# Petition for a Writ of Certiorari — General Motors Corp. v. Devex Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_0161%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for a Writ of Certiorari - **Published:** January 1, 1973 - **Citation:** 411 U.S. 973 ## Text TABLE OF CONTENTS PAGE r,, . 1 ,,, A...... 2 QUESTIONS PRESENTED ...................... 2 r cue abscissa 2 oe tie ge SES RO Ee ee ae 2 CONSTITUTIONAL PROVISION AND STATUTES INVOLVED ........................ 3 STATEMENT OF THE CASE ................... 3 The Validity Decision Of The Court Of Appeals For The Seventh Circuit ........................ 2 The Non-Infringement Ruling Of The Court Of Appeals For The Seventh Circuit ................ 6 The Infringement Ruling Of The Court Of Appeals — d ²˙ 7 REASONS FOR GRANTING THE WRIT ....._. 10 otto dheeae pe BR OT OO? ETT 10 2E... 14 %% 18 APPENDIX United States Constitution, Art. I §8,CL8........ A-1 3 U.S. Code, Section 103 ........................ A-1 35 U.S. Code, Section 112 ........................ A-1 Consolidated Cases (Devea v. General Motors, De- vex v. Houdaille) Opinion, findings of fact, conclusions of law on validity (unreported) ..................... A-3 ii PAGE Opinion on validity, Court of Appeals for the Seventh Cireuit (321 F.2d 234) ............. A-13 Deveæ v. Houdailie Industries Opinion on infringement, Court of Appeals for the Seventh Cireuit (382 F. 2d 17) ʒ 7 A-20 Deve v. General Motors Opinion of Delaware Distriet Court on Motion for summary judgment on infringement (263 F.Supp. RO FOREN — — A-29 Opinion, findings of fact, and conclusions of law on infringement (316 F.Supp. 1376) .............. A-39 Opinion on infringement, Court of Appeals for the Third Circuit (467 F.2d 257) ................. A-54 Judgment, Court of Appeals for the Third Circuit A-61 Order denying petition for rehearing, Court of Ap- peals for the Third Circuit ...... “yo aaa A-63 CASES CITED Anderson’s Black Rock v. Pavement Salvage Co., 396 e œ œ-ui!:!:!:!: Ä‚——. . 9, 14 Ad P Tea Co. v. Supermarket Corp., 340 U.S. 147 rr Ae ae ea 11,14 Beckman Instruments v. Chemtronics, Inc., 439 F.2d ,, are 16, 17 Blonder-Tongue Labs v. University of Illinois, 402 ,,,, ̃ .... 12 Calmar, Inc. v. Cook Chemical Co., 383 U.S. 26 (1966) 14 Carter-Wallace v. Otte, ... F.2d ..., 176 USPQ 2 ,,, ag te taal aaa a 15,17 Devex v. General Motors and Houdaille Industries, 321 F. 2d 234 (7th Cir. 19863000ꝝ ; 1, 2,5 Deveæ v. General Motors, 263 F.Supp. 17 (D. Dela- ,, ¾ ,... 7, 8, 12 iii PAGE Deveæ v. Houdaille Industries, 148 USPQ 74, 77 (N.D. ESE EE ON SE IR t eM ae 6 Dever v. Houdaille Industries, 382 F.2d 17 (7th Cir. PPP. ͤ Naa Re TE 1, 2, 6, 10, 15 Devex v. General Motors, 316 F.Supp. 1376 (D. Dela- T: Gace Rac eg Ue a ys 2,8 Devex v. General Motors, 467 F.2d 257 (3d Cir.1972).. 1 Exhibit Supply Co. v. Ace Patents Co., 315 U.S. 126 —r! ͤ y 13 Graham v. John Deere Co., 383 U.S. 1 (1966) ....... 14 Graver Tank & Mfg. Co. v. Linde Air Products, 336 . EEN a alla 16, 17 Hamtlton-Brown Shoe Co. v. Wolf Bros. & Co., 240 rr eanae ieee 14 Linde Air Products v. Graver Tank & Mfg. Co., 167 F. 2d 531 (7th Cir. — ͤ os 16 Voll v. O. M. Scott & Sons Co., 467 F. 2d 295 c 14, 17 Smith v. Hall, 301 U.S. 21UU·˖ . 12 United Carbon Co. v. Binney and Smith Co., 317 U.S. hr 9 United States v. Adams, 383 U.S. 39 (2558) ....... 14, 16 Universal Oil Products Co. v. Globe Oil and Refining Co., 322 U.S. 471 —Aͤ 10 Weber Electric Co. v. Freeman, 256 U. S. 668 (1921) .. 10 CONSTITUTION US. Constitution, Article I, Section 8, Cl. S. 3, A-1 STATUTES AND RULES TTV... 2 1771111 3, A-1 VW 3, A-1 In THE Supreme Court of the United States OorokRR Term 1972 No. 72-1161 GENERAL MOTORS CORPORATION, Petitioner, v. DEVEX CORPORATION, et al., Respondents. PETITION FOR A WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE THIRD CIRCUIT Petitioner, General Motors Corporation, respectfully prays that a writ of certiorari issue to review the judgment entered on September 26, 1972 by the United States Court of Appeals for the Third Circuit. OPINIONS BELOW The infringement opinion of the Court of Appeals for the Third Circuit in this case is reported at 467 F.2d 257 (A-54, infra) i. The conflicting non-infringement opinion of the Court of Appeals for the Seventh Circuit in the case of Devex v. Houdaille Industries is reported at 382 F.2d 17 (A-20, infra). The opinion of the Court of Appeals for the Seventh Circuit holding validity in the previously con- solidated case of Dever v. General Motors and Houdaille 1 Citations to the Appendix at the rear of this petition are desig- noted by an “A” page number and “infra”. 2 Industries is reported at 321 F.2d 234 (A-13, infra). The opinion, findings of fact and conclusions of law of the Dis. trict Court of Delaware holding no infringement in this case are reported at 316 F. Supp. 1376 (A-39, infra). JURISDICTION The judgment of the Court of Appeals was entered on September 26, 1972 (A-61, infra). A timely petition for rehearing was denied November 29, 1972 (A-63, infra) and this Petition For A Writ Of Certiorari was filed within 90 days of that date. The jurisdiction of this Court is invoked under 28 U.S.C. § 1254(1). QUESTIONS PRESENTED 1. Where a patent monopoly has been upheld solely on the basis of a new and surprising synergistic result occurring under one of many process applications, may the monopoly be expanded thereafter and enforced against other process applications in which such result does not and cannot be shown to occur? - The Court of Appeals for the Third Circuit has held “yes”.? The Court of Appeals for the Seventh Circuit has held “no”. May a process patent claim which unambiguously defines in broad terms a combination of old elements which are known to the prior art and which, as written, is invalid in 2 Devex v. General Motors, 467 F.2d 257 (3d Cir. 1972) (A-54, infra.) 3 Dever v. Houdaille Industries, 382 F.2d 17 (7th Cir. 1967) (A-20, infra.) 3 view of the prior art, be held valid by giving the claim a narrow construction limited to a new and surprising syner- gistic result which is not described in the patent and which occurs only under certain conditions? CONSTITUTIONAL PROVISION AND STATUTES INVOLVED This case involves Article I, Section 8, Clause 8 of the Constitution (A-1, infra); Section 103 of the Patent Act of 1952, 35 U.S.C. § 103 (A-1, infra); and Section 112 of the Patent Act of 1952, 35 U.S.C. § 112 (A-1, infra). STATEMENT OF THE CASE Claim 4 of reissue patent No. 27,017,* here at issue, con- cerns the old process of applying a lubricant to steel prior to deforming the original shape. For example, automobile bumpers are manufactured by coating the flat steel stock with lubricant and placing it between dies, which are then squeezed together to bend the steel and form the bumper. The lubricant reduces friction and wear on both the steel product and the die, thus serving much the same pur- pose as soap applied to the finger to remove a ring, or to a wood screw to ease insertion. The three components of the lubricant, and each of the steps of the process, have been used alone and in combinations in the prior art. The contested patent claim literally recites broad mo- nopoly rights over lubricating processes involved in any PX 1, Vol. 1. Five volumes of exhibits and seven volumes of a printed appendix which were before the Third Cireuit Court of Appeals have been transmitted as part of the certified record to this Court. Hereinafter “Vol.” followed by the volume number refers to an exhibit book and “App.” followed by the volume number and page number refers to the printed Court of Appeals’ appendix. 4 type of cold steel forming.“ After the grant of the reissue patent in 1955, the patent holders brought infringement actions against General Motors and Houdaille Industries, making bumpers and other products. These defendants responded by contesting the validity of the claim in light of the prior art. The Validity Decision Of The Court Of Appeals For The Seventh Circuit In 1959, Devex v. General Motors was consolidated with Devex v. Houdaille Industries, for a trial in the Northern District of Illinois on the common issue of patent validity. The District Court, after hearing, concluded that the claim was invalid as met by the prior art.“ The court noted plaintiffs’ argument that, under certain limited conditions, a chemical reaction of borax with soap and zinc phosphate of the phosphate coating occurred in a new and surprising manner “essential to the successful operation of the process described in claim 4...”.7 It pointed out that these chemical reactions were not disclosed in or suggested in the patent,“ and held further that the patent claim was void for failure Claim 4 recites: 5“The process of working ferrous metal which comprises forming on the surface of the metal a phosphate coating and superimposing thereon a fixed film of a composition comprising a solid meltable organic binding material containing distributed therethrough a solid inorganic compound meltable at a temperature below the melt- ing point of the ferrous metal phosphate of said coating and having a hardness not exceeding 5 on the Mohs’ hardness scale, and there- after deforming the metal.” 6 App. 1:261 (A-3, infra). 7 App. 1:243 (A-7, infra). 8 (A-7, infra.) The language of Claim 4 is significant in that it says nothing about any coaction of the ingredients or any particular process temperature, pressure, or other conditions, nor does it recite either soap or borax. E. oe. e Ss 5 to “particularly point out and distinctly claim . . the in- vention as required by 35 U.S.C. 112.” On appeal from this finding of patent invalidity, the Court of Appeals for the Seventh Circuit reversed.!° While confirming the lower court’s conclusion that the claim did not state anything other than already available combina- tions of old elements known to prior art, the Court of Appeals found validity in the “new and unexpected results” which resulted from “coaction” of the elements under certain process applications.“! Specifically, the court relied upon evidence that under the high pressure and temperatures associated with some tests on steel wire drawing “the abra- sive phosphate coating reacts with the borax to form amor- phous glassy materials which contribute significantly to the lubricating value of the coating. 12 These synergistic ef- fects, which occurred only under certain conditions, were held adequate to validate the patent. is App. 1:260, 261 (A-8, 11, infra). 1% Dever Corp. v. General Motors and Houdaille, 321 F.2d 234 (1963) (A-13, infra). "The Court of Appeals in part justified this result by holding that patent claims may be “generic in character and do not neces- sarily have to be specific”. 321 F.2d at 238 (A-17, infra). 12 In the tests, phosphate coated steel wire rods having an initial diameter of about one-fourth of an inch were drawn through two dies in succession. Each die reduced the cross-section area about N percent, giving a total reduction of about 40 percent. (App. 3917-19) No metal bending, such as in the bumper forming proc- e now accused, was involved. The lubricant used over the phos- phate coating was 50 percent borax (App. 3:913-14) rather than the 5 percent borax and 15 percent borax in the lubricants used in the presently accused processes. (n. 23, infra). n This Court denied the ensuing Petition for Certiorari, 375 US. 971. It was opposed by Devex, inter alia, on the ground that the judgment of the Seventh Circuit was interlocutory. 6 The Non-Infringement Ruling Of The Court Of Appeals For The Seventh Circuit Following the Seventh Circuit reversal on the issue of validity, the Houdaille and General Motors cases followed separate courses. In the Houdaille case, plaintiffs brought a motion for summary judgment of infringement, on the sole ground that Houdaille had successfully used soap, borax and phos- phate metal deforming processes to make bumpers. There were issues of fact on whether Houdaille’s method pro- duced the unexpected results referred to in the validity decision. Notwithstanding, since the process was literally within the language of the claim which the Court of Appeals had held valid, the District Court believed itself bound and granted plaintiff’s motion.“ On appeal, the Seventh Circuit reversed,’ again recognizing that the claim if read literally would be invalid,! and emphasizing that “our pre- vious decision [on validity] requires that the claim in suit be given a narrow and restricted construction.!” The Court of Appeals added that the plaintiffs “having obtained a decision of validity on a narrow and restricted basis . . . now contend, inconsistently we think, that the claim must be applied literally to defendant’s alleged in- fringing process.“ The Court then stated that: 14148 USPQ 74, 77 (1965). 18 Dever v. Houdaille Industries, 382 F.2d 17 (1967) (A-20, infra). 16“The ‘new and unexpected result’ which plaintiffs urged upon this Court in their argument in behalf of validity, to which we gave recognition, certainly was not revealed by a literal reading of Claim 4. In fact, we can surmise with some assurance that if a literal reading of the claim had been relied upon, we would have affirmed the District Court in its holding of invalidity in view of the prior art.” 382 F. 2d at 23 (A-26, infra). 17 382 F. 2d at 22 (A-25, infra). 18 382 F. 2d at 22, 23 (A-25, 26, infra). Aes: alte” as Fd i pi nt 7 “Such a construction would monopolize the whole broad field of metal forming with any use of a dry soap and borax over phosphate at any temperature or pressure, regardless of the results.” 382 F. 2d at 23 (A-26, infra) The Seventh Circuit held that in order to prevail, the plaintiffs must carry the burden of proving that the same new and surprising result would have been obtained in the drawing of defendant’s alleged infringing automobile bump- ers. o It found that there was an issue of fact on this matter. Indeed, it noted that “in the instant case, as in General Motors, there is evidence that the patentee’s process recog- nized by this Court required ‘extreme temperatures and pressure of from 100,000 to 250,000 pounds Hertz stress,’ ” and that “the ( Friedberg) tests relied upon (to hold val- idity) were made in the drawing of wire rods. In short, the Seventh Circuit held that plaintiffs could not successfully prosecute infringement claims without proving that the accused processes were under conditions producing the same chemical coaction or synergistic result upon which the finding of validity had been based. The Infringement Ruling Of The Court Of Appeals For The Third Circuit After the Seventh Circuit ruling on validity, the GM case was transferred to the District of Delaware, where the plaintiffs brought a similar motion for summary judgment on the infringement issue as in the Houdaille case. Unlike the Chicago District Court, the Delaware District Court denied the motion, finding that there was an issue of fact as to whether the GM processes had the unexpected results upon which the Seventh Circuit had sustained validity.?! 