Petition for Writ of Certiorari — Eclipse Fuel Engineering Co. v. Maxon Premix Burner Co.
Supreme Court brief1973
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IN THE
Supreme Court of the Anited States
Octoser Term, 1972.
No. 2-84] 4
ECLIPSE FUEL ENGINEERING CO.,
Petitioner,
vs.
MAXON PREMIX BURNER COMPANY, INC.,
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
Norman H. Geriacn,
105 West Adams Street,
Chicago, Illinois 60603,
Lovis Ropertson,
Darso, Ropertson & VANDENBURGH,
P. O. Box 676,
Arlington Heights, Mlinois 60006,
Attorneys for Eclipse Fuel Engineer-
ing Co., Petitioner.
THE GUNTHORP-WARREN PRINTING COMPANY, cHicago
Se? 5 EEE NERS BLA AEE IO LEAPED ID PALA es EEE # ie ay
SO I OLS AE IEE
eh Ue
SPATE BER ARIANA AT anna 1
3
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.
CONTENTS. :
a amas PAGE :
SE No GUeKawce rnd nensccecksbeusssesecaenbnneces 1 f
PE EE vekpackdiyakihesCennnceinwaceakkews 1 ;
iA ee be eden eany duende soumikesaes 2 E
i cith vdckencnhaeanemiene eines 2 ;
1. Whether judgment below should be summarily
reversed, or vacated for further consideration 2
2. Whether infringement holding can stand .... 3
a
RE Let perry
3. Whether determination against lachescanstand 4
4. Whether determination of noninfringement can
be upset as deminimus ...................... 5
5. Whether assertions of Maxon’s inequities can
EE olin ci cawiawenieesiavank ¥onxnae 6
6. Whether public interest neglected in avoiding
validity determination ...................... 6
7. Whether to encourage panels with only one
circuit judge by allowing below-standard de-
iid nidah @5-o-a wodin'd bbb acduh'e a eles 6
Statutes Here Involved ........................... 6
Statement of the Case ............ ccc ccccccccccces 8
Eclipse Relied on Maxon’s Acquiesence in Nonin-
oe eee ct ene ee ceed pw hidkeen 8
Similarities Not Legally Significant Could Mislead 9
Eclipses New Burners Were Basicly Different .. 10
Infringement Found by Accepting Afterthought
Broadening Which Eclipse Could Not Foresee 11
In Broadening, Courts Below Ignored Eclipses
Omission of Basic Idea ...................... 12
Maxon Has Escaped the Sec. 103 Requirement for
Unobviousness: Courts Below Applied Old Ad-
mission of Validity to Broadened Claims ...... 13
il
Court, Sua Sponte, Found Maxon’s Estoppel
Negated by ‘‘Sufficient Notice’’ to Eclipse, Con-
trary to District Court Finding .............. 15
Reasons for granting the writ .................... 17
1. Most outrageous abuse of patent system must
ie SE is 5 x oak eke ae hae eRe eee 17
2. Success would encourage patentees to be un-
reasonable, without limit .................. 21
3. Public Need: to consider law affecting broaden-
@ g Brprerrrerrrres Te tres ere 21
4. Public Need: to consider interaction between
claim broadening and questions of validity .. 23
5. File-wrapper estoppel must be available beyond
doctrine of equivalents ..............-...005. 23
6. Improper claim interpretations must be review-
SS oc tee ce wauea dae Rad bee eee 23
7. District court decisions settling rights must not
be upset as de minimus .................-.. 23
8. Defendants who rely on acquiesence cf patentee
as to noninfringement must be protected .... 23
9. Opportunity to indicate minimum standard for
decisions below; to encourage seeing errors on
petition for rehearing and to set standard of
frankness in patent cases ...............00065 24
NE ig i iccnvdevnweiusbasces vemeaesnaune 28
Addenda
I. Copy of Patent in Suit ..............--.6.. A-1
II. Selected District Court Findings .......... A-14
III. District Court’s Decision on Post-Trial
DD oven cadences sceaeseaneccenaensaa A-27
IV. Opinion of the Court of Appeals .......... A-39
V. Denial of Petition for Rehearing .......... A-53
VI. Maxon Letter of January 1966 and Notice
of Infringement of October 12, 1967 ........ A-54
iii
Foldouts—Chart: Date List with Showing of Acquies-
WD nest eee osnueiee bocaneneesd A-58
Chart: Illustrations of Various Burners,
with Explanations .............. A-59
CITATIONS.
Cases.
Aerosol Research Co. v. Scoville Mfg. Co., 334 F. 2d
CGl, O00 WH FER: BOOM... 0 sign on ce secciccie ces 25
Armstrong v. Motorola Inc., 374 F. 2d 764, 769 (1967)
cert. denied 389 U. S. [distinguished] ............ 23
Baker-Cammack Hosiery Mills v. Davis Co. (CA-4,
1950), 181 F. 2d 550, 563; 85 USPQ 94 .......... 26
Beckman Instruments Inc. v. Chemtronies, Inc. (CA-5,
1970), 439 F.. 2d 1369, 1374, 1378; cert den. 400 U. S.
DE vince eaeh ee aes s Chaka nena aee Rahs wtied 2
Business Forms Finishing Service, Inc. v. Carson
(CA-7, 1971), 452 F. 2d 70 ............. eee 13, 14, 27
Ellipse Corp. v. Ford Motor Co., 452 F. 2d 163, 168;
ee ee Ee oho e hein dc citonseeesassccns 26
Graham v. John Deere Co. (1966), 383 U. S. 1, 33; 148
NE, SE sn cas dace sesSiewenseceeienes 26
Keller v. Adams-Campbell Co., 264 U. S. 314, 317; 1924 22
Maxon v. Mid-Continent (155 USPQ 434, 449, here
PX 13A) [cited as respondent’s exhibit] ........ 10, 16
McClain v. Ortmayer (1891), 141 U. S. 419 .......... 2
Morpul, Inc. v. Glen Raven Knitting Mill, Inc (MD. N.
Car. 1965), 144 USPQ 460, 464, 466 .............. 26
Paper Converting Machine Co. v. F M C Corporation,
409 F. 2d 344, 354 (7th Cir.), cert. denied, 396 U. S.
877 (1969) [erroneous 7th Circuit rule] .......... , 26
iv
Power Curbers, Inc. v. E. D. Etnyee & Co. (CA-4,
1962), 298 F. 2d 484; 132 USPQ 158, 166 .......... 26
Precision Instrument Manufacturing Co. v. Automotive
Maintenance Machinery Co. (1945), 324 U. S. 806,
Be ho Co uainne ali b aes cna bea edarekbwa cress 24
Sanitary Refrigerator Company v. Winters (1929), 280
cis icc caw cue ae Ee Wee ee SPENT SESER ORK 2
Schriber-Schroth Company v. Cleveland Trust Com-
pany, 311 U. S. 211, 218 (1940) ..........--...... 2, 26
Singer Company v. Cramer, 92 U. S. 265, 276-285
I ks evenunidsnrentedwen sdnv acdsee aweneeteds 2
Smith v. Florence-Mayo Nuway Co. (CA-4, 1950), 182
et Brrr errr rrr eT rere 26
Statutes.
NN oo coc ad eas sas ecsdeiersenaesenwnnn’ 2
BED vv k ncn ctenceversvesseicssaneenecas 3
nn acs cay ase nen Nee sd chem be eee bea vee 6, 13
ME MEE 6 on ckdeebnasvice cee tussienteovesvesnsten 7
ESE co cogeceesdacei are hesenescaremacia 3, 7, 22
TE cc cccccvdebeet ones tneeUneese anya 3, 7, 22
ED . cnc haepinasvcabauvtcevtaunkaesenes wes 7
Rule.
Civil Rule 13 of the U. S. District Court for the
Northern District of Illinois .................... 19
RE PR AR SN IRENA Ns i EEN ENN Me AY 2s POR Hi HASTY Saya eae
IN THE
Supreme Court of the Gnited States
Octoser Term, 1972.
ECLIPSE FUEL ENGINEERING CO.,
Petitioner,
vs.
MAXON PREMIX BURNER COMPANY, INC.
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE SEVENTH CIRCUIT.
Petitioner prays that a writ of certiorari be issued to
review the judgment of the United States Court of Ap-
peals for the Seventh Circuit entered on September 18,
1972, or initially, to direct that Court to take further action
before possible further review by this Court.
OPINIONS BELOW.
The opinion of the Court of Appeals for the Seventh
Cireuit (Addendum IV herein) is reported at 175 USPQ
331, a correction in footnote 6, made upon denial of a peti-
tion for rehearing, not being shown in the advance sheet.
1. Now Maxon Corporation, but change of name not of record
herein.
2
Findings of Fact and Conclusions of Law of the District
Court (in part in Addendum II herein) are reported at 171
USPQ 138-165. The District Court did not file an opinion
at the time of judgment. An unpublished opinion deciding
post-trial motions, here involved, is addendum III, infra.
JURISDICTION.
The judgment of the Court of Appeals for the Seventh
Circuit was dated and entered on September 18, 1972. A
petition for rehearing was denied on November 1, 1972
(Addendum V). Jurisdiction of this Court is invoked
under Title 28 U. S. Code, Section 1254(1).
QUESTIONS PRESENTED.
1. Preliminary Question: Whether (in the expected
absence of adequate answers in the respondent’s opposing
brief to one or more controlling questions herein) the judg-
ment below should be reversed summarily, or at least
vacated for further consideration in view of:
A. Schriber-Schroth Company v. Cleveland Trust Com-
pany, 311 U. S. 211, 218 (1940). ‘[File-wrapper estoppel
can be applicable against broadening by construction. ]
B. Singer Company v. Cramer, 92 U. S. 265, 276-285
(1904) and Sanitary Refrigerator Company v. Winters
(1929), 280 U. S. 30, 35; McClain v. Ortmayer (1891), 141
U. 8. 419. [Words of claim must be given due effect; and
proper construction of claims is question of law freely
determined on review. ]
C. Beckman Instruments Inc. v. Chemtronics, Inc.
(CA-5, 1970), 439 F. 2d 1369, 1374, 1378; cert. den. 400
U. S. 956. [Prior art beyond that considered by Patent
Office and lack of frankness in Patent Office prosecution
overcome presumption of validity.]
ae , . a eiiialde meat any viet APA Ae PEM HOLE SE EE RM
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SR SSIS. pet i ke
D. The failure of the Court of Appeals to consider
whether the validity of a broadened claim can properly be
based on an admission of validity or waiver made with
respect to a narrower scope, especially when introducing
prior art to preclude the broad scope. é
SNS
E. The failure of the Court of Appeals to reconcile
(1) its sua sponte holding that because Eclipse had ‘‘suffi-
cient notice’’ there is no estoppel against Maxon, with ( 2)
meontested determination by District Court in Finding 25
that Eclipse might ‘‘fairly assume [that Maxon] acquiesced
in Eclipse’s contentions of noninfringement.”’
9. Whether the holding that Eclipse has infringed
Maxon’s Reissue Patent No. 25,626 can stand, More par-
ticularly, whether it can stand when:
A. Infringement is found by a broadening application
of the patent claims, which Maxon concedes Kclipse could
not foresee, and which Maxon itself did not think of until
Eclipse’s accused gas burners had been on the market for
about four years, thus escaping by three years the time
limit of 35 USC 251 for broadening by reissue, and escap-
ing the statutory safeguards for intervenors in 35 USC
252;
B. Neither court below has shown concern with whether
the adjudicated claims are being broadened beyond the
scope intended upon issuance of the patent in suit; and in
fact the claims are broadened by ignoring one express
limitation therein, nullifying another, and applying others
with a tortuous literalness in disregard of Eclipse’s non-
use of the basic idea they represented ;
(. The validity of the claims thus broadened was rested
by the District Court solely on an admission of validity in
prior litigation between the parties to this litigation, where
the admission was with respect to the as-issued scope;
Eclipse, in the present litigation, although deeming itself
estopped as to that scope, having introduced prior art to
preclude the very scope to which its prior admission is now
extended.
D. The Court of Appeals cast aside file-wrapper estop.
pel by citing a 7th Circuit decision holding (contrary to
case law of this Court and other Circuit Courts) that file
wrapper estoppel is not available except when the means of
recapturing that given up in the Patent Office is by the
doctrine of equivalents ;
E. Neither court below treated the question of whether,
if the claims can be construed so broadly, they are invalid
for lack of invention over the prior art and also becanse of
indefiniteness; and neither court identified an inventive
concept defined by the claim and used by Eclipse: and
F. The Court of Appeals treated as of ‘essentially
factual nature’’ the District Court's findings which were
inherently based on the legal question of claim interpre.
tation.
3. Whether the determination against laches and estop-
pel of Maron can stand. More particularly, whether it can
stand when:
A. Finding 25, accepted by Maxon, holds Eclipse ‘‘might
fairly assume’? that Maxon “‘acquiesced’’ as to nonin-
fringement ; but the Court of Appeals, sua sponte held that
Eclipse had “‘sufficient notice’’ to preclude estoppel ;
B. Without taking note of Finding 25, the Court of
Appeals reaches its contrary determination by relying,
without hearing from Eclipse on this point, on facts which
gave Eclipse no indication that Maxon was not acquiescing;
facts which are totally consistent with continued acquies-
cence throughout the initial 1963-1965 period of investment
of substantial sums by Eclipse in reliance on that acquies-
cence ;
C. Even as late as the first notice of infringement, given
in October of 1967, those Eclipse burners using outside or
“pon-airstream”’ air for combustion were not charged to
infringe (though later held to infringe) ; and
D. The Court of Appeals did not give approval to the
District Court’s acceptance of Maxon’s excuse for laches
that its management was not aware until 1966 that Eclipse
had changed from its ‘‘noninfringing’’ uniformly-sized
apertures in the forwardly diverging mixing plates of its
burners; and in fact recognized that excuse to be incon-
sistent with Maxon’s demand, promptly after winning
jodgment on that basis, to be free to charge infringement
by the same uniformly-sized apertures.
4. Whether the District Court's po«t-judgment ruling
(requested by Eclipse ‘‘to prevent the injunction order . . .
from being ambiguous’’) that a 1963 prototype burner with
uniformly-sized apertures did not infringe, can be properly
reversed [vacated] by the Court of Appeals as de minimus,’
when the reasons the District Court had given for its
raling included (a) mention that all adjudicated claims are
limited to nonuniformity of hole size; (b) mention that an
eficer of Maxon had conceded during trial that burners
vith uniformly-sized apertures in the mixing plate walls
would not infringe; and (c) the following statement :
“Plaintiff cannot seck to excuse its laches by arguing
that it did not know that there had been a change from
the non-infringing uniform apertures to the infringing
non-uniform apertures, and then urge that the uniform
- wy Yama be excluded from the coverage of
Although the sentence just quoted was part of the Dis-
trict Court’s reasoning for its post-trial ruling of non-
infringement by Eclipse burners with uniform apertures, it
appears to constitute also a determination of a bar to
6
Maxon’s asserting the stated infringement, a bar which the
Court of Appeals recognized could exist and did not re.
verse. Accordingly, a subsidiary question is whether this
is 80.
5. Whether, when Eclipse points to numerous matters in
the record as constituting reasons for an award of attorney
fees, or at least for finding Maxon lacking in equity, judg-
ment for Maxon can be upheld without disposing of these
matters; examples of these matters being found hereafter
under item 1 of Reasons for Granting the Writ.
6. Whether the Court of Appeals gave too little weight
to the public interest when refusing to remand for deter.
mining validity of the broadened claims, especially when,
even aside from broadening: (a) no prior decision had
held the particular claims involved in this litigation valid;
(b) the presumption of validity had been overcome by
important prior art not before the Patent Office, and (c) a
newly enunciated doctrine would release Eclipse from all
estoppel.
7. Whether panels including only one judge of the Court
of Appeals should be encouraged by allowing to stand a
decision (of such a panel) as far below the usual high
standards of the Seventh Circuit as is apparent from the
foregoing, especially where the public interest against unde-
served patent monopoly is being defeated.
7
subject matter pertains. Patentability shall not be
negatived by the manner in which the invention was
made.”’
% USC 112, 2nd paragraph, ist sentence :
**The specification shall conclude with one or more
claims particularly pointing out and distinctly claim-
ing the subject matter which the applicant regards as
his invention ”
% USC 251, last paragraph:
“No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless ap-
plied for within two years from the grant of the origi-
nal patent.’
% USC 252, second paragraph :
“No reissued patent shall abridge or affect the right
of any person or his successors in business who made,
purchased or used prior to the grant of a reissue any-
patented by the reissued patent, to continue the
of, sell to others to be used or sold, the
made, purchased or used, unless the
ing of such thing infringes a valid
reissued patent which was in the original
The court before which such matter is in ques-
for the continued manufacture, use
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ef
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si
i ore the grant of the
reissue, and it may also provide for the continued
i of any process patented by the reissue, prac-
which substantial prepara-
made, prior to the grant of the reissue, to the
sensed out onli anh Gages an Gio enust Grams ene
table for the protection of investments made or busi-
ness commenced before the grant of the reissue.’’
“*The court in exceptional cases may award reason-
able attorney fees to the prevailing party.”
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COP 1M athe a Sere”
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STATEMENT OF THE CASE.
Eclipse has now been held to infringe claims 3, 7, 8 and
10 of Reissue Patent 25,626.* These claims are ‘‘original
claims’’ in that they were claims of Maxon’s original
patent 3,051,464 of which the patent in suit is a reissue,
Eclipse Relied on Maxon’s Acquiescence
in Noninfringement.
A list of dates, with an indication of the period of ae-
quiescence, is provided for the Court’s convenience as a
chart comprising the first of two foldouts at the back of
this petition.
