Petition for a Writ of Certiorari — Walt Shultz, Dba Walt Shultz Equipment Company v. Elton M. Moore

In the

SUPREME COURT OF THE UNITED STATES

OcToBER TreRM, 1973

No -@3- 1804.

WALT SHULTz, d/b/a Walt Shultz Equipment Company, and

McGraw-Epison Company,

Petitioner,

VERSUS

ELTON M. Moore,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

TENTH CIRCUIT

JERRY J. DUNLAP

Duntap, Laney, HEssIN,

DouGHEaty & CoppInc

219 Couch Drive

Oklahoma City, Oklahoma 73102

Attorney for Petitioners

of Counsel:

CHARLES A. PRUDELL

and

CHARLES F. Linp

333 West River Road

Elgin, Illinois 60120

May, 1974

UTTERBACK TYPESETTING Co.. S19 W. Catir..

OKLAHOMA City, PH. 235-0030

TABLE OF CONTENTS

PAGE

Citation to Opinions Below =ssss——=s Mii laeblxad 5.2.36 1

Jurisdiction __ ice aarreehatinntetessins ution eh osisubutcania 2

Question Presented... 2

Constitutional Provision Involved = seelaisalonchdes 2

Statutory Provision Involved | a diaicocacas oa: 2

Statement of the Case sc ARIE, 27 Oe TD 3

Reasons for Granting the Writ = ss —s jaslilocderscnee 5

NE oct ee eee es iidecehnabcbigtceehoas el 7

APPENDICES

“ope A—Patent Act of 1952, C. 950, 66 Stat. 792,

§ 103,35 U.S.C.§ 103 i

Appendix B—Judgment of the United States Court of

Appeals, Tenth Circuit -. i-ii

Appendix C—Opinion of the United States Court of

Appeals, Tenth Circuit 5s —_ ee llii-XVii

Appendix D—Special Verdict as to Issue of Patent

WN nen ae - XVili-xxi

Appendix Judgment of the United States District

ae me iceland a

~~

—

TABLE OF AUTHORITIES CITED

CASES:

Blohm & Voss A. G. v. Prudential-Grace Lines,

Inc., 489 F.2d 231

Continental Oil Co. v. Witco Chemical 1 Corp, 484

F.2d 777 . * a sf

Graham v. John Deere Co., 383 U.S. 1.

Hadfield v. Ryan Equipment Co., 456 F.2d 1218

Hensley Equipment Co. v. Esco Corp., 375 F.2d 432

Lemelson v. Topper Corporation, et al., 450 F.2d 845

Packwood v. Briggs and Stratton Lei (C.A. 3

1952), 195 F.2d 971 ‘eed . Ze

Swofford v. B&W, Inc., 395 F.2d 362 _

Trico Process Corporation v. L. Goldstein’s Sons,

i I stearate ee

Westwood Chemical, Inc. v. Owens-Corning Fiber-

glass Corp., 445 F.2d 911 pet eta

CONSTITIONAL PROVISIONS:

United States Constitution, Article I, Section 8,

Clause 8

STATUTES:

Patent Act of 1952, c. 950, 66 Stat. 792: Section 103

(35 U.S.C. § 103)

28 U.S.C. 1254(1)

RULES:

Federal Rules of Civil Procedure, Rule 52(a)

PAGE

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wa--Dy By D

2

In the

Supreme Court of the United States

OctToser Term, 1973

No. --

SS

Wa_t SHvtt7z, d/b/a Walt Shultz Equipment Company, and

McGraw-Epison Company,

Petitioner,

VERSUS

ELTon M. Moore,

Respondent.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

TENTH CIRCUIT

Walt Shultz, d/b/a Walt Shuliz Equipment Company,

and McGraw-Edison Company, pray that a Writ of Certio-

rari issue to review the judgment of the United States

Court of Appeals for the Tenth Circuit entered in the above

entitled case on January 23, 1974, a copy of said judgment

being appended hereto as Appendix B.

CITATIONS TO OPINIONS BELOW

The opinion of the United States Court of Appeals for

the Tenth Circuit is recorded at 491 F.2d 294, and a copy

thereof is appended hereto as Appendix C.

pa oe

There was no opinion by the District Court. Copies of

the jury verdict and judgment of the District Court are ap-

pended hereto as Appendices D and E, respectively.

JURISDICTION

The date of the judgment of the Court of Appeals ( Ap-

pendix B) was January 23, 1974, said judgment was en-

tered on January 23, 1974, and a Petition for Rehearing was

denied by the Court of Appeals on March 13, 1974.

Jurisdiction is conferred upon this Court to review the

judgment of the Court of Appeals by Writ of Certiorari by

the United States Code, Title 28 $1254 (1).

QUESTION PRESENTED

Is a trial court, in deciding an invention was obvious

after a jury verdict of unobviousness, restricted by the

rules governing judgment n.o.v. or, in capsule form, is the

ultimate question of obviousness a question of law or fact?

CONSTITUTIONAL PROVISION INVOLVED

The Congress shall have power—To promote the

Progress of Science and Useful Arts by securing for limited

Times to Authors and Inventors the Exclusive Right to

their respective Writings and Discoveries. United States

Constitution, Article I, Section 8, Clause 8.

STATUTORY PROVISION INVOLVED

The Statute involved is Section 103 of the Patent Act

of 1952, c. 950, 66 Stat. 792, 35 U.S.C. $103. The Statute is

printed in Appendix A.

