# Petition for Writ of Certiorari — Williams Manufacturing Co. v. United Shoe MacHinery Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386403_0031%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1942 - **Citation:** 316 U.S. 364 ## Text ie li iiaia Si tas icine ‘ in the meres Court of the United States OCTOBER TERM, 1941. Tk Cle oe THE WILLIAMS MANU FACTURING COMPANY, ees Petitioner, ; VS. UNITED SHOE MACHINERY CORPORATION: ae es so tee | eee: a . sé . PETITION FOR WRIT OF CERTIORARI: | To the —— Circuit Court of Appeals _ For the Sixth Circuit, and ep BRIEF IN SUPPORT OF PETITION. re LLL TE a * YH. A. Toutmiy, Jr., Mutual: Home Building; / - Dayton, Ohio, ae | | Attorney for Petitioner, | Janes B. O’Don NELL: uA. TovLMIN, | as coe nn Se é H. A, =, OULMIN, J Re ay Pi Rowax.A. GREER,: ve : SEA Lae Of t Counsel _ | INDEX. PETITION FOR, WRIT OF CERTIORARI. ......0.000.205 Summary and Short Statement. piseeeaae ce ks Sone . _ The Decision: of the District Court. cheers pela The Decision of tlie Court of Appeals. ia cues pee Reasons Relied Upon for the Allowance of: the Writ! Extension of Expired } Monopoly. Reisinger eyees ‘Aggregation: Extensioy ‘of Monopoly. Pay sks _ Commercial Success - of Prior Art: ‘Unnecessary: for . Anticipat OP picccouers ea Puree eda ee ee Diversity of Opinion Below: -No Other Opportunity = to Present ‘the Case.............-- seeder es wee | ~ Public Importance een prahays Pere’ 7 hare trees eta y pet tity : ° ’ Prayer ......: Sea eek eek Ay ae aes pete tee beet ences BRIEF IN SUPPORT OF PETITION FOR WRIT OF CER. WIGRARE. ... /0.3....533: ee. ope Coe Meee yaa - The Opinions of the Courts Below. we ee neee ae obese Jurisdiction ...:..... Ce eis eae ae Statement of the Case.:..\,... RE SURWENTA cos otcce cess Specification of Errors..... GUE arr Ohe Ss Sate Hoe The Issue Be er dacs ae : eae Summary of the Argument. : jekanec were 5d Saar ae men wey Nevers: eater ee PORE | Point I? The Mealy adtate 4 are ‘substantially identical except for three ee adjustments, _themselv We Oe Sh SN AGE oie bo we evs ee shoes ; Point IT. Aggvegation: ‘Another Form of an ke . _ tempt to Repatent Expired Old Combinations. . Point ITT. Commercial Success § is not Essential to Anticipation by a Prior WIE ied ce nea Fs oe ~ Point IV. ° Div ersity | of Opinion een “Sput pee Point V.- Public Importance | . « . oe O-8 2 & 6.0 6 ma0, Vol. ie . ; { ee eee A U.. Hidepoadent has placed 1200 machines with shoe manv- facturers. The » issue of the-control by a patent of these ~ expensive and coniplicated: machines, which constitutes -one of the major expenses of making shoes, is. of great public - * interest. (R. Vol. 1, p. 124, Ax 6; Ib. 399; Ib. 483.) | The differences claisfed by’ respondent as to the second McFeely patent over: ‘the first to enable tlfe oe TMmachine 2. to operate.on a greater range of sizes are: e. (a), ‘Means. for preliniinary adjustment of ~the "wipers. or tackers to accommodate a greater variety » ° of sizes of shoes. (Old in prior art patents, R..Vol. 2, pe. 114, 122,134, 140, 222, 238, 240.) / (b) Shding heel band adjustment for the in and . -out movement. of the shoe. (Old -in prior art patents, see 3 Vol. 2, ‘pp. 114, 122, 134, 172, 384, 440.) (e) Means for adjusting tte amount. of vértical : - - movement of the hold-down fot the adjustment of the height of the shoe in the machine. (Old in prior art. ‘patents, R. Vol... 2, pp- 232, 440.) / : . These three adjustments. are old per se in ‘this art and have been used-in numerous heel U seat lasting mae ‘hines shown i in the above ss obs patents “The Decision of the District Court. The ‘District Court held hath . patents. valid and, in-. afringed, and that the improvements . and adjustments ot the second McFeely, included;in the claims to the broad combinations, entitled respondent | : ‘ a | . Tue Witiiams. Maytracrurine Company,. * By H. A..Tovutmin, Jr., . ae Attorney for Petitioner. JAMES B. O’DonnELL, tor cA RR os peers H. A. Tourn, JR, ; Row AN A. GREER, © Of Counsel. a Be 6 sibcdeam all Pj » % . y notes - . > . . o ¢. - “a —_— « . . . ‘ a oa . e- | meee, 2 a | BRIEF IN SUPPORT OF PETITION _ FOR WRIT OK CERTIORARI. : THE OPINIONS OF THE COURTS BELOW. The opinion of the District Court is, found on pages 477 to 485 Vol. 1 of the record. The opinion. af the — Court of Appeals (Circuit Judges Simons, Hamilton-and Martin, Judge Simons writing and Judge Hamilton), dis- - senting) appears.at pages ‘502 to 513, Vol. 1, of the record. _. This opinion of the Circuit Court of Appeals for the Sixth: ~ Cireuit is not yet reported. 