Petition for Writ of Certiorari — Bolkcom v. Carborundum Co.
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SUPREME GOURT, U © MAR 3 1976
gn the
Supreme Court of the United States
Ocroser Term, 1975
No 75-1244
WILBUR T. BOLKCOM and WILLIAM E. KNAPP,
Petitioners,
Vv.
THE CARBORUNDUM COMPANY,
Respondent.
Petirion For A Wart or Cerriorani
To THE Unrrep States Court or APPEALS
FOR THE SixtH Cincurt
ARLAND T. STEIN
THomas C. Wetracn
REED SMITH SHAW & McCLAY
747 Union Trust Building
Pittsburgh, Pennsylvania 15230
Attorneys for Petitioners
Financial Press Corporation, Pirtsburgh
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Ree no RG UTD AC
TABLE OF CONTENTS
Page
Ree SEMEN AAS Cec Gbwhacdccagecd bacteakkias ]
JURISDICTION ..... SERS EER MAAS AA KAO A diae ROO EI 2
CPUS TINS CURRIN PURE on vincaccacecccncesancs 2
SEATED GON WOME CaM ok on cena eesdacesuna en 2
REASONS FOR GRANTING REVIEW ............. S
I. There Is A Conflict Among The Courts Of
Appeals On The Statutory Authority Of The
Commissioner of Patents To Grant Reissue
Patents With Claims Enlarging Or Narrowing
The Scope Of The Claims Of The Original
PR ere rey ere ey Pere per re 8
Il. It Is Time To Renew And Vitalize The
Doctrine of Equivalents With Its Importance
To The Application Of The Patent Laws. The
Court Of Appeals Decision Abrogates The
Doctrine Of Equivalents Established By This
Court To Guarantee To Patentees The Stat-
utory Right Of Exclusivity. .................. 16
oe ek + ee er Tey ree ree ry era 22
eae eer
ii Table of Citations
TABLE OF CITATIONS
CASES
Crane Packing Co. v. Spitfire Tool & Machine
Co. 275 F.2d 271 (7 Cir., 1960), cert. den.
Ceres cree. . nua hau cass Ease 14
Graver Tank & Mfg. Co., Inc. v. Linde
Air Products Co., 339 US.
5 ee reer. Be ee Oe
Handel, Application of , 312 F.2d 943
I antics Locka ah ss Naeaie sae kan seca 15
Hartzell Industries, Inc. v. McCauley Industries
Corp., 304 F.2d 481 (6 Cir., 1962) ............--- 9
Hazeltine Research Inc. v. Avco Mfg. Corp.,
297 F.2d 137 (7 Cir., 1955), cert. den.
EEE Sin kG Lae VOD AGSGA SERS AT LEEK 84 05.0 14
Hickory Springs Mfg. Co. v. Fredman Brothers
Furniture Co. Inc. et al, 309 F.2d 55 (1975). ...... 13
Kearney & Trecker Corp. v. Tiddings & Lewis,
Inc. 452 F.2d 579 (7 Cir., 1971) cert. den.
eR ER ey eee ee ee eee 14
Lockwood v. Langendorf United Bakeries, Inc.
ee ee a, FU ne Sa ceded dw ccad soe eass 13
Marconi Wireless Telegraph Co. v. United
States 81 Ct. Cl. 671 (Ct. Cl., 1935), aff'd in
part and rev'd in part, 320 U.S. 1 (1943). ...... 21, 22
Maxant Button & Supply Co. v. Sears, Roe-
buck & Co., 388 F.2d 912, (7 Cir., 1968).......... 14
McCullough Tool Co. v. Well Surveys, Inc.
343 F.2d 381 (10 Cir., 1965) cert. den.
383 U.S. 933 ..... RE Ta Ghat oe aad ae 13, 21
Parker and Whipple Co. v. Yale Lock Co.
ne ee ere 11, 12, 14
Riley v. Broadway-Hale Stores Inc.
eg gk Fle ae CO Pere rereererererre 13
p BLEED THROUGH
OMe 0 arepeee
Table of Citations
Sanitary Refrigerator Co. v. Winters
a EE cece ena hsde ca cwan eek K eke
Scovill Mfg. Co. v. Goldblatt Brothers, Inc. et al 362
F.2d 777, (7 Cir., 1966) cert. den. 385 U.S. 970...
Sears, Roebuck & Co. v. Minnesota Mining &
Mfg. Co. 243 F.2d 136 (4 Cir., 1957)
Ge Be I KX bea sks cae ek ca aekis renee
Tektronix, Inc. v. United States 445 F.2d
SP er |
Tigrett Industries v. Standard Industries 397 U.S. 586,
CRRre) Ole, Gt Ce ©) ie OE 5. 6s Ack awercaceancn
U.S. Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp.,
BE Ce eerer eee 8, 9, 11, 12, 13,
Union Asbestos & Rubber Co. v. Paltier Corp.
298 F.2d 48-51-54 (7 Cir., 1962) cert. den.
SE SEN GKGA AA SSD EAD ELA RENES ORIN KA SEARO RADA
Weller Mfg. Co. v. Wen Products, Inc.
ee Fee CO C8 CA, PE ssa ce csv ancndcanancans
Wesseler, Application of, 367 F.2d 838 (CCPA, 1966). .
Winans vt. Denmead, 56 U.S. 545 (15 How. 330)
SED ice Ww Pel vas eile ie ds ok 6 hack kak ba n'en 6
Ziegler v. Phillips Petroleum Co., 483 F.2d 858
(5th Cir., 1973) cert. den. 414 U.S. 1079... oe.
STATUTES
Is NEE 6h CGS AKA CR UEW RN COMER Rasa heehaieasa
35 U.S.C. §64 (repealed) ............. 2, 9, 10, 11, 12,
EEG ha cK hohe as Kore k an kA chen dkw en naw
See GOED ssh ancidscas Oy oh Oo OR 2, ER, i,
MIsCELLANEOUS
Patent Law Perspectives, Annual Reviews B.1
{1} [b], Dunner, Gambell, and Kayton .......... ive
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aires IN:
Jn the
Supreme Court of the Lmted States
OctrosBer TERM 1975
WILBUR TT. BOLKCOM and WILLIAM E. KNAPP,
Petitioners,
Vv.
THE CARBORUNDUM COMPANY,
Respondent.
Petition For A Wart OF Certiorari To THe
Unrrep States Court or APPEALS
For Tue Sixtu Circuit
Petitioners, Wilbur T. Bolkcom and William E. Knapp,
ask that a writ of certiorari issue to review the judgment of
the United States Court of Appeals for the Sixth Circuit in
this case entered on September 30, 1975.
OPINIONS BELOW
The opinion of the court of appeals was entered
September 30, 1975, on a hearing held October 5, 1973. The
opinion and judgment are reported at 523 F.2d 492 and
appended hereto as Appendix A, pp. la-12a. The opinion of
the district court was rendered orally at the end of the trial.
The opinion and judgment of the district court are
unreported and are appended thereto as Appendix B,
pp. ]4a-29a, 51a. The findings and conclusions of the district
ee el
ARNO RDA I NTE « Ne IT Ee NE ARR, as
a
4
BRitiiescevccnsee
2 Jurisdiction, Questions Presented and
Statement of the Case
court consistent with the opinion are also part of Appendix
B, pp. 30a-50a.
JURISDICTION
The judgment of the court of appeals was entered on
September 30, 1975 (Appendix A, p. 12a). A timely petition
for rehearing was denied on December 4, 1975 (Appendix A,
p. 13a). The jurisdiction of this Court is invoked under 28
U.S.C. §1254 (1).
QUESTIONS PRESENTED
1. Whether the statute governing reissue of patents, §251]
of the 1952 Patent Act, can be interpreted to void claims of
reissue patents enlarging or narrowing the scope of the
claims of the original patent, contrary to the express terms of
that statute, by engrafting thereon additional legal criteria
created by repealed statute §64, R.S. §4916 (1928).
2. Whether the doc =!~e of equivalents last enounced in
Graver Tank & Mfg. Co., tcc. v. Linde Air Products Co., 339
U.S. 605 (1950) can be abrogated by finding incidental
differences between one element of a patented combination
and a corresponding element of an accused combination
where the accused combination is found virtually identical
with the patented combination in every other respect and
the particular element is found to perform substantially the
same function to achieve the same result as the element of
the patented combination.
STATEMENT OF THE CASE
Background:
Petitioners, Bolkcom and Knapp, are the coinventors-
patentees of United States Patent No. Re. 27,018 (hereinafter
Patent ‘018), granted January 5, 1971, and United States
Patent No. 3,423,605 (hereinafter Patent ‘605), granted
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Statement of the Case 3
March 11, 1969. Patent ‘018 is the patent in suit and a reissue
of Patent ‘605. A copy of Patent ‘015 is appended hereto as
Appendix C, pp. 52a-59a.
The invention claimed in the patents is a novel plant for
the manufacture of silicon carbide. Silicon carbide was first
made in 1891 by Edward Acheson, the founder of
respondent Carborundum. It is made by fusing a mixture of
silica sand (SiO, ) and carbon (C), such as coke or graphite, in
a furnace heated by an electrical resistance core to an
extremely high temperature (about 4,000° F) for about 30
hours.
From its discovery in 1891 until the advent of
petitioners’ invention in 1966, seventy-five years later, all
silicon carbide manufactured in North America was made in
fixed, immovable furnaces. These stationary furnaces were
set in banks of four (4) to six (6), close to one another and to
the electrical power source used for firing. The furnaces ina
bank were typically operated in a cycle, with one furnace
being loaded, one furnace being fired, at least one furnace
cooling and one furnace being unloaded. The total cycle
took about five to seven days for each furnace. Each
stationary furnace requires approximately three days to cool
after firing, before the workmen could unload it and load a
new charge. Hand labor was used in loading and unloading
the furnaces, and the cramped working conditions and high
temperatures resulting from the close proximity of the
furnaces to each other and to the electrical source made this
activity extremely difficult and dangerous.
The Invention:
The patented invention is built on the concept of using
mobile furnaces, mounted on wheels, that could be removed
from the electric power source after firing, placed at a
distance for cooling and stripping (without totally cooling as
with the stationary furnaces), moved to another area of the
REID RT aps PET Ne
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4 Statement of the Case
plant for reloading, and again moved to the electrical source
tor firing. The invention has the ability of selectively moving
each furnace car through the entire cycle—tiring, cooling,
stripping and reloading— without interfering in any way
with the operating evcle of any other mobile furnace.
The selectivity is achieved by a “transfer car or
“transfer means”) having a trackway on top, which may be
aligned with any trackway in the furnace area, cooling/ strip-
ping area or loading area of the plant. The furnace car is
selectively moved from one area to another by aligning the
trackways on the transfer car with the trackways supporting
the furnace car, moving the furnace car onto the transfer car,
moving the transfer car with the furnace car on it into
alignment with trackways of another area, and moving the
furnace car off the transfer car onto the trackways of the
other area.
The combination invention is described in a detailed
summary in both the original and reissue patents as follows:
an electrical power source, a main trackway
adjacent said power source, a furnace bottom mounted
on Wheels on said trackway movable to and away from
said power source; said furnace bottom having a
substantially flat heat resistant surface, removable sides
along each side of said surtace and removable ends on
said surface, said sides and ends defining a heating
chamber, electrode means in each of said ends,
removable connections between said electrode ends
and said) power source, a transfer car movable
transversely to the main trackway and having a
* corresponding trackway adapted to be aligned with the
main trackway to receive the furnace bottom wheels
and furnace whereby said furnace may be moved
transversely to said main trackway, a service area
5 spaced from said main trackway by said transfer car,
secondary trackways in said service area receiving said
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meee
Statement of the Case 3
furnace from said transfer car, loading means at said
service area adapted to load said furnace and a cooling
and unloading section in said service area spaced from
the loading means.” [Appendix C, Col. 1. line 61 — Col.
2, line 9.]
Petitioners conceived their invention in 1964. and
successfully reduced it to practice in April 1966 at their
Springdale, Pennsylvania plant, where they began the
commercial production of sieon carbide. After this plant
began operations, Petitioners filed an application for Letters
Patent that matured into Patent ‘605.
The Reissue Patent:
Reissue Patent ‘OLS is identical to the original Patent ‘605
except for the addition of claims 11-14. Not one word,
number or line of the description in the specification and
drawings was changed. And claims 1-10 of Patent ‘O1S are
the same as the claims of Patent ‘605.
Claims 11-14 enlarged the scope of the claims from the
original patent, but only in two substantive respects: First,
the requirement that the “transfer car” be movable “on a
trackway extending transversely to the main trackway”
(claim 1) was removed to make the claim commensurate
with the broader description in the specification, above
quoted, supra, p. 4. Second, the “transter car” was pre-
scribed as a “transter means between the first trackway and
the second trackway selectively delivering a furnace car
from one to the other” to enable the claims to cover the
embodiments “described in’ the | specification — and
equivalents thereof” in accordance with 35 U.S.C. $112.
The reissue of the patent was spawned when. shortly
after the original patent was issued, petitioners learned of
respondent's plan to build a mobile furnace plant for making
silicon carbide at) Jacksboro, Tennessee Bolkcom and
Knapp counseled with their patent counse! and were advised
6 Statement of the Case
that their patent was sufficient to cover the proposed plant,
as they were advised it would be. The investigation
concluded, however, that the patent claims were not
adequate to cover the patented combination where the
transfer means were ladder tracks, overhead cranes and
turntables not supported on trackways; and the reissue
resulted.
The Accused Combination:
Respondent's Jacksboro Plant went into operation in
April 1971, shortly after its completion. This marked
Carborundum’s first) departure from the — stationary
manufacturing plant proposed by Acheson in 1891, despite a
continuing search by its skilled personnel for a more facile,
economical and efficient way of making silicon carbide.
The Jacksboro Plant came about after respondent
became fully advised of petitioners’ invention. Bolkcom and
Knapp sought to interest Carborundum in licensing or
buying their invention. To that end, two of Carborundum’s
officials visited the Springdale Plant on May 12, 1967, and
were given a copy of the original patent application, then
pending.
July 5, 1968 is the date of the sketch layout of
Carborundum’s proposed mobile furnace plant at
Jacksboro. It reveals that Carborundum proposed to use
petitioner's combination verbatim with the transfer means
that its representatives had seen at the Springdale Plant,
namely, a transfer car movable linearly on supporting tracks
extending transversely of the trackways for the mobile
furnaces.
The plant combination actually built at Jacksboro was
virtually identical in every respect to the Springdale Plant
except that a turntable supported at its periphery on curved
trackways extending transversely of the trackways for the
mobile furnace was used instead of a transfer car movable
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Statement of the Case 7
linearly on supporting transverse tracks. The purported
reason for the change was that “to utilize a surplus railroad
turntable in place of the transfer car previously
planned . . . could save us about $90,000.”
Decisions Below:
The district court held that claims 1-10 of Patent ‘01S
(identical to the claims of Patent 605) were valid, but were
not literally infringed by the accused combination, even
though that combination was virtually identical in all other
respects except that it employed a turntable instead of a
linear transfer car to achieve selectivity. The district court
also found that a turntable was not equivalent to the linear
transfer car arrangement. The district court did find that the
accused combination with the turntable responded to the
broader reissue claims 11-14 with the “transfer means,” but
found those claims were invalid under 35 U.S. C. §251] as an
“unauthorized enlargement of the disclosure of the patent.”
The court of appeals affirmed the decision of the
district court finding claims 1-10 of Patent ‘018 valid, 523
F.2d at 498-501. The circuit court again found that the
accused plant was “virtually identical with” the patented
combination of claims 1-10 “in every other respect [except
it] utilized a turntable instead of a transfer car to transport
the mobile furnaces,” 523 F.2d at 502, and found that “the
turntable does perform substantially the same function as
the transfer car” to achieve “the same result,” 523 F.2d at
502,503. But the court declined to overturn the district court's
finding of non-equivalence.
The court of appeals found that the accused combina-
tion with « “turntable apparently falls within the broader
reissue claims coverage of a ‘transfer means’,” 523 F.2d at
498. And, on validity of claims 11-14, the circuit court found,
523 F.2d at 497:
“Typical of the new claims added, 11-14, is claim 1),
which is identical to claim number 1 in substance except
De OREN
SRW SED REND tek TR Teer aeean,
8 Reasons for Granting Review
that it provides for achieving the desired selectivity
through the use of a ‘transfer means’ instead of a
‘transfer car on a track transverse to the main
trackway.” [Emphasis added. |
Yet, the court found claims 11-14 “were an unauthorized
enlargment of the disclosure in the original patent” following
U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Corp.,
315 U.S. 668 (1942), and affirmed the finding of invalidity of
them.
REASONS FOR GRANTING REVIEW
I. THERE IS A CONFLICT AMONG THE COURTS
OF APPEALS ON THE STATUTORY AUTHORITY
OF THE COMMISSIONER OF PATENTS TO
GRANT REISSUE PATENTS WITH CLAIMS
ENLARGING OR NARROWING THE SCOPE OF
THE CLAIMS OF THE ORIGINAL PATENTS.
This case presents issues of first impression for this
Court of substantial general importance with respect to the
interpretation of the reissue section of the 1952 Patent Act.
This Court has never considered §251, U.S.C. Title 35,
governing the reissue of patents. The question in this case is
crucial to the validity of hundreds of reissue patents with
claims enlarging or narrowing the scope of the original
patents.
