# Petition for Writ of Certiorari — Eclipse Fuel Engineering Co. v. Maxon Premix Burner Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1741%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1973 - **Citation:** 410 U.S. 929 ## Text 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 ae . 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 % a etot 3 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 é ri es aS 1 He ; E 3 ri 75 ef tH phe: sy Bees 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.” a el COP 1M athe a Sere” ee ee 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- ERP eI RTI SPIE BRE NRA ERE OT SE a , Sia en EA “ 6 Tn AO RVI aw Pr IR IY DET - ~— a ‘n> 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 fe PLA. TIFFs 5 | Suir @ iE 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... tt i lf 1 7 i s) iH A He He i Hue oe ie HA itt Hi itt th ee ue is i sey murat ui Ht ae inh a i if i itt ao. i til i iene : i HHT i Hee i Mi ili fii it rT ne c i il aa id POOR COPY 25,626 3 4 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 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 | POOR COPY ‘ esaoere- S 8 OM Se See eascaesean BS SSE ae Fe Sean eae Doewo anarF OVP KHSBVON HER tseaKruasaseasteeoesoeb wae ce 11 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 10 20 4 ow a oo ° o A-9 12 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 Pie ee Sey eNO Serie Had iPaly ie te aad fae HE hii tinieiss TE Me ft Ha fH vi Heh nee Ha qt ik a | rh i at ~ | i ili a ; 5 ui cl Meal Ha aaa Hite HEAT erin itt Hggunte aH addin § DTT penser THe {ie qiite [ : fi! 2 rt iietets apse sau ie Hei Hi it ti i HUE it Haat A HHP ee jiieent tr fuiteite ine i He Hf it it | it Hie iit atid i iil THE TEETH ik POOR COPY COPY BOUND TOO CLOs i Ht tht i itah ig st e RL aA u Ht lait Frid ERR eTH ETH ee Lp if Bye Ey ; nh sii 1H 1 ih hit SFr itaes i iife i Uh THRU eee HEE HE quis id Hn Ce ih Ht ii HH Ht) Hatha lyustiiily det il ii HHT Hil it uy Hoh fistitee yn He EH HRT He i Hi tay {a uit ARH Ee A ft itn y PERE ie hi Hi H if lid a fala ten iy et nila! (ri Hy Ht HE SHA HIB iit us HH HTH RUHEH HI teat ill ITT Peet Er Wei tdi Ht bli eae POOR COPY IN CENTER COPY BOUND TOO CLOSE 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 of the Federal Rules of Civil Procedure, which requires P : this court to mphold the factual findings of the- district 3 court unless they can be said to be “clearly erroneous.” . This is particularly true when, as here, the trial court’s E decision is based upon “eonsideration and weighing of the most credible evidence, both testimonial and documen- tary, and evaluation of visual courtroom demonstrations and demonstrative physical exhibits. . . .” (Trial court decision, F.F. 8). Waki v. Carrier Mfg. Co., 358 F.2d 1, 3 (7th Cir. 1966). The district court found that Eclipse’s AIT burners en- p.4F compassed all of the clements of Maxon’s patent claim 3, including a low-rate burner structure, shielding walls and mixing plates extending obliquely forward and outward in widely divergent relation. The court also found that pel2,13 — the operating and performance characteristics of Eclipse’s te ‘ Bh Bb cal OR Pree RA ato ‘clipse. oe that its silence regarding an earlier y.]] in the opinions expressed in [that} letter,” and that in counscl’s Eclipse was infringing Maxon’s patent claims. POOR COPY 71-1756, 71-1757 g burners were the same as those found in plaintiff’s in- yention. Contrary to Eclipse’s assertions, these findings were of an essentially factual nature and are well sup- rted by the evidence. We shall, however, discuss each of these contentions. Eclipse alleges that the accused burners differ from the tent claims in that combustion does not occur “indepen- dently of and shiclded from the passing air stream.” Ac- cording to Kelipse’s theory, since air from the air cham- bers supplies combustion air without which combustion could not occur, the Eclipse burners do not come within the claim language. However, as the district court noted, “independently of” is logically construed to mean undis- turbed 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. The district court found that the language had been inserted to distinguish the patentees’ invention from prior art jet engine combustion. Furthermore, the pat- ented claims themselves contemplate that the burner may take some air from the passing air stream for use in com- bustion. Both the aecused burners and Maxon’s claimed invention burn air-gas mixtures in a shiclded zone inde- pendent of the passing air stream. Defendant’s conten- tion is therefore without merit.