19 382 F.2d at 23, 24 (A-26, 27, infra). % 382 F. 2d at 23 (A-26, infra). u 263 F. Supp. at 25 (A-29, 37, infra). Judge Caleb Wright stated: . . . the construction of a claim when its validity is contested controls the construction of that same claim when its infringement is alleged. The patentee cannot urge a restrictive interpretation of his claim to avoid invalidity and then an expansive interpretation to en- snare infringers”. 263 F. Supp. at 25 (A-37) 22 In the subsequent infringement trial, plaintiffs attempted to prove that the accused GM processes? employed temper- ature and pressure conditions which produced the same chemical coaction and synergism as had been relied upon by the Seventh Circuit in holding validity. Defendant ad- duced contrary evidence. On the basis of detailed findings of fact, the District Court held for defendant, concluding that no infringement had been shown.?“ The court held that plaintiffs had the burden “to prove that a coaction occurs in the accused processes among the soap, borax and phosphate at high temper- atures and pressures, causing new compounds, includ- ing but not limited to glassy amphorous compounds, to be formed, and inhibiting the formation of water insoluble compounds.“ 22 This statement was quoted with approval by the Court of Appeals for the Seventh Circuit in its Houdaille non-infringement opinion. 382 F.2d at 23 (A-26, infra). 23 The processes here accused are the Pontiae bumper forming process, the Diesel Equipment “valve lifting plunger process” and the Pontiac “rocket forming” process (A-43 to 46, infra). The first process used “Bonderlube 246”, containing 15% borax and 85% soap. The last two processes used “Bonderlube 235”, containing 3% borax, 2% sodium nitrite, and 85% soap. (Id.). None of the three processes involved any form of wire drawing, as was used in the tests relied upon in the validity holding, nor did they use 50% borax. 24 316 F. Supp. 1376 (A-39, infra). 25 A-41, infra. Judge Wright, in the earlier motion ruling deny- ing summary judgment of infringement, held that defendant was bound by the Seventh Circuit ruling on validity (263 F.Supp. at 25), a holding which was affirmed by the Court of Appeals for the Third Circuit, 467 F.2d at 262 (A-59, infra). 9 and concluded that plaintiffs had failed to carry that burden. The Court of Appeals for the Third Circuit did not dis- tarb these or any other underlying findings of fact. But it nevertheless reversed. It did so by applying a standard squarely rejected by the Seventh Circuit and the District Court of Delaware. It stated that: “if it is directly determinable that if the two lubricants have essentially the same components, are applied in the same way and that the results of their use are essentially the same, the disputation of chemists about the chemical interactions that occurred in the processes cannot be decisive. Only by ignoring the fact that it was precisely such “chem- ical interactions” that prompted the previous holding of patentability was the Third Circuit able to conclude that: “In these circumstances, the demonstrated effectiveness of GM practice in producing a satisfactory drawing and ease of cleaning that Hendricks had achieved must prevail over any contrary inference drawn from dis- puted expert testimony as to comparative i in what may well not have been equivalent situations. 36 467 F. 2d at 261 (A-58, infra). * Id. at 262 (A-59, infra). The Court appears to have regarded satisfactory results as sufficient to demonstrate patent infringement. This is not the law. A result (or function) is not patentable. United Carbon Co. v. Binney and Smith Co., 317 U.S. 228, 234 (1942). Where, as here, there is a combination of old elements, patentability rests on the existence of coaction or synergistic effect. Anderson’s Black Rock v. Pavement Salvage Co., 396 U.S. 57, 61-3 (1969). The Seventh Cireuit based its holding of validity on the presence of coaction. The only coaction alleged in the present case is the chemical coaction, the only way to prove such coaction is by chemical testimony, and the undisturbed fact findings below are that such coaction did not occur in the accused processes. 10 Nowhere did the Third Circuit deal with the crucial fact finding“ that plaintiffs had failed to prove that the GM process possessed the “new and unexpected coaction” which had formed the sole basis for the earlier finding of patent validity. In effect, the Third Circuit ruled that where a process patent is given limited validity by a holding based solely on coaction not described in the claim, and to which the claim is not limited, the patentee may nevertheless enforce its patent monopoly against other processes within the claim’s unspecific language, even where such coaction has not been shown to occur. REASONS FOR GRANTING THE WRIT Question No. 1 This question presents a highly significant and increas- ingly important issue concerning the scope and reach of the patent monopoly, as to which a clear conflict?® exists between the Third Circuit and the Seventh Circuit. In its validity decision in the consolidated case, the Seventh Circuit found validity because of synergistic coaction. After separation of the cases, the Seventh Circuit in Houdaille held that the allegedly infringing process must achieve the same syner- gistic coaction upon which patent validity was sustained, thus giving the claim the same limited construction on infringement as on validity. However, the Third Circuit in 28 Findings of Fact 10-14, 316 F.Supp. at 1383-1389 (A-46 to 52, infra). 29 In Universal Oil Products Co. v. Globe Oil & Refining Co., 322 U.S. 471 (1944), this Court granted certiorari to resolve a conflict between Courts of Appeals which as to the same patent and upon substantially the same facts reached conflicting conclusions as to infringement. See also Weber Electric Co. v. Freeman, 256 US. 668 (1921) where a similar conflict between circuits on infringe- ment was resolved. 11 the present case has given the patent a broader scope inso- far as enforcement is concerned, holding that there was in- fringement by a process in which the requisite synergistic eoaction was not shown. Unless the decision is reversed, the Third Circuit will have extended the patentee’s monopoly to processes not providing the critica] chemical coaction and synergism upon which validity was based. Simply stated, the court below has enforced a patent monopoly, held valid only as to a spe- cific process, against a different process which has not been held patentable. The result is to prohibit the public from free use of un- patentable processes. “The function of a patent is to add to the sum of useful knowledge. Patents cannot be sustained when, on the contrary, their effect is to subtract from former re- sources freely available to skilled artisans.” AP Tea Co. v. Supermarket Corp., 340 U.S. 147, 152 (1950) Citing A&P, the Court of Appeals for the Seventh Circuit found patent validity only by concluding that a particular process displayed the requisite coaction and synergistic re- sult.°° May the Third Circuit below, after this limited deci- sion, now vitiate the entire doctrine of A by finding infringement through a combination of old elements which do not achieve the requisite coaction and synergistic re- sult? The effect of the decision below is illogically to limit the A doctrine to validity and not to infringement. The decision below clearly destroys the traditional con- gruence between the concepts of validity and infringement. As a logical necessity, no process may infringe a patent claim unless such Process would itself have been patentable 382 F. 2d at 22 (A-25, infra). 12 under the same principles which sustained the validity of the existing patent. This cardinal principle has been ig- nored by the court below. The only other way to explain the decision is that the court below while paying lip service to the proposition that the validity of the patent claim was not to be relitigated, in fact sub silentio relitigated the validity of the patent which had been previously determined by the Seventh Circuit. By disregarding the findings of the District Court that the plaintiffs had failed to prove that the accused processes embodied the chemical coaction and synergism which had formed the basis for the earlier finding of validity, the Third Circuit has in effect held petitioner liable for in- fringement of a process the validity of which petitioner never had the opportunity to contest. 1 In Blonder-T ongue Labs v. University of Illinois, 402 U.S. 313 (1971), this Court held that a ruling of patent invalidity, once made, is binding in all future cases on the patent. The same necessarily applies to a ruling of narrow and limited validity. In the present case, the Seventh Circuit twice made clear that the claim was invalid if construed as writ- ten, but was only valid in a much narrower context. Con- sequently, the plaintiffs were estopped under Blonder- Tongue to assert a broader claim construction and in effect relitigate validity. Yet, the court below adopted a signifi- cantly broader construction in order to sustain its finding of infringement—a construction that disregards the critical aspects which prompted the Seventh Circuit to find the patent valid. Other decisions by this Court also point to the proper res- olution of this question. In Smith v. Hall, 301 U.S. 216, 220 31 The Delaware District Court had previously refused to re- litigate the validity of the patent, 263 F.Supp. at 19-24 (A-29, 31- 37, infra). 13 (1937), an infringement ruling whereby the claim was broadly construed preceded the validity consideration be- fore this Court. This Court held that the patentee was fore- closed from asserting a new and more narrow patent scope to save the patent from invalidity. In the “file wrapper estoppel” cases, exemplified by Exhibit Supply Co. v. Ace Patents Co., 315 U.S. 126 (1942), this Court has held that patentees are strictly limited by the claim amendments they insert in the Patent Office to procure claim allowance over the prior art. The reasoning of these cases would seem to apply where, as here, the infringement ruling follows the validity decision and where, as here, the basis of upholding patent validity is a surprising coaction not set forth in the claim, as distinguished from one that is formally inserted into the claim to procure allowance. It follows that when the validity ruling has been made first, the patentee must live within that determination in pressing his monopoly rights in subsequent infringement claims. It is true that this Court has never specifically so ruled. But, as the present case so graphically demonstrates, such a decision is necessary to make clear that where process patent claims are narrowed beyond their terms in court proceedings in order to save their validity, that deter- mination must be binding in subsequent proceedings to en- force the patent against a process accused of infringing. Otherwise, a patent holder achieves à monopoly over that which has been previously held unpatentable. Decisions of this Court in the past three decades, particu- larly those since the 1952 Patent Code, make it crystal clear that a patent to a combination of old elements stands or falls on the existence or non-existence of a surprising coaction or synergistic effect. Most patents are directed to such combinations. Indeed, the last five patent validity 14 rulings** of this Court each pertain to such a patent. But this Court has not ruled that the same surprising coaction or synergistic effect must be applied to find infringement as has been applied to find validity or even, more broadly, that patent infringement must be determined by the same strict standard as is patent validity. Absent such ruling, a decision of patent validity may arm the patent owner with a power to expand the monopoly and charge as an infringement acts that would have failed the test of patent validity. Such ruling is clearly needed, as the present con- flict between the Third Circuit and the Seventh Circuit on the same patent demonstrates. Question No. 2 The validity decision of the Seventh Circuit is a sub- stantial departure from the Jaw pertaining to patent speci- fications and claims, and should be reviewed by this Court.“ It conflicts with decisions rendered by the Second and Fifth Circuits and is analogous to the decision of the Sixth Circuit in Noll v. O. M. Scott & Sons Co., 467 F. 2d 295 (6th Cir. 1972), now before this Court on Petition for Certiorari. In the present case, the Seventh Cireuit, in considering 35 USC $112, recognized the unspecific character of the claim. It excused this deficiency stating that “patent claims should be generic in character and do not necessarily have 82 A&P Tea Co. v. Supermarket Corp., 340 U.S. 147, 152 (1950); Graham v. John Deere Co., 383 U.S. 1 (1966); Calmar, Inc. v. Cook Chemical Co., 383 U.S. 26 (1966); United States v. Adams, 383 U.S. 39 (1966); Anderson’s Black Rock v. Pavement Salvage Co., 396 U.S. 57 (1969). * 83 The judgment of the Court of Appeals for the Seventh Circuit is open to present review by this Court. Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251, 257-8 (1915). 15 to be specific’**, But the court inconsistently upheld the claim only because it treated the claim as if it were limited to specific ingredients and particular conditions of tempera- ture and pressure which achieved the new and surprising synergistic result. Indeed, the court has specifically stated that it gave the claim “a narrow and restricted construc- tion” in order to find validity. This restricted construc- tion apparently ignored the Chicago District Court’s un- reversed findings that “the patent does not describe any chemical reactions, se that some ingredients within the claim are not workable, “ and that the prior art “British patent 494,830 . . . contains disclosure of a lubrication composition for drawing and deforming ferrous metal within the broad terminology employed in Claim 4 of the patent in suit“. ss In short, the Seventh Circuit Court of Ap- peals completely rewrote Claim 4 to fit its own concept of what the invention should be and failed to determine what the patentee actually claimed as required by 35 USC 9112. 