To date, five courts of appeals and the Court of
Customs and Patent Appeals have adopted conflicting -
standards on the propriety of reissuing patents with
broadened or limited claims under §251, U.S.C. Title 35. The
Seventh Circuit and the Court of Customs and Patent
Appeals have followed the express language of §251 and
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a ee tt 2 7
fates PRT PNT Roe te RAE 2a Ra EET aes §
ee ee ot ee ERS EPA AR ELAR IE SO API AS
Reasons for Granting Review 9
validated reissue patents “for the invention disclosed in the
original patent . . . enlarging [and narrowing] the scope of
the claims,” provided “no new matter” was introduced in the
application for reissue. The Fourth Circuit, Ninth Circuit,
Tenth Circuit and now the Sixth Circuit! have adopted more
restrictive standards on reissue of patents. The latter
decisions purport to follow U.S. Industrial Chemical, Inc. v.
Carbide & Carbon Chemicals Corp., 315 U.S. 668 (1942),
construing repealed statute §64, R.S. §4916, May 24, 1928.
which requires that the reissue patents be “for the same
invention” as the original patent. The conflict involves
important issues which have not, but should be decided by
this Court.
Section 251 of the 1952 Patent Act provides for “Reissue
of Defective Patents” as follows:
“Whenever any patent is, through error without any
deceptive intention, deemed wholly or partly in-
operative or invalid, by reason of a defective specifica-
tion or drawing, or by reason of the patentee claiming
more or less than he hada right to claim in the patent, the
Commissioner shall, on the surrender of such patent and
the payment of the fee required by law, reissue the
patent for the invention disclosed in the original patent,
and in accordance with a new and amended applica-
tion, for the unexpired part of the term of the original
patent. No new matter shall be introduced into the
application for reissue.
The Commissioner may issue several reissued
patents for distinct and separate parts of the thing
patented, upon demand of the applicant, and upon
payment of the required fee for a reissue for each of
such reissued patents.
1 The Sixth Circuit appeared to construe §251 in accordance with its
express language, Hartzell Industries, Inc. v. McCauley Industrial Corp..
304 F.2d 481 (1962), but adopted a different, restrictive interpretation in
this case without reference to its earlier decision.
PEER SOMES 8 Man ks NE
10 Reasons for Granting Review
The provisions of this title relating to applications
for patents shall be applicable to applications for reissue
of a patent, except that application for reissue may be
made and sworn to by the assignee of the entire interest
if the application does not seek to enlarge the scope of
the claims of the original patent.
No reissued patent shall be granted enlarging the
scope of the claims of the original patent unless applied
for within two years from the grant of the original
patent. July 19, 1952, c. 950, §1, 66 Stat. 808.” [Emphasis
added. |
This statute provides that reissue patents can enlarge (within
two vears) or narrow the scope of the claims of the original
patent where the patentee claimed “more or less than he had
a right to claim” in the original patent.
Prior to the enactment of 35 U.S.C. §251, a patentee was
entitled to a reissue patent under the provisions of §64,° R.S.
2“Whenever any patent is wholly or partly inoperative or invalid, by
reason of a defective or insufficient specification, or by reason of the
patentee claiming as his own invention or discovery more than he had a
right to claim as new, if the error has arisen by inadvertence, accident, or
mistake, and without any fraudulent or deceptive intention, the
commissioner shall, on the surrender of such patent and the payment of
the duty required by law, cause @ patent for the same invention, and in
accordance with the corrected specification, to be reissued to the patentee
or to his assigns or legal representatives, for the unexpired part of the term
of the original patent. Such surrender shall take effect upon the issue of the
reissued patent, but in so far as the claims of the original and reissued
patents are identical, such surrender shall not affect any action then
pending nor abate any cause of action then existing, and the reissued
patent to the extent that its claims are identical with the original patent
shall constitute a continuation thereof and have effect continuously from
the date of the original patent. The commissioner may, in his discretion,
cause several patents to be issued for distinct and separate parts of the
thing patented, upon demand of the applicant, and upon payment of the
required fee for a reissue for each of such reissued letters patent. The
specifications and claims in every such case shall be subject to revision and
restriction in the same manner as original applications are. Every patent so
reissued, together with the corrected specifications, shall have the same
(continued )
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PO PAAM
ore See ie eee ts ae
ree
Reasons for Granting Review 1]
§4916, May 24, 1928 c. 730, 45 Stat. 732. That section did not
by its terms provide that a patentee could enlarge the scope
of the claims by obtaining a reissue patent. Rather, §64
provided that the Commissioner of Patents “shall . . . cause
a patent for the same invention, and in accordance with the
corrected specification, to be issued to the patentee . . .’
The “same invention” requirement was last interpreted
by this Court in U.S. Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., 315 U.S. 668, 675-76 (1942). There,
the Court held, inter alia, that:
“[I]t is not enough that an invention might have been
claimed in the original patent because it was suggested
or indicated in the specification. It must appear from
the face of the instrument that what is covered by the
reissue was intended to have been covered and secured
by the original.”
While this holding was consonant with earlier decisions
under prior Patent Acts containing the “same invention”
requirement which limited reissue patents enlarging and
narrowing claims to strict standards, see, e.g., Parker and
Whipple Co. v. Yale Lock Co., 123 U.S. 87 (1887), the
decision does not present the standards controlling the
reissue of patents under the Patent Act of 1952.
Section 64 of the Revised Statutes was repealed by the
Act of July 1952, c. 950, §1.66 Stat. 792, which enacted into
law a new reissue statute, §251. Section 251 made three (3)
effect and operation in law, on the trial of all actions for causes thereafter
arising, as if the same had been originally filed in such corrected form; but
no new matter shall be introduced into the specification, nor in case of a
machine patent shall the model or drawings be amended, except each by
the other; but when there is neither model nor drawing, amendments may
be made upon proof satisfactory to the commissioner that such new
matter or amendment was a part of the original invention, and was
omitted from the specification by inadvertence, accident, or mistake. as
aforesaid.” [Emphasis added. ]
ELINA Sa RRP MI aS ON NN dea AE aT,
12 Reasons for Granting Review
important changes from the prior statutory law with its
judicial interpretation:
1. It specifically provided that a reissue patent can
be granted enlarging the scope of the claims of the
original patent if the reissue patent is applied for within
two years of grant of the original patent;
2. It provided when the patentee claimed “more or
less than he had a right to claim in the [original] patent,
the Commission shall... reissue the patent for the
invention disclosed in the original patent” with “the
provisions of this title relating to applications for
patent... applicable to applications for reissue...”
and
3. It eliminated the requirement that the claims of
the reissue be “for the same invention” as the original
patent.
Notwithstanding the change of law effected by §251,
certain circuits have continued to restrict reissue patents by
engrafting on the express terms of the statute the legal
criteria of repealed statute §64 as judicially interpreted. The
Sixth Circuit forcefully states the position of these courts of
appeals in the present case. Citing and quoting U-S.
Industrial Chemicals Co. v. Carbide & Carbon Chemicals
Corp., supra, and Parker and Whipple Co. v. Yale Lock Co.,
supra, the Court found, 523 F.2d at 502:
“The Supreme Court has made it clear that this
section [§251] is intended only to permit the reissue of a
new patent for the same invention as that disclosed in
the original patent in order to permit the correction of
an innocent inadvertent defect or omission. It is not
intended to permit the patentee to broaden the claims of
the original patent.” [Emphasis added in part]
Applying this enouncement, the court found that the new
claims (i.e., claims 11-14) added by reissue were not limited
eal
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Reasons for Granting Review 13
in scope to the explicit disclosure of the original patent and
“were an unauthorized enlargement of the disclosure in the
original patent” 523 F.2d at 502.
The Fourth, Ninth and Tenth Circuits have enounced
similar standards governing the reissue of patents. These
courts of appeals too do not consider the statutory changes
brought by §251. Following U.S. Industrial Chemicals and
other decisions under repealed section 64, these courts
require that a reissue patent, unlike an original patent, must
be limited to the same invention “explicitly disclosed and
taught” in the original application for patent:
“It must appear upon the face of the original patent
that the matter covered by the reissue was intended to
have been covered and secured by the original .... The
broader claims of the reissue must be more than merely
suggested or indicated in the original patent. U.S.
Industrial Chemicals, Inc., v. Carbide & Carbon
Chemicals Corp., 315 U.S. 668, 675-676, 62 S.Ct. 839,
844, 86 L.Ed. 1105. As observed in that case, “it is not
enough that an invention might have been claimed in
the original patent because it was suggested or indicated
in the specification.” Riley v. Broadway-Hale Stores
Inc., 217 F.2d 530, 532. (9 Cir., 1954) [Emphasis added. }
Accord, McCullough Tool Co. v. Well Surveys, Inc. 343 F.2d
381, 389 (10 Cir., 1965) cert. den. 383 U.S. 933; Lockwood v.
Langendorf United Bakeries, Inc., 324 F.2d 82, 94 (9 Cir.,
1963); and Sears, Roebuck & Co. v. Minnesota Mining &
Mfg. Co. 243 F.2d 136, 140 (4 Cir., 1957) cert. den. 355 U.S.
932.
On the other hand, the Seventh Circuit has taken the
view that §251 “is remedial in intent and should be read
liberally”, Hickory Springs Mfg. Co. v. Fredman Brothers
Furniture Co. Inc. et al, 509 F.2d 55,61 (1975). That court of
appeals has found that the reissue privilege has been
broadened by §251 with the limitation remaining that no
OR eee
NEES BAA OE eT Oa ER ae (atieemtheinaietn ee tt rt
=>
14 Reasons for Granting Review
“new matter” shall be added by way of reissue. Literally
applying the statutory provision, the Seventh Circuit has
consistently held:
“[We are of the opinion that an applicant for reissue
may fully describe his original invention and include in
his new description and claims not only what was
described before, but also what was suggested or
implied in the original drawings, specifications and
models. Inasmuch as the justified finding of the court
was that the reissue patent included only the inherent
function and mode of operation of the original patent, it
follows that no new matter was introduced.” Weller
Mfg. Co. v. Wen Products, Inc. 231 F.2d 795, 800 (7 Cir.,
1956) [Emphasis added. }
Accord, Hazeltine Research Inc. v. Avco Mfg. Corp. 227
F.2d 137, 143-44 (7 Cir., 1955) cert den. 350 U.S. 987; Scovill
Mfg. Co. v. Goldblatt Brothers, Inc. et al, 362 F.2d 777, 779-
80 (7 Cir., 1966) cert den. 385 F.2d 970; Maxant Button ¢
Supply Co. v. Sears, Roebuck & Co., 388 F.2d 912, 916-17 (7
Cir., 1968); and Kearney & Trecker Corp. v. Tiddings &
Lewis, Inc. 452 F.2d 579, 593 (7 Cir., 1971) cert den. 405 U.S.
1066. See also, Union Asbestas & Rubber Co. v. Paltier Corp.
298 F.2d 48, 51-54 (7 Cir., 1962) cert. den. 369 U.S. 865; and
Crane Packing Co. v. Spitfire Tool & Machine Co. 276 F.2d
271, 274 (7 Cir., 1960) cert. den. 363 U.S. 820.
Similarly, the Court of Customs and Patent Appeals
(CCPA) has expressly rejected a restrictive interpretation of
§251. Citing U. S. Industrial Chemicals, Inc. v. Carbide &
Carbon Chemicals Corp., supra, and Parker and Whipple
Co. v. Yale Lock Co., supra, the CCPA observed that “these
cases were prior to the enactment of the Patent Act of 1952,
which changes the words of the prior law, ‘for the same
invention’, to the words above-quoted [‘for the invention
disclosed in the original patent’]”, and went on to hold:
> BLEED THROUGH
Reasons for Granting Review 15
“[I]f the board’s view were to prevail, the reissue statute
would be of very little practical effect, for, by
elementary principles of claim _ interpretation,
whenever an element or other limitation is added to or
taken from a claim it becomes a claim to a different
invention. Yet the whole purpose of the statute, so far as
claims are concerned, is to permit limitations to be
added to claims that are too broad or to be taken from
claims that are too narrow. That is what the statute
means in referring to ‘claiming more or less than he had
a right to claim’ ”. Application of Handel, 312 F.2d 943,
948 (CCPA, 1963). [Emphasis added. }
Accord, Application of Wesseler, 367 F.2d 838, 847-48
(CCPA, 1966).
The Seventh Circuit and CCPA have, therefore,
construed $251 to mean that it is enough that the invention
might have been claimed in the original patent. Those courts
have found that the patentee has the right to reissue a patent
to cover the invention disclosed in the original application as
fully as he could have in the original application in
accordance with “the provisions of this title relating to
applications for patent”. Moreover, those courts hold that
the patentee is entitled to utilize the remedial provisions of
§251 to claim his invention in a reissue of his patent by
omitting or adding limitations in the claims provided he can
show that claiming “more or less than he had a right to claim”
in the original patent was “through error” and added “no
new matter”.
The present case clearly presents the conflicting
positions of the lower courts for decision. Here, the
specification, drawings and claims 1-10 of the original and
reissue patents are identical. No “new matter” was added.
The objection is that the new reissue claims eliminated the
requirement that the “transfer car” be movable “on a
trackway extending transversely to the main trackway,” and
SOND, PL DAR et —
SaaasT DBE ~ 0 nthe CORR LS APE A RR Ot Oa
16 Reasons for Granting Review
substituted for the “transfer car” a “transfer
eans ... selectively delivering a furnace car from one
[trackway] to the other [trackway |" in the enlarged claims
(claim 11). The former change made the claims of the patent
commensurate with the description of the invention in the
specification, quoted supra, p. 4 (Appendix ©, Col. 1, line
61 - Col, 2, line 9); and the latter change enlarged the claim
consonant with 35 ©OS.C, §$ll2 which ordains that “a
means... for performing a specified function... shall be
construed to cover the corresponding structure, material or
acts described in the specification and equivalents thereof.”
Accordingly, the reissue patent in this case enlarged the
scope of the claims to cover the “invention disclosed” that
could have properly been claimed in the original patent. The
claims are valid by the standards applied by the Seventh
Circuit and the CCPA. Yet these claims were held invalid as
“an unauthorized) enlargement) of the disclosure” by
engrafting the restrictive legal criteria of repealed §64. The
conflict clearly involves a substantial question of general
impact which has not, but should be resolved by this Court.
Il. IT IS TIME TO RENEW AND VITALIZE THE
DOCTRINE OF EQUIVALENTS WITH ITS IM-
PORTANCE TO THE APPLICATION OF THE
PATENT LAWS. THE COURT OF APPEALS
DECISION ABROGATES THE DOCTRINE OF
EQUIVALENTS ESTABLISHED BY THIS COURT
TO GUARANTEE TO PATENTEES THE STATU-
TORY RIGHT OF EXCLUSIVITY.
This case also presents issues of substantial nationwide
importance with respect to the viability of the doctrine of
equivalents, The doctrine of equivalents was last enounced
twenty-five (25) years ago in Graver Tank & Mfg. Co., Ine.
v. Linde Air Products Co., 339 U.S, 605 (1950), Since then,
» BLEED THROUGH
et De a
Reasons for Granting Review 17
the courts of appeals have taken diverse positions in
applying the doctrine particularly since this Court's decision
in Tigrett Industries v. Standard Industries, 397 U.S. 586
(1970), reh. den, 398 U.S, 944". The present case is a classic
for denominating equivalence, providing an extraordinary
opportunity for the Court to rejuvenate and develop the
methodology of the doctrine of equivalents: The facts of the
case are relatively simple; the lower courts made all the
factual findings necessary for a finding of equivalents
adjudged by the criteria of Graver Tank; and vet, the lower
court failed to find equivalence based on an incidental
difference between one element of the accused combination
and a corresponding element of the patented combination.
The doctrine of equivalents is a principle of equity that
originated over 120 years ago in Winans v. Denmead, 56 U.S.
S45 (15 How. 330) (1853). The doctrine provides that even
though the accused device or practice does not literally meet
the claims of the patent, it nonetheless infringes “if it
performs substantially the same function in substantially the
same wayrto obtain the same result.” Sanitary Refrigerator
Co. v. Winters, 280 U.S. 30, 42 (1929). The reasons for the
doctrine were forcefully stated by the Court in Graver Tank
& Mfg. Co., Inc. v. Linde Air Products Co., supra at 607:
“[CJourts have ... recognized that to permit imitation
of a patented invention which does not copy every
literal detail would be to convert the protection of the
patent grant into a hollow and useless thing. Such a
limitation would leave room for — indeed encourage —
the unscrupulous copyist to make unimportant and
insubstantial changes and substitutions in the patent
3 Tigrett Industries cast doubt on this Court's continued acceptance
of the doctrine of equivalents because of the amicus brief of the
Department of Justice which frontally attacked the doctrine. The decision
was affirmed by ad-tod per curiam opinion, with two silent dissenters as
well, See Dunner, Gambell and Kayton, Patent Law Perspectives, Annual
Reviews, Bl [1 ][b]
i NEI Te def
18 Reasons for Granting Review
which, though adding nothing, would be enough to take
the copies matter outside the claim, and hence outside
the reach of law, One who seeks to pirate an invention,
like one who seeks to pirate a copyrighted book or play,
may be expected to introduce minor variations to
conceal and shelter the piracy. Outright and forthright
duplication is a dull and very rare type of infringement.
To prohibit no other would place the inventor at the
merey of verbalism and would be subordinating
substance to form, It would deprive him of the benefit
of his invention and would foster concealment rather
than disclosure of inventions, which is one of the
primary purposes of the patent system.”