3 0 {ee = JURISDICTION. . The decree of the Pireuit Court of Appeals was en- tered June 25, 1941 (R. 501, Vol: 1) and the opinion was filed June 27, 1941 (Ib. 502). The statute giving jurisdic- © tion is 240-A of the Judicial Code 8’ U. S. Code, See. 347). The judgment was rendered if a suit in. equity brought — “under the patent statutes to d perigine the validity: of Let- ters Patent of i invention. : : _ The cases believed to sustain jur badiclien are: & ' Cities Service v. Dunlap, 308 U. 8. 208 ; 3 Schriber Co. wv. Cleveland Trust, 305 U.S. 47 ; _ Mackay Radio & ae Co. v. Radio Corp. (306 - hi eee A ‘Rassicd v. Hollingshead, 298 U. S. 415; Lincoln v. Stewart Warner Corp., 303 U.S. 545; Leitch Mfg. Co. v. Barber, 302 U. 8. 458; ae Altoona Publix v. American TriErgon, 294 U. S. 477; : | Carbice v. ae rican Patents, 283 U.S. 27; De Forest Radio v. General Electric, 283 U..S. 664. . es - 10 tee : : STATEMENT OF THE CASE. ‘he The foregoing ‘petition.contains a summary of the ma- terial facts necessary to an understanding of the reasons relied upon for the allowance of the writ as well as the _ statement of the questions involved i in the case. | , _. . , SPECIFICATION OF ERRORS. _—_... * The specification of errors herein relied upon are those reasons set forth in tl® petition as grounds for its allow- ance. . | Ca ear! | Q ers aon. “THE ISSUE. The primary issue is extension of monopoly by-repat- ‘enting an old combination to redoininate’ a trade for another seventeen years, contrary to the principles an- nounced by this Court, in Bassick v. Hollingshead, 298 U.S. 415, and Lincéln v. Stewart Warner r Corp., 303 U. S. 545. , ; 7) . : SUMMARY OF THE ARGUMENT. : ’ The argument is summarized in the “Reasons Relied - Upon For The Allowance of The W rit”? found in the peti- tion. Briefly the’ argument 1 is: ade. The’ decision of ‘the Court. of Appeals herein wee with the decisions of this Court in Bassick ¢. _Hollingshead, 298 U. 8S. 415 and Lineoln. v- Stewart - Warner, 303 U. S. 545. The Court of Appeals general: type as that ~ illustrated in United States’ Letters Patent No. 1,129,881 granted upon my application on- March 2, 1915, in which type.of machine it is one of the Objects , of the invention to effect moticariebtranstanagt: ”? (p: 1, ll. 12. 3.3: . ments substituted for the old elements, as for instance, sub- stituting the tgvo-way adjusting mechanism for the heel “band | in the first McFeely patent for its heel band w ith the rubber cord, supports. The evil of the system of granting. and sustaining. pat- ents for a repatented combination from which there has been removed a more or less uneconomical ‘element’ and . substituting an old element which is more. effective, permits an endless extension.of monopoly, and’a permutation of the ‘possible combinations so that the’ patents secured are - 16 | endless 4 in number and never iy in scope. Respond- : ent in the case of the Hoyt patent in suit was held guilty of = : such extension. of monopoly: by the Circuit Court of Appeals “herein. "(R. 512-13, Vol. 1.) This practice enables an ener- gétic Patent Department of a great corporation like that: of respondent, through the sheer mass of such patents so se- cured by repatenting old monopolies, to make it impossible for any manufacturer of sltoes to do other than to comply _ by rental of its machines and thereby pay tribute t to such patents without end to the tribute. ‘ In Bassick v. H ollingshead, 298 U.S. 415, this 5 Court held that an old combination could not be repatented by im-. proving one.or more of the old ie ig Court said: . “It-is plain that Gullborg invent : of two of the. mechanical elements of an old combina-, tion consisting of grease pump, hose, hose-coupler, and a°grease cup or pin fitting. First, he contrived an im- “proved: pin fitting. This he patented as such (No. 1,307,733.) Secondly, he invented an improved form | of coupler to be attached to the end of the hose leading from the pump to the fitting. Instead of patenting this, as he did the pin fitting,,he claimed a combination: - of pump, hose-coupler, and pin ‘fitting, and embodied . in the combination his improved form of coupler... (No. 1,307,734, the patent in suit; claims 1-6, 8 and 10.) ‘ He further claimed the combination between his patented tting ana any form of grease gun whether that . _ ¢e¥med in his’patent.or unpatented. and old in the art. . (Ciaims 14 and’ 15.) « The question then is whether, by this method, thé patentee, by improving one element of an old combination whose: construction and opera-. tion is otherwise unchanged, may, in effect, repatent.the old. combination by reclaiming i with the improved element substituted for the old element. That this can- not ‘be done is shown by numerous eases in this and other federal courts.