3° The ruling of the Court of Appeals of the Seventh Circuit is in conflict with that of the Second Circuit in Carter- Wallace v. Otte, F. 2d 176 USPQ 2, 9-12 (1972). There, the broadly claimed chemical compound was obvious in view of the prior art. Carter-Wallace sought to avoid a holding of patent invalidity on the ground that the com- pound had unexpected tranquilizing properties which, how- ever, were not described in the patent specification. The Court of Appeals for the Second Circuit rejected the patentee’s argument. It held that the “novel, unexpected, or superior non-obvious property must be disclosed in the 24321 F.2d at 238 (A-17, infra). 35 382 F.2d 22 (A-25, infra). 96 (A-7, infra). 7 (A-5, inf ra). 38 (A. 7, inf ra). 0 (A-1, infra). 16 patent application in order to be relied upon as a basis for patentability.” In contrast, the Court of Appeals for the Seventh Circuit in the present case has held the patent valid because of unexpected synergistic coaction even though nowhere described in the specification. Moreover, the Seventh Circuit decision fails even to re- quire that the claim state the ingredients with specificity. In Graver Tank & Mfg. Co. v. Linde Air Products, 336 U.S. 271, 276-7 (1949), this Court rejected patent claims because of such lack of specificity. The claims there unambigously recited “silicates”, but some of the silicates were not opera- tive. The Court of Appeals for the Seventh Circuit had sustained the patent by limiting the claims to the opera- tive silicates. Linde Air Products v. Graver Tank, 167 F. 2d 531, 537-8 (1948). This Court held that the claims could not be saved by construing them narrowly to cover only those silicates that had proved operative. It held that claims “fail . .. to perform their function as a measure of the grant when they overclaim the invention”, and that the Court of Appeals for the Seventh Circuit“ had erred in its view that claims could be sustained by limiting them to operative silicates.“ 4° Similarly, the Fifth Cireuit in Beckman Instruments v. Chem- tronics, Inc., 439 F.2d 1369 (1970) held that the court’s discretion to construe narrowly the patent claim in order to avoid the prior art is limited by the claims the patent actually makes. The court stated: “The claims of Clark’s patent are not, however, limited to any set of materials that produce any specific synergistic result .. . They cannot be read to be further limited. It is this fact, not want of invention, that invalidates the patent.” (439 F.2d at 1374) 41 167 F. 2d at 538. 2 In U.S. v. Adams, 383 U.S. 39, 49 (1966) this Court sustained a claim to a battery despite its failure to specify water as the elec- trolyte. This Court noted that “taken together with the stated ob- ject of disclosing a water-activated cell, the lack of reference to any electrolyte in Claims 1 and 10 indicates water alone could be used.” 17 The law on limiting patent claims to save patent validity is now completely unsettled. The Court of Appeals for the Seventh Circuit, despite Graver Tank, has reverted to the view that claims need not be specific. The Court of Appeals for the Sixth Circuit in Noll, supra, has reached the same result by relying upon the changes made when Section 112 of the 1952 Patent Code replaced the prior statute. The Court of Appeals for the Fifth Circuit, however, has adopted the opposite view and has narrowly viewed the extent claims can be limited to preserve validity.“ And the Court of Appeals for the Second Circuit, contrary to the ruling of the Seventh Circuit in the present case, has held that unexpected results not described in the patent specifi- cation cannot be relied upon to save validity.“ We submit that this Court should grant certiorari on the second question here presented and on the same question in the Noll case, and reexamine this important subject in the light of the statutory requirement that the patent “particularly point out and distinctly claim” the invention (35 USC § 112). 43 Beckman, supra. “ Carter-Wallace, supra. 18 CONCLUSION For the reasons stated, this Petition for Certiorari should be granted. Respectfully submitted, Grorce N. Hrssen 332 South Michigan Avenue Chicago, Illinois 60604 Gronda E. Frost 3044 W. Grand Blvd. Detroit, Michigan 48202 Dax mL K. Mayers Rosert A. GxRAnD 900 17th Street, N. W. Washington, D. C. 20006 Counsel for Petitioner HIn BRN, Noyes & BickNELL Win, Cutter & Pickerine Of Counsel United States Constitution, Art. I, §8, Cl. 8 The Congress shall have Power * * * To promote the Progress of Science and useful Arts, by securing for lim- ited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries. UNITED STATES CODE, TITLE 35: 9103. Conprrions ror PaTentasiity; Non-Osvious Supsect Matrer A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject mat- ter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordi- nary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. July 19, 1952, e. 950, $1, 66 Stat. 798. 9112. Specirication The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A-2 An element in a claim for a combination may be ex- pressed as a means or step for performing a specified fune- tion without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specifications and equivalents thereof. July 19, 1952, c. 950, § 1, 66 Stat. 798. HISTORICAL AND REVISION NOTES Reviser’s Note. Based on Title 35, U.S.C., 1946 ed., § 33 (RS. 4888 [derived from Act July 7, 1870, e. 230, § 26, 16 Stat. 201], amended (1) Mar. 3, 1915, e. 94, § 1, 38 Stat. 958; (2) May 23, 1930, e. 312, § 2, 46 Stat. 376). * eo a The clause relating to the claim is made a separate paragraph to emphasize the distinction between the description and the claim or definition, and the language is modified. A new paragraph relating to functional claims is added. Prior Law. For prior law on the subject of this section, see for- mer section 33 of this title, set out in Appendix II at the end of this title. A-3 Portions Of Opinion And Findings Of Fact And Conclusions Of Law In Devex Corporation et al v. General Motors Corporation and Houdaille Industries (Judge Edwin A. Robson, N.D. Illinois, February 1, 1962) DECISION ON MERITS ON VALIDITY OF CLAIM 4 OF REISSUE NO. 24,017 It is the Court’s conclusion that Claim 4 of the reissue patent is invalid as anticipated by prior patents, prior use, and prior publications. The United States patents to Singer, Orozeo and Whitbeck, the British patents, the 1943 runs at Briggs Manufacturing Company, and the German publications considered together reveal the phosphate coat- ings on metals to be drawn, in conjunction with lubricants, some co-acting with the phosphate coating. While it is arguable that the precise combination and co-action indi- cated by the patent are not found verbatim in the prior art, one armed with the knowledge of a worker skilled in that field could, the Court believes, have achieved the result covered by Claim 4 of the reissue patent. Furthermore, the breadth and indefiniteness of proportions of the elements of that claim“ preclude a holding of its validity in view of the knowledgeable prior art,‘ in view of the disclosures of the specifications, and unwarranted monopolizing of the field of use of borax and soap. The specifications state that borax is to be used in the propor- tions of two to five times the amount of soap. There is no specification, disclosure or limitation in Claim 4 of the amount or proportions of solid inorganic eompound (borax) or solid meltable organic binding material (soap). 5 OReilly, et al. v. Morse, et al., 56 U.S. 65 (1853); Holland Furniture Company v. Perkins Glue Company, 277 U.S. 245 (1928) ; The Incandescent Lamp Patent, 159 U.S. 465 ( 1895) ; General Elec- tric Co. v. Wabash Appliance Corp., et al., 304 U.S. 364 (1938) ; United Carbon v. Binney & Smith Co., 317 U.S. 228 (1942). * * * A * 3 * Defendants contend that a patentee may not compel inde- pendent experimentation by others to ascertain the bounds of the claims” and a patentee may not by claiming a method broadly in terms of a result or function, foreclose all means and ways of practically obtaining such result or objective." Substitution of one material for another of the same class in an old combination does not constitute invention.“ The broadness of a claim such as Claim 4, defendants assert, has long been condemned.“ On the other hand, patentable invention is claimed by plaintiffs in that it is asserted that Henricks’ patented proc- ess, although using old elements, achieves new and surpris- ing results, or, stated differently, the whole exceeds the sum of the parts.“ They frankly concede that all the elements of the Hen- ricks’ invention were old, but urge they were put together in a new way, resulting in new and unpredictable results 12 Standard Oil Company of California v. Tide Water Associated Oil Co., 154 F.2d 579 (3rd Cir. 1946). 13 National Carbon Co., Inc. v. Western Shade Cloth Co., 93 F.2d 94 (7th Cir. 1937). 14 Johnson Laboratories, Inc. v. Meissner, 98 F.2d 937 (7th Cir. 1938). 15 OReilly, et al. v. Morse, et al., 56 U.S. 61 (1853); Holland Furniture Company v. Perkins Glue Company, 277 U.S. 245 (1928); The Incandescent Lamp Patent, 159 U.S. 465 (1895); General Elec- tric Co. v. Wabash Appliance Corp., et al., 304 U.S. 364 (1938); United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1924). 16 Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950) ; Lewyt Corporation v. Health-Mor, Inc. et al., 181 F.2d 855 (7th Cir. 1950); Blaw-Knoz Company v. I. D. Lain Company, Inc., 230 F.2d 373 (7th Cir. 1956) ; The Mojonnier Dawson Company v. U.S. Dairies Sales Corporation, 251 F.2d 345 (7th Cir. 1958); Armour & Co. v. Wilson & Co., Inc., 274 F.2d 143 (7th Cir. 1960) ; Donner v. Sheer Pharmacal Corporation, 64 F.2d 217 (8th Cir. 1933). A-5 and reactions. They emphasize that Claim 4 uses a phos- phate coating (the abrasive coating of the Singer process), seemingly a retrogression in the art; a fixed overlying film of which the solid meltable organic constituent is soap and a meltable inorganic compound (Borax) distributed there- through, meltable at a temperature below the melting point of the abrasive phosphate coating and having a hardness not more than 5 on the Mohs’ scale. The “amazingly efficient” and “remarkable” results claimed by plaintiffs from the Henricks’ patented process is that “the surface of the product is improved, product dimensions are maintained with consistency, tool life is lengthened, and the practical limits of the shaping opera- tion are extended.” Further, the “formation of insoluble or difficultly-soluble deposits on the drawn metal is inhib- ited, such as zine stearate. Instead of the phosphate coating reacting with the soap to form insoluble abrasive com- pounds, the phosphate reacts with the borax to form amor- phous, glassy materials which contribute significantly to the lubricating value of the coating and assist in the drawing operation and yet, amazingly do not present any problem of cleaning.” The process results in articles of “superior quality at lower cost.” Defendants, on the other hand, deny any unexpected or surprising co-action or results by the use of soap-borax lubricants over phosphate. They note that there is no substantial difference in the rods introduced in evidence, drawn only with phosphate coating and with soap, and with soap and borax. The Court concludes that Claim 4 of the Reissue Patent No. 24,017 is invalid for several reasons. The claim does not specify the kind of phosphate coating, the kind of meltable organic binding, and the kind of solid inorganic compound to be utilized, as well as not specifying A-6 the amounts and relative proportions of any such items. As defendants’ proof showed, some processes could be con- ceived of ingredients of those classes which would not be workable. 0 . 8 FINDINGS OF FACT AND CONCLUSIONS OF LAW ENTERED PURSUANT TO THE COURT'S DECISION ON MERITS ON VALIDITY OF CLAIM 4 OF REISSUE NO. 24,017 6. (a) It was well known in the art prior to the patent in suit on April 29, 1946, that it was a definite improvement and aid in cold drawing and deforming steel to provide the surface of the steel with integral phosphate coatings and apply lubricants over such coatings. (b) The use of zinc phosphate coatings to which oil is applied as a lubricant in drawing and deforming steel tubes is disclosed in Defendant’s Exhibit 42, British patent 496,866 of 1938. (c) The drawing and deforming of steel provided with manganese phosphate coatings impregnated with oil or fat or a mixture of oil and fat as a lubricant is disclosed in Defendant’s Exhibit 41, British patent 494,830 of 1938. With respect to lubricants that had been known for use in drawing operations, this patent also discloses (column 1, lines 14-22): “It is known to treat iron pipes, in particular, prior to a drawing process, with fats or oils, or to precipitate deposits thereon, in order to soften the surface and to reduce the wear on the drawing tools. It has also been the practice to mix the oil or fat with pulverulent sub- stances, such as tale or litharge, for the purpose of increasing its efficiency.” A-7 The fats disclosed in this patent include fats such as tal- lows, of which many are known to be solid at room tempera- ture, and the litharge (lead oxide), which the patent states it had been the practice to mix with the oil or fat for the purpose of increasing its efficiency. There is thus disclosed a composition providing a solid meltable organic binding material (namely, fats known to be solid at room tempera- ture) containing distributed therethrough a solid inorganic compound (namely, the litharge) meltable at a temperature below the melting point of ferrous metal and having a hard- ness not exceeding 5 on Mohs’ hardness scale, all within the definition of the corresponding language employed in claim 4 of the patent in suit. Lead oxide (litharge) is specifically listed in the patent in suit, column 9, Table I, under fusible pigments suitable for use as a solid inorganic compound meltable at a temperature below the melting point of fer- rous metal phosphate and having a hardness not exceeding 5 on Mohs’ hardness scale, called for by the corresponding language in claim 4 of the patent in suit (Gibson R. 617- 623). The British patent 494,830 therefore contains disclosure of a lubricating composition for drawing and deforming ferrous metal within the broad terminology employed in claim 4 of the patent in suit. 12. Plaintiffs alleged at trial that compounds other than zinc phosphate and the borax are formed by chemical reac- tion of the borax with soap and the zine phosphate of the phosphate coating, and are essential to the successful opera- tion of the process described in claim 4 of the patent in suit. The patent in suit does not describe any chemical reac- tions in the drawing operations with soap-borax applied over phosphate coatings which produce or require the pro- duction of any other compounds to be essential to success- ful drawing operations; claim 4 of the patent in suit con- A-8 tains no reference to or requirement of the presence of such other compounds in the operation of the process defined by the claim. The other compounds alleged to be produced by a chemi- cal reaction of the borax in the coating and the phosphate of the coating were not identified with certainty by or in the X-ray diffraction patterns produced, Plaintiffs’ Ex- hibits 22, 23, 24 and 25 (R. 191-210, 543-558). It was admitted that no quantitative values or amounts of the compounds alleged to have been formed by chemical reaction of the borax and alleged to be present could be determined from the X-ray diffraction patterns (R. 243. 