# Transcript of Record — Shawkee Manufacturing Co. v. Hartford-Empire Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0012%3A1 ## Record - **Collection:** Supreme Court brief - **Document type:** Transcript of Record - **Published:** January 1, 1944 - **Citation:** 322 U.S. 271 ## Text OCTOBER TERM, 1943 No. 423~ La vs.- HARTFORD-EMPIRE COMPANY OF, APPEALS FOR THE THIRD CIRCUIT IN DEX. ‘Order allowing certiorari. .................2.0.0-0eeee. Poe . 2 Original Proceedings in U. 8. C. C.'A, Third Circuit. OF Ee fat ES Te 1 SEINE RES TE Cree 1 Petition for leave to file a bill WE GNII os ana snes tense sus 2 Affidavit of ‘William B. Jaspert in support of petition wee 12 ann at aa ke une ea cenabahesaa dns 14 Plaintiff's memorandum in opposition to petition for leave EVM ONO GOON. 6. 5c. 5 casino cauveccccscetdcss 20 Petition, brief and affidavit on behalf of U nited States of ; } Dmmerion an nmmloms CUTIOS. .... «622 o ionic ees ceees 47 _ Minute entry of hearing eine hh a ik hok sa ns tik ee eA eer 59 - Opinion, per curiam, denying pee for leave to file bill OE SERIES a dare ore tee ene 59 Amendment to petition and memorandum i in casi thereof 60 Reply rrr. errr Seer 64 _ Schedule ““A”—-Pertinent correspondence and exhibits.. 75 Schedule “‘B”—Chronology of important events in suit 90 . Minute entry of hearing on penrgumemt..........0...60:. . 8 IR Ms 5 5 ck Xig n ss Ss awd’ b newsetncn seeds 93 Dissenting opinion, Riggs, ps SS eae ae wee 104 Order denying petition to vacate dobry. fekea eee aaeeaan 119 ESCO TET COL, Le POO CPOE EE COTE 120 * Order extending time within which to file petition for certiorari. 120 SUPREME COURT OF THE UNITED STATES SHAWKEE MANUFACTURING COMPANY, GLEN. SHAW GLASS COMPANY, McKEE GLASS~ COM- mate AND GEORGE R, HAUB, ‘PETITIONERS, ON WRIT OF CERTIORARI TO THE UNITED STATES CIRCUIT COURT —-9483 Jupp & Derweirer (INc.), PRINTERS, WASHINGTON, D. C., DeceMBEB 16, 1943. 1 [fol: a] [Stamp :] Office of the’ Chi, Suprénte Court, ef S. Sep. 2, 1943. cae ___Ix THE Unxirep Srares-Cmevtr Corer OF “AprraLs FOR THE ‘Trip Cimevir - No. 5203 Suawker Merc. Co., et al., Defendants-Appellants, : _ VS... 2 i ~ Hartrorp-EMrire Comrany, Plaintiff-Appellee | Ene __ Pentinent Docket “Entries October 24, 1941. Petition for Leave to File a Bill of Review and- Affidavit of William B. Jaspert-filed. . * + October 24, 1941. Brief in Support of Petition: for Leave ‘to File a Bill of Review filed. \ October 31, 1941. Hartford Téstimony & Correspondence Referred to filed. December 5, 1941. Memorandum of -Plaintiff in * Opposi- tion to Petition for Leave to File-a Bill of Review filed. : December 5, 1941.. Affidavits and Exhibits of Respontient- Plaintiff Hartford Empire Co. ete. filed in 4414: _ December 5, 1941. Heard on Petition for Leave to File ~a Bill of Review etc. Coram: Biggs, Maris, Clark & Jones; | JS. December 5 5, 1941. Pétition of Uuited States to file Amicus Curiae Brief’ ete. filed—granted. | December 12, 1941.. Reply Memorandum of Petitions "YS, _ Chawkee Maniuf. Co. et, al., filed. December 29, 1941. Opinion Per Curiam Denying Pe- _titioi to File a Bill of Revi iew ete. filed. December 29, 1941. Copy of opinion to Wm. B. Jaspert. January 7, 1942. Amendment, to Defendants Petition. filed Oct. 24, 1941, and Supporting. Memorandum, filed. December 29, 1941. - Order Denying Prayer, of Petition _fot Leave to File Bill of Review in Distriet Court and Granting Leave to Otherwise Amend. the Praver of the Petition . filed. February 3, 1942. Reply to Aissendie Pe tition of Det tends - ant to Vacate Decree ete. filed. -* February 4,1942. Acknowledgment of. Servi ice of Reply to Amended Petition filed. : : 1—810¢ F —— —— — February 17, 194: 2. Brief for Respondent filed (Hartford . Emp. Co.): | : ae February 19, 1942. Acknowledgment of Service of Brief for Respondent filed.- Februafy 24, 1942. Brief in Support of Amended Peti- tiow for Rehearing ete. filed. . 2 February 24, 1942. Appendix to- Brief in Support of - Amended -Petition for Rehearing ete. filed. February 27, 1942. Reargved on Petition. for Leave to Filea Bill of Revi iew, Coram: Biggs, Maris, Clark & Jones JJ. March 4, 1942. ‘Affidavit of John S.- McCarthy. filed in No. 4414. -'s iors , March 16, 1942... Reply brief for Respondent Hartford ' Empire Co. filed. a: | -_ ~ March 11, 1942. 2. Acknowledgment of Service of Respond. . - ents Brief filed. . June 30, 1943. Opinion of the Court by Jones, J. filed. June 30, 1943. Dissenting Opinion by, Biggs, J. filed. - June 36, 1943. Order Denying Petition of Appellants to Vacate Decree, Judge Biggs Dissenting filed: , — ffol bp Is rue Usirep States C IncuIT Court or APPEAL, Tarp Cixcurr , : - No. (5203 Hartrorp-Empre Compaxy, Plaintiff-Appellee, si ak é Suawkee Manvuractunine Company, GLENSHAaW Grass Com- pany, MeKee Glass - Company - -and George R. Hanb, Defe ‘ndants-Appellants - In Equity No. 2791 , P ETITION FOR LEAVE to Five A Bix oF Revirw ¢ Arripavir Be Wisiuie B...Jaspert Pa. Bu. er Kevirw “ffoke]) 7° INDEX - cre. - - ‘ Pace _. “Petition for Leave to File a Bill of Review — ae Affidavit of William B. Jaspert 2 Bill of Review. - | . 14 o . e a , 7 “{fol. 1| To the Hienarsbte. the Jadges of the United States — ' Cireuit Court of Appeals. for the.Third Cireuit : Now come, Shaw kee Manufacturing Compaty, Gle ishaw “Glass Company, McKee Glass Company and-George R. a your petitioners, and respectfully represent and show. to\this Honorable Court : utjon May 31, 1933 Hartford-Empire C omipany, plain- tiff below, filed its. bill of complaint (SR 3) in the United , > *States District Court for-the Western District of Pennsyl- ~ (fol. 2] vania alleging infringement of United States Let-- ~~ ters Patent to Peiler No. 1,655,391 (SR 311) dated January 3, 1928 for. apparatus and method of mechanically feeding nielter glass to the molds of: ware-forming machines. That Peiler Patent No. 1,655,391 discloses an apparatus \- for. feeding suspended charges cf molten glass to the ‘molds ‘of ware forming machines by means of a reciprocating plug or plunger which acts upon the glass to extrude it through a submerged feeding orifice, whereas the petitioners’ Shaw- kee feeder (SR 45) did not eniploy any reciprocating im:- _plenient whatsoever but utilized air pressure ¢ and vacuum to control the flow of. glass a& disclosed in the expired «patents to Hitchcock No. 805,068 (SR 359) and RE-13,929 (SR 351) granted November 21, 1905. cee That because petitioners” feeder did not employ: dny’ of . the apparatus of the pi: 1 in suit, infringentent was charged only ‘on m_piethod claims 9, 10, 11, 12, 13, 14 and 46, most of the remaining sixty claims of the patent in suit, being for apparatus, which the petitioners’ structure did not employ. | That on the samé date, to-wit: May 31, 1933, the plain- tiff, in reliance upen this Court’s former decision in a suit entitled Hartford- Empire (‘o. Hazel-Atlas Glass. Co., .. reported in 59 F. (2d) 399, ir hie +h the same Peiler Patent - No. 1,655,391 was held valid and infringed, filed its mation for preliminary injunction (SR 24), accompanied by affi- davits in support thereof. © That on June 10, 1933, the petitioners filed their opposi- tion to plaintiff's mation for pretiminary injunction (SR +3), accompanied by affidavits in support thereof. —, Reference to Shaw kee et al. Ree ord is herein marked (SR). Ref erence to Hazel- Atlas Ree ord i is herein marked (HR, vo —). aa eet EN it oe That, on fans 22, 1933, the District Court’ oor Judge © “Me Vicar): filed and. entered its opinion granting the pre- liniinary injunction ‘against petitioners (SR 259). . {fol.3] That on June 27, 1933, the petitioners filed their _answér denying validity and infringement of said Peiler Patent No. 1,655,391 (SR 15). - That.on, June 27, 1933 the District Court’ filed and en- tered its decree (SR 262) directinig that a preliminary in-: junction issue against ‘petitioners, which. injunction issued Ps June 28, -- _ That thereafter, petitioners having perfected their appea! to this Court, said appeal came on for hearing upon the briefs and arguments of counsel on October 3, 1933, and that upon the hearing before this.Court it was agreed that the case might be disposed of as if on final hearing. That thereafter and on to wit: January 11, 1934, this Court filed its opinion (68 F. 2d, 726); (SR 489) in which . opinion the Court referred to its-former opinion in Hart- ford-Empire Company vs. Hazel-Atlas Glass Company (59 F. 2d, 399) wherein ‘the said Peiler Patent No. 1,655,391. had previously been adjudicated,‘and stated, that having held the patent valid and broad enough to. cover the Flazel- Atlas Glass Company’s reciprocating plunger device ‘:**For the same reasons we hold that the claims of the patent here in suit are broad enough’ to cover the de- fendants’ device. aid The Court ordered 1 2 dismissal of the appeal, and remanded ‘the case for proceedings in due ¢ourse. That on February 8, 1934 your petitioners. filed their petition for rehearing in this Court, which was denied _ February 21, 1934 (SR 495-503). That on April 3, 1934 your notilionees file d their pe tition for Writ of Certierari in the Supreme Court of the United States, which was denied on May i, 1934. {fol.4] That on May 29, 1934, your petitioners filed in this Court, petition for leave to file a bill of review (SR 905) grounded on the decisions in other Federal jurisdic: tions and a decision of the British House of Lords involy- _ ing plaintiff's glass feeding patents, which was deriied with-' out opinion on July 23, 1934 (SR‘ 523). That on September 7, 1934 your petitioners filed petition for Writ of Certiorari in the: Supreme Court af the United 5 States for a review of said decision next above recited, which-was denied October 15, 1934. - That thereafter thé mandate (SR 529) of this Court was entered in said Court on October 17, 1934. —. That pursuant to said mandate, on October 19, 1934, the District Court entered its Deeree and Order of reference for an accounting. That on October 24, 1934, your petitioners filed in this Court petition to amend and reform the mandate (SR — _ which was denied November 14, 1934. That on April ‘&, 1935 your petitioners filed petition for leave to file a bill of review (SR 537) in-this Court grounded was denied without opinion on July. 3, 1935. - for Writ of Certiorari in the Supreme Court of the United States for a _review.of said decision next above - recited, which ‘on October 28, 1935 was denied. ment to the answer in the’ District Court of the- United on. the issuanee of two _ patents, to the plaintiff (Nos, 2,073,571 and. 2,073,572) as the result of a suit brought by plaintiff against the Commissioner of Patents | on ap- * plications filed in 1910 and 1914, the patents being, for the same generic invention that this Court had attributed to Peiler Patent No. 1,655,391 in the Hazel-Atlas Glass Com- pany and Shawkee ét al. decisions, which petition was denied May 31, 1938 without opinion. -s profits to plaintiff having been filed, a final Order of Court closing the litigation was entered February 14, 1939. your petitioners have Grecoveren' new matter of consequence as a on newly distovered evidence growing ‘out of the prior, testimony of the ‘predecessor’ of the plaintiff in the unre- ported : ‘and undecided case. of Hartford-Fairmont Glass. Company vs: Berney-Bond Glass Company, which petition, That on March 5 5, 1938, ‘the case being in an interlocutor y- stage of aceounting hefore the Special Master, -your peti-- ‘|fol. 5] tioners filed petition in this Court for leave to file a petition for rehéaring ‘and to file a supplemental amend:. That the report of the Special Master for an ace ounttny That since the rendition and entry of the decree aforesaid, transmitted ‘to. the Distriet Court and was duly filed“and) ° - That on October 1, 1939, your ‘petitioners filed petition —— ‘States-for the Western District of Penuextrania grounded ‘in the said cause, Particularly and Separately .Set Forth 6 Reren wen ras, Se That in the now pending and undecided «uit entitled — United States of America vs. Hartford-Empire Company : al.,«ivil action, Case Ng. 4426, being tried in the District ‘ourt at Toledo, Ohio, charging, inter alia, violation of See- som Land 2 of the Sherman Act and Section 3 of the Clay- ton Ao by unlawfully conspiring and mopopolizing patents covering ‘the manufacture apd licensing of glass making machinery, there was introduced into evidence, testimony _ of one R. F. Hatch, and documentary exhibits * establishing that an article entitled ‘‘Sntroduction of Automatic Glass Workjng Machinery ; How Received by Organized Labor,” [fol. 6] allegedly written by William P. Clarke,** President of the American Flint Workers Union, and published in the Nattonal Glass Budg»t, July 17, 1926, at Pittsburgh, Penn- sylvania,was written by Hartford- Empire Company’s pat- ent solicitor, ‘R. FP. Hatch, at the instigation of the com- pany's chief patent counsel and Vice President, R. B. * Brown. ~ That said R. D. Brown suggested the publication of said article to Henry W. Carter, in charge of the patent depart- nient of the Owens Gluss Com ompany (which had a cross lieense arrangement with Hartford-Empire Company) for the purpose of.influencing the Patent Office Examiner to a more favorable consideration of Hartford's. broatl claims in the then-pending application of patent No. 1,655,391, and. the article was so employed by Hartford. oe . That at the hearing on appeal before this Court in the . case of Hartford-Empire Co. v. Hazel-Atlas Glass-Co., 59 F. (2d) 399, this-Court-was induced to accept the statements of the Clarke article as establishing that the invention of Peiler Patent No. 1,655,391 was revolutionary, and in reli- ance upon said article. this Court reversed the trial court Z . * - * Ptofert éf- certified copies of said testimony and all of the documentary ev idepee i is hereby made. ** It appears from the aforementioned testimony and exhibits that on May 24, 1932, after this Court’s decision in the Hazel-Atlas case, William P. Clarke, having suffered: financial reverses, asked R. P. Hatch for ten thousand dol- lars ($10,000.00), ahd Hatch paid Clarke five hundred ($500.00) dollars in cash on Augyst 4th or 5th, 1932, and seventy-five hundred (47 900.00) dollars in cash on August 10, 1932. (per Jadge Gibson) and gave the patent «a “wend generic scope, with the Honorable Judge Woolley sharply dis- senting. - _ That the facts establishing the. falsity of the Clarke article, why and how it was prepared, and the. manner in which it was employed in the Patent Office to obtain the - patent, and in this Court to obtain a favorable decision ap-— wldihg the patent, appear as follows: - [fol. 7] In the lettér dated December 11, 192 25 addressed to . Henry W. Carter, written by R. D. Brown, he states : ‘ “The other day in Washington we discussed in a rather ' joking