In March 1963 Eclipse disclosed to Maxon the type of
burner which it proposed to market as a noninfringing
substitute for Eclipse’s previous burner. Eclipse had
already discontinued the previous burner after being sued,
without notice, under Maxon’s original patent shortly after
it issued.
Maxon indicated willingness to concede noninfringement
by the new burner, and settlement of the prior litigation
soon resulted. Eclipse agreed not to make a burner covered
by the patent claims and accepted a consent judgment hold-
ing the patent valid and infringed. Maxon, deeming the
Eclipse burner out of its reach even by reissue, did not
inform Eclipse that it had already filed an application for
the reissue patent now in suit. The application had been
filed after the above-mentioned disclosure to Maxon with a
‘‘eonfidential’’ notation, but (as Maxon has insisted) it
was not filed to cover Eclipse.
That Maxon deemed the submitted Eclipse design out of
its reach even by reissue shows it then recognized a funda-
mental difference. It could not then have been relying on
3. Jurisdiction of Federal courts lies under 28 USC 1338(a).
~~ ee ee ee ee ee er _
9
mere uniformity of apertures size (discussed below) be-
cause certain of Maxon’s reissue claims, asserted in this
litigation, do not all exclude uniform aperture size. Such
claims are not among the adjudicated claims because, rec-
ognizing that Eclipse was not estopped to show their
invalidity, Maxon moved that they be severed for separate
trial, and this was ordered.
Before identifying the basic differences which were in
1963 easily recognized by those familiar with the Maxon
file wrapper and the similar distinctions “laxon had relied
upon to get its patent, mention of ; -* .ntial similari-
ties might be helpful.
[Understanding of the next discussion may be aided by
having in view the second fold-out at the hack of this
petition. ]
Similarities Not Legally Significant Could Mislead.
Eclipse’s new type of burner had certain similarities to
Maxon’s patented burner and these are mentioned first to
make clear that they alone are not legally significant, be-
cause old in the art. Thus the Eclipse burner (shown at
the bottom of the fold-out) is a line burner with perforated
wings or forwardly diverging mixing plates. It extends
across a duct carrying an airstream to be heated (the air
of which in some instances is ‘‘make up air,’’ and will be
breathed by workers) and its flame is protected between
the two perforated mixing plates through which air is sup-
plied to successive parts of the flame for combustion pur-
poses. Maxon had never even sought claims defining its
burner this broadly, and did not complain before suit as to
this underlying similarity. The danger of according signifi-
cance to this similarity is heightened by the fact that no
single prior art reference before the Patent Office or dis-
cussed by the courts below includes all of this. Nevertheless,
pA III ME BEI ROE DO 2 Hn i
10
Maxon is in the position of admitting this much to be old
in a prior art Scheller burner by introducing into evidence
findings from the prior Mazon v. Mid-Continent suit de.
scribing such a burner (155 USPQ 434, 449, here PX 134A),
{Eclipse contributed to the judicial failure to realize go
much was old by failing to point this out to the District
Court.] The Court of Appeals ignored this highly pertinent
Scheller burner. The claims here involved could hardly
have issued if the Patent Office had known of the Scheller
burner, even though different claims were found valid in
the Mid-Continent suit after Maxon persuaded the Court
there to rule-out Scheller on clearly erroneous law not
asserted here by Maxon.
Eclipse’s New Burners Were Basically Different.
The adjudicated Eclipse burners differ from the burner
of Maxon’s patent (and from Eclipse’s burner of the con-
sent judgment) in many respects pertinent to the claims.
One major difference is that the adjudicated burners are
‘air chamber”’ burners in that an outer imperforate sheet
metal wall structure forms an air chamber on the outer
side of each mixing plate. Thus the mixing plates are ex-
posed only to their own carefully controlled source of com-
bustion air (from the burner’s own blower, usually) rather
than to the existing or ‘‘as found’’ airstream for the heat-
ing of which the burner is provided. A major feature on
which the patent in suit was granted was for the bare
mixing plates to reach out into the existing airstream
which, by impinging upon the outer surfaces of the mixing
plates, was to give proper combustion if the airstream
velocity was within the range of 1500 to 4000 feet per
minute as specified in the adjudicated claims.
Another major departure of Eclipse was in not feeding
through its gas orifices in the burner body a combustible
mixture of gas and air as the adjudicated claims require.
Eclipse’s noncombustible fuel feed made flashback into the
burner body or manifold impossible.
ae
1l
Before the Patent Office, Maxon repeatedly urged both
of the features omitted by Eclipse as important distinctions
by which the claims defined over the prior art. The Court
of Appeals did not treat or apparently consider this fact.
Infringement Found by Accepting Afterthought
Broadening Which Eclipse Could Not Foresee.
Maxon does not deny that Eclipse could not have fore-
seen the manner Maxon contrived (after 1967)* for ap-
plying its patent claims to Eclipse’s ‘‘ AH”? line of burners.
Maxon also does not deny using afterthoughts, but defends
afterthoughts. One post-1967 afterthought includes treat-
ing the controlled air flow through Eclipse’s closed air
chambers as the ‘‘passing air stream’’ to which the claims
require the mixing plates to be exposed. Although the
velocity of the air moving through this air chamber is
far below the range required by the claims, Maxon per-
suaded the courts below to find this range satisfied by the
higher velocity of jets where a small portion of the pres-
sured air leaves the air chambers when it has already
passed the mixing plate apertures. Although there are
two “‘independently of’’ clauses which cannot be satisfied
when the air-chamber air is thus treated as the claims’
“air stream’’, Maxon successfully diverted attention of the
Court of Appeals from one of these (which is the more
difficult to twist) to the other; and as to this other persuaded
both courts below to adopt an unnatural meaning. This
new meaning (‘‘undisturbed’’) is contrary to the file-wrap-
per and natural meaning (‘‘not dependent on).° This
4. The last of the Maxon afterthoughts could only have occurred
to Maxon some time after its Oct. 1967 charge of infringement, or
Maxon would not have at that time used the term ‘‘non-airstream
air,’’ nor have exempted in that charge those Eclipse burners
supplying outside or ‘‘non-airstream’’ air to their air chambers.
This notice of infringement is the second item of Addendum VI.
5. When replacing claims which defined shielding with claims
which added the ‘‘independently of’’ phrases, Maxon argued that
the new claims distinguished from burners ‘‘dependent on com-
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12
amounts to nullification because Maxon’s new meaning
adds nothing to other claim language.°
In Broadening, Courts Below Ignored Eclipse’s Omission
of Patent’s Basic Idea.
The specification of the patent in suit’ makes a point
that the burner ‘‘utilizes the air stream itself.’’ The file
history repeatedly emphasized that the claims could not be
satisfied by prior art having an airstream provided by the
’
pressor air for combustion.’’ The avoidance by the Court of
Appeals of treating this as file-wrapper estoppel is treated below
in Item H under Reasons for Granting the Writ.
6. This lengthy footnote should not be needed but is pro.
vided in case Maxon denies, as it did below, that the claims are
broadened.
The easier-to-twist limitation (applicable to all claims) re-
quires a shielded zone:
**. . . in which said variable low-rate combustion can take
place independently of and shielded from the passing air
stream’’ (emphasis added).
As to this the Court of Appeals said:
‘However, as the district court noted, ‘independently of? is
logically construed to mean undisturbed and unharmed by
the passing air stream, and ‘shielded from’ implies that the
combustion is protected and separated by the shielding walls
from the passing air stream.’’
Neither court below made any attempt to explain how it is
“‘logical’’ to so construe one of two phrases that it adds nothing
to the other, especially when the one thus construed had been
added because the other was not deemed by the Examiner to be
enough.
Neither court asserted that the other ‘‘independently of’’ clause
could be thus ‘‘construed’’. The Court of Appeals used the
clause (page 10) without analysis. That clause, applicable to all
claims, requires the low-rate burner to be:
‘**.. . for variable low-rate combustion of combustible air-gas
mixtures independently of air from the passing air stream
...°”’ (emphasis added).
But it is undisputed that combustion in the Eclipse burners is
at all times dependent upon air from the air chamber (hence,
from the ‘‘air stream’’ if the air-chamber air is to be treated as
the ‘‘air stream’’ of the claims). There is never a combustible
mixture of gas and air issuing from the gas orifices.
7. Addendum I, at column 5, line 31.
EE ARIELLE IS LET NEEL LE EL ROTI I —
13
burner itself for combustion purposes. For example, in its
first amendment (original patent file-wrapper, when insert-
ing amendments defining coaction with the air stream)
Maxon said its burner is placed ‘‘in an air stream which
exists primarily for other purposes’’ and that ‘‘the ref-
erences disclose no gas burner which interacts with an
otherwise existing or passing air stream.’’ Finding 54
identifies the basic conception underlying the patent as
‘‘a burner that harnessed the air stream and made it
work for them instead of against them.’’ The claims
limit themselves to the existing airstream by requiring
that the burner is “‘for heating’’ it. This is related
in turn to the difficult coaction of the perforated mix-
ing plates to this eaisting airstream (not air-chamber
flow tailored to the burner’s needs) by requiring the
mixing plates to be exposed to the thus-defined ‘‘air
stream.”’
All of this is disregarded when the claims are applied to
Eclipse’s special air-chamber air, especially where its
pressure comes from the burner’s own blower so that the
existing airstream is not ‘‘harnessed’’ in any sense.®
Maxon Has Escaped the Sec. 103 Requirement for Unob-
viousness: Courts Below Applied Old Admission of
Validity to Broadened Claims.
Trial was conducted with all concerned believing Eclipse
to be estopped by its prior consent judgment from con-
testing validity of the claims.* Eclipse introduced prior art
8. If Maxon had selectively charged the few Eclipse burners
which are used without their own blowers (or if Maxon should now
do so), it would have a cognizable argument as to harnessing the
existing airstream, but not as to the ‘‘independently of’’ clauses,
nor as to wide divergence of the mixing plates for intercepting an
existing, relatively open, airstrezem
9. This was the apparent law at the time. In an unrelated ease,
a decision in the same District had upheld estoppel. It was later
reversed by the 7th Cireuit Court of Appeals (Business Forms
Finishing Service, Inc. v. Carson, 452 F. 2d 70, 1971).
—_
—
14
to limit the claims and mentioned to the Court its duty to
protect the public from invalid claims. Nevertheless, while
holding the four adjudicated claims infringed by a broaden.
ing construction, the District Court did not adjudicate
validity as to that broadened construction, but disposed of
the validity question on the grounds of admitted validity
found in the prior consent judgment.
The opinion of the Court of Appeals paid no attention
to Eclipse’s arguments that the broadened scope of the
claims determined by the District Court had not been
reached by any admission of validity by Eclipse, and that
claims of that scope are not even entitled to a presumption
of validity (because no longer requiring the very features
by which the Examiner was persuaded to find the claims
allowable). It paid no attention to the point that courts
commonly recognize a varying validity status in claims, as
when a court says anything like ‘‘Not infringed if inter-
preted to be valid; invalid if interpreted to be infringed.”
Even forgetting that the claims had been judicially
broadened, the Court of Appeals gave too little weight to a
consideration which it mentioned, that ‘“public policy en-
courages tests of patent validity.’’ The Court offset this
with ‘‘publie policy also favors conservation of judicial
time and limitations on expensive litigation’’ and held that
‘‘Eclipse effectively waived any rights it might otherwise
have to challenge the validity of Maxon’s patent through
its actions during the course of the trial,’’ not withstanding
the fact that Eclipse in its answer and counterclaim asserted
invalidity.
In so ruling, the Court of Appeals overlooked the fol-
lowing considerations:
(a) Even had Eclipse not introduced prior art, it ought
not to be deemed to have waived any rights by conducting
its trial in accordance with the prevailing law of the dis-
trict, the District Court decision in Business Forms (pre-
vious footnote) not yet having been reversed.
a
15
(b) Having introduced prior art to limit the scope of
the claims, Eclipse was at least entitled to have considered
by both courts below the question of what was obvious in
view of the total prior art available in the record. Maxon
has completely escaped the requirement that it must not
monopolize that which is obvious to persons of ordinary
skill. The Court of Appeals has grossly failed in protecting
the public interest when it lets that escape occur.
(c) By the Court of Appeals own reversal of the District
Court in its finding of no infringement where uniformly- ‘
sized apertures are used, it was making further litigation :
necessary anyway, and the public might as well be pro- f
tected by allowing validity to be included in this further |
litigation. Although at the time of its decision, the Court ‘
of Appeals did not realize that under that decision further ;
litigation was certain to ensue,"? it still did not open up the
question of validity when offered an affidavit that Eclipse
had already changed to burners with uniformly-sized a;er- t
tures.
The three foregoing considerations of course would not
have needed to be considered, had the Court of Appeals
recognizd that broadened claims present a new question of
validity to which admissions prior to the broadening are
not applicable.
Court, Sua Sponte, Found Maxon’s Estoppel Negated by
“Sufficient Notice’? to Eclipse, Contrary to District ‘
Court Finding. :
The District Court found (finding 25) ‘‘that Eclipse i
might fairly assume that by Maxon’s silence . . . it ac- :
quiesced . . .”? Of two reasons the District Court gave for
10. The Court of Appeals, sua sponte, said Eclipse had not
even threatened to make more burners with uniformly-sized aper-
tures. Actually, the record shows Eclipse had offered to change to
uniformly-sized apertures.
REAPER Rt TTR
B:
16
not finding laches, the Court of Appeals gave only pas.
sing reference to one and expressly avoided reliance on
the other, substituting its own basis contrary to Finding
25, namely, that Eclipse had ‘‘sufficient notice.’’ Maxon
had made no argument that Eclipse had had sufficient
notice; nor that Eclipse had had any notice prior to 1966,
In finding, sua sponte and without the benefit of any argu.
ment that Eclipse had had ‘‘sufficient notice,’’ the Court
of Appeals showed no awareness of the above-quoted find-
ing to the contrary. It therefore left unanswered the fol.
lowing vital (and unanswerable) questions raised by the
conflict with Finding 25 and by the supposed means by which
the Court found ‘‘sufficient notice’’:
1. How could the prior litigation against Eclipse, men-
tioned by the Court of Appeals as its first element of suf-
ficient notice, give Eclipse any reason to suspect that its
new burner was in danger, when the setilement was based
on Maxon’s acquiescence that the new style of burner fully
disclosed to it was in the clear?
2. How could the Court’s next element, that Maxon
was suing Mid-Continent, give Eclipse any reason to think
it was in danger, in view of the foregoing and in view of
the fact that Eclipse’s new ‘‘AH”’’ burner was so dif-
ferent from that of Mid-Continent that, as stated in Find-
ing 7 (Addendum II, infra), a different group of claims
was asserted in the Mid-Continent suit than here?
3. Is it not clear that Eclipse was ‘‘spending funds in
designing, engineering, advertising and marketing of new
burners’’ (per Finding 25) and in fact vast sums, before
any indication from Maxon even began to becloud the ap-
parent acquiescence of Maxon indicated by Finding 25?
4. Even if the 1966 letter mentioned in Decision Foot-
note 7 is [erroneously]"’ deemed a notice of infringement,
11. Contrary to Footnote 7 in the opinion of the Court of
Appeals, the letter of January, 1966 did not state an opinion of
VEE ERIE TD TT et ER AI LLIN ERB RH SRE NR MAA UN A
17
and even if that or the October 1967 charge of infringe-
ment is [erroneously] deemed early enough to exclude
laches as to the burners it charged to infringe, isn’t there
clearly estoppel against charging infringement by those
of the Eclipse burners (using outside or ‘‘non-airstream’’
air) which remained uncharged until suit was filed?
The original opinion of the Court of Appeals shows that
its decision denying estoppel was made on the erroneous
assumption that the District Court had denied monetary
relief because of laches, and that the question was of
enjoining further infringement. In an order denying re-
hearing, the Court corrected its footnote 6 which stated the
misassumption.’? Although this left the opinion apparently
justifying only an injunction, not monetary relief, the af-
firmance was left standing even though its unstated effect
was to affirm the award of monetary relief.
REASONS FOR GRANTING THE WRIT.
1. Without action by this Court, at least to the extent
of preliminarily exercising its power of supervision (as by
directing the Court of Appeals to treat the untreated points
noted herein and to explain its reasoning where appro-
priate), a most outrageous abuse of the patent system will
stand successful, doing great damage to the public and to
one of the most guiltless defendants ever held to infringe.*
Maxon’s counsel that Eclipse was infringing. It stated disagree-
ment with only one of several theories of noninfringement in the
letter of July 20, 1965 to which it replied. Maxon’s basis of dis-
agreement did not apply to those Eclipse burners using outside air
in the closed air chambers for combustion. The letter is p. A-54
in Addendum VI.
12. The correction ineluded a new error in saying that Maxon
had not appealed from the refusal to award treble damages and
attorney fees. Maxon appealed but silently dropped its appeal
after Eclipse filed its brief.
13. Probably never before has a defendant been held to infringe
after the patentee’s indication of clearance before the defendant
began production, with notice of infringement given only after
four years of open production.
RPAPe ssi —
_—_ St ha edad aR RN Te nie AE La oe ene ae ee ta ade eee ee
As to the outrageous abuse, there can be no uncertainty
as to the following: (1) Maxon has succeeded in having
held to be infringements those burners of Eclipse using out-
side or nonairstream air which were exempted from its
October 1967 charge of infringement. (2) All of the rest of
Eclipse burners held to infringe, except a few not having
their own blowers, are indistinguishable (as to infringe.
ment questions) from those continuously sold openly and
advertised by Eclipse at least since early 1964, without
charge of infringement being made until 1967; and without
any reason to think Eclipse disagreed with even one of the
various grounds of noninfringement until 1966. (3) Mazon
did not regard the Eclipse burners as infringements until
at least 1966, this being admitted by Maxon. ‘4) Either
Maxon did not have any view of infringement in which its
counsel concurred much before October 1967, or Maxon was
in the interim willfully avoiding giving Eclipse any warning.