—3—

STATEMENT OF THE CASE

This action was commenced by respondent, Elton M.

Moore, against Walt Shultz, d/b/a Walt Shultz Equipment

Company, one of petitioners, seeking an injunction and an

accounting for infringement of a patent owned by respond-

ent. Walt Shultz was a dealer in equipment manufactured

by McGraw-Edison Company which respondent contended

infringed his patent. Petitioner McGraw-Edison Company

was subsequently added as a party defendant (Tr. 15) upon

motion of respondent, and respondent made a seasonable

demand for a jury trial.

The case was tried to a jury on August 30, 31, and Sep-

tember 1, 1971. On September 2, 1971, the jury was in-

structed by the trial judge and the case was submitted to

the jury on ten separate interrogatories (Tr. 54-69). There-

after, the jury retired and on the afternoon of September

2, 1971, the jury returned a verdict in favor of respondent

on all interrogatories submitted (Appendix D).

The instructions to the jury, with respect to “obvious-

ness,” simply included a recitation of the appropriate stat-

ute, Title 35 U.S.C. $103 (Tr. 57). The interrogatory on

“obviousness” (Tr. 66) was as follows:

“(2) Do you find from clear and convincing evidence

that the difference between the subject matter of the

claim in issue of the patent-in-suit and the prior art

are such that the subject matter thereof as a whole

would have been obvious at the time the alleged in-

vention thereof was made to a person having ordinary

skill in the art to which said subject matter pertains?”

itillins

Upon motion of petitioners (Tr. 90), supported by a

brief, the trial court set aside the verdict and judgment in

favor of respondent and entered judgment for petitioners

in accordance with a previously filed motion for a directed

verdict, with an alternate order for a new trial in the event

the ruling of the trial court were to be vacated or reversed

on appeal (Appendix E).

Upon appeal by respondent to the United States Court

of Appeals for the Tenth Circuit, that Court reversed the

trial court’s judgment n.o.v., as well as the order of the

lower court for a new trial in the alternative (Appendix

B). In its opinion (Appendix C) the Court of Appeals for

the Tenth Circuit specifically stated that non-obviousness is

a factual question and reviewed the evidence relating to

obviousness in accordance with the standards applied to

judgments n.0o.v. stating:

“This standard which we have set is to be applied to

both judgments n.o.v. and to directed verdicts is that

the evidence must be viewed in the light most favor-

able to the party opposing the motion (together with

inferences which may be fairly drawn therefrom), and

the verdict not directed nor the motion granted unless

the evidence points all one way, and is susceptible of

no reasonable inferences which sustain the position of

the party against whom the motion is directed.”

It is thus clear that the Court of Appeals treated the ulti-

mate question of obviousness as a question of fact.

a

REASONS FOR GRANTING THE WRIT

Whether the ultimate question of “obviousness” under

35 U.S.C. §103 is a question of law or a question of fact is

of primary importance in the uniform administration of the

patent system, and the decisions of the circuits are in con-

flict on this question.

As noted by this Court in Graham v. John Deere Co.,

383 U.S. 1 (1966), the “obviousness” statute, 35 U.S.C.

$103, was enacted by Congress as a substitute for the more

elusive standard “invention” which had been previously

used in many decisions. It is, therefore, not surprising that

Section 103 is involved in the majority of patent cases con-

cerned with patent validity. Our survey indicates that in

the dirst year after this Court’s decision in the John Deere

case, of 123 reported patent cases concerned with validity,

198 involved Section 103. The need for a uniform appli-

cation of Section 103 is apparent, and we submit that such

uniformity will be obtained only when the ultimate ques-

tion of obviousness is held to be a question of law through-

out the United States.

The Second, Third, Fourth, Fifth, Sixth, Seventh,

Eighth and Ninth Circuits! have held that the ultimate

1 Lemelson v. Topper Corporation, et al, 450 F.2d 845. cert. den. 405

US. 989 (2nd Cir.): Trico Process Corporation v. L. Goldstein's Sons.

Inc., 461 F.2d 66, cert. den. 409 US. 997 (3rd Cir.); Blohm & Voss

AG. v. Prudential-Grace Lines, Inc., 489 F.2d 231 (4th Cir.); Swofford

v. BE W, Inc., 395 F.2d 362 (Sth Cir.); Westwood Chemical, Inc. v.

Owens-Corning Fiberglass Corp. 445 F.2d 911. cert. den. 405 US. 917

(6th Cir.); Continental Oil Co. v. Witco Chemical Corp., 484 F.2d

777 (7th Cir.); Hadfield v. Ryan Equipment Co., 456 F.2d 1218 (8th

Cir.) and Hensley Equipment Co. v. Esco Corp., 375 F.2d 432 (9th

Cir.).

om

question of obviousness is a question of law and, thus, the

question is subject to judicial scrutiny, not only by the

trial court, but also in the Court of Appeals without the

restrictions of either the “clearly erroneous” rule, Rule

52(a) of the Federal Rules of Civil Procedure, or the rules

governing judgment n.o.v. as the case may be. In the Tenth

Circuit, however, as noted in the decision below, the ulti-

mate question of obviousness is a question of fact, and,

when determined by a jury, is subject to the rules govern-

ing judgment n.o.v., such that the jury verdict will be de-

terminative unless the evidence all points the other way

and is not susceptible to any reasonable inferences which

sustain the position of the winning party.

