Petition for Writ of Certiorari — Piher International Corp. v. CTS Corp.

APR EME COURT, Ue & i

In THE

Auari 1

Supreme Court of the Anited States

Octoser Term, A.D. 1975

No. aes fo LOS 2

PIHER INTERNATIONAL CORPORATION

and PIHER SOCIEDAD ANONIMA,

Petitioners,

vs.

CTS CORPORATION,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

Ricwarp R. TREXLER

Rarrorp A. BiacksTone, JR.

Otson, TREXLER, WOLTERS,

BusHnetut & Fosse, Lrp.

141 West Jackson Boulevard

Chicago, Illinois 60604

Attorneys for Petitioners

Midwest Law Printing Co., Chicago 60601, Financial 6-3988

ES)

bie

.

Pewee SCT RY te -

we BON

~~ we EI Sy OF

x

as

|

TABLE OF CONTENTS

PAGE

OPINIONS OF THE COURTS BELOW ............--.------ 2

JURISDICTION ...............-.-:-csecsceesncsnessencssensessnsenentensnseesnenses 2

QUESTION PRESENTED ............. a 3

THE STATUTE INVOLVED ...............- ” i<-

STATEMENT OF THE CASE , 4

REASON FOR GRANTING THE WRIT ................-- 6

ARGUMENT ....... ; . vinsnhelibianainsinaias i

CONCLUSION .nccssesesseseessss.-scccccscccenssenscesennsnnseassnsncesssnescnnsens 9

APPENDICES:

A—Opinion of the United States Court of Appeals

for the Seventh Circuit ......2...........--ccesceeeeesees A-l

B—Order of Court of Appeals denying Petition for

Rehearing B-1

(‘(—Memorandum Opinion of United States District

Court for the Northern District of Illinois, East-

ern Division (Honorable Julius J. Hoffman,

Senior District Judge) C-1

D—United States Patent No. 3.518.604 -.... D-1

E—United States Patent No. 3,237,140 -..................- E-1

F—United States Patent No. 3,375,478... F-1

LIST OF AUTHORITIES CITED

Cases

Graham vy. Deere, 383 U.S. 1 (1966) 6

Sakraida vy. Ag Pro, Inc., United States Supreme Court

Docket No. 75-110, Court of Appeals decision report-

ed at 512 F.2d 141 (5th Cir. 1975) 6

Statute

35 U.S.C. $103 3, 5, 6, 8, 9

LEEPER ETL DEE SAE LEER DOLE EIA EPC LEIS ERE LOL RE Pete SAR ET

‘

=

In THE

Supreme Court of the United States

Octonrr Term, A.D. 1975

No.

PIHER INTERNATIONAL CORPORATION

and PIHER SOCIEDAD ANONIMA,

Petitioners,

v8.

CTS CORPORATION,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

PIHER INTERNATIONAL CORPORATION and PIHER

SOCIEDAD ANONIMA pray that a Writ of Certiorari issue

to review the decision of the United States Court of

Appeals for the Seventh Circuit in the case entitled CTS

Corporation (Plaintiff-Appellee) v. Piher International

Corporation and Piher Sociedad Anonima (Defendants-

Appellants)! Appeal No. 75-1100.

' Hereafter “CTS”: and “Piher”.

oxliihone

This is a patent infringement action, and the patent

involved in the present Petition is No. 3,518,604 on

“Electrical Component” issued to CTS Corporation on

June 30, 1970, pursuant to an application filed February

12, 1968.

OPINIONS OF THE COURTS BELOW

———_ —

The opinion of the Court of Appeals, concerning pat-

ent No. 3,518,604, and others,? was decided September

17, 1975. The decision is unreported, and a copy of the

slip opinion is hereto appended as Appendix A.

The Court denied a Petition for Rehearing by your

Petitioners in an unpublished order dated January 26,

1976, a copy of which is hereto appended as Appendix

B.

The lower Court decision in the District Court for the

Northern District of Illinois, Eastern Division, involving

said patent No. 3,518,604, and others,” is published in

184 USPQ, at page 399, and a copy is hereto appended

as Appendix C.

JURISDICTION

; Jurisdiction of the Court is invoked under Title 28, US

Code Section 1254 (1).