(5) As late as October 1967 Maxon still had not invented
all of the theories by which Eclipse is held to infringe, but
Maxon nevertheless wielded the “‘big club’’ in this litiga-
tion by charging willful infringement. (6) Maxon has suc-
ceeded in its charge of infringement by ignoring the more
difficult to twist of two “‘independently of’’ clauses in the
claims, and leading the Court of Appeals to do likewise.
From the foregoing certainties, especially the last thereof,
questions of lack of sincerity arise. When a claim limita-
tion can not be fairly faced, how could any corporation
advised by patent counsel have made its charges or brought
suit in good faith? [Unless some hope of success is good
faith even if based on hope that courts (drawn from lawyers
who ethically refrained from patent matters) can be di-
verted from giving attention to that limitation.) Can a
patent lawyer in good feith have proposed Finding 85 with
its necessary implication that a claim limitation as to where
the air comes from can be ignored because the “‘burner
doesn’t know and doesn’t care where the air comes
3° OT 20H TG So A EE @
_—— me _———_—" owe
adopting Maxon's proposed findings, had struck ‘‘literally”’
or words of similar meaning in six places !*
Is not Maxon's use of the matter of change in aperture
sizes just shocking sham! From the Court of Appeals
decision alone it is clear that until winning its District
Court judgment, Maxon based its excuse for laches on
noninfringement by the 1963 prototype because it had uni-
formly-sized apertures; and promptly after judgment re-
versed its position by insisting on the right to charge in-
fringement by that very prototype. Furthermore, Maxon’s
virtually unsupported claim to have been influenced by
assumed hole size is clearly inconsistent, anyway, with
established facts: (1) Maxon’s October 1967 notice of in-
fringement described changes in the burner (to excuse
Maxon's reneging on clearance given in 1963) but did not
of it by 1966. (2) If the Eclipse burners of 1963-65 really
had had the “‘assumed’’ uniformly-sized apertures, and if
this had then been deemed by Maxon for that reason to
escape the claims now adjudicated, it still would not haw
excused Maxon's silence because other asserted claims
(severed for a later trial, per Finding 6) do not exclude
M4. Similar criticiam of this “‘sophixm"’ in Eclipse’s appeal
brief was answered only by passing it off as having criticized the
seriously ja pad wee Ag
i ee
uniformly-sized apertures. (3) Because Maxon had Eclipse
literature showing non-uniform hole size, the failure of
Maxon to see this in the literature is inconceivable if
Maxon was paying any attention to hole size.
If Maxon’s claim to have relied on assumed uniformity
of hole size is sham, then its claim to have been misled on
that point in 1965 by submission to it of a drawing showing
uniformly-sized holes, is also sham. The drawing could
have misled Maxon, inadvertently ;* but since it is clear
now that Maxon was not paying attention to hole size, the
inadvertent misleading did not reach fruition. Of course,
estoppel by reliance on Maxon's acquiescence had already
arisen anyway, before this supposed instance of Maxon's
being misled for a few months.
Of many other instances (extending back into Patent
Office prosecution) in which Maxon's sincerity is at best
questionabie, these examples are here given:
A. In the Patent Office Maxon submitted, just before
allowance, an affidavit of comparative tests which
Eclipse charges to have been clearly specious.
Maxon’s nearest approach to denying speciousness
was that im the decision against Mid-Continent
[where the specified speciousness is not mentioned]
the affidavit and test were approved.
B. Maxon’s post trial brief informed the District
Court, in arguing infringement of that “‘inde-
pendently of’’ limitation which Maxon neglected
in the Court of Appeals, that in the decision
against Mid-Continent a burner with similar con-
struction (at points critica] as to that limitation)
that the claims in that other litigation included
no such ‘‘independently of’’ limitation. With that
16. Maxon has not charged more than inadvertence since the
Eclipse main brief in the Court of Appeals pointed out clear
circumstantial evidence of inadvertence. including Eclipse's having
used the same drawing in seeking an opinion from its own counsel
21
noted, citing the precedent would have been point-
less.
C. Maxon wielded the big club of treble damages and
attorney fees, for willful infringement, and when
these were denied, Maxon appealed, even though
not contesting the District Court’s finding that,
having disclosed to Maxon its intended burner,
Eclipse could fairly assume that Maxon acquiesced
in noninfringement. [The appeal was dropped
after the Eclipse brief criticized ‘‘inexcusable’’
use of the “‘big club’’.]
2 If this Court allows to stand the successful abuse
shows above, patentees (who collectively have their fair
share of human greed and face great temptations) will be
encouraged, by the successful claim-siretehing and estoppel-
invasion here, to assert their patents, and even sue on them,
beyond any reasonable basis. And no matter how clearly
wrong a decision is, a patentee will be encouraged to stand
firm on the error on the basis that the odds overwhelmingly
favor denial of the petition to this Court. This petition does
not seek any whittling-down of the patent system, only the
exclusion from it of gross excess.
3. There is a great public need for this Court to con-
sider the general question of «tretching patent protection by
broadening of patent claims beyond their original or plain-
language meaning. It is not the contention of this peti-
tioner that no broadening ix ever permissible. The con-
tention is rather that broadening must be limited and
subject to safeguards of equity ;" and that the outermost
tolerable limit, exeeeded here, is that which is reasonably
foreseeable by a competitor’s study of the patent; but it
17. The question of equitable safeguards need not be reached
here because the broadening ix berond limits. There is, however.
great need for thix Court te establish that if broadening by courts
sever permissible, ez. under the doctrine of equivalents, there can
be equitable safeguards for the surprised defendant of good faith.
One example of equitable safeguard is intervening rights. Origi-
bie
ae Ss Oe
SON Eee
PO I eter pm ior ae
Risse ae TAA AO TOE A ae DAA A BEE OD pw a Ct oti,
22
must not recapture that which was given up in the Patent
Office in order to obtain the patent. This need is especially
strong when, as here, important prior art not before the
Patent Office makes it very unlikely that with knowledge
thereof the Patent Office would have allowed the present
claims.
If the broadening achieved here were to be allowed to
stand, there would be a strange thwarting of the statutory
limitations on broadening by reissue. Here the broadening
was not conceived (certainly not acted upon to the extent
of charging infringement) until October 1967; some of the
broadening being still later. But the patent issued in 1962,
and 35 USC 251 limits to two years after issue such broaden-
ing by reissue. And reissue has safeguards not effective
here: (1) the amount of broadening is made definite by a
new claim; (2) the new claim must be approved by the
Patent Office (and the Patent Office must be informed of
any known additional prior art), and (3) intervening rights
to prevent any unfairness from resulting are provided by
35 USC 252.
The point is clarified by comparing the effect of the
broadened ‘‘independently of’? language in_ reissue-
broadened claim 12, with broadening accomplished in this
suit by ignoring the corresponding clause completely. Claim
12 reads (emphasis added) ‘‘ substantially independently.”
The broadening in this suit is far greater than the Patent
Office permitted by the insertion of the word ‘“‘substan-
tially,’’ and it escapes the application of intervening rights.
The escape is shown here by the order of accounting and
by the District Court’s refusal to consider non-statutory
intervening rights (p. A-31 infra).
Moreover, if in 1967 Maxon had still been free to seek a
broadening reissue and had done so, it would have been
obliged to inform the Patent Office of the prior art Scheller
nally, intervening rights were provided by court-made law for
reissues (e.g. Keller v. Adams-Campbell Co., 264 U. S. 314, 317;
1924). Such rights could be provided again as justice requires.
A I en oO ee RT EO i EP SDE LD SEPA IN
23
burner, of which it then had knowledge, and the Patent
Office would have had a chance to reject its original claims
as well as the broadening being sought.
4. There is a great public need for considering the
interaction between broadening patent claims by construc-
tion and questions of validity. Is a claim to be presumed
valid with a seope broader than the basis on which it was
allowed? Is an admission of validity (with only the plain-
language scope in view) to be binding as to a broadened
scope of claim?
5. Unless this Court acts, the Seventh Circuit, at least,
will be governed by the doctrine that file-wrapper estoppel
is available to a defendant only when the means by which
a patentee seeks to recapture that which he gave up to
obtain his patent is by use of the doctrine of equivalents;
there being no limit competitors can count on as to stretch-
ing claims by construction.
6. Unless this Court acts, the Seventh Circuit, at least,
will continue to give District Court findings excessive
weight where claim interpretation is involved, not recog-
nizing that interpretation is a question of law.
7. Unless this Court acts, District Courts, at least in
the Seventh Cireuit, will be reluctant even after a long
trial to include rulings on a small-quantity aspect tha: may
guide the parties and avoid new litigation, even when it
leaves a patentee free to charge infringement by that which
he has, to eseape laches, asserted did not infringe.
8. Unless this Court acts, the Seventh Circuit (surely
no other Cireuit Court would follow)'* will continue to
spare patentees from laches and even from estoppel by
treating as ‘‘snfficient notice’’ prior enforcement actions
18. The Court of Appeals here theught it was following its own
prior decision in Armstrong v. Motorola Inc., 374 F. 2d 764, 769
(1967) cert. denied 389 U. S. 830, overlooking the vital dis-
tinction that in Armstrong Motorola was given early notice of
infringement.
OP Hr EE
“pe
AYE IN 0 ENON RES Rar I IC
against other defendants which could not possibly have
warned the new defendant of any danger to his funda.
mentally different product, reasonably believed not to
9. By taking action here this Court can make clear
that there is some minimum standard below which deci-
sions of Courts of Appeals may not be tolerated by this
Court. At the same time this Court could urge greater
efforts in that most difficult judicial task of recognizing con-
trolling error when pointed out by petition for rehearing;
and could set a standard of frankness in courts in patent
matters.”
This Court perhaps might have been spared any peti-
tion in this case had the Court of Appeals given adequate
consideration on petition even to the one point of “‘suf-
ficient notice’’ on which it had acted sua sponte without
hearing Eclipse on that point, and without showing aware-
ness of inconsistency with Finding 25.
In its opinion the Court of Appeals ignored numerous
points of Eclipse which until disposed of, would be con-
trolling in favor of Eclipse. Some have been mentioned
above. A list here may show the enormity, and could
also serve as the basis of an initial directive to the Court
of Appeals if a writ is issued. No judgment against Eclipse
should stand, and perhaps this Court should delay full
review, until the Court of Appeals has remedied ithe fol-
lowing neglect or clearly erroneous treatment of poten-
tially controlling questions.
19. The public interest where monopoly is sought has already
resulted in a high standard in the Patent Office. (Precision Instru-
ment Manufacturing Co. v. Automotive Maintenance Machinery
Co. (1945), 324 U. S. 806, 818). Any standard of frankness in
the courts should apply to both sides. The less obvious public
interest where the patent is heing attacked is in the proper working
of the patent system in its public-benefit incentive function, and
the public interest in justice. This case proves that, at least in
patent matters, an opposition advocate can not always overcome
lack of frankness.
ee PRL ae RAE Ne A IPD gO ea ee MEN ye a RRR ON I, iene -)
#
—
25 ;
a
A. Failure to treat Eclipse’s omission of the under-
lying idea of having the mixing plates ‘‘reach out’’ into
the existing troublesome airstream to cooperate success-
fully with it.
B. Failure to treat the ‘‘independently of air from’’
clause as to its natural and file-wrapper meaning, ‘‘not
dependent on.’’”
C. In treating the clause ‘‘independently of and
shielded from’’, failing to treat the points (1) that the
meaning it gave to ‘‘independently of’’ left this phrase
adding nothing to ‘‘shielded from,’’ and (2) that the file
wrapper shows the meaning to be the natural meaning,
‘not dependant on.”’
GRE 5
OTE EET EER as
Vv Pee
Rie
vent
D. In its treatment of findings as being ‘‘of an es-
sentially factual nature,’’ failing to consider whether in-
terpretation of the claim was involved and if so, whether
“proper legal criteria’? were use? *» ‘the interpretation;
in fact, ignoring citation of its own numerous ‘‘ proper
legal criteria’’ precedents. (Example: Aerosol Research
Co. v. Scoville Mfg. Co., 334 F. 2d 751, 141 USPQ 758; 1954).
Also failing to recognize that the District Court’s evalua-
tion of the file history is fully reviewable.
E. In holding that the District Court had rejected the
“factual basis’’ of the Eclipse noninfringement argument
that some of its burners use outside air in the air chambers.
It is undisputed that the Eclipse ‘‘RAH’’ burners do so.
F. In ruling against Eclipse’s argument that relevant
airstream speed should be taken where it impinges on the
mixing plates (where Maxon admits the airspeed is below
the claimed range) without considering that neither the
patent nor its file wrapper gives support to Maxon’s al-
ternative, and that the choice is mainly proper legal in-
terpretation of the patent document.
20. If the opinion had this clause in mind in its observation
that “‘the patent claims themselves contemplate that the burner
may take some air from the passing air stream’’, then explanation
is needed as to the clauses relied upon and whether they can
nullify an express further limitation.
26
G. In its treatment of ‘‘widely divergent”’, failing to
treat the point that the file-history significance of this was
having enough divergence to coact satisfactorily with
relatively unconfined existing airstream; also (though not
a controlling point) failing to take note (when denying
that Maxon had asserted 50° to be critical) of Eclipse’s
quotation from the file wrapper in which Maxon took issue
with the Examiner’s position that 50° is not critical,
H. In dismissing the file-wrapper estoppel argument of
Eclipse as ‘‘essentially frivolous’’ by relying only on Dis.
trict Court Findings which did not meet the specific estop-
pel which Eclipse had pointed out, and on a Seventh
Circuit sometimes-doctrine that file wrapper estoppel is
available only to bar use of the doctrine of equivalents,
not to prevent recapture of scope given up by amendment
in the Patent Office if the recapture is by a broadening
construction.”
I. In disposing of prior art items one-by-one instead
of considering what they collectively made obvious.
J. In treating the Eclipse contention that the prior art
Western Products burner stands between the Maxon patent
and Eclipse burners, failing to treat the Eclipse starting
21. The decision, Paper Converting Machine Co. v. F M C Cor-
poration, 409 F. 2d 344, 354 (7th Cir.), cert. denied, 396 U. S. 877
(1969), must have been cited, as it was by Maxon, for this doctrine.
This is not the law. ‘‘Where the patentee in the course of his
application in the patent office has, by amendment, cancelled or
surrendered claims, those which are allowed are to be read in the
light of those abandoned and an abandoned claim cannot be re-
vived and restored to the patent by reading it by construction into
the claims which are allowed.’’ (Emphasis added), Schriber-
Schroth Company v. Cleveland Trust Company, 311 U. S. 211, 218
(1940). See similar statement by the 7th circuit, 1971, in Ellipse
Corp. v. Ford Motor Co., 452 F. 2d 163, 168; 171 USPQ 513. See
also Graham v. John Deere Co. (1966), 383 U. S. 1, 33; 148 USPQ
459, 473, Morpul, Inc. v. Glen Raven Knitting Mill, Inc. (MD. N.
Car. 1965), 144 USPQ 460, 464, 466, Smith v. Florence-Mayo
Nuway Co. (CA-4, 1950), 182 F. 2d 507, 509; 85 USPQ 433, 435,
Power Curbers, Inc. v. E. D. Etnyce & Co. (CA-4, 1962), 298
F. 2d 484; 132 USPQ 158, 166, and Baker-Cammack Hosiery Muls
v. Davis Co. (CA-4, 1950), 181 F. 2d 550, 563; 85 USPQ 94.
27
point for this that the broad idea of extending the range
of prior art line burners by diverging perforated shielding
and mixing plate structure was completely obvious from
common use of such structure elsewhere and was, in fact,
old (see reference to Scheller, above at p. 10).
K. In holding that Eclipse had waived the contesting
of validity, failing to treat the Eclipse assertion that no
admission of validity had reached to the claims as
broadened, and that Eclipse had, in effect, attacked the
validity of that scope by introducing prior art to preclude
it.
L. Failing to treat the fact that there had been no dis-
trict court findings on what was obvious from the prior art
and that taking validity as admitted indicated, even as to
proper scope, that obviousness had not been considered.
M. Failing to treat the fact that no inventive concept
had been identified, as held to be necessary for finding in-
fringement in Business Forms, supra (452 F. 2d 70; October
15, 1971, concurred in by the same Circuit judge who wrote
the present opinion).
N. On estoppel, in regard to the Court’s sua sponte
basis of denial that Eclipse had ‘‘sufficient notice,’’ failing
to hear Eclipse, and failing to consider when Eclipse first
had reason to realize it could no longer ‘‘fairly assume”’
Maxon’s acquiescence in its noninfringement, and whether
in view of reliance by Eclipse prior thereto laches or estop-
pel had already arisen.
0. In case the determination of ‘‘sufficient notice’’ is
withdrawn, failing to consider whether the evidence, and
Maxon’s reversal of position, show Maxon’s excuse for
laches to have been sham or at least of no significance.
P. Regarding the 1963 prototype, failing to reach a
conclusion on the question it recognized of Maxon’s being
barred; failing to consider as a question of law whether
a determination made by the District Court can be re-
— ——— TT
28
versed as de minimus; failing (in giving Maxon a better
chance to prove infringement by the 1963 prototype) to
consider Maxon’s failure to pursue availability of any in.
formation it needed, or claims to have needed, after
Eclipse’s first answer that it did not know the location of
a burner from five years previous.
Q. Failure to treat other potentially controlling (but
relatively independent) questions:
(1) Whether (if the infringement and no-estoppel hold-
ings stand) Eclipse is a good faith infringer taken by
surprise, and if so whether any equitable doctrine such as
intervening rigiits should ameliorate unfairness. See foot-
note 17 above.
