the filter belt is a part 5f a rotary drum filter

machine, the drum being positioned in a tank containing

the fluid to be separated and referred to in this litiga-

tion.as ‘‘slurry’’. The drum is cylindrical in shape, with

closed ends and a perforated surface. Spaced from the

drum surface is a cleaning section consisting. of a dis-

charge roller and other rollers the number of which varies -

depending upon the type of machine used. The endless

filter belt is looped over the drum and the discharge sec-

tion assembly. Necessarily the belt is substantially longer

than the circumference of the drum. For efficient opera-

tion all of the perforated portion of the drum, which is

_ immersed in the slurry, aust be completely covered by

1. The patent was issued to John G. Peterson on February 19,

1963, and later assigned to Peterson Filters and Engineering Com-

pany. Komline-Sanderson Engineering Corporation .is an exclusive

licensee under the patent, restricted to the field of sanitation and has

a réstricted right to sue for infringement.

FOAM pele YS ORT Sieg PRN

| Opinion of the United States Court of Appeals

the filter belt to prevent the entry of the raw slurry into

the drum and thence into the pipes and valves, thereby

—eausing the filter mechanism to become inoperative. By

means of a rotary valve, a vacuum is created on the under

side of the filter belt and the liquid phase of the slurry

is drawn through the filter to the interior of the drum

and the solids remain on the surface. As the drum rotates,

the belt leaves the surface of the drum and passes over

the rollers of the discharge system. At the first roller

there is an abrupt change in the course of the belt which

causes the solids to fall off. Thereafter the belt. continues

over additional rollers for cleaning and positioning for

veturn to the drum surface and commencement of another

filter cycle. Due to various causes, the filter belts when

. passing over the rollers have had a tendency to ereep

either to the right or, left, preventing return. of the belt

to the drum head in a manner which would cover all of

the perforated surface thereof. Such misalignment of

the belt also causes a wrinkling which tends to prevent

a satisfactory operation. The vacuum drum filter belt

process was well known in the art at the time of the issu-

ance of the-Peterson patent, but the new element claimed

in this combination was a filter belt guide which contin-

uously and automatically realigns the belt before it re-

turns to the drum surface.

2. The patent states that it is “an important object of the inven-

tion to provide a novel filter medium and mechanism for maintaining

an endless filter medium centered on a rotary drum and through a

discharge section spaced from the drum surface. The invention pro- _

vides centering of the medium, eliminates wrinkling of the material

of the filtering medium either on the drum or in the discharge section,

and provides positive tracking for the.medium onto the drum without

training rods. ‘The mechanism of the invention laterally stretches the

filter medium, retarding blinding of its openings and provides for

more complete cleaning of the filter medium prior to its return to the

filter drum for additional filtering action,”

Opinion of the United States Court of Appeals

‘The realignment device disclosed in the Peterson

patent consists of two pairs of guide rollers or wheels

with springs attached, mounted one adjacent each end. of

the last roller before the belt returns to the drum. These

wheels. bear against the beaded edges on the outer sides

of the belt and force it lateraliy outward, away from the

center. The tension creating the foree of the guide rollers

when engaging the beading is provided by adjustable

attached springs. The assembled tensioning and guiding

device includes means for adjusting the amount of lateral

tension to be applied.* If the realignment device is

mounted at the ends of a roller, sufficient foree must be

applied against the beading to cause the belt to slide

3. The patent claims are as follows:

1. In a filter medium tracking and tensioning device for a

rotary. drum filter having -a separate cake discharge section, an

endless filter medium looped over the filter drum and extending

through the cake discharge section, which filter medium includes |

a bead on each edge of the filter medium extending completely

therearound, and.a filter medium return roller mounted adjacent _

the filter drum, the improvement which comprises means for

tracking the filter medium back to said drum inclusive of a pair

of rollers mounted adjacent each end of the return .roller, each

pair of rollers being mounted in substantial contacting relation

and mounted with the filter medium therebetween and in posi-

tion to bear against the bead at the edge thereof, each said pairs

of rollers being arranged to move laterally i in respect to the path

of travel of the filter medium, resilient means attached to said

‘rollers in position so that the rollers bear against the bead at

each side of the filter medium to stretch the filter medium there-

between and to center it in relation to the return roller and the

filter drum, and means for supporting each pair of said rollers

in position on said filter medium and biased against the adjacent

bead at the edge thereof.

2. A device according to claim 1 in which each said pair of

bead contacting rollers is spring biased laterally away from, the

filter medium so as to provide essentially uniform tensioning on

the filter medium. (Claims 1 and 2 from patent.)

Opinion of the United States Court of Appeals

‘across the roller in order to effect a realignment. The

ultimate object of the Peterson device is to cuide the filter

belt in a smooth condition back to the drum for the pur-

pose of covering all of the surface exposed to the Vacuum.

The trial court found that this element with the resil-

ient means or springs attached to the guide rollers in

position so that the rollers bear against the beads of

the filter belt to tension and center the belt, as claimed

in the Petérson patent, was not found in any of the prior

art patents cited by the patent office during the prosecu-

tion of the Peterson application nor in any additional prior

art cited by Eimco. Eimco does not question this finding.

The Eimeo filter belt aligning mechanism is similar to

that described in the Peterson patent. In operation the

mechanism is mounted: on both sides of the belt at a posi-

tion between the rollers in the discharge seetion of the

filter machine, or between the drum and the first roller,

but not on the end of any roller. In some instances the

guide wheels bear against the beaded edge of the belt only

on the side that is in need of adjustment, but the contact

relation between these two elements is substantially the

same as that of the Peterson device. Eimco urges that

the function of its device differs from that of Peterson in

that its location between. the rollers utilizes the principle

of ‘‘planar action’’ in its operation, while the function of

the Peterson patent is to cause a slippage or sliding of

the belt across one of the rollers to. obtain realignment.

The spring tension necessary to obtain realignment when

the device is positioned between the rollers is much less

than when it is.mounted on one of the rollers. It is not

Opinion of the United States Court of Appeals

contended that the belt realignment result obtained is

different in either instance. 7

The principal i issues presented by Eimco are that the

. trial court erred ‘in not holding the Peterson patent in-

_valid, for failure to mect the tests of non-obviousness

required by 35 U.S.C. 103, non-infringement, and a file

wrapper estoppel. |

A patent is presumed to be valid and this’ presumption

can be overcome only by clear and convincing evidence.

Griswold v. Oil Capital Valve Co., 10 Cir., 375 F. 2d 532;

King-Sceley Thermos Co. v. Refrigerated Dispensers, Inc.,

10 Cir., 354 F. 2d 533. Likewise, one asserting invalidity

of a patent on the ground of anticipation has the same

burden of proof. Griswold v. Oil Capital Valve Co., supra;

McCullough Tool Co. -v. Well Surveys, Inc., 10 Cir:, 343

F. 2d 381, cert. denied, 383 U. S. 933; Mott Corp. v. Sun-

flower Industries, Inc., 10 Cir., 314-F. 2d 872.

Generally, when elements old in the art are combined

together in a manner which secures a new and useful

result.or an old result in a more facile, economical and

efficient manner, there is a patentable combination. iMc-

Cullough Tool Co. v. Well Surveys, Inc., supra; Oliver

United Filters, Inc. v. Silver, 10 Cir., 206 RP 2d 658, cert.

* denied, 346 U. S. 943.

Utility, novelty, and non-obviousness are separ ate tests

of patentability and all must be satisfied for a valid —

United States v. Adams, 383 U. S. 39.

_ The utility of the Peterson combination is not ques-

tioned, and Eimco recognizes that the use of the spring

tension device to urge the guide wheels outwardly to align

~ entre 9

Opinion of the United States Court of Appeals

the filter belt as it progresses in the filtering eycle was

not in the prior art. It contends, however, that the valid-

ity of the patent eannot be upheld on any single essential

element, but that patentability must be determined on

whether the combination as a whole would have been ob-

vious to a worker having ordinary skill in the art at the

time the alleged invention was made. This is a statutory

law, and the law of this Cireuit. 35 U.S.C. 103;* see Graham

vy. John Deere Co., 383 U.S. 1;> Mott Corp. v. Sunflower

Industrics, Inc. supra. The trial court found that the

prior art called to its attention, and the testimony of

Eimco’s expert witness to the effecexhat the substitution

of a resilient means for a non-resilient means of tracking

a filter belt was within the skill of the worker in the

art, ‘‘did ‘not overcome the indications in the record ‘to

the contrary and the presumption of the validity attaching

to the patent.”’ | -

Eimco’s objection to this. finding as we understand it,

is that the trial court, in determining the ‘‘nan-obvious”’

requirement, limited its inquiry to Eimco’s failure to

4. 35 U.S.C. 103 provides: “A patent may not be obtained

though the invention is not identically disclosed or described as set

forth in Section 102 of this title, if the differences between the sub-

ject matter sought to be patented and the prior art are such that the

subject matter as a whole would have been obvious at the’ time the

invention was made to a person having ordinary skill in the art to.

which: said subject matter pertains. Patentability shall not be nega-

tived by the manner in which the invention was made.” ~

5. 383 U.S. 19. With reference to the purpose of Sec. 103 the

Supreme. Court said : “Although we conclude here that the inquiry

which’the Patent Office and the courts. must make.as to the’ patenta-

bility must be beamed with the greater intensity on the requirements

of Sec. 103, it bears repeating that we find no change in the general

strictness with which the overall test is to be applied.”