way, the possibility that you might write up an article describing the revolution prodneed-in the glass business by the plunger gob feetling system. The more I think of this the better the idea seeys and I am writ- ing to enquire whether you would seriously care to undertake the preparation of such article to ‘be a either by yourself or someone else: ‘“As you will no doubt recall,. the importance of this matter lies in the fact that we must soon make a record before the Patent Office, in connection with the prin- cipal Steimer case and also in our Peiler plunger case, - ~ where we hope to obtain_claims, covering the broad ideas of feeding suspended?mold charxes shaped vu. the action of a plunger. " Ina letter dated May 25, 1926, written by Henry W. Carter to W. H. Boshart, President of the Owens Bottle Company, he said: e ' “It occurs to me that I should make myself. more clear . about the purpose of this Hatch article. **He has prepared it with the idea of getting it printed whder the name of seme apparently unpre judiced authority, and then calling.the attention of the Patent Office Examiner to the article as published, in the belief that the Exaniiner will thereby be influenced to a mote favorable consideration of Hartford’s broad clainfs. ‘Of course we are equally interested with Hartford in | securing these broad claims, and therefore indirectly ' interested in having the article published.” - | [fol.8} In an amendment filed in the United States Patent Office, dated une 23, 1926, Jhree.weeks prior to the publica- I ° . —— ' 7 . AN Q tion of the Clarke article in the National Glaze. Budget, . Hartford-Empire Company stated under the Remarks, ' first paragraph (HR, Vol. V, p. 226) : ‘‘For the Examiner’s information, a discussion of the - subject-matter of this case is being prepared, with affidavits and exhibits, showing the widespread recog- nition by the glass art of fhe novelty and great value of the features claimed herein, * * *” On October 12, 1926, plaintiff, Hartford- elite. Com- pany, filed in the Patent Office a number of affidavits and exhibits, including a copy of the National Glass Budget publication of the Clarke (Hatch) ‘article, which, as stated in the ‘‘Remarks’’ ean tite the amendment (HR, Vol. V, p. 261), were: we a intended to lay before the Patent Office eer- tain material facts relating to the development of the type of glass feedérs to- which this application re- lates | e © 099 : And therein it was farther stated that: ‘“‘The rapid and widespread commercial adoption of suspended-tharge glass feeders, particularly plunger: -feedérs, is an interesting.and remarkable story. °° °" - ‘With reference to the Clarke article, | it | is stated (HR, - Vol. V, p. 263): . 2 ‘The article published in the National Glass Budget for July 17, 1926, by William P. Clarke, President of the American Fiint Glass Workers’ Union, is an in- teresting account of the introduction of automatic class machinery and its reception by the labor unions. * * *° [fol 9]> The applicant’s remarks further stated, with ref erence tc i Clarke article (HR, Vol. V, p. 264-265) : oe The curves shown on this chart are interest- ing as showi ing that the production on the Owens ma- chines fell off at just about the time when the sus- pended-charge feeders got under way. ‘y .s ‘‘The conclusion of the whole matter is, that the sus: pended-charge feeder has accomplished «a revolution in. the glass art, * *-*%. It is submitted, therefore, that these claims’ are entitled to favorable considera- tion, which is respectfully solicited.*” _ . i PG * . : 9 That by reason of the publication of the Hartford-Hatch _ article over the name of. William-P. Clarke, President of the American Fiint Glass Workers Union, this Court in the Hartford-Empire Company.-vs. Hazel-Atlas‘Glass Company | case was induced, by reference to the Clarke article on page | 1s of plaintiff’s brief, to accept the statements contained therein as reason for sustdining the patent in suit. This. Court.in the. Hazel-Atlas decision (59 F. 2d, 399) devoted several pages of its opinion to a discussion of. the Clarke - article as a.basis for extending a broad generic scope to Peiler Patent No. 1,655,391 and to emW®ace within that patent the radically different method of the Hazel-Atlas ~ device. , That the Court prefaced its discussion of the Clarke article by reference to its former decision in Consolidated Window Glass Co..v. W indow Glass Machine Co., 261 Fed. - B62, as showing that because of the hostility of labor unions - to labor supplanting machinery, any fav orable — “of the unions could be accepted as true. ‘That with reference to the Clarke article, the court, be- -vinning page 401, said: _*tAs we have indicated, the labor organizations were vitally interested in the supplanting of hand blowing by [fol. 10] mechanical blowers, and we nafurally look to the proceedings of their several organizations to find what machine blowers were of practical working capac- ity aud ones which. they regarded as supplanting lung: blowing.’ We can therefore, and do, rely on. their opinion in that regard, for successful machine blowers largely spelled ending of the supremacy of lung hlow- ine. a a . That because of the plaintiff’s fraudulent act of, publish- ing the artide as taken. from the proceedings of the Glass ‘Blowers Union, which was allegedly adamantly opposed to the introduction of mechanical blowing machines, this Court (Judges Buffington and Davis, Judge Woolley dissenting) Was induced to accept the statements of the Clarké article: as true, when in fact they are false, and this. Court was’; further induced thereby to attribute a broad stope tp the Peiler patent in suit, which differed shdrply from the deci- sion of the District Court (Judge Gibson) and the dissenting: | opinion of Judge Woolley, both of -whom restricted the | ‘patent to the precise mechanism which it disclosed. 1 That’ because of the we scope attributed to Peiler Patent No. 1,655,391 in the Hazel decision, this Court said. ins its Shawkee decision, that it would be unnecessary 10, further consider validity or infringement, and held. the petitioners” Shawkee air impulse feeder to be au infrimes- thent of Peiler plunger Patent No. 1,633,391. as That the Clarke article is false and untrue wnd-not based on fact appears from the Hatch and Carter letters. as. follows: °° 2 . A In the Jetter. of Carter to Boshart ef May, 29, 1926 states : ye! ‘ P **Under the cirenmstances, ] do not see that * we: need ‘ be very critica) in Our treatment of the “article, J+ wot’ tow rank. would sav that we better 1a it. go throuch. * {fol.11} In a Jetter by ch to , Cartes: April 14, 1926, he, states: = vennieea this morning vour jetier re lating tO mm) proposed article on Feeding’. ] appreciate vou comments very q@uch indeed and 7] think there i+ bu one point on which vou failed to apprecinte mi. exact position. That is. ] prepared this article so far a+ sible with reference only to the proceedings of T1 Bottle Blowers Asseaiation, and kwouwmaly and om i tre mally Isr: priducrd some of the errors Tound tier '~ + For -exat nple. in aby statement as to the nuinber of, (Wvens mzic hinésein use. ] have used the numbers gives in the proceedings. oren when ] knew this was not oor reé 1. y > @r° (Emphasis Ours) “* : — Ina letter written by Hatch to- Carter, April@s. 1926, 4 states: Peep ee 8 8 Of caurse. 1 think vou understand th: whole onject of the article is to make an exense to oc the production cnrves and a few statements in Tegard to gob feeding into print.” : That thé production curves showing the relative increas of the gob feeder over the Owens machine were in then selves false appears from the letter by Carter to Hat April 17, 1926, as follows: . afte ‘Am not sure that-] quite understand vour ** increas line. The falling off for Owens in 1921 was.entire’s , + e. . : - : mi > : : } 1] due, 1 take. it, to ‘the general collapse of business dur- ing that vear, and | should. ‘xpect it to be tuore or less paralleled by a falling off in feeder production. * * *"* ‘fol. 12) In reply to this, Hatch, by letter dated “aii 28, i: rt, said: "You. ‘spoke. in one of your letters, about the depres- sion in business during the year 1921. You may be interested in the enclosed chart which shows: the rela- , tive Joss in business by Hartford and Owens .at that / tite. 1] cannot understand why there was so auch vreater drop in the Owens production, unless it be that our production records are based on the rovaltt paid Sand it might be that the agtual bu~ines- done was much jess than ,that indicated by the minimum royalties wiach had to be paid anyway.” r 3 : * That from the Carter-Hateli letters dt appears that the ~ Hart ford curve of feeder production Was based op dhitiiinum rovalties and not on actual produc tiow. 11 further appears from the @urves in the National Glass Budeet article that there was no dray in either Owens or Hartford feeder. pro- duction for the veur WT. and thaf the drop referred to the Carter'and Hatel letters were it tentionally not repro. duéed in the-Nationa! Glass Budge? chart. . That counsel for petitioners, after hearing iy learned that the Clarke urtie je Sia cate. ed at af sgn an ca Company. and your pet . etter dated Oetober S45, 1955, wc lressed to the Hon. Joseph ee: ; . this Court, ay itioners, by x, . m@ request 1 that it wd heen submsitted to the National Glass Budget fy sap with thee request ray pirbelisty it over the natue of Clarke, appears from the “correspondence (proffer of which x hereby made) . That it further appears fren, said. COPresponderices that neither counsel ior-the Hazel-Atias Glass Co. or the Shaw: / tee Manufacturing Conqany knew that it was written by Hated oy that it was false. and that the true fact. wore wert ‘ther available to counsel and were ‘Mr: Barriett followed up one of the leads given in there ~ ‘two quotations by writing a letter to counsel for the Hazel- Atlas Company, and sent a copy of his reply to Judge Birr- FINGFON November 15th. Mr. Barnett ‘stated in his letter that “Mr. Philbin’s recollection is that while he suspected that the Hartford-Empire Company might have been re- ‘ sponsible for the article’ (the Clarke article), he did_ not, at the time of the trial, know of the papers Ww hich I ‘have "submitted to you.’ As appears from Mr. Haight’ s afidavit, itr. Philbin’s letter contained the further statement that his recollection was then ‘‘too indefinite to be positive and I would have | to go through the voluminous collection of papers relating | to the various Hartford-Empire litigations, including cor- respondence, before I could be more definites*: After receipt of'a copy of Mr. Barneft’s last mentioned _ letter to Judge BUFFINGTON, inquiry Was-made by come of the counsel for the plaintiff of Mr- Edmund P- Wood. as to the information that he had, prior to the trial of the case -in Ohio (Nivison-Weiskopf case) in June, 1929, and the , trial of the Huzcl-Atlas case 1929, that the Clarke article had been transmitted to the Glass Budget by Mr. Hatch ©. of the Hartford4Empire Coinpany and published through. his instrumentality (App. p. 118). In reply to that letter - Mr. Wood wrote on November 14th as follows (App. p. 119) + [fol.28] ‘Prior to the trial of the Hazel-Atlas case in Apfil 1929, we understood that Mr. Hatch was in- ; : strumental in having the article entitled ‘Introdue. _ tion’ of Automatic Glass Working Machinery; How © Received . by Qrganized Labor. By William P. . Clarke’ published. in the Glass Budget and were 86 told by Mr. Hatch. You did produce ‘Mr. Hatch at the Nivison-Weiskopf trial but we had no occasion to put him on the witness stand. ~~ ————..“Tekgow we had. the information in question prior ; té the Hazel-Atlas trial for I attended a portion of ‘the,trial and while in-Pittsburgh personally discussed . . this matter at length with-counsel for the Hazel-Atlas Company,: and also with certain: persons from the ~ .- ‘Hazel-Atlas Company who were™active in connec. tion with the trial.*’ : A copy of Mr. Wood's letter was transmitted to Judge - BrrFixeton on November 17th and a copy of: the letter to Judge Burrixctox and of Mr. W ood 's letter were seuf, to Mr. Barnett on the same date. . The matter rested there until Becember 16, 1933, when _ Mr. Barnett wrote a long letter to Judge Brrrineton calling his, attention to the then recent decision of the Supreme. Court ‘in Keystone Driller Co. v. General. Excavator Ce... 299 U.S. 240, and claiming that it. was applicable -t 6 this case and should call for a dismissal of -the bill under **the clean hands doctrine”. In this, letter, Mr. Barnett: stated that: * “In the present case it appears or the first time subsequent to the submission of the case in this court that in the prior suit (the Haze}-Atlas case) upon _ which plaintiff now relies. this court was influenced by a publication whieh -first had beew iistigated and then invoked: by plaintiff to seeure a favorable actior by the Patent Office when the application for th Peiler ‘Patent here sued on, was, pending and hadere- [7ol. 29] tied upon and invoked that publication other publications which bad never been introduced | evidence’ in the litigation but appeared in-the Tecord only because they appeared in the. Patent Office fle wrapper as «matters which had been’ presented © parte by the preseut plaintiff to support: the ap on tion for the Peiler Patent and to overcome the act) of thecPatent Office in rejecting claims by ‘Peiler pen - 2 5 “ , the disclosure of the Hitchcock Patent upon which the defendant here relies for justification of its action in ‘making the machine here complained of. , ‘As to the Glass Budget article, the correspond ence sent to your Honor. since this casé was sub- mitted clearly shows that the publication of this ar’ ticle in the Glass Budget was instigated by the in- genious brain 6f:-Mr. Hatch, one of plaintiff’ s attor- “Meys, was then used by another of plaintiff*s attor-. nevs as so-called evidence produced ex parte to sup- port that attorney’s contentions in his argument for a favorable action on‘the application for the Peiler patent here sued on as against the rejection of claims ; Vie the Hitchcock prior patent disclosure. ‘Having ‘thus obtained the issue of the patent upon such ex parte showing, and of course: without disclosing to the Patent Office that the Glass Budget article had been instigated by plaintiff, we, turn to the plaintiff's briefs in this court in the Hazel- Atlas Case = find that plaintiff's attorneys quoted from * this article and from other published articles, which ‘had never been introduced in evidence or proven in any inter partes proceeding, as reasoiis why this court should sustain the Peiler patent.” To this letter counsel for plaintiff réplied on December 26th, and stated that) in view of the extensive correspond: ence, “‘unless vou desire that we should specifically an- - sWwer Mr. Barnett’s last letter, we will not do so. ~Phere- after, counsel were advised by the ¢ Jerk that, the Court did net de ‘Sire any further correspondence. The decis sion of Ifo), 3 | this r ‘ourt) Inmediate Iv fullowe al. ‘The re “atte r caine the many motions, petitions, and applications re fyrre “b- ‘to above and set forth i more detail in the. petition herein. It the Shawkee petition to this Court. for—rebearihe. substantially the same conte ntions were made in respect to the Clarke article as were made-in the last ef the above- quoted letters from Mr. Barnett to Judge Burrineton, - It Wis stated that the article was ‘tinstigated by plaintiff and published at plaintiff's urgeyt request’: that these facts, had deprived ‘the Glass Budget article of al! evidentiary Value and to that extent ctits the supports from. . under the reasoning of this Court iti the Haz-l-Atlas cage"*: that the plaintiff did not come into court with clean hands ‘twhere . £ ”~ e « 28 it relies upon a prior decision which rests in large part upon this self-serving and apparently home-made ‘evi- dence’ *’; and that the article had never been proven ‘‘as evidence of any fact therein stated either in the present case or in the Hazel-Atlas case.’ Argument ’ The many moves s which the defendants have made. i in this case " subsequent to the decision of this Court call to ~ mind what Chief Justice Tarr said in Toledo Scale Com- pany v. Computing Scale Company, 261 U.S. 399, 425: sce ce * As Mr. Justice Story remarked i in Ocean A ‘Ins. Co. v. Fields, 2 Story, 59, Fed. Cas. No. 10,406; - *TIt is for the publie interest and policy to make an. end to litigation; or, as was pointedly said by a great jurist, that suits may not. -be immortal while men are. m mortal. Pings . ' The gravamen of the prese: 4 application as disclosed by defendants’ brief seems to be ihat the Clarke article was [fol. 31] false and was used by the plaintiff in the Patent Office and.in its brief in this Court with know ledge of such falsity. Sec ondarily, some. point, exactly what is not clear, it attempted to be made of the fact that the Clarke article Was not originally prepared by him but by Mr. Hatch. Our | argument will be addressed to these matters. Point I There is. no sufficient showing that the statements in the Clarke article, especially those: relied upen -by this Court in its opinion in the Hazrl-Aflas case, were false -or that any of them were incorrect in any respect which could possibly have any effect. on fhe decision in this eztse. 1. We invite a careful reading of the Clarke artiele (a _~ photostatic copy of the original manuscript of which is set forth in the: Appendix, pp.°79-94). After the introductory part to the effect that the introduction of automatic bottle .. | making machinery ‘had not caused any ‘‘antagonistie ac- tion’’ on the part of organized labor *‘to prevent the-use of the new machines”’, the article proceeds with a historical discussion frog 1892 “on through the advent.of the gob feed- ing devices, pointing out the fear which the introduction of different kinds of automatic machinery created in the ranks of organized labor, the attitude of labor towards them, \efforts which labor made to adjust itself to the new co -\tions, the only commercial devices which were in use, ond. . the effect of the early devices on labor. The commercial devices discussed were the Owens suction machine, which was the pioneer automatic bottle making machine, the {fol: 32] Brooke stream*feeding device, which followed the Owens, and then the gob feeding devices.* The original article signed by Clarke contains a aumber of references to the authorities for the statements made therein. -It also contains quoted extracts from statements made by two presidents of the Glass. Bottle Blowers’ Asso- - gation in reports made to the Association. In addition, it ‘sets forth in graph form the respective productions on the Owens machine and the gob feeding machine.t We challenge the defendants to point out any false. state- ments in this article. Defendants are versed in the glass- ware making.art, as is the Hazel-Atlas Company, yet net- ther present an affidavit to.show any specific false state- ment, or indeed, inaccuracy in this article. -The reference to this article in plaintiff's ’s brief in the Hazel-Atlas case. has been quoted in. plaintiff’s brief on Hazel’s present applica- tion for leave to file a bill of review, as have also the state- ments made in the appeal brief of Hazel-Atlas Company in the case against it. The only criticism in the fatter is that the chart ‘‘is entirely misleading’. The r respects in which it is said to, be: misles iding are as follows : sa os * * 2 First, the curve for ‘gob feeders’ Starts . with the year 1917.- But, plaintiff's paddle feeder went into comme rcial use in 1915, and plaintiff asserts * The i. feeding iiaillas found its most effec ‘tive form in devices dov ered by the patents in suit. + The Owkns machine Was one that operated by suetion, . a mold was lowered into a bath of molten glass and the ¢lass suc ‘ked up into it. In the gob feeding devices, on the other hand, the glass flowed from'the tank to a fore. hearth.and thence through an orifice where it was severed in > asin gob form and the gob dropped into a mold.. The gob was — preformed in weight and shape to suit the mold that.was to receive it. : Ls) tliat it was a gob feeder. So, apparently, it produced © [ fol. 33] nothing until 1917, which is contrary to plain- . tiff’s contention that it was used in 1915 and thereafter ‘Second, the chart shows that by 1922 about four - “mnillion gross pieces of ware were ‘produced annually by gob feeders. Whatever proportion of that ware ’ was made by plunger feeders, the only feeder in issue here, was made on plunger feeders developed by others, ‘for plaintiff’s first plunger sooter was November, 1922.” No one has pointed out that any: ‘of the extracts from the — article quoted in the opinion of this. Court in the Hazel-Atlas case are incorrect or false in-any réspect whatsoever, nor has it. been pointed out wherein this Court may have relied in any respect upon the production chart which, defendarts say, was inaccurate. ' We ask the Court to read the extract from the Haub pat- ent application which appears at pages 47-48 of the Appen- ~ . dix and compare it with the parts of the Clarke article that deal with the commercial developments ‘of automatic glass- ware making machinery. It will be remembered that \r.. ’ Haub is a defendant a ease and the designer of the accused Shawkee’s device ’ tay / The defendants in this case and the Hazel-Atlas Com- pany, the former with reckles\ charges that thg article was, a ‘false and fraudulent publication”, rely in. thefr attempt to support the charge of falsity npon a. letter written by Mr. Hatch to Mr. Carter of the Owens: Rottle Company on April 19, 1926, and to-some criticisms of the article in a letter or letters written by Mr. Carter -to Mr,\Hateh. The part of the Hateh letter of April 19, 1926, av idl poune ed npon and first two paragraphs of the letter, frony which we quote, a- * we do in the Hazel-Atlas ease: . = i we — \ “I received. this morning your letter\relating to my proposed article on ‘Fe eding’ ~ L_appr&ciate your ‘{fol. 34] comménts very much indeed and I t ‘is but one point on which you failed to apprecjate my exact position. That is, I prepared this article xo far as possible with reference only to the proveedings of The Bottle Blowers Association, and knowin'ly \ . ink the Te. relied upon to support their ‘charge of nv whieh found in the ., \ Perit ao ‘. 3 “and intentionally I reproditced. some of the errors found therein.. ' ‘For example, in any statement as to the umber of Owens machines in use, I have used the numbers age in the proceedings, eyen when 1 knew this ‘was “not correct. The point I: have in mind is that if-1 “an get the President of the ‘Association to publish this I thought that he. should base all of his state- ments on their printed records except where such statements had a direct bearing on the particular point which we wished to bring out.’”’ - ; The letter goes on to'state, however, that Mr. Hatch thinks he can ‘*make considerable improvement in the article and still base all statements on information published i in the pro- ceedings of the Glass Blowers Ass’n.’’; and that it was his ‘present intention to revise the article in view of your com- ments and others which I expect:to receive from Mr.:Dor- sey'’. This letter was written to Mr. Carter in nesponse to a letter written by him criticizing an early draft that had - been submitted to him for his criticisms. It must -be- borne: in mind, as appears from the affidavits of Mr. Hateh and Mr. Brown herein, that the article was prepared princi- pally from data: procured from the published proceedings of the Glass Blowers Association over a periéd of. years. When it was prepared it was intended that it should be~ sponsored by an official.of a glass blowers’ union and pub- ° lished under’ ‘his name. Qf’ course,’ under these cirenm- stanees, thevarticle had to reflect w hat{appeared i in th pub. lished proceedings of the Glass Blowers, Association, plus what. might: be remembered ‘by the union official. who would * ‘sigwit. But, what is more important,-the draft which. the [foi. 34-1] letter of April 19th referred do was an early one Which was subsequently revised, and made as acetirate both as to statements and as to comparative production fig- ures as Was possible. Mr. Hatch’s explanation of the letter of April 19; 1926, and the efforts which he made to have the article accurate, and his belief.that as published if was ‘accurate, are set forth in his affidavit (App..pp. 14-17). _ Mr. Hateh reeounts how he took the matter up with Mr. é Maloney, the President of ‘the Glass Blowers’ Association, the latter’s approval thereof, and then the submission of the same to Mr. Clarke, and the revisions that he made therein, even in the final.draft (App. pp. 17-19). - * ion. «As to this letter Mr. Ha 32° coe c oe In the defendants’ petition (p. 10) a short extract is taken from a fetter written by Mr. Carter to Mr _gBoshart * of the Owens Company, and the words ‘‘if not too rank”’ are italiciged. The full letter is on page 40-f the book entitled ‘Exhibits of Petitioner-Defendant’’ in the Hazel-Atlas ease. Although this letter is not geferred to in defendants’ brief, some sinigter inference js undoubtedly attempted to be drawn from it by the ee: and emphasie i in the peti- h’s affidevit states (p. 26): Mr. Carter orally made the same statement to me, stating he thought the proposed article was rather. rough on the Owens Coypany, but that i was in actordahce with the facts and thaf what he meapf by ‘not to@ rank’ was ‘not too rough on Owse When it is borne in mind that the article itself made thé Owens suction development. (suction was still being used by the Owen¢ Company to a very great extent) in the glass- making machinery art appear at a substantial disadyantage when compared with*the gob feeding machinery, the above- [fol.. 35] quoted es is entirely understandable and reaspnable.® » 8 7. . * When Mr. Carter, on exaniination by Goyernment coun- sel in the anti-trust suit, was asked whether he had written this letter, he stated (Tr. 1824) : ‘‘A. I wrote it, undoubtedly, but I wonld H&ke to say altout Phat, this: that here was a man writing up a piece of history setting forth some facts, and on the whole knocking the Owen§ machine development and hooming the other development. Jow, the question of how far a man will be correct in expressing the ‘views that the Owens Machine development was or was > not being superseded to a large extent, or to a very large ‘extent, was a matter of judgipent. The question of its being what I said, being too rank, here, meant _that all that we were trying to do was to put in print and asa matter-of history a record of the fact that the feeder development was a tremendously impdr- tant development, which had had a very creat influence in overcoming the supreme position which the Owens Bottle "Machine had had at that time’’. og Raine seers > | ams If Mr. Hatch’s affidavit is not sufficient to dispel’ any; doubt that the Clarke article was true, two. poor vdw: ol neofis letters must have that effect. On June 30, 1926, Mr. Clarke wrote Mr. Maloney, the president of the Glass Bottle ers Assotiation, enclosing a copy of Mr-Hatch’s then: last manuscript and asking Mr. Maloney ‘‘to read it with care *:* as I want to discuss the matter with you ‘more fully’’. -On July 7 i, neh, Mr. Maloney. wrote Mr. Clarke as fol- . lows : | fave regd this paper carefully this morning a was the first opportunity 1 have had to do so I find nothing in it that we can take ‘any exeep- .. tons to. In fact, it seemis to be a very fair review of the changes that liave occurred in the glass bottle industry in the last few year®? as, far as automatic nachinery is concerned and the attRhyde we have al- ways taken relative to new methods of production.” . These two letters are in the & ppendix, pages 75-77. .-[fol. 36] But that is not all! On June 10,1926, Mr. Carter, to whom the letter of April. 19, 1926, had been sent bv Mr.. Hatch, wrote Mr. Hatch in respect to the chart attached to the article, as follows: “With regard 46 your chart, I aul that the criticism éxpress (sie.) iti my last letter’ was without e* tiuch foundation. The firure of forty million gross on: total production was one for which 1 thought’ we had the authority of-Mr. Bakér. It seems, however, gat DAY recollection was at fault inthis respect in quoting the fieyre mentioned. Mr. Baker now tefiseme that © — tlie most. he was ever able to make it was twenty-five million, and upon this basis the curres of our chart would seem to be substantially correct. Mr. Baker thinks they are about aes accurate as could be ar- rived at.’ ¥ ° ae ‘ In the affidavit. of Mr. Jaspert, the counsel for the defend- ants, attached to the petition herein, he states (p. 16) that on July 22, 1941 he *sinspeected the transeript of record and documentary evidence adduced”, in the anti-trust suit then _ pending in Toledo, Ohio, and “discovered the te stimouy of. RK. P. Hatch and the letters referred to therein with’ ref- . before the Cireuit Court of Appeals, ‘*we will interpose no ToL 29] objection”? In the letter of November ord written be ounse: for the plaintiff to Judge Burrinctox, he was’ ‘advised in respect to these papers as follows: (iiieiyaaiaeiesS * The brief seems to- make no point as to the authorship of the article as a ground for granting defendants’ petition, but the petition refers to the authorship and the refore we | discuss | the point here. ; ae | ORE pn oe. @ * : So far as we are concerned, your Court may consider’ them, if it desires so to do, as a part of the record in this case, although under the ordinary rules of procedure they could not be so considered.” And this,. notwithstanding Mr: Barnett’s statement in ‘his ‘letter of October 30th to Judge Burrineton that ‘these papers are probably not pertinent evidence in the present -ease.’’ Plaintiff therefore waived the objection which it could have insisted upon that these documents were not a - part of the record in the case. It went further and pointed out to Mr. Barnett that their existence was known to counsel for defendant in the I/azel-Atlas ease and to Mr. Wood, who © had been counsel for the defendant in the Nivison-Weiskopf case. There was transmitted to’ him a letter over Mr. Wood’s own signature (App. p. 54), stating that Messrs. ‘Wood had understood in April, 1929, prior to the trial of the . Hazel-Atlas ease, ‘that Mr. Hatch was instrumental jp hav- ing the.article * .* * published’ in the Glass Budget — and were so told by Mr. Hatch’’; that Mr. Hateh had been produced by plaintiff at the trial of the Nivison-Weiskopf ease at Mr. Wood’s request, and that he had discussed ‘this matter at length with ¢ounsel for the Hazel-Atlas Company, and also with certain persons from the Hazel-Atlas (‘om- pany who were active in connection with the trial’. Me. Barnett did not follow up the information which plaintiff's counse] had given him in respect to Mr. ‘Wood’s informa: tion regarding the Clarke article (App. p. 54). He did inquire of counsel for the Hazel-Atlas Company ‘*to learn whether they could confirm Judge Hatcur’s information that the matters relating to the article in the Glass, Pudget — - * * were fully known to counsel for the Hazel- Atlas [ fol. 40] Company at the timé that case was tried’? (sce let- ter to Judge Burrixctrox ‘dated November 15, 1953, App. p. 40). As a result of this inquiry he learned from Mr. Philbin that his ‘‘recollection is that’ while he suspected ‘that the Hartford-Empire Company might have been re- sponsible for the article, he did not, at the tiine of the trial, know of the papers’’ which were ‘submitted by Mr. Barnett to Judge Burrixcroy. He further learned from Mé. Phil-- bin that the latter's recollection was ‘‘too indefinite to be positive’’ and that he would have to go through ‘‘the vel- uminous collection of papers relating to the various Hart- wake ee7" 37 ford-Empire litigations, including correspondence, before he could be more definite’? (App. p. 41). Mr. Barnett pur- sued the matter no further. Je let it rest. He did, how- ever, in his letter to Judge Burrincron of December 16th, charge that ‘the article had been “‘iustigated by the in- genious brain of Mr. Hatech’’. . Plaintiff did not question the charge thus made. If Mr. Barrett, or the diligent Mr. Jaspert, who has filed so many petitions and made so many movxes-inm-this case — since it tvas decided against him, had followed up the leads which had been given to them by plaintiff in 1933, they .would have found the following: . (a) That Mr. Philbin, upon ref ashing his’ recollection (which in his letter to Mr. Barnett he did not indicate that he would. be unwilling to do) believed ‘tin or before 1929”. that the Clarke article had been ‘written by Mr. Hatch and caused to be published by the Hartford-Empire Company, and that he had been so told ‘*by the firm of Messrs? Woed & Wood, Cincinnati lawyers, who Aled ° : > ‘ 39 wlether it was based on the proceedings of the Glass. Bottle Blowers’ Association and had the sanetidi and approval of jvol. 43] the union oflic ials and was — by ‘one of thenr as his own. In the petition a ictee. from Mr. Brawn to Mr. Carter dated) December 11, 1925 is quoted. Ttis answer to this letter is set forth.in the Appendix, page 53. In this letter - he said that he was not in a position to write the article mentioned in Mr. Brown’s letter because he did ‘not get in touch with the industry until 1921 and then only from the viewpoint of a patent specialist. As pointed out in Mr. Brown’s affidavit, the letter which he wrote to Mr. Carter had nothing whatever.to do with the preparation of the article by Mr. Hatch. ‘The latter had found (as set forth im his affidavit, App. pp. 11-15), making an investigation in connection with a Federal tax matter in which the plaintiff was interested, information in the proceedings of the Glass tottle Blowers Association which suggested. to, him the idea fhat an article should be conipiled from the proceedings of that Association and published. He thought it would be of interest to the trade and an advantaye to the plaintiff as showing the effeet on the elass\industry of thé introduction of automatic machinery. including that of the Hartford- Empire Compatiy, these facts then being pot generally known. Hie was accordingly authorized to prepare the ar-: - ticle and did so., The suggestion in the petition that the Clarke article was prepare din the first instance at the sue- gestion of Mr. Brown is shown in Hateh’s affidavit to- he unfounded (App. p. 25). ; ces es . Doubtless the lack of diligence on the part of de. fendants and their attorneys, “and the imimatertality of Whether the research work and the writing of the article in the first instance was by Hateh rather than Clarke, is the reason why the question of the authorship is not m: ude a poijt in defendants” brief. I fol 44- 46) | ( ‘onelusion It is’ respectfully submitted that the petition shiuta ” de ‘nied. Respectfully submitted, ! Thomas G., Haight, Edgar JZ-Coodrich, Robson D. Brown, Counsel for Plaintiff-Appellee. ’ e. 47 {fol. 27] Is roe Unirep Srares Cirevir Courr or Appears . ror THE Trirp Circtir , 3 No. 4414 \ \ ~ Hartrorp-EMpre Company, Plaintiff-Appellant, v. Hazev-Atias Guass Company, enn aggntine * No. 3203 _Harrrorp- EMpire Compasy, Plaintit Appellee, ; v. SHawkEE MANUFACTURING COMPANY, Guiexsuaw Grass Com- pany, MeKee Glass Company’ and George R. Haub, De- fendants- Appellants . ne Petition, Br ief and Affidavit on Behalf of the United States SAY of America as Amicus Curide Now comes the United States of America and respect- * fully. petitions for leave to file the attached brief and af- fidavit as amicus curiae in support of the petition of Hazel -[fol. 28] Atlas Glass Company and the petition.of Shawkee ; Manufacturing. Company, et: al., for leave to file Bills of - Review in the above entitled suits, for the following reasons : First, The United States is the plaintiff in an antitrust prosecution now pending in the District Court of the United States for the Northern District of Ohio (Western Divi- sion) against both parties: to the above-entitled Cause No. 414, and against the Plaintiff-Appellee. in’ the above’ entitled’ Cause No. 5203,-as well as against numerous other defendants. As plaintiff, The United States has knowledge of certain facts heretofore made in the antitrust suit bear- ing on the issue of fraud in the-Patent Office, which fraud is pertinent to material issues decided by this Court in the instant suits. The United States has no financial, interest in the matter and presents these facts ‘to this Court from the sole viewpoint of the . rest. Second, The United States, as £rantor of the patent rights involved in the instant cases, cgnsiders that the broad seope given to the Peiler patent in fhe two decisions, affects the 3—S1(H 41 42 ; | ~ | ey nee 48 ; ‘ public interest and requires a definite ascertainment that such decisions were not the result ofa fraud .practiced upon the Court. Thurman Arnold, Assistant Attorney Renewal, Hugh B. Cox, Samuel S. Isseks, Lawrence S. Apsey, Special Assistants. to the Attorney General. December 3. 1941. fol. 29] In tue Unrrep States Cincurr Court or Apreats - FoR THE Tuirp Circuit No. 4414 : Hantrorp-Fimrire Company, Plaintiff-Appellant, : a Hazer-Atias Grass Company;- Defendant-Appellee No. 5203 Hanrrorp-Empme Company, Plaintiff-Appellee, . et. ¥ Ke SHAWKEE MANUFACTURING Company, GLENsHaw Grass Cow. pany, MeKee Glass Company and George R. Haub, De- fendants-Appetkmts Brief Amicus Curiae Filed by the United States of America in Support of Petitions of Hazel-Atlas Glass. Compas. and Shawkee Manufacturing C om pant ef al., for Leave to wile Bills of Review Re “asons for Filing Brief The United States of America respectfully directs thie at- tention of this Court to the following consideratipns bear- ing on the respeetive petitions of Hazel-Atlas Glass Cont- [fol. 30] pany and Shawkee Manufacturing Company, ¢f a. for leave to file Bills of Review in the above- entitled cases. This brief is filed for two reasons : (1) As the plaintiff in em antitrust action now pending - in the District Court of the United States for the Northern: District of Ohio (Western Division), the United States is in a position to know of certan facts bearing on the issue . a Po. a Pe 2 , ee er (:) (2) The braad scope given to the Peiler patent in the two decisions clearly affeets the public interest and makes it-important that there be a reconsideration of the two de- cisions in order to determine whether or not they were the result of a fraud perpetrated upon the ‘Patent ‘Office and mig ourt. ; Statement of Facts As shown by the affidavit of Samuel S. Isseks filed here-, with, the following facts bearing on the issues in the instant case have been adduced in the course of the trial of the antitrust suit-of the United States v. Hartford-Empire Com-- ‘pany, Hazel-Atlas Glass Company, Owens-Illinois Glass Company and others, No. 4426, in the United States District _ Court for the Northern District of Ohio, Western Division: 1. On April 9, 1924, Hartford-Empire Company, the plaintiff in both of the instant cases, a concern engaged in the development and ligensing of patented ‘inveutions on machinery used in the manufacture of glassware, and Owens-Illinois Glass Company (then called Owens Bottle. Company), the largest. manufacturer of bottles in’ the United States, and also the owners Of certain patents and applications on autoniatic glassware machinery, en- |fol. 31] tered into a cross-licensing agreement, This agreement provided that Owens would receive one-half of Hartford's royalty collections after deduction of $600,000.00 in return for which Owens gave Hiirtford an exclusive . license under all its feeder and. forming machine patents. The parties further agreed to prosecute all infringers promptly and by a subsequent arrangement, they agreed to share equally in the cost of all litigation brought on the licensed patents. 2. This 1924 agreement was executed diring the pendency of the nine year struggle of Hartford- -Empire Company ‘in the Patent Office, to obtain the issuauce of Patent No. 1,655,391 involved in the instant—suits,/ Pursuatit to” the “agreement and during the course of the Patent Office Pro- ceedings, Hartford-and Owens joi whereby they would arrange to haye published in-a teiile paper an article relating to the ¢ ass feeders of the Hart- ford Company. It was their pyxrpose to have the article published under the name of a/disinte rested authority who. would recite alleged facts showing the. important contri ly conceived ao plan . ‘> «> “50 bution of Hartford to the advsncouitnt of the glass feeding - art, in order that the article be used in the Patent Office to influence it to issue the Peiler patent. : 3. Pursuant to this plan, one R. F. Hatch, a patent solicitor in the Patent Department of Hartford, drafted such an article and sent it to one, Henry W: Carter, in charge of the Patent Department of Owens, for his com- ments and revisions. Carter returned the draft and noted that it was erroneous in many material respects, but adding that so long ‘as it-was not ‘too rank’’ it would serve the purpose. is en ; 7 4. Hatch then induced one William P. Clarke, head of a glassworkers imion, to sign the article as author.~ There-. - upon Hatch arranged to have it published in the National, Glass Budget, a trade paper. . ets [fol. 32] 5. Without revealing the true author of this article, Hartford’s attorney submitted the article to the ' Patent Office in the then pending proceedings with respect to the patent in issue in the instant suit, emphasizing the impartial character of its source. 6. Subsequently and on Jasnact 3, 1928, the Patent Office 7 allowed the application, which issued as patent No. 1,655,391 -—the sedpe and validity of whieh was before this Court.. Again acting pursuant to their prior agreement, Hart- ford and. Owens agreed that Hartford would bring the . instant suit against Hazel-Atlas, the second largest manu- facturer of glassware in the United States, for. alleged infringement of the Peiler patent.. Hartford. and Owens shared equally in thte‘expenses of this litigation. 8. At no time did Hartford or Owens reveal the ciremn: stances ‘relating to, fhe authorship’ of the Clarke article or the inaccuracy of ‘some of the statements therein, "to the Patent Office, the District. Court, or to this Court. ee Immediately followi ing the decision.of the Court in the Hazel-Atlas Suit (No. 4414) représentatives of Hartford * vommunicated with the President of Hazel, and it was sus- «ested that an arrangement ‘could: be worked out whereby . Hazel could have a license under the Peiler patent here in- volved with-a share in Hartford's royalties from other - licensées. if Hazel would agree (1 )-not to file a petition for am | ee a ie in‘this Court and (2) not to file a petition for certiorari to the Supreme Court. Hazel accepted these con- ditions, paid a million dollars damages, and took a license under the Hartford patent. ios . turn for Hazel’s accepting, a license under the Peiler and - other patents, at Hartford’s standard royalty rates, Hazel dedueting $350,000, while Qwens would .receive another third in place of the half it had been receiv ing under the 1924 contract: In exchange for this share in royalties, Hazel : wreed ‘that it would license Hartford under Hazel’ s ‘patents, which were narrow in seopg, relinquish a elaim ‘*the benefit of.- its skill =. operati ag glass machinery mechanisms. ’ \ a ’ . 