(2) Whether Maxon has failed to meet a monopoly-
seeker’s minimum standard of frankness and sincerity be-
fore the Patent Office and the courts, so as to be disentitled
to relief and possibly be liable for attorney fees. This
question could be referred by the Court of Appeals to the
District Court for re-evaluation in light of Maxon’s post-
judgment actions.
CONCLUSION.
For the foregoing reasons, the petition for a writ of
certiorari should be granted.
Respectfully submitted,
Norman H. Gerwacnu,
105 West Adams Street,
Chicago, Illinois 60603,
Louis Rospertson,
Darso, Ropertson & VANDENBURGH,
P. O. Box 670,
Arlington Heights, Illinois 60006,
Attorneys for Eclipse Fuel Engineer-
ing Co., Petitioner.
—
ADDENDUM I A-1
Patent in Suit
July 28, 1934 R.H. YEO ETAL Re. 25,626
AIR-HEATING GAS BURNER
Original Filed Oct. 20, 1958
REPS pen eS
ee RT oN eee
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July 28, 1964 R.H. YEO ETAL Re. 25,626
AIR-HEATING GAS BURNER
Origins} Filed Oct. 20, 1958
INVENTORS
Ropartyyeo &
Dowatvl. Hao
| DOHMOR CORY
A-4
United Sates Patent Office...
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cecieu es recirculation with only small amounts of s4ded in an air stream to heat the air of such stream, and which
eqatilai.on 20f Accordingly. the “air™ stream is deticient has a number of advantages and improved characteristics
pewgen. and the oxsgen-ican air is not well usted 10 a3 compared to burners previously available for aur sirsam
gaa combursionn reqnircmen’'s As noted above, the “air™ applications. including such advantages and characteristics
ad "vir stream.” we mew to include both normal air and 5 2 the following:
gaa simenpheres m which 9 pas burner is operated. (1) Increased capacity with clean, intense. and complete
nil firly recently, # ¥2s considered necessary in combustion, and short flame length. over a range of heat
ede to obtain clean ard complete combustion of the inputs (for a given size burner) extending substanually
fed for this heating applicat.on that all or sube'antiaily above that av2ilable from prior burners. For example,
didi the air required for combustion be supplied from 10 Shere prior lire burners in air stream operation have a
quite Ge oven as by mesns of an external blower. matimum output not exceeding 200.000 Btu. per hour
Merover, the available turrers have proviied @ turn- per lineal foot of burner, when operating in a restricted
gga ratio of not more than uDout 440-1 or 5-to-1- range of air velocities of $00 :0 1.500 {cet per minute. out-
More recently, effor's have been made to reduce the puts of our mew burner run up to and beyond 500,000
geoet of outside air required for combustion and 10 45 Bia. per hour per foot, in air velocities ranging up to
glue substantial percentaces of Combustion sir from the 4.000 feet per minute.
perculating stream. in order to reduce or eliminate the (2) Positive flame retention and stable combustion
qaenal blower reowwrements and to reduce the expense at higher heat inputs and in higher velocity air streams.
d tetaliation an; operation of the burner system. But For example, where prior line burners even for limited
these attemr's' cepend loreely or entirely on the oxygen- 29 Outputs require air velocities to be held at or below 1.500
ken simosr>=rc of the oven to supply the oxygen for feet per minute and fuel mixture pressures to be held
cenbustion have frequently resulted m poor quality of within restricted lemits. to avow flame loss. our new burn-
qentestion. In many Cases. incomplete burning of the ers avoid these limitations and operate satisfactorily at
gu bas resulted in damage to the product from fumes or hither and w:Jcr rances of outputs in air velocitics from
from free carbon deposited <« soot. The basic cause of 95 1.500 to 4.00) feet per minute. In contrast to prior burn-
tex diicultes has becn on inadequate intermiuing of ers. the output of our burners is not limited by danger of
Ge g2s fuel with the orsgen-icon atmosphere of the oven. flame loss.
hh is one of the objects of our invention to provide 8 (3) Utilization of the air stream to supply large proror-
barner in which greatly improved imtermiuing is ot tamed tions of all of the air required for combustion. and to pro-
temeen the gaseous fuel and “ait” from the recirculating 39 duce intermixing of air and gas, which substantially re-
men _ thereby securine a more eflective utihza- duces the amount, compleaity, and cost of air supply
fon of the oxygen im that oryzentean atmo-phere. means otherwise required.
Borners embodying the imvention can obtam (4) Operating fle utility. that is. ability to operate sat-
gad immediate combustion of e2seous fuci in oven instal- isfactorily over 2 substanual range or variation of operat-
lotions, uung the oven atmoxsmere to supply high Fropor- 33% Conditions and corsequent hrth tolerance for diferent
fom or even the entire amo_nt of oxyren required air velocities. for turbulence. and for non-uniformity in
combustion. The requirements for the =xternal aif are the air stream, ond begh tolerance for variations in air-
thus reduced or avoricd. and external blowers can be fuel ratios 2nd in B.t.2. content of the poses used.
gnaller of eliminated entirely Our new burners operate (5) A hich turn-down ratio, and ability to be throttled
ja higher air stream velocities. thus permuting smailer gn of adjusted vith smooth continuous variation of heat out-
to cause intermixine of ant-c2* muaturcs with secondary
ai, but in certain cases can use such flow to induce
intermixing fiow of c25 and prmary air.
Forther, the invention prov.des high turn-down ratios
in oven applications, and wh:t we can co higher, in such
may use turer forms providine rates
ranging up to about 1S-to-1. This is subtranuaily begher
thon ¥ avatable ard is hichly benefic:al. for
cumple, in eliminvune over-riding of temperatures dur-
ing periods of low demand wrile providins hicher <peed
in brincong the instal!avon up to opsratine temperatures.
Mi. Heating air in simple ron-recirculating drying 2p-
crain drycts and other simple applicateas
dchydraiirz, and the like, 2 gas burner
operzied in an air supply duct .n a relatively simpic sysicm
where primary need is a simple. inexpensive, and
burner which gives Lirge heat inputs in a Cuct
reasonable size. The principal didiculty wth
heretofore used is excessive flame length from
which makes it recessary to use long ducts
may cause damage by spot heating of duct work and
and to burn with a much sherier flame length than pret
burners; and to do so at hiyh heat input rates and in bigh
As illustrated above, our invention has as a principal
ehject the provision of a gos burner having improved
mining means for intcrmining gas and ait at the face of
the burner, and fu dviag so at varying rates of operatica,
Nis a further principal ocjcct of the vention to provide
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gas burner which is ex cciully applicable for operation 75 phd.
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26,626 A-6
supply : _ walls, and
means and are arranged to converze The nozzles, manifolds, mi or
@ eteee in the pace toward which Ge es surety other parts of the burner may be made from any suitable
geans discharges. The air jets may thus form a con- = materi! or materials, such for example, as heat-resistant
verging curtain or canopy over the gas suppiy to ensure ——shect-metal, coated metals, ceramics, and other materials
thorough mixing and heating and combustion of all the ¢ capable of withstanding the temperatures and other oper-
gas supplied at ail rates of operation. ating conditions of the particular installations for which
The gas supply means desirably comprises one or more the burners are intended.
gas ports in a nozzle of along a manifold, and this is The fuel supply means for the burner preferably intro-
desirably Banked by one or more mixing walls or plates duces gascous fuel (gas-air mixtures or raw gas) into the
having @ potiern of air openings at which air jets are 10 mixing chamber at its closed upstream end, ie. at the
caused to form by a suitably induced pressure dif- bottom of the trough of a line burner. Some of such
ferential across the mixing wall or walls. A symmetrical gas will intermix with the converging or inter-lacing air
arrangement of mixing wails is preferably used. as by jets. Other portions of the gas will be drawn into and
disposing walls at cppos.te sides of the gas supply means. along the low-pressure passarew2ys between the air jets
The air jets may t= directed into convercence with the 15 and is drawn therefrom into admixtuce with the air of
gas flow and each other by disposing opposite mixing walls such jets. to burn tapidly and cleanly in intense flame
in facing divercent relation in the direction of fas flow at the surfaces of the jets and between them. The num-
and disposine the air openings in ‘ging d ber of jets at which flame appears and the amount of
through the divergent mixing walls. flame in the combustion chamber will vary with the
In air siren applications, one or more mixing walls 20 amount of gus supplied. By varying the amount of gas
or plates is ; usitioned to present one side thereof to or gas-air fuel mixture supplied to the burner. and de-
ait flow in the air strcam and to set off or define a mixing sirably varying also the proportion of gas in the gas-air
area anJ combustion space on the downstream side thereof mixtures used, the rate of operation and the heat out-
in which the air stream fow induces a reduced pressure or put can be smoothly and continuously varicd over a
partial vacuum. The “alls are provided with air-admit- 25 substantial range running upward to very high outputs.
ting openings, preferat'y associated with air-directing _ In a wide turn-down ratio burner embodying the inven-
means, through which the air jets are caused to issue by tion, the fuel supply means combined with the mixing
reason of the impingement of the hieher pressure air walls and combustion chamber described above is desir-
stream at the back of the walls and the presence of the ably in the form of a burner element which in combina-
reduced pressure at the front face of the walls. The burner 30 tion with the parts described above will itself onerate
thus utilizes the air stream itself both to provide the op- over a range of low input rates, with the mixing walls
erating pressure conditions and to supply the air for the —- serving, during low fire conditions, to protect the low fire
air jets and the combustion which occurs therewith. from the air stream and, at higher rates, to provide the
The mixing walls preferably lie oblique to the air high capacity and complete combustion as described
flow path and, as shown in the accompanying drawings, 35 above. To this end, the gas discharge means at the bot-
desirably diverge at an included anrle of $0°. Such tom or base of the mixing chamber is desirably in the
walls sct off 2 combustion space which is open in the form of one of more main gas ports, flanked by siucided
direction of air stream flow and which is desirably of | ¢ddy pockets supplicd by or ignitor gas
progressively increasing cross-sectional area in such di- gq TE CH nay We af emalior cagerty Gan Ge main gue
rection. The pattern of spaced air-admuttine openincs Ports. : . .
in such wall or walls is desirably of progressively in- In a wide turn-down ratio burner, such as a line
creasing area in the direction of increasing cross-section burner, the various stages and variations of operation
of the combustion chamber, and the wed areas between
the openings and underlying the passazeways b n
the air jets are desirably wider at the inner portion of
Combustion chambers may be of various cross-sec-
tional shapes. For example, the burner may have a
conical or pytamidal combustion chamber of circular,
tectangular, or other cross-section. In line burners the
openings at the bottom er innermost portion of the trou eh
mixing plates, the de“cctors are desirably provided by
bending i ions of the sheet meta! out-
ward from the mixing wall to form the sir openines and
leaving portions in out-standing position as in the
of toncucs at the
downstream edges of the open-
For minimum and low rates of operation, the burner
ports may be supplied with a combustible mixture of
avoid flash back. Under such supply conditions. only
a low fire will be produced, such as small flame cones at
the main burner ports, and such low fire will be contained
in the bottom of the mixing trough. below at least most
of the air jets, and will be protected from the hich veloc-
ity air stream by the mixing walis. For Procressively
higher stages of operation. the amount of fuel m:xture
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increasing extent and stand outward from
js mouth. This operation, in a typics! line burner em-
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Moreover, the burner combination operates at any
Btw. input in the entire rance of opecating rates with
comiderable variation in gas-to-air procortions in the
fuel mixture supphed: and.this is espec'ally so, and es-
pecially advantageous, at upper-staces of operation. Thus
in operation at high capacities. the fuct mixture supplicd
to the burner can vary from raw fuel ¢-s to a pre-mixed
gasait mixture containing large propozuons, say up to
90%, of the air required for combuszion. Cicxn com-
bastion can be obtained at any desired 3.t.u. output with
a considerable variation of air-fuel r2::0s and operating
conditions end without need for critical adjustment. The
burner utilizes the flow of the air <trean: to produce com-
plete intermixing of all the cas with air. and this action
isself-regulating and automatically compensates for varia-
tions in surpiy rates and richness or !canness of fuel
mixtures and air mixiures.
With such flexible ard self-compensatine operation at
amy point in the opcraiing rance. it is ready possible
to throtile the burner over a broad rance of heats inputs
and to obtain continuous smooth variation in output over
the entire broad rance cf operation.
The accompanying drawings illustrate the invention.
In such drawings:
FIG. 1 is a somewhat diacrammatic sectional view of
an sit-heating installation using a line burner assembly
embodying the invention, with the burrer supplicd from
4 pre-mixing blower and proportioning valve, which in-
tallation may be considered a fresh 2ir application by
assuming the incoming 1ir to be fresh air, or a recitculat-
ing oven atmosphere application by assuming the air
stream to be part of a recirculation stream.
FIG. 2 is a somewhat diacrammatic section taken on
the line 2—2 of FIG. 1, showing a front elevation of the
lime burner assembly;
FIG. 3 is a sectional view of a burner embodying beth
the high capacity and hi-h turn-down aspects of the in- *
vention, taken on the linc 3—3 of FIG. 2:
AIG. 4 is a diagrammatic viw showing the apparatus
of FIGS. 1-2 in a fresh air application;
FIG. 5 is a pictorial view of a burner unit as shown
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assembly shown distributes the fiame and beat in a de-
sirable pattern across the whole air stream. Several
connected to straight units 34. The free ends of the
turner units are closed
here shown at the top, the manifold section $9 is
as a flat wall $4; having a longitudinal ridge or rail
along each edce. The other wails are Sesirably rounded
resting on the ridze £6 and extending inward therefrom,
with an up-turned lip or flange 68 at its inner edge.
COPY
25,626
9
Such bottom walls 66 desirably extend inward beyond
the ignitor ports 60 but short of the main ports §8. The'r
lips 68 are spaced from each other to form a slot throush
which the main ports $8 are exposed and throuch which
the gas jets fom the ports $8 may pass. The ridzcs 56
and the inward extending parts of the walls 66 form
eddy pockets 62 at opposite sides of the gas jets from the
main ports $8, at the base of those jets. é
From the outer edec of the bottom wall 66, the shie!d
64 extends straight upward to ferm a flame shield 72,
and from the upper end of such shield extends obliquely
outward to form a mixing wall 72. Each mixing wall
72 contains a plurality of rows of spaced air-admitting
apertures, desiranly of progressively increasing size and
in staggered relation. As shown, the mixing wall 72
contains a bottom row cf relatively small apertures 74,
a second row of intermediate sized apertures 76, and
third and fourth rows of larger zzertures 78 and 89.
Various forms of upertures can be used. In the preferred
form shown, zach aperture is rectangular and is formed
by striking curmard from the miaine wall a toncue of
metal, an¢ such tongues are desirat!y left as outward pro-
jection, standing substantially no:mal to the wall 72, to
deflect air throuch the apertures from the aie stream in
which the burner is located. On the ovter face of the
mixing wal!, therefore, there are 2 serics of sma!! toncucs
75 at the upper edce of the small apertures 74, and simi-
lar tongues 77, 79, acd 81 at the upper edges of the
apertures 75, 18, ard $0. The four rows of tongues ex-
tend progressively farthzr cutward into the air stream,
both by reason of the oblique fosition of the wal! 72
with respect to the air stream and by reason of their
progressively greater leneths. The ends of the plates 64
are desirably provided w:th stiffenine flances 63 through
which bolts or rivets may te pase! to interconnect the
plates of adjacent turner sections.
The burner shown in FIG. 3 may operate in any de-
sited position. Thus. it may fzze upward as shown
in FIG. 3, or it may fzce horizontally, either with its
longitudinal axis vertical as in the vertical sections of
the burner assembly shown in FIG. 2, or with its longi-
tudinal axis horizontal and with its 22s ports 58 disposed
in a horizontal flare as in the hozizonta! portions of the
burner assembly shown in FIG. 2. In any case, the
burner unit will be disposed in a fast-moving air stream,
which may be flowing at velocities of 1.500 to 4,099 feet
perminute. The air flow will be in the direction indicated
by the arrows appearing in FIGS. 1 and 3. The air will
approach the burner unit from the b:.ck side of the mani-
fold $0 ard will Row along the side walls of such m2ni-
fold ard forward clen2 the outer faces of the shiztding
and mixing plates 64. Th: epen mouth 6§ of the munxing
trough and combustion chamber for.ned by the plates 63
will face downstream in the direction of air flew. Air
stream flow post the burner will create a low pressure
or vacuum in the mixine trouch cf the burner. Such
vacuum, plus the ram eect of the air at the apertures
74, 76, 78. and £9, and the defiection of air thereto by
the tongues 75, 77, 79, 2nd 81, will cause jets of air to
issue ONiqusly inward from the apertures, as indicated by
dotted lines in FIG. 5. These jets will be insuicient to
satisfy the vacuum within the mixing chamber; moreover
they will themsetves induce low pressure in the areas
around and between the jets and adjacent the inner faces
of the mixing wall 72. These low Pressure areas between
the jets will provide flow paths into which £as issuing
from the manifold will be drawn and aiong which eas
will flow when the gas is not completely consumed in
flames at the gas ports and unburned fas is present in
suflicient quantities to permit that fow to occur. 17 he gas 5
flow in such low p essure areas, as indicated by the arrows
in FIG. $ can carry £25 to all the air jets issuing through
the mixing wall 64.
With these con. itions of air flow and Pressure, a wide
variety of operating conditions can be oblained under
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telative!y simple regulation of the amount and character
of fucl gas mi Prlied through the manifold.
FIGS. 6, 7, and 8 illustrate three stages of operation.