* Eclipse’s next argument relates to the claim language which requires a burner “for operating in and for heating a low-pressure air stream flowing forwardly past the burner at a velocity of the order of 1500-4000 feet per minute.” Eclipse insists that its burners do not infringe the claim language in two respects. In the first place, it is argued, the Eclipse burners do not mect the claim lan- guage because they use outside air, not air-stream air, in the air chambers, The district court rejected both the factual hasis for this claim and its relevance to the claim language. We find no basis for disturbing these findings. Eclipse also insists that its hurners have air stream veloci- ties of less than 1500 feet per minute. This factual con- *Defendant also relies on file wrapper estoppel as a ground for re- versal of the findings relating to this claim. The district judge adequately disposed of this contention and we will not extend this opinion through a lengthy analysis of an essentially frivolous claim. Sce F.F. 109-110; Paper Converting Machine Co. v. F M C Corporation, 409 F.2d 344, 354 (7th Cir.), cert. denied, 396 U.S. 877 (1969). POOR COPY A-46 X-Ref . pe12,13 p.2B,4F pell n.6 n.6 p-25C p-13 PE ETN LOT APIO FINLEY HE NE TOR GARD HA) Oe? eS Ee To PIS Sere PY: FN ees I ee COPY BOUND TOO CLOSE IN CE A-47 9 71-1756, 71-1757 tention is contradicted both by the stipulated facts and the district court’s findings. Although defendant argues that the revelant speed should have been measured at a different location, its argument is unconvincing. Inasmuch as the district court observed the operation of the burner p.25F and found to the contrary, we are not prepared to disturb its finding. Eclipse proffers a further theory of non-infringement based on the claim language which refers to “mixing tes extending obliquely forward and outwardly from said shielding walls in widely divergent relation.” Sclipse’s n8 mixing plates are located at a 26° angle. Eclipse focuses on the word “widely” and would have us find that the 26° angle is not sufficiently divergent to come within this definition. In conjunction with this argument, Eclipse notes that the 26° angle is closer to that of the prior art (13-20°), which Maxon distinguished in its arguments before the patent office, than to the 50° angle shown in the specific Maxon burner exhibited in the patent. Iow- 26G F ever, Maxon never alleged that a 50° angle was critical P- : and tests indicated that Kclipse’s burners would not per- : form adequately when an angle approaching that of the ; } prior art was used in place of its 26° angle. Tclipse’s con- : tention that Maxon argued before the Patent Office that a 50° angle was critical was found by the district court to ignore the fact that the Patent Office allowed the asserted caims without the supposedly critical 50° angle, although such an angle is recited in some of the non-asserted n.8& daims. Fclipse’s theory is thus onee again dependent p.35F upon a factual finding by the district court. On the basis p.26D of the record before us, we cannot accept the thesis that this finding was clearly erroneous. X-Ref * a a Eclipse also alleges that its burners are within the scope of the prior art and that Maxon’s invention was completely obvious. In support of this position, Eclipse relies on prior art jet engine patents and an unpatented heater developed by Western Products.*® The district judge p.26J MEU Me BR Manes Be ant)? bl fas Mi *In the district court Eclipse also relied on certain prior art burner patents. Eclipse does not specifically attack the district court’s findings p.261 on this point and, in the absence of more direct references, we may . assume that the relevance of these patents to the issues here is no : longer a subject of dispute. § ITER POOR COPY ae ee, ee A-48 71-1756, 71-1757 10 X-Ref. heard testimony and witnessed demonstrations of this prior art and concluded that “(t]he prior art relied upon by Eclipse does not teach the accused burner assemblies, p.26I and does not restrict the asserted claims of the patent 5.13.15 in suit from covering the accused assemblies.” (F.F. 129.) We agree. The first of the patents relied upon by Eclipse was p.261 Way et al Patent No. 2,595,999. The Way patent covers a jet engine combustion device utilizing liquid fuel, a turn-down ratio of 10-1, and extremely high air velocity. The district court noted numerous differences between the jet engine patents and the burners in suit, a few of which are mentioned here. In contrast to the high turn-down ratio described in the Maxon patent and present in the Eclipse burners, the Way patent contemplates a relatively low turn-down ratio. In the accused assemblies and in p,12-137 the Maxon invention, the air stream flows forwardly past the burner, while in the jet engine the air stream flows through the flame baskets. Combustion in the burners in issue here takes place “independently -of air from the ait passing air stream” whereas in the jet engine combustion | * takes place within the air stream itself. The Way jet aaa engine has no mixing plates and no shielding walls. We 4 are satisfied on the basis of this evidence that the district : : court was correct in concluding that the Way patent could not teach the Maxon patent in question nor provide a basis for a charge of infringement. It follows that pe26I © Kclipse cannot assert the prior