[Emphasis added. |
Consonant with these equities, the doctrine of equivalents
was “consistently applied by this Court and the lower
federal courts...” for almost a hundred years, operating in
favor of “the patentee of a secondary invention consisting of
a combination of old ingredients which produce new and
useful results” as well as the patentee of a pioneer invention,
supra at 608.
Graver Tank states the methodology to be applied in
adjudicating equivalents particularly in combination patents
as follows, supra at 609:
“Equivalence, in the patent law, is not the prisoner of a
formula and is not an absolute to be considered in a
vacuum. It does not require complete identity for every
purpose and in every respect. In determining
equivalents, things equal to the same thing may not be
equal to each other and, by the same token, things for
most purposes different may sometimes be equivalents.
Consideration must be given to the purpose for which
an ingredient is used ina patent, the qualities ithas when
combined with the other ingredients, and the function
which it is intended to perform. An important factor is
whether persons reasonably skilled in the art would
r BLEED THROUGH
ei emeitin ad entenenet thetic et Oe ee
cS re aa,
-—-
RI AES IE
Reasons for Granting Review 19
have known of the interchangeability of an ingredient
not contained in the patent with one that was.”
[Emphasis added. |
The methodology, therefore, is to address substance instead
of form, and consider the element of the combination
asserted to be an equivalent for the function which it
performs and the qualities it imparts “when combined with”
the other elements of the combination, and for its known
“interchangeability” for the corresponding element of the
patented combination,
Adjudicated by the Graver methodology, equivalence
of the accused combination and the patented combination is
clearly established. Both lower courts found that the accused
plant was “virtually identical ... inevery other respect” with
the claimed combination of the original claims 1-10, except
the accused plant “utilized a turntable instead of a transfer
car to transport the mobile furnaces,” 523 F.2d at 502. And
the lower courts found that “the turntable does perform
substantially the same function as the transfer car,” 523 F.2d
at 503, and “achieved the same result” in the patented
combination, 523 F.2d at 502. Hence, the function the
turntable performs and the qualities it imparts “when
combined with” the other elements of the patented
combination are established.
Moreover, the “important element” that “persons
resonably skilled in the art would have known of the
interchangeability,” Graver, supra at 609, is present. The
court of appeals otherwise found in determining validity
that the Van Wagenen Patent No. 492,069 “shows a turntable
having wheels located at its periphery which ride on a track
as the turntable rotates;” and that the German Patent No.
854,207 shows “the groups of furnaces move ... back down
the tracks to a turntable where they are positioned to move
onto tracks leading to the servicing area,” 523 F.2d at 499.
The turntable was, therefore, there ready in the pertinent art
me ns RS os
20 Reasons for Granting Review
to be substituted once the patented combination became
known to respondent on inspection of petitioners’
Springdale plant. It was certainly an imperceptible step to
make the furnace car trackway radial rather than parallel
and the transverse trackway curved in a circle rather than
straight to provide for interchangeability once the patented
combination was made known. By the methodology of
Graver, equivalence and infringement are, therefore,
established in substance by the lower courts’ findings.
The court of appeals did not apply the Graver
methodology in adjudicating infringement. Although pur-
porting to follow Graver, the court overlooked two of
Graver'’s most salient admonitions: (i) “It does not require
complete identity for every purpose and in every respect”,
and (ii) “In determining equivalents, . .. things for [some or]
most purposes different may sometimes be equivalents.”
Certainly, whether the transfer means selectively moves a
mobile furnace from area to area by rotational motion
instead of translational motion, along curved transverse
tracks instead of straight tracks, or by pivoting about a
central pivot instead of with another suitable drive means is
of no consequence to the fundamental interrelation and
operation of the patented combination‘. It may diminish
performance and quality of the patented combination
because, as the lower court observed, “the turntable may be
limited by the number of tracks” and “only one furnace at a
time can be transferred by the turntable,” 523 F.2d at 502.
But it is well-settled, equivalence cannot be avoided because
the accused method is less efficient and imperfectly
practices the patented combination, e.g., Ziegler v. Phillips
Petroleum Co., 483 F.2d 858, 868, 871 (5 Cir., 1973) cert. den.
4 The court's statement that “the turntable itself is stationary and
transfers the furnances by pivoting around a central point,” 523 F.2d at
303. is internally inconsistent and inconsistent with its previous finding on
validity that “the turntable rotates,” 523 F.2d at 499.
P BLEED THROUGH
9
OS IR iit
Reasons for Granting Review 21
414 U.S. 1079; and McCollough Tool Co. v. Well Surveys,
supra 343 F.2d at 402.
The court of appeals’ decision is also in direct conflict
with the application of the doctrine of equivalents in
Tektronix, Inc. v. United States, 445 F.2d 323 (Ct. Cl., 1970)°.
In Tektronix, one of the patents was directed to an
oscilloscope sweep generator circuit for establishing precise
timing for the horizontal sweep. It claimed a sweep
generator which included, among other things, “a pair of
series connected diodes.” The two infringing devices met
the details and particulars of the claims fully except that
substituted for the diodes in one was a pair of triodes and in
the other a pair of pentodes. Although the triodes and
pentodes provided some incidental benefits in the circuit, it
was clear that the triodes and pentodes were used expressly
and primarily for their diode function.
The Court recognized that, “Often, diodes, triodes and
pentodes are not interchangeable, and thus are not equiva-
lents, because of the different operating characteristics in-
herent in their construction,” 445 F.2d at 329. In an earlier
Court of Claims case, Marconi Wireless Telegraph Co. v.
United States, 81 Ct. Cl. 671 (Ct. Cl., 1935), aff'd in part and
rev d in part, 320 U.S. 1 (1943), the court had expressly held
that diodes and triodes were not equivalents for that
invention. In that case, signal amplification, which is not
possible in a diode, was a significant and material function
for weak radio signals and therefore the amplifying triodes
were held “not equivalent in the circuit in question.” 445 F.2d
at 329. In Tektronix, however, the court of claims cogently
pointed out that it was the diode function of the triodes and
pentodes that was the very reason for the use of the pentodes
and triodes, “the other differences in their operating features
5 Tektronix is said to be in “facts and law denominating a classic
equivalence situation,” Dunner, Gambell and Kayton, Patent Law
Perspectives, Annual Reviews B.1 [1][b}.
22 Reasons for Granting Review
being not so significant or material as to affect the essential
operation of the circuit” 445 F.2d at 329. For the purposes of
the claimed invention, therefore, the diodes and the triodes
in the circuits did “operate in substantially the same way
with substantially the same means to get substantially the
same result.” 445 F.2d at 329.
Likewise, this case is a classic case for denominating the
doctrine of equivalents. Like Tektronix, the substantive
findings of equivalence were established by the lower
courts. In this case the only act which awaits is legal
conclusion of equivalence by this Court in revitalizing and
unfolding the methodology of its decision in Graver Tank &
Mfg. Co., Inc. v. Linde Air Products Co., now twenty-five
years removed.
CONCLUSION
This case presents the Court with an unprecedented
opportunity of resolving two questions of substantial general
and lasting importance to the patent laws. The first question
is one of first impression for this Court, upon which a conflict
in decisions among the courts of appeals has arisen. The
second question involves a doctrine of tremendous impor-
tance to the application of the patent laws sorrily in need of
revitalizing after twenty-five years without pronouncement
by this Court. The petition should be granted.
Respectfully submitted,
ARLAND T. STEIN,
THomas C. WEeTTACH
REED SMITH SHAW & McCLAY
747 Union Trust Building
Pittsburgh, Pennsylvania 15230
Attorneys for Petitioners
March 3, 1976
> BLEED THROUGH
--—
2”
epee
Jn the
Supreme Court of the Umted States
OcroBer TERM, 1975
no. 75-1244
WILBUR T. BOLKCOM and WILLIAM E. KNAPP.
Petitioners.
™
THE CARBORUNDUM COMPANY,
Respondent.
APPENDIX
To Petition For A Writ oF CERTIORARI
TO THE UNirep States Court oF APPEALS
FOR THE SixtH Circuit
ARLAND T. STEIN
THomas ©. WetracH
REED SMITH SHAW & McCLAY
747 Union Trust Building
Pittsburgh, Pennsylvania 15230
Attorneys for Petitioners
Financial Press Corporation, Pittsburgh
mi enrn LIfe wi scoiu
(eetrerrec ye
~-
INDEX TO APPENDIX
Opinion of the Court of Appeals ..................0005
Judgment of the Court of Appeals .....................
a ia ina eae 6en 44.06408.5680 00 0a
CNY GE SED RPUIUOEE © MTE con centers dscceasereecscces
Findings and Conclusions of the District Court ..........
ee
RR A EA en
Appendix A
492
w
° £ KEY NUMBER SYSTEM
3
Wilbur T. BOLKCOM and William E.
Knapp, Plaintiffs-Appellants,
v.
The CARBORUNDUM COMPANY,
Defendant-Appellee.
No. 73-1320.
United States Court of Appeals,
Sixth Circuit.
Argued Oct. 5, 1973.
Decided Sept. 30, 1975.
A patent owner filed an action for
infringement of a combination patent
protecting the invention of a novel plan
for manufacture of silicon carbide.
From a judgment of the United States
523 FEDERAL REPORTER, 2d SERIES
District Court for the Eastern District of
Tennessee, Northern Division, A. Sher-
man Christensen, J., the plaintiffs ap-
pealed. The Court of Appeals, MeCree,
Circuit Judge, held, inter alia, that the
patent relating to more efficient and ec-
onomical means of manufacturing silicon
carbide was valid; that the claims of
reissue patent were invalid; and that
the district court’s finding of fact that
the defendants’ turntable was not the
equivalent of transfer car used in plain-
tiffs’ plant so that there was no in-
fringement was not clearly erroneous.
Affirmed.
1. Patents S18, 37, 46
There are three essential elements
of patent validity: novelty, utility, and
nonobviousness. 35 U.S.C.A. §§ 101-103.
2. Patents 2112.1
Every patent issued by the Patent
Office carries, at the outset, a presump-
tion of validity which is justified by the
complexities of patent law and the ex-
pertise of the Patent Office. 35 U/S.
C.A. § 282.
3. Patents @112.1
Where the most pertinent prior art
has been considered by the Patent Of-
fice, the presumption of validity is great-
ly strengthened; conversely, where ap-
plicable prior art has not been considered
by the Patent Office such presumption is
greatly weakened. 35 U.S.C.A. § 282.
4. Patents @=51(2)
In order to anticipate an invention,
prior art must have been reduced to use
and successfully performed; even though
imperfections and commercial difficulties
may be revealed by reduction to practice,
a device may nevertheless qualify as pri-
or art.
5. Patents @=51(2)
Since proposals in company memo-
randa were never put into practice, they
could not be considered as anticipating
the patent relating to manufacture of
silicon carbide.
OE EAE ME RENES ER GRIEG PEROT BOERS ITS FEE PIO NIE BI LSE
Appendix A
BOLKCOM v. CARBORUNDUM COMPANY 493
Cite as 523 F.2d 492 (1975)
6. Patents *45, 49
The utility and novelty of plaintiffs’
invention relating to more efficient and
economical means of manufacturing sili-
con carbide were demonstrated by undis-
puted need of industry for a plant layout
that would permit the continuous opera-
tion of the manufacturing process by se-
lective movement of furnaces throughout
its phases, and by the commercial success
of plaintiffs’ plant. 35 U.S.C.A. §§ 101-
103.
7. Patents <=40
The fact that the elements included
in plaintiffs’ combination patent were
found individually in prior art devices
did not defeat novelty. 35 U.S.C.A.
§§ 101-103.
8. Patents ®=17(2), 25, 26(2)
A claimed invention is not patenta-
ble if it is a mere aggregation of all
elements assembled with only mechanical
skill; in order to be patentable a combi-
nation must produce a new result or a
different function; the new invention
must be more than the sum of the old
parts. 35 U.S.C.A. § 108.
9. Patents @=328(2)
Patent No. 3,432,605 relating to
. more efficient and economical means of
manufacturing silicon carbide was not
obvious on consideration of the prior art
since it constituted more than a mere
aggregation of old elements in that new
result of selectivity was a significant ad-
vance over the prior art; the element of
selectivity made patent owners’ plant a
commercial success, solving an industry-
wide problem. 35 U.S.C.A. § 103.
10. Patents ®>36.2(1)
Because claimed invention was
greater than the sum of its parts and
produced a new result, the secondary
considerations mentioned by the Su-
preme Court, including commercial suc-
cess resulting from greatly increased ef-
ficiency, were relevant in determining
validity. 35 U.S.C.A. § 103.
11. Patents @=18, 37, 46
Since patent relating to more effi-
cient and economical means of manufac-
1%
turing silicon carbide satisfied the re-
quirements of novelty, utility, and non-
obviousness, the patent was valid. 35
U.S.C.A. §§ 101-108.
12. Patents @141(1, 3)
The statute relating to reissue of de-
fective patents is intended only to per-
mit the reissue of a new patent for the
same invention as that disclosed in origi-
nal patent in order to permit the correc-
tion of an innocent inadvertent defect or
omission; it is not intended to permit
the patentee to broaden the claims of
the original patent; the new description
of claims may not properly include addi-
tions to invention which were not de-
scribed, suggested, nor substantially indi-
cated in the original specifications, draw-
ings, or patent office model. 35 U.S.C.A.
§ 251.
13. Patents <—141(4)
Claims added in reissue patent were
invalid because they were an unauthor-
ized enlargement of the disclosure in
original patent relating to more efficient
and economical means of manufacturing
silicon carbide.
14. Patents 0=324.55(5)
The district court’s finding that
company’s turntable in manufa‘ ‘uring
silicon carbide was not the equivalent of
transfer car used in patent owners’ plant
was not clearly erroneous even though
turntable performed substantially the
same function as transfer car, where the
way in which turntable accomplished re-
sult differed from that of the transfer
car in that turntable itself was station-
ary and transferred the furnaces by piv-
oting around central point, while trans-
fer car could move them about from lo-
cation to location, and important practi-
cal consequences might result from such
difference. 35 U.S.C.A. § 251.
15. Patents <=178
Where the patent is a pioneer, the
patentee is allowed to claim a_ wide
range of equivalents, but where the pat-
ent represents only a small but signifi-
cant advance because the art is crowded,
the doctrine of equivalents is given a
Bb ktes:::: Se Rey RTM OI oes
Appendix A
494
corresponding narrow range. 35 USS.
C.A. § 251.
J. W. Baker, Poore, Cox, Baker, McAu-
ley, Ray & Byrne, Knoxville, Tenn., Wal-
ter J. Blenko, Thomas L. Sivak, Blenko,
leonard & Buell, Pittsburgh, Pa., for
plaintiffs-appellants.
E. Bruce Foster, Sr., Knoxville, Tenn.,
William H. Webb, Webb, Burden, Robin-
son & Webb, P. A., David C. Bruening,
Pittsburgh, Pa., for defendant-appellee.
Before WEICK, McCREE and LIVE-
LY, Circuit Judges.
McCREE, Circuit Judge.
This is an appeal from the dismissal of
an action by appellants, Bolkcom and
Knapp, for infringement of a combina-
tion patent protecting the invention of a
novel plant for the manufacture of sili-
con carbide. The patent in suit is Patent
Re. 27,018 (hereinafter Patent '018) dat-
ed January 5, 1971, a reissue of Patent
No. 3,482,605 (hereinafter Patent '605),
dated March 11, 1969. The district court
held that claims 11-14, which were add-
ed by the reissue, were invalid because
they were an unauthorized eniargement
of the disclosures of the original patent.
It also held that the claims that were
earricd over from the © original
Patent ‘605 to the reissue were valid, but
were not infringed by the appellee's
plant because it employed an element
not disclosed as part of the patented
combination.
We agree that the broader claims add-
ed by reissue are invalid, that the origi-
nal claims are valid, and that the ac-
cused plant does not infringe the original
claims. We therefore affirm.
Silicon carbide (SiC), a compound said
to be second in hardness only to a dia-
mond, is used primarily for grinding
wheels, other abrasive uses, and in re-
fractories. It is made by fusing sand
and a source of carbon like coke or
graphite. Silica (SiO.) and Carbon (C)
react under extreme heat to produce sili-
con carbide. After the raw materials
are mixed together and placed in a fur-
OER LOPS EP RNS: IT iA NN ST ERO RR RY
523 FEDERAL REPORTER, 2d SERIES
nace, an electric resistant core 1s fired by
passing an clectrical current through it
to raise the charge to the extremely high
temperature (about 4,000 degrees F.)
necessary to achieve the reaction prod-
uct, silicon carbide. Silicon carbide was
first made by Exlward Acheson in 1891
and he founded The Carborundum Com-
pany, which today still enjoys the largest
share of the total market for silicon car-
bide.
A significant feature of Acheson's
process is that the furnaces must be
fired in close proximity to the source of
electrical power because of the capital
expense and power losses which result
from lengthened electrical leads. Inso-
far as the record shows, before appel-
lants’ invention was put into practice, all
manufacturers of silicon carbide in
North America relied upon the use of
stationary, horizontal furnaces set in
banks of four to six, close to one another
and to the electrical source. The firing
of a charge sufficient to form silicon car-
bide in the Acheson process takes about
thirty hours. Hand labor is used in load-
ing and unloading the furnaces, and the
cramped working conditions resulting
from the close proximity of the furnaces
to each other and to the electrical source
made this activity difficult and danger-
ous. After firing, the stationary fur-
naces required about three days to cool
before workmen could unload them and
load a new charge. Typically, the four
furnaces in a bank attached to an elec-
trical source were employed in a cycle of
operations, with one furnace being load-
ed, one charging, one cooling, and one
being unloaded. The total cycle—load-
ing, charging, cooling, and unloading—
took about five to seven days for each
furnace.