A jury, not having the benefit of prior judicial prece-

dents, is in no position to evaluate the ultimate question of

obviousness in accordance with the standards of patentable

inventions set forth by this Court. Packwood v. Briggs and

Stratton Corp. (C.A. 3, 1952), 195 F.2d 971. As a result, we

submit that the acceptance of jury verdicts on the ultimate

question of obviousness has and will result in a haphazard

application of the standards for patentable inventions set

forth by this Court, rather than a uniform administration

of the patent system.

The Court of Appeals for the Tenth Circuit should be

directed to conform to the decisions of the Courts of Ap-

peal in the Second, Third, Fourth, Fifth, Sixth, Seventh,

Eighth and Ninth Circuits.

= a

CONCLUSION

For the foregoing reasons, this Petition for Writ of

Certiorari should be granted.

Respectfully submitted,

JERRY J. DUNLAP

Dun.ap, Laney, HEssIn,

DouGHERTY & CoppING

219 Couch Drive

Oklahoma City, Oklahoma 73102

Attorney for Petitioners

of Counsel:

CHARLES A. PRuDELL

and

CHARLES F. LInp

333 West River Road

Elgin, Illinois 60120

May, 1974

FRR ort eG renner

APPENDIX A

PATENT ACT OF 1952, C. 950, 66 STAT. 792, § 103,

35 U.S.C. §103

§ 103. A patent may not be obtained though the in-

vention is not identically disclosed or described as set forth

in section 102 of this title, if the differences between the

subject matter sought to be patented and the prior art are

such that the subject matter as a whole would have been

obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject mat-

ter pertains. Patentability shall not be negatived by the

manner in which the invention was made.

APPENDIX B

Se

JANUARY TERM—JANUARY 23, 1974

Before Honorable Oliver Seth and Honorable William J.

Holloway, Jr., Circuit Judges, and Honorable Don N. Lara-

more, Senior Judge*

(*Of the United States Court of Claims, sitting by desig-

nation. )

ELTON M. MOORE,

Plaintiff-Appellant,

vV. No. 72-1845

)

)

)

)

)

)

WALT SHULTZ, d/b/a WALT SHULTZ )

EQUIPMENT COMPANY, and McGRAW- )

EDISON COMPANY, )

)

Defendants-Appellees. )

Pern DeTI"s

—]]—

[APPEND!IX}

This cause came on to be heard on the record on ap-

peal from the United States District Court for the Western

District of Oklahoma, and was argued by counsel.

Upon consideration whereof, it is ordered that the

judgment and order are reversed, and the case is remanded

to the United States District Court for the Western District

of Oklahoma with instructions to enter judgment on the

verdict, and for suc’: other proceedings as may be necessary

not inconsistent wiih the opinion of this Court.

HOWARD K. PHILLIPS,

Clerk

s/ By: Lavon M. Irlbeck

t/ Lavon M. Irlbeck,

Deputy Clerk

A true copy

Teste

(Seal)

Howard K. Phillips

Clerk, U. S. Court of

Appeals, Tenth Circuit

By

s’ Lavon M. Irlbeck

Deputy Clerk

ELTON

Vv.

WALT SHULTZ, d/b/a

WALT SHULTZ EQUIP-

MENT COMPANY, and

McGRAW EDISON

COMPANY,

William

Tulsa,

(APPENDIX)

APPENDIX C

SEE

UNITED STATES COURT OF APPEALS

TENTH CIRCUIT

No. 72-1845—JANUARY 1974 TERM

FILED

JAN 23 1974

HOWARD K. PHILLIPs

Clerk, United States

Court of Appeals

Tenth Circuit

M. MOORE,

Appellant,

Appeal From The

United States District Court

For The Western District

of Oklahoma

(D. C. # Civ. 70-65)

Ne Ne Ne Net Net Nt Ne Ny Wes Wey

Appellees.

S. Dorman, Tulsa, Oklahoma (James R. Eagleton,

Oklahoma, of Counsel, with him on the Brief), for

Appellant.

Jerry J.

Dunlap, of Dunlap, Laney, Hessin & Dougherty,

Oklahoma City, Oklahoma (Charles F. Lind and Charles

A. Prudell, Elgin, Illinois, of Counsel, with him on the

Brief), for Appellees.

—jy—

{APPENDIX}

Before SETH and HOLLOWAY, Circuit Judges, and LAR-

AMORE, Senior Judge, United States Court of Appeals*.

SETH, Circuit Judge (By reassignment from Holloway,

Circuit Judge).

This is an action for an injunction and damages for

infringement of plaintiff's patent. Defendant, McGraw-

Edison Company, manufactures the allegedly infringing

machine, and defendant, Walt Shultz, sells it.

Defendants deny infringement, and raise the defenses

of invalidity of plaintiff's patent and of laches.

The case was submitted to the jury on ten interroga-

tories covering plaintiff's cause of action and the defenses.

The jury found for the plaintiff in its answers to each of the

ten interrogatories. However, some time later, the court

entered judgment notwithstanding the verdict in favor of

defendants, and ordered that in the event the judgment

n.0.v. was reversed on appeal, there would be a new trial.