"AQ

Opinion of the United States Court of Appeals

establish the lack of novelty required by Section 102. It

is urged that utility or novelty are not necessary criteria —

in the determination of the Section 103 requirements. Ob-

viousness is not to ‘be determined by the lack of utility

or nov elty, but oie of the factual tests contemplated by

Section 103 is a comparison between the subject matter

sought to be. patented and the prior art in, reaching a

conclusion as to obviousness or non-obviousness under the

statutory standards. In the Graham ease the court said:

‘‘We believe that this legislative history, as well

as other sources, shows that the revision was not in-

tended by Congress to change the general level of

atentable invention. We conclude that the section was

~~~ Intended merely as a codification of judicial precedents

embracing the Hotchkiss condition, with congressional

directions that inquiries into the obviousness of the

subject matter sought to be euecie are a prerequisite

to spencers

‘‘Approached in this light, the Section 103 addi-

tional condition, when follow ed realistically, will per-

mit a more practical test of patentability. -The em-

phasis on non-obviousness is one of inquiry, not qual-

jty, and, as such, eomports with the constitutional

strictures. . .

‘*While the ultimate question of patent validity is

one of law, A. & P. Tea Co. v. Supermarket Corp.,

- supra, at 155 (340 U.S. 147), the Section 103 condi-

tion which.is but one of three conditions, each of

which must be satisfied, lends itself to several basic

factual inquiries. Under Section 103, the scope and

content of the prior art are to be determined; dif- -.

ferences between the prior art and the claims at issue

“are to be ascertained; and the level of ordinary skiH

A10

Opinion of the United States Court of Appeals .

in the pertinent art resolved. Against this background,

_ the obviousness or non-obviousness of the ‘subject mat-

ter is determined.’’ See also Carson v.. Bland, 10

Cir., 398 F. 2d 423.

In determining the Section 103 issue the trial court

made the inquiry as to the obviousness or non-obviousness

of the subject matter as suggested by the Supreme Court.

The determination of non- obviousness was not limited to

a finding of lack of novelty. This is illustrated by a ref-

erence in its finding to the testimony of Eimco’s expert °

witness ‘and indications in the record to the.contrary.

The trial court’s complete. and careful findings disclose

' that for the purpose of ascertaining whether the Peterson

device would be obvious to a person having ordinary skill

in the art, it measured the device with the prior art to-

gether with ‘the record as-a whole. As indicated in the

Graham case, obviousness ‘‘to a-person having ordinary

skill in the art’” is an illusive factual subject to be deter-

' mined by the trial court. In recognizing the difficulties of

Section 103 .problems, the court warned that ‘‘what is

obvious is not a question upon w hich there is likely to be

uniformity of thought in every given context.. The diffi-

culties, however, are comparable to those encountered

- daily by the courts in such frames of reference as negli-

gence and s@@gpiter, and should be amenable to a case by

case development.’’ . The difficulties referred to are ques-

tions of fact to be determined in the trial court. The

courts agree that the ‘ultimate question of validity is one

of law, Griswold v. Oil Capital Valve Co., supra, but ob-

viousness as referred to in Section 103 is a question of

All

Opinion of the United States Court of Appeals

fact for the trial court, which determination should not

be set aside in the absence of clear error. Graver Mfg.

Co. v. Linde Air Products Co., 336 U. 8S. 271; McCullough

Tool Co. v. Well Surveys, Inc., supra; Maytag Co.-v. Mur-

ray Corp..of America, 6 Cir. 318 F. 2d 79. In Admiral

Corp. v. Zenith Radio Corp., 296 F. 2d 708, we said: ‘On -

conflicting evidence the trial court held that the devices

covered by the Zenith patents would not have been obvious

to one of ordinary skill in the art. This is a finding of

fact which cannot be set aside as clearly erroneous.’’ The

finding of non-obviousness is amply supported by sub-

stantial evidence, and we agree with the trial court that

the presumption of validity has not been overcome. We

find no language in Graham v. John Deere Co.,.supra, that

requires a different approach to the non-obvious question

than that made by the trial court, or that is contrary to

our former decisions.

On the question of infringement, Eimco insists that

its belt centering device is. not within the teaching of the

Peterson patent. It argues that the claims of the patent

and the specifications restrict the mounting of the belt

aligning device to the ends of the return roller; therefore,

its mechanism, which in operation is mounted only be-

tween rollers at various unsupported expanses of the belt,

is not an infringement. The Eimco device -is in all re-

speets similar to that’ claimed in the patent, including

guide rollers with springs attached to them. In opera-

tion, the Eimco mechanism is located at places other than

at the end of a roller, and the direction of the belt is

changed by pressure of the guide wheels against the

A12

Opinion of the United States Court of Appeals

beaded edges before it reaches the roller... But as the

belt approaches the rotating drum its alignment is the same

as that resulting from the action of the Peterson device.

The trial court, after a consideration.of all the evi-

dence, observing a demonstration of a model designed from

the Peterson model, and viewing the Eimeo apparatus

in actual operation, found: |

“While defendant’s apparatus with guide’ rollers

at locations other than’ that between the return roll

and the preceding idler roll do not meet the literal

terms of the claims, in that they were not mounted

adjacent the ends of the return roller, the guide rollers

at other locations in the path of travel of the belt

perform substantially the same function as guide roll-

ers mounted between the return roll and the idler

roll. That function is to correct mistracking of the

filter belt to track the belt back to the filter drum and

center it with respect thereto, and to stretch the belt

beween opposed pairs of guide rollers.

‘‘Tn all positions between rolls or the drum and in ,

the path of travel of the belt, the guide rollers per-

6. The trial court in its findings described the Eimco mechanism

in operation as follows: “The sn» eng aligning devices have

been located on its filters in every inStance in a position at an other-

wise unsupported ‘span of the filter web. In no instance has Eimco’s

aligning device been mounted laterally adjacent the end of the return

roll or any other roll. In most instances on the defendant’s three;

roll system, defendant’s aligning device is located between the filter

drum and the discharge roller. In a few instances, the defendant’s

aligning device has been located betwee? the return roller and the

next preceding roller in its three-roll system. In all instances in de-

fendant’s two-roll system, defendant’s aligning device has been lo-

cated between the filter drum and the discharge roller. In all in- -

stances in defendant’s five-roll system, defendant’s aligning device

has been located between the filter drum and the discharge roller

Defendant’s guide rollers do not contact the filter belt when the belt

is in contact with a roll, such as the discharge roll or return roll.

A138 |

Opinion of ime United States Court of Appeals

form their fatioting § in substantially the same way as

guide rollers mounted between the return roll and

idler roll. The mode of operation is the same, i.e., to

laterally displace the filter belt to one side so that

the belt will track by planar motion on to the follow-

ing roll in the path of travel of the belt. When the

guide rollers contact the filter belt while-the belt is

Jin. contact with the return roll or any - ll other ‘than

the filter drum, the rollers still act to move the belt

laterally by digo and.-the belt then tracks by

planar motion on the next roll in its path of move-

ment. Since the primary object of the invention and

the accused device is the centering of the stretched

filter medium on the drum, the court regards the

precise location of the guide rollers with reference to

the rollers as incidental; and particularly with ref-

erence to. the centering ofthe filter medium on the

filter drum the devices operate in substantially the

same way and perform substantially the same fune-

tion to accomplish substantially the same result. More-

over, it is found that any difference in location of the

guide rollers between the patented device and the

aceused device would be an equivalent vartation which

would be obvious to one possessing ordinary skill in

the art.’’

The court also found that there was no teaching in the

patent disclosure ‘‘that the return roll must be in econ-

tact with the belt at the same time that the guide rollers

exert tension across the Delt’? for a proper functioning

of the patented device.

The law of infringement applicable to this. ease was

stated by this court in King-Seeley Thermos Co. v. Re-

frigerated Dispensers, Inc., supra, as follows:

Al4

Opinion of the United States Court of Appeals

‘‘Infringement is not avoided by making a machine

which differs in form but appropriates the principle

and mode of operation of the patented machine by the

use of the same or equivalent means. Janco, Ine. v.

Carlson, supra; Jones v. Bodaness, 10 Cir., 189 F. 2d

838; Stearns-Roger Mfg. Co. v. Ruth, 10 Cir., 62 F. 2d

442; Johns-Manville Corp. 'v. National Tank Seal Co.,

10 Cir., 49 F. 2d 142. Infringement exists if the

accused device performs substantially the same fune-

tion in substantially the same way and accomplishes

substantially the same result as the patented device, :

even though they differ in name, form and shape.

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

339 U. S. 605, 70 S. Ct. 854, 94 L. Ed. 1097, reh. denied

340 U. S. 845, 71 S. Ct..12, 95 L. Ed. 620. If the

“accused machine falls clearly and definitely within

the claim of a patent, infringement is made out. Mce-

Cullough Tool Co. v. Well Survey, Inc., supra. “The

protection of the provisions of a patent cannot be

avoided by adding materials unléss a wholly differ-

ent result is obtained. ‘Colorable differences without

substance do not avoid infringement.’ Bewal, Ine. v.

Minnesota Mining and Mfg. Co., supra, 292 F. 2d at

167. Cf. Reiner v. I. Leon Co., 2 Cir., 285 F. 2d 501,

cert. denied 366 U. S. 929, 81 S. Ct. 1649, 6 L. Ed.

2d 388, reh. denied 366 U. S. 978, 81 S. Ct. 1918, 6

iL. Ed. 2d 1268.”’

The evidence is without substantial conflict that the

place of applying force to the edges of the filter belt and

the alignment resulting: from the use of the Eimco equip-

ment is the same as that of the patented machine regard-

less of where it is placed on the structure over which the

belt passes. We agree with the trial court that the placing

Ald

Opinion of the United States Court of Appeals

of the equipment between rollers or between the drum and

the discharge roller is inconsequential and is merely a

substitution of equivalents. The Eimco machine wherever

it is placed on the belt uses the same principle and mode

of operation as the one described in the Peterson patent.