In such figures, the air jets A are shown in full lines,
unburned or incompletely burned eas G is indicated by
stippling. and flame is indicated by dotted lincs. At
all stages, a pattern of air jcts A will stand inward
from the air apertures 74, 76, 78, and 80, to be involved
in combustion to a greater or lesser extent depending on
the gas supply rate.
For the hirh fire operation indicated in FIG. 6, the
manifold $0 carries cither raw gas or a rich Gas-air mix-
ture, comiaining up to say 20° of the air required for
combustion. The gas supply rate will be high, as at a
Pressure of 6 inches of water column, and the gas ports
53 and 60 will serve in common to supply gas to and
through the slot between the lips 68 at the bottom of the
mixing trovch. Part of the gas will flow centrally into ad-
mixture with the converging air jets. as indicated by
the central stippled area at the base of the troucth. Sub-
stantial other portions of the gas will flow latcrally to-
ward the mixing wails 72, its velocity will be reduced
and it will be drawn toward the mixing walls 72 by reason
of the low pressure areas existing adjacent those walls
and in the spaces between the air jets A issuing from
the apertures 74-80. The gas will flow in the low pres-
sure flow paths (as indicated by arrows in FIG. 5)
to surround such air jets and to mix with them. As a
result, a mass of flame will occur in the mixing trough
and proj<cting therefrom, as generally indicated in FIG.
6. The cas mixing with the air jets will burn at the
surfaces of the jets to form distinct flame Streaks stard-
ing inward from the air openings 74-80, at the surfaces
of the 2ir jets, and further combustion will occur be-
tween ard around the jets. The central portion of the
mixing trough wi!l te filled with a mass of burning gases,
which fame may project some distance from the open
mouth of the burner trouch, say Up to two or three times
the width of the open mouth of the trough. The comous-
tion is intense and c!can, and the flame is firmly sected
and anchored in the burner trough, with no tendency to
drift or t!ow away from the burner. This stage of opera-
tion provides very hich rates of heat input into the air
Stream in v. hich the burner is operated.
At the Jow stace of operation indicated in FIG. 8,
the combustion is substantially independent of the air
jets issuing throuch the air openings 74-89: but the air
jets serve to carry the products of combustion into tis
admixture with the air stream, the mixing trouch provides
Gesirabl> pressure conditions about the flame, and the
side platzs 64 of the burner assembly serve eficctively
to shield the fame from the fast-moving air stream. For
this low stace of oreration the £25-air mixture supplied
to the manifold $9 desirably contains all or substantially
air required for combustion, say 80 or 90% of
the combustion air. The air-gas mixture is supplied at
relativety low pressure, as of the order of one-half to
one-fourth inch of water column. Under these condi-
tions, the fuel miature issuine throuch the main Ports §$
forms distinct flame cones 59 at each of the main ports
$8. Such cones will be closely embraced by the lips 68
which form eddy pockets 62 along beth sides of the row
of gas jets from the main ports $8. The eas issuing from
the ignitor ports 60 will be slowed in the cddy pockets 62
and will burn in toncues of flame 61 which fill the slot
formed by the lips 68 at Points between the main flame
cones $9. These ignitor flames 61 will be maintained at
the base of the fuel jets issuing from the main ports
58, and will constantly ignite those main jets and will
ensure flame retention.
The rate of combustion in this low stage of operation
may be a:tjusted over a considerable range. Ata mini-
mum, the flame may consist of a short continuous Lins
of flame alone the slot between the lips 68, with only
small enlargements appearing at the main ports $8. At
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higher the flame concs $9 at the main ports 58
may boo a substantial distance outward ia the trough
of the burner assembly. The jet velocity from the main
may be well beyond that at which flame could other-
wise be retained. but the eddy pocaet construction and
the ignitor Nume at the base of such jets will constantly
senite them and main ain stable combustion.
At intermediate stages of operation, low-stage and
high-stage conditions smoothly merce with each other
jn vatying amounts. A typical intermediate stage of
ation is shown in FIG. 7 to illustrate such merging.
The manifold is supplied with an air-gus miature con-
taining 50 to 60% of the total air required for combus-
tion. The jets of 2as-a‘r mixture from the main ports 58
are of high velocity, out are continuously ignited by
ignitor flames opposite the ignitor ports 60 at the lips 68.
and distinct ceniral flame cones appear opposite each main
158. Less than all of the fucl is consumed in these
flames, and con:bustible gas flows to the low Pressure
areas betweer -he air jets issuing from the apertures in
the mixing *-.1!s 72. and is drawn into such jets and
burned with air from them. Distinct flame cones appear
at the innermost air openings 74, and partial flame cones
appear 2t the air openings 76. ? ;
As the amount and richness of the gas-air mixture
is incteared from the conJitions of FIG. 7, combustion
will progressively chance toward the hich Stage of Opera-
tion shown in FIG. 6, with progressivciy less flume in
the bottom of the trough and with more at and about the
air jets. As the amount end richness of the air-gas
mixture is decreased from the interme fiate stage of FIG.
7, the character of operation will apprc ach that of FIG. 8.
While different stages of operation bave been illus-
trated and described. these are but fuints in a smoothly
and continuous!y adjustable ranve of cperation from min-
imum to maximum. The burner is preferably used with
a proportionine control device which regulates the total
supply of admixed g2s and primary air, and whica will
also vary the proportion of wir mixed with the fuel gas,
such as a control device of the type shown in US.
Patent No. 2,286,173. With a control of this type, the
burner can be smoothiy throttled over the whole ranze
of operation from the very high rate of maximum high-
stage operation down to the lowest rate of low-stage
operation.
FIG. 9 shows a burner unit which may be used where
a lower maximum Btu. input is required than that pro-
vided by the unit of FIGS. 3 and S. The manifold $0
of the unit in FIG. 9 is identical with the manifold of
the unit of FIG. 3, save that the gas ports may be of
smaller size. The side plates 164 of the burrer are
identical with the plates 64 shown in FIGS. 3 and 5 and
described above, save that they are only half as hich and
contain only two rows of air apertures 174 end 176, in-
stead of the four rows shown in FIG. 3.
FIG. 10 shows a T-shaped section equipped with mix-
ing plates of the same heigi:t as those in FIG. 9. Tae
arms of the T-shaped manifold 150 have the same cross-
sectional conficuration as shown in FIGS. 3 and 9, with a
flat wall 154 containing longitudinal rows of main and
ignitor gas ports, and having longitudinal ridges or rails
186 along its edges. The cross arm 151 of the T-shaped
unit carries at one side a straicht side plate 164 like that
shown in FIG. 9. The adjoining rails 135 of the cross
arm 151 and the center arm 183 carry side plates 163
which in cross-section are the same as shown in FiG. 9
but which are L-siaped in plan. These form wedge-
shaped troughs, above the arms of the T-shaped unit,
of the same conficuration as in FIG. 9, and in open com-
munication with cach ether.
FIG. 10 illustrates clzments which are used in the con- *
struction of cross-shared and T-shaped burner sections
such as those of th: burner assembly shown in FIG. 2.
Ke will be understood that such burner sections may be
equipped cither with full-height side plates as shown in
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FIG. 3 or with the half-height side plates shown in FIGS.
9 and 10.
In the drawings illustrating the invention, it will be
noted that certain relationships are shown. Referrine. for
example. to the preferred modification shown in FIGS. 4,
2, 3 and 5, the mixing plates 64 define at their forward
edges a discharge opening or mouth 65 for the mixing
space of the burner which is substantially coextensive with
the frontal area of the burner. As shown in FIG. 2,
such discharge opening of the burner 20 lies within the
cross section of ithe air strcam passage defined by the
duct 14, leaving a surrounding vpen areca of the air stream
passage which is larger and of greater capacity than such
discharge ig. By me . FIG. 2 shows an
Open air stream passuge within the duct 14 greater than
the frontal area of the burner 20.
In FIGS. 3 and 5. it may be noted that the area of
each mixing wail 72, extending obliquely outward from
the straight flame shicld 70, is shorter and of smaller
area than the width and arca of the open mouth 65 be-
tween the outer edecs of the mixing walls 72—the top
edecs in FIG. 3—and hence of less arca than such open
mouth 65 or discharce area defined between such outer
edecs. Further. it is clear that the various apertures 74,
76, 78 and 80 in such mixing walls 72 are of substan-
tially smaller area than the wall pertions between them,
and from this it is evident that the apertures provide a
total inict arca tu the mixing space which is subsiantially
smaller and of less capacity than the discharge area of
such-open mouth 65. Furiher, in the duct installation
shown in FIGS. 1 and 2 the mixing space inlet 2rea,
being smaller than the burner outlet area, is also smuiler
and of fess capacity than ‘the air stream passage provided
by the surrounding opcn duct area. Similar relationships
are present in the viher modifications shown in the
drawings.
We claim as our invention:
1. A high turn-down gas burner adapted for
in an air stream flowing forwardly past the burner at a
velocity of the order of 1560 to 4000 feet per minute,
comprising an clongated buracr body defining a fucl gas
supply passace and having an elongated forward wall to
lie transversely of the direction of the air stream, said
wall having gas pert means at a serics of points alone
its length, flame shielding walls extending forward from
adjacent the sides of the body in spaced relation along
opposits sides of said eas port means, defining a low-
flame zone in front of sa:J gas port means. mixing plate
walls extending odliquely forward and outward trem
suid shiciding wally ia divergent relation at an included
angle of the order of 50°, said walls defining a forwardly
- widening trough-shaped mixing space forwardly of said
gas port means. suid mixing space being forwardly wide
open for frec and open discharge communication with
the passing air stream, said mixing plate walls projecting
laterally of said burner body with their back faces posi-
tioned to lie exposed to the air stream flowing past the
burner, a pluralicy of apertures in said mixing plate wails
spaced both lonzitudinally thereof and at different dis-
tances from said burner body, said apertures being small-
er than the wall areas between the same and having
a total area substantially less than the forward open dis-
charge area of said mixing space, the inner apertures
being of smaller capzcity than the outer apertures, air
deflector means projecting obliquely outward and rear-
ward into the path of the passing air stream from adja-
cent the down stream edees of said apertures. said burner
body and divergent walls being shaped to divide and out-
wardiy deflect the air stream Hewing past the burner and
canse such flow to create reduced pressure in said mixing
space, and said apertures and deflector means being posi-
tioned and arraneed to i.dmit and direct air from such
Passing ait stream into the mixing space in distinct jets
flowing obliquely forv.snd and inward in said mixing space
in front of said low-ilame zone, said gas port mcans being
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IN CENTER
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open disburse arca ef ‘cid miaing space, the inner
Seing of semulier capacity the outer eper-
wares, suid burner bods and dwergent walls being shaped
to divide ond outwardly deflect the air stream fiowing
pest the burner and cause such flow to create reduced
pressure in said mixin? space, and suid aperiures being
|
23
35
ing space. a
M4. A high turn-down gas burner adapted for orera-
tion in an air stream flowinz forwardly rau the burner
ata velocity of the order of 1560 to 4000 tect per min-
we, comprising an ecioneated burner body definine a
gat fuel supply passeze and havin an etoncated forward
well to lie transversciv of the direction of the air siream,
seid wall havir.g gas port meant ef @ series of points along
its length, flame shicling walls extendine forward from
adjacent the sides of the body in spaced relation along
opposite sides of suid cas port means, definine a low-
flame zone in front of said cus port means, mixing plete
walls extending obliqucly forward and outward from said
shiclding walls in ci:sercont relation at an ir laded envle
of mare than 30°, said wails dehmne @ fersardly widen-
ing trough-shaped mixing space forwardly of said cas
port means, said mitinz space being forwardly wide open
for fee and open dist isurce communication with the pats.
ing cir stream, said urine plate wails Projectine Ieterally
of said burner bods to edectively shield ti:
from the gir impin > ne
ing plate walls,
45
50
being smaller than the wall
having @ tetal arca sw
open discharce arca of
y deflect the cir stream flowing raw
the burner ond cause such flew to create reduced pressure
in said mixing space, and said epertures being posinoned
end erranged to etmit ond direct mr from such Passing
Gir stream into the mitine Spoce in distinct jets flowing
obliquely forward end inward in said mixire spece in :
front of said low-fl:me zone, said cas port meens being
operable t0 dische-2e vuriable amounts of cas fucl from
sid burner body to said tow fame zon end mixine spoce
whereby to provide low flume combustion in said cone
ively higher flame combustion involving
C3
wall to lie transversely of the direction of the cir stream,
gid wall having cas port means at a@ serics of points h
along its length, flame shielding wails extending 15. A turn-down rcuo gas burner for operation
from edjacent the sides of the body in spaced relation in and for h io a low p ¢ air stream
along opposite sides of said gas port means, defiung a 5 ward past the burner at @ velocity of the order of 1500
low flame zone in front of suid gas port means, mixing to 4009 fect per minute, comprising in combination, an
plate walls extending obliquely forward and outward burner body having for connection
from said shielding walls im divergent reia:ion of an in- @ supply of gas fucl and luving @ forward wall
duded angle of more than 30°, said wails defining a for- transversely of the direction of the air stream, gas
wardly widening troush-shaped mixinz space forwardly 19 means located along said forward wall, wall means
of said ges port means, suid murine space ocing forwardly fendinz forwardly from suid forward wail along opposite
wide open for free and open discharge communication sides of said port means; said forward wall, gas
with the passing air stream, said mixing piate wails pro- means, and wall meens providing @ variable low
jecting laterclly <‘ said burner body with their back burner for variable low-rate combustion of combusnible
foces positi to Le exposed to the ir strecm fiowing 15 gas fuel in @ zone substanticlly shielded from the i
post the burner, a piurality of apertures in szid mixing air stream ond in which at higher combustion rates gas
plate walls spaced bor: longitudinuily thereof and et dif- fuel can flow forwardly from said gas port means,
ferent distances from said burner body, scid apertures ing platcs extending obliquely forward and out
being smalicr than the wail arces between the some end from said wall means in widely i
having ¢ tor: orca substantially less than the forward 20 included angle of wot iess than 30° and defining ot the
4,
16. A ges burner system, comy ising a high
cast burner and means jor fererating a low pressure eir
stream havine @ sudstannelly constant velocity within the
range of up to appresimately 4000 fect Per minute for
flwine forwardly past tie burner, said burner includine
an eluncuted burncr body, cas port means et @ Series of
points aiong the burner body, shielding walls extendins
forwardly jrom a@djucent the sides of the body in spuced
relation along opposite sides of said cas port means defin-
ing a low-flame zone in front of and immediately adjacent
said gas port means and independent of said air stream,
means including said cas port means for cautinge a com-
bustible mixture to exist in said low-flame zone, mixin
plate walls supported on said shielding walls and extending
forward end outward therefrom in eradually divercent
relation, said walls defining a forwardly widening trough-
sheped mitine space forwardly of said gas port mcans,
said mixing space being forwardly wide open for free
eren discharge communi
stream, said ming
¢ past the burner, a plit-
ting plate walls spaced at
burner body, said burner
diflerent distances from said
N CENTER
COPY
19
divergent walls being shaped to divide and out-
ueetee the air stream flowing past the burner to
cause such flow to create reduced pressure in said mixing
ond seid apertures being positioned and arrangca to
wnat end direct cir from such passing air stream into the
mixing space in distinct jcts flowing obliquciy ferward and
inwerd in said mixing space in front of said low-tlame
zone, said gas port means being operable to discharge
reriable amounts of gas fucl from said burner body to
said low-flame zone and mixing space. :
17. A gas burner system, comprising a high furrdown
burner capable of operating at low, intermediate and
figh fring rates, and mcans for xe ing a sub iully
constont low pressure air sireem having @ siwbstuniially
constant velocity of not more than approximately 4°00
feet per minute for flowing forwardly past the burner,
aid burner includine an elurvated burner body, gas port
meons at a serics of points aiong the burncr body, slucid-
ing walls extendine forwardly trom edjacent the sides of
the body in snczed relation clone opposite sides of said
ges port mec-:s and defining a low-fizme zone in front of
and immediately adjacent said gas port means, inciuding
ssid gas port means for causine a combustible mixture to
aist in said low-flame zone, mixing plete walls supported
from scid shielding walls and extending forward and vout-
vard therefrom in divergent relation to define forwardly
of said gas port means a forwardly widening trouch-shaped
mizing space that is forwardly wide open for free and
open discharge com:munication with the passing air Stream,
said mixing plate walls projecting taterally of said burner
body with their beck faces positioned to lie exposed to
the constant velocity air stream flowing past the burner,
a plurality of apertures in said mising plate walls speced
at diferent distances from said burner body, said uper-
tures being positioned and arranzed to admit and direct
part of the air from such passing air stream into the mix-
ing space in distinct jets flowing obliquely forward and
25,626
25
A-13
20
inwerd in said mixing space in front of said low-flame
zone, said jets being of substantially constant configuration
irrespective of whether the burner is operating at low, in-
termediate, or high firinz rate. said burner body and mix-
ing plate walls being shaped to divide and outwardly de-
flect the air stream flowing past the burner such that the
balance of the air stream not admitted throush the aper-
tures passes along said wails and past the burner to create
@ reduced pressure in said mixing space, said gas port
means being operable to discharge variable amounts of
gas fucl from said burner body to said low-flame zone
and mixing space to cuuse at intermediate and high firine
rates admixture and combustion of said gas fuct and sa:l
air jets thereby heating that part of the wir that is within
suid mixing srace, and finally to cause the air so heated
fo pass forwardly of the burner to reunite with and hect
the balance of the air, without appreciably increasing ti:s
velocity or pressure vf said balance of the air and there-
fore of the air strcam flowing past the burner.