245). There is no evidence that the compounds alleged to have been formed by chemical reaction of the borax and to have been present in the samples tested were present in any significant quantity or had an controlling or significant effect in the drawing operations. 27. The evidence establishes that in 1943 and for more than two years prior to the time, April 29, 1946, the date relied upon by plaintiffs in this case for the making of the invention of claim 4 of the patent in suit, the differences between the subject matter sought to be patented in claim 4 and the prior art were such that the subject matter as a whole would have been and was obvious to persons having ordinary skill in the art of drawing and deforming steel. 28. Claim 4 of the patent in suit is indefinite and fails to particularly point out and distinctly claim, as required by the Patent Act, 35 U.S.C. Section 112, the subject matter which applicant regards as his invention. With respect to the use of borax as the solid inorganic compound of the claim, in answer to defendant’s inter- rogatory 16: * * * State the minimum and the maximum proportions of borax and soap that plaintiffs will contend at the A-9 trial of this cause to be within the scope of the said claim 4 of said reissue patent.” plaintiffs answered as follows: “Plaintiffs will make no contentions and cannot speculate as to the minimum and maximum proportions of borax and soap which might be within the scope of claim 4 of Reissue Patent No. 24,017 because all circum- stances must be evaluated and considered. ” At the trial the patentee Henricks speculates (R. 468- 504) with vague references to unidentified literature regard- ing mineralogy and cosmetics, without being able to define any minimum or maximum amount of borax required, and his final summation of the matter leaves the question wholly indeterminate and indefinite (R. 501, 503, 504). Claim 4 says nothing whatever about the amounts or proportions of “solid meltable organic binding material”, or the amounts or proportions of “solid inorganic com- pound”. As written, the claim includes as “solid meltable organic binding material” all of the multitude of compounds men- tioned in the patent and others that could be selected from the tables and literature which could be regarded as organic —capable of becoming solid—and meltable. It is alleged in this case to include also sodium stearate soap, which is listed in the standard chemical handbooks as an inorganic material (Dr. Gibson, R. 794-796, 803-808, 810-812). As written, the claim includes as “solid inorganic com- pound” all compounds listed in column 9, Table I—F usible Pigments, in the patent in suit, which could be selected from the tables and literature and which would melt below the melting point of ferrous phosphate and have a hardness less than 5 on the Mohs’ hardness scale. A-10 The claim contains no limits or instructions as to the proportions of such compounds that would be operable to carry out the alleged process invention stated by the claim. The claim does not specify or call for the alleged mineral- izing, metamorphizing or fluxing of the phosphate of the coating to form glass, or for the alleged emulsifying of the residual coating or film left after drawing. There is no evidence that all of the materials includable within the terminology of the claim would perform the alleged functions. No one could determine otherwise than by extensive experiments whether all or how many of the compounds includable within the terminology employed could be used, or in what mixtures or proportions they could be used, nor whether they would accomplish the alleged mineralizing, metamorphizing or fluxing. The claim does not particularly point out and distinctly claim the alleged invention, i.e., emulsifying, or mineral- izing, metamorphizing and fluxing, that Henricks (R. 421) states he swore the oath to. All such matter was cancelled from the application for the patent (Finding 13). Henricks considers sulfur to be an inorganic pigment within the terminology of claim 4, and admits that it per- forms none of the alleged glass forming mineralizing functions of borax, and is of no help in cleaning effect (R. 513-514). CONCLUSIONS OF LAW 1. Claim 4 of the patent in suit Re. 24,017 is invalid: (a) On the ground of lack of lawfully patentable inven- tion in view of the prior art known and practiced at and before the time the alleged invention of claim 4 was made; A-11 (b) On the ground that the process of claim 4 was known to and used by others before the applicant for the patent in suit claims to have made the discovery or invention thereof i (o) On the ground that the patentee did not invent the subject matter purported to be described in claim 4 but merely adopted a process which, in view of the prior art and practice known in 1943, was obvious and known to per- sons familiar with and skilled in the art of drawing metal; (d) On the ground that claim 4 defines merely an aggre- gation of process steps that were separately old and well known and that when combined produce no new, unexpected or unobvious result. (e) On the ground that claim 4 fails to meet the require- ments of the Patent Act, 35 U.S.C. Section 112, in failing to particularly point out and distinctly claim subject matter which the patentee regards as his invention, or subject mat- ter for which the patentee is lawfully entitled to Letters Patent. 2. That the complaints filed herein be dismissed for want of cause for action. 8/ Epwin A. Rosson United States District J udge COPY BOUN DEVEX CORPORATION et al., Plaintiffs Appellants, v. MOTORS CORPORATION et al., Defendants-Appellees. No. 138979. United States Court of Appeals Seventh Circuit. July 12, 1963. Rehearing Denied Sept. 4, 1963. Suit for infringement of reissue pat- ent No. 24,017 relating to lubrication of netal surfaces in cold drawing and form- ing operations. The United States Dis- riet Court for the Northern District of llinois, Eastern Division, Edwin A. Rob- wn, J., rendered a judgment holding the oly claim in issue invalid and plaintiff appealed. The Court of Appeals, Duffy, Circuit Judge, held that the claim was valid and was not invalid as being too broad and lacking in specificity, as adop- tion of process which was obvious to person skilled in art or on grounds of pblic use. Reversed, L Patents S101 (6) That claim distinguished from $1 references in mature art, none of which uticipated, clearly established that it vas not too broad and indefinite. 85 USC.A. § 112. 1 Patents S101 (8) Patent claims should be generie in curaeter and do not necessarily have to be specific, 1 Patents 118.21 Statutory presumption of validity il patent is not overcome except by clear ud cogent evidence. 35 U.S. C. A. § 282. |, Claim 4 reads: “4. The process of working ferrous metal which comprises forming on the mrface of the metal a phosphate coating superimposing thereon a fixed film somposition comprising a solid melt- ID CLOSE TO EDGE 4. Courts 408.3 (16) Where evidence relied upon in adju- dicating validity of patents appeared in depositions, Court of Appeals was in as good position as trial court to examine it and determine whether its use was pub- lic use. 5. Patents S862 (3) To invalidate patent on ground of public use, prior public use must be es- tablished by clear and convincing proof. 6. Patents S328 Claim No. 4 of resissue patent No. 24,017 relating to lubrication of metal surfaces in cold drawing and forming op- erations was valid, and was not invalid as being too broad and lacking in speci- ficity, as adoption of process which was obvious to person skilled in art or on grounds of public use. — ne rns Frank H. Marks, Chicago, III., William C. McCoy, Jr., Cleveland, Ohio, Walter J. Blenko, Pittsburgh, Pa., for appellant. Arthur W. Dickey and Neal A. Wal- drop, Detroit, Mich., for defendant Gen- eral Motors Corporation. Benjamin H. Sherman, Carlton Hill, Chicago, III., for defendant-appellee, Hou- daille Industries, Inc. George N. Hibben and Jerome F. Fal- lon, Chicago, III., for other appellees. Before DUFFY and SWYGERT, Cir- cuit Judges, and MAJOR, Senior Circuit Judge. DUFFY, Circuit Judge. These are two civil suits for infringe- ment of Henricks’ Reissue Patent No. 24,017 which were consolidated for trial on the common issue of validity. Claim 4 is the only claim at issue. 1 The District Court held Claim 4 of the patent in suit distributed therethrough a solid inorganic compound meltable at a temperature be- low the melting point of the ferrous metal phosphate of said coating and hav- ing a hardnese not exceeding 5 on the Mohs’ hardness seale, and thereafter de- Cite as 32) to be invalid in view of the indefiniteness of the claim, the prior art and prior pub- lic use. The patent in suit relates to lubrication of metal surfaces in cold drawing and deforming operations in shaping steel to desired forms by dies, to reduce friction between the steel workpiece being drawn or shaped and the die, to avoid scoring and tearing of the metal being drawn and to avoid injury to the surface of the dies. The patent in suit is the outcome of an application, Serial No. 665,905, filed April 29, 1946 by the patentee Henricks, which was abandoned in favor of a con- tinuation-in-part application filed Octo- ber 31, 1950, upon which was issued United States Patent No. 2,588,234, dated March 4, 1952, for which application for reissue was filed March 1, 1954, upon which Re. Patent No. 24,017 now in suit issued on June 7, 1955. Claim 4, the only claim in issue, is iden- tical to Claim 45 as allowed by the Pat- ent Office in the 1946 application. April 29, 1946, the date when the 1946 appli- cation was filed, is therefore the record date of invention to which the patentee is entitled. The patent in suit relates particularly to the lubrication of metal for drawing and forming operations. It concerns cold forming operations as opposed to hot forming operations. When metal is drawn or deformed, to transform a blank or workpiece into another desired shape, there is necessarily some movement be- tween the surface of the blank and the surface of the die, and an accompanying generation of high pressures and temper- atures. Adequate lubrication is essen- tial. Unless suitable provision for lubri- cating the surfaces is made, tearing of the metal or galling of the dies results. The problem is most acute where difficult draws of ferrous metals are involved. Drawing operations require costly tools and dies. It follows that wear and abra- sion are very important considerations in tool and die work. Among the suggestions contained in COPY BOUND CLOSE TO EDGE upon the surface of the work to be d an integral phosphate coating and apph- ing thereto a film of sodium tallow soa having borax distributed therein. It js contended that a solid meltable organi binding material mentioned in Claim 4 includes sodium tallow soap and that 2 solid inorganic compound mentioned in the claim includes borax. Mohs’ hardness scale is a known stand. ard for indicating the relative hardness of materials. It is used in Claim 4 asa specification that the “solid inorganic compound” of the claim should not be hard enough to scratch the steel being drawn. The prior art disclosed a number of lubricating schemes. These included the use of ordinary lubricating oils or lubri- cants containing finely divided infusible pigments such as clay, lime, mica or graphite. Most of such schemes wer classified as “wet-film” lubricants which were wet and oily to the touch. Later followed what is known as Sing- er's process, evolved in Germany and de- scribed in Singer United States Patent No. 2,105,015. Singer’s scheme was to form a sponge-like coating, such as 4 phosphate, on the surface of the work- piece. The coating was not wet or flow- able but was integral with the workpiece and could not be squeezed out in the dra ing operation. Phosphate coatings had been in use as early as 1914. These coatings had no lubricating value per se. They we in fact, abrasive and caused tool and die wear even through superposed lubricant: The reason they were used in lubricating schemes was due to their ability to ab and carry lubricant into a high pressure zone. The next step forward in the art the Singer process, was the development of the Gilron “Dry-Film” soap and borat lubricant. In this process, soap and b ax were mixed with water and as an aqueous solution to the surface of the workpiece. The soap and borax ing was then dried by heat lamp; Tir nid COPY js drawn, it was a hard fixed film and el with the workpiece in the high pesure zones. No other lubricant was red. The Gilron soap-borax coating on bare pial being transparent, permitted in- getion of the workpiece and eliminated eabrasive phosphate. The Gilron proc- ss mpplanted the Singer process in the gel case program of the United States (ernment during World War II. jn 1942 and thereafter until 1945, Hen- ids, the patentee of the patent in suit, employed by Gilron Products Com- ay and was familiar with the uses of lubricants described in pat- s No. 2,469,473 and 2,530,837. The lubricating product for use in steel was sold under the trade- “Drawcote” and was composed pally of sodium soap formed from and palm oil, and of borax in pro- tion by weight of 10-33% soap to 67- Nt borax. Drawcote was sold in the form of a dry . Gilron Products Company ob- patents on Drawcote and its use. States Patents No. 2,469,473 dat- May 10, 1949, and No. 2,530,837 dat- November 29, 1950, were obtained up- the joint application of Gilbert H. Or- a partner of Gilron Products Com- yand his employee Henricks, the pat- of the patent in suit. Drawcote was extensively sold and used 1M2 and 1943 in cold drawing of steel cases. In those years during War II, there was a shortage of w for making brass shell cases for ammunition used in military and arms weapons. The Government i manufacturers of shell cases mike them from steel by cold draw- ind deforming. This manufacture of shell cases occurred largely during period 1942-1944, after which copper in became available. Inthe manufacture of shell cases, Gil- it Drawcote was able to replace