The recognized industry need for more
efficient and economical mean: of manu-
facturing silicon carbide was described in
appellants’ patent as follows:
In the past silicon carbide has been
manufactured in stationary electric
furnaces. Such stationary furnace in-
stallations usually require four to six
furnaces for each transformer in order
Se Re ee eae
PEND FERRIS. VENT ATR Ge
BUR AED GIRE aly ME TOE PAGS RI gb
Appendix A
BOLKCOM v. CARBORUNDUM COMPANY
495
Cite as 523 F.2d 492 (1975)
to utilize the transformer to its maxi-
mum efficiency, with one furnace
heating, one being unloaded, one load-
ing, and the remainder cooling. This
requires very large capital investment
in buildings and furnaces. The un-
loading of such furnaces is quite diffi-
cult and tedious because of the adja-
cent hot furnaces and because of the
necessity of using large amounts of
hand labor to remove the silicon czr-
bide from the furnace due to the prox-
imity of the adjacent furnaces and the
difficulty of using mechanical unload-
ing equipment in the restricted floor
space available. This also requires
that the furnaces be cooled [a]n extra-
ordinary long time before unloading in
order to get the temperature down to
the point where the hand labor can be
effectively used. A further problem
arises in the loading of such furnaces
because of the adjacent other fur-
naces. This means lengthy conveyor
belts from the mixing bins to the fur-
naces or overhead cranes carrying suc-
cessive bucket loads to the furnace.
The district court found that “[{t]here has
always been a need in the industry for a
more facile, economical and efficient
way of making silicon carbide.”
To meet this need, appellants in 1964
conceived of a method of using mobile
_furnaces that could be removed from the
electrical source after being fired, placed
at a distance for cooling and stripping,
and then moved to another area of the
plant for reloading before again being
moved to the electrical source for charg-
ing. Appellants’ layout for manufacture
also embraced the advantage of selectivi-
ty—the ability to move any furnace car
for cooling, unloading, and loading, with-
out disturbing the position of any other
furnace car. This was to be accom-
plished by means of a “transfer car” on
a set of rails transverse to the primary
rails leading to the firing area and to
another set of rails leading to other are-
as in the plant where loading and un-
loading operations could more efficiently
be accomplished. Thus, a mobile furnace
could be rolled atop the transfer car, and
FREER II aS IY SOIR BRIBE LS BENE LOS TEST
the loaded car could be moved selectively
in and out of alignment with the various
trackways leading, on the one hand, to
the firing area and, on the other hand,
to the other plant areas for cooling, load-
ing, and unloading.
Appellants successfully put their in-
vention into practice in April 1966 by
constructing their Satellite Plant at
Springdale, Pennsylvania, where they be-
gan the commercial manufacture of sili-
con carbide. After this plant began op-
erations, appellants’ patent counsel pre-
pared and filed the application that ma-
tured into the original Patent ‘605. The
preferred mode of their invention was
disclosed in the patent, coupled with the
required detailed specification, as fol-
lows:
This invention relates to silicon car-
bide furnaces and plants and particu-
larly to a silicon carbide furnace which
can be fired in one position, removed
to a second position for cooling. and
unloading and to a plant incorporating
a plurality of such furnaces.
s = . . . .
Preferably we provide an clectrical
power source, a main trackway adja-
cent said power source, a furnace bot-
tom mounted on wheels on said track-
way movable to and away from said
power source, said furnace bottom
having a substantially flat heat resist-
ant surface, removable sides along
each side of said surface and remova-
ble ends on said surface, said sides and
ends defining a heating chamber, elec-
trode means in each of said ends, re-
movable connections between — said
electrode ends and said power source,
a transfer car movable transversely to
the main trackway and having a corre-
sponding trackway adapted to in
aligned with the main trackway to re-
ceive the furnace bottom wheels and
furnace whereby said furnace may be
moved transversely to said main track-
way, a service area spaced from said
main trackway by said transfer car,
secondary trackways in said service
area receiving said furnace from said
transfer car, loading means at said
PI LEAGONY ETF, PONTE OLE EE LY PNY, CYT Sarr
Rd. Hang MET ER SORT P RES R P E
Appendix A
496 523 FEDERAL REPORTER, 2d SERIES
service area adapted to load said fur-
nace and a cooling and unloading scc-
tion in said service area spaced from
the loading means. Preferably the
loading means is a gravity discharge
hopper or the like located over a track-
way adapted to receive a furnace to be
loaded from the transfer car. Other
loading device and conveying equip-
ment, may of course, be ‘used. The
removable ends of said furnace are
preferably provided with cooling
means removably connected to a
source of coolant adjacent the power
source whereby the electrodes in the
ends can be cooled.
Claim 1 is representative of claims 1—10
in the original patent. It states:
We claim:
1. A silicon carbide manufacturing
plant comprising an electrical power
source, a main trackway adjacent said
power source, a furnace car movable
on said trackway to and from said
power source, a refractory bottom on
said car, removable side and end pan-
els on said refractory bottom of said
furnace car, said side and end panels
being interconnected to form a heating
chamber on said car, electrode means
in each end panel, removable conncc-
tions between said power source and
electrode means, a transfer car mova-
ble on a trackway extending trans-
versely to the main trackway, said
transfer car carrying a trackway cor-
1. As stated in a memorandum prepared by
Carborundum Company employees for internal
corporate consideration:
Don Gillmore and myself visited Messrs.
Knapp and Balcom [sic] of the subject Cor-
poration on May 12 to discuss their low cost
process for manufacturing silicon carbide,
on which they have filed a patent applica-
tion.
As we suspected, the claims are related to a
car furnace operation and the savings are in
lower initial capital investment plus lower
labor costs primarily in material handling.
This is identical with our thinking except
they have reduced it to practice in their new
plant at Springdale, Pennsylvania.
They were most frank in their discussion
and gave us full details of their operation.
We have copies of their patent application, a
breakdown of capital costs and similar infor-
et x OF SG, PEGE OLE NREL
PAL SRI
responding to said main trackway and
alignable with the main trackway re-
ceiving the furnace car therefrom, a
service area opposite the main track-
way and spaced from said main track-
way by said transfer car, a secondary
trackway on said service area recciv-
ing said furnace car from said transfer
car trackway, loading means in the
service area for loading said heating
chamber while on said secondary
trackway and an unloading section in
said service area spaced from the load-
ing means and receiving a completed
furnace charge from said furnace car.
After putting their invention into
practice in their own plant, and while
their patent application was pending, in
May 1967, appellants, seeking to enter
into a licensing agreement, showed their
plant layout to employees of appellee
Carborundum Company. At least since
1965, appellee had been conducting sub-
stantial research on the feasibility of us-
ing mobile furnaces but had been unable
to achieve in practice, or even in a fully
developed theory, the successful result
put into practice by appellants in their
Satellite Plant.!
Thereafter, appellee proceeded to build
a plant at Jacksboro, Tennessee, in which
virtually all elements of appellants’ man-
ufacturing plant were duplicated, with
the single exception that in appellee's
Jacksboro plant, instead of a transfer car
running on a track transverse to the
mation on labor costs. They contacted us
because we are the largest producer of sili-
con carbide. They do not intend to contact
other producers and request that we do not
discuss this openly where it might become
generally known to others in the trade.
They anticipate it might take from two to
three vears for the Patent Office to rule on
their application. They suggested if Carbo-
rundum were to indicate definite interest in
a licensing arrangement with them it could
expedite the application through the Patent
Office. They are interested in the sale of a
process whereby they could treat it as a cap-
ital gain. Possibly they might consider sell-
ing their Company, although we did not ex-
plore this. We did tell them our position on
development of a car furnace type of plant.
{Emphasis added }
PERO TR TL NIE Ray Sr
BRATS
pak wireas iS
IR ES TBE TP
Appendix A
BOLKCOM v. CARBORUNDUM COMPANY 497
Cite as 523 F.2d 492 (1975)
main trackways, a railroad turntable
supported by rails at its periphery was
used,
On March 11, 1969, the original patent
application was granted.
Meanwhile, by August 1969 appellants
had learned that The Carborundum Com-
pany planned to build a plant at Jacks-
boro using a turntable to shunt mobile
furnace cars selectively into and out of
the firing area, and into ard out of other
areas of the plant) In 1969, after mect-
ing with patent counsel to discuss the
scope of their original patent, appellants
filed a reissue application to cover trans-
fer means other than the transfer car on
a transverse track that was described in
the initial claims. For example, it was
intended by this reissue to obtain cover-
age for the use of turntables, ladder
track, or overhead crane mechanisms in
place of the transfer car. The applica-
tion for reissue was filed on November
20, 1969. Appellants’ patent counsel in a
letter to associates engaged in obtaining
foreign patents for appellants’ invention
stated the purpose for the reissue appli-
cation in the following manner:
Our client has just filed a reissue
application in the United States on the
United States patent corresponding to
the above identified Canadian patent.
The purpose of the reissue is to en-
large the claims. They have found
that a turntable and several other
mechanisms can be substituted for the
transfer car of the issued claims and
feel that the transfer car limitation is
too limiting.
During «a deposition before trial, appel-
lant Knapp conceded that the letter re-
2. There was evidence indicating that appellee
decided to use an old turntable instead of a
transfer car in order to save about $90,000.
An internal memorandum stated: :
MiX 980
J. W. Golding 01-3 3 September 1968
R.C. Anderson 66-1 L. D Schultz 66
SIC CRUOL PLANT
DEVELOPMENTS 8-26-68 to 8-30-68
I. H.G. Acres Co., 8-25-68 _
$23 f.2d—32
flected the purpose of the reissue appli-
cation. At trial, he qualified his answer,
testifying that appellants and their coun-
sel believed that any turntable resting
on rails at its periphery was a “transfer
ear” within the literal meaning of their
claims, and that they intended the reis-
sue only to extend their claims to turn-
tables rotating on a central pivot. Ap-
pellant’s patent counsel testified at trial
that at the time the cited letter was
written, he believed that a turntable like
that used by appellee was covered by the
original claims, but that he wanted to
write to his associates in “simplified lan-
guage.”
The reissue patent, ‘081, was granted
on June 5, 1971. Typical of the new
claims added, 11—14, is claim 11, which is
identical to claim number 1 in substance
except that it provides for achieving the
desired selectivity through the use of a
“transfer means” instead of a “transfer
car on a track transverse to the main
trackway.”
Appellee’s Jacksboro plant was placed
in operaticn about April 1971 and about
one year later the action for infringe-
ment was filed.
The district court held that the origi-
nal claims of the patent, which expressly
claim as an element of the invention a
transfer car upon a transverse track, are
not literally infringed by a combination
virtually identical in all other respects
except that it employs a turntable in-
stead of a transfer car to achieve the
selectivity function. The court found
that a turntable was a “distinctly differ-
ent mechanism from a transfer car,” and
therefore the turntable system was not
On Thursday morning, | visited H. G. Acres and re-
viewed the project with Harold Rose and Jack Rob-
son.
The most significant development since last
we met was that Jack Robson has come up
with a scheme which would utilize a surplus
railroad turntable in place of the transfer car
previously planned. Jack and Harold estimate
this could save us about $90,000. (Emphasis
added 1
6a
ES ie
Appendix A
498 523 FEDERAL REPORTER, 2d SERIES
equivalent to the transfer car arrange-
ment. Further, although a turntable ap-
parently falls within the broader reissue
claims coverage of a “transfer means,”
the court held that reissue claims 11-14
are invalid under 35 U.S.C. § 251 be-
cause they are “not addressed to the in-
vention disclosed in the original patent”
and, instead, are an “unauthorized en-
largement of the disclosures of the pat-
ent.”
THE VALIDITY OF THE ORIGINAL
°605 CLAIMS
We first consider the validity of the
original claims of Patent '605, which
were carried over in the reissue patent.
These are claims 1, 3, 4, 5, & 9. Claim 1,
set forth above, is representative.
[1] As we stated in Westwood Chem-
ical, Inc. v. Owens-Corning Fiberglass
Corp., 445 F.2d 911 (6th Cir. 1971), cert.
denied, 405 U.S. 917, 92 S.Ct. 941, 30
I..Fd.2d 786 (1972), there are three essen-
tial elements of patent validity: novelty,
utility and non-obviousness. These re-
quirements are codified in 35 U.S.C.
§§ 101-103.
[2,3] In applying this test, we begin
with the principle that every patent is-
sued by the patent office carries, at the
outset, a presumption of validity, 35
U.S.C. § 282, which is justified by the
“complexities of patent law and the ex-
pertise of the patent office.” Monroe
Auto Equipment Co. v. Heckethorne
Mfg. & Supply Co., 332 F.2d 406, 412
(6th Cir.), cert. denied, 379 U.S. 888, 85
S.Ct. 160, 13 L.Ed.2d 93 (1964). And
where the most pertinent prior art has
been considered by the patent office, the
presumption is greatly strengthened.
Tapco Products Co. v. Van Mark Prod-
ucts Corp., 446 F.2d 420 (6th Cir.), cert.
denied, 404 U.S. 986, 92 S.Ct. 451, 30
L.Ed.2d 370 (1971). See also Great
Lakes Equipment Co. v. Fluid Systems,
Inc., 217 F.2d 613, 617 (6th Cir. 1954).
Conversely, “where applicable prior art
has not been considered by the Patent
Office this presumption is greatly weak-
ened.” Dunlop Company, Ltd. v. Kelsey-
jE : PA ELLE 2 ESA OSE IO ORS IIIT) EO Fi
Hayes Co., 484 F.2d 407, 413 (6th Cir.
1973), cert. denied, 415 U.S. 917, 94 S.Ct.
1414, 39 L.Ed.2d 471 (1974), Monroe Auto
Equipment Co., supra.
Here, appellee, in challenging the va-
lidity of the original patent, cites as rele-
vant prior art not considered by the Pat-
ent Office six patents, and two confiden-
tial inter-corporate reports circulated by
its employees. Moreover, appellee con-
tends that this prior art is more perti-
nent to the patent claims in issue than
that considered by the patent office, be-
cause the examiner did not consider any
patents concerned with mobile silicon
carbide furnaces.
PRIOR ART
The following prior art not considered
by the Patent Office was cited by appel-
lee.
I. Bayard Patent No. 1,107,478.
‘The Bayard patent relates to a plant
for the manufacture of silicon carbide
having moveable electric furnaces. It
shows two parallel batteries of eight fur-
naces each, mounted on wheels for
movement along trackways from a fur-
nacing area to a service area. Each fur-
nace has removable end walls equipped
with electrodes. Before a battery of
furnaces can be moved, the end walls
must be removed from all eight furnaces
and replaced with false end walls. Fur-
ther, the electrical wiring system re-
quires all furnaces in a battery to be
operating at the same time. The track-
ways leading to the firing area permit
the furnaces to be moved outside for
cooling, emptying, and loading a new
charge. While one battery of furnaces is
being serviced, the other can be charged.
2. German Patent No. 854,207 (here-
inafter Demag).
The Demag patent likewise pertains to
a plant for the manufacture of silicon
carbide in moveable electrical resistance
furnaces. Wheeled frames or trucks
carry the vertical furnaces, which are
made up of separate’ wall sections
clamped or hinged together during
OER INA TALIS RIEL SATIN LRT GO OE EC AN AEN
BREE ETT ADELE I LR, EEN RE ATES ES
Appendix A
BOLKCOM v. CARBORUNDUM COMPANY 499
Cite as 523 F.2¢ 492 (1975)
charging or firing. The furnaces are in
groups of three, which must be used
simultaneously. The groups of furnaces
move on a frame or truck over a track-
way to the clectrical source, then back
down the tracks to a turntable where
they are positioned to move onto tracks
leading to the servicing area.
3. Tone Patent No. 800,515.
This patent is directed to an electrical
resistance furnace for making. silicon
carbide, graphite, siloxicon, and for heat-
ing other carbon articles. The furnace
has removable sidewall panels composed
of bricks held together by frames of iron
or other materials. The panels rest on
the furnace floor when in position and
are withdrawn by a crane at the end of
a furnace run.
4. Van Wagenen Patent No. 492,069.
This patent shows a turntable having
wheels located at its periphery which
ride on a track as the turntable rotates.
5. Koppers Patent No. 1,674,985.
This patent relates to a furnacing
plant for burning fireproof ware. It
shows a preheating channel, furnaces,
and cooling chambers connected by
tracks, with cars that move on _ the
tracks, sliding platforms, and transverse-
ly extending trackways on which the
sliding platforms move.
6. Lloyd Patent No. 2,504,707.
This patent shows a plant for heating
ingots for the manufacture of stecl using
transfer cars and tracks extending trans-
versely to the main furnace trackway.
[4.5] Appellees also rely upon two
Carborundum Company internal memo-
randa regarding plans for mobile silicon
carbide furnaces.? However, there was
3. The Carborundum proposal dated 1956 de-
scribes a silicon carbide plant having moveable
furnace cars each of which is to be moved by
a “transfer mechanism" from a loading area to
a furnacing area. The furnaces pass through
the furnacing area to another “transfer mecha-
nisn.”” which moves them through a cooling
area to tracks passing through an unloading
area.
no showing that these two proposals
were ever reduced to practice prior to
the construction of appellants’ plant. In
Monroe Auto Equipment, supra, we held
that in order to anticipate an invention,
prior art “must have been reduced to use
and successfully performed.” 332 F.2d
415. More recently, in Dunlop Co., Ltd.
v. Kelsey-Hayes Co., supra, we reiterated
this holding with the qualification that
even though imperfections and commer-
cial difficulties may be revealed by re-
duction to practice, a device may never-
theless qualify as prior art. Therefore,
since the proposals in the Carborundum
Company memoranda were never put
into practice, they cannot be considered
as anticipating the '605 patent.
