# Brief for the Petitioner — Shawkee Manufacturing Co. v. Hartford-Empire Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0012%3A4 ## Record - **Collection:** Supreme Court brief - **Document type:** Brief for the Petitioner - **Published:** January 1, 1944 - **Citation:** 322 U.S. 271 ## Text 2 5 — ; CUR 1 * ' S 7 * ‘i te . ‘ we 8. f a \ cd 2 . ~ ee — — . 2 5 DEC 30 013 CLERK In THE. | Supreme Court of the United states oronRn TERM, 1943 NO. 423 * 4 * SHAWKEE MANUFACTURING COMPANY GLENSHAW GLASS COMPANY + McKEE GLASS COMPANY GEORGE R..HAUB, Petitioners . . HARTFORD-EMPIRE COMPANY, Respondent On Writ of Certiorari to the Third Circuit Court of Appeals for the Third Circuit BRIEF FOR PETITIONERS. 7 WILLIAM B. JAS PERT, Counsel for Petitioners: December 29, 1943. rn BROS. CO. INC., LAW PRINTERS, 1. That it lacked power to set aside its deeree obtained by fraud after the end of the term at which the mandate was dispatched. ° 2. That the accredited contents quoted by Judge Buffington from the false Clarke article did not affect the Court’s judgment. That the newly discovered evidence adduced at the trial of the Government Anti-trust suit does not qualify as after discovered évidence. 4. In failing to vacate its decree and the bill under the ruling of this Court in Keystone Driller Co. v. Excavator Co., 290 U. S. 240. “oo 8 N me Petitioners contend that the Court of Appeals below had power and Bhould have set aside its judgment in both the Hazel case and the Shawkee case and to order dismissal of the bill of complaint in the Shawkee case on the ground that its decisions were procured by fraud agent the Patent Ofice and the Court. ' POINTE | The Motive for Publishing the Clarke Article. - The purpose in preparing and publishing the Clarke article was explained by Carter in a letter written to the President of the Owens Bottle Company (R 7) wherein it was referred to as the Hatch article Hatch, a patent attorney for respondent, had written . Carter said: “He has prepared it with thé idea of getting it 7 printed under the name of some apparently un- prejudiced authority, and then calling attention of the Patent Office Examiner to the article as pup- lished, in the belief that the Examiner will thereby . 2 Hartford's broad claims.” The Patent Office Examiner was being prepared for the Clarke article in an Amendment filed June 23, 1926 (R. 8), three weeks prior to publication of the article in the National Glass Budget. The amendment stated under the Remarks: . | “For the Examiner's information, a discussion of the subject matter of this case is being prepared, with affidavits and exhibits, showing the wide- } 5 * spread recognition by the glass art of the novelty and ry value of the feeders claimed herein | "By an amendment filed October 12, 1926 (R. 8) after anne tig of the Clarke article under Remarks it was stated: “The tele publihed in the N ational Glass Budget for July 17, 1926 by William P. Clarke, President of the American Flint Glass Workers Union, is an interesting account of the introduction of automatic glass machinery and its reception by the labor unions * * — . The remarks to the Patent Office Examiner then .\ — to the chart of the Clarke article stating: The curves shown on this chart are interesting as showing that the production on the Owens machines fell off at just about the time when the suspended charge feeders got under way 8 The conclusion of the whole matter is, that. the suspended charge feeder has accom- plished a revolution in the glass art. It is sub- ‘mitted, therefore, that these claims are entitled to - favorable consideration, which is ‘respectfully solicited.” ; } a, en „ At the time the article was published the broad claims of the Peiler application then before the Patent Office were under rejection. This was after respondent — nad acquired or had control of numerous interfering applications and after the Patent Office interferences had been “terminated by order of the Commissioner of Patents. The District Court in the Hagel case with reference to this particular period of the. patent office prosecution of the Peiler Patent said, 39 F. 2d, 111, 117: “The application of the patent in suit was, at various times, in interferences with applications filed by Bridges, Ferngren, Howard, Lott, Miller, Steimer, and Tucker and Reeves, all of whom had filed applications prior to that of Peiler. While enlightening, space does not allow any extended review of these proceedings in the Patent Office. The most important of these interferences were brought to an end by the order of the Commissioner after plaintiff had acquired or had control of the contending applications, one after another. Prior to the withdrawal of the interferences by counsel the Patent Office had steadfastly rejected all claims having