art jet engine patents as pel3=-15 a defense to a suit for infringement. Eclipse also relied on an unpatented heater developed : by Western Products as prior art which “stands between” pe2es | the Maxon patent and Eclipse burners. The Western 3 Products heater was developed in 1957, after the Maxon ; burner had been completed but before Maxon filed its a original patent application. Western’s heater was found by the district court to be significantly different from the Maxon and Eclipse burners. The Western Products heater p.261 burner body, a low-fire burner structure, shielding wall means or mixing plates. Neither did the Western Products burner have a high turn-down ratio, the nested blue flame e was found not to embody a line burner, an_ elongated | é P common in the Maxon and Eclipse burners, nor did it : . £ z POOR COPY 11 71-1756, 71-1757 operate in an air stream velocity similar to that as- sociated with the burners involved in this suit. Eclipse does not directly attack these findings but insists that because the Western Products heater has diverging perforated plates and somehow “taught” the high turn- down feature of the burners in suit, it is prior art which prevents a finding of infringement here. Kelipse fails to explain in what manner the Western Products burner teaches the turn-down ratio in the Maxon patent and Eclipse burners, but the district court findings indicate that eclipse contends this is unimportant to the Maxon patent. However, as the district court noted, the capability of the Maxon and Eclipse burners to achieve a high turn- down ratio is indeed an important characteristie of the Maxon patent. In any event, our own study of the record fails to indicate that the Eclipse high turn-down ratio could have been taught by the original Western Products burner.” Eclipse’s argument regarding diverging perfo- rated plates in the Western Products burner is equally without merit. The district court found that the original Western Products heater did not have mixing plates that operated in a manner similar to the mixing plates found in the Maxon and Kelipse burner. Furthermore, the conical structure, Which Helipse contends is equivalent to mixing plates, had uniformly sized openings whereas the patented burners and the Kelipse burners all have non-uniform openings. In conclusion, we ean find no basis for overturning the district court’s holding of infringement." The factual findings are well supported by the record and neither Kiclipse’s theories of estoppel nor the asserted prior art create a defense to Maxon’s right to an injunction against further infringement of the Maxon patent. The Western Products heater fabricated by the defendant for use at trial was found, indeed admitted, to be unlike the original Western Products burner in significant respects. Only the original Western burner was relevant, however, as prior art. Furthermore, Western Products itself entered into a consent judgment with Maxon and did not raise its own heater as evidence of invalidity. This may be some evidence that Western Products did not think the special features of the Maxon in- vention, and thus Eclipse’s burners, could have been taught by tis prototype burner. We have considered additional arguments raised by Eclipse and have found them to be without merit. A-49 X=Ref. pe261 pe2él 13-15 pe25b p.261 POOR COPY A-50 71-1756, 71-1757 12 IV. Maxon cross-appeals from the decision of the district court which held that a prototype burner assembly manu- factured and sold in 1963, having mixing plates with uniformly-sized apertures, did not infringe the Maxon patent claims. Maxon insists that this prototype was not an issue in the case and that no evidence was introduced by either side which would show what the prototype looked like, how it operated or whether it infringed the Maxon patent. We agree. The district court held that the 1963 prototype was in issue by virtue of Maxon’s complaint in this action. Para- graph 8 of the complaint reads as follows: “8. Since August 28, 1962, [the date on which the Maxon patent issued] and prior to the filing of this complaint, defendant Eclipse Fuel Engineering Com- pany has been and still is infringing plaintiff’s rights as secured to it by said reissue Letters Patent No. Re 25,626 by manufacturing, using, selling, and ac- tively inducing others to use and sell apparatus em- bodying the invention defined by its claims, for ex- ainple, its Series AH and RAH burners, without the consent of the plaintiff... .” The complaint is, therefore, broad enough to cover the 1963 prototype burner. Our belief that Maxon is not simply backtracking on an original assertion of infringement in the face of a district court holding which makes a positive finding of 4 non-infringement is based on several factors. Maxon a carried the burden of proving infringement by the Eclipse burner. Yet Maxon produced no evidence relating to infringement by the 1963 prototype although such proof would have been manifestly necessary in view of the seeming impossibility of reconciling the 1963 burner, with its uniform apertures, with the claim language which called for non-uniform openings.