The devices involved in this action are known in the

dry cleaning business as “pants toppers,” and are used for

finishing and pressing the upper portions of men’s trousers

after they have been dry-cleaned. The operation generally

involves fitting the waistband of the trousers around an

adjustable form and applying steam and hot air in sequence

to remove the wrinkles. The legs of the trousers are then

pressed in a second operation.

Some time in the late 1940’s plaintiff Moore began to

formulate a plan for an improved pants topper. It was not

until 1953, however, that he felt that he had developed the

model for a successful machine. In April of that year he

contacted a patent attorney and his application was filed

* Sitting by Designation.

—_—Vv—

[APPENDIX]

on December 9, 1953. He obtained a patent approximately

two years later in November 1955 (No. 7,723,785). While

his application was pending he began negotiations for the

manufacture and sale of his machine under a license, and

in January 1956 a licensing agreement with P & H Indus-

tries, Inc. was executed. In the following seventeen months

P & H Industries manufactured approximately 440 ma-

chines and paid Mr. Moore royalties of about $11,000.00.

The agreement was terminated at the request of P& H

Industries in May 1957.

After terminating the agreement with plaintiff, P & H

Industries continued to manufacture a pants topping ma-

chine. Defendant McGraw-Edison entered the field under

an agreement with P & H Industries in 1961 which allowed

a subsidiary to manufacture the P & H machine. Although

this agreement has since terminated, McGraw-Edison has

continued to manufacture its modified version of the P &

H machine. This is the Ajax machine asserted to infringe

upon plaintiff’s patent.

Plaintiff apparently knew that P & H continued manu-

facturing topping machines after it had terminated the

licensing agreement with him, but he relied on assurances

that his patent was no longer involved. He first saw the

McGraw-Edison topper in June 1967, although he had seen

it advertised previously. Soon thereafter he contacted his

attorneys who promptly notified McGraw-Edison of the

possible infringement. Suit was not filed, however, until

1970, apparently because Mr. Moore was occupied in other

litigation involving his patent.

The Moore Pants Topper:

The controversy focuses on claim 1 of plaintiff’s pat-

ent, the Moore patent, which reads:

“A machine for finishing the top portion of trousers

comprising a frame member having a plurality of re-

ciprocable slide members mounted thereon, a forami-

Shabana tal AN

[APPENDIX) .

nous bag carried by said frame member and surround-

ing said reciprocable slide members, means for moving

the slide members outwardly to expand the bag mem-

ber into engagement with the inner surface of the

trousers top, a perforated tube assembly supported by

said frame member and centrally disposed thereof,

means for supplying steam to said tube assembly, and

means supplying heated dry air to the trousers top.”

We are particularly concerned with the combination and

cooperative effect of the foraminous ( porous) bag, the slide

members, of which there were four shown in the Moore

patent diagrams, and the means for causing the slide mem-

bers to move outwardly, thus expanding the bag and en-

gaging the waistband of the trousers. In the Moore patent

diagram the slide members were controlled by a spring

mechanism operated by a foot pedal. It should also be noted

at this point that Mr. Moore does not assert that any of

the elements of his invention taken individually was un-

known in the prior art or would be patentable by itself.

Rather, he asserts that his invention is a patentable com-

bination of elements, which, although known previously

individually, produce new or improved results in concert.

The Prior Art:

Three prior patents were cited by the examiner in the

course of processing plaintiff’s application. Newhouse pat-

ent No. 2,469,742 is a device for pressing the sleeves of coats,

jackets, and other garments after cleaning.

Although not incorporated in the patented device, use

of a fabric bag is discussed in connection with the prior art

and discarded as having unfavorable limitations. Bader

et al. patent No. 2,531,599 is called a pants stretcher and is

designed to restore the size of shrunken pants or trousers.

It basically consists of two bucks over which each leg of

a pair of pants would be drawn. Both the Newhouse and

the Bader patents contemplate the application of steam or

hot air. Finally, Rosenthal patent No. 2,658,649 was also

—vii—

(APPENDIX)

cited. This is a pants pressing machine designed to perform

a similar function to the Moore machine only with respect

to laundered rather than dry-cleaned pants. It involves an

expandable, heated center form over which the upper por-

tion of a pair of pants could be placed for drying and press-

ing. The patent indicates the form can be used to suspend

the pants either horizontally or vertically.

In addition to the patents cited by the examiner, de-

fendants introduced three uncited prior patents with the

intent of thereby demonstrating the obviousness of or lack

of novelty in the Moore device. These patents are Egleston

No. 176,172, Bowen No. 2,428,484, and Littell No. 2,521,297.

The Egleston device is an apparatus for shaping trousers

and suggests the use of a wire form over which the trousers

would be placed. Both the Bowen and Littell machines are

specifically designed as pants toppers. Both envision the

application of steam and hot air, and both employ an ad-

justable means for engaging the upper portion of the

trousers. The Bowen device suspends the trousers vertically

although certain manual Operations are required initially.

It does not envision the use of either the reciprocable slide

mechanism or the foraminous bag taught by the Moore

patent. The Littell device holds the trousers horizontally

and uses the force of the hot air to further expand the upper

portion. It also does not employ a reciprocable slide mech-

anism to engage the waistband, and although the patent

discusses the possible use of a foraminous bag, it rejects it

as having many undesirable effects.

The O’Boyle Machine:

At approximately the same time that Mr. Moore was

developing his pants topper, Kenneth O’Boyle in Albu-

querque, New Mexico, was also working on a device to

perform a similar function. Mr. O’Boyle filed his patent

application approximately four months prior to Mr. Moore’s

but received his patent approximately three weeks after

Mr. Moore’s had been granted. Both applications were

processed by the same examiner.