the Mother lubricants such as lubricat- r coatings for steel and lubricat- PY BOUND CLOSE IN CENTER In 1943, among those using a lubricat phosphate coating on steel in the ope tion of cold drawing steel 75 mm. she cases, was Briggs Manufacturing Comp ny, Detroit. That Company was the providing zine phosphate coatings o steel blanks and applying thereover sulphurized grease as a lubricant. Abo June 1943, Whitbeck of Gilron Produc Company sold Drawcote to Briggs. experimentation, Briggs found it cou successfully carry out its cold drawi operation with the Drawcote soap-bo lubricant applied directly to the surf of the steel without the phosphate ing. Plaintiffs admit the Gilron borax cc ing solved many drawing problems e isting at that time and that even tod it is satisfactory for many draws. He ever, plaintiffs claim the process has i limitations and cannot do what the He ricks process does. The Patent Office was fully advised the nature and advantages of the Gil process. Patent No. 2,469,473 was a fi wrapper reference. Several references are made in briefs to the “German Process.” T was developed prior to 1942. In th process, a phosphated workpiece is so ed as long as fifteen hours in an aquec soap solution to form thereon by cher cal interaction between the phosphate a soap, a water-insoluble soap film. A se ous defect in this scheme was that residual deposit was not water solub and presented a difficult cleaning proble especially if the workpiece was to electroplated. Plaintiffs concede all of the eleme which Henricks employed in Claim 4 the patent in suit were cld per se or other combinations and have been a able in the art for some years. Howev plaintiffs contend that the elements whi Henricks selected were put together a new way and achieved a new and une pected result. Plaintiffs claim that in the specific bodiment of Claim 4, the “phosphate co: er process—a seeming retrogression in the art. The overlying film is a fixed one and the “solid meltable organic” con- stituent thereof is soap, the use of which had previously been found undesirable because of the cleaning problem. The ‘solid meltable inorganic compound” dis- buted therethrough, meltable at a tem- perature below the melting point of the abrasive phosphate coating and having a hardness not more than 5 on the Mohs’ cale, is borax. Plaintiffs argue that new and unexpect- ed results flow from the conjunction of lements defined in the drawing process of the Henricks’ patent; that tool and die fe is greatly increased and severe draw- ng operations can now be performed hich were previously impossible. Plain- iffs say there is a coaction during the high temperatures and pressures where- by the abrasive phosphate coating reacts vith the borax to form amorphous glassy materials which contribute significantly > the lubricating value of the coating; hat the formation of insoluble organic naterials is inhibited and there is no eaning problem. There is substantial evidence in the cord to prove that a new coaction be- n the soap, borax and phosphate oc- rred during the drawing process. Friedberg's tests showed that in the Hen- process, new compounds are form- d; the formation of insoluble organic fompounds is inhibited, and the abrasive phosphate is transformed into a glassy morphous compound having highly ef- ective lubricating properties. There was also proof based upon com- mercial use and experience. Metal Form- ng & Coining Corporation tried a num- of the prior art schemes including ils, waxes and drawing compounds, but testimony showed that the only proc- ss that enabled this Company to cold orm or coin small parts commercially is he combination in the Henricks’ patent n suit. Testimony showed tool and die ife was increased one thousand fold so hat for given tools, three or four hun- ed thousand pieces were run where pre- COPY BOUND CLOSE TO EDGE Cite as 321 F.2d 234 (1963) this argument we said at page 256 of 2 viously only three or four hundred 5 could be run. The Henricks’ pre made it possible to manufacture cle of superior quality at a much lower ec the advantage being so marked in 80 cases as to spell the difference } success and failure on heavy reductio; and difficult extrusions, Defendants have engendered a interest in an endeavor to have the Her ricks’ patent in suit declared invalj The defense of this action has — 90 ducted primarily by the attorneys for th Parker Rust Proof Company of D Parker supplies phosphate and lubricai ing materials to defendant General tors, and is holding General Motors! Jess. Parker solicited financial and leg help in this lawsuit from a number of it own competitors, and at least three « these competitors in manufacturing an selling phosphate and lubricating ma al, have given assistance in this case. ( course, these competitors had the ri to give such assistance. However, sud interest does indicate that the proc covered in Claim 4 of the patent in suit something of special value and merit ar of great importance to those working the field of cold drawing and deformi operations. The trial court held Claim 4 too bre and lacking in specificity. The court sta ed the claim did not specify the kind phosphate coating, the kind of organ binding, the kind of solid inorganic ec pound, as well as not specifying amounts and relative proportions of such items. Pertinent on this point is a recent cai before this Court, Binks Manufacturi Company v. Ransburg Electro-Coati Corporation, 281 F.2d 252. In that ca: the claim was made that the metl claims of the patent there in suit didi satisfy the requirements of the p statute (35 U.S.C. § 112) due to fai to specify voltage, spacing and liquids which they are applicable. In overruli F.2d: “The process claims define specific steps of procedure ang COP ms being addressed to those skilled feart * * * need not recite de- We further stated at page 257 #1 F.2d: “There is no requirement quantitative values for such factors witage, spacing and liquid character- cs be recited. The fact that experi- jon or the exercise of judgment is mary to adapt a patented process to material or to obtain the par- results desired does not impair ity of the patent.” fl} The fact that Claim 4 distin- from thirty-one references in a art, none of which anticipate, dearly establishes that the claim too broad and indefinite. ft} Patent claims should be generic r and do not necessarily have specific. It is entirely proper to re- in Claim 4 to “a phosphate coating” specifying which “phosphate * n examples stated in the patent in and the specification teach the use and borax over phosphate. They formulas for the soap and borax and identify the phosphate coating baths one skilled in the art could make The trial court was in error in that Claim 4 in the patent in too broad and lacking in specifici- It is fundamental that a patent ned to be valid and the burden ablishing invalidity rests on the par- ting it (35 U.S.C. § 282). It is established the presumption of valid- not overcome except by clear and evidence. Radio Corporation of fea v. Radio Engineering Labora- Inc., 293 U.S. 1, 7, 55 S.Ct. 928, 79 163; Hazeltine Research, Inc. v. Electric Company, Inc., 7 Cir., 271 218, 224. dants claim the Patent Office did ider Singer Patent No. 2,105,015 British Patent No. 494,830 of 1938, several publications. However, ager process is described in British Yo. 496,866 which was relied upon the patent. Soap and borax dry-film lu- bricants are described in Patents No. 2.— 469,473 and 2,470,062. The former was relied upon as a reference in the Patent Office and the latter is referred to in the body of the specification of the Henricks’ patent in suit. The Patent Examiner had before him as prior art, all of the elements of Hen- ricks’ combination and found patentable invention in the combining of these ele- ments. In fact, the Patent Office twice found invention over the prior art, first, when the original patent was granted, and second, when the reissue patent was granted. There is no showing in this case that the most pertinent prior art was not considered by the Patent Office. On the contrary, we think the most perti- nent art was cited and was found insuffi- cient to negative patentability. We cannot sustain the conclusion of law of the trial court that Henricks mere- ly adopted the process which, in view of the prior art, was obvious to persons skilled in the art. The history of Parker Rust Proof Company demonstrates the process was not obvious. Parker Rust Proof has been a self-proclaimed leader in this field since 1914, but Parker re- mained uncertain as to how the problem should be solved until some considerable time after the Henricks’ invention date. Dr. Gibson was Technical Director for Parker in 1949 when they decided to de- velop a lubrication system. Dr. Gibson is now a professor of chemistry and quali- fied as one “skilled in the art.” Parker, in 1949, was operating in the light of the prior art. Dr. Gibson was in charge of this development. They started in “ba- sically with a literature search.” They then worked with wet-film lubricants be- cause, as Dr. Gibson testified, “We hadn’t realized the true value of drying that particular film.” Parker experimented with the formation of an organic film with phosphate as mentioned in the Ger- man references. Finally, Parker came to the Henricks’ combination which it extolled in its literature as a new develop- SOPY BOUND CLOSE IN CENTER The literature references which Parker now points to as teaching the invention, taught Parker nothing. Neither did the practices at Briggs Manufacturing Com- pany. The substitution of soap and bor- ax dry-film for the wet lubricant in the Singer process was, in fact, not obvious to Parker. The Henricks’ process was not, in fact, obvious to the defendants and the others now associated with them in the defense of this suit. None of them made the sub- stitution of elements in the Singer proc- ess which, by hindsight, now appears to them to have been “obvious.” Although the learned trial judge found Claim 4 of the patent in suit to be in- valid on all suggested grounds, we are of the view that the closest question in the case is the finding and conclusion of the trial court as to public use. This, in turn, refers to use at Briggs Manufac- turing Company in 1943. All of the evi- dence on this point, except patentee’s own evidence, is contained in depositions. It is apparent from Finding 14 that the Court relied upon the testimony of Tous- ley and Brown which appeared in deposi- tions. [4] As the evidence relied on appears in depositions, we are in as good a posi- tion as the trial court to examine it and determine for ourselves whether the use at Briggs Manufacturing Company was a public use. Kiwi Coders Corporation v. Acro Tool & Die Works, 7 Cir., 250 F.2d 562, 568; Lewyt Corporation v. Health- Mor, Inc., 7 Cir., 181 F.2d 855, 857. The trial court did not hold the combi- nation claimed in the patent in suit was publicly used in its entirety or that the valuable new result flowing from the combination was understood or achieved at Briggs. What the trial court decided was: “While it is arguable that the pre- cise combination and coaction indicated by the patent are not found verbatim in the prior art, one armed with the knowl- edge of a worker skilled in that field could, the Court believes, have achieved the result covered by Claim 4 of the reissue patent.” The al court he COPY BOUND CLOSE TO EDGE Cite as 321 F. ad 234 (1963) recognized that the patentee in the pater in suit did make a stride forward in 1 art but apparently thought it was 18 sufficient to merit a patent monopoly, {5] There exists a well establish. rule that to invalidate a patent on tb ground of public use, the prior public ys must be established by clear and convine ing proof. In Smith v. Hall, 301 U.S. 216, 233, 5 S.Ct. 711, 718, 81 L.Ed. 1049, the Coy refers to the rule as * * the hey burden of persuasion which rests up one who seeks to negative novelty in patent by showing prior use.” In Rad Corporation of America v. Radio Eng neering Laboratories, Inc., 293 U.S. 1, 55 S.Ct. 928, 931, 79 L.Ed. 163, Court cites with approval a number cases for the proposition, the burden proof is upon the party setting it up “every reasonable doubt should be resol ed against him.” Indeed, the late Chi Judge Learned Hand stated the rule even more emphatic language in Block Nathan Anklet Support Co., Inc., 2 Ci 9 F.2d 311, 313, “* * * but insu cases probability, even extreme probab ty, is not enough. The proof must be absolute as in a criminal conviction; deed, the rule comes nearly to this, th one must have contemporaneous reco verbal or structural.” In June 1943, when Henricks came the Briggs Manufacturing Company behalf of the Gilron Products Drawed a number of experiments were conduc which led to the changeover from Singer process to Gilron. Each b tested was subjected to six consecut forming operations. Henricks exp mentally ran two baskets of blanks wit phosphate undercoat. There were proximately one hundred test pieces the two baskets, a very small amount ¢ sidering the large volume being hand No further notice was taken of the pi themselves, and they were enveloped the big flow of material that was inp ess. The success of the process w: no way there demonstrated. This g COF ise of the patented combination y Briggs. In fact, Briggs abandoned the use of phosphate entirely. The tem- prary and almost casual experiment rith soap and borax went into the dis- ard. „ After the decision in this case by the tial court, Henricks received informa- „I that the United States Government “Bpirsenal at Joliet, might have a report shich would show the true facts as to the Briggs operation. Inquiry there reveal- nothing. The inquiry was forwarded Frankfort Arsenal. Nothing was nd there, but when the inquiry was arded to the Record Files in Mis- ri, a report was located. Henricks permitted to read the report and ke extracts therefrom. Plaintiffs filed a motion to amend the ings of fact and for a new trial. The rt denied the motion. This was un- ndable where the Court considered patent to be invalid on all grounds wed. However, as our view is that the ling point of this case is the question ileged public use at Briggs, we think report should have been considered, tially that part which deals with the ial experimentation with the Gilron It would appear reasonable that dere had been any significant or more experimental use of soap and borax phosphate in cartridge-case manu- at Briggs, it would surely have ured in the report which the Briggs nals made to the army ordnance. ther convincing argument in favor jaintiffs’ contention is that if soap borax had been applied over phos- in regular production, there would ily have been a tank for phos- solution and a separate tank for wap and borax solution arranged in u so that the baskets containing the 8 or workpieces would move succes- through the two solutions. There daim that any such procedure was We hold there is no sufficient ing of prior public use and that 4 of the patent in suit is valid. will, therefore be remanded — PY BOUND CLOSE IN CENTER to the District Court for further pre ceedings consistent with this opinion, 2 the question of validity only was passe upon in the previous trial. Reversed. DEVEX CORPORATION et al., Plaintiffs- Appellees, V. HOUDAILLE INDUSTRIES, INC, Defendant-Appellant. No. 15732. United States Court of Appeals Seventh Circuit. July 12, 1967. Action for patent infringement. The United States District Court for the Northern District of Illinois, Eastern COPY ROLIND Ci OSE TH ENGE Cc Edwin A. Robson, J., granted iffs’ motion for summary judg- est, and defendant appealed. The ert of Appeals, Major, Senior Circuit ge, held that importance of difference tween patent holders’ process requiring meme temperatures and pressures of 1.000 to 250,000 pounds Hertz stress pi alleged infringing process requiring y 10 to 25,000 pounds Hertz stress fact question, precluding summary ment decreeing infringement and joining further infringement of pat- ist claim which was to be given nar- wand restricted construction. Reversed and remanded. Courts €=406.1(3) A court with jurisdiction to hear al from injunction order must have diction to consider propriety of the mise upon which injunction issued. US.C.A. § 1292(a) (1). Patents S324 (5) Reviewing court’s authority to con- wr propriety of injunction against ther patent infringement carried th it the authority to consider the in- bngement issue. 