References Cited in the file of this patent
or the original patent
UNITED STATES PATENTS
1,536.631 May 5, 1925
2,018,582 UNE ccnicciatiienitienians Oct. 22, 1935
2,333,531 ee ee ----- Nov. 2, 1943
2,588,728 Hundstad Mar. 11, 1952
2555900 0 8=6Way etal. .............. May 6, 1952
2.606.014 ee EER ~~ Aug. 5, 1952
2,649,907 I eitiininsiicsinctniitias Aug. 25, 1953
2,759,721 Aug. 21, 1956
2,853,284 Fi Sept. 23, 1958
FOREIGN PATENTS
219,678 Nov. 27, 1924
364,063 ---- Dec. 30, 1931
489,210 = Canada ~-............ Dee. 30, 1952
COPY BOUNL
—
ADDENDUM II A-14
EXCERPTS FROM DISTRICT COURT'S
FINDINGS OF FACT
[Because there was no District Court
“opinion” as such, and this Court's Rule
21-1-i probably did not contemplate encum-
pering this petition with 116 pages of find-
ings, even if reasoning is there included,
the Clerk of the Supreme Court was consulted.
At his suggestion, ten copies of the printed
joint appendix used in the Court of Appeals
have been furnished. Some findings, mainly
those to which reference is made in this
petition or in the Opinion of the Court of
Appeals, comprise the present appendix. The
entire Findings of Fact and Conclusions of
Law are found in the white volume at Pages
472 to 551 and also (without its record
citations) at 171 USPQ 138-165. Finding 9
incorporates by reference a Stipulation of
Uncontested Facts found in the white volume
at pages 37-74,
[Each Finding included here is complete,
and hence no deletions are indicated. The
inclusion in this selection of findings re-
lied upon by the Court of Appeals, if recog-
nized by substance when the Court did not
give a number, does not connote concurrence].
TOO CLOSE IN CENTER Z
COPY BOUND
A-15
6. Maxon’s pre-trial papers submitted pursuant to
this Court’s Pre-Trial Order limited the infringement
charge to Claims 3,7,8,10,12,16 and 17 of the Reissue pat-
ent in suit, of which the first four are original claims.
By Order of this Court granting Maxon’s motion to sev-
er, the only issue of infringement here for decision is
as to the four original claims, claims 3,7,8 and 10, the
three reissue claims being held for later trial along with
issues of intervening rights under 35 U.S.C. Sec. 252.
Eclipse also presents for decision here the question of
whether or not Maxon has been guilty of such inequit-
able conduct, unclean hands and laches as to bar it
from maintaining this action. Both parties request
costs, expenses, and attorneys’ fees. Maxon also re-
quests trebel damages for Iclipse’s alleged knowing, de-
liberate, willful and wanton infringement, an account-
ing and a permanent injunction.
7. Only the infringement of claims 3,7,8 and 10 of
the reissue patent are in issue, Eclipse having admitted
the original patent 3,051,464 is valid, and therefore the
claims in issue here are valid by virtue of the fact that
they are identical to the same claims in the original
patent. Maxon charges direct infringement, contrib-
utory infringement and inducing infringement
C1370 under 35 USC Sce. 271. While some of the claims
of the reissue patent have already been held valid
in this circuit in Maxon Premix Burner Co. vy. Mid-Con-
tinent Metal Products Co., 279 Fed. Supp. 165 (D.IIL
1967), they are not the claims involved here.
18. Kclipses’s immediate discontinuance of the manu-
facture and sale of its infringing “AS” burners
C1377 after institution by Maxon of Civil Action 62-C-61
and the “confidential” and voluntary submission
by Eclipse’s patent counsel to Maxon’s patent counsel
of a print of Kclipse’s Drawing 3TH-1754 and a print
of the 1-22-63 Spielman sketch in order to disclose to
‘(OO CLOSE IN CENTER |
A-16
Maxon what Eclipse tntended to place on the market
as 2 non-infringing substitute wide range line burner es-
tablishes a cognizable measure of good faith on the part
of Eclipse.
— 483 —
25. Further, with respect to the “confidential” subinis-
sion of Kelipse’s drawings, Maxon correctly points
C1380 out that a confidential relationship cannot be cstab-
lished by a unilateral act of subinission with a
gratuitous statement of submission on such basis. It is
also reasonably forseeable that Maxon’s counsel would want
to inform his client of the substance of the drawings, be-
fore giving patent clearance thereon, and indeed had the
duty so to do or was without inherent authorization to do
otherwise where the matter related to termination of pend-
ing litigation. Concomitantly, it is reasonably foresccable
that Eclipse might fairly assuine that by Maxon’s silence
or failure to advise of filing of the reissue, it acquiesced in
Eclipse’s contentions of nonmirimgement by the new de-
signs, and that Maxon would foresee that Eclipse would
be spending funds in designing, enginecring, advertising,
and marketing of new burners. It is fundamental that at-
tempting to “invent around” a patent is a beneficial conse-
quence of the patent system; unfortunately for Eclipse it
did not suceced but is not to be harshly penalized for the
mere act of trying, in good faith to do so. While these and
the facts in paragraph 24, negate Maxon’s alleged unclean
hands and bad faith, nevertheless on balance, aflirmative
refusal on the part of Maxon or its counsel to accept and
review the drawings except on the understanding that they
would be reviewed by Maxon’s technical personnel would
be a significant factor in establishing a proper basis for
Maxon’s request for attorneys’ fees, depending, of course,
on other relevant and attendant factors.
POOR COPY
A-17
27. Maxon accuses Eclipse of delilerate deception in
misleading Maxon away from the exact constraction of the
“All” burner. Maxon points out that the March 12 draw-
ings do not represent the later actual “Ali” construction.
Oa July 20, 1965 KEclipse’s patent counsel, scent to Maxon's
patent counsel a print of Eclipse’s Drawing 4711-2500 (Ex-
hibits D-11P and PX-2SC) and an accompanying letter
(Exhibits D-110 and PX-120) pointing out in detail the
various reasons why Eclipse considered its “AH” types of
burners would not infringe any of the ten claims of Max-
on’s original Patent No. 3,051,364. Maxon notes that
Eclipse’s Drawing 4T1I-2500 is not an accurate iilustration
of Eclipse’s commercial “All” burner since it shows the
apertures in the outwardly divergent, fame confining walls
as being of uniform size instead of non-uniforn size. Thais
discrepancy is not of convincing legal significance Lecause
at the time Maxon had access to Eclipse’s “AII” type barn-
ers in the hands of Maxon’s castomers, and had in its pos-
session Eclipse’s Bulletin 11-100 (Ex. DDX-6C) published
in April of 1964 and showing non-uniform holes.
30. Secondly, there is no hasis for laches because of de-
fendant’s own conduct. Although defendant asscris that the
relevant period for laches rans frum the fall of 1963 until
October 12, 1967 (Defendant's Pretrial Brief, page 9+), the
uncontradicted evidence establishes that plaintifi’s manage-
ment had no actual knowledge of the fully infringing con-
struction of the accused asscinblies until the peril of Feb-
ruary-May, 1966. On the contrary, Maxon was misdin cited
on two occasions as to the true construction of the accused
burners. Specifically, in connection with the settlement of
the previous lawsuit between the parties, defendant's coun-
sel sent a sketch of a proposed burner construction, PX-
6B and 26C with his letter of March 12, 1963 (PX-121).
Eclipse never manufactured a burner assembly having the
A-18
internal construction shown in PX-26B, and the in-
C1384 ternal construction cannot be ascertained from PX-
26C (R. 2157-72). Furthermore, at that time defen-
dant had drawings of the All assembly that it actually
later made (R. 2878-82). On July 20, 1965, counsel for
Eclipse sent Maxon’s counsel a second drawing which pur-
ported to be the AH burner manufactured by Eclipse (PX-
12.0, 2SC; R.2169). However, this drawing, like the carlier
one, showed a burner having mixing plates with uniformly
sized openinzs, contrary to the construction of the burner
that was actually being manufactured by Eclipse at that
time (R. 380-S1, 1919, 2168-72). In January, 1966, on the
advice of counsel, Maxon decided to actually purchase an
AH burner (R. 389, 1920). This burner was examined and
tested during February-May, 1966 (R.389). It was at this
time that Maxon first realized that Eclipse was manufac-
turing and selling a burner having non-uniform apertures,
and in their view had appropriated each and every feature
of the Yeo invention (R389, 1920). At this time, both
plaintiff and its counsel! were actively involved in pre-trial
activities in Maxon v. Mid-Continent (KR. 390). However,
immediately after the termination of this case, Eclipse was
given notice of infringement on October 12, 1967 (PX-
12Q).
54. After some experimentation with various shielding
techniques, Yeo and Waid realized that they were making
a hasie error in treating the air stream asa problem rather
than as a helper. In January, 1957. they conceived the idea
of a burner that harnes<d the air stream and made it work
for them instead of against them (R. 276, 884-S5). The
invention conceived by them was the combination of a low-
fire burner structure, a shielding wall structure, and a
mixing plate structure (R. 276, $85-S6). Because of its ap-
pearance, the first model developed was referred to as a
“Cabbage slicer”. Thix burner was perfected and tested by
June of 1957 (R. 886).
POOR COPY
COPY PRINTED CLOSE
-1
A-1% .
68. As Mr. Yeo testified at trial, the AII burner proper,
which is embodied in each of the AH burners and family
of burners, has all of the elements of claim 3 of the patent
in suit, which may be generally described as a low-rate .
burner structure, shielding wall means, and mixing plates.
As set forth in more detail below, this combination of ele-
ments, as embodied in the accused burner assemblies, in-
fringes claim 3 (R.1014).
72. In addition, the operating and performance charac-
teristies of defendant's “burner proper,” by itself or as em-
bodied in the accused assemblies, are the same as the op-
erating characteristics of plaintiff’s Airflo burner, also
embodying the Yeo invention. *
*For example, the defendant's “burner proper,” the ac-
eused assemblies, and plaintiff's Series 58 burner all have a
turn-down ratio of at least 25 to 1, a high heat release per
foot; a capability of operating in an air stream having a
velocity of about 1500 to 4000 ft. per minute, a low-fire com-
bustion occurring independently of air from the passing
air stream, a mixing space shielded from the passing air
stream by mixing plates, a standing array of forwardly
converging jets of air; a gas path action on the mixing
plates, a standing array of jets which provide vacwwn
pockets that produce gas paths for spreading gas onto the
mixing plates, a smooth progression of combustion from
low to a high fire; a progressive acration for higher rates
of combustion, uniform distribution of heat into the air
stream; air-gas mixtures supplied throughout many firing
rates within its normal operative range, a pressure drop
across the mixing plates, an intense, nested, blue flame. in-
terlaced fingers of flame clearly revealing a standing array
of air jets, a low-fire flame having a narrow ribbon charac-
teristic, an intermediate-fire characterized by fingers of
flame at the inner rows of apertures, a high fire in whieh
flaine co-acts with all of the jets from all of the apertures,
complete combustion at all firing rates, high-quality com-
bustion at all firing rates, a flame front that moves forward-
plates; production of carbon monoxide limited to 11 ppm
or less; extremely low oxides of nitrogen (less than 5
ppm), no aldehyde odors, a comparable velocity of jet flow
through apertures of the mixing plates, capability of op-
erating in the same way in a small duct or a large duct,
air from the air stream used for combustion at intermedi-
and high fire, and gas-rich fuel used at high fire (R.
0 EDGE POOR COPY
A-20
Plaintiff clearly demonstrated with tests and color
C1415 photographs that the operation of the AH burner
proper in a moving air stream is unaffected by the
piece-by-piece removal of the associated ducting and dis-
tributor plate (PX-40C 1-5 through 40 CCCCC 1-5; R. 1054-
70, 10S4-S6). Coversely, plaintiff also demonstrated that a
Maxon Series 62 burner, embodying the Yeo invention, op-
erates equally well when surrounded by small ducting simi-
lar to that surrounding the AH burner and family of burn-
ers (PX-43A 1-4 & 444A 1-4; R. 1070-74, 1082-84). From
these demonstrations, it ean be concluded that it makes no
difference to the performance of the burner if itis ina
large duct where plaintiff's burners are ordinarily em-
ployed or in a small duct, such as that surrounding the
“burner proper” in the accused assemblies (R. 1974-
C1416 78; 1082-84, 1923.24), Thus, from every structural,
functional, and performance standpoint, the Yeo
invention, as defined by asserted claim 3. is found in de-
fendant’s “burner proper,” by itself and as embodied in the
entire family of accused assemblies. Accordingly, claim 3
is infringed.
84. From its analysis, Eclipse concludes that (1) the
term “independently of” means that the low rate burner
can take no air from the passing air stream and that (2)
the term “independently of” distinguishes premix-type from
raw gas low-fire burners.
85. The first conclusion is untenable, since it implies
that there is some magic in the source of the air supply.
Eclipse’s own “expert” testified that the burner doesn’t
know and doesn’t care where the air comes from (R. 3165).
Farther, the patent in suit itself states that some air
C1423 can be taken from the air stream even when the low-
fire burner is fed with air-gas mixtures (PX-1, Col.
10, lines 45-56, R. 3311).
86. As to the second conclusion, even if the phrase “in-
dependently of air from the passing air stream” limits the
POOR COPY
A-21
claimed low-fire burner to the use of air-gas mixtures
(which it does not), defendant overlooks the fact that the
low-fire burner of the accried assemblies uses air-gas
mixtures supplied to the burner body (U.F. 73). While
these mixtures may be outside the combustible range, im-
perfect practice of an invention does not avoid infringe-
ment.
87. The shielding wall element calls for “combustion”
taking place “independently of and shielded from the pass-
ing air stream” (R. 973-74, 1849-50). In accordance with
the meaning of the language itself, “Independently of”
can be construed to mean undisturbed and unharmed by the
passing air stream (R. 973-74); “shielded from” is con-
strued to mean that the combustion is protected and sepa-
rated by the shielding walls from the passing air stream
(R. 1850, 3518-21).
100. Although the language appears only in the pre-
amble, and therefore is not a requisite element of the claim,
the claims also state that the burner in accordance with :
the Yco invention is a “high turn-down ratio gas burner,” —
and is “for operation in and for heating a low-pressure [|
‘air stream flowing forwardly past the burner at a velocity §
of the order of 1500 to 4000 ft. per minute”. Eclipse ~
admits that the AH burner and family of burners have a. ©
turn-down ratio of at least 30-1, which is a high turn-down
ratio as defined by the patent in suit (U.F. 33, R. 983-84; 4
PX-1, col. 2, lines 1-4, col. 4, lines 39-47). As to the velo- ;
city past the burner, it has consistently been =~
C1432 the practice in the art to measure this velocity at
the downstream end of the mixing plates, which
is ordinarily the point of maximum constriction in the
duct (R. 986-87, 1427, 1848). Velocity at other points ;
in the duet does not affect the burner performance, and
is unimportant (R. 1427-29). In fact, the measurement
of velocity past the burner is simply another way of mea-
POOR COPY
suring pressure drop across the burner (R. 1428-29). When
profile plates are employed, these profile plates are aligned
with the forward face of the burner, and the velocity
is measured at this point, again the point of maximum
construction (R. 240, 1034). Prior to the filing of the ap-
plication for the Yeo-et al patent, it was known and recom-
mended to use such profile plates with burners, including
burners embodying the Yeo burner invention, in order
to achieve the proper velocity (R. 1260-62). It is noted
that when the defendant measured velocity for its motion
pictures and tests, this velocity was invariably measured
at the profile opening which was at the forward face of
the burner (R. 2666). It is uncontradicted that, in normal
operation, the accused Eclipse burners have an air stream
velocity in the range of 1500 to 4000 fect per minute past
the burner at the perforated profile (U.F. 113-140, and
Eclipse’s own measurement shown that the velocity through
. the perforated profile would be about 2677 feet per
C1433 minute (PX-27G; R. 699, 989-90). The fact that velo-
cities of less than 1500 feet per minute are encount-
ered behind the forward face of the aceused burners (R.
859), is immaterial, as this is not the normal place to mea-
sure velocity. Such lower velocities are, in fact, also
encountered during normal operation of the Maxon ATR-
FLO burners (R. 1040).
1. Defendant's Mixing Plates are “Arranged for Ex-
posure to the Air Stream”
103. The expert witness of Eclipse testified that a file
wrapper estoppel has been created which limits the claims
to a burner in which the mixing plates are arranged for
exposure to the air stream (R..3208). The presence or
absence of a file wrapper estoppel on this point is irrelevant,
since the mixing plates of the accused burners are arranged
A-22
Q.23 A-23
for exposure to the air stream as recited in the claims.
Maxon urges no broader reading. It is, of course, Eclipse’s
contention that the “air stream” is not the air moving
over the burner in the small duct (R. 3177-82). As pre-
viously discussed, this contention is contradicted by the
evidence of record that there is an air stream in the small
duct of the accused burners, and that this air stream
passes over the backs of the mixing plates (U.F. 45(b)-(e),
85, 108-09; R. 337, 2746-50, 3182).
C1435 104. Eelipse’s position rests upon its contention
that the “AIL” burner assembly does not “utilize the
air streatn itself... to provide the operating pressure condi-
tions.” Ilowever, the proper inquiry is whether the “burner
proper” utilizes the air stream itself to provide the opera-
ting conditions—and it is undisputed that it does (R. 2746-
47). As admitted by Eclipse’s own witnesses, if the air
| stream in the small duct is shut off, the accused assem-
blies ‘are each rendered inoperative (R. 2123-24, 2746-47).
C1438 3. The Claims do Not Exclude a Low-Rate Burner
That Takes Air for Combustion from the Passing
Air Stream
109. The expert of Eclipse contended at trial that the
file history (PX-2A) ereates an estoppel against reading
the claims on a low-rate burner structure which takes air
from the air stream (R. 3227). The file wrapper simply
does not create such an estoppel. In support of its position,
Eclipse refers to a summary of the claimed invention
which appears at pages 182-S4 of the file history (It. 3291-
27). This swnmary simply states that the invention comn-
prises three clements—a variable low-rate burner, shielding
walls, and mixing plates. The applicant’s attorney gave
a paraphrased description of cach of these elements. Re-
garding the low-rate burner, the applicant's attorney sim-
ply stated that it was “operable over a range, say § to 1,
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A. 24 A-
independently of air stream air, when supplied with com-
bustible air-gas imixtures . . .” (PX-2A, p. 182).