UTILITY AND NOVELTY
{6} The utility and novelty of appel-
lants’ invention is demonstrated by the
undisputed need of the industry for a
plant layout that would permit the con-
tinuous operation of the manufacturing
process by the selective movement of
furnaces throughout its phases, and by
the commercial success of appellants’
plant. William Bolkcom’s deposition tes-
timony indicated that appellants’ silicon
carbide accounted for 8-10 percent of
the total output in the United States and
Canada.
[7] Moreover, the fact that the ele-
ments included in appellants’ combina-
tion patent were found individually in
prior art devices does not defeat novelty.
King-Seeley Thermos Co. v. Refrigerated
Dispensers, Inc., 354 F.2d 533 (10th Cir.
1965). As the court stated in Shaw v.
E.B. & A.B. Whiting Co., 417 F.2d 1097,
1101 (2d Cir.), cert. denied, 397 U.S. 1076,
90 S.Ct. 1518, 25 L.Ed.2d 811 (1970):
The June 1965 Carborundum proposal de-
scribes a mobile furnace plant where furnace
cars travel on tracks and are moved in a di-
rection transverse to these tracks on transfer
tracks through the various phases of silicon
carbide manufacture. The ‘mobile furnace
plant” was one of fourteen new concepts de-
scribed in the report.
. ee ei iret ap pig ke UT EELS
. — HS MGA INE SPLEEN GEL EOL ERE LEIA IE A .
RETA EOE PERIOD DE RELR RE wee WAL E t
Sa
BORE EIS
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fee
Appendix A
BOLKCOM v. CARBORUNDUM COMPANY 501
Cite as 523 F.2d 492 (1975)
an equivalent result. In summary, the
district court specifically found that ap-
pellants’ claimed invention was not a
mere aggregation of old elements, but
instead it was “a combination in which
the product exceeds the sum of the indi-
vidual elements,” producing a new result
of selectivity. This new selectivity was
a small but significant advance over the
prior art in a relatively crowded field.
[9] We agree with the district court
that the ‘605 patent was not obvious.
The Bayard and Demag patents both
lacked the element of selectivity. The
Bayard patent showed furnaces in bat-
teries of eight, and all eight furnaces
had to be operated at the same time;
further, all eight end walls from the en-
tire battery had to be removed and re-
placed by false end walls before the indi-
vidual furnaces could be moved away to
the stripping area. The Demag patent
differs significantly from appellants’ be-
cause it shows vertical, not horizontal,
furnaces, arranged in groups of three
which had to be moved as single units.
The Tone, Van Wagenen, Koppers, and
Lloyd patents simply show that the indi-
vidual elements of removable furnace
side walls, turntables, and transfer cars
on transverse tracks were part of the
prior art. They fail to show that appel-
lants’ combination of these elements, and
others, was obvious.
We agree with the district court that
appellants’ invention was more than a
mere aggregation of old elements. The
new result of selectivity was a signifi-
cant advance over the prior art. It was
precisely the element of selectivity that
made appellants’ plant such a commer-
cial success, solving an industry-wide
problem.
{10} Moreover, the secondary consid-
erations enumerated by the Supreme
Court in Graham v. John Deere all
strongly support the conclusion that ap-
pellants’ invention was not obvious. The
appellants’ plant was a commercial suc-
cess that had captured 8-10 percent of
the North American market for silicon
carbide. It met the longstanding indus-
try need that inspired appellee's own re-
£ Brg RATES ‘ 2 RRS II IS LTR IE ao
search efforts beginning as early as 1950.
Finally, appellee's failure, despite its
preeminence in the field, to duplicate ap-
pellants’ invention after years of sus-
tained effort strongly supports the dis-
trict court’s conclusion that the invention
was not obvious to a person with only
ordinary skill in the art. We agree with
appellee that the result of increased effi-
ciency from a mere mechanical aggrega-
tion of old elements is not patentable.
But here, because the claimed invention
is greater than the sum of its parts and
produces a new result, the secondary
considerations mentioned in Graham v.
John Deere, including commercial suc-
cess resulting from greatly increased ef-
ficiency, are relevant.
{11} Since we hold that appellants’
original '605 patent satisfies the require-
ments of novelty, utility, and non-obvi-
ousness, we agree with the district court
that the original patent is valid.
THE VALIDITY OF THE REISSUE
CLAIMS 11-14
The district court found the reissue
claims 11-14 are invalid as an “unau-
thorized enlargement of the disclosure in
the patent.” Appellants contend that
the disclosure of an invention in the pre-
ferred form or “best mode” should not
prevent the inventor from claiming ev-
ery form in which the invention might
be copied.
We agree that the trial court applied
the proper standard in determining
whether the reissue claims were valid.
35 U.S.C. § 251 provides in part:
Whenever any patent is, through er-
ror without any deceptive intention,
deemed wholly or partly inoperative or
invalid, by reason of a defective speci-
fication or drawing, or by reason of
the patentee claiming more or less
than he had a right to claim in the
paténf, the Commissioner shall, on the
surrender of such patent and the pay-
ment of the fee required by law, reis-
sue the patent for the invention dis-
closed in the original patent, and in
accordance with a new and amended
a -_ wes,
58 AP RMR LIC ILO Ei OE FIMO PBSC LILES ELF NEES
Ce ee.
PRE GO TE AGAR EE IDS
Appendix A
500 523 FEDERAL REPORTER, 2d SERIES
However, the fact that each element
of a creation sought to be patented is
found in prior art does not negate nov-
elty if the old clements are combined
in such a way that as a result of the
combining an improved, useful, and
more advantageous innovation _ is
obtained.
NON--OBVIOUSNESS
We turn next to the more difficult
question whether within the meaning of-
35 U.S.C. § 103 appellants’ invention was
obvious. Section 103 provides:
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 differ-
ences 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 pertains.
Patentability shall not be negatived py
the manner in which the invention was
made. [Emphasis added.]
Appellee argues that the claimed inven-
tion was obvious in view of the prior art,
particularly because it was a mere
aggregation of old elements.
In Graham v. John Deere Co., 383 U.S.
1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966) the
Supreme Court interpreted the section
103 standard of “obviousness” as intend-
ed to codify the prior judicial standard
of “invention.” The Court gave obvious-
ness a practical definition:
Under § 103, the scope and content
of the prior art are to be determined;
differences between the prior art and
the claims at issue are to be as-
certained; and the level of ordinary
skill in the pertinent art resolved.
Against this background, the obvious-
ness or nonobviousness of the subject
matter is determined. Such secondary
considerations as commercial success,
long felt but unsolved needs, failure of
others, ete., might be utilized to give
light to the circumstances surrounding
2 BS ESE SERS REE ere ee net ce
the origin of the subject mattcr sought
to be patented. As indicia of obvious-
ness or nonobviousness, these inquiries
may have relevancy. Sce Note, Sub-
tests of “Nonobviousness": A Non-
technical Approach to Patent Validity,
112 U.Pa.L.Rev. 1169 (1964). 383 U.S.
17-18, 86 S.Ct. 694.
[8] Further, in considering cases
dealing specifically, with inventions that
combine elements that were known as
part of the prior art, the Supreme Court
has developed some specialized criteria
for obviousness. In Great A & P Tea
Co. v. Supermarket Equipment Corp.,
340 U.S. 147, 150, 71 S.Ct. 127, 129, 95
L.Ed. 162 (1950), Justice Jackson writing
for the Court, cautioned that the “con-
cept of invention is inherently elusive
when applied to combination of old cle-
ments.” A claimed invention is not pat-
entable if it is a mere aggregation of old
elements assembled with only mechanical
skill. In order to be patentable a combi-
nation must produce a new result or a
different function; the new invention
must be more than the sum of the old
parts. Anderson-Black Rock, Inc. v.
Pavement Salvage Co., Inc., 396 U.S. 57,
90 S.Ct. 305, 24 L.Ed.2d 258 (1969);
Great A & P Tea Co. v. Supermarket
Equipment Corp., 340 U.S. 147, 71 S.Ct.
127, 95 L.Ed. 162 (1950); Grinnell Wash-
ing Machine Co. v. E. E. Johnson Co.,
247 U.S. 426, 38 S.Ct. 547, 62 L.Ed. 1196
(1918).
The district court found that the '605
patent was not obvious on consideration
of the prior art. The court found that
although the prior art disclosed the con-
cepts of moveable furnaces, transfer
cars, and other clements used in the '605
patent, the novel combination invented
by appellants produced the new result of
facile and unencumbered selectivity. In
contrast, appellee’s unsuccessful at-
tempts to design a mobile furnace were
simply obvious combinations or aggrega-
tions of known elements. The court ob-
served that despite appellee's hindsight
argument that the 605 patent was obvi-
ous, nevertheless, its own experts, who
devoted years of effort, failed to achieve
EM PO LOR SPLOT IS RE NRE EIEN TSR AS
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10a
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Appendix A
502 523 FEDERAL REPORTER, 2d SERIES
application, for the unexpired part of
the term of the original patent. No
new matter shall be introduced into
the application for reissue. {Emphasis
added. }
(12) The Supreme Court has made it
clear that this section is intended only to
permit the reissue of a new patent for
the same invention as that disclosed in
the original patent in order to permit the
correction of an innocent inadvertent de-
fect or omission. It is not intended to
permit the patentee to broaden the
claims of the original patent. The new
description of claims rmay not properly
include
additions to the invention which were
not described, suggested, nor substan-
tially indicated in the original specifi-
cations, drawings, or patent-office
model. . . . Letters patent reis-
sued for an invention substantially dif-
ferent from that embodied in the orig-
inal patent are void and of no effect
. . .. Parker and Whipple Co. v.
Yale Lock Co., 123 U.S. 87, 97-99, 8
S.Ct. 38, 44, 31 L.Ed. 100 (1887).
For example, in U. S. Industrial Chem-
icals, Inc. v. Carbon Carbide & Chemicals
Corp., 315 U.S. 668, 678, 62 S.Ct. 839, 86
L.Ed. 1105 (1942) the Court held that:
the omission from a reissue patent of
one of the steps or elements prescribed
in the original, thus broadening the
claims to cover a new and different
combination, renders the reissue void,
even though the result attained is the
same as that brought about by follow-
ing the process claimed in the original
patent.
Bolkcom acknowledged at his deposi-
tion, and Knapp at trial, that the origi-
nal patent referred only to a transfer
car, but they contended that the claim
includes a turntable with whecls located
at its periphery. They also conceded
that they intended the reissue to cover
other transfer means, such as a ladder
track or a turntable rotating on a cen-
tral pivot. This concession is consistent
with their letter to foreign associates,
supra, in which patent counsel described
the purpose of the reissue as “to enlarge
the claims.”
{13} We hold that the record clearly
supports the district court’s conclusion
that the claims added in the reissue pat-
ent were invalid because they were an
unauthorized enlargement of the disclo-
sure in the original patent. The reissue
claims, like those in U. S. Industrial
Chemicals, were intended to broaden the
claims in order to cover several new and
different combinations. Therefore, as in
U. S. Industrial Chemicals, the reissue is
void even though the combinations using
the other transfer means achieved the
same result as appellants’ original inven-
tion.
INFRINGEMENT
Since we have already held that the
district court was correct in determining
that the original patent is valid and the
reissue claims are invalid, we now turn
to the claims of the original patent to
determine whether it was infringed by
appellee’s plant. The district court
found that the appellee's plant, although
virtually identical with appellants’ in ev-
ery other respect, utilized a turntable in-
stead of a transfer car to transport the
mobile furnaces. It found that the turn-
table was not a transfer car, and did not
accomplish substantially the same results
by substantially the same means. In-
stead, it found that the turntable is “an
essentially different means” that is “not
the equivalent” of appellants’ invention.
Appellants argue that appellee’s com-
bination, including a turntable, infringes
their original patent both literally and
under the doctrine of equivalents. Con-
sidering first the argument that there
was a literal infringement of the original
patent, we are not persuaded that a
“turntable” is included within the defini-
tion of a “transfer car." Not only was
there testimony that appellee’s device is
commonly referred to in the art as a
turntable, rather than as a ear. but also
there was testimony that a transfer car
can move from one location to another,
but a turntable has a fixed location and
merely rotates around a central pivot.
“tS me NER OM HARES Sl Ag SC A mn REN BU LO PD RMU OE SER TRICO NE LOE SE DREGE HY GOSSELIN EME ERNIE ISS ENT OME
yp + rd awe ee ” a e ad, see we ©
ONS RAO RENE AEs ATE ANAS"
C55:
SPE TL SATEEN G RAG INET ON GRE
Appendix A
Cite as 523 F.2d 503 (1975)
However, under the doctrine of equiv-
alents, appellee’s plant must also be
found to infringe if the turntable and
the transfer car do substantially the
same work in substantially the same way
and accomplish substantially the same
result. Graver Tank & Mfg. Co., Inc. vy.
Linde Air Products, 339 U-S. 605, 70
S.Ct. 854, 94 L.Ed. 1097 (1950). The
Graver Court stated that this ‘doctrine is
available to the holders of combination
patents as well as primary patents, and
the area of equivalence will vary under
the circumstances of individual cases, the
prior art, and the context of the patent.
It also held that the existence of equiva-
lence is a question of fact.
[14] Applying this test, we hold that
the district court's finding of fact that
appellee's turntable was not the equiva-
lent of the transfer car used in appel-
lants’ plant is not clearly erroneous.
The turntable does perform substantially
the same function as the transfer car:
each serves as the device that moves the
mobile furnaces into alignment with the
main trackway leading to the firing
area, then out of alignment with that
trackway and into alignment with other
trackways to the stripping and loading
areas. However, the way in which the
turntable accomplishes this result differs
from that of the transfer car. As ob-
served above, the turntable itself is sta-
tionary and transfers the furnaces by
pivoting around a central point, but the
transfer car can move them about from
location to location. Important practical
consequences may result from this dif-
ference. For example, the number of
Separate locations which can be served
by the turntable may be limited by the
number of tracks that can abut its cir-
cumference. Also, a number of transfer
cars carrying furnaces can move about
simultaneously on various portions of ap-
pellants’ trackways. However, it would
appear that only one furnace at a time
can be transferred by the turntable.
[15] Where the patent is a pioneer,
the patentee is allowed to claim a
wide range of equivalents. But where,
as here, the patent represents only a
wn “AO AEROSTAR RG CTY Pc Nia PN aes
small but significant advance because
the art is crowded, the doctrine of equiv-
alents is given a correspondingly narrow
range. Triax Co. v. Hartman Metal
Fabricators, Inc., 479 F.2d 951 (2d Cir.),
cert. denied, 414 U.S. 1118, 94 S.Ct. 843,
38 L.Ed.2d 740 (1973), Parmalee Pharma-
ceutical Co. v. Zinc, 285 F.2d 465 (&th
Cir. 1961).
In view of our holding that appellee's
plant does not infringe under the doc-
trine of equivalents, we do not reach ap-
pellee’s additional argument that file
wrapper estoppel would also preclude a
finding of infringement because in the
prosecution of the patent in suit the in-
ventors narrowly restricted the scope of
their claims.
Affirmed.
9
a
GN EOE LA ELLE ELD LOPE LOO! SEINE
Appendix A 13a
NO. 73-1320
UNITED STATES COURT OF APPEALS
FOR THE SIXTH CIRCUIT
WILBUR T. BOLKCOM, and
WILLIAM E. KNAPP,
Plaintiffs-Appellants
- VS - ORDER
THE CARBORUNDUM
COMPANY,
Defendant-Appellee, |
BEFORE: Weick, Mc Cree, and Livevy, Circuit Judges.
The petition for rehearing with suggestion for a
rehearing en banc having come on to be heard, and no judge
having requested a vote on the suggestion for en banc
consideration, and the petition having therefore been
referred to the panel that heard the case, upon consideration,
it is ORDERED that the petition be, and it hereby is,
DENIED.
Entered by order of the court
FILED
DEC. 4, 1975
JOHN P. HEHMAN, Clerk
ae
Bex
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Sh PRL EEA UES.
RM a aa YO Ne
ER EM OT Te EE ORT ERENT T ALIN Ne Sats ata I O 1 AAD A EA ELLE D PASAT SLED. BGR LIE ED LE LNG Bt LRG PGND NA AELLEN APE 5 thE Fit A
Appendix B
Opinion.
Opinion
[654] The Court: The matter is submitted, Gentlemen?
Mr. Webb: Yes, your Honor.
Mr. Blenko: Yes, your Honor.
The Court: First, then, a word of appreciation. I am
certainly mindful of the experience and ability [655] of
counsel, of which I have been the beneficiary.
I want to thank you for the diligent and able man-
ner in which the case has been presented.
The Court could have been in difficulty in timing,
not that I wouldn’t be able to devote whatever time was
necessary for proper disposition of the matter; but, be-
cause all protracted cases pose problems for the Court
as a whole, had it not been for this focused presentation.
The Court could have been in difficulties in seeing
the points involved if these were masked by time or
obtuse argument. And I am in your debt on both scores.
Next, a word of apology and explanation. I apolo-
gize to you and your clients for utilizing so much of this
daily transcript in interjecting questions and making
comments. I certainly must apologize for the form of
some of those comments.