11. Following the signing of the various ‘aereements De- tween Hartford, Hazel and Owens, in July, 1982, Hartford to accept a license under the Hartford patents. The an- nouncement did not reveal, however, that Hazel was to share in one-thiml of Hartford's rovalties, and in fact the exist- ence of this arrangement was not known. to, other members ford, until it was revealed at a public hearing before the TNEC in December, 1938. ry . Who had previously refused to take licenses from Hartford, took licenses under Hartford patents at Hartford's stand- ard royalty rates. Some of them did so because the power- ful Hazel-Atlas Company had, so they thought, been forced to take a license as a result of the decision of this Court in the Hazel-Atlas suit. The result is that today Hartford has manufacturers’ representing about 96% of: the pro- duction eapacity,-of the industry under license and con- tributing royalties to Harfford and Hazel. --Royalty col- - have totalled forty million dollars since Hazel: took the license, [fol. 33] 10. This license iicnieiaiiie prov ided that in re-- against Hartford and Owens and allow Hartford to receive . and Hazel published an announcement to the effect that” Hazel had paid ene million dollars.in damages and agreed’ 12. Following the announcement of the Hartford-Hazel. settlement, a number of other manufacturers of glassware, , would receive one-third oft \Hartford’ 8 total royalties after™ of the industry, even including certain executives of Hart- lections in 1940 amounted to about six million dollars and. pee a . «52 g ne =! a [fol. 34} 93. During the negotiations for the 1932 Hazel- Atlas, Hartford and ¢+wens agreements, the aforementioned Clarke made a demand upon Hatch that Hartford pay him $10,000.00 for having sponsored the so-called Clarke Article. Hatch communicated with his ‘principals at Har¢ford and with the Owens representatives, and as a result Hatch maile two payments to Clarke, one of $500.00 and the other ~ of $7,500.00. Both payments were made in cash by Hatch { \e Clarke, the first in New York City and the other in *ittsburgh, and the revords-of Hartford ‘showed that the payment of $7,500.00 was tuade as ‘‘counsel fees’’ in con- - , nection .with litigation instituted by Hartford and as to " which Owens: was obligated*to pay and did pay one-half ~éf all such expenses, including the payments to Clarke. Clarke, of course, was not an attorney. .14, On May 9, 1941, Honorable Frank L. Kloeb, United States District Judge for the Northern District of Ohio, before whom the aforeinentioned case of United States v.. ford-Empire Company, et al., is being tried, entered i owder on motion of the plaintiff, after argument and submission ef briefs, impounding all. royalties payable by > Hazel-Atlas to Hartford under the. 1932 agreement, and all amannts payable to Hazel-Atlas be Hartford under said agreement. Judge Kloeb esnecluded that the Government had made a prima facie showing of the illegality of the pay- ments by Harfford and Hazel-Atlas under the agreement. . The total amount paid as of November 15, 1941 to the Clerk of. the Court under said order is $1,786,172.22, for he period from May 14, 1941, to November 15, 1941. ly The status of the antitrust case. is as follows: The — CGiovernment completed its proof on October 22, 1941, and the defenlants are now offering proof. [ fol. a5) Argument Judge Gibson in the District Court held that if ty pate nt were valid, the Hazel-Atlas structure did not infringe (39 Fed. 24-111, 1930). Hartford then appealed ‘to this Court. In an opinion here by Judge Buffington, the patent was held valid and_infringed, and its claims were given great ~ dere adth of scope. Judge Davis concurred and Judge Wooley dissented (59 F. 24 399, 1932). The opinion rests in large part upon the so-called Clarke article. It states at the out- 4 53 set (p. re that since labor organizations were. vitally | interested in the supplanting of hand blowing by mechanical blowers the Court can and does ‘‘rely on their opinion in that rezard.’’ The article is queted from at length through- out the opinion, ayd the Court reached a conclusion at page _ 413 that where the art found /jno solution in the patents cov- ering prior inventions, ‘‘it is safer to rely evidentially on the then judgment, attitude, and conduct of the glass trade thowever,is drawn from the _ Clarke article, relied on as the impartial expression of :a- labor leader. P Thus the opinion of Judge Buffington i in the Haze-Atlas ease Shows that in sustaining the validity of the Peiler patent the Court relied heavily upon the disinterested char- ¢ acter of the Clarke article. ‘The motives which underlay the writing, publishing, and submission to the P atent Office of that article have. been demonstrated’ by the complete facts brought to light for the first time in the pending anti- trust suit inthe Ohio District, Court, and which are in part ~t forth above and more fully referred to in the separate [fol. 36] petitions and stipporting papers of Shawkee Mani-\ : facturing Company and Hazel-Atlas Glass Company. In view of the facts, argument-is hardly necessary to ingi-. cate that grave doubt exists ax to whether or not the deci- sions of this Court in the instant cases were obtained as a result-of a fraud practiced upon the Court as well as the Patent Offiée. Upon all the cirepmstances, and con- sidering the fact’ that Judge Gibson in the’ District Court and Judge Wooley in this Court were of the opinion that the patent involved had not been infringed, there seems to be considerable merit to the instant petitions for leave to ~ file Bills of Review. \ There being more than a rensonable doubt as to’ the ‘existence of fraud, the yiublic interest involved fends sub- stantial weight to the pokition of. the petitioners. Dune to the broad and basie chatacter aséribed by this Court to thd claims of the Peiler patent, the Hartford Company, with the aid of the Owens Company, have been enabled to exact 54 oe ; | . % a largé sums of money from the glassware produeers of the country, sums ultimately recouped from the consuming public. Furthermore, these companies have. been able, largely through the broad: scope attributed by this Court to the Peiler patent, to extend their control not only over the glassware machinery aah \ ht but also over the mast ware business itself. - i In holding that the United States could file a bill to annul ‘a patent alleged to have been fraudulently seéured, the . Supreme Court said through -Mr. Justice Miller in United ‘States v. American Beil Pelephone a 128 U.S 315 (1888), at page 367: ; The essence of the right of the United States to inter- fere in the. present case is its obligation to protect the public from the monopoly of the patent. which was procured by fraud. a te bad fol 3a]. The Court went on to: say, at page 370: The United States, by issuing the patents whiel are here sought to be annulled, hastiaken from the public rights of immense Value and bestowed them upon the patentee. Tn ‘this’ respect the government and its officers are acting: as .the agents of the people, and have, under the authority of law vested in them, taken’ from the people this valuable ‘privilege and conferred it as an exclusive right upon the patentee. * * *: This has. been taken from ‘the people, from the public, -and made the private property of the patentee by the action-of one of the departments of the government act: ine under the forms of law, but deceived and misled, as the bill alleges, by the patentee. That the government, authorized both by the Constitution and the statutes to bring suits at. law and in equity, should find it to he its duty to correct this evil, to reéall these patents. to get a remedy fur this fraud, is so clear that it needs no argument. ithas er atc . = ‘The Government, of course, is not at Sreseiit seeking to intervene in the instant suits; nor is it now taking steps to have the patent here involved annulled. It simply requests that this Court give consideration to the public interests. a) clearly expounded by Mr. Justice Miller’ in the America. Oa Bell Telephone Co, éase, in determining the question pre- sented: by the private petitioners herein. Respectfully submitted, Thurman Arnold, Assistant | Attorney General. Hugh B.’Cox, Samuel S. Is-: seks, Lawrence S. Apsey » Special Assistants to the Attorney General. Decembey’3, 1941. “fol. 88) Ly rue Usrrep States Cinevir Court of Apreas FoR THE Tuirp Cirevit No. 4414 Harrrorp-EMrine Company, Plaintiti-Appeitant, _ . ™ v. \ . . Haze.-AtLas Grass Companys, Defendant-Appellee No. 5203 Hartronp-EmMpme Company, Plaintttf-Appellee, a v. . : * SHAWKEE Manecractunine Company, GLENSHAW Grass Com- pany, MeKee Glass Company and George R. Haub, De- fendants-Appellants. } Affidavit of Samuel S. Isseks Srare-or New York, County of New York, ss.: Samven S. Issexs, being duly sworn, deposes and says: * {fol 39] Pam a Special Assistant to the Attorney General of the United States, of counsel Jor the Government in the Antitrust Suit entitled, United States v. Hartfora-E mpire Company, vt al., No, 4426, now pending i in the United States District'Court for the Northern District of Ohio, WwW estern Division. The evidence site by the Government in said pe nding action against Hartford: Enipire Company, etal. shows . that: | 1. On April 9, 1924, Hartford-Empire Company, a con- * cermengaged in the development and licensing of patented fy) 56 ae : inventions on machinery used in the manufacture of glass- -ware, and Owens-Illinois Glass Co., the largest manutae- turer of bottles in, the United States, entered into a cross- licensing agreement. The agreement provided that Owens would receive one-half of Hartford’s royalty collections. after deduction of $600,000, in return for.which Owens gave - Hartford an exclusive ficense under all its feeder and forni- ing inachine patents. The parties further agreed to prose- cute all iifringers promptly and by «a subsequent arrange- ment, they agreed to share equalky in the cost of all litiger- tion brought on the licensed patente. », This 1924 agreement was executed during the penne nes of ‘the nine year struggle of Hartford-Eimpire Company in the Patent “Office, to obtain the issuance of Patent No, 1,655,391. Pursuant to the agreement and during the Gourse of the Patent Office . proceedings, Hartford and Owe, jointly conceiveda plan whereby they would arrange to have published in a‘trade paper an article relating to the eliss | feeders of the Hartford Company. It was their purpose to have the article published under the name of a disintereste:| nutherity who would recite alleged facts showing thie in portant contribution of H: artford to the advancement of the wlass —e art. [fol. 40]- 2. Pursuant to this ‘shan, one RE. Hateh, st yuat ent solic meg the Patent Department of Hartford, dratted such an article and sent it to one Henry W. Carter, in charge of the Patent De ‘partment of Owens, for his comments ane, revisions. Carter returned the draft noting that if was er roneous in manvomaterial respeets, bit adding that se lone as it Was not ‘ited rank” it would serve the purpose, 4. Hateh then induced. cone William P. Clarke, head of a vlassblowers union, to sign the artiele as author. There upon, Hatch arranged to have it publishe “hi In the Nationa: Glass Budget, a trade paper. . Without revealing the true author of this artic le, tl: art ford" s attorney introduced the article to the Patent Office — in the then pending ‘proceedings with respect to the patent in issue in the instant suit, emplotsizing the impartial character of its seurce. bi. Subseque ntly and on January 3, 1928, the P spent Othen allowed the application, whic lh issued ais patent No. 1,695, 391. ey ae ° ; | = Again acting pursuant to their prior agreement, Hart- ford and Owens agreed that Hartford would bring the in- stant suit against Hazel-Atlas, ‘the second largest manu- facturer of glassware in the United States, for alleged in- fringement of the’ Peiler patent. © Hartford and Owens shared. equally in the expenses of this litigation. At no time did Hartford or Owens reveal the cireum- stances relating to the authorship of tne Clarke article or ‘the inaccuracy’ of some of the statements therein, to the Patent Office, the District Court, or to this Court. . Immediately following the decision of this Court. in me ‘Hoe +1 Atlas suit (No. 4414) the representatives of dart- lfol. 41] ford communicated with the -President of? Hazel. and it Was suggested that a arrangement could be worked out whereby Hazel could havea license under the Peiler pat- ent here involved with a share in‘Hartford’s rovaltic ss frome. other Heensees if Hazel would agree (1) not, to file a petition - fora reherring in this Courts and (2) not to file a petition ‘for cortroraré to the Supreme Court. Hazel accepted these conditions, paid a millien dollars damages, and took a lis > conse under the Hartford patent, . This license agreenient provided that in return for Havel’s accepting a lieense under the Peiler and other patents, at Hartford's standard revalty rates. Hazel would’ recerve sone third -of Hartford *s raoviitye after deducting SS00,000, while Owens would receive another third in place of the half it had been receiving under the 1924 contract,’ In exchange for this share in rovaltiess Hazel agreed that at wonld license Flartford under Hazel’s patents, which were narrow in-seope, relinquish a elain: against Hartford and. | Owens and allow:-Hartford to reegive the benerit of its skill iwoperating glass machinery mechanisms. MH. Following the signing of the Various agreements De tween Hartford, Hazel and Owens, in Puiv 1952. Hartford wd Hazel published an announcement to the effect that: Hazel hati paid one million dollars in dainages and aereed . to accent a dicerse-under the FA: artford patents. The an. neuncement did’ not reveal, however, that Hazel was. to . share in one-third of Hartford's rovalties, anal in fact the. existence of this arrangement was not known to other mem- be ‘rs of the industry, even including contain executives of s 58 ° . 1" Hartford, until public hearins before the TNEC in -Decen- ber, 1 938. 