28 U.S.C.A. § 1292 a) (1). Patents S324 (2) Court of Appeals had jurisdiction appeal from summary judgment grant- injunction against further infringe- mt of patent. 28 U.S.C.A. § 1292(a) : Fed. Rules Civ. Proc. rule 56(c), 28 CA. Patents S324 (5½) Defendant did not waive right to lain on appeal of error in summary ment for injunction against further ent infringement although defendant med notice of motion informing plain- tis that defendant, without waiving rights, would present attached draft ummary judgment order. Fed. Rules Proc. rule 56 (e), 28 U.S. C. A. Courts 406.3 (1) bn appeal from summary judgment, * Appeals to make determination on factual issues. Fed. Rules Civ. Proe. rule 56 (e), 28 U.S. C. A. 6. Federal Civil Procedure 22461 Caution is to be exercised in grant- ing summary judgment. Fed.Rules Civ. Proc. rule 56(c), 28 U.S. C. A. 7. Patents S157 (1) The construction of a claim when patent validity is contested controls con- struction of same claim when infringe- ment is alleged. 8. Patents S323 Importance of difference between patent holders’ process requiring ex- treme temperatures and pressures of 100,000 to 250,000 pounds Hertz stress and alleged infringing process requiring only 10 to 25,000 pounds Hertz stress was fact question, precluding summary judg- ment decreeing infringement and enjoin- ing further infringement of patent claim which was to be given narrow and re- stricted construction. 9. Patents S312 (8) Whether 1946 disclosure relating to glyceryl borate was equivalent of soap- borax over phosphate disclosed in patent specifications filed in 1950 was fact issue for expert testimony, in patent in- fringement case. 10. Patents S314 That patentee made admission to Canadian Patent Office contrary to that made to court in United States with re- lation to date of patent disclosure re- lated to patentee’s credibility and pre- sented matter for consideration by trier of faets. — Carlton Hill, Benjamin H. Sherman, Chicago, III., for appellant. Walter J. Blenko, Arland T. Stein, Pittsburgh, Pa., William C. McCoy, Jr., Cleveland, Ohio, Frank H. Marks, Chi- cago, III., for appellees. Before MAJOR, Senior Circuit Judge. and SWT GERT and CUMMINGS, Cir- S reer r err er rr MAJOR, Senior Circuit Judge. This appeal is a continuation of litiga- ion of long duration. On November 13, 1956, plaintiffs filed their complaint gainst General Motors and Metal Lu- bricants Company for infringement of Henricks Patent Re. 24,017, dated June 7, 1955. On May 22, 1957, plaintiffs iled a companion case against the in- stant defendant (Houdaille Industries, Inc.), for infringement of the same pat- ent. In both cases plaintiffs relied solely upon Claim 4. The cases were onsolidated on the common issue of va- idity, and Judge Robson held the Hen- icks patent invalid. On appeal, this ourt reversed, held the claim valid and remanded the case for further proceedings consistent with the opinion. Devex Corp. et al. v. General Motors orp. et al., 7 Cir., 321 F.2d 234, cert. den. 375 U.S. $71, 84 S.Ct. 490, 11 L.Ed. Pd 418. Upon remand, the case against Metal Lubricants Company was dismissed by consent and that against General Motors, on motion by plaintiffs, was ansferred to the District of Delaware. In the instant case plaintiffs moved or a summary judgment that defendant ad infringed Claim 4 of the Henricks patent, which was first denied. After urther deposition testimony was taken, plaintiffs renewed their motion and on ebruary 17, 1966, it was allowed. The fase is here on defendant’s appeal from his judgment. On June 23, 1965, prior to plaintiffs’ enewed motion for summary judgment, efendant, with leave of the Court, filed n amended answer setting up additional efenses, including (a) license, (b) aches, (c) prior public use by defendant, d) shop right, (e) patent misuse, (f) mtervening rights, (g) lack of contin- ity between the original patent and the receding abandoned application and h) release. The amended answer al- egedly was based upon facts ascertained Tom the May 17, 1965 deposition of Henricks. In connection with its COPY BOUND CLOSE TO EDGE the production of documents, which denied. The Court in its summary judgment decreed infringement of Claim 4, es joined defendant from further infringe. ment and referred the case to a Special Master to hear and submit to the Court findings on the issue of damages. The judgment also provided for a determin tion by the Master of the affirmative ¢ fenses invoked by defendant. On! 8, 1966, defendant’s motion to vacate the summary judgment was denied. 8 enen The companion case of General Motors transferred to the Delaware District previously shown, was heard by Jud; Caleb M. Wright on plaintiffs’ motior for summary judgment. In a weil re. soned opinion the Court concluded th summary judgment was inappropria and denied such relief. Devex Corp. e al. v. General Motors Corp., 263 F.Supp 17. Concerning the Delaware case, de fendant on brief states, “So far as in fringement is concerned, the issues th are substantially identical with those ir volved here.” Plaintiffs take no iss with this statement, in fact do not eve mention the case although it was decide more than two months prior to the dat on which plaintiffs’ brief was filed this Court, with the same counsel rep senting plaintiffs in both cases. E , r i rl | | In the interest of brevity, we refer our previous opinion written by Jud Duffy, for a history of plaintiffs’ paten its purpose and scope, the claim reli upon and the reasoning on which validi was sustained. At the inception we are met with plai tiffs’ challenge that the order under tack is not appealable and should be d missed. Defendant responds that have jurisdiction under Par. (a) (1) (4) of Sec. 1292, Title 28 U.S.C.A. former provides jurisdiction of an appé from an order granting an injunctic the latter from judgments for patent fringement which are final except for counting. Plaintiffs cite a number cases in support of the point ths COF njunction brings up for review wihing but the propriety of granting te injunction,” and such appeal “does wt bring up for review those parts of be decree which affect only the reference pa Master and bear no necessary rela- tion to the merits of the injunction.” In Loew’s Drive-In Theatres, Inc. v. uk: In Theatres, Inc., 1 Cir., 174 F.2d ul, 550, the Court stated: “Our jurisdiction over this cause of action on appeal, however, is another matter. For although injunctive re- lef is granted in the judgment ap- pealed from and we have appellate jur- isdiction over such judgments under %U.S.C.A. Sec. 1292 (1) even though interlocutory, we have jurisdiction to review only that part of such judg- ments as have to do with the injunc- tive relief afforded and no other.” fn Racine Engine & Machinery Co. v. ‘mnfectioners’ Machinery & Mfg. Co., 7 iner, 234 F. 876, 878, speaking to the point, this Court stated: if and after the patent is sustained, infringement found and in- jmction awarded, upon appeal this curt may finally determine the va- lidity of the patent, and its determina- tion is binding on the District Court.” 3] These and other cases cited by ntiffs recognize that a court with isdiction to hear an appeal from an junction order must necessarily have iction to consider the propriety of premise upon which the injunction d. As applied to the instant case, authority to consider the propriety te injunction carries with it the au- ity to consider the infringement is- upon which the injunction issued. my be that we are without authority tmsider the affirmative defenses in- sed by defendant prior to the entry the summary judgment and referred he Master for decision. We need not toncerned in this regard, however, be- ther on brief nor in their appendix d in support thereof do plaintiffs ~~ >OPY BOUND CLOSE IN CENTER cause, assuming we have such authorit we would not be disposed to exercise i in the absence of a ruling by the cou below on such issues. We hold that w have jurisdiction of the appeal from th injunction order and of the infringemen issue upon which it is predicated. [4] Plaintiffs also contend that de fendant has no standing to complain o the order enjoining it from further in fringement, on the basis that it cor sented to and openly invited its en thereby waiving any right to complai of error. We see no reason to cite or dis cuss the cases cited in support of thi contention. They are without applies tion to the facts of the case. In this connection plaintiffs plac much emphasis on the assertion that th judgment order was proposed by defend ant. True, it was so labeled, but the clearly emerges, on a confusing record the fact that defendant did not conse to or invite the order, particularly tha part which enjoined it from further in fringement. Plaintiffs attached to thei original and again to their renewed mo tion for summary judgment a form o proposed judgment. The Court in a oral decision granted plaintiffs’ renewe motion and, at the Court’s suggestio plaintiffs submitted a revised form o judgment. On February 16, 1966, de fendant served on plaintiffs a “Noti of Motion,” notifying them that defend ant “without waiving any rights will pre sent the attached draft of a judgmen order.” The February 17 order allege to have been proposed by defendant ws presented to the Court, “approved as form.“ 1 Defendant in no way consented the injunction or waived its oppositio thereto; its activities were confined limitations on the forms of judgmen submitted by plaintiffs. Moreover, de fendant subsequently attacked the entir judgment order by its motion to vacate which was denied March 3, 1966. Plain posed “without waiving any rights” and was “approved as to form” only. ffs’ argument on this phase of the se is entirely without merit. [5] Preliminary to any discussion the narrow issue for decision, we ust keep in mind that it is not within r province to make a determination factual issues. The sole question is hether plaintiffs under Rule 56 (e), ederal Rules of Civil Procedure, were titled to a summary judgment and ereby precluded defendant of the right a hearing. The citation of only a of the many cases which have ounced the criterion to be employed resolving such question will suffice. In Poller v. Columbia Broadcasting stem, Inc., et al., 368 U.S. 464, 467, 2 S.Ct. 486, 488, 7 L.Ed.2d 458, the durt stated: “This rule authorizes summary judg- ment ‘only where the moving party is entitled to judgment as a matter of law, where it is quite clear what the truth is, * * * [and where] no genuine issue remains for trial * * [for] the purpose of the rule is not to cut litigants off from their right of trial by jury if they really have issues to try.“ he Court further stated (page 473, 82 .Ct. page 491): “We look at the record on summary judgment in the light most favorable to Poller, the party opposing the mo- not have been granted.” In National Screen Service Corp. v. oster Exchange, Inc., 5 Cir., 305 F.2d 7, 651, the Court stated: “The rule should be invoked cautiously in order to allow a full trial where there is a bona fide dispute of facts between the parties. Summary judg- ment should be granted only where the moving party is entitled to judg- ment as a matter of law, where it is quite clear what the truth is, when no genuine issue remains for trial, and it is not the purpose of the rule to deny to litigants a right of trial if COPY BOUND CLOSE TO EDGE Cite as 382 F.2d 17 (1967) tion, and conclude here that it should the Court to decide factual issues, byt only to determine whether there are factual issues to be tried [Citing ease. „ „A long line of cases have held that summary judgment should not be granted if there is the ‘slightest doubt’ as to the facts; which is acty. ally another way of stating that there is no genuine issue as to any materi fact. The fact that it may be surmised that the party against whom the mo tion is made is unlikely to prevail the trial is not sufficient to author summary judgment against him.