approximately the same subject matter of those in suit. After the interferences had all been ended, the claims in the patent in suit were all with- drawn. After rewriting; one hundred and four ‘ new claims (many of them rewording of original claims) were presented, and after a considerable time and much controversy the patent was allowed. Before allowance however, the Primary Examiner nad rejected all claims, and his action had been supported by the Examiners in Chief. A rehear- a ing was granted, and Peiler, after cancelling a number of claims, filed affidavits to show that he had completed his invention prior to November 14, 1917. That the Patent Office intended to grant any such broad monopoly as is claimed by plaintiff’s ‘counsel in the suit is incredible, if any evidentiary weight is to be attributed to various disclaimers — filed by Mr. Peiler with the approval of the plaintiff, or filed * by the plaintiff.“ POINT 1 The Nature of the Clarke Article. The statement by Hatch ta oo. setter dated April 19, 1926 (R. 10): ei course, I think you understand that the whole object of the article is to make an excuse . to get the production curves and a few statements in regard to gob feeding into print.“ is, we believe, comprehensive of the character of the article. Its spurious authorship represents it as based upon the proceedings of the Bottle Blowers’ Association and it is sounded in the historic alarm of labor over advancement in labor saving machinery. The Clarke article has still another significance which is most im- portant ari which as appears from the opinion in the court of appeals in the Hazel case was persuasive in setting aside the prior art upon which the district court had denied respondent's claim for a pioneer in- N vention. After reviewing the prior art patents to Brooke, Brookfield, Steimer, Ferngren, Wilson, Morri- son, Bowman, Harding, Howard, Bridges, Tucker and Reeves, and notably Hitchcock, = trial court said, 39 F. 2d 111, 116 Other patents and uses might be cited to sustain our conclusion that the Peiler patent claims are not entitled to broad construction.“ Vet, with all of these prior patents and uses the Clarke article speaks of only one, namely, the Brooke patent. * Italics ours; unless otherwise . —9— ‘POINT m a | = The Clarke Article Is Admittedly False by Omission of Reference to Other Prior Art Known to | : Hartford. cer The Clarke Article presents the Brooke flow pat- ent 723,983 as the only prior attempt of feeding sepa- rate mold charges to ware forming machines. Re- spondent’s predecessor, the Hartford-Fairmont com- pany acquired the patents to Hitchcock, Numbers 805,068 and reissue 13,929 before their expiration in 1922 and asserted them against the Berney Bond Glass Company, which employed the Howard feeders, in a suit in the Western district of Pennsylvania in 1921. At the same time it had also brought suit against the United States Glass Company in the western district of Pern- _sylvania reported 2 F. 2d 109, 111. As appears from that decision, the Hitchcock patents were asserted to de for suspended charge feeders. The Brookfield patent No. 883,779 under which the defendant was operating was known to be in commercial operation and success- _ fully feeding suspended gobs or charges to ware form- ing machines. Omission of reference to these feeding methods and Hartford’s own prior art patents estab- lishes the intentional falsity of the Clarke article. Furthermore Carter’s letter to Hatch (R. 10) ques- tioning the production curves of the Clarke article and Hatch’s explanation to Carter (R. 11) show the produe- tion curves to be based on minimum royalties, which had - ~ to be paid regardless of any production, and upon an in- correct number of Owens’ machines in use which were ‘intentionally misrepresented in the curves (R. 10). The _ curves were represented to both the Patent Office (R. 8) and the Court of Appeals in the Hazel case (R. 98) as —— —— — — — —— — — * establishing the dee t character of the Peiler * when .. knew they were false. POINT IV. The Clarke Article Did Affect the Court's Decision in Both the Hazel and the Shawkee Cases. The Clarke article begins with the statement “There is an apparent conflict of interest be- tween the manufacturers: and organized labor whenever new labor saving machines are introduced - into: a business. ed The effect of this statement on the e of the court in the Hazel case on appeal is apparent from the opinion. Judge Buffington said 59 F. 2d 401: — 8 ° As we have indicated, the labor organizations were vitally interested in the supplanting of hand blowing by mechanical blowers, and we naturally look to the proceedings of their several organiza- tions to find what machine blowers were of practical working capacity and ones which they regarded as supplanting