* Most probably, evidence would 12 Claim 3 of the patent describes the non-uniform apertures as follows: “apertures at the inner portion of the mixing space, adjacent said shielded zone, being relatively small and being proportioned to co- operate with said variable low-rate burner to provide air for progressively increased combustion, . . . the apertures at outer POOR COPY by Eclipse had uniform apertu would not infringe the Maxon patent. noted, if this argument could exense Maxon for ing an carlier action, it might also i ection for infringement by this burner now. Consideration of an i infringement by the 1963 prototype at this point. If the district court had held that the 1963 burner did infringe the Maxon patent, Eclipse might well have argued on that the holding was merely an advisory opinion. cclipse made the 1963 prototype only experimentally and sold, if there was in fact a sale, only one such burner. % USC. §271(a) provides that “whoever without an- thority makes, uses or sells any patented invention .. . . infringes the patent.” This circuit has held that a threatened use, under appropriate circumstances, is suf- ficient to uphold a claim for infringement. Fehr v. Ac- tivated Sludge, 84 F.2d 948, 951 (7th Cir. 1936). How- ever, in this case, no models with uniform holes have been produced since 1963. Defendant has not at this time even threatened to recommence production of these burners. Assuming, therefore, that Maxon would not be barred by laches from bringing an action for infringement by the POOR COPY pe27P 71-1756, 71-1757 14 1963 burner, the doctrine of de minimus non curai lex would apply. Finally, our holding is — by defendant’s own actions. In response to Maxon’s interrogatories secking information regarding the 1963 burner, Eclipse replied was now in existence, its location prevented from ever be — that a burner like the 1963 prototype id infringe its patent when it has never been given a The district court judgment holding that the Eclipse family of burners infringes the Maxon patent will be et, Se aeat ing non-infringement by the 1963 prototype will be Arrinmep Ix Part, Reversep Is Pant. A true Copy: Teste: Clerk of the United States Court of Appeals for the Seventh Circut. POOR COPY USCA #13—The Scheffer Press, Inc. Chicago, Illinois—9-18-72—200 a A-53 DENIAL OF PETITION FOR REHEARING UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT Nov. 1, 1972 Hon. ROBERT A. SPRECHER, Circuit Judge Hon. JAMES R. DURFEE, Senior Judge Hon. JESSE E. ESCHBACH, District Judge The appellant has filed a petition for re- hearing and both parties have pointed out to the Court that due to a printing error the judgment order of the district court was not included in full text in the appendix and that such error misled this Court in one statement in footnote 6 of the opinion of September 18, 1972. IT IS .ORDERED that footnote 6 be amended to read as follows: “Although Maxon originally sought treble damages, the district court denied treble damages but awarded injunctive relief and an accounting of actual damages. The denial of treble damages was not appealed." Defendant-appellant's “Motion for Extending Time to Suggest In Banc Rehearing" was taken as a suggestion for an en banc hearing and was cir- culated to all active judges. No judge in active service having requested a vote thereon, nor any judge voted to grant the suggestion, and all members of thepanel having voted to deny a rehearing, IT IS ORDERED that the petition for a re- hearing in the above-entitled cause be and the same is hereby denied. POOR COPY ADDENDUM VI _ Ana LETTER OF MAXON'S COUNSEL MENTIONED IN FOOTNOTE 7 OF OPINION OF COURT OF APPEALS AND LATER CHARGE OF INFRINGEMENT [The first item was described in the Court's footnote as "stating...that in counsel's opinion, Eclipse was infringing Maxon's patent claims."] January 14, 1966 Mr. Norman H. Gerlach 105 West Adams Street Chicago, Illinois Dear Norman: Re: Eclipse “AH" Air Heater Burner Reviewing the subject file, I noted that we apparently neglected to reply to your letter of July 20, 1965. For the record, our silence should not be construed as any acquiescence or concurrence in the opinions expressed in your letter. Specif- ically, we do not agree that directing air-stream air through a fan to the burner is any different than permitting the air-stream.air to impinge directly on the burner. In short, the Eclipse "AH" burner apparently is doing "indirectly" exactly what Maxon's "does directly". If you have any further comments, we would appreciate receiving them at your convenience. Sincerely yours, /s/ Granger A-55 [In the following notice of infringement, the two drawings referred to in the third para- graph are drawings submitted by Eclipse to Maxon in the 1963 settlement negotiations of prior litigation, mentioned in the petition, above. } October 