12. Following the annotncement of the Hartford-Hazel settlement, a number of other manufacturers of glassware, {fol. 42] whe had previously refused to take licenses from Hartford, took licenses under Hartford patents at Hart- ford’s standard royalty rates. Some of ‘them did so be- cause the powerful Hazel- Milas Company had, so they thought, been forced to take a‘ license as a result of the decision of this.Court in the Hazel-Atlas suit. The result is that today Hartford has manufacturers representing about 96% of the production capacity of the industry under li- cense and contributing royalties to Hartford and Hazel. Royalty collections in 1940 amounted to about six million, dollars and have totalled forty million dollars since Hazel took the license. — On May 9, 1941, Honorable Frank L. Kloeb, United States District Judge for the Northern District of Ohio, before whom the aforementioned case of United States v. Mart- ford-Empire. Company, ct al., is being tried, entered an order on motion of the’ plaintiff, after argument and sub- mission of briefs, impounding all rovalties payable by Hazel-Atlas to Hartford under the 1982 agreement, and all amounts payable to-Hazel-Atlas by Hartford under said agreement. Judge Kloeb, in-m: iking such order, found that: said agreement was prima facir illegal. The total amount ened to the = = , P 4 ee \ “4 \ e ! ° : ms 57 {fol. 64] Ix tHe Unirep States Circurr Court or ApPEal. s FOR THE TuigpCircuir iy No. 5203 ” . i Harrrorp-Empie ideas, Plaintiff- Respondent, Vv. SuawkEE Manvuracturine Company, GuensHaw Grass Com- —pany, McKee Giass Company and GeorGe R. Haus, Defendants-Petitioners. Repty to AMENDED a oF DEFENDANTS TO Vacate ¥ © Decree, Erte. —Filed Feb. 3, 1942, : Now comes the plaintiff, Hartford-Empire Company (hereinafter called Hartford), and makes answer to the amended petition of. the defendants-petitioners (herein- after collectively called Shawkee), the original of which w as filed herein on October 24, 1941, as follows: 1. As the original petition herein was heard:and con- sidered by-this Court in connection with the original peti-. tion of the Hazel-Atlas Glass Company (hereinafter called . Hazel-Atlas), (No. 4414), and as the two amended petitions . will doubtless be considered together, Hartford in this reply will incorporate, by reference, various pertions of its reply to the Hazel- Atias amended-petition i in order to avoid repe- tition. : ° [fol. 65 . Hartford admits the alleg: itions appet uring on page 1 of a Petition. Hartford admits the. allegations appearing on page of the Petition, exeept the allegation that the ‘*Shawkee feeder’* involved herein utilized air pressure and Vacuum to.control. the discharge of @lass.as disclosed in the expired patents to Hitchcock No. 805,068 and Reissue 13,929, which Hasttoed denies, and lar tford avers that the Peiler patent, in so far as concerns: the process defined by the claims in- volved in this suit, is not fimited to the use of ‘a reciproeat- ing plug or plunger’’. ae Hartford admits the’ allegations appe: ring on page 3 of the Petition, but avers that Shaw cee’s counsel proposed at” the hearing before this , 5. ourt that the case night be dis-/ ee es » - posed of as if on final hearing, and Hartford refers to the opinion of this Court reparted at 68 F.*(2d) 726 for a full , ' statenient of its reasons for diemicslng-the appeal. Hartford admits the afegations appearing on pgges 4 «and 5 of the Petition, except the allegation that patents 2,07%571 and 2,073,572 were for the saine-‘‘ generic inven- . tion that this Court Nad attributed to’ Peiler-Pafent 1,655, 391 in ‘the Hazef-Atlas Glass Company and Shawkee deeci- sions"*, which it denies. ; . Answering pages 6 to,12 ‘inclusive of tke Petition, - Hartford avers: The. so-called “Clarkesarticly’” was prepared_in the first” instance under the circuma&tances related in Hartford's ‘reply filed herewith %o tHe petition of*Hazel-Atlas im No. 44id4end Hartford refe and adepts the same as a part hereof to show thg facts and tireumstances as to the prep- * nration of saigl article,the use thereof in the Patent Office and before this Court, the reply made thereto by Hazel. Atlas in its original brief in No. #414 and the truth of the _ “facts set out in said srticle. [fol. 66] Hartford denies the allegatians and implicftions + . of the Petition that the Said article, as published, w avers that any errors Phich may originally have appedkred in preliminary drafts Qjereof were corrected before publi- cation, avers that the "Btatements, in. said ‘article, as pub- ‘ lished, were. true; and avers’ that pages 10,to 12 inclusive of the Petition are misleading‘in that they do net disclose that subsequent to the writmg. of the letters therein re- ferred to, it was ascertaified that such of the criticisms and statements 6f inaccuracies voiced in said letters as were not subsequently corrected were without foundation“aia™, were based on faulty recollection, that the curves of the chart, prior to publication, were asce?tained to be correct. and furtber that the chart was actually adverse to Hartford because all feeder production of pressed ware Was omitted, so as to the draw a true comparison with Owens Bottle * machine production. For a further ‘detailed statement of the facts in this regard, Hartford refers to Paragraph 6 of its reply to the Petition in No. 4414. ‘Ln-answer to the last two paragraphs on page 12 of the Petition Hartford admits that by letter dated October? °. 1933, this Court's attention was directed by Shawkee to the fact that the aforesaid article had been submit@d to the ‘ -~ National Glass Budget by Mr. Hatch, but avers that prior to such submission, the same had been carefully checked by , Mr. Clarke, changed by him in some respects and then approved and signed by Mra Clarke. - * “Hartford denies that the true facts were not then dvail- able to Shawkee and that the true facts were suppressed by Jiarfford, but avers, on the contrary, that the facts were _available to Shaw kee, and that prior to the decision of this “Court, Hartford, by its counsel, had advised Shawkee’s counsel as to persons who had knowledge of the facts, hie hereinafter more fully set forth. 7 J \fol. 67) 4. Answering page 13 of the. Petition, Hartford Menies that the petitioners -were unable to prepare’ and _ file their said Petition prior te June 1941; denies that peti- tioners have exercised proper and reasonable diligeyce in presenting the same? and avers: The appeal inthis cake was argued on OctdBer 3, 1933. On. Oetoler 20, 1933, one of the counsel for Shawkee wrote to one of the counsel for Hartford, stating that subsequent to the argunient in this Court ceftiin correspondence had he¢n brought to the attention of Shawkee’s counsel *‘show- ‘ing that the (Clarke) article * * * was published 29S 2 ae request of Hartford-Empire Company by one ofits attorneys, Mr. R. F. Hatch * * + °,”* and on _ October 30th said counsel for Shawkee advised the Judges of this Court of the’eorrespondence just referred to. Or the same day, counsel for Hartford advised counsel for -- Shawkee that if the latter désired that the correspondence “he placed before the Cireuit Court of Appeals and that (‘ourt is willing to accept it, we wil] interpose no objection”. Copies of all the pertinent correspondence. and exhibits . thus laid before the judges of thix Court are hereto attached . as Schedule “*A*’ and made a part hereof. 9° Hartford refers fo Paragraph 8 of its reply to the Peti- ’ tion in No, 4414 for a statement of the facts as to the knowl- edge acquired by Messrs. Wood and Wood as to the author- ship of said article. As appears from the Appendix to Hartford's brief on the original petition herein, pages LIS, 119, the late: William J. Belknap, of counsel for Hartford, wrote to Edmund P: Wood on November. 13, 1933, asking — confirmation. of Mr. Belknap’s understanding that Mr. Wood was aware prior to the trial of the Hazel-Atias case in 1929 that Mr. Hatch had been instrumental in having the =: * 60 article published; and Mr. Wood replied under date of No- -Vember 14, 1933 confirming’ ‘the fact. On November 17, ‘[fol. 68] 1933,°copies of Mr: Wood’s letter just referred ‘to were sent by counsel for Hartford to the Judges of this C ‘ourt: and also to counsel for Shawkee. 5. On December 16, 1933, counsel for Shawkee agai wrote to the Judges of this Court calling attention to the then: recent decision of the Supreme Court in Keystone - Driller Co: vs General Excavator Co., and asserted that the facts as to said article constituted a case of unclean hands. In that letter, counsel for Shawkee stated that ‘it appears for the first time subsequent to. the siub- ission of the case in this court that ‘in the prior suit. (the Hazel-Atlas case) upon which plaintiff now re- lies, this court was influenced by a publication which. first had been instigated, and then invoked by’ plaintiff to secure a favorable action by the Patent Office when the application for the Peiler Patent, here sued on, was pending and liad relied upon: and invoked that publication and: other publications which had never ‘been introduced: in ‘evidence. in the litigation but ap peared in the shag only because they ‘appeared in the Patent Office file wrapper as matters which had been presented ex parte by the present. plaintiff to support, the application for. the Peiler Patent and to | ‘overcome the action of thé Patent Office in rejecting claims by Peiler upon the disclosure of the Hitch- cock Patent upon which the defendant here relies for justification of its action in making the. machine ‘vere complained = : He further stated that .the corresponde nee sent. to the Court. shows that : ee , ‘¢the publication of this article in the Glass Budget’ was instigated by the ingenious brain of Mr. Hatch, _ one of plaintiff’s attorneys”? was nsed in the Patent Office and that. ites, plaintiff's sbrief "in the “Hazel- Atlas case in this Court - {juoted from this: _article”’ . - [fol. 69] 6. On January 11, 1934, the opinion of this Court was filed herein, dismissing the appeal. On February &. ; r 61 1984, ‘a petition for rehedeinis was filed based in part. on. the alleged newly distovered evidence as to said article, and alleging that it showed that Hartford was in court with uiclean hands. On sien 21, 1934, the ners was | — 7 7. Hartford reters to: Paragraph 14 and Schedule F of its reply to the Amended Petition in. No. 4414 for the facts as to the disclosure of matters relating to the Clarke article by the filing of the complaint in the case of United Stat¢s of America v: Hartford-Empire Company, et al:; and avers that on the’ filing of .said complaint on December 11, 1939, detailed charges as to the authorship of said article were made of public record. Hartford further avers that a com-- | plete copy of said complaint was in the hands ‘of present counsel for the petitioners herein shortly after the filing : thereof, as was admitted by said counsel at the hearing i in this Court on the original petition. 8. | for Shiawkee was advised. by counsel for | Hartford by a letter dated October 24, 1933°(in-Schedule A annexed hereto) that the existence ‘of the papers presented to ‘the Judges of this Court by ‘counsel for Shawkee, as ° _ aforesaid, were known. to counsel for the Hazel-Atlas.Glass ‘Company before the appeal in No. 4414 was heard by this Court, and by letter dated October 30, 1933 (in Schedule A) eounsel for Shawkee was adv ised that the same was also ~~ i known to counsel for the def ‘endant in the Nivisoi-W ciskopt - case (Messrs. Wood and Wood), Hartford refers to Para- - graph § of its reply to the Petition in No. 4414 for a state- ment of the facts as te the knowledge of counsel for Hazel- Atlas and -Nivison-Weiskopf on this, matty ‘ras of October _ 80,1933, and Hartford avers that by Lwiid letters of October 24 and October 30, 1933, counscT for Shawkee were given ffol. 70] such information that by the exercise of ouly ordi- ary ‘diligence, they could have ascertained. all the addi- tional faéts as to the authorship of : the article had they chosen to do so. Counsel for’ Shawkee therea fter wrote bn counsel for Ritzel- Atlas asking whether they could confirm the informa- tion iy en-to counsel for Shawkee by counsel for Hartford. . “that! the matters relating to the article in the Glass, Budget" referred to.in the papers submitted br coansel for ne to the Court on October 30, 1933, as above stated, ‘ . * . should be denied. 62, ‘‘were fully known to counsel’? for the Hazel-Atlas com- pany at the time the case was tried. He received a reply. - dated November 10; 1933 stating that counsel for Hazel. ; Atlas’. ‘‘ present impression is that prior ta the trial, per.. . haps when I first _knew of this article, probably soon . after the patent issued in 1927, I thought that the Hartford-Empire Company might have been. respon- sible for the article, but that I did nat, prior to the trial, know of the papers. However, my recollection now is too indefinite to be positive and I would have. .- - to go through the voluminous: collection of papers relating to the various Hartford-Empire litigations, _tncluding correspondénce, before I could be mere defi- nite. This would take about two days and it is possible that . there would be nothing in the papers to make “me more definite than I: now am.’ Hartford avers that Shaw kee are made no effort to have counsel for Hazel-Atlas make any examination of his records to refresh his recollection as to what he knew about the-articlé, nor did they make any effort to ascertain what knowledge Messrs. Wood and Wood had after a copy of Mr. Edmund Wood's letter to Mr. Belknap was sent to counsel for Shawkee, as aforesaid. Hartford avers that petitioners’ failure to exercise dill > gence under these circumstances, for a period of eight | years, deprives them of any right, to relief under their - [fol. 71) present’ Petition, and-that there has been such laches in the -filing of the Petition herein that the same Hartford further avers that Shawkee made no atten to investigate the facts as to the preparation ‘of said article’ in or inimediately after December 1939 when Shawkee’s counsel came into possession of the complaint in the case of United States v. Hartford-Empire et al. above referred to, or to call the same to the attention of this Court at that time. 9 The bill of Complaint herein was filed May 21. ES. At that time, one of the deferdants, Shawkee Manufactur- ing Company, was making and offering for sale glass feed ers* whose operation was charged to infringe the Feiler patent. in suit. Two other defendants, Glenshaw: Glass re ; : Se a ee 63 : Company and McKee Glass Company, were using the like feeders in day to day Cperation. The fourth defendant, — George R. Haub, was ati pee formerly in the employ of’ Hartford and of Hazel-Atlas’ Glass Company, , and was: made a defendant as the designer of the accused feeders. The District Court filed its opinion on July 22, 1933, grant- ing a preliminary injunction, limited, however, to enjoining - ‘the sale or disposition of: the accused feeders to third _ parties, and refusing to enjoin the use of the feeders by the defendants themselves. . ae On June. 27, 1933, the defendants. filed their answer. | Two of the defendants, Glenshaw Glass Company and McKee Glass Company, admitted-in,the joint answer of the. defendants (Ree. p. 18) that they were then and had been _ ‘licensed by Hartford to use certain glass feeders owned by *Hartford ‘and embodying and performing’ inventions of - Hartford; including ‘‘the method invention of the letters ‘patent here in suit; and that they have acknowledged atid recognized and still continue to acknowledge and recognize [fol. 72] the validity of letters oe of plaintiff including» the letters patent here in suit’. The defendants averred (Ree. p. 20) that if the claims in suit of said patent 1,655,-. 