—viii—

[APPENDIX}

Mr. O’Boyle had constructed experimental prototypes

of his machine and used them in the dry-cleaning estab-

lishment in which he worked as early as 1951. He did not,

however, realize a model which worked to his satisfaction

until early 1953. Although one of the distinctive features

of the O’Boyle machine as described in the patent is its

ability to process two garments simultaneously, its design

and operation bear some resemblance to the Moore topper.

Perhaps the most obvious similarity is the use of a porous

bag over which the trousers are drawn, and the fact that

the bag can be collapsed or expanded by an adjustable

mechanism. However, rather than the four slide members

shown in the Moore patent which are moved back and

forth mechanically by a spring mechanism to expand and

collapse the bag, the O’Boyle topper employs a lever mech-

anism pivoted by hand, which moves in relation tc a sta-

tionary buck. Such a mechanism would of course move in

a circular rather than a reciprocable fashion.

The record also indicates that Mr. O’Boyle made cer-

tain disclosures regarding his machine to American Laun-

dry Machinery Company, a McGraw-Edison subsidiary,

while his machine was still in experimental stages. These

disclosures apparently suggested the possible use of a slide

mechanism rather than the lever device to expand the

foraminous bag. American Laundry retained these dis-

closures in its files and they were never published nor was

any machine ever constructed pursuant to the drawings

which they contained.

The Ajax Press:

With some modifications, the American Laundry Ma-

chinery Company, a subsidiary of McGraw-Edison, has

continuously manufactured the Ajax topper since 1961

when it entered the agreement with P & H Industries, Inc.

Although its outward appearance bears little resemblance

to the drawings contained in the Moore patent, it incor-

porates the essential features of the Moore claim. There

a

[APPENDIX}

are, however, two principal features which defendants in-

sist distinguish it from the Moore topper. As previously

mentioned the Moore patent suggests the use of four re-

ciprocable slide members all of which are movable. (It

should nevertheless be noted that the disputed claim refers

only to “a plurality of reciprocable slide members.”). The

Ajax topper on the other hand uses a stationary buck in

connection with only one slide member. Mr. Moore con-

tends, with the support of expert testimony, that such a

mechanism “reads” on his patent claim, i.e., “plurality”

requires only that there be more than one, and while the

buck on the Ajax topper is stationary, it and the slide

nevertheless move relative to each other. The second as-

serted difference is the use in the Ajax topper of a com-

pressed air cylinder to operate the stide as opposed to the

spring device suggested in the Moore patent. Here again

the plaintiff's expert was able to read the air cylinder de-

vice on the Moore claim.

As stated above, the issues raised by both parties were

submitted to the jury by ten interrogatories. They are as

follows:

“(1) Do you find that the Defendants have proved

from clear and convincing evidence that the claim in.

issue of the patent in suit does not particularly point

out and distinctly claim the subject matter which

Moore regarded as his invention?

“(2) Do you find from clear and convincing evi-

dence that the difference between the subject matter

of the claim in issue of the patent in suit and the prior

art are such that the subject matter thereof as a whole

would have been obvious at the time the alleged inven-

tion thereof was made to a person having ordinary

skill in the art to which said subject matter pertains?

“(3) Do you find from clear and convincing evi-

dence that the claim in issue of the patent in suit is

Sere ey —s

—_—x—

{APPENDIX}

not ‘new’ within the meaning of that word as used in

the patent law?

“(4) Do you find from clear and convincing evi-

dence that the subject matter of the claim in issue of

the patent in suit was in public use more than one year

prior to the filing date, December 9, 1953, of the patent

in suit?

“(5) Do you find from clear and convincing evi-

dence that the subject matter of the claim in issue of

the patent in suit was known or used by others in this

country before the invention thereof by Moore?

“(6) Do you find from clear and convincing evi-

dence that the subject matter of the claim in issue of

the patent in suit was patented or described in a

printed publication more than one year prior to the

date of application for the patent in suit, namely, De-

cember 9, 1953?

“(7) Do you find from clear and convincing evi-

dence that the subject matter of the claim in issue

of the patent in suit was, before Moore’s invention

thereof, invented in this country by another who had

not abandoned, suppressed or concealed it?

“(8) Do you find from a preponderance of the evi-

dence that the Ajax Pants Topper infringes the claim

in issue of the patent in suit?

“(9) Do you find from a preponderance of the evi-

dence that Moore delayed unreasonably in contending

that McGraw-Edison infringed the patent in suit?

“(10) Do you find from a preponderance of the evi-

dence that McGraw-Edison did not have a ‘regular and

established place of business’ (within the meaning of

the statute quoted in Instruction No. 14A), in this Ju-

dicial District at or before the time this case was filed

against McGraw-Edison, namely March 31, 1970?”

si [APPENDIX}

Neither party on this appeal attacks the content nor

the wording of the interrogatories, no objections were made

to them by the defendants ai trial, and it is not asserted that

any of them contained issues not proper for the jury’s de-

termination. The standards for review of judgments n.o.v.

were set out by this court in Kippen v. Jewkes, 258 F.2d

869 (10th Cir.), and more recently in United States v. Fenix

& Scisson, Inc., 360 F.2d 260 (10th Cir.); Wilkin v. Sunbeam

Corp., 377 F.2d 344 (10th Cir.). This standard which we

have said is to be applied to both judgments 71.0.v. and to

directed verdicts is that the evidence must be viewed in

the light most favorable to the party opposing the motion

(together with inferences which may be fairly drawn there-

from), and the verdict not directed nor the motion granted

unless the evidence points all one way, and is susceptible

of no reasonable inferences which sustain the position of

the party against whom the motion is directed. The motion

must also be denied if the evidence and the inferences, so

examined, are such that reasonable men may reach differ-

ent conclusions. Kippen v. Jewkes, 258 F.2d 869 (10th Cir.).