The two devices do thé same work in substantially the

same way and produce substantially the same result. This

is the test of infringement, as indicated in King-Seeley

Thermos Co. v. Refrigerated Dispensers, Inc., supra, and -

the cases cited therein.

Finally, Kimco contends that the ‘‘file wrapper’? his-

tory of the Peterson patent discloses that to#obtain his

patent, Peterson explicitly limited the mounting of his belt

realignment. device to a particular point ‘‘adjacent: to

each end of the return roller’? and cannot now expand

that language to encompass alignment apparatus posi-

tioned between rollers such as that used by Eimco. The

law is settled that the extent of an invention is to be

determined by the patent claims, together with the ‘‘file

wrapper’’ history in the Patent Office, and a claim which

has been narrowed for the purpose of obtaining the patent

cannot be expanded to include that which was eliminated.

Graham v. John Deere Co., supra. The application of this

doctrine, however, is limited to changes made to overcome

rejections by the Patent Office far the reason that the

claim was anticipated .in prior art similarities. It is not

applicable where the patentee encountered difficulties in

the Patent Office because of particular wording and indefi-

— nitetiess of the claims. McCullough Tool Co. v. Well Sur-

veys, Inc., ‘supra; Sears Roebuck & Co. v. Jones, 10 Cir.,

308 F. 2d 705.

A16

Opinion of the United States Court of Appeals

When the Peterson application was filed it contained

seventeen claims. The first thirteen were directed to a belt

aligning mechanism as illustrated in ‘the Peterson patent.

The original claims 1 to 10 naar that the mechanism

was to be mounted or positioned fdjacent to the filter

drum. Original claims 11 and 12 provided for two single

‘‘hbead contacting rollers”’ pehiieh were ‘‘juxtaposed to

‘the ends of the return roller and arranged to move lat-

erally opposite one another to guide and stretch the web

in cooperation with the return roller’’. All of the original

claims were rejected by the Patent Office for the reason

that they were indefinite and directed to an old combina-

- tion. Peterson then canceled claim 13.and amended claims

1 to 12. These claims were again rejected for indefinite-

ness and as unpatentable over the prior art. In response

to this rejection, Peterson canceled all of his claims and

substituted in. their place claims 18 and. 19, which are

now claims 1 and 2. It is argued that to overcome the

rejections of the aforesaid claims, Peterson provided that

his roller system for aligning the filter belts would be

mounted adjacent each end of the return roller’’. It iS

said that to permit the positioning of the Peterson device

in any other location, particularly between rollers, would

‘allow him to recover and include in his patent that which

he exeluded to obtain it.

An expert witness, after analyzing the Patent Office

records, testified that the term ‘adjacent each.end of the

return roller’? was inserted in the claims for clarifying ’

language and not for the plirpose of overcoming a Patent

Office objection on the prior art. The witness also said

Al7 | °

Opinion of the United States Court of Appeals

that when Peterson used the term he could have instead

appropriately and reasonably said ‘‘by means of rollers

mounted adjacent to the outer edge of the filter medium”’.

The trial court found that the critical phrase was in-

cluded in the patent to overcome a Patent Office rejection

because ¢he language of the claims.was indefinite and mis-

descriptive, and not to. avoid a rejection on the prior art.‘

The record sustains these findings.

AFFIRMED. |

7. The trial court’s findings on the question of “‘file wrapper”

estoppel included the following :

“From the testimony of Burns, plaintiffs’ expert, and an ex-

amination of the file wrapper of the Peterson patent, I find that

the Examiner meant by this rejection that the guide rollers could

not be in line with the center of the filter drum because in the

drawings and the specification the guide rollers were disclosed _

as near the outer edges of the drum and that such a position is

necessary in order for the guide rollers to contact the beads on

the outer edges of the belt. In Paper No. 5 the Examiner said

that the rollers were shown “adjacent” the outer edges of the

drum. The applicant responded to this rejection by locating the

rollers adjacent the ends of the return roll, which, with respect

to the filter belt is the same location as the outer edges of the

drum.

“In Paper No. 5 the Examiner also rejected claims 1 to 12 as

unpatentable over U. S. Patent No. 2,880,875 to Alston in view

of British Patent No. 812,197 or vice versa, and claims 14 -to

16 as fully met by the British patent. , The phrase “adjacent each

end of the return roller” was not placed in claim 18 (claim 1

of the patent) to meet this basis of rejection on the prior art.

. There is no indication that in this rejection on the prior art the

Examiner required claim language that the guide rollers be

-mounted laterally adjacent the ends of the return roller as con-

trasted with being mounted longitudinally adjacent the ends of

the return roller.”

A18

Findings of Fact and Conclusions of Law

IN THE

UNITED STATES DISTRICT COURT

For tHe District or UTan |

CENTRAL DIvIsIon

No. 030-66

——E— a

PETERSON FILTERS AND ENGINEERING CoMPANY and KoMLINE-

SANDERSON ENGINEERING CORPORATION,

Plaintiffs,

US.

THe Ermco Corporation, .

reas Defendant.

This case has been tried to the court, orally argued by

counsel, submitted for decision upon written briefs, and by

the court taken under advisement. Now considering itself

fully advised, the court makes and enters the following

Finpincs or Fact

Nature of Action

1. This is an action for infringement of United States

Letters Patent No. 3,077,990 granted-February 19, 1963, to

John G. Peterson, as assignor to Peterson Filters and En-

gineering Company, for Filter Medium Guide.

A19

Findings of Fact and Conclusions of Law

Parties

"9. Plaintiff, Peterson Filters and Engineering Com-

pany (hereinafter ‘‘Peterson’’), is a Utah corporation hav-

ing its principal place of business in Salt Lake City, Utah.

3. Plaintiff, Komline-Sanderson Engineering Corpora-

tion (hereinafter ‘‘Komline’’), is a New Jersey corpora-

tion having its principal place of business in n Peapack, New

Jersey.

4. Defendant, The Eimco Corporation (hereinafter

‘‘Kimeo’’), is a Delaware corporation having a regular

and established place of business in Salt Lake City, Utah.

Status of Plaintiffs

D. Plai Peterson is now and since February 19,

1963, has been the owner of United States Patent No. 3,-

077,990 in suit. 7

6. Plaintiff Komline is now and since July 12, 1965,

has been the exclusive licens¢e under United States Let-

ters Patent No. 3,077,990 in suit in the ‘‘sanitary field’’,

which has also been defined as the ‘‘municipal sewerage

treatment field’’. Pursuant to its license agreement with

Peterson, Komline has the unrestricted right to bring suit

under United States Letters Patent No. 3,077,990 for as-

serted infringements thereof which oceur only in the ‘‘sani-

tary field’’, that is, the “municipal sewerage treatment

field’? and the restricted right ‘‘for a period of one year

from the date of the agreement’? to institute suit or suits

A20

_ Findings of Fact and Conclusions of Law

_ against a third party for asserted infringement that ex-

tends ‘‘into other than the municipal sewerage treatment

field’’.

Subject Matter of Litigation

7. This litigation is concerned with a particular filter

web or belt aligning mechanism or device for use with one

type of rotary drum vacuum filter employed in separating

solids from liquids, namely, a continuous filter medium re-

- moval drum filter, sometimes referred to as a belt discharge

filter, or a drum filter ‘‘having a separate cake discharge

section’’. The belt discharge filter includes a filter drum

—a cylindrical member having closed ends that varies in

diameter between eighteen inches and fourteen feet and in

face width between one and fourteen feet. The drum has

a perforated deck surface which, in operation, is covered

for the greater part of its periphery by a filter. medium or

web. The perforated deck is connected by pipes to an auto-

matic rotary, valve. A portion of the drum covered by the

filter medium is immersed in a tank containing slurry and

rotated. By means. of the rotary valve, a vacuum is pulled

on the underside of the filter drum while it is immersed in

the slurry and for a short period thereafter. The liquid

phase of the slurry is drawn through the filter medium to

the interior of the drum and the solids are deposited on

the surface of the filter medium. As the drum rotates, the

filter medium on which the solid material has been depos-

_ited leaves the slurry and, as the drum continues its rota-

tion, the filter medium is withdrawn from the perforated

surface of the drum and passes over a roller called a dis-

A21

Findings of Fact and Conclusions of Law

charge roller. At the discharge roller an abrupt change

in the dir ection of travel of the filter medium causes the .

gk to fall off the medium. The filter medium or belt then |

passes (a) directly to the return roll (two-roll system), or

(b) over one or more wash or idler rolls and thence to the

return roll (three and five roll systems). From the return

roll the medium passes directly back to the drum, where it

again engages the perforated deck of the drum for a rep-

etition of the filtering cyele. |

8. In normal operation a filtet belt which is part of a

rotary vacuum drum filter apparatus tends to track lat-

erally to the left or right’ and, if not corrected, will mis-

track on the filter drum and expose some of the perforated

area of the drum that should be covered by the belt. When

this occurs, the raw slurry in the tank will be drawn into

the filter drum and then the pipes and valves therewithin.

The filtrate will be contaminated and eventually the filter

will become inoperative.

9. Mistracking occurs for many reasons, such as the

practical impossibility of manufacturing a filter drum hav-

ing perfect symmetry, misalignment of one or more of the

rolls of the filter apparatus, variations in the load of filter

cake carried by the belt, and incomplete discharge of filter

cake from the belt. Because of these variables, the belt.

can mistrack to either side of the drum. 2

10. It is most important that the filter belt be sufti-

ciently aligned so that no portion of the drum perforations

A22

Findings of Fact and Conclusions of Law

- are exposed to the raw slurry. It is not desirable that mis-

alignment occur at other locations of the filter apparatus,

but moderate misalignment at rolls such as the return roll

will not substantially impair operation of: the apparatus

to the extent that it does not affect the positioning of the .

filter medium on the drum. .

11. Wrinkles often occur in a filter belt made of cloth.

Wrinkles occur in most rotary vacuum filter apparatus em-

ploying cloth belts. Lack of proper alignment of the belt

when it is being fabricated is one cause of wrinkles.

Disclosure of the Peterson Patent in. Suit

_ 12. U.S. Patent No. 3,077,990 to Peterson has for its

object avoiding wrinkling in the filter belt and tracking the

belt properly back onto the filter drum: The endless belt