I notice on page 504, for instance, that one of the
comments, consisting of fifteen lines is almost unin-
telligible and is reflected in a single sentence.
Perhaps the Reporter would be charitable, — you
Gentlemen be — in reading such long sentences, with
the thought it would have made sense had it [656] been
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<>
Appendix B
Opinion.
reflected in six sentences as follows, quote: “With refer-
ence to the last witness there were other reasons that
might put him in a little stronger status as an expert
or as a witness in a proper sense” period. “He didn’t pre-
pare the applications involved” period. “There is some
suggestion in the pleadings, if not in the pretrial order,
that the defendant makes some claim of deceptive intent
of some consequence beyond mere omission in any event,
particularly with regard to the last letter where point
has been made that it was written in disclosure of prior
art before the original patent issued” period. “There
may not be a hole in the record as to whether any sub-
sequent failure to re-issue patent on the reliance upon
the original patent had consequences akin to that which
might have resulted from deceptive intent.”
I think ‘‘on” should have been “if”, then it makes
sense.
I solace my shock in reading those barbaric long
sentences with the thought that perhaps I didn’t pause
sufficiently between the sentences. And the Reporter
can assume that he wasn’t suppossed to break it up into
sentences because of the words running out too thought-
lessly.
[657] Be charitable when you read these transcripts.
If my words could fall as brightly and crisply minted as
counsel’s do on the record, it would indeed be great.
The explanation of this means of deciding the case,
and the clarifying questions and discussions that I have
participated in, or invited, stems from my history as a
trial attorney.
When, in the early years of practice before a fine
Judge, who decided cases simply by a grunt, I never
SEBEL NS BS ICO, LO IAI IR SELEY SPEND
l5a
TSAIULE DBAS GES SSA ER CEE UE OEE SSM
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Appendix B
Opinion.
knew what was in his mind. And months after I might
find that I was talking to points that didn’t interest him
at all, and that he decided on the case on somet hing that
hadn’t occurred to me.
When I took the Bench I made up my mind that I
would never leave counsel in that position. So, I go to
the other extreme.
But, I think counsel have the right to know gen-
erally the operation of the Court’s mind, so that for
good or ill, or validity, or invalidity, the Court has used
a general type of thinking to which counsel can come to
grips. I think I have at least tried to give you that indi-
cation.
Furthermore, with regard to the decision itself, I
have tried to, whenever feasible, during [658] my later
years as a Judge, to follow the evidence through tran-
scripts and examination of exhibits as the case goes on
so that at the end of the case, in the context of counsel’s
arguments, I can at least knowledgeably, according to
my lights, come to conclusions.
[659] The first case that I attempted that system in,
some ten years ago, by interesting coincidence involved
an electron furnace. It was a case brought by Mon-
santo Chemical Company against the defendant for al-
leged violation of trade secrets.
I felt that I approached most nearly a knowledgeable
decision in that case, and it was an issue of great mo-
ment to both sides, than if I had taken the matter under
long advisement. I departed from that rule in the case
I mentioned yesterday where by reason of counsel’s re-
quest that transcript be provided before briefing and
l6a
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Appendix B
Opinion.
then an extended period of briefing, my decision was
reached some year after the trial. If I have achieved
the proper result in that case, it would be against a
tremendous obstacle for any judge to try to reconstruct
a hotly contested case and the evidence with reference
to numerous issues out of the context of the trial, and
after memory becomes certainly a little dull. Even the
re-reading of the transcript, which I did, didn’t give me
the assurance that I would have had, if I had done the
best I could during the course of the trial, and then at-
tempted to reach a decision in context.
Now as to the particular plan of decision here. I
think I am as fully advised as I reasonably could be
[660] expected to be on the law of the case, within my
limitations, since I have read, I think, most, if not all
of the authorities cited in the original briefs and at
least rescanned or read most, if not all, of the authori-
ties cited in your proposed conclusions, since I have
tried to keep abreast of the exhibits, both in court and
in the course of the examination and out of court.
I would propose to indicate my basic views on the
crucial issues of the case, and then by reference refer to
various proposed findings which will be indicated as
generally acceptable or unacceptable, subject always to
their modification to be harmonious with the views to
be now expressed.
I will ask counsel for one side or the other, based
upon such statement, to redraft proposed findings of
fact and conclusions of law, submit them to the oppos-
ing side, if feasible; since you are both from Pittsburgh,
you might discuss or interchange the findings so that
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f
Appendix B
Opinion.
they are deemed as acceptable as possible as a matter of
form, for joint submission to the Court.
I state here, and you may rest assured, that your
agreement as to form will not be taken as a waiver of
any substantive position, because it would be inherent in
such a submission that you reserve your substantive
[661] positions.
: I would like, however, to feel that the findings and
conclusions reflected an appropriate record of my deci-
sion so that neither side by mere form would be preju-
diced.
I suggest that you eliminate from the conclusions,
even though I indicated adoption of certain conclusions,
the citations. I find that counsel often are able to agree
upon it, that conclusions are in accordance with the
trial court’s determination, but can’t agree upon the
citations to support them, each wishing, depending upon
the interest, to have a little more effective or a little less
effective citations to the conclusion.
So let’s avoid that problem. Your citations are re-
flected in the record and your proposals, proposed find-
ings and conclusions will be on record, so we will have
continuing reference to those, together with citations
in your trial briefs.
We have involved here a combination patent. Mani-
festly, we do not deal with a formula in the field of
chemistry or mechanical apparatus, but a combination in
respect to a manufacturing plant. Such a combination
does not lend itself readily to any spectacular or extra-
ordinary or unexpected result. But if such rather [662]
prosaic combinations are susceptible of such, I can’t
Sa
PLEED THROUGH
Appendix B
Opinion.
escape the conviction that this is one of them, that this
is a combination in which the product exceeds the sum
of individual elements.
As has been appropriately remarked during the
course of the trial, the concept of novelty or invention
is a fugitive one in many ways. It is an oversimplifica-
tion to say that the heart of the plaintiffs’ invention was
the selectivity. It permitted facile and unencumbered
selectivity, to permit the treatment in various stages of
the material involved in the manufacture of carborun-
dum.
I agree that it is probably both an oversimplifica-
tion and accurate statement to say part of the invention
was non-orbital treatment in the course of that process
and the utilization of the plant layout. But again, I
can’t escape the conviction that plaintiffs did, indeed,
invent a new and novel combination which was useful,
which was not anticipated by the prior art, and which
was not obvious within the contemplation of Section 103.
[663] I believe that the defendant’s combinations, so
far as indicated by the record, up to the time its agents
viewed the plaintiffs’ plant may have been an exact ex-
ample of the combinations simply amounted by way of
product to the total of its constituent parts.
It is now well and good to say that the turntable
treatment, or the transfer treatment involved in the pa-
tent in suit, or the Jacksboro Plant, would be quite ob-
vious to those skilled in the art, but the experts of the
companies with the greatest experience in this field
didn’t come up with such a combination until the plain-
tiffs developed it.
19a
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Appendix B
Opinion.
Hindsight can always render matters obvious as
we have been frequently reminded in justification both
of good and bad decisions on the question of obvious-
ness. I can find nothing in the prior art, however, which
would render in my considered judgment this invention
obvious.
The fact itself that having before them the con-
cept of mobile furnaces, of transfer cars, of every other
idea suggested by the prior art, the defendant com-
panies’ experts did not come up with plaintiffs’ inven-
tion until it was made and reduced to practice by plain-
tiffs, is relevant both to the [ 664] question of the
significance of the prior art both disclosed before the
Patent Office and undisclosed before the Patent Office
and the general problem of obviousness.
Up until the time of the plaintiffs’ invention the de-
fendant’s ideas appeared practical, promising, and at
least in the defendant’s judgment novel. I have read
exhibits restricting discussion of these matters because
of the new concept that the defendant thought it had,
and yet realistically in view of the plaintiffs’ disclosure
and the disclosure of the Jacksboro Plant these other
ideas seem somewhat cumbersome and primitive.
We have talked about the sine qua non of selec-
tivity whereby without any interference with any par-
ticular furnace, other furnaces in plurality may be
moved from the furnacing area into the processing area
and returned. It is a rather simple thing in a way but
very significant thing within narrow limits. That is the
sine qua non. But that isn’t to deprecate the other ele-
ments of the combination because it is not an inven-
tion simply with respect to that which may well have
aie . . WAIL ALLS LICL SI MEE RAI SRI LET EOE TE
FACE LOR ELE OER ATS
20a
SRA ABE TR Se BD, OT
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Appendix B
Opinion.
been anticipated by the prior art in a limited or nar-
row sense but the combination itself with that impor-
tant clement found [665] no other place represented in
the invention.
Thus I conclude that in a crowded art the plain-
tiffs’ invention, as reflected in the original application,
represented a small step, but a significant step, beyond
the art and a step that was not obvious in view of the
art whether disclosed or undisclosed.
The next concept that governed my decision is in
the field of equivalents. This is not to say that this
next point is governed only by consideration of the
doctrine of equivalents because there are other matters
relating to the file history and with reference to the
very nature of the disclosure of the patent itself which
leads to or renders meaningful the same result.
[666] The Court: There are other matters relating to
file history and with reference to the very nature of the
disclosure of the patent itself, which leads to, or renders
meaningful the same results.
The turntable system involved in the Jacksboro
Plant is not the equivalent of the plaintiffs’ invention,
whether considered simply in gross or the generality,
or whether the turntable device is specifically com-
pared with the transfer car element.
The most simplified example within my experience
of the application of the doctrine of equivalents was in
the Sears Roebuck case which went to the Tenth Circuit
in which — from the District of Denver, I determined
that the mere reversal of parts, so that a member cam-
ming on the toggle of a toggle wrench was in essentially
the same position as a toggle wrench in which the
2la
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i
A vs
'
Appendix B
Opinion.
member cammed upon another member against the
toggle. You can move from that area to more complex
comparisons where the doctrine of equivalents applies.
But I don’t think that the plaintiffs’ turntable sys-
tem —
Mr .Webb: You mean the defendant's’?
The Court: I should say defendant's turntable sys-
tem accomplished the same result in the [667] same
way. I grant that it accomplishes the same result of the
susceptible of that accomplishment, but it is by an es-
sentially different means. No transfer car is used.
The furnace car itself becomes the transfer car.
There is not a plurality of tracks utilized in connection
with the transfer itself superimposed upon a transfer
car or a multiple use of a single track. If we could cut
loose from the file history of the case, and from the in-
herent nature of the plaintiffs’ invention, a pretty good
case could be made under the doctrine of equivalency.
But, strictly speaking, I don’t think the two means are
essentially the same. I think there are important dif-
ferences.
If the closeness of that problem, however, were the
only element in this field, I wouldn’t proceed with quite
as much assurance as I feel I can in distinguishing the
two means. The expressed and essential nature of the
plaintiffs’ invention as disclosed by the specifications,
and by the claims, as well as the file history, bring me
to the same result. Beyond that, if the plaintiffs’ inven-
tion were so broadly interpreted as to read upon the
turntable system involved in the Jacksboro Plant, there
would be grave doubts in my mind as to [668] its com-
pliance with section 103. It would be essentially to fall
BLEED THROUGH
Appendix B
Opinion.
into fallacious reasoning in this aspect and too much
to take at face value some of the transitory arguments
advanced by both parties here.
Defendant says that the turntable system is essen-
tially different with respect to the issue of infringe-
ment from the transfer system disclosed by the patent.
There is a temptation to parlay that mere argu-
ment into a significant differentiation in the prior art
between the turntable approach and the transfer ap-
proach.
On the other hand, the plaintiff said the turntable
was within the disclosure, it was just a matter of formal
drafting, that it wasn’t set out in the claims. And if
indeed that argument is parlayed to its logical con-
clusion, it might follow that this sine qua non that we
have been talking about is disclosed in the basic patent
was really the equivalent of the old turntable as exem-
plified in Bayard.
Aside from this—these merely formal points and
counterpoints, there is something more basic in the
invention of the plaintiff which [669] dictates in my
judgment that the plaintiffs’ invention must be nar-
rowly construed, and was, indeed, narrowly accepted
in the context of the transfer car system.
(670) And as so narrowly accepted and construed, rep-
resented, as I have indicated, a significant step for-
ward, a significant advance in the art in view of all of
the art that has been disclosed before the Patent Office
or otherwise.
In sum I don’t think the turntable was disclosed, as
a part of the patented combination, or taught. If it were
—— * oe
2 UN TR REI SP ENE EAE NRE IESG ES:
- a oane _ = wer Pan ~rasemn Aint
POINT CARRIE STEEP TI NTS ENEMIES INE PRR EG NINE SATIS LT i TEE
23a
Appendix B
Opinion.
within the reach of the patent or were an inventive idea,
in view of the prior art as such, it was dedicated to the
public domain by failure to claim it, and by expressly in
the patent application itself and by representation to
the Patent Office, tying the invention to the transfer
system specifically.
The plaintiffs are not in a position to claim that
Jacksboro application constituted an infringement of
the patent in suit.
It goes without saying then in the Court’s view that
the re-issue claims, except as reiterating the claims of
the original patent, are invalid as constituting an un-
authorized enlargement of the disclosures of the pat-
ent. And in the context of the issues of this case, it may
be that the rationale of this decision would affect other
types of application. That question isn’t before me
though and whether a ladder type or an overhead con-
trol type of application would be a similar [671] exten-
sion, I don’t think I am called upon to decide. Except by
the essential logic of any position that the Court takes
in theory as to these other things, there is certainly no
intent at all to make an adjudication of the non-infring-
ing nature of any variation except as to that exempli-
fied or embodied in the Jacksboro application.
I followed to the best of my ability the discussions
in connection with Bayard and the German patent. I am
inclined to agree generally with plaintiffs, that their
disclosure would not and did not render the plaintiffs’
patent as I have interpreted it, anticipated or obvious.
Again I returned to the defendant’s embodiment of
their ideas of mobile furnaces and transfers, et cetera.
ny ae oe 2 Bilas a MR a Rae ‘% ee 18
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OGIO E EES EI ee BPE SLi ABEL BALLIOL ABE CORSE ALON ILRI SOS ALIEN : LE LOILIE TE TS LE” CER LOST
BLEED THROUGH
Appendix B
Opinion.
With all they knew, all their experience, their specific
application of all their research and thinking to the Car-
borundum context, plaintiffs’ invention wasn’t obvious
to them. They missed it. They had far more than the
Examiner would have had before him, if he had had all
of the additional prior art before him. I think the ra-
tionale of the Examiner’s determination would continue
in view of the additional prior art, as well as before it.
with respect to the invention as so narrowly interpreted.
[672] Coming to the matter of clean hands. which
bothered the Court in connection with other points. I
was impressed last night with some assumed duty on
the part of plaintiffs to render explanation to satisfy
any possible or at least reasonable surmise that there
could have been deceptive intent or a significant with-
holding. I have concluded that, at least to the minimal
that could be expected, there has been a showing that
the Bayard patent could not be regarded as significant
or determinative.
[673] I have considered the presumption with regard
to that prior art and with regard to the total prior art
not disclosed in the Patent Office to have been dissi-
pated, that is, the presumption of validity as against
that additional prior art.
I think the defendant’s counsel is quite right. I have
not sought to split hairs on whether it is a mere reduc-
tion or a weakening or a dissipation. As far as that prior
art is concerned it has been completely dissipated in my
view. In any reflection, by looking at the matter realis-
tically, I still am of the opinion that invalidity is not es-
tablished as a matter of law and obviousness is not es-
tablished as a matter of fact. Quite to the contrary.
b AES OD REMI? LE LIOR VILE REN ABA LISE BER
TES QR SOF LEE Ae . < LIOG ILE L GLO ITE IO MET T sO
Appendix B pe 26a
Opinion.
I am impressed with the argument today that the
failure of disclosure prior to the issuance of the patent
was not a significant failure, as I have mentioned. I still
think that counsel, out of circumspection, should have
made the disclosure.
In re-evaluating problems like that it is difficult to
take into consideration all of the surrounding circum-
stances and another’s judgment when not confronted
with them may be different as the situation appeared at
the time.
My lingering criticism of counsel in not [674] mak-
ing adequate disclosure must yield to a realization that
in order to establish the lack of clean hands there must
be something even beyond preponderence of the evi-
dence perhaps. That is a serious matter. Perhaps that,
in order to be recognized, must be established by at least
a clear preponderance of the evidence or by clear and
convincing evidence.
Be that as it may, as I consider the burden of proof
the problem becomes somewhat unimportant. The lack
of clean hands, as I understand it, is an affirmative de-
fense. It might be suggested that one having shown a
failure of disclosure, the burden of persuasion shifts for
an explanation to the plaintiff, but the burden of proof,
I suppose, continued with the defendant and the ex-
planation having been made on the record here of the
non-controlling effect of the undisclosed prior art, there
being no indication beyond that that there was decep-
tive intent, the affirmative defense may fail merely
on the basis of burden. However, looking at it realistic-
ally and having explored all arguments to the best of
my ability, I cannot sustain the defense of lack of clean
a ' hands.
BLEED THROUGH
. 2 . - — PRT IE JPEN SLR INE! ERE SEINE Np TRE EELS |
LEE S ERGO LILLE LGN EE LED LENE LLOOT SALGEBEELL AEE LE LILA OLDE ICE TD LLOEL ES AIOE
Appendix B
Opinion.
I will direct counsel for the plaintiffs to take the
laboring oar in drafting the Findings of [675] Fact and
Conclusions of Law consistent with the views herein ex-
pressed.