This Petition is filed within the ninety (90) days’

period permitted under Title 28 U.S.C. Section 2101(c),

from the order of the Court of Appeals on Petition for

Rehearing dated January 26, 1976. (Appendix B).

2 Patents No. 2,740,027; No. 3,375,478; and No. 3,670,285.

a. on

QUESTION PRESENTED

This is a patent infringement action, and the question

presented by the present Petition concerns the standard

to be followed in determining the question of ob-

viousness under 35 USC Section 103.

Specifically. the question may be stated as follows:

1. If a combination of two prior art references is

obvious to accomplish a first result, is that same

combination of references rendered non-obvious

because it accomplishes a second result allegedly

not disclosed in the references in question?

THE STATUTE INVOLVED

35 U.S.C. § 103

Conditions for patentability; non-obvious subject

matter

A patent may not be obtained though the inven-

tion is not identically disclosed or described as set

forth in section 102 of this title, if the differences

between the subject matter sought to be patented

and the prior art are such that the subject matter

as a whole would have been obvious at the time the

invention was made to a person having ordinary

skill in the art to which said subject matter per-

tains. Patentability shall not be negatived by the

manner in which the invention was made.

a

STATEMENT OF THE CASE

CTS filed its patent infringement action alleging in-

fringement of four United States Letters Patent 2,740,-

027, (027); 8.875.478 (478); 3,518,604 (604); and 3,670,-

285 (285). Upon stipulation, and completion of the

pleadings before the District Court, there remained at

issue, the question of infringement of ‘027, '478, and

‘604, and the question of validity as to all four of the

patents, including the question of obviousness over the

prior art in the case of ‘604, and alleged invalidity upon

the ground of “on sale” more than one year before the

patent application was filed in the case of ‘285. The

Trial Court made findings adverse to Piher upon all

issues,

In view of the nominal amounts involved, no appeal

Was taken by Piher as (9 927 and ‘478; but appeal to the

Court of Appeals was ta. as to 604 and '285 including

the issue of validity upon the points above stated.

On the appeal, the Court of Appeals held that the

Trial Court improperly excluded certain evidence as to

“on sale” in connection with ‘285, and remanded the case

to the District Court for a new trial upon this issue.

As to ‘604, the Court of Appeals held the patent valid

and infringed, and the validity holding by the Court of

Appeals upon the question of obviousness over the prior

art is the subject of the present Petition to this Court. A

copy of patent No. 2,518,604 ('604) is appended hereto as

Appendix D.

The subject matter of patent '604 relates to variable

resistors, sometimes referred to as “potentiometers” or

A RE ARR EDL APES EME TETA NOR ENC IO eit rag

— a

“trimmers.” CTS is the owner of two earlier patents, No.

3,237,140 (140) and No. 3.375.478 ('478) which bear

upon the same subject matter and which have prior art

status as to CTS’ patent '604.. A copy of 3,237,140 (140)

is hereto appended as Appendix E, and a copy of 3.-

875,478 (478) is hereto appended as Appendix F.

The obviousness question presented by the present

Petition involves simply the substitution of the improved

flared bearing 3lc, Fig. 1, of '478, for the more conven-

tional or non-flared bearing at the aperture 15, Fig. 2, of

‘140. The Court of Appeals in its decision in effect holds

that such combination is obvious if the purpose is to

provide a “secure relationship” between the parts; but

that the same combination is rendered non-obvious if

there is also involved the additional purpose of “dust ex-

clusion”, because this feature allegedly is not adequately

disclosed in either reference.

Your Petitioners respectfully submit that this holding

by the Court of Appeals presents an anomaly in the law,

in the consideration of the question of obviousness under

85 USC 108.

* The Patent Office examiner was not informed by CTS of its

patent ‘478. Upon the issue of duty of disclosure, the Court of

Appeals said that it was “surprised and troubled” by the

deliberate failure of CTS to cite its patent ‘478 to the Patent

— aetne the prosecution of the ‘604 application. (Appen-

dix A-6

ae

a a

REASON FOR GRANTING THE WRIT

—_—_——

In Graham v. John Deere Co., 383 U.S. 1 (1966) this

Court laid down the standards and procedures to be

followed in the consideration of the question ou: ob-

viousness under 35 USC 103.