_ is provided with continuous beads at opposite side edges

thereof and\passes over the filter drum and then, in its

path of travel, over a discharge roll, two idler rolls, a re-

turn roll, and then back onto and around the drum. The

. Peterson patent discloses guide rollers as part of the ap-

paratus, one pair of guide rollers bearing against a bead

at each side of the belt to urge the belt outwardly on each

side by’its lateral stretching and thus smooth out wrinkles

in. the belt. Figures 3, 4 and 6 of the drawings show and

the specification discloses resilient means in the forms of

springs which are attached to the two pairs of guide rollers

and continuously urge the rollers away from the center

line of the belt. By the use of such resilient means the belt

is automatically centered with respect to the filter drum

A23

Findings of Fact and Conclusions of Law

and mistracking with respect to the drum is automatically

corrected. |

f ;

13. Of the figures of the drawings that show a resili-

ent means or springs for correcting mistracking of the

belt, Figurés 4 and 6 show both the guide rollers and the

return roll. In each of Figures 4 and 6 the guide rollers

are in contact with the beads at the side edges of the belt.

while the belt is also in contact with. the return roll. In

Figure 3 of the drawings no return roll is illustrated, al-

though the filter drum is shown. The specification states

that the return roll is not shown in Figure 3 and there is

no statement in the specification that the return roll must

be-in contact with the belt at the-same time that the guide

rollers exert tension across the belt. There is no teaching

in the patent disclosure that any such relationship is nec-

essary in order to have -the guide rollers function prop-

erly, and I find that no such relationship is necessary.

14. The filter belt cannot first contact the filter drum

at a position at the bottom of the drum when the drum is

rotating with its axis in a substantially horizontal plane.

Such contact would leave portions of.the perforated drum

surface exposed to raw slurry in the tank before: the belt

contacted the drum. Instead, the belt must contact’ the

_ drum at a location prior to contact with the tank slurry.

- A eonventional example of belt-drum contact is shown in

Figure 1.

_ 16. Figures 1 and 3 are stated to be schematic draw-

ings. In Figure 3, for convenience of illustration, the

A24

Findings of Fact and ‘Conclusions of Law —

drawing shows the filter drum directly over the filter belt

if the view is a side elevational view. Since such a posi-

tion would. not’ be operable, it is apparent that the illus-

tration of Figure 3-is not a side elevational view.

16. According to testimony of plaintiffs’ expert witness

and the inventor, other figures, such as 2, 4 and 6, illus-

trate the apparatus with the filter belt in contact with the

return roll in any position between the point of tangency

of the filter belt when it first contacts the return roll and

the point of tangency when the filter belt leaves the re-

_turn roll. Defendant’s expert witness did not deny that

the drawings could show this relationship. In those fig-

ures where the guide rollers act. on the belt while the belt

is in contact with the return roll, neither the specificaticn

nor the drawings limit the relationship of the belt and re-

turn roll to a position in which the filter belt is directly

atop the return roll.

The Patent Claims

17. The patent in suit contains two claims, the second

of which is written in dependent form and incorporates

the recitations of the first by reference. Claim 1 is writ-

ten in a form in which the general apparatus already known

to the art is first ‘set forth, and then the improvement is

recited in terms that relate back to and specifically men-

tion those parts of the apparatus that are known. . It was

agreed by witnesses for both parties that the preamble of

the claim recites apparatus known to the art.

A25

Findings of Fact and Conclusions of Law

18. The improvement claimed by the patentee is means :

for tracking the filter medium back to the filter drum. It

includes two pairs of guide rollers mounted adjacent each

end of the return roller with the filter: medium between |

- them and arranged to move laterally across the path of

travel of the filter medium and to bear against the beads

at the edges of the filter medium or belt. Resilient means

are recited as being attached to the guide rollers so that

the rollers bear against the beads to stretch the filter me--

dium and to center it in relation to the return roll and the

filter drum. There are means supporting each pair of

rollers. Claim 2 is essentially the same as claim 1 except |

that the resilient .means are specifically described as

springs. The filter medium aligning, stretching and ten-

sioning device disclosed and described in patent in suit No.

3,077,990 and claimed in claim 1 thereof comprises, in com-

bination, essentially and more particularly five structural

components or elements, to wit: .

(1) a return roller

(2) a filter medium having ‘‘beaded edges”’

(3) two pairs of guide wheels (or rollers)

(4) resilient web tensioning devices, such as springs

(5) mounting means for the guide wheels (or roll-

ers)

and the following specific directives or requirements

for the assemblage of these structural components to

achieve particular and specified functions, to wit:

(6) Each of the two pairs of rollers are to be

_ mounted

STR N Oy MPI TOR

A26

Findings of Fact and Conclusions of Law

(a) one adjacent each end of the return roller

(b) in substantial contacting relation

(d) in a position to bear against the bead at each

edge of the filter medium, and

(e) arranged to move laterally in respect: to the

path of travel of the web. _

(7) The resilient means (springs in claim 2) are to

be attached to said guide wheels (rollers) in position

so that the guide wheels (rollers) bear against the bead

at each edge of the filter medium to .

(a) stretch the filter medium therebetween and

(b) center it with respect to the return roller and

the filter drum.

(8) The mounting means for the guide wheels (roll-

ers) are to comprise means to support each pair of

guide wheels (rollers)

(a) in‘position on the filter medium and

(b) biased against the adjacent bead at the edge

thereof. ps

The Validity Issue

19. This court finds that the element and its function ~

of the apparatus claimed in the Peterson patent, which is

not found in any of the prior art patents cited by the Pat-

ent Office in the course of the prosecution of the Peterson

application or any additional prior art cited by defendant,

is the resilient means or springs attached to the guide roll-

A27

Findings of Fact and Conclusions of Law

ers in position so that the rollers veer against the —

of the filter belt to tension and center the belt.

20. The only patent referred to by defendant at the

trial that shows or describes any springs or resiltent means

is U. S. Patent No. 2,880,875 to Alston, which was cited

by the Patent Office. Alston discloses coil springs secured

to eyelets on a filter belt, not to guide rollers. The filter

belt of Alston sags and forms a liquid-receiving basin with-

a weight such that the belt is further supported by a metal,

open-mesh belt beneath it. The springs of Alston function

to reduce stress on the belt due to weight of liquid when

the belt has sagged to form a basin-like structure. Both

expert witnesses testified that the springs of Alston did

not act to center or correct mistracking of the filter beit

of Alston. There is no disclosure in the prior art of coil

springs having the function of those in the patent in a

similar combination of elements. | :

21.. There is no suggestion in the prior art brought to

the attention of the Court that the coil springs of Alston

-ean be attached to guide rollers of an apparatus such as

that of the Peterson patent and used in the manner in which

; they are used in the patented apparatus. Alston is not

in the field of rotary vacuum belt filters and no vacuum is

applied. One of ordinary skill in this art would not find it

obvious to use coil springs in the manner of the patented

apparatus. None of the prior art shows any resilient means

attached to guide rollers to center a filter belt with respect

to a filter drum and to apply tension to the belt.

Sat Ban, a Bad Ate ok Poe

A28 .

Findings of Fact and Conclusions of Law

99. Defendant’s expert witness, Weems, national sales

manager of the defendant corporation, testified that sub-

stitution of resilient means for non-resilient means. in the

prior art would be within the skill of the art although a

change in function accompanied the substitution. The court

is of the opinion that this opinion did not overcome the in-

dications in the record to the contrary and the presumption

of validity attaching‘to a patent. No prior art was brought

forth by defendant to show the obvious nature of the

claimed apparatus and its function; while the Allis patent

and the Koppehele patent were not considered by the

patent office, the court is of the opinion that they separately

or in combination did not disclose the plaintiffs’ invention

- and that representative of each group of prior art patents

which defendant alleges anticipates an element of the plain-

tiffs’ apparatus is a patent cited by the U. S. Patent Of-

fice against the Peterson application.

93. Plaintiff Peterson has never made -a commercial

embodiment of an apparatus according to that claimed in

the patent in suit. Plaintiff Komline has concluded con-

tracts of sale with Bechtel Corporation and Kawaecki

Chemical Corp. for rotary vacuum belt filters employing the

claimed apparatus. Requests for or inquiries concerning

a license under the patent in suit have been made by two

other companies that are substantial factors in, the sanitary

field. Of the five companies that are substantial factors

in the field, excluding the defendant, only one has not

sought a license under the Peterson patent.

24. As of (a) the date on which John G. Peterson

filed the application for the patent: in suit, March 7, 1960;

A29

Findings of Fact and Conclusions of Law

_(b) the date on which the patent in suit was granted, Febru-

ary 19, 1963; (c) the date on which Peterson granted a

. license under the patent in suit ito Komline, July 12, 1965;

(d) the date on which this action was instituted, February

23, 1966; and (e) the date on which the trial of the action

was'concluded, May 17, 1967; neither plaintiff had ever in-

stalled any apparatus for commercial use embodying the

subject matter of the patent*in: suit. Defendant did not

meet its burden of showing bg clear and convincing evi-

dence that the apparatus of the Peterson patent is inopera-

tive. Plaintiffs produced for demonstration purposes at

- trial a small but commercial rotary vacuum belt filter ac-

- cording to the Peterson patent. The guide rollers of the

filter were movable to various locations in the path of

travel of the filter belt. In the position substantially as:

shown in Figure 6 of the drawings, the apparatus was |

operative. Defendant’s expert witness testified. that the

unit was operative with a filter medium of the type having

coil springs within envelopes at the edges of the medium.

These envelopes are beads within the scope of the Peterson

patent.

The Infringement Issue .