lung blowing. We can therefore, and do, rely on their opinion in that re- gard, for successful machine blowers largely spelled ending of the supremacy of lung blowing. In an article prepared by the president of one of these i unions, he sai id: ag ‘The court then further referred to the Clarke ar- _ ticle as disposing of the question of —_ was prior art to Peiler. The court said: „ In point of fact the 1 oper- ators who were threatened with annihilation by! the Owens 3 found nothing in this swarm of al- leged patent antieipations to relieve them, and the labor conventions asserted, as they did, that none 7 these alleged prior devices had any effect * oa — It is to he noted that the Clarke article did not, as. might be assumed by the above quoted statement of the opinion, make reference to the prior art patents or. uses referred: ty in the opinion of the trial court 39 F. 24d 111, with the exception of the Brooke patent. There is no other statement in Judge Buffington’s a opinion from which it might be inferred that he had considered the prior art of record on the merits. The opinion evidences he was persuaded to disregard the prior art because of his reliance upon the Clarke article as coming from a disinterested and hostile source hav- ing knowledge of the facts. The following: significant Jon enor by Judge Buf- - fington may be regarded as conclusive on this point = 406): “Accordingly, we take these Owens and Brooke devices as constituting the advance of the art in the machine glass blowing of bottles.“ : POINT V The Evidence of the Fraudulent Character of the Clarke Article Was Not Sooner Available to Hazel or Shawkee. As stated in the petition of the companion case of the Hazel-Atlas Glass Company, after the decision by the court of appeals 59 F. 2d 399, Hazel began to inves- tigate the authenticity. of the Clarke article, but four days after that decision Hatch had interviewed Clarke . ie tee: 8 ay reo se * . * and shortly thereafter Clarke asked for $10,000 and was paid $8,000.00 in cash by Hatch (R. 17, 46). This cor- ruption of Clarke foreclosed every avenue of investiga- tion and it was not until the evidence of the fraud was established through the private correspondence files of . Hartford and the Owens-Illinois Glass Company in the trial of the suit entitled United States v. Hartford- Empire Company et al. now before this court on appeal, f that proof of the fraud was available to Hazel and Shaw- kee who immediately made application to the court of appeals below for leave to ate a bill of review in the district court. . POINT vr The Fraudulent Use of the Clarke Article in the Hazel Case Requires Dismissal of the Bill of Com- plaint in the Shawkee Case. In Keystone Driller Company v. Excavator Com- pany, 290 U. S. 240, quoting with approval the language of Mr. Justice Story, this court said: 0 It is one of the fundamental principles upon which equity jurisprudence is founded, that before a complainant can have a standing in court he must first show that not only has he a good and meritor- ious cause of action, but he must come into court with clean hands. He must be frank and fair with the court, nothing about the case under consider- ation should be guarded, but everything that tends to a full and fair determination of the matters in controversy should be placed before the court.’ Story’s Equity Jurisprudence, . 14th ed., 898.“ Further in the same case, P. 245, the court said This court has declared: It is a principle in „chancery, that he who asks relief must have acted . — — in good faith. The equitable powers of this court can never be exerted in behalf of one who has acted fraudulently or who by deceit or any unfair means has gained an advantage. To aid a party in such a case would make this court the abetter of in- iquity.’ Bien v. Heath, 6 How. 228, 247.” The facts and circumstances of the Shawkee case are similar to those in the Keystone case in which the court said, P. 246 : Had the corruption of Clutter been disclosed at the trial of the Byers case, the court undoubtedly would have been warranted in holding it sufficient to require dismissal of the cause of action there alleged for the infringement of the Downie patent. Promptly after the decision in that case, plaintiff ‘brought these suits and immediately applied for ‘*s* injunctions pendente lite. It used the decree of validity there obtained in support, if not in deed as the basis, of its applications. And plaintiff’s misconduct in the Byers suit remaining undisclosed, that decree was given weight on the motions for preliminary injunctions * The use actually made of that decree is sufficient to show that plain- tiff did not come with clean hands in. respect of any |. cause of action in these cases. 