“ eln 91 Is] Among other cases which hay emphasized that caution is to be ex cised in granting summary judgment two of this Court. American Securit C v. Hamilton Glass Co., Inc., 7 Cir., 25 F.2d 889, 892, and Technograph Printe Circuits, Ltd. v. Methode Electronic Inc., 7 Cir., 356 F.2d 442, 446. After much study of the volumino record, we conclude that the Court erre in allowing plaintiffs’ motion for sum mary judgment. We think defendant entitled to a trial on the infringemer issue, as well as any relevant iss raised by its amended answer. i Judge Robson in his opinion (not pu lished) discusses the restrictions place by this Court on Claim 4 as a basis f our holding of validity, it seems to that he mistakenly based his conclusi on a literal reading of the claim. In opinion he states, As plaintiffs poi out, there can be little question that fendant’s practice responds to Claim so as to constitute infringement there Following this statement he analyzes claim element by element, concludes t defendant’s process responds to each said elements and states, “The Co therefore concludes that the plaintif renewed motion for summary judgm should be granted * * *; that 0 should be a finding of infringement the defendant of Claim 4 of the Reis Patent No. 24,017, upon the basis defendant’s answers to the i Arie COF Concerning the holding of Judge Rob- with the borax to form amorphous n plaintiffs on brief state: glassy materials which contribute sig- «# * be held that Houdaille’s at- nificantly to the lubricating value of tempts to avoid a finding of infringe- the coating; that the formation of ment by reading the claim restrictively insoluble organic materials is inhibited yas not warranted by the language of and there is no cleaning problem. tat opinion [821 F.2d 234], or by the “There is substantial evidence in language of the claim itself.” the record to prove that a new coaction For reasons subsequently shown, we between the soap, borax and phosphate nk this is a fallacious approach to the occurred during the drawing process. fringement issue. Our previous deci- Friedberg’s tests showed that in the requires that the claim in suit be Henricks’ process, new compounds are ma narrow and restricted construc- formed; the formation of insoluble organic compounds is inhibited, and the abrasive phosphate is transformed into a glassy amorphous compound first hearing considered and upon having highly effective lubricating in he found Claim 4 invalid. In our Properties. ws decision (321 F.2d 234), re- We further pointed out that there was his holding of invalidity we testimony that by use of the process ed (page 236): “tool and die life was increased one “Plaintiffs concede all of the ele- thousand fold” and that the process made mnts which Henricks employed in it possible “to manufacture articles of (aim 4 in the patent in suit were old Superior quality at a much lower cost.” wr se or in other combinations and It is difficult to discern how plaintiffs lave been available in the art for can contend with any plausibility that wme years. However, plaintiffs con- defendant is an infringer, based upon a tad that the elements which Henricks literal reading of the claim. In the previ- rected were put together in a new ous case plaintiffs urged as a ground for ay and achieved a new and unex- sustaining validity a narrow and re- Jed result.” stricted application of the “specific em- Thus, it was conceded that all of the bodiment of Claim 4.” On brief they mts of the claim were old in the state: but plaintiffs sought to uphold “Specifically, there is a coaction during idity upon the basis that such elements the high temperatures and pressures m put together in a new way and of the drawing process whereby the ed a new and unexpected result.” abrasive phosphate coating reacts with solely on this basis that this Court the borax to form amorphous glassy ned validity and reversed the Dis- materials which contribute signifi- t Court. In this connection we cantly to the lubricating value of the (page 237): coating. The formation of insoluble "Plaintiffs argue that new and un- organic materials is inhibited and i results flow from the con- there is no cleaning problem.” ion of elements defined in the They also relied on “new and sur- wing process of the Henricks’ prising results” to meet the test of Great ent; that tool and die life is greatly Atlantic & Pacific Tea Co. v. Super- meased and severe drawing opera- market Equipment Corp., 340 U.S. 147, can now be performed which 71 S.Ct. 127, 95 L.Ed. 162. Thus, having previously impossible. Plaintiffs obtained a decision of validity on a nar- there is a coaction during the high row and restricted basis, they now con- res te press av , We need not give any consideration the prior art which Judge Robson in — COPY BOUND CLOSE IN CENTER tf Qu 302 0 endant’s alleged infringing process. assurance that if a literal readinz buch a construction would monopolize the claim had been relied upon, we would he whole broad field of metal forming have affirmed the District Court in iu ith any use of a dry soap and borax holding of invalidity in view of the prior ver phosphate at any temperature or art. The patentee’s thesis of “new and pressure, regardless of the results. unexpected result” was based upon the g addition to the patent specifications of 17) Judge Wright of the Delaware Examples XIX and XX, filed Octob ourt in the General Motors case (263 31, 1950, in connection with his contin ‘Supp. 17) followed the decision of ation-in-part application, Serial No. 413, his Court in sustaining the validity of 490. These Examples, which laim 4 (that here involved) but dis- formulas for soap and 8 ‘dea bo greed with Judge Robson in allowing phate, were included in the patent issued laintiffs’ motion for summary judg- March 4, 1952 and, as stated by plai ent. In his opinion he pointed out tiffs on brief, “By issuance of thi umerous unresolved factual issues which patent, the Henricks applications u ormed the basis for his denial of plain- first pet available to the public an iffs’ motion for a summary judgment. thereby, for the first time, became put ithout restating the issues which he ;, knowledee.” ; iscussed, it is significant to note that e refused, on the issue of infringement, Based upon Examples XIX and XX o give effect to a literal reading of the Friedberg tests were made, whi laim 4. Instead, he held that the re- formed the basis of this Court's state rictions placed upon the claim by this ment that there was evidence of a “n ourt in sustaining validity must be coaction between the soap, borax a aken into account. In so doing he Phosphate during the drawing process, ted (page 25): Judge Wright on this point stated (pag „„ the construction of a claim 25): when its validity is contested controls “The Friedberg tests involved dray the construction of that same claim conducted under high pressures it when its infringement is alleged. The volving severe deformation of th patentee cannot urge a restrictive in- metal, whereas the GM operation i terpretation of his claim to avoid volves much lower pressures. An invalidity and then an expansive Henricks, the patentee, himself state interpretation to ensnare infringers.” that it is a high pressure operatid This principle has been recognized by generating sufficient heat to thaw t is Court. In Fife Mfg. Co. v. Stan- Tmeltable pigment which forms a | ord Engineering Co., 7 Cir., 299 F.2d of his invention. The Court requi 23, 226, we stated: the aid of expert testimony to dete “It is well settled that a patent mine whether these differences owner may not apply a narrow con- or are not, important.” struction to his claim to avoid the [8] In the instant case, as in Genet prior art and then apply a broad con- Rotors, there is evidence that the p struction to include an accused device.“ entee's process recognized by this Co e also Wire Tie Machinery Co. et al. required “extreme temperatures Pacific Box Corp. et al., 9 Cir., 107 pressures of from 100,000 to 250,0 2d 54, 55. pounds Hertz stress.” There is also The new and unexpected result” which dence that defendant’s alleged infringi laintiffs urged upon this Court in their process requires pressures of only rgument in behalf of validity, to which to 25,000 pounds Hertz stress.” Mc gave recognition, certainly was not over, the tests relied upon were mac ealed by a literal reading of Claim the drawing of wire rods, J } COPY BOUND CLOSE TO EDGE ‘ cor as to whether the same result would re been obtained in the drawing of dendant’s alleged infringing auto- pile bumpers. While these issues are riot all inclusive, m think they alone are such as to negate ie propriety of a summary judgment. We might with propriety conclude our non at this point. Even so, we think should discuss the issue of “inter- rights,” relied upon by defend- as a defense to the charge of in- gement. As already noted, defend- on June 23, 1965, after having first uined leave of the Court, filed an mded answer setting forth a number affirmative defenses. (Of such de- only “intervening rights” is med here.) Plaintiffs on brief refer these defenses as “last minute affirm- defenses,” even though the amended er was filed prior to the filing of intiffs’ second motion for summary ment. No attack was made upon h defenses by motion to dismiss the er or otherwise. judge Robson in his bench discussion wa the Court is of the opinion that on his remand it is not within its wovince to reassess the validity of gute patent as it might be affected by iam defense of prior public use.“ is statement no doubt was based upon finding of this Court in its previous tion that the patentee’s record date invention was April 29, 1946, since in 4 is identical to Claim 45 allowed de Patent Office, and defendant may how assert the October 31, 1950 date. u F.2d 234, 236.) tis not claimed that our holding rela- to public use in connection with the of validity is res adjudicata with mence to the defense of intervening Bis to the charge of infringement. District Court did not so decide but i referred the issue to the Master decision. In doing so, the Court * am aware of them, will more or less fall by the wayside and it would be a matter of a reference to the Master, but certainly I am willing to consider any and all matters which may be concerned.” We doubt the propriety of such refer- ence, see Prepo Corp. v. Pressure Can Corp., 7 Cir., 284 F.2d 700, 704, but need not dwell on the point inasmuch as the judgment is to be reversed. On the state of the record shown, we think it plain that the issue relating to the defense of “intervening rights” re- mains before the Court and must be resolved on the record made in this case, which is quite different from that previously before this Court. There is evidence that defendant com- menced use of the alleged infringing process as early as April 25, 1949, more than one year prior to the filing of the continuation-in-part application upon which was issued Patent No. 2,588,234, dated March 4, 1952, from which the reissue patent in suit was issued June 7, 1955. Thus, defendant contends that the coaction on which this Court found inventiveness (a soap-borax fixed film over an integral phosphate coating) was not disclosed by Henricks in his earlier but abandoned application; in fact, it was first disclosed in his continuation- in-part application filed October 31, 1950, which matured into the patent in suit. [9] As previously shown, “the new and unexpected result” which plaintiff urged upon this Court followed the dis- closures in Examples XIX and XX, first made a part of the patent specifica- tions filed October 31, 1950. In fact, Henricks on deposition so admitted. He was asked, “What I am trying to under- stand, Mr. Henricks, is this: you had no soap-borax over phosphate in your abandoned application?” and he an- swered, “Correct.” Plaintiffs attempt to bridge this gap by arguing that in the abandoned application the “glyceryl borate” was “fully equivalent” to the COPY BOUND CLOSE IN CENTER that made in 1950, upon which he ob- tained an adjudication of validity, is an issue of fact. Graver Tank & Mfg. Co., Inc., et al. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097. Moreover, the issue is one for expert testimony. Also material to the issue under dis- cussion is a matter presented by defend- ant as newly discovered evidence in con- nection with its motion to vacate the judgment. On October 29, 1951, Hen- ricks filed with the Canadian Patent Office his appiication for a patent en- titled “Method of Drawing Metal,” which was allowed. In the Canadian application Henricks stated that he was entitled to the October 31, 1950 United States filing date under Treaty or Con- vention Rights of Applicants as it “re- lates to all claims,” because the United States 1950 application wass the first application for patent for the said invention filed in any country by him or anyone claiming under him.” The specifications, including Examples XIX and XX, and the claims, including Claim 4 in suit, of the Canadian patent were identical with the 1950 United States application. Thus, Hen- ricks represented to the Canadian Patent Office that his 1950 United States appli- tation disclosed for the first time the oap-borax-over-phosphate, the premise pon which this Court sustained validity. Plaintiffs on brief make no denial of facts just recited relative to the pro- dings in the Canadian Pate t Office. They state: “On October 29, 1951, Henricks filed a corresponding Canadian patent application. That application made reference to the continuation-in-part application filed in the United States on October 31, 1950 for the purpose of obtaining a prior date of invention under the International Convention and Canadian law insofar as the mate- rial in the continuation-in-part appli- cation may have been added as ‘new COPY BOUND CLOSE TO EDGE matter’. As to that material whi may not have been added as ‘ney matter’ in the continuation - in- aan application, Henricks is relegated u his filing date in Canada for his day of invention insofar as the Canadia, patent is concerned.” (Italics sy plied.) This is an admission that Henrici represented to the Canadian 21 Office, apparently for a self-serving pur pose, that the disclosure made in hi 1950 application in the United “may have been added as ‘new matter’ The “new matter” referred to, as understand, consisted of the disclos: made for the first time in Exam XIX and XX of Henricks’ 1950 applic tion, which enabled plaintiffs to ob the “new and unexpected result” upon this Court. Plaintiffs on brief, following the s ment lastly quoted, further state: “The reference in the Canadian a plication to the 1950 United application had no effect upon H ricks’ United States patent i tions.” {10} We think the accuracy of th statement is open to doubt. Assumir it to be correct, however, it misses point. The fact that he made an admi sion to the Canadian Patent Office to the date of his patent disclosure cc trary to that which he previously m to this Court, in which he now persi relates to his credibility and presents matter for consideration by the trier the facts. We decide nothing more than that su mary judgment was improvidently lowed. Anything we have said is to be construed as a resolution of factual issue. We have attempted o to point out some of the issues of rial fact which, in our judgment, ent the parties to a hearing. The judgment appealed from reversed and the cause remanded for purpose. DEVEX CORPORATION et al. Plaintiffs, v. GENERAL MOTORS CORPORATION, Defendant. Civ. A. No. 3058. United States District Court D. Delaware. Jan. 16, 1967. Civil action for patent infringement, wherein patentee moved for summary judgment. The District Court, Caleb M. Wright, Chief Judge, held that the issue of validity of patent was set to rest by Seventh Circuit Court of Appeals which reversed judgment of federal district court sitting in Illinois and held a claim valid, and decision of the Court of Ap- peals was binding upon the district court as law of the case and similarly bound federal district court in Delaware to which district court in Illinois trans- ferred the case, but that papers raised fact issue as to whether corporate defend- ant whose process did not explicitly over- lap claim of Patent relating to lubrica- tion of metal for drying and forming op- erations was guilty of infringement, pre- cluding summary judgment. Motion denied. I. Patents 2288 (8) Where defendant resides“ for pur- pose of venue in patent actions means state of incorporation in case of corpo- rate defendant. 