The responses to each interrogatory were favorable to

the plaintiff’s position. The plaintiff had the burden of

proving by a preponderance of the evidence that his patent

had been infringed by defendants. This issue was submitted

to the jury in the eighth interrogatory, and the jury found

infringement. The first seven interrogatories were submit-

ted in response to the defendant’s assertion that plaintiff's

patent was invalid. As to these defenses, the defendants

had the burden of proof and this was a burden to prove by

“clear and convincing” evidence as the interrogatories re-

cite. The ninth interrogatory was based on a defense of

laches, with the burden on defendant to establish it by a

preponderance of the evidence.

Thus we must examine the record under the standard

above set out for judgments n.0.v.; and, of course, consider-

ing who had the burden as to the several elements, and

a4

=

—xii—

(APPENDIX)

what the burden was. Each element must be considered

separately. We have heretofore held that it is an excep-

tional case wherein the party having the burden of proof

is entitled to a judgment n.o.v. Ahrens v. American-Cana-

dian Beaver Co., 458 F.2d 607 (10th Cir.); Kirkendoll Vv.

Neustrom, 379 F.2d 694 (10th Cir.); Powers v. Continental

Casualty Co., 301 F.2d 386 (8th Cir.). See also 5A Moore’s

Federal Practice 50.02[1].

Since the attacks on the validity of this patent became

the center of the trial, as might be expected, the issues ad-

vanced by defendants are first considered. As stated above,

the burden as to the issues in the first seven interrogatories

was on the defendant; furthermore, the burden was heavy

—clear and convincing evidence. It is easy to lose sight of

the degree of this burden, but it must be imposed, and the

reason for it is important.

Plaintiff Moore holds a United States patent protect-

ing his pants topping machine. This was issued in due

course, and it is advanced by him as a valid combination

patent in the allegations of his complaint. Thereby a pre-

sumption arises in favor of its validity. The defendants

can overcome that presumption and establish the invalidity

of the patent only upon clear and convincing evidence.

Griswold v. Oil Capital Valve Co., 375 F.2d 532 (10th Cir.).

In McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d 381

(10th Cir.), we applied the following test for a valid com-

bination patent:

“The test of whether a particular patent is a mere

aggregation and invalid or a combination and valid

has been variously stated. Generally, where elements

old in the art are united in such a way that a new and

useful result is secured or an old result is attained in

a more facile, economical and efficient manner, there

is a patentable combination.”

—_

[APPENDIX)}

The first seven interrogatories are addressed particu-

larly to several conditions asserted by defendants to make

the patent invalid. In the first interrogatory the jury was

asked whether the defendants had established that the

claims of the plaintiff’s patent did not distinctly claim and

particularly point out the subject matter of the invention.

As to the nature and quality of the claim, there was testi-

mony submitted by both parties. The record demonstrates

that the evidence submitted by the plaintiff on this point

in the context of the degree of the burden was a sufficient

basis for the jury to have answered as it did.

The interrogatories two through seven submit the

other particular reasons advanced by defendants to show

the plaintiff’s patent to be invalid. These include, as a

reference to the interrogatories wil] show, obviousness,

lack of novelty, prior public use, prior knowledge, prior

publication, and prior invention. The defendants had the

burden of proof by clear and convincing evidence as to

each. They attempted to carry this burden by introducing

the uncited prior art, the O’Boyle patent, the prior use of

the O’Boyle machine, and the disclosures made by Mr.

O’Boyle to American Laundry Machinery Company. While

these facts are indeed significant as to the validity of the

Moore patent, they fail to disprove it with the degree of

certainty defendants were faced with. The defendants’ own

witnesses were unable to testify that the uncited prior art

was any more pertinent than that cited by the patent ex-

aminer or that the O’Boyle machine contained the essential

elements of Mr. Moore’s topper. Furthermore, there is

strong evidence that the O’Boyle disclosures were made

only in confidential communications with American Laun-

dry. Finally there is the consideration that both the O’Boyle

and Moore patents were approved by the same examiner.

Thus there was submitted evidence on both sides of each

issue or element. On balance we find ample support for

the jurv responses to interrogatories one through seven,

—xiv—

[APPEND!Xx}

and again, in view of the heavy burden of persuasion upon

the defendants.

It must be held that as to each of the elements of the

defense directed to the validity of the patent, the defend-

ants failed to carry their burden. Further, when the stand-'

ards relating to review of motions for judgments n.o.v. are

considered, it becomes apparent that the determination of

the jury, as to the several issues relating to validity, must

be reinstated.