25. Defendant . Kimco manufactures and sells, inter

alia, rotary vacuum belt filters which are utilized by de-

fendant’s customers in the separation of solids from the ~

liquid phase of slurries. Defendant sells to customers in

the sanitary field and in the industrial field.

26. The filter medium or belt which is utilized on Kimeco

filter apparatus is maintained in alignment with the filter

OS A RR TN Rem gE ga

\ s

A30

Findings of Fact and Conclusions of Law

drum by means of beaded belt edges that cooperate with

pairs of guide rollers having resiltent springs attached to

- them to effect alignment of the filter belt on the drum.

27. Defendant manufactures and sells rotary vacuum.

belt filters in which guide rollers having springs attached

to them as claimed in claims 1. and 2 of the Peterson patent

are positioned at various locations along the path of travel

of the filter belt. In-some machines two opposed pairs of

guide rollers are positioned at one location; in other

machines two pairs of guide rollers are at one location and

two other pairs at another location of the filter belt. -

28. In a typical accused apparatus of defendant com-

prising a filter drm and, in order of travel of the filter

belt from the drum, a discharge’ roll, an idler roll, a return

roll, and then the drum, again, defendant has located its

pairs of guide rollers having springs attached thereto to

eenter and track the filter belt -in all positions except be-

tween the return roll and. the filter drum. Due to the

structure of the apparatus, access to guide rollers mounted

other than between the filter drum and the discharge roll is

difficult because of interference by the frame of the ap-

paratus and installation of auxiliary equipment. However,

a letter sent by a regional sales manager of defendant

states that it became standard with Eimco to place its guide

rollers, referred to as Edgetrack rollers, between the idler

roll and the return roll.

29. The Kimco Edgetrack aligning devices have been

located on its filters in every instance in a position at an

“~e.

A31

Findings of Fact and Conclusions of Law

otherwise unsupported span of*the filter web. In no in-

stance has EKimco’s aligning device been mounted laterally

adjacent the end of the return roll or any other roll. In

most instances on the .defendant’s three-roll system, de-

fendant ’s aligning device is located between the filter drum

and the discharge roller. In a few instances the defend-

ant’s aligning device has been located between the return -

roller and the next preceding roller’in its three-roll system.

In all instances in defendant’s two-roll system, defendant’s

aligning device.has been located between the filter drum

and the discharge roller. In all instances in defendant’s

five-rolI system, defendant’s aligning device has been

located between the filter drum’ and the discharge roller.

Defendant’s guide rollers do not contact the filter belt when

the belt is in contact with a roll, such as the discharge

roll or return roll. |

30. The claims of the Peterson patent locate the guide :

rollers adjacent the ends of the return roll. Defendant’s

guide rollers have been located as close as nine’ inches

from the return roll and adjacent the ends thereof; but not

. laterally adjacent to such ends.

The File Wrapper of the Peterson Patent

31. According to standard dictionaries, the word ‘‘ad-

jacent’’ can mean either in the general vicinity of or in

' direct contact with. Adjacent is a broad term, and de-

fendant’s aceused apparatus with guide rollers located be-

tween the return rol] and the next roll iv the path of travel

of the filter belt (usually the idler roll) are adjacent the

A382

Findings of Fact and Conclusions of Law

ends of the return roll unless there is a teaching to the

contrary in the patent so as to limit the definition of ad-

- jacent, or unless its meaning is restricted by the doctrine

. of file wrapper estoppel. —

39. There is no teaching in the patent in suit that limits

the meaning of the word adjacent as used in the phrase

‘adjacent each end of the return roller’’ in claim 1toa

position laterally adjacent the ends rather than adjacent

the ends in the path of travel of the belt. There is nothing

in the disclosure of the’ patent that restricts the guide |

rollers to such a laterally adjacent position.

33. The application that resulted in the patent in suit

was filed March 7, 1960 in the U. 8. Patent Office with 17

claims. These claims were later cancelled and the two

claims that are presently in the patent in suit were added.

34. The phrase ‘‘adjacent each end of the return roller’’

first appeared in the claims in claim 18, which became

claim 1 of the patent in suit. Claim 18 was added to the ap-

plication by an amendment received in the U. S. Patent

Office on April 23, 1962 and designated as Amendment B.

Amendment B was filed in response to Paper No. 9, which

was an official action of the U. S. Patent Office mailed Octo-

ber 25, 1961.

35. The phrase ‘adjacent each end of the return roller”’

was added in response to a rejection of the former claims as

being ‘‘indefinite and somewhat misdescriptive.’? This

rejection was made in the official action designated Paper

A33

Findings of Fact and Conclusions of Law

No. 5. In that official action the Examiner objected to the

phrase ‘‘medium. engaging means being centered in rela-

tion to said filter drum,’’ which was present in claim 1, lies

10 and 11. The Kxaminer stated that this was contrary to

the disclosure of the application ‘¢* ® * wherein the medium

engaging means are shown adjacent the outer edges of the

drum rather than the center thereof.”’ .

36. From the testimony of Burns, plaintiffs’ expert,

-and an examination of the file wrapper of the Peterson

patent, I find that the Examiner meant by this rejection ,

that the guide rollers could not be in line with the center

of the filter drum because in the drawings and the specifica-

tion the guide rollers were disclosed as near the outer edges

- of the drum and that sucha position is necessary in order

for the guide rollers to contact the beads on the outer edges

of the belt. In Paper No. 5 the Examiner that said the

rollers, that were shown ‘‘adjacent’’ the outer edges of the

drum. The applicant responded to this rejection by lo-

eating the rollers adjacent the ends of the return roll,

which, with respect to the filter belt is the same location

as the outer edges of the drum.

_ *37. In Paper No. 5 the Examiner also rejected claims 1

to 12 as unpatentable over U. 8S. Patent No. 2,880,875 to

Alston in view of British Patent No. 812, 197 or vice, versa, -

and claims 14 to 16 as fully met by the British patent. The

phrase ‘‘adjacent each end of the return roller’’ was not

placed in claim 18 (claim 1 of the patent) to meet this basis

of rejection and thus was not inserted in order to avoid -

eae

“A834

Findings of Fact and Conclusions of Law

a rejection on the prior art. There is no mdication that in

this rejection on the prior art the Examiner required claim

language that the guide rollers be mounted laterally ad-

sted with being

jacent the ends of the return roller

mounted longitudinally adjacent the ends of the return

roller.

38. The Examiner did not, in the rejection over a com-

bination of the Alston and British patents, require that the

guide rollers be claimed with respect to the return roll so as

to distinguish this prior art. In the British patent, the

guide rollers 3 contact the belt and the bead while the belt is

in contact with the rollers 2. The Alston patent shows no —

guide rollers in contact with a belt bead. Consequently,

locating the guide roller adjacent each end of the return

roller would not have obtained allowance of any claim be-

cause it did not distinguish the relative locations of the

rollers 2 and 3 of the British patent.

39, In making his rejection on the prior art in Paper

No. 5, the Examiner also said that the ‘** * * means for

stretching the edges of the belt of Alston is substantially

similar to the species of Figs. 3, 4 and 6 of applicant’s.

* * *»> Since the Examiner had stated that the prior art

was similar to species of these figures, and in Figures 4 and

6 the guide rollers are shown laterally adjacent each end

of the return roll, the phrase in question was not added to

issued claim 1 to avoid the Examiner’s rejection on the

prior art, because, in view of the Examiner’s statements,

such addition would haye been fruitless. This is borne out

-A35

- Findings of Fact and Conclusions of Law.

by the fact that in the Remarks accompanying Amendment

B, Peterson did not argue that the relative locations -of

the guide rollers and return roll avoided the prior art.

40. In claim 1 of the patent the word ‘‘adjacent’’ is

also used to define the relative locations of the return roll

and the filter drum. Clearly the return roll and the filter

drum in the Peterson apparatus are not in eontact with

each other and, are longitudinally adjacent in the path of

travel of the filter belt. The word ‘‘adjacent’’ in the

phrase ‘‘adjacent each end of the return roller’? can also

mean longitudinally adjacent in the path of travel of the

filter belt.

The Doctrine of Equivalence

41. While defendant’s apparatus with guide rollers

at locations other than that between the return roll and the

preceding idler roll do not meet the literal terms of the

claims, in that they were not mounted adjacent the ends

of the return roller, the guide rollers at other locations in

the path of travel of the belt perform substantially the

same function as guide rollers mounted between the return

roll and the idler roll. That function is to correct mis-. |

tracking of the filter belt, to track the belt back to the filter

‘ drum and center it with respect thereto, and to stretch the

belt between opposed pairs of guide rollers.

42. In all positions between rolls or the drum and in

the path of travel of the belt, the guide rollers perform their

function in substantially the same way as guide rollers

A36 °

Findings of Fact and Conclusions of Law

mounted between the return roll and idler roll. The mode

of operation is the same, i.e., to laterally displace the filter

~ belt to one side so that the belt will track by planar

motion on to the following roll in the path of travel of the

belt. When the guide rollers contact the filter belt while

the belt is in contact with the return roll or any roll other

than the filter drum, the rollers still act to yiove the belt

laterally by slippage and the belt then tracks by planar

motion on the next roll in its path of movement. Sinee the

primary object of the invention and the accused device is

the centering of the stretched filter medium on the drum,

the court regards the precise location of the guide rollers

with reference to the rollers as incidental; and particularly

with reference to the centering of the filter medium on the

filter drum the devices operate in substantially the same

way and perform substantially the same function to ac-

complish substantially the same result. Moreover, it is

found that any difference in location of the guide rollers

between the patented device and the atcused device would |

be an equivalent variation whith would be obvious to one

“possessing ordinary skill in the art. ‘In all positions be-

tween rolls or the drum and in the path of travel of the