28 U.S.C.A. § 1400(b). See publication Words and Phrases for other judicial constructions and definitions. 2. Patents 288 (83) The degree of use required to estab- lish proper venue in patent infringement cases is of a lesser order of magnitude than that required to establish infringe- ment for liability purposes. 28 U.S.C.A. § 1400(b). 3. Patents S288 (8) 1 5 —— and > fense of p ° 2 at action COPY BOUND CLOSE IN CENTER objection corporation had timely made, but corporation’s subsequent conduct con- sisting of permitting trial judge to enter judgment in corporation’s favor on the merits and not cross appealing, despite language of judge’s consolidation order assuring corporation that venue matter would be considered before entry of judg- ment on validity question, did amount to such a waiver. 28 U.S.C.A. § 1400(b). 4. Patents S242) Denial of corporation’s motions to dismiss patent infringment action be- cause of improper venue and entry of final judgment of patent invalidity be- fore resolution of corporation’s venue contentions presented sufficient founda- tion from which corporation could have taken cross appeal had it desired upon ap- peal of patentee from judgment on the merits. 28 U.S.C.A. § 1400(b). 5. Courts 277.1 In view of corporate defendant's waiver of venue in patent infringement case originally initiated in Illinois, trans- fer of the case to Delaware on motion of corporate plaintiff should have been made under statute authorizing transfer of civil actions to other districts for con- venience of parties and witnesses in in- terest of justice, not under statute au- horizing transfer because venue has been laid in wrong district. 28 U.S.C.A. $§ 1404(a), 1406. Courts ¢=277.1 Expediency and comity dictated that federal district court sitting in Delaware pt patent infringement action trans- fer, which was erroneously made under tatute permitting transfers of cases lay- ing venue in wrong district instead of tatute permitting transfers for conven- ence of parties and witnesses in interest of justice, as having been made under the proper statutory authority, in view of djudication of validity of patent by nsferring court. 28 U.S.C.A. §§ 1404 a), 1406. Courts 277.1 Courts of coordinate jurisdiction COPY BOUND CLOSE TO EDGE function and pass upon correctness discretionary transfer orders. 28 Ug C.A. §§ 1404(a), 1406. 8. Patents S324 (6) The issue of validity of patent y, set to rest by Seventh Circuit Court of Appeals which reversed judgment of fe eral district court in Illinois and held claim valid, and decision of the Court of Appeals was binding upon the distri court as law of the case and sim bound federal district court in Delawa to which district court in Illinois ferred the case. 9. Courts €406.9(14) Courts should be even more usually constrained not to transgress doe trine of law of the case where a full tri and appeal of the question, involving stantial investment of judicial energ have occurred. 10. Courts 277.1 Even if federal court sitting in I linois lacked venue of patent infring ment action, it did not lack power to de with substantive rights of corporate fendant over which court had pe jurisdiction. 11. Patents S170 The extent of prior art de scope of proffered invention. 12. Patents 170 Claims of patent infringement m be viewed against backdrop of prior 13. Patents S157 (01) Construction of patent elaim its validity is contested controls const tion thereof when its infringement is leged. 14. Patents ¢-168(24) Patentee will not be permitted urge restrictive interpretation of claim to avoid invalidity and then ex sive interpretation to ensnare inf ringe 15. Patents S823 Papers raised fact issue as to er corporate defendant whose process not explicitly overlap claim of Pat RFR Se£Paaes. COP" ig OD ions was guilty of ir precluding summary judg- for patentee. Patents C16, 226 “Theory” is not prerequisite to pat- ty but is important when scru- for infringement. Patents 229 Process which falls within literal of patent claim but can be to operate in different manner patented process does not infringe the patent. Courts 2277.1 Venue changes at later stages of od, especially in patent cases. 28 8 1400(b), 1404(a), 1406. — —ũ—ꝓ—ẽ— F. Anderson, Berl Potter & An- Wilmington, Del., Walter J. Blen- Blenko, Hoopes, Leonard & Buell, rgh, Pa., of counsel, for plaintiffs. ns S. Lodge, Connolly, Bove & Wilmington, Del., George N. Hib- Hibben, Noyes & Bicknell, Chicago, Neal A. Waldrop, Harness, Dickey & * and George N. Shampo, Detroit, of counsel, for defendant. OPINION ‘B M. WRIGHT, Chief Judge. ts is a civil action for patent in- 4 reads as follows: 1 The process of working ferrous wtal which comprises forming on the arface of the metal a phosphate coat- ™ and superimposing thereon a fixed {im of a composition comprising a solid whable organic binding material con- ming distributed therethrough a solid ‘rganic compound meltable at a tem- wrature below the melting point of the metal phosphate of said coating i having a hardness not exceeding pe the Mohs’ hardness scale, and t deforming the metal.” Corp. v. Fisher Governor Co., upp. 716, 719 (S.D.Tex.1963) ; Products Corp. v. H & B Ameri- Corp., 202 F.Supp. 824, 826 (S.D. 2); C-O-Two Fire Equipment Co. The patent in suit is Num- ber 24,017; the only claim at issue is number 4.1 The plaintiff, Devex Corpo- ration (Devex), has moved for summary judgment. Fed.R.Civ.P. 56(a). {1,2} Prior to any consideration of the merits of Devex’ motion an account of the history of this litigation is essen- tial to place this case in proper perspec- tive. The complaint was filed in the Northern District of Illinois on Novem- ber 13, 1956. Before answering General Motors Corporation (GM) moved for a dismissal on the ground of improper venue. Section 1400(b), 28 U.S.C.A. (1948), provides that venue in patent actions, shall be in either: the district where the defendant resides, or the dis- trict where the defendant has committed acts of infringement and has a regular and established place of business. Where the defendant resides has been consist- ently interpreted to mean, in the case of a corporate defendant, the state of incor- poration. Since GM is a Delaware cor- poration, the plaintiff’s decision to lay venue in the Northern District of Illinois was necessarily predicated upon the de- fendant's having committed acts of in- fringement within that district. The motion to dismiss was denied by Judge Barnes, who expressly reserved the ques- tion of venue. On July 16, 1957 GM an- “Well now, I have thought quite a bit about this case. Venue here is based upon the fact that it is alleged that an infringement was committed in this district, is that it? * * 5 * — “I am not going to try that patent does not prove an infringement in this I guess I would not have risdiction because I wasn’ bron ＋ OPY BOUND CLOSE IN CENTER swered. Paragraph 11 of its answer again challenged the propriety of the plaintiff's choice of venue. On February 4, 1959 Devex moved in the Illinois District Court to consolidate the action against GM with a similar ac- tion pending in the same district against Houdaille Industries (Houdaille). GM objected to the consolidation of the two actions on the ground that venue had not been established with respect to GM. But after a pretrial conference Judge Robson ordered consolidation of the two cases. In order to protect GM Judge Robson’s order provided for a considera- tion of the venue question before any de- cision on validity was entered with re- spect to GM. “(2) Immediately following the con- clusion of said consolidated trial on the common issue of validity, the issue of infringement within the Northern Dis- trict of Illinois by General Motors Cor- poration as it relates to the issue of venue of that Defendant will be tried in Civil Action No. 56 C 1912. “(3) The issue of infringement within the Northern District of Illinois by defendant General Motors Corpora- tion in Civil Action No. 56 C 1912 will first be decided by this Court in order that the issue of venue of that defend- ant may be determined prior to the rendering of any decision on the issue of validity with respect to defendant General Motors Corporation.” (Em- phasis added.) The case, as consolidated, went to trial on the question of validity. On February other than to dismiss the case, would be without jurisdiction. “That is the chance the plaintiff is taking. I have not seen the patent yet. I am not going to attempt to try the case on a motion to dismiss. a * 5 „ a “I am just telling you that I have been thinking about it a long time. Since you are both here I would like to tell you right now. I am not sure you should thank me. If there is no showing to prove infringement in this district you won't have an adjudica- tion.” COPY BOUND CLOSE TO EDGE 1, 1962 Judge Robson handed doy decision on validity, holding the pat invalid. On June 29, 1962 Judge son entered his Findings of Fact » Conclusions of Law and a Final Jud ment, dismissing the complaints in ent action with prejudice. GM did not obje to the entry of judgment despite the standing venue issue. Devex took an appeal to the Circuit. There was no cross-appeal GM. The Seventh Circuit reversed J Robson, held claim 4 valid, and remat both cases to the District Court for ther proceedings. On January 14, 1 Judge Robson entered an order “as rected by the Mandate of the Court Appeals” holding claim 4 valid. Devex instituted discovery on { venue question, but on April 20, 1965 cided to present a motion for tran under 28 U.S.C.A. § 1406 (a) (1% Devex sought transfer to the District Delaware. The motion was heard Judge Robson on June 23, 1965, te with GM’s motion to dismiss und 1406(a) and a further GM motion to cate paragraph 1 of the Court’s judgm order of January 14, 1965 in the the transfer should be granted‘ J Robson granted the plaintiff’s motion transfer and denied both of the defe ant’s motions. On January 3, 1966 the plaintiff fi the instant motion for summary ji ment. Devex contends that the valid of the patent has been established, that the January 14, 1965 judgment the Illinois District Court remains b gree of use required to establish p venue is of a lesser order of magnit than that required to establish i ment for liability purposes. Watsco, v. Henry Valve Co., 232 F.Supp. 88 D.N.Y.1964). If Watsco is correct the fact that the plaintiff fails “to infringement” within the forum <¢ at trial may not “deprive him of an judication” with respect to inf in other districts. 4. The January 14, 1965 order, it will recalled, was Judge Robeon's entry of final judgment of validity. cor jather contends that GM’s answers to sierrogatories 2-5 and 12 constitute ad- gisions of infringement. Accordingly, es plaintiff argues for the entry of „r judgment on the grounds that further issues remain for adjudication tween the parties. GM resists the motion on two grounds: frst, GM argues that the question of va- Wity has not been determined because January 14th order is ineffective for of proper venue; second, GM denies its answers to interrogatories admit ngem Pintiff’s argument that the validity ine has been settled rests upon the ise that GM has waived its venue In support of this essentiz the plaintiff cites Neirbo Co. v. ehem Shipbuilding Corp., 308 U.S. B60 S.Ct. 153, 84 L.Ed. 167 (1939) furter). Neirbo stands for the sition that venue is something less an absolute right; it is a privilege ned for the convenience of the liti- which may be waived by conduct in- intent with the assertion of the priv- Specifically Neirbo holds that the imation of a statutory agent for serv- of process in order to qualify a for- n corporation to transact business in state constitutes a waiver of venue in subsequent federal court proceed- However, Neirbo cannot be con- to make the act of participation wurt proceedings following a timely objection a waiver. Professor in discussing Rule 12 of the Fed- clarifies any possible confu- “Under the former practices, both law and in equity, a party could, by 1 procedure, raise the defenses )-(5), and losing thereon proceed to gate on the merits, and losing on merits appeal, and attack the judg- both on the merits and on such (1)-(5) as he had urged. a judgment on the merits for the Barnes’ denial of GM’s motion to * the defendant. The plaintiff plaintiff would be set aside, whe the defendant had properly challen * * * that the venue was imprope and I that] the lower court was in errc in denying his defense. Rule 1200 does not change that rule.” 2 Moo Federal Practice {| 12.12 (2d ed. 1965 [3,4] Although the defendant’s a pearance and defense on the merits d not constitute a waiver of the venue o jection timely made, GM’s subsequer conduct did amount to such a waive Having prevailed on the merits befo Judge Robson, GM permitted J udge Rot son to enter judgment in its favor, d spite the language of the Judge’s own o der of consolidation which assured G that the venue matter would be consic ered before entry of judgment on th validity question. There is no record of jection on the part of GM to Judge Rob son’s departure from the procedure ou lined in his order of consolidation. O can only assume that GM condoned, i deed applauded, the entry of judgmen Also, despite Judge Barnes’ denial 0 GM’s motion to dismiss for imprope venue, GM neglected to take a eross-an peal to the Seventh Circuit in order present to that tribunal its venue conten tions.5 GM's condoning of Judge Rob son’s departure from his own order, and its failure to take a cross-appeal on th venue matter were fatal. This Cou holds that GM waived its venue righ before Judge Robson. The transparenc of GM’s conduct is apparent. By argu ing before the Seventh Circuit for af. firmance of Judge Robson, GM sought to preserve a judgment which would oper: ate as res judicata in any subsequent ac tions between the parties. GM's strat. egy, having succeeded on the merits, w to discard its venue contentions which even should they prove successful [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385607_0161%3A1. Public record. Not legal advice.