110. The foregoing language is a paraphrase of the
claim language. In addition, it is important to bear in mind
that the summary of the invention at pp. 182-Si of the
file history was made in the context of the claims being
“distinguished from the jet engine patents” (R. 3221-32).
Significantly, the Way patent has no low-rate burner struc-
ture separate and distinct froin its perforated flame basket.
In the Way patent, all of the low fire combustion takes
place in the air stream itself which, in essence, flows
through the flame basket (R. 3518-21). The asserted
C1439 claims merely require that the low-rate combustion
be independent of air from the passing air stream.
This is true in both the accused assemblies and in the Yeo
invention, but is not true in the jet engines (R. 351S-21).
Moreover, even accepting Eclipse’s premise that the para-
phrased language is controlling this language nonetheless
covers a raw gas, a partial premix, or a full premix low-
rate burner structure whose low-rate combustion is inde-
pendent of (unharmed by or unafiected by) the air from
the passing air stream (IR. 973-74. 1849-50). Parenthetic-
ally, defendant Eclipse concedes that low-fire combustion
in its low-rate burner is “shielded from” the air stream in
the small duct (Defendant's Brief, p. 365; R. 342).
—534—
VIIL DEFENDANT IS NOT FOLLOWING THE
PRIOR ART
129. As part of its non-infringement defense, Eclipse
asserts that it was “following the prior art”, and not the
teachings of the Yeo ct al patent. In support of this conten-
tion, Eclipse relies upon (1) patents relating to jet engines,
(2) prior art burner patents, and (3) a device known as the
Western Produe's Heater. This defense is not convincing.
POOR COPY
A- as A
proper” of Eclipse is covered by the asserted claims,
and is unlike the teachings of the prior art.
A. The Jet Engine Patents Do Not Restrict the Claimed
Yeo et al Invention
130. The funetion of a jet engine is to produee thrust,
and heat is an unwanted by-prodnet producing design
complications (R.3462, 3505-06). In contrast, the purpose
of the burners involved in this lawsuit is to generate heat
(R.3262, 3506). A jet engine has a turbine at the rear of
the combustion section which drives a compressor at the
forward end of the combustion section to build up a large
mass of high-pressure air (R.5059-60). None of this re-
lated equipment is found in wide-range line burners of the
type involved in this litigation (R. 3491, 3506-07). The
velocities involved in jet engines are extremely high, and
this also contrasts with the burners involved in this law-
suit, wherein the velocities are much lower (R.5507-09).
Specifically, velocities in jet engines range anywhere from
6,000 to 18,000 feet per minute, whereas plaintiff's Airflo
line burners are designed to operate in air moving at a
velocity of about 1500-4000 feet per minute (R. 3449-43;
3o07-0S). The larze volume passing throuch the smal)
struciare in a jet engine requires pressures from about 4
to 150 pounds per square inch. In contrast, the wide range
line burners im suit operate at pressure of around
C1450 % pound per square inch (R508). The speed of
the air stream in jet engines ix variable, while the
speed of the air stream in most air-in-motion applications
remains consiant (Ro441, 3007). Inlet air temperatures
in a jet engine range from about 300 to 700 or 750° F.,
while Maxon’s Airflo burner in a make-up air application
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A-2%
would operate at inlet air temperatures which depend upon
the climate, and would vary from around 60 or 65° down
to minus 20° F. (12.3509). In oven-heating applications,
the air approaching the burner is frequently of the order of
300 to 350° PF. (1.3509). Downstream temperatures in a
jet engine range from 1000 to about 1800° F., while plain-
tiff’s burner produces downstream temperatures in a range
of 14 to 80° F. in make-up air applications, and as high
as 1000° F. in some special drying applications (R. 3509-
10). The jet engine combustion devices utilize liquid fuel,
as contrasted with the gas fuel used in the wide-range gas
burners involved in this litigation ( R.3444, 3511). Jet en-
Sines burn with a yellow flame, and produce significant
quantities of pollution, so that they would be unsuitable for
make-up air, process fresh air, or even recirenlating appli-
cations (R. 3455-56, 3913). Maxon’s expert Witness, Mr.
Robert H. Yvo, testified that the jet engine patents are not
the kind of art to which one skilled in the line burn-
C1451 er art would turn to design a wide-range Jine burner
(R. 3514, 3533). Finally, jet engine combustion de-
Vices were specifically found to be non-anaozous art by
another Judge of this Court in his decision in Maxon Pre-
mix Burner Company. Inc. y. Mid-Contine
Co., 279 F. Supp. 164 ND. Ti. (1967). For all of these
reasons, the jet engine combustion devices have diferent
performance characteristics, operating principles, and en-
vironmental conditions than those of the Yeo burner inven-
tion.
nt Metal Prods.
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A
Sy aay sr nee fT
TO Ee Te ee eT Le eee eT ee Pee err e
ADDENDUM III
DISTRICT COURT'S A-27
DECISION ON POST-TRIAT. MOTIONS
(Filed August 23, 1971)
Marovitz, U.S. District Judge
Subsequent to trial, and decision in this case’ dated
July 2, 1971, the parties have filed a series of iive inter-
related motions. The motions are directed to aspects of
the findings of fact and conclusions of law, and to pro-
cedures relating to prospective appeals and future trial
of issues relating to claims in the reissue patent in suit
No. Re. 25,626 which were not in the original patent
No. 3,051,464.
The parties have presented the court with bricfs and
memoranda on the various points raised by the motions,
and they have had an opportunity to present their views
in oral arguinent before the cour: on August 9,
C1009 1971. The court having been fully advised in the
premises, rules as follows on the Motions.
PLAINTIFF'S PROPOSED WRIT OF PERMANENT
INJUNCTION
Pursuant to this court’s July 2 decision, the plaintifz
has proposed a writ of permanent injunction which was
submitted to defendant’s counsel for approval as to form.
Because of defendant’s position on the Motions Ciscussed
below, defendant’s counsel has refused to give its ap-
proval.
Upon review, the proposed writ. of permanent injune-
tion as proposed by plaintifz will not be entered because
its scope exceeds paragraph $ of the Judgment Order
entered with the Memorandum of Decision dated July
2, 1971. The proposed writ must also be modified pur-
— 560 —
A-28
suant to this court’s ruling below on defendant’s motion
with respect to Finding of Fact 127.
Attached hereto is the court’s own writ of permanent
injunction which shall be entered within ten days from
this date.
DEFENDANT'S MOTION FOR PROMPT TRIAL OF
SEVERE ISSUES
Defendant has moved that this court set a prompt
trial date for trial of the issues which were severed
early in this case, those relating to the validity and
infringement of Claims 12, 16, and 17 of patent
C1010 Re. 25,626. These claims were broadened by the
reissue procedure and were not present in the
original patent No. 3,051,464.
Defendant’s Motion is denied. Plaintiff, in oral argu-
ment before this court on .\ugust 9, 1971 has indicated 3
that the issues with respect to these claims may be
rendered moot in the event that this court’s decision
on the original claims 3, 7, 8 and 10 is affirmed by
the Court of Appeals, should there be an appeal by de-
fendant. Apparently, the reasoning is that if the accused
devices infringe the original claims 3, 7, 8 and 10, there
is no need to have another trial to determine that the
devices also infringe the claims broadened in the reissue
procedure.
This motion more suitably lies in the mouth of plaintiff ’
who has brought the original complaint. Indeed, it may :
be questionable to go forward on questions of intervening
tights with respect to Claims 12, 16 and 17 in view
of the fact that Stipulation Of Uncontested Facts No.
101 states:
“If any one or more of asserted Claims 1 through
10 of the reissue patent in suits is adjudged in-
pial Pa WS
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— 561—~— b- 29
fringed, defendant has acquired no alleged in-
tervening rights after the grant of the original
patent No. 3,051,464.”
Further, defendant has brought still another motion
(see below) in which it seeks to contest the validity
of the original Claims 3, 7, S and 10. If the Court of
Appeals should rule that plaintiff has this right,
C1011 then it would be advisable to include that issue
in any subsequent trial. If this motion of defen-
dant was to be granted, there could be three trials.
This delay of any trial on the remaining claims of the
reissue patent to see if the question of validity is to
be added is a better conservation of judicial energy than
iminediately proceeding with issues that may become
moot.
While the general principle of avoiding piece-meal liti-
gation is appropriate in patent cases, it is felt that in
view of the situation presented, it is within the bounds
of the court’s discretion to deny the motion for im-
mediate trial of severed issues. This is particularly the
case where defendant in an earlier consent judgment
between the parties as to the original patent No. 3,051,464
consented that original Claims 1 through 10 were valid,
and did not raise issues of validity during trial. The
issues at trial were confined to those of non-infringe-
ment, laches and unclean hands. Paper Converting Ma-
chine Co., Inc. v. FMC Corp. 409 F. 2d 344, 161 USPQ
(7th Cir. 1969), Cert. Denied 396 U.S. $77. :
DEFENDANT'S MOTION FOR LEAVE TO CONTEST
VALIDITY OF ORIGINAL CLAIMS 3, 7, 8 and 10
Defendant also moves for leave to contest validity of
original Claims 3, 7, 8 and 10. As noted above, defendant
did not contest validity of these claims during the origi-
nal trial, restricting its attack on the patent to the scope
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a
—562— | A-30
of the claims as relating to its non-infringement de-
fense.
C10i2 Defendant's position is that in view of the recent
Supreme Court case of Lear, Ine. v. Adkins, 395
U. S. 653, 162 USPQ 1 (1969) there is a strong public
policy which would permit the defendant to challenge
the validity of the patent in spite of the fact that it
has entered into a consent judgment of validity as to
these same claims in a prior suit between the same
parties.
While the results of licensee estoppel and a consent
judgment is effectively the same, in the sense that both
the licensee and the consent judgment defendant are
prohibited from challenging the validity of the patent,
this court is not convinced that the public policy applying
to a patent licensee, perinitting the challenge of validity,
extends to consent judgments. The Lear ease periits q
challenge by a licensee who has privately agreed with ;
the patentee not to challenge the validity, to do precisely ;
that in spite of the language of the contract. Ilowever, i
we have here the intervention of a court by entry of :
a judgment, although it be by consent and without trial
on the merits. It is the policy of the courts to encourage E
settlement. Defendant’s motion in effect pits the public :
policy articulated in the Lear case against the policy of i
encouragement of settlement. ;
However, this court, being cognizant of the strong pub- ;
lic interest in permitting full and free competition in p
the use of ideas which are in reality a part of the publie q
domain, is of the opinion that its present Order :
C1013 denying defendant’s motion inyolyes a controlling :
question of law as to which there are substantia] 4
grounds for differences of opinion, and that an imme- :
diate appeal upon the order may materially advance the 4
ultimate termination of the litigation, Therefore, should
|
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—— A-31
defendant proeced with an appeal in this case, this court
certifies this issue within the meaning of 28 USC See.
1292(b).
DEFENDANT'S MOTION FOR SETTING EQUITABLE
TERMS FOR CONTINUATION BY DEFENDANT OF
MANUFACTURING ACTIVITY
Defendant moves that any injunction issuing in this
ease be modified by a provision for setting of terms
upon which defendant will be permitted to continue its
present manufacture. Defendant urges that its manu-
facture was begun in good faith reliance on claim Jan-
guage which it, upon advice of counsel, felt limited the
claims in a manner which exclude its accused devices.
Defendant directs the court's attention to 25 USC See.
232 which empowers the eourt in equity to set terms
for continued wianufacture where claims have been
broadened by reissue. Defendant urges that here, where
the court has allegedly “broadened” claims of the re-
issue patent which were in the original patent, an analo-
Sous equity applies.
This motion is denied. There is no statutory support
for such a broadening of the powers of this court, and
defendant cites no case law in support of its posi-
tion.
C1014 DEFENDANT'S MOTIONS UNDER RULE 52 (b)
AND 59(¢) FOR AMENDMENT? OF FINDINGS
OF FACT, CONCLUSIONS OF LAW AND THE JUDG-
MENT ORDER
Defendant has brought a pair of interrelated Motions
basically coneerning its Finding of Fact 127 in this
court’s Memorandum of Decision dated July 2, 1971, Con-
clusions of Law No. 3 and paragraph S of the J udgment
Order. Basically, these all concern amending the finding
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RELA RRO Rh te.
PERO O eSre BVO
aE oe an J
_ ——
of fact to make provision for a ruling of non-infringe-
ment as to one type of defendant's AIL burner assembly
in which the holes in the mixing plate walls are of uniform
size. Defendant’s Motion is granted.
Defendant points out in its Motion that the last sen-
tence in the Findings of Fact 127 is inaccurate. This
Finding diseussed a prototype burner made in Septem-
ber 1963. The sentence in question stated: “This proto-
type burner made in 1963 had such uniformly sized aper-
tures, but were never sold commercially (U. F. 205;
PX-28C; R. 207980).”
Based on a review of the record as a whole, it appears
that there is substantial credible evidence to indicate
that one AIL burner having unifornily sized apertures
in the mixing plates was sold to the DeVilbiss Company
in Toledo, Ohio in September of 1963.
The testimony of Messrs. Spielman and Wilcox ade-
quately ties together defendant's Ixhibit No. 32A, an
invoice showing a sale of an AII burner on October
16, 1963, with the defendant's exhibit showing the aper-
tures of the mixing walls of Cefendant’s AIT burn-
C1015 er of that time were uniform (see defendant's :
Exhibits 341, plaintiff's Exhibits 20A-C, defen-
dant’s Exhibit 11P, and drawing No. 4PH-2560). Seeming
inconsistencies in the iestimony of defendant’s Witnesses 4
with respect to this matter are at best slight, and not
convincing of lack of credibility on this issue. The court
is convinced that a burner having such aperiures was
constructed, tested at the DeVilbiss Company, and sold
to that company in the Fall of 1963. It is clear from the
record that only thereafter, on November 4, 1963, that
the mixing plate apertures were changed to a non-uni-
form configuration.
Contrary to plaintiff's assertions, the question is not
one of commercial sale within the meaning of 35 USC
102(b) as compared to an ofier for sale. It is likewise
—564— A-32
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— 565 — A-33
not a question of whether the burner was constructed
by hand as compared to full connnercial production. Nor
js the matter a question of single sale being de minimis
in the sense of contest of venue.
The record as a whole supports the conclusion that
such type of burner, coming under the AH designation,
was actually made by defendant, offered for sale at a
trade show, and one was tested and sold to the De-
Vilbiss Company. This is adequate to establish that the
issue here is real, and that this court in considering
the question of uniformity versus non-uniformity of aper-
tures is not giving an advisory opinion on a hypothetical
structure. ,
C1016 Plaintiff argues that a tyne of AII burner havi ing
uniform aperiures in the mixing walls was not
in issue in this case, was not charged with infringement,
and was not adequately briefed or considered by the
court. However, the Complaint in this case puts in issue
all AII burners from the date of issuance of the patent
in suit in 1962 to the filing of the action in 1968. This
necessarily includes the AIL type burners in 1963 which
have uniform apertures in the mixing plate walls.
Further, Stipulation of Uncontested Fact 32 states
“Defendant's AIL burner and family of burners are
ithe accused burners in this action and include de-
fendant’s All burner, RAT burner, AIIO burner, TAIT
burner, TAIL-R burner, DAH burner, AH-D unit,
RAIH-D unit, AH-DS system, and AH-DP system.”
Uncontested Fact 136 states:
“The physical mocel of defendant’s ATI burner, dis-
played at the A.S.M. Show in Cleveland, Ohio in
October, 1963 had uniformly sized apertures in its
mixing plate walls.”
Uncontested Facts 205 and 206 also tend to the same
conclusion:
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— 566 — A-34
“205. Defendant’ ATT burner as initially made com-
mercially in 1963 had a burner body and diverging*
plate wall structure with uniformly sized apertures.
“206. On or about November 4, 1963, defendant dis-
continued the use of uniformly sized apertures in
its diverging plate wall structure and adopted non-
uniformly sized apertures in its diverging plate wall
structure in its AIf burner.”
C1017 From a review of the interrogatories and requests
for admission it is evident that plaintiff had every
opportunity to inquire into the structure of the pre-No-
veinber 4, 1963 AI{ burner structure, and in fact exer-
cised that opportunity.
It is clear from a review of the trial testimony and
argument in connection with the position of the parties
in this case, that plaintiff has conceded that the claims
in issue, Claims 3, 7, S and 10 of the reissue patent,
do not cover AIT type burners having uniform apertures
in the flame-confining walls. This was conceded by plain-
tiff’s expert witness and vice president, Robert H. Yeo,
who stated that where the walls had uniform apertures,
“infringement of that claim [Claim 3] would not. oc-
eur” (RR. 1152-55). This testimony was the same as to
Claim 7 (R. 1158). Since Claims §$ and 10 are dependent
from Claim 7, they are likewise not infringed. This was
confirmed by testimony of Mr. Yeo (R. 1159). Mr. Yeo
is one of the co-inventors.
tepresentations of counsel for plaintiff during the trial
confirms the. concession by plaintiff that the claims in
issue do not cover non-uniform apertures in the mixing
plate. Indeed, considerable argument on the issues of
Jaches and unelean hands concerned the change from
uniform to non-uniform apertures. Plaintiff cannot seek
to exeuse its laches by arguing that it did not know
that there had been a change from the non-infring-
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TEFEN UE Gets ay ene
a
a
we
—
—567 — —A-35
ing uniform apertures to the infringing non-uni-
C1018 form apertures, and then urge that the uniform
apertures should not be excluded from the cover-
age of the claims.