I find most of the findings on either side as pro-
posed are very quite objective and factual. There are
some argumentative matters included, and Mr. Webb
has suggested certain findings which represent no ul-
timate findings or somewhat argumentative findings
in view of the decision of the Court, but on the whole
they are factually supported.
I would think that plaintiffs 6, 7, 8, 9, 10, 11, 12,
13, 14 and 15, with the emphasis on the key element
as reflected in 15, are in a satisfactory form gencrally.
They must be modified a little to comport with the other
things I have mentioned.
Of course, the conclusions suggest themselves, par-
ticularly the fact that claims 11 and 14 are an enlarge-
ment of the invention disclosed and taught in the parent
patent.
As construed, conclusions as to utility and novelty
proposed by the plaintiffs are in order.
I think, without running through these any more,
the conclusions will suggest themselves. Manifestly, the
conclusions with regard to file wrapper estoppel as pro-
posed by plaintiffs would not be congruous with the
Court’s ideas. The [676] conclusion as to unclean hands,
in light of what I have said, seem to be generally accept-
able, or with regard to clean hands, more properly.
Defendant's conclusions with regard to file wrapper
estoppel are all right.
I am not so sure, Mr. Webb, that file wrapper es-
; toppel in a usual or its limited sense applies in its more
a
BLEED THROUGH
PRE LSAT EEO EE SM 08 EOL GD IDEE SELLER ILE IEE ENLIST EE ITE
Appendix B
Opinion.
inherent nature of the patent itself as revealed in the
statement before the Patent Office. It may be that file
wrapper estoppel is a little different animal. It is where
there has been an abandonment of a position upon a
question which is sought to be recovered.
Mr. Webb: I would agree with that, your Honor. I
think it is a matter of utilizing the file wrapper for the
purpose of constructing —
The Court: That is right. I believe I feel more com-
fortable to put it upon that basis rather than in the
terms of file wrapper estoppel.
Mr. Webb: I agree with your Honor. {|677] Well,
the conclusions with regard to the lack of infringe-
ment as suggested by the defendant is generally all
right.
Now, in finding 11 for instance, Mr. Knapp — I
should say Mr. Webb, you emphasize and quote a let-
ter in which Mr. Knapp sets out the features as if
they were the whole thing.
Well, after all, that is consistent with the disclo-
sures you have found, but letters don’t make a patent.
And maybe that is argumentative, but it is certain-
ly true he said that.
Your proposed finding 13, of course, refers to mo-
bile furnaces and makes the mobility of the furnace
almost the sine qua non of the invention. And that is
not consistent with what I have indicated. And I don’t
mean to foreclose some of the findings you have pro-
posed, sir. To be realistic about it, there are many that
could be included for the completion of the record. But
I don’t want to use any of them argumentatively to be-
cloud the findings that I have made consistent with the
: views here expressed.
BLEED THROUGH
a a Se ee ot
PR I RTS CO A EE REG LPOG PLE Te EIEN Ee ONE EE
BLEED THROUGH
Appendix B
Opinion.
Mr. Webb: I think, your Honor, we can modify
them adequately to take out the argumentative [678]
aspect.
The Court: Can you Gentlemen work together on
that and get a set of findings which you think realis-
tically present the problem?
Mr. Webb: We certainly will try.
The Court: And light up any error or validity in
my conclusions.
For instance, your 16 appears okay, 17 appears
okay, 18 and 19.
All right, so much for that, Gentlemen.
Now, in all candor, it is not an easy case on the
Bayard and the German patent disclosures in this area
of novelty. But I have done the best I can and I be-
lieve that I am right. If I am not, rather than have a
long process of arguing about little refinements in the
findings, and so forth, let’s lay it on the line as best we
can along these lines. And if you have any overriding
conviction that requires you to get off a little steam as
to the Court, waive oral arguments and make your mo-
tion for modification of the findings under Rule 52(b),
or modification of the judgment under 59(a). And
submit the matter on briefs and I will listen to you at
length. But I won't occupy any more of your time here
on oral argument.
[679] Is that all right?
Mr. Webb: Yes, indeed, your Honor, I think that is
workable.
The Court: Thank you, Gentlemen.
We will stand in adjournment.
(Whereupon, Court was adjourned at 1:10 P.M.)
CAITR SPs, “Teng AS aOR EGOS BON IAL RAMEN, LL ARE AIG TOONS TORE AO SIEGE BALE Res LION I TG IEF REET
29a
J GRR RE 28 Ate ne ec no eRe NI ROE eT RAO ORE wom Ba . —
Appendix B 30a
Findings of Fact and Conclusions of Law.
IN THE
UNITED STATES DISTRICT COURT
FOR THE
EASTERN DISTRICT OF TENNESSEE
NORTHERN DIVISION
WILBUR T. BOLKCOM and
WILLIAM E. Knapp, Plaintiffs, Civil
Vv. + Action
THE CARBORUNDUM COMPANY, No. 7840
Defendant.
Findings of Fact and Conclusions of Law
FINDINGS OF FACT
Nature of Action
1. This is an action for infringement of United
States Letters Patent Re. 27,018, dated January 5, 1971,
a reissue of Patent No. 3,432,605, dated March 11, 1969,
for “Silicon Carbide Furnaces and Plants” both granted
to plaintiffs, Wilbur T. Bolkcom and William E. Knapp.
Parties
2. Plaintiffs are citizens of the United States, re-
siding in Allegheny County, Pennsylvania.
3. Defendant, The Carborundum Company, is a
Delaware corporation, having a regular and established
place of business at Jacksboro in the Eastern District
of Tennessee.
4. Plaintiffs are and always have been the owners
of Patent 3,432,605 and Patent Re. 27,018.
YEE AT NOLS EEE EE CURIE ER NT AREAL TIN SAL ARRAS. TOT ERASE AION MIE CTE YT RIE "VE MRAM AY
Appendix B
Findings of Fact and Conclusions of Law.
Subject Matter of Litigation
5. This litigation is concerned with a combination
patent in respect to a plant for the manufacture of sili-
con carbide.
6. Silicon carbide (chemical formula SiC) does
not exist in nature. It was first made and discovered by
Edward Acheson in 1891 and was named “carborundum”’
by him. It is the reaction product of silica (SiO») and
carbon (C). The reaction is brought about by subjecting
a charge consisting essentially of sand and coke to terri-
fic heat (about 4,000°F.) produced by an electric cur-
rent, for a prolonged period of time (about 30 hours).
Acheson organized The Carborundum Company, defend-
ant herein, in 1891 to exploit his discovery. The basic
patent on carborundum and its manufacture (Patent
No. 492,767) issued on February 28, 1893, and was re-
issued on February 26th, 1895 (Patent Re. 11,473).
Carborundum, next in hardness to the diamond, has
remarkable abrasive properties, and it was originally
exploited by Acheson and defendant as an abrasive.
Other large industrial uses were subsequently developed,
e.g., aS an ingredient in refractory products, as a deoxi-
dizer for molten steel and as an additive fuel in basic
oxygen steelmaking.
7. After the Acheson invention, others entered
upon the manufacture of silicon carbide in competition
with defendant, but defendant is and always has been
the largest silicon carbide manufacturer on the North
American continent probably equal to all the rest com-
bined. So far as the record discloses, until April, 1966,
when plaintiffs’ “Satellite’ Plant (hereinafter de-
scribed) went into operation, all silicon carbide manu-
3la
me rrannasate ~~! SBIR BS RIA ream on a eR
SE NOE LOE MR LE 2 RE. PFET I Aa aatae Re PS Bihan PO owe ie
Appendix B
Findings of Fact and Conclusions of Law.
facture in North America had been in stationary, hori-
zontal, trough-like furnaces built close to one another
(about 15 feet) and arranged in “banks” of four to six.
8. The raw materials used and the furnacing
process practiced today for the manufacture of silicon
carbide are essentially the same as those disclosed in
the early Acheson patents. Practices in mixing the in-
gredients have been progressively improved. Materials
handling equipment, i.e., mechanical equipment for load-
ing and unloading the furnaces, has been devised and is
in common usage. The charge consists essentially of a
granular mix of sand, coke and recycled “old mix” sep-
arated from previous runs. An electrical resistor con-
sisting of a granular mix of coke and graphite is buried
in the charge and extends from one end of the furnace
to the other. The necessary heat is generated by passing
an electric current through the resistor, causing the
charge material immediately around the resistor to re-
act. The furnacing of a charge takes about thirty hours.
After the current is turned off, the furnace has to stand
for about three days before it is cool enough for work-
men to unload (‘strip’) it. After stripping, a new
charge is built up in the furnace. Stripping and loading
require the presence of workmen at the furnace site. A
cycle of operation of each furnace in the bank takes five
to seven days.
9. The plant area is necessarily large. The electri-
cal supply installation (transformer, leads to the furn-
aces, etc.) is expensive and must be used as continu-
ously as possible because of overhead charges and the
economics oi power rate structures. It cannot be used
continuously for a single furnace because of the down
32a
ee ER a
bo
(Se ne Re mete eae ee
Appendix B
Findings of Fact and Conclusions of Law.
time required for cooling, stripping and loading. The
furnaces are therefore arranged in banks, each of whose
furnaces is supplied in turn with the current from a
single transformer. The leads from the transformer
to the several furnaces in the bank are kept as short as
possible out of consideration of capital cost and power
losses Which inevitably occur if the leads are lengthened.
This requires that the furnaces in the bank be located
close together. The loading and stripping operations
are carried out in close quarters under adverse condi-
tions created by the firing of nearby furnaces from
which carbon monoxide, carbon dioxide and suiphur are
evolved. If a furnace has to be repaired, the repairs must
be made in situ while the power to the furnace is off
10.) There has always been a need in the industry
for a more facile, economical and efficient way of mak.
ing silicon carbide.
11. Plaintiffs were classmates in Metallurgical En-
gineering at the University of Pittsburgh (class of
1940} and since 1948 they have been partners in vari-
ous enterprises related to the iron and steel industry.
Commencing in or about 1950, they went into the busi-
ness of collecting “scrap” silicon carbide, e.g., the butts
of worn-out abrasive wheels, and crushing and packag-
ing it for metallurgical uses. Their venture was success-
ful, and they soon encountered a shortage of scrap ma-
terial to salvage and had to fill this requirement by pur-
chasing waste material and new product from silicon
carbide manufacturers. The cost was higher
12. In or about 1954, plaintiffs concluded that they
would have to manufacture silicon carbide if they were
to continue in the business they had built up. Having
33a
_—
ie
SENS CE LORS ne eh BS I SO A FE CN aR a SO A ale FAECES in a Ne SS a ES SE PES OS Be ES
Appendix B
Findings of Fact and Conclusions of Law.
some knowledge of the Acheson-type plant and its cost-
liness, plaintiffs between 1955 and 1963 expended more
than $200,000 in a series of studies and experiments to
find a new process. They experimented with vertical
shaft furnaces, traveling grate furnaces, fossil-fired gas
furnaces, plasma jet furnaces, and a number of other
furnaces. They employed engineers who were knowl-
edgeable in the relevant technology. None of these ef-
forts was successful.
13. Plaintiffs concluded that they would have to
build an Acheson-type plant, as everyone in the industry
had done from the beginning. Upon making inquiries of
the Blaw-Knox Company, which had built The Carbor-
undum Company’s plant at Vancouver, Washington, in
the early 1950’s, they received estimates of the cost of
such a plant, and the estimates ranged from $2,000,000
to $3,000,00 for a plant capable of producing 6,000 tons
annually to $3,500,000 for a plant capable of producing
8,000 tons annually. Such costs for a plant were prohibi-
tive for plaintiffs.
14. Late in 1964, plaintiffs conceived the inven-
tion of the patent in suit. The invention was completely
reduced to practice in early April, 1966, by the construc-
tion of plaintiffs’ Satellite Plant at Springdale, Pennsyl-
vania, and the commercial manufacture of silicon car-
bide therein beginning April 6, 1966.
15. On November 3, 1965, before the Satellite Plant
was completed, plaintiff Knapp, in initiating efforts to
obtain patent protection, wrote to patent counsel as set
forth in DX-20.
16. After the Satellite Plant went into operation
in 1966, plaintiffs’ patent counsel saw the plant and
. 6 QiRRR aR ad eA RETR EERIE ERAN 19 BANE 0 AE OR TON OM
* ——
BN on hb VN AEE AA CNL (EAMETS STI A BAS
Appendix B
Findings of Fact and Conclusions of Law.
then proceeded with the preparation and filing of the
application which eventuated into the original Patent
No. 3,432,605.
17. Shortly prior to March 6, 1969, plaintiffs
learned that Carborundum was planning to build a fa-
cility at Jacksboro for making silicon carbide. Prior to
August, 1969, plaintiffs had knowledge that the Jacks-
boro facility was to be a mobile furnace type and that a
turntable was to be used in the Jacksboro facility.
18. In August, 1969, Bolkcom and Knapp met with
their patent counsel and discussed the fact that Carbor-
undum was going to use a turntable, and they concluded
that the significance of their patent should be carfully
explored in regard to alternate forms of transfer me-
chanism.
19. In October, 1969, a decision was reached to file
a reissue application in an attempt to cover alternate
means to the transfer car setup described and illus-
trated in the original patent. These alternate means
were turntables, ladder tracks and overhead cranes. The
application for the reissue patent was filed on Novem-
ber 20, 1969.
20. Shortly after the filing of the reissue applica-
tion, plaintiffs’ patent counsel, in a letter to his Cana-
dian associates in regard to the purpose of the reissue
application, stated:
“Our client has just filed a reissue application
in the United States on the United States patent
corresponding to the above identified Canadian
patent. The purpose of the reissue is to enlarge the
claims. They have found that a turntable and sev-
DSN SE I To A Nae ke COUNT A Me ~? nays os pa OE a
i1ROU GH
Appendix B
Findings of Fact and Conclusions of Law.
eral other mechanisms c2zn be substituted for the
transfer car of the issued claims and feel that the
transfer car limitation is too limiting.”
On the same date, plaintiffs’ counsel stated substan-
tially the same thing in a letter to a New York patent
firm.
21. The reissue patent in suit, Re. 27,018 was
granted on January 5, 1971, and the Complaint in this
action was filed by plaintiffs in April, 1972, about one
year after the Jacksboro Plant of Carborundum was
placed in operation.
The Patent in Suit
22. The patent in suit discloses a new combina-
tion of elements which incorporates four essential con-
cepts. The concepts are (i) a multifurnace firing area
with stations for independently firing the several fur-
naces, these stations being close enough to one another
to minimize the capital cost and electrical operating
cost; (ii) a service area remote from the furnacing area
and having a stripping station and a separate loading
station, where the stripping and loading operations can
be carried out, free from the crowded and adverse con-
ditions of the firing area and the pollutants present
there; (iii) mobile furnaces so constructed and ar-
ranged that they can be moved from one station to an-
other with their loads intact, and emptied at the strip-
ping station; and (iv) a transversely moving transfer
car which enables the operating personnel to put any
furnace selectively through its full operating cycle —
loading, furnacing and stripping — without having to
move another furnace from the firing area or interrupt
the operating cycle of any other furnace in any way.
Pi CAL BRO APPEARED ORAM A EN NAD SS LOGS EINES
Appendix B
Findings of Fact and Conclusions of Law.
23. The specification and drawings of the patent
in suit are based upon and accurately illustrate and de-
scribe plaintiffs’ Satellite Plant. They do not illustrate
or describe any transfer means other than a “transfer
car movable on a trackway extending transversely to the
main trackway.” The specification and drawings of the
original patent and of the reissue patent are identical.
24. The patent in suit discloses a specific plant
layout for manufacturing silicon carbide in movable
furnaces. In the layout, a furnace car is positioned on a
trackway adjacent to a transformer and electrodes
carried in the end walls of the furnace car are con-
nected to the transformer. The charge of silica and
carbon is fired to form silicon carbide, and the elec-
trodes are disconnected. The furnace car is then moved
on to a transfer car which carries a trackway which
may be aligned with any trackway in the furnacing
area. The transfer car has wheels which run on tracks
which extend transversely to the trackways in the
furnacing room and the trackways in the servicing area.
The transfer car is then moved so that the trackway
thereon registers with a trackway on the stripping floor
and the furnace car is moved onto that trackway. At the
stripping station, the sides are removed and the silicon
carbide and any unfired charge material are pushed off
the bottom of the car. The car is then moved back onto
the transfer car and is moved to a point where the
trackway on the transfer car is in alignment with a
trackway on the loading floor. The furnace car is moved
to the loading station where it is charged. The furnace
car is then moved back onto the transfer car, which
is moved into alignment with a desired trackway in the
furnacing area. The furnace car is then moved adjacent
—SSe—eaaea aS — LEE eae SSS.SaaaeaeaaaaQ_a_—MMeamae” a --.-_-:
Appendix B
Findings of Fact and Conclusions of Law.
to a transformer where the electrodes are connected and
the charge is fired.
25. Each furnace car has removable side and end
walls, but the end walls remain in place during all of
the operations mentioned above. The side walls are
formed in panels or sections and at the stripping sta-
tion the side panels are lifted from the furnace bottom
so as to provide access to the fired charge so that it
can be readily removed.
26. The specification describes and the drawings
illustrate only the utilization of a transfer car with a
trackway on the upper surface thereof, the transfer
car being movable back and forth on a trackway which
is located in a pit and which extends transversely to
the trackways in the furnacing area and in the serv-
icing area.