12, 1967 Mr. Norman H. Gerlach Suite 3226 105 West Adams Street Chicago, Illinois 60603 Dear Mr. Gerlach: Re: Eclipse Air Heating Burners Series AH and RAH As you know, our client, Maxon Premix Burner, has had a patent infringement action pending against Mid-Continent Metal Products. A few weeks ago, on September 22, 1967, Judge Lynch entered judgment for Maxon. He held the Yeo et al. patent No. Re. 25,626 to be valid, and to be wilfully and wantonly in- fringed. Judge Lynch awarded treble damages, attorneys’ fees, and costs to Maxon. Mid- Continent recently filed a notice of appeal. You will remember that several years ago Maxon Premix Burner filed a patent in- fringement action, charging infringement of this same patent, against your client, Eclipse Fuel Engineering Co. and, asa result, Eclipse discontinued the manufacture and sale of the accused burner (Series AS Air Stream Burner). Sometime thereafter, Eclipse com- menced the manufacture and sale of its Series AH and RAH burners. The first form of this Series AH and RAH POOR COPY A-56 burner is illustrated in Eclipse's drawing No. 3TH-1754, entitled "Experimental Nozzle Mixing Burner", and dated 12-13-62, as well as in Eclipse's layout drawing entitled "In- stallation of Nozzle Mixing Line Burners in Airstream" by Lyle Spielman, and dated 1/22/63. As shown, the combustion air blower is located externally of the duct and supplies non-airstream air to a manifold surrounding a high turn-down burner structure. Eclipse modified this Series AH and RAH burner so that the combustion air blower is integrally attached to the burn- er. With this construction, airstream air is supplied to the combustion air blower which, in turn, supplies this air to the burner structure. In our letter to you of January 14, 1966, we stated that "direct- ing airstream air through a fan to the burner is (not) any different than permit- ting the airstream air to impinge directly on the burner". This modified Series AH and RAH burner has been illustrated in several of Eclipse's bulletins and has been installed and operated in many loca- tions. Maxon considers Eclipse's manufac- ture and sale of its modified Series AH and RAH burner to be an infringement of the above Yeo patent, and Eclipse is spe- cifically requested to cease and desist from further infringing activities. In addition, the Series AH and RAH burners have been further modified by eliminating the combustion air [blower] entirely. Certain of Eclipse's bulletins, for example Spec. Sheet H-100-1 state that “when operating on the suction side of the circulating fan, under certain conditions it is possible to operate without the use ; ze of a combustion air blower". These further : | POOR COPY SE Pe ER TN DEN Se ee mE) oy eT BAN One SEP AGL Oe Cs ee cas SO le BRL ST MOP HCN M A-57 modified burners have also been installed and operated in many locations. Maxon con- siders Eclipse's manufacture and sale of its further modified Series AH and RAH burner to be an infringement of the above Yeo patent, and Eclipse is requested to cease and desist from further infringement. We, of course, could have filed an- other patent infringement suit against Eclipse without first giving this notice. However, inasmuch as Eclipse previously has questioned the procedure of initiating dis- cussions of an infringement issue by filing a lawsuit, we thought that we would first communicate directly with you. However, you should know that we are authorized to take whatever legal action is necessary to pro- tect Maxon's patent rights. Please let us know whether or not Eclipse will stop its infringing conduct and respect the patent rights of Maxon. We shall look forward to hearing from you at an early date. Sincerely yours, SE EEE EMOTO TT AMS NA IIR tah SYS /s/ Granger [Granger Cook, Jr.] Meee: ee Ra EMER MBE URIS SENET et RON Re -60 CHART wr LIST WITH SHOWING OF ACQUIESCENCE marketed AIRFLO burner, sOught patent. n added limitations, filed affidavits. e@ marketed similar burner ("AS"). S Original patent issued. ‘iled prior suit against Eclipse (no prior Eclipse Promptly discontinued its burners. tlement negotiations Eclipse disclosed ntial” drawings for a basically Gifferent Settlec and consent judgment entered. 2 markets “AH"line (prototype first) at convention, with bulletin. 2 enlarged some holes. 2 issued new bulletin, new hole size - Maxon received ° Ssue patent (in suit) issued to Maxon, still not told. *xon seeks from Ecli ace information, also Grawing and xplaining points of noninfringement. replies to foregoing. Using its first con charges infringement, some burners ining by listing changes in those "63 showing, but not hole size. iled. More afterthought theories, in- wle-size excuse for laches, gradually nd reach to burners not charged before. continues as to burners using outside or “ air in the air chambers for combustion. FOLDOUTS TOO LARGE TO BE FILMED i. OF pee, rer --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_1741%3A1. Public record. Not legal advice.