Plaintiff argues that defendant’s experts have stated
that there is no substantial difference between a burner
having uniform and non-uniform apertures in the mixing
walls. Based on this, plaintiff urges that it should not
be denied the opportunity to show that uniform apertures
fall within the seope of the claims based on the doctrine
of equivalents. However, the statements of defendant's
experts on which plaintiff relies, when taken in the full
context of the line of questioning at the trial, do not
support plaintiff's argument. The claims involved are
directed to burner structure, and not to method of opera-
tion, Even where burners having uniform apertures
found to have a performance equivalent to burners hav-
ing non-uniform mixing plate apertures, it does not fol-
low that the burners are legally equivalent. There may
be many different structures which achieve the same
end result, but which are not equivalent.
It must be recalled that the claims in issue specifically
call for non-uniformity of apertures. Independent Claims
3 and 7 state, in pertinent part:
“***the apertures at the inner portion of the mixing
space** “being relatively small***, the apertures at
outer portions of said mixing space being larger***.”
(PX-1, Rt. 375, 1152-55, 1158-61).
(1019 In view of the trial testimony of Yeo and related
concessions of counsel, it is not germane to the
present issue that the “non-uniform” limitation might not
be a material limitation, and could possibly be ignored.
This is not an interference. The limitation is in the
claims, and is concededly material in the sense that
if that element is omitted, there is no infringement.
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—
— 568 — A-36
Therefore, defendant’s motion shall be granted by de-
leting the last sentence of original Finding of Fact 127
and substituting the f ollowing therefore:
“**°The prototype AII burner was made in the Fall
of 1963 and had in the mixing plates thereof, aper-
tures of uniform sizes as shown in PX-28B. It was,
except for the uniform apertures, identical to other
types of accused AIL burners as otherwise exempli-
fied by PX-28C and Exhibits 11P and 34E, and as
established in the trial record (R. 702-3, 275-6). The
1963 prototype AH type burner was tested by The
DeVilbiss Company of Toledo, Ohio in September of
1963. Such burner was both accepted and purchased
by that company, the purchase being established by §
Kelipse’s invoice of October 16, 1963, No.594060 (R.
2169-70, 2217-22, 2289-90, and 2455-59; Ex, 832A), That
prototype AJIf burner, having uniformly-sized aper-
tures in the mixing plates as illustrated in Exhibits
PX-28B and Ex. 345 does not cone within the scope
of, or infringe Claims 3, 7, 8 and 10 of the reissue
patent in suit, as conceded by plaintiff, by reason
of the fact that such claims are each expressly limit-
ed or restricted to burners having mixing plates
with non-uniformly-sized apertures therein. Indepen-
dent Claims 3 and 7, from which Claims 8 and 10
depend, expressly state:
C1020 **** the apertures at the inner portion of the
mixing space *** being relatively smal! ; ae
apertures at outer portions of said mixing space
being larger ***) (PX-1, R. 375, 1152-55, 115S-61).”
This revision is entirely consistent with the original Find.
ing 128 in which it was found “that with the adoption
of non-uniform apertures, Eclipse came within the scope
of the patented invention.”
COPY ROLIND TOO Cirmoce weroan
— 569 —
In accord with this revision of Finding 127, Conclusion
of Law 3 should be clarified to read:
“3. United States Letters Patent No. Re. 25,626, as
to Claims 3, 7, 8 and 10 is infringed by defendant,
by its manufacture and sale of its accused burner
assemblies which include mixing plates having small
inner apertures and larger outer apertures therein.
Defendant’s manufacture and sale of its prototype
All burner assembly in October, 1963, having mixing
plates with uniformly-sized apertures therein did not
infringe any claims 3, 7, 8 and 10 of the United
States Letters Patent No. R. 25,626."
A-37
DEFENDANT'S REQUESTED CLARIFICATION
OF THE JUDGMENT ORDER
Finally, defendant requests clarification of the judg-
nent order to more specifically identify the claims in
issue. Although this matter would appear to be self-eyi-
dent, the court is in accord with such type of clarification
d accordingly, the judgment order paragraphs 4 and
j will be revised to read as follows:
“4. Judgment on the complaint is entered for the
plaintiff as to Claims 3. 7, 8 and 10.
1021 “5. Defendant's Counterclaim is dismissed with
prejudice as to Claims 3, 7, 8 and 10,
So Ordered.”
/s/ Abraham L. Marovitz
Abraham L. Marovitz,
U.S. District Judge
Date: August 23, 1971.
022-C1039 * *° «©
‘ENTER DoOnR COPY
a ll ie tt lh ie Mh i
COPY BOUND TOO CLOSE INC
A-38 -
In The United States District Court!
* * (Caption—Civil Action No. 68-C-132) * °
WRIT OF PERMANENT INJUXCTION
Defendant, Eelipse Fuel Engineering Co., (hercinafter
“Eelipse”), its officers, agents, employces, servants and
attorneys, and all persons in active concert or participa-
tion with them who receive actual notice of this Writ,
are hereby enjoined from directly or indirectly making
or selling, causing to be made, or sold, or offering to
make, or sell from this day forwarl any All burner
assembly or family of burner assemblies which include
in the mixing plates thereof smaller inner apertures and
larger outer apertures, such asx are included in type AIL
burner assemblies, type RAIL burner assemblies, type
AHO burner assemblies, type TAI burner assemblics,
type TAII-R burner assemblies, type DAIT burner assem-
blies, type AIL-D units, type RAII-D units, type AII-DS
systems, and type AII-DP systems, and any burner as-
sembly unit and/or system which embodies the inven-
tions of any of the Claims 3, 7, 8 and 10 of the United
States Letters Patent No. Re. 25, 626, and from con-
tributing to the infringement of, or inducing the infringe-
ment of any of said claims from this day forward as
to such burners.
/s/ Abraham L. Marovitz
United States District Judge :
Dated: August 23, 1971.
:
:
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(INTER POOR COPY
eo. A-39
ADDENDUM Iv
TEXT OF OPINION OF THE UNITED
STATES COURT OF APPEALS FOR THE
SE TH CIRCUIT IN THIS ACTION
(with added marginal cross-references
to related parts of the foregoing petition).
Nos. 71-1756 and \} Appeal from the
mm 71-1757 United States Dis-
trict Court for the
Maxox Premix Burxer Compaxy, Northern District
Inc. f Illinois, East-
Plaintiff-Appellee, ¢ mel Division. ;
vs. Case No. 68 C 132
Apranam L.
Ecuirse Fue, Exoixeerixe Co., Manovitz,
Defendant-A ppellant. 2 Judge. :
Arevep Juxr 9, 1972 — Decinep Seprenper 18, 1972.
Before Sprecnenr, Circuit Judge, Denrer, Senior Judge,* }
and Escunacn, District Jndge.**
Sprecuer, Circuit Judae. Eclipse Fuel Engineering :
Company appeals from a district court decision enjoining
Eclipse from infringement of a patent owned by Maxon
Premix Burner Company. Ine. Maxon cross-appeals, chal-
lenging a finding of non-infringement by a_ prototype
burner developed by Eelipse in 1963. '
ing industrial gas burners. For many years the parties
"Senior Judge James R. Durfee of the Court of Claims is sitting by Pet.
designation. Pp. 6
** District Judge Jesse E. Eschbach of the Northern District of (7)
Maxon and Eclipse are engaged in the business of sell- :
Indiana is sitting by designation.
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71-1756, 71-1757 2 “te 7
et.
to this appeal competed in production and sales of line
burners used for heating moving air by direct contact
with a gas flame. Operation of these burners revealed
that improvement was needed in several respects. The
operative range of a single burner was so limited that
multiple burners were necessary to increase the maximum
firing rate and the “turn-down” ratio of the burner ar-
rangement.’ The installation of multiple burners required
duplicate auxiliary equipment and a complicated control
system. The firing ratio in a multiple burner system was
not smooth and continuous and heat distribution was not
of a uniform pattern.
In 1955, Maxon began a development engineering proj-
ect which culminated in a line burner which operated with-
out the disadvantages described above. The new burner
was patented and immediately enjoyed commercial sue-
cess. This suit resulted from attempts by Eclipse to copy peE-1C
Maxon’s successful innovation.
Pope grog ere pence
Maxon’s improved burner was patented in 1962 under Eo
US. Patent No. 3,051,464. In 1964, reissue Patent No. Re
25,626, the subject patent in suit, was granted. The re- =
issue patent included additional claims but the claims held :
| infringed were all included in the original patent. The ‘s
district court held claims 3, 7, 8 and 10 infringed by :
Eclipse’s AH, RAH, AHO, TAH. TAH-R and DAIT burn- =
er assemblies, AH-D and RAH-D units, and AH-DS and
AH-DP systems.
The parties agree that claim 3 is representative of the
patent claims held infringed. Claim 3 is for a “high =
turn-down ratio gas burner for operation in and for heat-
ing a low-pressure air stream flowing forward past the p-10,1) =
burner at a velocity of the order of 1500 to 4000 feet per
mirute” and comprising in combination: 4
(1) “a variable low-rate burner for variable low-rate
combustion of combustible air-gas mixtures indepen-
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3 71-1756, 71-1757
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dently of air from the passing air stream and oper- p-12
able over a substantial turn-down range when sup-
plied at various rates with combustible air-gas mix-
tures;”
(2) a “shielding wall . . . connected to said burner
body and extending forward in laterally spaced rela-
tion from opposite sides of said variable low-rate
burner, said wall means defining in front of said vari-
able low-rate burner a shielded zone in which said
variable low-rate combustion can take place indepen-
dently of and shielded from the passing air stream
and in which at higher combustion rates fuel gas can
flow forwardly from said gas port means ;”
(3) “mixing plates extending obliquely forward and
outward from said shielding walls in widely divergent
relation and defining at the front thereof a forwardly
widening mixing space in open receptive communica-
tion with said shielded zone and having an open dis-
charge at its forward end, said mixing plates being
arranged for exposure to the air stream and for
shielding said mixing space therefrom, . . .”?
Felipse urges several grounds for reversal of the dis-
ict court judgment. It argues that the court erred in
efusing to make a finding on patent validity, in finding
fringement of the patent in question, and in refusing to
old that Maxon was estopped from bringing this suit on
ne basis of long term knowledge of and acquiescence in
efendant’s actions. We are unable to agree with these
ontentions. :
Eclipse insists that the district court judgment cannot
land becanse the decision did not include an affirmative
*Claim 7 differs from claim 3 in requiring the presence of “flame re-
ntion means” in the low-rate burner. Claims 8 and 10 are dependent
1 claim 7, claim 8 adding supply means to supply controlled amounts
id proportions of air and fuel gas to the burner, and claim 10 adding
ict means to form a low-pressure air stream passage about the burner
id air-propelling means to induce low pressure air to flow forwardly
| passage,
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p.15,16
a BER BET SPV Le SI RR SE OO RN I
71-1756, 71-1757 4
finding of patent validity. Maxon argues that Eclipse
waived its right to contest validity through a prior con-
sent judgment between the two parties and through its
concession during trial that validity was not in issue.
The earlier consent judginent followed suit by Maxon
in 1962 charging infringement of the original patent by
a prior Nelipse burner. This litigation concluded with a
settlement agreement in which Eclipse acknowledged va-
lidity of U.S. Patent No. 3,051,464 and agreed not to
manufacture or sell any burner covered by the patent
aims. Following this agreement, Eclipse _discontinued
production of the burner involved in that litigation and
introduced the burner now held to infringe reissue patent
No. Re 25,626. As noted above, the claims held to be in-
fringed by the reissue patent are identical to those in the
original patent.
Eclipse argues that the prior consent judgment does
not preclude it from challenging validity in this action
inder Lear, Inc. v. Adkins, 395 U.S. 653 (1969) and Busi-
ness Forms Finishing Service, Inc. v. Carson, 452 F.2d 70
(7th Cir. 1971). Lear held that a licensee was not estopped
‘rom challenging the validity of a patent notwithstanding
he licensing agreement. Business Forms held that the
‘ationale of Lear required that a party be permitted to
hallenge validity even though a prior consent decree had
ield the patent in question valid hut not infringed. The
‘onsent decree involving the patent claims in this action
ield the patent valid and infringed. We need not decide
vhether the distinctions hetween the two cases ean justify
| difference in treatment heeause we helieve Eclipse ef-
ectively waived any rights it might otherwise have to
hallenge the validity of Maxon’s patent throngh its ae-
ions during the course of the trial.
The trial court’s decision in this case, following a
enethy trial, was entered on July 2, 1971. Lear, Inc. y.
idkins, supra, was decided on June 16, 1969. Yet Eclipse
3The relevant district court finding reads as follows:
“Only the infringement of claims 3, 7, 8 and 10 of the reissue
patent are in issue, Eclipse having admitted the original patent
2,051,464 is valid, and therefore the claims in issue here are valid
by virtue of the fact that they are identical to the same claims in
the original patent.”
aE EAR i 6 tke TU VEE ETI POW Be LY CAE IAG
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p-15-17
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3
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p.8
p-145
ne9
UP Brings . — — eset ya % y ly CURE SPP. RO TARE
SSAA SP etna apm RPO NID NA TERT 8 RD Rae gone RN InN = merely
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5 71-1756, 71-1757
did not raise the issue of patent validity with respect to
the claims found to be infringed until August 9, 1971,
when it filed a post-trial motion in the district court.
Prior to this belated action, counsel for Kelipse had
stated, during trial, that they admitted “that the issue of
validity so far as the original claim is concerned is not
here in issue.” Telipse also conceded in the stipulated
facts submitted prior to trial that if any of the claims
here in issue were held to be infringed, the patent would
be enforceable against the defendant.
A properly issued patent is presumed to be valid and
the burden of proving invalidity rests upon the person
challenging validity. 35 U.S.C. §282. In this case, the fail-
ure to offer proof on the question of validity, particularly
when coupled with statements admitting the validity of
the patent claims, precluded Eclipse from belatedly at-
tempting to contest validity after the trial was over. A
contrary determination would disregard the statutory re-
quirement, enabling a defendant in an action for infringe-
ment to avoid its burden of proving invalidity during the
initial trial. The result would be cither to force the plain-
tiff to prove aflirmatively the validity of the patent in
question or to give the defendant what would amount to
a second chance to prove its non-liability to the patentee
if the ruling on infringement went against it. Although
public policy encourages tests of patent validity, see Blon-
der-Tonque Laboratories, Inc. vy. University of Mlinois
Foundation, 402 U.S. 313, 344-45 (1971), publie policy
also favors conservation of judicial time and limitations
on expensive litigation. Jd. at 334-49. None of these poli-
cies would be served by a ruling which permitted a party
to contest validity only when the close of the trial re-
vealed that it had lost on the issue of infringement. We
conclude that the district court was correct in ruling that
Eelipse waived its right to contest validity regarding the
claims held to be infringed by the trial court.
TT.
Eclipse contends that Maxon’s claim is barred by
laches. Eclipse began manufacture of the burners in suit
*In contrast to the present case, defendants in Business Forms Finish-
ing Service, Inc. v. Carson, supra, attempted repeatedly to attack validity.
452 F.2d at 73 nJ9.
Py PE LAAN RNC LON OT RSID
LD NG,
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pel4
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p-15,c
p.2/
K,L,ti
71-1756, 71-1757 6
in 1963. Maxon gave Eclipse notice of infringement on
October 12, 1967. This suit was filed on January 23, 1968.
Eclipse argues that it was entitled to rely on Maxon’s
“acquiescence” during the intervening period, and that its
reliance cost it a quarter of a million dollars in produe-
tion costs. Acquiescence is predicated on Maxon’s knowl-
edge of the "Eelipse burners now charged to infringe
Maxon’s patent.
The district court rejected Eclipse’s argument for two
reasons. First, it held that Maxon had a policy of one
infringement suit at a time and that Maxon was involved
in two such suits from 1962 until 1967. Second, it found
that Eclipse’s own conduct had prevented Maxon from
obtaining complete knowledge of the construction of the
accused assemblies until the period of February to May,
1966. In March, 1963, and again on July 20, 1965, coun-
sel for Eclipse sent Maxon's counsel drawings of the
rted AH burners. In cach case, the drawings were
or burners having mixing plates with uniformly sized
nings, and not the non-uniform apertures present in
actual Eclipse burners and required by the Maxon
patent. The district court found that Maxon did not pur-
chase an Eclipse burner until January, 1966, at which time
it was of course informed of the non-uniform openings.
We need not decide whether the evidence a nately
supports Maxon’s contention that it was prevented from
uiring complete knowledge of the characteristies of the
Balipee burners until 1966. Assuming that Maxon can be
charged with knowledge prior to this date, we do not
think its delay in filing suit barred injunctive relief
against future infringement... This court held in Arm-
strong v. Motorola, Inc., 374 F 2d 764. 769 (7th Cir.), cert.
denied, 389 U.S. S30 (1967), rehearing denied, 389 US.
997, that “[a) suit pending to sustain the validity of a
Eclipse’s burners in the hands of Maxon’s customers and had in its
ae. ipse’s advertisements showing non-uniform prior to
‘Although Maxon originally sought treble damages, the district judge
awarded only injunctive relief and Maxon has not appealed the denial
hich might bar’ montane dan, the, difierences in dilatory conduct
which might bar monetary damages but not injunctive relicf in Con-
tinental Coatings Corporation v. Metco, Inc., F2d . (7th Cir
July 21, 1972, No. 71-1266), slip opinion at 6-9.
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:
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7 71-1756, 71-1757
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tee upon his claimed rights.” Here, Eclipse had full
ice that Maxo
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