1 « @ e of this summary, it would be manifestly unjust to respondent to now have the validjty of the patent determined by this Court on a record which was pre- pared for use in a proceeding in which validity could not be raised in the absence of evidence affect- ing yalidity, especially in of the fact that in the Hazel-Atlas case, where validity of the pat- ent was sustained, there was full and com- plete record.” : 7 (P. 23) 5 5 AU Hasel-Aitles case the commercial art. which preceded Peiler, and its shortcofmings and limita- tions, were fully explained by competent experts and practical workers in tne glass industry, as was also the great advance that the Peiler invention had 2 N made and the difficulties which it had solved.” 8 It must be concluded that the judgment in the. ‘ Shawkee. case was obtained by Hartford’s repeated reference to and reliance upon the favorable decision in the Hazei-Atlas case which the court below held as controlling on the question of validity and infringement. ? | = = Because the Hazel decision was procured by the use of the fraudulent Clarke article plaintiff did not come with clean hands in respect to this cause of action and the bill : of complaint should be dismissed under the ruling of this Court in the Keystone Driller case (supra). __ : 4 N 0 roter vn The Court Below Had Power to Set Aside Its Judgment and Order Procured by Fraud. -When the evidence of the fraud of the Clarke article was first presented to the court below. petitioner sough leave to file a bill in the district court in the nature a bill of review. The court of appeals denied the petition on the ground that the fraud was practiced on that court and granted petitioners’ leave to amend the petition to move the court to set aside its judgment following the practice of the circuit court of appeals for the circuit in Art Metal Works, Inc. v. Abraham a Straus, 107 F. 2d 940, 944, certiorari denied 308 U. S. 621. By now holding that application should be made to the district court for leave to file a bill of review the court of appeals in effect reversed itself. In the dis- senting opinion, J Biggs said, R 91: 2 to our fi tion to receive these petitions and to pass upon the matters raised by them, I am not unmindful of the fact, as I have indicated, that - such bills or petitions are ordinarily presented to the court below upon grant of leave to do so by the appellate tribunal, but the apparent facts in the cases at bar bear an analogy to.the circum- stances which were before the Circuit Court of Appeals for the Second Circuit in Art Metal Works = * 8 . v. Abraham & Straus, 10% F. (2nd) 940 and 944, cert. den. 308 U. S. 621. f 5 he pertinent facts in the Art Metal Works cases are as follows: One of the members of that N court had been corrupted. The tribunal thereupon reconstituted itself, and after applications similar in form to those before us had been filed with it, i itself reheard the cases. The fraud was (fol. 67) practiced upon the circuit court of appeals and therefore that court heard the matters raised by the. petitions and disposed of them. The court acted to protect * integrity of its | appellate | ; jurisdiction. a N We believe that, as stated by Judge Biggs, “The significant fact is that the fraud was worked upon the appellate tribunal” g N and the Art Metals Case is authority for both the ques- tion of an appellate court having jurisdiction where the fraud is practiced upon that tribunal and the question that its judgment and order may be recalled after the term in which it was entered had expired. The House of Lords’ decision quoted by the circuit court of appeals i in Winslow v. Staab, 70 F. 2d 708, Cer- tiorari denied; Commercial Trust.Company of New York | v. United States, 293 U. S. 584, is in point on the ques- tion of an appellate tribunal having power to discharge its orders after term to prevent its own decisions from being made the machinery for effecting a fraud. In United States v. Throckmorton, 96 U. S. 61, and Marshall v. Holmes, 141 U. S. 589, this Court decided that judgments obtained by fraud may be set aside after the term in which the judgments were entered had expired. In the Throckmorton case the court held that ; ‘ 1, lms fraud vitiates judgments where the fraud was practiced | directly upon the party seeking relief against the judg- ment or decree, if by the fraud the party has been pre- vented from presenting all his-ease to the court. In the Shawkee case, Hartford’s reference to the favorable decision in the Hazel case, undoubtedly fore- closed inquiry by the court of appeals into the prior art upon which Shawkee relied in its use of the air feeder. Shawkee was thereby prevented from presenting all its case to the court and because, as now appears, the Hazel decision was procured by fraud, its use in foreclosing a consideration of the