27. During the prosecution of the application
which eventuated into Patent No. 3,432,605, the paten-
tees represented to the Patent Office in distinguishing
over the prior art that their “new combination” which
they claimed included a main trackway adjacent a
power source, a furnace car movable on the trackway,
removable side and end panels on the car, electrode
means in each end panel, “a transfer car movable trans-
verse to the main trackway and carrying a correspond-
ing trackway adapted to be aligned with the main
trackway,” a service area spaced from the main track-
way by the transfer car, a secondary trackway in the
service area, and an unloading and loading means in the
service area.
28. After the claims were rejected by the Patent
Office on certain prior art, in an Amendment dated
38a
Appendix B
Findings of Fact and Conclusions of Law.
November 7, 1968, in distinguishing over the prior art,
the plaintiffs pointed out that there was “no transfer
car” as called for in the claims disclosed in the prior
art, that there was “no transfer means receiving the
car and moving it transversely to the main trackway”
and that the prior art did not disclose a “transfer car
moving transversely of the main trackway.”
29. The patent in suit contains 14 claims. Claims
1-10 inclusive appeared in the original patent, No. 3,-
432,605, and claims 11-14 inclusive were added by reis-
sue. Claim 1 is representative of the original claims. It
is for a combination of 15 elements and it states their
inter-relationship in detail. Stated in diagram form it
reads as follows:
A silicon carbide manufacturing plant compris-
ing—
(1) An electrical power source,
(2) a main trackway adjacent said power
source,
(3) a furnace car movable on said trackway
to and from said power source,
(4) a refractory bottom on said car,
(5) - (6) removable side and end panels on
said refractory bottom of said furnace
car,
said side and end panels being intercon-
nected to form a heating chamber on said
car,
(7) electrode means in each end panel,
(8) removable connections between said
power source and electrode means,
39a
EEE eon hs S i Ae LO LAO LEE ETE SLOT REI LOE CALC Ne AGES IS z AN A tee UI Te th EF ITE ERE EO te BRR
Appendix B
Findings of Fact and Conclusions of Law.
(9) a transfer car movable on
(10) a trackway extending transversely to the
main trackway,
(11) said transfer car carrying a trackway
corresponding to said main trackway and
alignable with the main trackway receiv-
ing the furnace car therefrom,
(12) a service area opposite the main track-
way and spaced from said main trackway
by said transfer car,
(13) a secondary trackway on said service
area receiving said furnace car from said
transfer car trackways,
(14) loading means in the service area for
loading said heating chamber while on
said secondary trackway,
(15) and an unloading section in said service
area spaced from the loading means and
receiving a completed furnace charge
from said furnace car.
30. Each of claims 1-10 is limited to the use of ‘“‘a
transfer car movable on a trackway extending trans-
versely to the main trackway” (elements (9) and (10)
of Finding 29). Claims 11-14, added by reissue, are
broader; e.g., claim 11 calls for “transfer means” be-
tween the first and second trackways selectively deliver-
ing a furnace car from one to the other. The stated rea-
son for the presentation of claims 11 to 14 in the reissue
application was that the claims of the original patent
did not adequately define the invention.
40a
Appendix B
Findings of Fact and Conclusions of Law.
31. The Complaint and Answer herein placed in
issue the validity of all the claims of the patent in suit.
Plaintiffs charge infringement of claims 1, 3, 4, 5, 9 and
11-14 inclusive.
The Validity Issue
32. The patent in suit is a combination patent — a
patent on a combination in respect to a manufacturing
plant.
33. Such a combination as that covered by the pat-
ent in suit does not lend itself readily to any spectacular
or extraordinary or unexpected result; but if such
rather prosaic combinations are susceptible of such,
then this is one of them; that is, this is a combination
in which the product exceeds the sum of the individual
elements.
34. It is an oversimplification to say that the
heart of plaintiffs’ invention was selectivity. It per-
mitted facile and unencumbered selectivity to permit
the treatment in various stages of the material involved
in the manufacture of carborundum.
35. It is both an oversimplification and an accur-
ate statement to say that part of the invention was non-
orbital treatment in the course of the process and the
utilization of the plant layout, but again plaintiffs did
invent a new and novel combination which was useful,
which was not anticipated by the prior art, and which
was not obvious within the contemplation of £103.
36. The sine qua non of the invention is selectivity,
whereby without any interference with any particular
furnace other furnaces in plurality may be moved from
4],
oF | AS aid 282 RNAS AS RS Ate ER AME BO NOM BENE ARR 5 MALE f SE Ri ARAN ABR PIE POD
owe
Appendix B
Findings of Fact and Conclusions of Law.
the furnacing area into the processing area and re-
turned. This is a rather simple thing, but a very signifi-
cant thing within narrow limits.
37. The prior art patents and printed publications
relied upon by defendant are:
Haugh et al. No. 251,341 dated December 20,
1881 (DX-50)
Van Wagnen No. 492,049 dated February 21,
1893 (DX-51)
Tone No. 800,515 dated September 26,
1905 (DX-52 and
52A )
Bayard No. 1,107,478 dated August 18, 1914
(DX-53, 53A-C)
Koppers No. 1,674,985 dated June 26, 1928
(DX-54 and 54A)
Lloyd No. 2,504,707 dated April 18, 1950
(DX-55 )
German Demag No. 854,207 published February
21, 1952 (DX-56,
56A-B)
The Making, Shaping and Treating of Steel (1964 ed.),
pp. 702-703 (DX-57)
None of this prior art was before the Patent Office when
it considered the original application or the reissue ap-
plication eventuating into the patent in suit.
38. Defendant also relied upon internal reports
circulated within The Carborundum Company and
known to many of Carborundum’s personnel relating to
mobile furnace plants for manufacturing silicon carbide.
These are as follows:
| Saapeacanare - Sapien MS CAaO REA. BPO DA I ST -: COG MBSR PS IR VMN Ted MAS NES
Appendix B 43a
Findings of Fact and Conclusions of Law.
Staff Engineering Report entitled ‘Proposed New
SiC Furnacing Facility with Movable Furnace
Bed” dated in 1955 (PX-25; DX-58)
Memorandum Golding to Gilbert dated in 1960
(PX-42)
Special Report entitled “New Concepts in SiC Furn-
ace Design” dated June 22, 1965 (PX-26; DX-
59)
These reports were not published and not available to
the public generally and were not before the Patent Of-
fice.
39. In view of the content of the specification and
drawings of the original and reissue patents, the repre-
sentations made to the Patent Office, and the prior art,
plaintiffs’ invention must be narrowly construed and,
indeed, was narrowly accepted by the Patent Office in
the context of the transfer car system.
40. In a crowded art, the plaintiffs’ invention, as
reflected in the original application, represented a small
step but a significant step beyond the art and a step
that was not obvious in view of the art, whether dis-
closed or undisclosed. There is nothing in the prior art
which would render plaintiffs’ invention obvious.
41. The disclosures of the Bayard Patent and the
German Patent No. 854,207 did not render the plaintiffs’
patent as interpreted by the Court anticipated or obvi-
ous.
42. When narrowly interpreted, plaintiffs’ inven-
tion was not obvious to the Carborundum employees;
and the rationale of the Examiner’s determination of
Appendix B
Findings of Fact and Conclusions of Law.
patentability would continue in view of the additional
prior art when the invention is narrowly interpreted as
stated herein.
43. Up until the time of the plaintiffs’ invention,
the defendant’s ideas appeared practical, promising and,
at least in the defendant’s judgment, novel. Yet, realis-
tically, in view of the plaintiffs’ disclosure and the dis-
closure of the Jacksboro Plant, these other ideas seem
somewhat cumbersome and primitive.
44. Having before them the concept of mobile
furnaces, of transfer cars, of every other idea suggested
by the prior art, defendant’s experts did not come up
with the invention until it was made and reduced to
practice by plaintiffs.
45. The experts of the companies with the great-
est experience in this field did not come up with the
plaintiffs’ combination until plaintiffs had developed it.
46. The plant layouts which defendant had prior
to the time its agents viewed plaintiffs’ plant are apt
examples of combinations in which the _ product
amounted to the total of the constituent parts.
47. The original Bolkcom et al. Patent No. 3,432,-
605 makes no mention of any transfer arrangement
other than that shown in the drawings and specifically
disclosed in the specification and defined in the claims
thereof. There is no support in the original Bolkcom
et al. application or patent for any transfer arrange-
ment other than one employing the transfer car and the
transverse track arrangement shown, described and
claimed therein. The original patent and the representa-
tions made to the Patent Office in the procurement
44a
iy
Appendix B
Findings of Fact and Conclusions of Law.
thereof show that the patentees did not intend to cover
or embrace any transfer arrangement exeept one em-
ploying a transfer car and trackways for the transfer
car extending transversely, to the main trackway in the
furnace area and the secondary trackway in the servic-
ing area.
48. The claims added by reissue, i.e., claims 11-14,
inclusive are broader than the original claims; they are
not supported by the specification and drawings of the
original patent and constitute an unauthorized enlarge-
ment of the disclosures of the patent.
The Infringement Issue
49. Plaintiffs charge defendant with infringement
of the patent in suit by reason of defendant’s ownership
and commercial use of a mobile furnace silicon carbide
manufacturing plant at Jacksboro, Tennessee.
50. The Jacksboro Plant has a firing area spaced
apart from a stripping area, a cylinder cooling area, a
maintenance area and a charging area. A turntable in a
circular pit lies between the firing and the loading and
stripping areas. The turntable rotates on a centrally lo-
cated pivotal support and has wheels running on a circu-
lar track near the periphery which provides peripheral
support to the turntable. The turntable has a trackway
which is alignable with trackways in the firing, loading
and stripping areas. The trackways in these areas radi-
ate from the periphery of the pit. A furnace may be
moved from one area to another by first aligning the
track on the turntable with the trackway in that area,
moving a car furnace by means of a locomotive onto the
trackway on the turntable, rotating the turntable into
45a
Appendix B
Findings of Fact and Conclusions of Law.
alignment with the desired trackway and moving the car
furnace from the turntable onto that trackway.
51. The Jacksboro Plant does not embody a trans-
fer car arrangement. A turntable is a distinctly differ-
ent mechanism from a transfer car.
52. The turntable employed by defendant was
never disclosed or taught to be a part of plaintiffs’ pat-
ented combination. If it were deemed to be within the
reach of the patent or an inventive idea, it was dedicated
to the public domain by failure to claim it, and by ex-
pressly, in the patent application itself and by repre-
sentations to the Patent Office, limiting the invention
specifically to the transfer car system.
53. The turntable system employed in the Jacks-
boro Plant of defendant is not the equivalent of the
plaintiffs’ invention whether considered in gross or
whether the turntable device is specifically compared
with the transfer car arrangement.
54. Defendant’s turntable system does not accom-
plish the same result in the same way; and it is an es-
sentially different means since no transfer car is used.
55. Defendant’s turntable arrangement and the
arrangement shown in the patent in suit are not essen-
tially the same — there are important differences.
56. The expressed and essential nature of the
plaintiffs’ invention as disclosed by the specification and
by the claims as well as the file history require the con-
clusions just stated.
57. There is no infringement of any claim of the
patent in suit by Carborundum’s Plant at Jacksboro,
Tennessee.
46a
Appendix B
Findings of Fact and Conclusions of Law.
The Unclean Hands Defense
58. Even though it discloses mobile furnaces for
the manufacture of silicon carbide, the Bayard Patent
does not render the claims of the patent in suit invalid.
Hence, the failure of Mr. Buell to call the Bayard Patent
to the attention of the United States Patent Office when
he learned of it by reason of its having been cited
against a Norwegian application does not render the
patent in suit unenforceable.
59. At least to the minimal that could be expected,
there has been a showing that the Bayard Patent could
not be regarded as significant or determinative.
60. Counsel for the applicants out of circumspec-
tion should have disclosed the Bayard Patent to the Pat-
ent Office. However, the defense of lack of clean hands
has not been made out by a clear preponderance of the
evidence or by clear and convincing evidence.
CONCLUSIONS OF LAW
1. The Court has jurisdiction over the parties and
the subject matter of this civil action under 28 U.S.C.
1338(a) and venue is properly laid in the Eastern Dis-
trict of Tennessee, Northern Division, under 28 U.S.C.
1400(b).
2. There is pertinent prior art before this Court
which was not considered by the Patent Office during
the prosecution of the applications leading to the origi-
nal and reissue patents. As far as that prior art is con-
cerned, the presumption of validity (35 U.S.C. §282)
has been completely dissipated; but looking at the mat-
47a
oo a ye Bi neh te
Appendix B
Findings of Fact and Conclusions of Law.
ter realistically the Court concludes that invalidity is
not established as a matter of law and obviousness is not
established as a matter of fact. Quite to the contrary.
3. The patent in suit satisfies the legal require-
ments of 35 U.S.C. 101. The combination is such that
the product exceeds the sum of the individual elements.
The claims are for a new and useful combination that
comes within the statutory class of a “manufacture”.
4. The patent in suit satisfies the legal require-
ments of 35 U.S.C. §102. The claims are not anticipated
by any of the patents and publications cited or relied
upon by defendant or by any of its own internal reports.
5. The Court concludes that in a crowded art the
plaintiffs’ invention, as reflected in the original applica-
tion, represented a small step, but a significant step, be-
yond the art and a step that was not obvious in view of
the art whether disclosed or undisclosed to the Patent
Office. Hence, the patent in suit satisfies the legal re-
quirements of 35 U.S.C. $103.
6. If the plaintiffs’ invention were so broadly in-
terpreted as to read upon the turntable system employed
in the Jacksboro Plant, the Court would have grave
doubts as to its compliance with $103.
7. Defendant has not sustained its burden of proof
of establishing invalidity of claims 1-10 of the patent in
suit, when the claims are narrowly interpreted to cover
the specific transfer car mechanism described and illus-
trated in the patent, and these claims of the patent are
adjudged valid.
Wa
ho
Appendix B
Findings of Fact and Conclusions of Law.
8. Claims 11-14, inclusive, of the patent in suit
fail to comply with the requirements of 35 U.S.C. §251
in that they are not addressed to the invention disclosed
in the original patent and constitute an unauthorized
enlargement of the disclosures of the patent and are in-
valid.
9. Since a turntable was not disclosed or taught as
a part of the patented combination and in view of the
prior art and the representations made to the Patent
Office and the patent application itself tying the inven-
tion to the transfer system specifically, plaintiffs are in
no position to claim that the Jacksboro installation con-
stituted an infringement of the patent in suit.
10. Plaintiffs have not sustained their burden of
proof of infringement, and the defendant’s accused
plant is held not to infringe any claim of plaintiffs’ pat-
ent.
11, The turntable system at defendant's Jacksboro
Plant is not the equivalent of the plaintiffs’ invention,
whether considered simply in gross or in general, or
whether the turntable device is specifically compared
with the transfer car element.
12. Defendant has the burden of establishing the
defense of unclean hands by clear and convincing evi-
dence.
13. The Bayard patent was not significant to or
determinative of the patentability of the patent in suit
and there was no burden on the plaintiffs to cite the
Bayard Patent to the attention of the Examiner.
Appendix B
Findings of Fact and Conclusions of Law.
14. Defendant has not sustained its burden of
proof to establish the defense of unclean hands.
United States District Judge
Approved as to form:
J. W. BAKER
WALTER J. BLENKO
THOMAS L. SIVAK
Attorneys for Plaintiffs
E. BRUCE FOSTER
WILLIAM H. WEBB
Davip C. BRUENING
Attorneys for Defendant
50a
sap PCTECAECA EP
Judgment.
Judgment
AND Now, to wit, this 14th day of March, 1973, the
Court having considered all issues of validity, enforce-
ability and infringement of plaintiffs’ Patent Re. 27,018
in suit and having entered its findings of fact and con-
clusions of law thereon, holding inter alia that defendant
has not infringed said patent, it is hereby
ORDERED, ADJUDGED AND DECREED that the Complaint
be and hereby is dismissed.
And it is further ORDERED that each party shall bear
its own costs.
A. SHERMAN CHRISTENSEN
United States District Judge
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Appendix C 56
UNITED STATES PATENT OFFICE
CERTIFICATE OF CORRECTION |
Reissue No. 27,018 January 5, 1971
Patent No. Dated
Wilbur T. Bolkcom et al.
Inventor(s)
It is certified that error appears in the above-identified patent
and that said Letters Patent are hereby corrected as shown below:
Column 1, line 23, "nd" should read -- and --. Column 2,
line 38, "1l6a'"' should read -- l6a --; line 57, ''ll6a"' should
read -- l6a --. Column 4, line 29, after "claim" insert -- 1 --.
Signed and sealed this 25th day of May 1971.
(SEAL)
Attest:
EDWARD M.FLETCHER,JR. WILLIAM E. SCHUYLER, JR.
Attesting Officer Commissioner of Patents
a a al ee ae
iE STE LE ENED OEE LEE TELL LLL LAE LD DLLEALE LEVEE IEA ONE
1
27,018
SILICON CARBIDE FURNACES AND PLANTS
Wilbur T. Bolkcom, Pittsburgh, Pa., and William F.
Knapp, Allison Park, Pa., (both ©“ American Metal-
lurgical Products Co., 9800 McKnight Road, Pittsburgh,
Pa. 15237)
Original No. 3,432,605, dated Mar. 11, 1969, Ser. No.
618,034, Feb. 23, 1967. Application for reissue Nov. 20,
1969, Ser. No. 878,283
Int. Cl. HOSb 3/02, 3/62
U.S. Cl. 13—20 14 Claims
Ma
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