Before leaving the elements of validity, and in view

of the point raised by the plaintiff that the trial judge

should have been disqualified by reason of a statement he

made as to the degree he would be bound by the answers

of the jury, we must refer to several decisions: It is clear

that the ultimate question of validity of a patent is one of

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

(1950). “Validity” is a legal conclusion arising from the

issues raised in attacks on a patent and more importantly

is derived from the several components of validity. These

include novelty, utility, and non-obviousness (invention).

Of these three, the first two, novelty and utility, are cus-

tomarily considered to present issues of fact. We have so

held. A. E. Staley Manufacturing Co. v. Harvest Brand,

Inc., 452 F.2d 735 (10th Cir.); Scaramucci v. Dresser In-

dustries, Inc., 427 F.2d 1309 (10th Cir.). There is, however,

some confusion or difference of Opinion as to the non-

obviousness element. The Supreme Court has observed that

this matter “lends itself to several basic factual inquiries,”

and compared it in that respect to concepts of negligence

and scienter. Graham v. John Deere Co., 383 U.S. 1 (1966).

Although the Fifth and Ninth Circuits have taken a dif-

ferent view, we have held those observations to mean that

non-obviousness is itself a factual question. Eimco Corp. v.

Peterson Filters & Engineering Co., 406 F.2d 431 (10th

Cir.); contra Swofford v. B & W, Inc., 395 F.2d 362 (5th

Cir.): Hensley Equipment Co. v. Esco Corp.. 375 F.2d 432

—xv—

(APPENDIX)

(9th Cir.) Thus, within the Tenth Circuit, novelty, utility,

and non-obviousness are held to require factual determi-

nations.

Passing to issues other than validity of the patent, the

eighth interrogatory, as noted above, presented the in-

fringement issue. Here the plaintiff, of course, had the bur-

den to show infringement by a preponderance of the evi-

dence. The issue was so submitted to the jury which found

there had been infringement on the part of defendants by

the Ajax machine. The issue war narrowed to infringement

by equivalency.

In McCullough Tool Co. v. Well Surveys, Inc., 343 F.2d

381 (10th Cir.), we considered a claim of infringement by

equivalency. We listed the following considerations for de-

termining its applicability:

“The question of equivalency is one of fact and it

must be determined against the context of the patent,

the prior art and the particular circumstances of the

case and consideration must be given to the purpose

for which an ingredient is used in a patent, the quali-

ties it has when combined with the other ingredients

and the function it is intended to perform.”

As previously noted, plaintiff’s expert testified that

the air cylinder operated slide and Stationary buck of the

Ajax topper are, in his opinion, functional equivalents of

the mechanically operated slides of the Moore topper. If

accepted by the jury, this testimony would furnish a rea-

sonable basis for a finding of infringement. The considera-

tions suggested above received adequate attention during

the presentation of evidence, in the instructions, and are

adequately reflected in the response to the eighth inter-

rogatory. There was evidence before the jury to suppert

its answer to the eighth interrogatory.

The final contested issue relates to the ninth interroga-

tory which raises the issue of laches. Here again the de-

fendants had the burden of persuasion, although only by

—xvi—

(APPENDIX)

&. preponderance of evidence. We again find in the rec-

ord sufficient support for the jury’s determination that

there was no undue delay or prejudice to the defendants.

The inference may be drawn from the record that plaintiff

did not become aware of the possible infringement until

1967, and that any ensuing delay in filing suit was due to

other pending litigation testing the validity of his patent.

Furthermore, McGraw-Edison was promptly notified by

Mr. Moore of the alleged infringement soon after he saw

the Ajax machine of defendants. Such circumstances are

sufficient excuse for the delay. Clair v. Kastar, Inc., 148

F.2d 644 (2nd Cir.), cert. denied sub nom. Kastar, Inc. v.

Clair, 326 U.S. 762 (1945).

In view of the foregoing, we must set aside the order

of the trial court which granted judgment n.o.v., and this

we hereby do.

There remains for consideration the alternative order

of the trial court granting a new trial. It is possible that

some of the basis for this order lies in a response made by

the plaintiff during his testimony which indicated that he

had first conceived of his pants topping machine about 1948.

However, both parties agree that this testimony alone is

insufficient to establish a priority date, and that the earliest

date from which the plaintiff can claim his invention is

April 1953 when he first contacted his patent attorney. The

defendants requested an instruction to this effect, which

the court agreed to give, but which apparently was omitted.

We conclude also that the failure to give the requested

instruction relative to the above date was harmless error.

Mr. Moore’s statement as to when he got his basic idea

was made during the course of his general testimony. There

iS no indication that undue attention was ever drawn to it

nor emphasis placed on it. The court observed that it had

failed to notice the Statement, and that it considered it

unlikely that the jury had either. A special instruction in

—xvii—

[APPENDIXx}

such a situation was not called for, especially in view of

the court’s observation.

The order for a new trial States as grounds therefor

that the evidence was insufficient to support the jury’s

answers to the interrogatories, and that those answers were

against the weight of the evidence. We have already stated

our conclusion when the burden of proof is considered and

the standards applied for judgment n.o.v.

With further reference to the grant of a new trial in

the event the judgment n.o.v. was set aside on appeal, we

recognize that the grant of a new trial is normally within

the discretion of the trial court, and an unusual situation

must be presented before such a motion will be overturned.

However, the error in this case resulted from an overlap-

ping of the functions of the judge with those of the jury.

Both parties have indicated that all available evidence was

presented at trial, and that a second trial would basically

be a repetition of the first. The jury heard all the evidence

the parties had, and we conclude that a new trial of this

case would serve no purpose, and should not be granted.