‘’’ ( pp: ¢24- 12%.) ) | The Court of Appeals was reversed. , In Lincoln v. Stewart W arner, 303 U. S. 545, ‘iia is bare also held the patent invalid because the improvement was - In one part of an old combination. | improvements _.. @¢ 17. _«* * * The invention, if any, which Butler made - was an improvement in what he styles in his specifica- . tions the ‘chuck’ and in-his claim a ‘coupling member.’ It is not denied ‘that multi-jawed chucks had been used in industry and.as couplers in lubricating apparatus. Butler may have devised a patentable improv ement in such a chuck i in the respect that the multiple jaws in his device are closed over the nipple by the pressure, of the grease, but we think he did-no more than this. As we said of Gullborg in.the Rogers case, having hit upon this improvement he did not patent it as such but attempted to claim it in combination with other old elements which performed no new function in his - claimed combination. The patent is therefore void as claiming more than the applicant invented’ The mere aggregation of a number of old parts or elements which, im the aggregation, “perform. or produce no‘new or dif- ferent function or operation than that theretofore per- formed or produced by them, is not patentable. inven- tion.’ And the improvement of'one part of an old com- ., bination gives no right to claim:that improvement in combmation with other old parts which perform no new function in the combination. ' 8’? (pp. 549, 550. .Even though the anticipating patent struc. ture is not commercially successful, it is still an anticipation if it has already disclosed the prinviples of the invention to . | -,the’public. Likewise, reliance upon commercial success is an unsafe’ ground .to sustain a broad monopoly, and is only «resorted to in cases of doubt; but even then such proof can be rio substitution for a lack of invention Phi! prior art as in this ease. pe @ ee Textile. Machine’ ‘Works v. "Louis Hirsch Textile Mag ‘chines, Inc.; 302 U. S. 490-498-499; ?: ‘Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U. S. 464-474; cee | Altoona Publix Theatres, Inc. ¥. American Tri-Ergon - Corp., et al., 294.U. S. 477-486; DeForest Radio Co. v. General, Electric C9., 283° | U.S. 664; g * Se Grant v. Walter, 148 U.S. 547. 556. £} ti ee The Court of Appeals founded its decision on the con-. trary principle to that established by this Court;: that -is, that even if the anticipating structure operated success- fully, while the ‘machine of the patent in’ suit ‘was more _ commercially successful, then th¢re could be no anticipa- .- tion. This Court, in Smith v. James, ‘supra, however, held _ that commercial success is unnecessary, In: that ease this. “Court said as to the lonwid prior use: ie S| immaterial) ‘that his structure fbr using the » method was neither the ‘best possible nor as skilfully designed or used as that later employed by Smith.’ Pickering v. McCullough, 104 U. S. 310, 319; ef. Tele- phone cases, 126 U..8. 1, 931, 336.’* (p. 282 ) With refexence to the Hastings: Brooklfn and Musko- -: gee prior uses, this Court said: 7 , : ggcet * ‘the fact that both incubators functioncd, are con- ; vineing evidence that Hastitigs khew and used in ap- propriate combination, both in Brooklyn and in : ~ Muskogee, the essential elements of the Smith claim.’ (pp. 2382-3.) ° ‘‘He knew the method and used itina ‘devi ice éapatile ' of employing it. -In such circumstances want of com- mercial success, which-the record suggests may have been due to lack of technical and busitiess skill, is not an indication that. there was no prior use.’’ (p. 233. ) The first MeFeely patent: lasted heels exactly the same as the second McFeely. The onfgizlifference was that the. — -second McFeely could handle more sizes’ than the . first McFeely, but the lasting operation was. identical in both. It is, of course, immaterial that the second: McFeely’ did a more perfect job. - The first MéFeely, therefore, is .an anticipation of the second McFeely. S ee In Hildreth v. Mastorgs, 257 U.S. 27, 34, this Court said’ ey | ~ “Tt is not necessary, in order to sustain a\ generic _~, patent, to show that the device is.a commercial success. - ’ The machine patented may be imperfee} in its opera- 9 24° tion; but if it embodies the generic principle, and works, that i iS, if it actually and mechanically performs,. though only in a crude way, the important function by - ‘ which it makes the’ substantial change claimed for it in the art, it is enough. di As’ between the first McFeely and the second McF eely the. first is generic and the Court’ of Appeals’ found tliat -it ‘successfully-lasted shoes”’ but not. in as wide a range of commer¢ial sizes. -0l Lee ge Therefore, the “Gia of Aneeais erred i in disr egarding _ this Court’s dgcision to the effect that commercial success "is not a nécessary factor’to make,an anticipating machine. woe POINT IV. Diversity of Opinion. The ‘second McFeely | patent will expire m October, ee ee : ee : ‘There has been no cuits and none is likely to present itself, to secure diversity of opinion on the validity _of-the MeFeely patent No. 1,558,737. . Judge Elwood Hamnil- ton; however, dissented from the opinion ‘of the Circuit . Court of Appeals for the Sixth Circuit without w riting an opinion. ~~ eat 4 While there is no conflict of décision between the Cir- cuits, as to the McFeely patent in suit, but only a conflict of opinion between the Judges of the Sixth Circuit Court of: Appeals, yet the decision below conflicts with principles - established by this Court, and for that reason certiorari is sought. Ansaldo v. Rheinstrom, 294 U. S. 494; U. Sv. Constantine, 296 U. S. 287, 290; Paramount Publix Corp. v. American Tri-Ergon Corp.; 294 U. S. 464 ; Altoona Theatres v. American Tri-Ergon Corporation, 294 U. S.- 477; Mechanics v. Culhane, 299 U. S. 51, 53; Schriber- Schroth Co. v. Cleveland Trust Co., 305%. S. 47-61; Cities — . Service v. Dw lap, 308 U. S. 208; Mackay Radio v. Radio ~ Corp., 306 U. S. 86; Bassick v. Hollingshead, 298 U. S. - i“ ee bs 25 er | . 415; Lincoln v. Stewart Warner Corp., 303 U. S. 545; Leitch v. Barber, 302 U. S. 458; Carbice v. American Patents, 283 U. S. v4 DeForest Radio v. . General Electric, 283 U.S. 664. POINT V.. Public Importance. - 1200 of the machines invoYed in the McFeely patents, . - are under lease by the respqndent. (Vol. 1, R. 399, 483.) Automatic heel seat lasting is one of the icndaanontal fea- tures of shoe making. The tribute upon the shoe industry _ which mast inev itably be reflected in the cost of shoes, thereby very 5 avely affects the. public interest. Only’ wone with the el rest title to monopoly should have it under such circumstances. | | Respondent already stands condemned by the Cireuit ° Court of Appeals for the Sixth Cireuit for attempting to . extend its monopoly on this same mechanism in the Hoyt | ‘patent in suit No. 1,508,394. (R. 513, Vol. . ) The action of respondent, i in a a the application ii the Unittl States Patent Office of the second McFeely ‘patent in suit — for ten months and then reviv ing it, is another phase of what was heretofore the prev alent pr actice of . extending a | monopoly. This Court stopped one phase of such ‘a’ prac- tice in Bassick v. Hollingshead, 298 U.S. 415, and Lincolu v. Stewart Warner Corp., 303 U. 8. 545. Congress has re- cently rendered illegal the’ ‘practice of extending monopoly _ by abandonment and revival. U. S. C.-A., Title 35, See. 41, provides that a patent shall be withheld dies the final fee is paid within ‘six. months after the allowance of the application except that the Commissioner .in-his discretion may receive the final fee during the vear following the six month period. The large number of patents of this respondent, many of Ww hich are in this record, make it essential to the public | | interest that this vast monopoly over the shoe industry be | ° limited strictly:i in accordance with the principles announced _ by this Court. 8 ~ ‘i Dect ek 26 We earnestly submit that this Court should order y ‘this case to prevent this serious departure from the pri ciples. of the i iaw announced by it. - : uiaatiges sseeiitied, *. A. Tovtmiy, Jn., a Counsel: for Petitioner. James .B. O’DoNNELL, =| * oe sae ¢ H. A..Topv_min, . : =} ) a eee ek, ae ote *, Rowan A. GREER, seis ee UN. Of Counsel. be aS ep aes i Petone { v 2 e tees a . ‘5 a” ons ry . .P f-, ay. SARS ° Va P : ‘4 3 ¥ oe : fi 4 : : z dino ‘ $4 mn, & e --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386403_0031%3A3. Public record. Not legal advice.