391 were interpreted to embody the apparatus and method. . of the acéused device, then the claims in suit weré invalid - in view of certain prior art cited, mae rngl prior art not before the Court in the Hazel-Atlas suit. As hereinbefore, stated,. Shawkeée’s sade proposed in open Court at. the hearing of the appeal herein, that the pirties stipulate that the-case be considered by this Court -asif on final hearing, and a written stipulation to that effect: ~ was entered into and filed forthwith. Although Shawkee “wrote to the Judges of this Court, prior to the decision of * this Court, ‘*that the publication of-this article in the Glass Budget was instigated by the ingenious brain of’ Mr. Hatch, - one of plaintiff's “atternevs, * * 7’) no- request was ‘made that the defendants be relieved of the stipulatien which their couse] had proposed, providing for the disposi-. tion of. the ease as though on final hearing, and no request _ Was made that the case be reopened to receive.evidence as to the genesis or truth of the aforesaid article. In the peti- tion for rehearing above referred to, no. contention was made that-said stipulation had been entered into inadver- tently, nor did Shawkee seek to, be discharged therefrom.’ ? 64 Hartford avers that by its acts and omissions, Shawkee has waived and abandoned any right to reopen the case on the _ basis of the said.article, and that, by adhering to said stipu- lation after h having obtained full knowledge or opportunity for knowledge as to the genesis of the said article, Shawkee elected not to make any defense based thereon: 10. Hartford uvers, for the reasons stated in Paragraph 18 of.its reply to the pending petition in No. 4414, that the reference by Hartford to the said article in its brief before this Court-in No. 4414 constituted no fraud, and that Hart- [fol. 73] ford’s reliance in this case on the decision of this Court in No. 4414 constituted no fraud in the case at. bar, 11. Hartford further avers that’ the public interest does not require a reopening of this-ease._The decree of the Court as to‘infringement was im personam merelyand ap- plies only to the particular feeders whose operation was complained of. The proceedings in the Patent: Office on | application Serial “No: 294,792, which matured into the Peiler patent in suit, constitute no!bar against an action for inftingement on the Peiler patent, either at law or in equity, but can be challenged only by the United States Gov ernment, in a direct proceeding. . 12. Hartford makes a part hereof the original stibitaerits and exhibits herein before filed by Hartford i in response to the original petitions herein. - ~ 3 Attached hereto as Schedule Band made a part hereof is a chronology of important events in this suit. Wherefore Hartford prays that the petition of Shawkvee, | as amended, be denied. x Harfford- Empire Company, By Stebbins & Blenko. Attorneys. Francis W. Cole, Edgar J. Goadrich, James M. Carlisle, Of Counsel. (Tomas @, Harcut as Counsel for Plaintiff- Respondent took’a principal part in drafting this Reply, but he died sud- ‘denly on January 26 before the Reply was filed. ). {fol. 74] : Verification StaTe or Ouro, County of Lueas, ss: . Robson D. Brown, being duly sworn, deposes and says _ that he is a Vice President of Hartford-Empire Company, \ y 65 the icieidh tessa herein; that he in vend the fore- going reply and that.the statements therein are true to the - best of his know ledge, information and belief. “9 | Robson D. Brown. ‘Sworn to and ‘subscri ec ici and for said County and State, the — - day. of vivant d 1942. [fol. 75] ae Screpute ‘A?’ To Repvy Correspondence and Exhibits submitted” to the Judges _of this Court by Shawkee’s counsel in cana 1933, as follows: Letter, Otto R. iiiaaaae Ksq., to Thomas G. Haight, _ Oct. 20, 1933 ‘Letter, Mr. Haight to Mr. Barnett, Oct. 24, 1933 _ _ Letter, Mr. Haight to Mr. Barnett; Oct. 30,1933 Letter, Mr. Barnett to Judge .Buffington, Oct. 30, 1933, with the following enclosures : ‘1. Letter, Hatch to National Glass Budget, July 9, 1926 2. Letter, Budget Publishing Co. to Hatch, July * 42,1926 . Letter, Budget Pullliching Co. to C larke, Ses 18, 1926 . e- eas > Budget, July 14, 1926 - 5. Certified copy of papers from Patent Office : file of application for Peiler patent 1,655,391. See Record of this suit, No. 4414, Vol. V, pp. 261-265, 301 6. The typed Clark article. See Hartford ap- pendix\ pp. 95-106 and Schedule A attached to _Hartford*s Reply to Amended Petition in No. ~ 4414. 7. Copy of ition, Mr. Rlacnott to Mr. Haight, _ Oct. 20, 1983 (printed at p. 13, infra): .. Letter, Hateh - Kimes . of National a My dear Judge Haight: ’ purported to be written by the President of the American = judges who heard the Shawkee case on appeal as matters — . which the court may deem pertinent but which were previ- ~ ously unknown to counsel for either side. &. Copy of letter, Mr. Haight to Mr. Barnett, ~ Oct. 24, 1933. eibensaln at P- ‘14, infra). The iia are snniaieaed hereviith, except the fifth and — ~~ sixth enclosures accompanying Mr. Barnett’s letter to Judge _ Buffington of _ 30, 1933. [fol.76]° = “October 20, 1933. ‘‘Hon, Thomas G. Haight, ear ; ee wae . Exchange Place, ae aes. ie Jersey City, N. J. _ Re Shawkee et al. vs. “Hartford. ‘Empire Co. _ 23 io ——— ‘Since the conclusion of the atewnent. in the Coie of Appeals i in the above case I have had‘submitted tomy atten- tion certain paper's showing that the article published i in the National-Glass Budget-undér-date of July 17, 1926-which Flint Glass Workers’ Union was published at the request of Hartfgrd-Empire Company by one of. its attorneys, Mr. R. F. Hatch. ‘‘This request was sent. by Mr. Hatch to: his personal friend Mr. Thomas A.-Kimes, Secretary of National Glass — Budget. Following the publication of the article, a certified copy of it was filed in the Patent Office in support, of the then pending Peiler application which resulted in Peiler . Patent No. 1,655,391. This is the article which was quoted . quite extensively by Judge Buffington im his opinion in tie Hazel-Atlas case upon which Hartford-Empire Company relies in.support of its-contentions in the Shawkee case. - “T\am sure you will agree with me that all of these papers should be. immediately called to the attention of the ‘*T feel that you, as senior counsel for the Hartford-Em- pire Cothpany, which has been claiming the benefit of this article, have the prior right to clarifv this situation by sub- [fol. 77] mitting these papers to the court immediately: and feel confident that you will agree with this suggestion and act accordingly. “Should I be wiitahen | in : this respect, sianaal for Shaw- | "kee et al. feel that it is their obligation‘to the court as well _ as to their client to sec that these papers are promptly sub-~ mitted to the cour “As whatever utiles is taken must be taken promptly, may I have your early reply stating your Son eee as to bow the matter should be handled... “With personal regards. . ‘‘Very truly yours, — ; ea (Signed) Otto R. atieatt: oy —————— —— ‘‘October 24, 1933. -“Otto R. Barnett, Esq., - 1518 Monadnock Block, . Cuca, ms ce ‘Shawkee v. Hartford-Empire Cémpany: My dear Mr. Barnett: ‘‘Your letter of the twentieth, with ctniontiaas, was for: warded to, and. has just reached me here. - _ ‘*1 do not know of any procedure which permits an ap- pellate court to consider evidence which was not ‘before the eo lower court; nor would I feel at liberty to attempt to in-- augurate such a procedure without the permission of the appellate court. I cannot, therefore, agree with you that the papers, photostats of which you enclosed, should be im- mediately called to the attention of the Judges who heard . ffol. 78] the above case on appeal. However as you know, I have several associates in this matter, and I do not feel at liberty to adopt any definite course of action without _ their concurrence. - I-have accordingly advised all of them by letter today of your letter.and suggestions, and. as soon _as' I have heard from them I wilk let you know definitely what we will do: “‘T suggest, if you feel the matter of determining whether these papers should be submitted to:the Judges of the Cir- cuit Court of Appeals should’ not wait that long, thaf ‘vou give notice of an application to be made to the Cireuit Court of Appeals for permission to incorporate these ‘papers in the record. I will be before.the Court on Thursday next, - November second, and it would accommodate me very ‘much : if you could make the a, if vou determine to make : , ne one, at that time. Speaking personally,t would not fee] it - would be fair, even.if the Ciréuit Court of Appeals were _ Willing to accept the letters and documents which you en- élosed, to- submit them unless’ they were accompanied by* ‘- depositions Or affidavits of explanation by the — who. - wrote them respectively. \ \ “I am advised that the existence -of as paper. was -—known to counsel for the Hazel-Atlas Company before that case was heard in the Court of Appeals, and to counsel i in . _another case in which the Hartford- Empire Company was © the plaintiff,.byt no effort was made by counsel in eithér — * case.to make pe use of the papers. Indeed, the person-who — wrote one of the letters—d think Mr. Hatch—was produced ° at the trial by the Hartford- Empire Conipany at the request of counsel for the defendant in the second of the above cases mentions, but he was not called. ‘Sincerely’ ‘yours, _ ; : le 7 [fol.79] | . -* Qetober 30, 1933. ‘“Hartford-Empire ( Sa v. Shawkee Mfg. Co. et tage ‘‘Dear Mr. Barnett: 3 I have just been able to get in communication with other counsel for tke plaintiff since writing you on Octo- * ber 24th. As you know I was engaged in a trial at Camden all of last week. . We all feel that the correspondence which rou enclosed in your letter is evidentially irrelevant for several reasons ‘and has no proper place in the record. - If, _ however, vou desire that it should be placed before the Cir- cuit Court of Appeals ‘and that Court is wilting to accept - it, we will interpose no objection." ~. ‘*Quite aside from other reasons,: we think that 3 you will, agree with us that the correspondence is irrelevant for any purpose unless you are prepared to show that the state- ments in Mr. Clarke’s article which were quoted by Judge Buffington are untrue. They are true and were fully sup- _ ported by other parts of the record in the Hazel-Atlas case. - Indeed, as we have understood the pdsition of your asso- ciates in this matter since the Shawkee case started, they have never contended to the contrary and, in fact, we do not see how defendants can contend to the contrary in view of certain statements relating to the development of the art. Zo ae My Dear Jupae Bu FFINGTON :° appearing in “the Haub penne ry found in the Supple. “mental Record on pages 13 and 14. “As I heretofore wrote vou, the same. ssenaiiiiiallanie was known to counsel for the defendant. in the Hazel-Atlas ants make any attempt to use the same. [fol. 80] “The article i in question found its way into both cases through the introduction.in evidence of file wrappers. “If you determine to transmit the correspondence. and other documents Which you enclosed in.your. letter of Octo- ' ber 20th, to.the Circuit Court of Appeals, will you please send to the Court a copy of this letter? Will you also please . send me a copy of any letter you write to the Coart o or the Cera? ‘*Sincerely yours, — -——-. “Otto R. Barnett, Esq., 1518 Monadnock Building, Chi-. cago, Minois. ” P ? **October 30,°1938. Hon. Joseph Buffington, United States Circuit Court of Appeals, Federal Building, Philadelphia, “Pa. ° Re: Shawkee. vs. Hartford-Enipire Company e “In your decision in the Hensel Atlas case 8n the Peiler | patent much weight was giver to certain publications, in-’ eluding a published article purported to have been written by William P. Clarke, President of the American Flint Glass Workers Union, paying tribute to the Peiler inven- tion, ; “After the argument of the Shawkee case in your court was completed there was brought to my attention certain original correspondenee, including the original of the Clarke [fol. $1] article bearing the printer’s marks showing that the Clarke article was printed at the instigation of the Hartford-Empire Company, through one of its attorneys, “R.F. Hatch, who appears as qe of its witnesses in the ree- ord in the Shawkee casé. Mr. Hatch submitted tite article to his friend Mr. A. W. Kimes, Secretary of. the publication in which the article 5 cateinarss Shortly thereafter that case before the trial and was also known fo coinsel for the ms . defendant in the Nivison-Weiskopf case before the trial,~ / and in neither case did counsel’ for the respective. defenid- ts "Baas e. ome 70 articl@ was used in the Patent Office in support of the prose: . cution ofthe Peiler application which was then owned by Hartford- Empire Company. ‘*Believing that these facts should be keene to the court as having a bearing on the opinion in the Hazel-Atlas case p> which plaintiff so strongly relies.in the Shawkee case, I stibmitted photostatic copies of these papers to Judge Thomas G.: Haight, principal counsel for plaintiff in the present case, suggesting that he submit them to the court. ‘‘But: Judge Haight did not agree with me that this should be done. ‘*Aecordingly, | submit to your Honor. herewith copies- of the following papers: ‘1. Letter of Hartford- Kenice Company, per R. ,.: Hatch, to National Glass Budget, enclosing the Clarke article and requesting that it be published. ° fe ‘*2. Letter from Budget Publishing Company to Mr. Hatch promising to publish the article promptly. ‘3. Letter from Budget sie sci tied to Wil- | liam P. Clarke. “4. Letter from Hartford- Empire. Cisse by Mr. | ‘Hatch, to A. W. Kimes of National Glass Budget. | 5. Certified copy from the Patent Office in the matter of the Peiler Patent No. 1,655,391,- including an,argument [fol. 82] by Peiler’s. attorneys in reply to a letter of objec- tion and an affidavit by T. A. Kfmes accompanying said argument and swearjng to the authenticity of the copy of — National Glass Budget for July 17, 1926 there referred to. ‘“*6. The typed Clarke article. ; “7, ¢ ‘opy of my letter to J adgerHaight of October 20th. “8, Copy of Indge Haight’ s.reply to me. . “lt i is quite true that these paperg are probably not’ -per- tinent evidence in the present case for the reason ‘that neither the Clarke article nor the other articles referred to in a Court of Appeals opinion in the Hazel- Atlas case are in evidence in the present record. ‘It is true that they are contained in 1 ‘the. Hazel- Atlas : record and that the Hazel-Atlas record. is in evidence. in| the present case. That fact merely shows what record was © 71 . before this court in. the Hazel- Atlas case but. of course does not establish as proven facts in this case any matter shown ‘in the Hazel-Atlas record, y oe “The enclosed papers emphasize ‘the importance of this distinction. If the Clarke article were in evidence in the -present case these papers would be pertinent as newly dis-, covered evidence. ‘Believing that these papers ‘show that seidieiial facts were withheld from the court when the Clarke: article was introduced in.evidence in the Hazel-Atlas case and that in the-absence of the testitnony of witnesses as to their origin and authenticity the same may be true as to other pub- lished articles relied on by the court in the opinion in an Hazel-Atlas case, I submit.these papers for your Horfo [fol. 83]. consideration. I do. not understand that their authenticity, is challenged by. the Hartford:Empire Co: “A copy of this letter i is being ‘sent to Judge Haight by this same mail. ° ‘*Respectfully submitted, (Signed) Otto R. Barnett, Of Counsel for Bhawkee Manufacturing Com- pany et al.’ - ; s | Letterhead of Hartford- Empire Company . aritaps, Conn. * _tsily §, 1926. National Glass Budget, 230 5th hen Pittsburgh, Pa. Attention: Mr. Kimes rs = Ve ; ton bets ' Dear Mr. ‘Kines: I am ‘now having copies and I hope to be able to send it with this letter, a final revision of an article relating to organized labor and the’ “introduction of glass feeding: me- .Chanism. This article is prepared by Wm. P. Clarke, President of the American. Flint Glass -W orkers’ Union. Mr. Clarke’s address, as you probably know, is the. American Bank Bldg., Toledo, Ohio. _ Weare considérably interested-in the atilieatiiat of this - ‘article and we believe that it is of sufficient genefal interest to take it acceptable to you for publication. a {fol. 84) I am going to send you the original copy which - has been corrected and signed by Mr. Clarke, but we want to be sure to get this signed copy back again to return to Mr. Clarke in accordance with his request. With it I will enclose a clesn copy made from the original draft. _ I do not kiiow just the process that you employ jn pre- . paring this article. I assume of course that as the editor you are entitled to blue pencil it if you think it necessary. I might say that the repiarks relating fo the Owens Com. pany will not give theni any offense, as they have already seen the article. Mr. Clarke would like to see a proof of this before it is published. Is this in accordance with your usual custem anid can this be conveniently arranged! We would like to have the article appear as soon as possible and I ¢hink that Mr. Clarke will not insist on seeing a*proof if it is going to take extra time. . If you can conveniently send Mr. Clarke a proof of this article, his address until Wednesday July 14th will be Hotel Lérraine, Philadelphia, Pa. and after that for a week or more he will bé at the Craig Hall Hotel, Atlantic City, N. J. In case I am not able fo enclose the copy with this letter, I will say that it takes 13 typewritten pages and that there is one sheet showing a production ehart which will have to be reproduced in some way. You will understand that we do not want to have any unnecessary connection with this ar- ticle as it is presented wholfy as the statement and opinion - of Mr. Clarke. If there will be any expense in connection ewith this, please let us know what it will be. My ‘present. plans ‘call for being in Pittsburgh July 20th and [ shall be in to see you as usual. I hope to be able to bring a descriptive article on our 1, S. machine at that time with photographs, bit this is not sure. (fol. 85] .1f there is anything that you can do to aid us - in hastening the appearance. of this article, we will appre- , ciate your advice. Yours véry traly Hartford-Empire Company By R. ; F. Hatch. RFH :BRW. P.S. Mr. Clarke puttertoba the publication of this article over his name and in his ®fficial capacity as President of his Union. * . There is another thing. about which I would like to get some information. I do not know whether this article is a 73- "too long to appear in one edition of the Budget, but whether ‘jt appears in one or two issdes it is probable that we would like to get some reprints, perhaps abont 100 of a convenient pamphlet size. Would you undertake making these for us! If it is not going to be convenient ‘to get these reprints, . we shall want about fifty copies of the’ Budget in which the article appears. ‘I suppose that submitting a proof to Mr. Clarke wiil ' eause some delay, Therefore I am going to enclose a ecar- bon copy of this re-written article exactly ashe aubmits: it for publication and suggest to you that you send this carbon to Mr. Clarke and write him that you either intend to publish it exactly as submitted or indicate on the carbon exactly what changes you wish to make. Please let me know what you do about this. I feel sure that he would be per-- fectly satisfied to take ‘your word for a faithful reproduc- tion of the (ypowetiten, sheets. R. F. Hatch.” ° to so) Letterhead of The National Glass Budget : “Pittsburgh, Pa. July 12, 1926. ; R. F. Hatch, % ‘ Hartford- vate Co., Hartford, Conn. * My DEAR Mr. Hatcu: > : : Your letter of the 9th accompanied by three enclosures, just received. Since tlie article is to appear over Mr. Wil- liam P. Clarke's signature it will be published in its entirety “ in next Saturday's issne of.the Budget verbatim wit the ‘ copy which you had marked for the Budget. Inasmuch as we would not have time to submit the article to Mr. Clarke ‘and get it back in time to use in § mean! w issue, and es- pecially. since no clfanges will appear in the copy, we are going - or with its publication. . will be carefully read so that the slightest devia-" tion ffom- the signed article will not take place. Your com- pany will not be connected by us with this article in any way. | Coticerning the reprints of the article, or extra copes of the Budget in which it appears, we will gladly sypply you with fifty copies of our publication with our compli- ments. Théy will be mailed to you on next Friday after-_ noon. Should you like to have the reprints made ‘also in pamphlet form. we will save the type and arrange to have them printed atthe lowest pgssible cost to your firm. : e 4—423 ; 74 As Siiiunbtnl, awe are pelea herewith ‘the original copy signed by Mr. Clarke. The second carbon copy is being mailed to Mr. Clarke at the Craig Hall Hotel, Atlantic City, N. J. We are advising Mr.'Clarke ‘that the article willbe reproduced exactly as submitted. [fol. 87] Glad to see that you are coming to Pittsburgh on July 20th. Do. not forget that Mrs. Kimes-and ‘I are to show Mrs. Hatch and you around ‘the city, Do you care for baseball.gamés? Boston will play, here on the. after- noon of the 20th and Brooklyn i is scheduled for the follow- |. ing day. Should you like to see the Pirates in action let us known promptly which game you would prefer seeing. ’ Be sure and call us up upon your arrival in this city. | Allow us to assure you that we greatly appreciate vour kind fav or in supplying the article for publicatiom . Very truly yours, — ‘Publishing Co. A. W. Kimes. m AW Kinies/H”’. ea | anor “July 13, .1926. Mr.-Wm. P.'Clarke, % American Flint Glass -Workers’ PP iii Union, Craig Hall ‘Hotel, Atlantic — yN. J. My DEAR Mr. CLARKE: Enclosed. herewith you will find the, carbon: copy of an article you will readily recognize and which was sent to us by. Mr. Hatch. He requested that if the slightest change be niade to the article as submitted that a proof showing same be sent to you. Inasmueh as the article is being printed verbatim and that time was scarce, we are going ahead with the publication of it in Saturday’s issue of the Budget. Trust that our aetion in this instance will meet with your approval. , a [fol. 88] On Friday a dozen.copies of the current issue of the Budget will be mailed to you at Atlantic City. Do not forget that we will appreciate having any news coneerning the Flints gnnual convention or the wage con- ferences that you can consistently releasé for publication. | ° Again thanking you for the many kind favors extended to the Budget. Very truly yours, Budget Publishing Co. ~AW Kime “FD. baal . = ‘«July 14, 1926. Mr. A. W. iii National Glass Budget, 230 Fifth Ave- nue, Pittsburgh, Pennsylvania. Dear Mr. KiMEs: We are very glad to note by your tefter of July. 12th that you found the Clarke article to be acceptable for pub- - jieation. I have written Mr. Clarke this morning in regard ° to the failure to submit printed proofs to-him and I think - that this will not be objectionable to him. If he has any: criticisms to make. it wil@be directed against me, as this was my suggestion. I take it that this: will all. appear in a single issue of the Budget.. We certainly appreciate’ your offer to supply us with fifty copies with your compliments. I have taken. the _matter of thé re-prints up with Mr. Brown and we have decided that .probably the original publications will carry [fel. 89] a little more weight than a reprint, therefore, we would like to have you send us fifty‘additional copies, mak- ing one hundred in all. But, we insist most emphatically, — that the additional fifty copies shall be billed us at your’ regular rate. In view of this decision it will not be neces- sary for you to save the type of the original article. It certainly is very kind of you and Mrs. Kimes to make plans to entertain Mrs. Hatch and myself. I doubt if it will be advisable for you to make any plans i in advance. There isastrong possibility that I may not be able to leave here on the 18th as I plan, and I find that T have ‘to make one stop on the road, so that it is not exactly sure just what. time IT will arrive. IT expect to get there on July 20th, but it might be a day earlier or Tater. T shall certainly let you know as soon as I- get in town and I am sure that we would ‘be delighted to have you show ns around the city a little. About all I know of it is the business district. Very truly yours, Hartford-Empire Company, by ’ RFH-T”’. 16 . Ssh 38 [fol. 90]. “ ScHepue ‘*B** ro"Repiy Chronology of Events May 5, 1932. This Court's Opinion filed in Hazel-Atlas case, holding the Peiler patent valid and infringed. May 17, 1932. Hazel-Atl&s procured the affidavits of . Messrs. Wood & Wood stating that both Clarke and Hatch ' . had told them that the article had been originally pre- pared by Hatch. May 31, 1933. Bill of complaint, herein filed (Ree. p. 1). June 22, 1933. Opinion of District Court filed, granting ; preliminary. injunction against sale of the accused feeders, _but refusing to enjoin their continued use by defendants (Ree. p. 259). : June 27, 1933. Answer filed, two of the défendants ad. - mitting. validity ofthe Peiler patent in suit andthe ot}er deferidants not denying its validity (Ree. p. 15, p. 18). June 27, 1933. Decree entered directing preliminary in- junction (Ree. p. 2). June 29, 1933. Appeal taken from decree granting pre- liminary injunction (Ree. p. 2}. ‘Oct. 3, 1938. Appeal argued (Rec. p. 488). The parties stipulated that the case might be nace of as though on final hearing (Ree. p. 487). Oct. 30, 1933. Shawkee notified the J udges of this ( ‘ourt that the article had been instigated by Hatéh and publi-he al at Hartford's request (Hartford Appe ndix p. 54). Nov. 17, 1933.-A copy of Mr. Wood’s letter of Novem- ° _ber 14, 1933 was sent -to the Judges of this Court and to counsel for Shawkee (Hartford Appendix, p. 41). [fol. 91] Jan. 11, 1954, Opinion of this C ourt, disniissing the appeal, filed (Ree. p. 489J. Feb. 8, 1934. Petition for eehearing filed, Sind in part on the fact that the article had béen instigated by Hateh, ~ and averring unclean hands therein (Ree. p. 495). | Feb. 21, 1934. Petition for rehearing denied (Ree |. 503). Apr. 3, 1934. sien filed petition for writ of certiorari | (Shawkee petition, p. 3). May 7, 1934. Petition -for certiorari dusted (Shawkee petition, p. 3). May 29, 1934. Shawkee filed i in this Court a petition for leave to file a bill of review based on decisions in other ° inanded “with instruction to enter a decree holding the - plaintiff’s patent valid and the elaims sued. on infringed. and directing an accounting.”’ 'The opinion for the majority in support of the order: thus entered by this court made frequent references to and quoted extensively fronmran article in-a‘trede jowmal known us the National Glass Budget. The article purported to be the work of one William P. Clarke, who had siened it as author, and was titled—‘‘Intreduction of Automatic Glass Machinery ; How Received by Qrganized* Labor—By Wil liam P.. Clarke, President, American Flint Glass Worker- Union.’?’ After alluding to the historic opposition of glass workers to. mechanical glass-blowing appliances, the so- called Clarke article went on to show that; prior to gob- ’ feeders, the only successful automatic feeder for a glass- hlowitig machine had been that covered by the Owens patent, which, like another patent (Brooke), operated on the prin ciple of stream feed into a mold (the former by suction and the latter by flow) of molten glass of high temperature and: low viscosity, unlike the automatic plunger _gob-feeder (Peiler’s patent). Appended to. the article was a chart pur a porting to show the ascending curve of: the increases! elas. | _ bottle production from the use of gob-feeders from 1917 onward, and the almost concomitant flattening of the pro- duetion curve of manufacture under the Owens patent which, up to that. time, had increased: both. continnous!s (fol. 55] and regularly. The Clarke article, which had not been introduced in evidence jn Hartford's suit against , Hazel-Atlas, got into the record merely as a part of th: voluminous file-wrapper history of the: Peiler patent in its. long and precarious course in the “Patent Office. Neither had it been used nor adverted to at trial; nor was it referre:! - to in the briefs below nor in the exhaustive opinion of the trial judge. : oe The fact is that the article had not been written bs Clarke, but by one R. F.. Hatch, an attorney in the paten department of Hartford, which by that time had become the assignee of the Peiler patent application. Hateh not. ome prepared the article and its accompany ing chart but he also procured Clarke’s signature thereto as.the author, and caused it to be published in the Nationa#Glass Budeet with the understanding, assented to by the publisher, that Hart, ford should not be connected with it. The article appenre:| in the July 17, 1926, issue of the N National Glass Budeet ? 2 R. D. note. Vice-President and Patent ( ‘eisadl of Tart. ford, and V..M: Dorsey; a patent attorney for Hartford, brought the published article to the atgention of the Patent: ‘Office on October 12, 1926, with special reference to the Peiler application (Serial No, 294,792), whereon the patent be (No. 1,665,391) issued on January 3, 1928. | It is unnecessary for present: purposes. to relate in de tail how Hatch, aided and abetted by Brown and Dorsey as. - -well-as by HL. W. Carter, of Owens Bottle Company,’ de- __ -. liberately set about ‘‘to get the production curve and a few . ‘statements in regard to gob feeding into print®’ (from a sourve ostensibly hostile to labor-saving glass-blowing ma- chinery) for use in the Patent Office in connection with the Peiler application which had already been réjected on the eround that its claims were not patentable. “As-the matter then stood, the Peiler application [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0012%3A1. Public record. Not legal advice.