belt, the guide: rollers accomplish substantially the same

result. In all such positions the guide rollers stretch the

filter medium between opposed pairs of guide rollers, cor-

rect mistracking of the filter belt and track the belt back

to the filter drum, centering it with respect to the drum.

— 438. In U. 8. Application Ser. No. 315,658, filed October

11, 1963 in the name of Steven ’S. Davis, an employee of

A37

Findings of Fact and Conclusions of Law

defendant, which application was. stated by defendant ‘to

constitute a written description of the accused apparatus,

the applicant indicated that the guide rollers may be

placed in any position between rolls, or between the filter

drum and a roll, and makes no distinction as to the opera-

tion or effectiveness of the guide rollers in suck positions.

44, At Monsanto Company’s John J. Quecny plant, |

St. Louis, Missouri, two of defendant’s three-roil filters

performing substantially the same operation were installed,

one with pairs of guide rollers located between the filter

drum and discharge roll, the other with pairs ‘of guide

rollers between the idler roll and réfurn roll. Defendant’s

expert also testified that the basic action at various loca- —

tions between rolls is the same.

45. By use-of the word “stretch”? in the claims and

disclosure, the Peterson patent refers to a tensioning of the

belt between opposed pairs of guide rollers.. The belt, it-

self, need not be pulled out of shape, since this would do

harm to the belt. Tensioning of the belt to. remove wrinkies

therein is one of the advantageous functions df the’ guide

rollers. Defendant’s device is designed to tension and

stretch its filter belts. .

Recent Chan'ges in. Defendant’s Apparatus

46. In reeent instances in EKimco’s Edgetrack device,

the guide rollers have been separated by a positive stop bar

to provide spacing equal to the thickness of the edging of

the web plus 1/64 inch and are designed to pull free ofthe

beaded edge of the belt when forces in excess of twelve

see ton yr er saRTS:

AS AER

A38

Findings of Fact and Conclusions of Law

pounds are applied thereto. Such variation still meets the

terms of the claims because the rollers are ‘‘in substantial

contacting relation.’? Spacing the upper roller 1/64 inch

above the upper surface of the belt makes no substantial -

difference in the essential function of the guide rollers ex-

cept by way of extent or degree.

47. On recent occasions defendant has modified its ap-

-—paratus in use so that one pair of guide rollers is set in-

wardly of its bead by about *4 inch. In connection with |

such use for about the first two days all.guide rollers are

‘ in contact with their respective beads and not set inwardly.

Both the Davis application and defendant’s instruction

booklets, which were said by defendant to be writings dis-

closing the accused apparatus, describe apparatus with

both pairs of guide rollers in contact with the beads of the

belt. However, even if one pair is set inwardly about

34 inch, conventional belt bias, if uncorrected, may result in

a diminution of effective belt width to bring the inset pair

of rollers into contact with their bead. Substantially the

same amount of tension would then be applied by both op-

‘posed pairs of guide rollers to their beads and the belt.

_ 48. No matter how defendant adjusts its guide rollers,

the rollers can easily be adjusted by defendant’s custom-

ers-to bririg them into contact with the bead and the de-

fendant’s apparatus in fact is designed, manufactured and

-arranged to readily permit and encourage the lateral ten-

sioning of the filter medium by the operation of two pairs

of rollers as taught by plaintiffs’ invention. Defendant’s

A39

Findings of Fact and Conclusions of Law

operating instructions teach sych bead-contacting adjust-

ment to the customer and are left’ with. the customer.

Adjustment wherein both opposed pairs of guide rollers

are in contact with the beads at each side of the belt is

advantageous ,in that it provides dewrinkling tension on

tlie belt not present when one pair of rollers is out of

contact with its bead. It also provides that a belt mis-

tracking toward either side or irregularly will be auto-

matically urged toward a position in which mistracking

is corrected and the belt centered with respect to the filter

drum, although there may be certain other disadvantages

as compared with a single pair of guide rollers operating

on one side only of the filter medium, sugh as decreased

wear or strain on the filter medium. The plaintiffs’ patent

in’ suit does not read on a single pair of guide rollers

designed to operate on one side or the other of the filter

medium and not to tension the belt laterally away from

another pair of guide rollers on the opposite side of the

filter medium. |

The Patent Misuse Issue

49. The assertion that plaintiffs have misused the —

patent in suit and must be,denied relief until such misuse

has been purged is based on a clause in paragraph V of

the License Agreement between. plaintiffs dated July 12,

1965. This clause gives licensee (Komline) ‘‘the right for

a period of one (1) year from the date of the agreement

to institute or bring any suit or suits for infringement

against a third party whose infringing activities extend

into other than the ‘municipal sewerage treatment field.’

a i |

A40

Findings of Fact and Conclusions of Law

In such event, the Licensee shall assume all the costs and

shall be entitled to the full amount of any recovery.’’.

50. Rotary vacuum belt filters are used in the sanitary

~ field (municipal. sewage) and industrial field (all other

applications). In the sanitary field, and specifically with

respect to dewatering of sewage sludges, plaintiff Kom-

line manufactures and. sells approximately two out of”

three filters, due primarily to sales of its coil spring filters.

With respect to all equipment for use in the sanitary field,

* Komline manufactures and sells between two and three ~

pereent and is a relatively insignificant factor. In both

tlie sanitary and industrial fields, defendant Kimco has

manufactured and sold about 60 percent of the rotary vac-

uum belt filters now in use where those filters employ cloth

belts suitable: for use as part of the apparatus of the

Peterson patent. |

51. In or around April 1964, Komline became aware

of the fact that-in the industrial field (as distinguished —

_ from the municipal sewerage treatment field), Komline’s

Flexibelt filter might not compete successfully with Eimco’s

cloth belt filter equipped with Eimco’s Edgetrack align-

ing device. At about the same time Komline’s patent

counsel informed Komline of the existence of the Peterson

_patent and ‘‘in the,spring of 1964, probably in March’’

1964 T. R. Komline had one or more conversations with

Mr. C. Lynn Peterson relative to the acquisition by Kom-

line-Sanderson of rights to or under the: Peterson patent

in suit. Thereafter, on August 27, 1964, Komline’s pat-.

ent counsel rendered to Komline a report entitled ‘‘Peter-

son Patent Evaluation’? and, pursuant to this report,

A41

Findings of Fact and Conclusions of Law

Mr. Komline again spoke ‘to Mr. Peterson with reference

to the Peterson patent. These talks culminated in the

April 28, 1965, letter agreement. Pursuant to this agree-

ment Komline would have ecquired title to the Peterson.

patent subject to an exclusive license to Peterson in the |

Industrial field. Thereafter the agreement was renego-

_tiated and resulted in the license agreement dated July

12, 1965. This agreement provided (1) that Komline was

to have an exclusive license in. the municipal sewerage

treatment field, (2) that Komline would have no right to

use the Peterson device in fields and industries other than

the field of municipal sewerage treatment, and (3) that

Komline could bring suit, at Komline’s expense, against

infringers in the municipal sewerage treatment field, and

for a period of one year from the date of the agreement,

against infringers whose activities extend into fields other

than the municipal sewerage field, i.e., into the Industrial

field, as aforesaid. The activities of Eimco were a sub-

ject of discussion at the negotiation meetings between the

two companies’ representatives and that the provision

extending to Komline the right within one year from the

date of the agreement to institute a suit ‘or suits for in-

fringements of the Peterson patent against a third party

whose activities extend into other than the municipal

sewerage treatment field was inserted at Komline’s request

and for payment by Komline to Peterson of a considera-

tion in an amount.of $5,000 in excess of the consideration

theretofore agreed upon. Komline did not have nor did

it acquire monopoly power in the manufacture and sale ./

- of rotary vacuum cloth belt filters, which is the field in

which the Peterson apparatus has found use.

- A42

Findings of Fact and Conclusions of Law .

52. Neither of plaintiffs utilized the provision of para-

graph V of the Peterson-Komline License Agreement

quoted hereinbefore. There is no showing that the agree-

ment had any influence or effect ‘on competition’ and the

evidence demonstrates particularly that it had no influ-

enee on the defendant. Petersen joined Komline as a

party plaintiff im this action. Eimco manufactures and

sells the accused apparatus for use in the sanitary as well

as the industrial- field. The one-year term of the right

expired on July 12, 1966.

53. The defendant has failed to prove by a preponder-

‘ance of the evidence that the plaintiffs’ patent has been

misused or that on equitable or legal grounds plaintiffs

should be barred from asserting the patent as against

‘the defendant. — as

Damages

54. The Peterson patent in suit issued on February

19, 1963. Defendant became aware of the patent shortly ~

after it issued and defendant’s counsel received a copy

of the Peterson patent sometime in March, 1963. The

first accused Edgetrack apparatus sold -by defendant was

sold on July 25, 1963 to American Cyanamid Company,

Michigan City, Indiana, and installed on a later date. At

the time of sale, defendant had been in possession of a

copy of the Peterson patent for at least four months.

55. Defendant’s first sale of an accused apparatus and

subsequent sales were made with full knowledge of the

Peterson patent but under the contention that the patent

A43

Findings of Fact and Conclusions of Law

was invalid or was of such limited application as not to

be infringed by defendant’s devices.

From the foregoing Findings of Fact, the court now

draws the following: j

ConcLusions or Law

1. The-court has jurisdiction over the parties and the

subject matter of this civil action under 28 United States

Code §1338, and venue is properly laid in the District of:

Utah under 28 United States Code §1400(b).

| 2. The Peterson patent is presumed to be valid-and

defendant has the burden of establishing its asserted in-

validity by clear and convincing evidenge.

3. Defendant has not sustained its burden of proof

and the Peterson-patent is adjudged valid.

4. The accused Edgetrack apparatus: manufactured and

sold by defendant infringes the Peterson patent regard- .

less of the location of the opposed pairs of guide rollers

of the apparatus :in the path of travel in the filter belt.

All such locations are equivalent because the -two pairs