In view of the decision by the Court of Appeals below,

there now arises the question of whether under those

standards and procedures a combination of two refer-

ences may be obvious to achieve one purpose, while the

combination of those same two references is rendered

non-obvious if an additional result or purpose is

achieved, inherent in the combination, but allegedly not

adequately discussed or disclosed in the specifications of

the references in question.

It is believed that this question should be clarified by

this Court, perhaps companion to the question of ob-

viousness under 35 USC Section 103, which is now

before this Court in the Fifth Circuit case of Sakraida v.

Ag Pro, Inc., (U.S. Supreme Court Docket No. 75-110:

Court of Appeals decision reported at 512 F.2d 141).

RELL LEY LDL ITE EM IIE TET OTE SUI MSY OYE OT

'

—

ARGUMENT

—__-—

The decision by the Court of Appeals below, pertinent

to the question presented by this Petition, appears in the

Court’s decision in Section I, comprising Appendix

pages A-4 and A-5; and the involved structures are not

complex.

Reference patent ‘140 (Appendix E), discloses a dust-

proof trimmer, but utilizes an essentially conventional

non-flared bearing at the aperture 15, Fig. 2, where the

rotatable resistor drive shaft 52 projects through the

apertured closure wall 13 (see patent specification

column 3, lines 10-24 and column 5, lines 10-38).

The reference patent ‘478 discloses an improved flared

type bearing 3lc, Fig. 1, the structure being described

in the ‘478 patent specification, column 4, beginning line

40, as follows:

“Such design assures a tight bearing fit between

the shaft 31 and the bearing or aperture 14b as well

as eliminating longitudinal movement of the shaft.”

Patent '478 does not employ a dust-proof housing.

The decision by the Court of Appeals (Appendix pages

A-4 and A-5) recognizes that the structure of ‘604, the

patent in suit, is achieved simply by the substitution of

the flared bearing of ‘478 for the more conventional

bearing of ‘140; and that such combination or substitu-

tion will achieve the dual purpose firstly, of holding the

parts “securely together” while being smoothly

rotatable, and secondly, of “preventing dust or other

foreign matter from entering the compartment.” And

the Court says (Appendix page A-5) that the substitution

EON ty ET eT SOT BNET OS &

nm

~~

to “maintain a secure relationship” would be obvious.

Specifically the Court says (Appendix page A-5):

“If the flared bearing of ‘604 merely performed

the function of maintaining a secure relationship

among the components during adjustment, Piher’s

argument (of obviousness) would be valid.”

(parenthetical material added)

But the Court then goes on to find that the same com-

bination of references, obvious to achieve the result of a

“secure relationship” is non-obvious because there is ad-

ditionally achieved a “dust excluding function” which

the Court finds is not adequately discussed or disclosed

either in ‘140 or ‘478.

Your Petitioners respectfully submit that this holding

by the Court below presents a complete anomaly upon

the question of obviousness under 35 USC 103. If a com-

bination of references is obvious to achieve a first pur-

pose, then that combination of references is obvious for

any and all purposes which inherently result from any

combination which is made. If a combination of

references is obvious to achieve a first desirable result,

then that same combination cannot be rendered non-

obvious because additional results and benefits may be

inherent or achieved; and so to conclude presents a legal

anomaly upon the question of obviousness under 35 USC

103.

Placed in the context of the present case, if the com-

bination of ‘140 and ‘478 is obvious to achieve in ‘140 a

more “secure relationship” between the parts, then that

combination cannot be rendered non-obvious by reason

of the fact that the inherent function of “dust exclusion”

is additionally achieved.

Coe ee

a

CONCLUSION

Wherefore, and for the reasons stated, it is respectful-

ly submitted that the decision by the Court of Appeals

below is improper, and presents a legal anomaly upon

the question of obviousness under 35 USC 103 requiring

clarification by this Court, and that the present Petition

be granted.

Respectfully submitted,

Ricnarp R. Trexier

Ratrorp A. Biackstonr, JR.

Oxtson, TREXLER, WoLTERs,

BusHNeELL & Fossr, Lrp,

141 West Jackson Boulevard

Chicago, Illinois 60604

Attorneys for Petitioners

= 22. ye ce ee a nS Te ae a | x POGGIO NN INP EY pe OPES