O’Neil v. W. R. Grace & Co., 410 F.2d 908 (5th Cir.). The

order granting a new trial in the alternative is hereby set

aside.

The judgment and order are reversed, and the case

remanded with instructions to enter judgment on the ver-

dict, and for such other proceedings as may he necessary

not inconsistent herewith.

—xviii—

[APPENDIX]

APPENDIX D

SPECIAL VERDICT AS TO ISSUE OF

PATENT VALIDITY

(Filed September 2, 1971)

We, the jury in the above entitled action, unanimously

find as follows:

Unanimous Answer

Interrogatory: of the Jury

(1) Do you find that the De-

fendants have proved

from clear and convinc-

ing evidence that the

claim in issue of the pat-

ent in suit does not par-

ticularly point out and

distinctly claim the sub-

ject matter which Moore

regarded as his inven-

tion? No

[“Yes” or “No”]

(2) Do you find from clear

and convincing evidence

that the difference be-

tween the subject matter

of the claim in issue of

patent in suit and the

prior art are such that

the si.bject matter there-

of as a whole would

have been obvious at the

time the alleged inven-

tion thereof was made to

a person having ordinary

skil; in the art to which

—xix—

Interrogatory:

said subject matter per-

tains?

(3) Do you find from clear

(4)

(5)

(6)

and convincing evidence

that the claim in issue of

the patent in suit is not

“new” within the mean-

ing of that word as used

in the patent law?

Do you find from clear

and convincing evidence

that the subject matter

of the claim in issue of

the patent in suit was in

public use more than one

year prior to the filing

date, December 9, 1953,

of the patent in suit?

Do you find from clear

and convincing evidence

that the subject matter

of the claim in issue of

the patent in suit was

known or used by others

in this country before

the invention thereof by

Moore?

Do you find from clear

and convincing evidence

_ CAPPENDIXx)

Unanimous Answer

of the Jury

No

[“Yes” or “No”]}

It is

[“It is not” or “It is”]

It was not

(“It was” or “It was not”]

It was not

[“It was” or “It was not”’]

ee ee ee 6

bed

Deans

—Xx —

tAPPENDIX]

Interrogatory:

(7)

(8)

(9)

that the subject matter

of the claim in issue of

the patent in suit was

patented or described in

a printed publication

more than one year prior

to the date of the appli-

cation for the patent in

suit, namely December 9,

1953?

Do you find from clear

and convincing evidence

that the subject matter

of the claim in issue of

the patent in suit was,

before Moore’s invention

thereof, invented in this

country by another who

had not abandoned, sup-

pressed or concealed it?

Do you find from a pre-

ponderance of the evi-

dence that the Ajax

Pants Topper infringes

the claim in issue of the

patent in suit?

Do you find from a pre-

ponderance of the evi-

dence that Moore de-

layed unreasonably in

Unanimous Answer

of the Jury

It was not

[“It was” or “It was not”]

It was not

(“It was” or “It was not”’|

Yes

[ “Yes” or “No” ]

—xxi—

: [APPENDIX}

Unanimous Answer

Interrogatory: of the Jury

contending that Mc-

Graw-Edison _ infringed

the patent in suit? No

[ “Yes” or “No”]

(10) Do you find from a pre-

ponderance of the evi-

dence that McGraw-Edi-

son did not have a “regu-

lar and established place

of business” (within the

meaning of the statute

quoted in Instruction No.

14A) in this Judicial Dis-

trict at or before the

time this case was filed

against McGraw-Edison,

namely March 31, 1970? No

[“Yes” or “No”]

/s/ Kermit S. Greear

Foreman of the Jury

Dated 9-2-1971. ~

- * * » * *

> DA MS

ae Yipbel

—Xxii—

{APPENDIX}

APPENDIX E

JUDGMENT

(Filed August 23, 1972)

This cause came on to be heard on defendants’ motion

to set aside the verdict and judgment for plaintiff and to

order judgment for defendants in accordance with the pre-

vious motion for directed verdict, and in the alternative for

a new trial, as provided by Rule 50 (b) F.R.C.P., and the

Court having considered the briefs of the parties, and the

Court being fully advised, it is

ORDERED (1) That the verdict and judgment be set

aside and that judgment be entered herein for defendants,

in accordance with their motion for directed verdict, and it

is further

ORDERED (2) That the defendants’ Motion for New

Trial be granted on the grounds that the evidence is legally

insufficient to support the jury’s answers to Interrogatories

1 through 9; the jury’s answers to Interrogatories 1 through

9 were against the weight of the evidence; and further that

the jury should have been instructed that the date Moore

made his alleged invention was, at the earliest, April 17,

1953. This ruling to take effect only in the event that the

~Tuling of the Court on defendants’ Motion for Judgment is

vacated or reversed on appeal.

DATED this 23rd day of August, 1972.

CERTIFICATE OF SERVICE

This is to certify that three copies of the foregoing

Petition for Writ of Certiorari were mailed with first class

postage prepaid to each of the attorneys for responden’,

namely William S. Dorman, 1401 National Bank of Tulsa

Bldg., Tulsa, Oklahoma 74103 and James R. Eagleton, 1606

First National Bldg., Tulsa, Oklahoma 74103 on this

day of May, 1974.

JERRY J. DUNLAP