of guide rollers so located perform substantially the same

function in substantially the same way and achieve sub-

stantially the same result.

5. There is no file wrapper estoppel which precludes

applying thesdoctrine of equivalence to the claims of the |

Peterson patent and particularly the term ‘‘adjacent the

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A44

Findings of Fact and Conclusions of Law

ends of the return roller’’ because this phrase was inserted

to meet a rejection that the claims were indefinite and

somewhat misdescriptive, not a ecesiaaes as unpatentable

over the prior art.

6. Defendant infringes the Peterson patent by -manu-

facturing: and selling rotary vacuum belt filters employ-

ing two pairs of guide rollers, one located on either side

of the filter belt, designed and easily adjustable for simul-

taneous contact with belt beads on both sides of the filter

medium. :

7. The License Agreement between plaintiffs, together

with the position of plaintiffs and defendant in this field

and the acts of plaintiffs subsequent to execution. of the

License Agreement, do not constitute misuse of the Peter-

son patent.

8. Judgment will be entered in favor of plaintiffs and

against defendant, and defendant permanently enjoined

against | continued infringement of U. S. Patent No.

3,077,990. Damages are awarded to plaintiffs. and an

_accounfing is ordered to determine the total amount of

actual damages. Costs are awarded. to plaintiffs, such

costs to be. taxed by the: Clerk. Plaintiffs within 15 days

are directed to serve and lodge with the Court a proposed

form of decree in harmony with these conclusions to be

settled upon notice. |

Dated this 14th day of August, 1967.

/s/ A. SHERMAN CHRISTENSEN

United States District Judge

A45

Judgment of the Court of Appeals for the Tenth Circuit

This cause came on to be heard on the transcript of

the record from the United States District Court for the

Distr ict of Utah and was argued by counsel.

On consideration whereof, it is ordered and adjudged -

by this court that the judgment of the’said district court

in this cause be and the same is hereby affirmed.

Wiuiam L. Wurrraxer, Clerk

. By Gladys E. Hobbs

Deputy Clerk.

PES CCEA SION WR Bite Sess:

A46

Judgment of the District Court

The above-entitled action having come on to be heard

before the court upon open trial, and witnesses having been

heard, evidence having been presented, briefs having been

filed in behalf of the respective parties and the cause hav--

ing been fully tried before the court, and the court having

entered Findings of Fact and Conclusions of Law filed in

the United States District Court for the District of Utah,

' Central Division, on August 14, 1967, it is now

ORDERED, ADJUDGED AND DecreeD as follows:

1. Plaintiff, Peterson Filters and Engineering Com-

pany, is the owner of United States Letters Patent No.

3,077,990, issued to it on February 19, 1963, in the name.

of John G. Peterson and entitled ‘‘Filter Medium Guide.”’

2. Plaintiff, Komline-Sanderson Engineering Corpora-

tion, is now and since July 12, 1965 has been exclusive li-

censee under United.States Letters Patent No. 3,077,990

in the sanitary field, also defined as the municipal sewer-

age treatment field. |

_ 8. Defendant, The Eimco Corporation, has infringed

claims 1 and 2 of said United States Letters Patent No.

3,077,990 by its manufacture and sale of rotary drum

vacuum belt filters employing tracking and tensioning ap-

- paratus comprising two pairs of guide rollers, one pair

located on either side of and in the path of travel of the

filter belt, where said pairs of guide rollers were each

designed and easily adjustable for resilient, simultaneous

contact with beads on both sides of the belt.

4. Defendant, The Kimco Corporation, and its officers,

agents, servants, employees and attorneys, and all persons

A47_

Judgment of the District Court

‘in active concert or participation with it who receive ac-

tual notice of. this Judgment and Deerce, are, during the

remaining term of United States Letters Patent: No.

3,077,990, hereby permanently enjoined and restrained —

from making, using or selling, within the United States,

its territories or possessions, rotary drum vacuum belt

filters employing tracking and tensioning apparatus com-

prising two pairs of guide rollers, one pair located on

cither side of and in the path of travel of the filter belt,

where said pairs of guide rollers are cach designed and ..

easily adjustable for resilient, simultancous contact with

beads on both sides of the belt, or otherwise infringing

claims 1 and 2 of said United States Letters Patent No.

3,07, 990.

5. Plaintiffs are entitled to recover damages together

with interest thereon as may be fixed by the court pur-

suant to USC Title 35, Section 284, and an accounting is

ordered to determine the total amount of actual damages.

6. Plaintiffs are awarded singe in this action, such

costs to be taxed by the Clerk of the Court.

A. SHERMAN CHRISTENSEN

United States District Judge

Dated: Salt Lake City, Utah

Oct. 3, 1967

Approved as to form:

_ Walter D. Ames

Of Counsel for Plaintiffs

Mark N. Donohue

Of Counsel for Defendant

Feb. 19, 1963

Filed March 7, 1960

A48

Plaintiffs’ Ex. 1, R. 65S

J. G. PETERSON 3,077,990

FILTER MEDIUM GUIDE

2 Sheets-Sheet 1

INVENTOR.

John G. Peterson

: : Qe- 3 “a y

: D7 Sim %y Larerd

ATTORNEYS

g/t PETRY ER BENNY at ome

. . .

Feb. 19, 1963 J. G. PETERSON 3,077,990 ,

. FILTER MEDIUM GUIDE :

Filed March 7, 1960 : 2 Sheets—Sheet 2

INVENTOR. —

83 John G. Peterson

Q : BY

F-ig.-7 B77 Bre Elvrerke E:

é ATTORNEYS

United States Patent Office

ADD

Patented Feb. 19, 1963

‘ - 3,077,990

FILTER MEDIUM GUIDE

John G. Peterson, Salt Lake City, Utah, assignor to

Peterson Filters and Engineering.Company, Salt Lake

of Utah

Filed Mar. 7, 1960, Ser. No. 13,129

: 2 Claims. (CL. 210—401)

This invention relates to improvements in continuous

filtering apparatus, and more particularly to improve-

ments in rotary drum apparatus, especially drum filters

having a cake discharge and filter medium cleaning sec-

tion removed from the surface of the drum.

Rotary drum filters using a filter medium formed in

an endless band or strip having a length substantially in

excess of the circumferen of the drum for passing

through a cake discharge section spaced from the drum

is well known. ‘With such filtering apparatus, however,

substantial difficulty has been experienced in maintaining™

the endless filter medium strip centered on the drum and

as it passes through the discharge section. Since.’ vacuum

filter has a drum having a perforatedssurface which must

be covered by the filter medium to maintain suction in

the drum for drawing filtrate through the-filter medium,

the filter medium must be correctly tracked so as to cover

‘the drum surface during filtering opeyations. In such de-

vices, the filter medium on leaving the drum is looped

around and through a series of rollers for discharge of

carried cake and eventually back onto the drum surface.

. As the filter medium returns to the drum surface, how-

ever, there is a definite tendency for the endless strip to

run off the drum.

It is therefore an important object of the invention to

provide a novel filter mediug: and mechanism for main-

taining an endless filter medium centered on a rotary drum

and through a discharge scction spaced from the drum

surface. The invention provides centering of the me-

dium, eliminates wrinkling of the material of the filtering

medium either on the drum or in the discharge section,

and provides positive tracking for the medium onto the

drum without training rods. - The mechanism of the in-

vention laterally’ stretches the filter medium, retarding

blinding of its Openings and provides for more complete

cleaning of the filter medium prior to its return to the

filter drum for additional filtering action.

These and other objects and advantages of the invention

may be readily ascertained by referring to the fgllow-

ing description and appended drawings in which:

FIG. 1 is a partial schematic view of a drum filter

‘with a spaced apart cake discharger for an endless filter

medium;

FIG. 2 is a detailed section of part of one embodiment

of the invention, illustrating a filter medium tensioning

and holding mechanism according to the invention;

FIG. 3 is a schematic view of a modificd spring-loaded

filter medium holding mechanism, for tracking and center-

_ ing a filter medium on a drum and providing lateral ten-

‘ sion on the medium;

FIG. 4 is a‘partial detailed view of a modified spring-

loaded mechanism for tracking and centering a filter

medium;

FIG. 5 is a schematic illustration of a gravity weighted

filter medium centering and tensioning mechanism ac-

cording to the invention;

FIG. 6 is a partial detailed view of another. spring

loaded filter medium céntering and tensioning. mecha-

nism; and

FIG. 7 is a schematic view Of a filter medium clean-

ing spray mechanism according to the invention.

in general, the cake discharger of the present invention

is applicable to a rotary vacuum drum filter, rotary pres-

sure drum filters, and other similar mechanisms utilizing

é.

+ spray system 11.

an endless filter medium or cake’supporting material of

a length substantially greater than the circumference of

the drum and a cake discharge mechanism spaced from

te drum ‘surface, as for example, rotary drum filters

shown in Wilson, U.S: Patent No. 2,812,065 and Sieben-

thal, U.S. Patent No. 2,812,064. In the particular type

of filter mechanism, a vacuum drum filter Having a per- _

forate\ cylindrical surface is partially immersed in a fluid

to be filtered which is contained in a tank. The endless

filter medium covers the mesh surface of the drum dur-

ing its immersion in the fluid (slurry) and a part of the

drum surface above the slurry to provide washing and/or

air drying of the cake on the medium. The filter medium

is then directed away from the surface of the drum

through a series of loops wherein the cake is discharged,

the medium is washed and then returned to the drum

for subsequent filtering operation.

In the schematic illustration of FIG. 1, a drum 1 ( par-

tially shown) is mounted for rotation in a tank 2 for

operation as a drum filter according to conventional prac-

tices. The Wilson and Siebenthal patents (referred to

above) illustrate one mounting construction and means

for operating such a drum filter. An endless filter me-

dium 3 is looped around the drum 1 so that it covers the

drum through a major part of an arc of revolution. The

medium is withdrawn fro mthe drum at an upper poim

and it is returned to the drum at a point such as A im-

_mediately prior to its contact with a body of slurry 5.

The filter medium completely covers the drum deck dur-

ing the filtering portion of each cycle. In the cake dis-

charge and cake washing section, the filter medium 3 passes

over a discharge roller 7 where the filter cake is re-

moved from the medium, either by the. reverse bending

of the medium or a sluicing fluid, which may be air or

water, blown through the medium to remove the cake.

The medium is then looped over a roller 8 leading an

elongated, free loop 9 over a roller 10 and then past a

The filter medium passes through a

tracking, centering and tensioning mechanism shown gen-

erally by numeral 12 and returged to the filter drum.