Shawkee defense on the merits is such a fraud as vitiates the judgment within the rule of the Throckmorton case. The case at bar does not fall within th exception noted in the Throckmorton case that a judgment will ; not be set aside if founded on a fraudulent instrument, or perjured evidence or for any matter which was actu- - ally presented. and considered in the judgment assailed. The nature of the fraudulent preparation and use of the Clarke article has never before been presented to any tribunal and the question before the court is not alone whether the Clarke article is a fraudulent instrument but whether the manner of its use is a fraud upon the court. In. Marshall v.. Holmes, 141 U. S. 589, relief wes granted, P. 601: “* © © by reason of the fact, distinctly 4 that some of the necessary proof establishing che forgery of the letter was discovered after the judg- ments at law were rendered, and after the legal delays within which new trials could have been ob- tained, and could not have been discovered by her - gooner. cause that proof establishes the fraudulent character of Proof of the authorship and character of the Clarke article’could not have been discovered by petitioners before the Government. Anti-trust suit in 1941 and be-. the Clarke article we believe that under the ruling of - Marshall v. Holmes the court below had power to _— relief. ; The decisions ‘of the Circuit Court of Appeal uni- formly hold that a judgment obtained by mistake or mis representation may be annulled after the term has ended. Winslow v. Staab, 242 F. 426 (CCA 2); United States v. Sterling et al., 70 F. 2d 708 (CCA 2); In re New England Oil Refining Company et al., 9 F. 2d 344 (CCA 1); United States ex rel. Fisher v. . 67 F. 384 (CCA 8). a The Circuit Court of 2 for the Third Circuit therefore erred in deciding that it lacked the — to vacate its order after the term had expired. CONCLUSION. 5 _ The history of Hartford's patent situation reflects a well laid plan to establish and perpetuate a monopoly in the feeding of glass. It began with the acquisition and assertion of the Hitchcock patents by Hartford's predecessor, The Hartford-Fairmont Company reported in Hartford - Fairmont Co. v. United States Glass Com- pany, 2 F. 2d 109. followed by the acquisition of all other im gob feeding patent applications and devices pertaining to suspended gob feeding as found by the court in Hartford-Empire Company v. Hazel-Atlas Glass Com- - pany; 39 F. 2d 117. 7 After Hartford succeeded in obtaining allowance of the broad claims in the Peiler plunger patent in the patent Office by use of the Clarke article and by use of the same article obtained a favorable judgment against ‘the Hazel-Atlas Glass Company, 59 F. 2d 399, it em- ployed that judgment in the Shawkee case to bring with-__ . in the dominance of its said patent the air pulsator sus- pended charge feeding principle of the old Hitchcock patents, Hartford-Empire Co. v. Shawkee et al., 68 Fed. . 2d 726. Hartford then extended its monopoly of sus- pended charge feeding by bringing suit against the Com- _ missioner of Patents, Hartford-Empire Co. v. Coe, 87 F. 2d 741, where it again relied upon the favorable decision which it had obtained in the Hazel case — to by the court (P. 742). „ * * The appellant company has been involved in a number of suits in connection with these Peiler patents, and special stress is laid by appellant on the case of Hartford-Empire Co. v. Hazel- Atlas Glass Co. (CCA3d) 59 F. 2d 39 .“. 'In the Hazel-Atlas case, the court paid a great tribute to Peiler for revolutionizing the art and supplying an urgent and desperate need' of the bottle manufacturing industry.“ . As the result of that litigation three additional patents were issued to Hartford in 1937. The Clarke article was, therefore, the key to Hartford’s patent monopoly which in its effective scope is dependent upon a fraud. ; \ By these Patent Office and suit tactics, Hartford has extended a patent monopoly for suspended charge feeding from 1905, the date of issue of its early Hitch- cock patents to 1954, the date of expiration of the 1937 patents and has exacted millions of dollars from the —22— * industry (R. 52). Whatever the outcome of. the Gov- ernment Anti- trust suit now on appeal before this Court, Shawkee and Hazel are nevertheless under injunction against owning or operating any prior art suspended charge feeding apparatus or method unless the judg- ments below are „ es ; The decision deer should be reversed and the case remanded for such further relief as the premises and the equity of the case may require and to the Court vee: seem just and — Respectfully submitted, — B. JASPERT, Counsel for Petitioners. — --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386404_0012%3A4. Public record. Not legal advice.