The centering and tensioning mechanism is explained in

detail in detail below. The elongated loop 9 is normally

filled with water, forming is called a water loop, shown

and explained in detail in the Wilson and Siebenthal pat-

ents. The water loop maintains longitudigal tension on

the filter medium by virtue of the weight of the water in |

» the loop. The water in the loop may be either contained

in an elongated tube or a free pool so that it washes the

filter medium.

The filter medium which may be used with the dévice

of the invention is an elongated strip of.such material as

woven nylon, felt, metallic cloth, scfeening, nylon taf-

feta of appropriate mesh, and similar types of filter me-

dium known in the industry. The strip of filter me-

dium is slightly wider than the width of the drum and is

substantially longer than the circumference of the filter

drum. Its ends are secured together forming an endless

filtey medium. The ends of the medium may be releas-

ably secured together by means of a hookless fastcner,

slide fasterier, lacing, or the like, as i¢ known in the art.

Both edges of the strip are folded back over an elongated

core and fastened to the body or-web of the strip leav-

ing an enlarged edge, bead, or hem completely along each

edge. A portion of such an edge is illustrated in FIG. 2

wherein the edge 15 of the material is turned back on

itself around 4 cord 16. The edge of the material may

be sewn to the body, or otherwise fastened to form a

pocket around the cord 16. In place of the cord 16 a

cable, which may be made of metal, fiber, plastic, rubber,

or an endless helical spring may be used as the core for.

the hemmed edge. It is to be understood that both edges

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of the strip are so treated so as \o provide the thickened

edges on both sides of the medium.

In the embodiment illustrated in) FIG. 2, the return

idler “R,” that is, the roller adjaceit the vacuum drum

from which the filter medium returns to the drum from

the cake discharge section, is mounted yn a shaft 20 which

js journaled in a pillow block or bearings 21 for rotation. -

A disc 22 is mounted on the shaft 20, and the disc”is

pressed internally of the tubular roller R, retained in place

by a weldment 23.

The filter medium 3 is maintained centered and laterally.

stretched by means of rollers 25 and 26 which are closely

juxtaposed with the thickened edges 15 therebetween.

Thus. the core 16 bears against the outer surfaces of the

rollers. Upper roller 25-is mounted on a shaft 28 which

is mounted in an upright end plate 29 and held by @

- nut 30. A spacer 31- holds the roller in position, and

a shaft stop 32 maintains the roller on the shaft 28. The

end plate 29 is mounted on a hollow shaft 35, through

which shaft 20 is journaled and is retained in position

thereon by means of a nut 36. Roller 26 is, also, mount-

ed and ‘rotates on the hollow shaft 35 being retained in

position by stop 39. A spacer 38 maintains positioning

of the roller. A connecting rod 4@ is threadedly attached

to the plate 29 and is operatively engaged with an ad-

justing Wheel 41 mounted in a stand 42 attached to the

filter structure. The adjusting wheel is threadedly en-

gaged with the connecting shaft 4@ and provides means

for adjustment of lateral tension on the filter medium~

as may bé desired. The rollers 25 and 26 are preferably

made of nylog, polytetrafluoroethylene plastic, rubber or

equivalent material which is essentially non-abrasive

toward the filter medium with no sharp corners.

The end plate 28 being mounted on a shaft requires

some means for holding it. One such means is shown

in FIG. 2, wherein a pin 33 guides in a stationary yoke

34. The pin 33 prevents rotation of the end plate, but

is reciprocable in the yoke for tension adjustment of the

filter medium. :

Adjustment by the hand wheel moves the rollers lat-

erally in relation to the drum (not shown in FIG. 2)

and provides centering and/or tracking means for the

filter medium as well as providing lateral tensioning on

the medium immediately prior to its return to the drum.

Thus stretch changes and variations in the medium during

operation are readily compensated, as well as filter me-

dium creep on the drum.

- In the modification illustrated schematically in FIG. 3,

a yoke 45 having upper and lower rollers 25 and 26

are mounted in a manner similar to that of FIG. 2 but,

instead of the connecting rod 4®, a helical spring 47 is

interconnected with each yoke 45. Thus each side of

the filter medium runs between the rollers with the core

16 held between the rollers so as to maintain the medium

under essentially uniform tension, and it is automatically

centered or tracked on the drum 1. For simplification of

the illustration, the return roller R and means for mount-

ing the yoke are not shown in FIG. 3, but shown in de-

tail in FIG. 4.

The spring-loaded yoke mechanism is illustrated in

detail in FIG. 4, wherein the roller 2§ is mounted on a

spacer $2 maintains the roller 25 in position and eng stop

on shaft so holds it on the shaft. Roller 26 is mounted

mounted on a hollow shaft 53 which is secured to the

plate $1 and maintained in position by spacer 54. The

shaft $3 is reciprocably mounted on the return roller shaft

20. The helical spring 47 is secured to an eye SS on

the plate $1 and to an eye 56 on the frame providing con-

tinuous and essentially uniform tension on the filter me-

dium under the influence of the springs 47.

A pin 57 riding in arms of a stationary yoke 58 pre-

vents rotation of the plate $1, in a manner similar to the

device of FIG. 2. The yoke provides reciprocal move-

ment of the plate $1 along shaft 20, but prevents rotation

thereof. ;

In the modification illustrated in FIG. 5, weights

operating over pulleys replace the helical spring on the

device of FIGS. 3 and 4, also providing Continuous ten-

sioning on the filter medium 3. In this case the rollers

25 and 26, mounted similarly to the roller mount of

FIG. 4, are mounted on a back plate $1 which in turn

is reciprocably mounted over return rolier shaft 20. A

cable or line 60 mounted over a pulley 61 is secured to

the eye 55 at one end and to a weight 62 at the other

60 provide lateral tension and tracking for the filter

medium 3. The weights, of course, may, be varied to

provide proper tensioning under various conditions of

operation. : ae

In the modification illustrated in FIG. 6, a return

roller 65 is made substantially wider than the filter drum

I, and is mounted on a shaft 66 journaled for rotation

in a pillow block or bearing set 67. The return roller

65 is mounted in a position adjacent the drum, similar

to the return roller R, FMS. 1, and a single filter medium

tensioning and restraining roller 68 is mounted’ adjacent

each end of the return roller 65, in position to bear

against and retain the filter medium edge 16 therebe-

tween. Correct positioning maintains the edge core 16

on the outer side of the roller 68. The roller 68 is

mounted on a shaft 69, which is shouldered at 7@ to re-

tain the roller 68 in position, and-the large portion 71

of the shaft is reciprocably mounted in a stationary

mount 72 which is secured to the frame. An eye 73

is secured on the end of the shaft 72, and a spring 75

is attached thereto to provide tension on the filter

. medium 3. The spring 75 is anchored in an eye 76

ct)

secured to the filter frame.

In the modification of FIG. 6 the return roller 65

coacts with the tensioning roller for providing tension-

ing on the filter medium. This provides a simplified

construction for the centering and tensioning mechanism

for the filter medium 3.

Cleaning sprays may be provided for the filter medium

edge immediately prior to its entrance into the ceatering

end tensioning rollers, and in one form a hollow yoke

8@ is provided with upper and lower spray heads 81 and

82 mounted in position to spray the filter medium 3

passing therebetween. The hollow yoke is secured to a

fluid source 83 by conventional means. The spray heads

may be replaced with wiper blades where desired.

It is obvious that where desired the fiter medium

holding rollers or wheels may be journaled with bear-

ing sets on their respective shafts. Further, the rollers

or wheels may be made replaceable for varying condi-

tions of service or operation. :

In operation it has been found that the core or cord

in the hem of each edge creeps in respect to the filter

medium, probably due to the difference of effective diam-

eter around the drum and rollers which increases the

distance of travel in relation to the body of the filter

medium itself. It is, therefore, preferable to have each

hem or turned back edge loosely on the cord, and to

have the core or cord continuous around each edge with

minimum bulging af the core or cord joint. When a

cord is used for the core, a smooth splice without knots

or bulges permits the cord to flow through the hem, in

relation to the filter medium, during operation. Thus

with any core, whether cord, cable, helical spring, etc.,

the finished splice is preferably smooth and small so that

the core freely moves through the hem without catching

and bunching the filter medium. ; :

While the invention has been described by reference to

specific embodiments, there is no intent to limit the spirit

or scope of the invention to the, precise details so set

forth.

I claim: .

1. In a filter medium tracking and tensioning device

for a rotary drum filter having a separate cake discharge

°°

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section, an endless filter medium looped over the filter

drum and extending through the cake discharge section,

which filter medium includes a bead on each edge of the

filter medium extending completely therearound, and a

filter medium return roller mounted adjacent the filter

drum, the improvement which comprises means for track-

ing the filter medium back to said drum inclusive of a

pair of rollers mounted adjacent each end of the return

roller, each pair of rollers being mounted in substantial

contacting relation and mounted with the filter medium

therebetween and in position to bear against the bead at

the edge thereof, each said pairs of rollers being arranged

to move laterally in respect to the path of travel of the

filter medium, resilient means attached to said rollers

in position so that the rollers bear against the bead at

each side of the filter medium to stretch the filter medium

therebetween and to center it in relation to the return

roller and the filter drum, and means for supporting each

pair of said rollers in position on said filter medium and

“biased against the adjacent bead at the edge thereof.

2. A device according to claim 1 in which each said

pair of bead contacting rollers is spring biased laterally

away from the filter medium so as to provide essentially

uniform tensioning on the filter medium.

“References Cited in the file of this patent

UNITED STATES PATENTS

877,631 SON Sec ckccwenatnnke Jan. 28,

954,466 BOON cawetiinnacwes Apr. 12, 1910

2,330,923 MIME ciwencecsenneas Oct. 5, 1943

2,880,875 PE: Sessceakenwinees Apr. 7, 1959

2,909,273 Smith ---..----------- Oct. 20, 1959

FOREIGN PATENTS

812,197 GEM BIG: cncccncans Apr. 22, 1959

1908 _-

ped eh ace abe Mien LST iy doe dase le —e lle = (RTT ¥ ° smcblngs WX a

Defendan: s Ex. C, R. 780

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