Petitioners Petition for Rehearing — Graver Tank & Mfg. Co. v. Linde Air Products Co. (No. 2)

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SUPREME COURT. U.S _

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Inthe Supreme’ Court ofthe Uni

Noe! 9

GRAVER TANK & MFG. CO, ie. : ees

THE LINCOLN ELECTRIC COMPANY; © - |

GRAVER TANK: & MFG. CORPORATION,

/, FILED

| seated 12 1949

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. ee

gona ¢ - Petitioners,

arent : vs. eh eae

ee ‘THE LINDE AIR PRODUCTS COMPANY,

. Respondent. Cee Sa

Pine 4 S é < . VA

On Wari OF Crntionart TO Covsr OF APPEALS \ oS

For SEVENTH Cmoorr.

PETITIONERS’. PETITION. FOR REHEARING. m

_ Joux: F. Onertin,

: Leader Building, a’

Cleveland. 14, Ohio? ages

‘ Asuizy M. Van Duzen,

‘Tuomas V. Korrxa,

James R. Srewarr, —

2800 Terminal ‘Tower,

Cleveland 13, Ohio, .

Cuanan L. Byron,

First National Bank ee

_ Chicago 3, Tilinois, —

ae Attorneys for Petitioners.

‘March 11, 1949. :

In the Supreme Court of the United States: a

OCTOBER TERM, 1948,

% > No 185,

| GRAVER TANK & MFG’ CO, INC,

‘THE LINCOLN ELECTRIC COMPANY, - °

-GRAVER TANK & MFG. CORPORATION,

Petitioners, ©

,. THE LINDE AIR PRODUCTS COMPANY,

Respondent.

On Wr RIT OF CERTIORARI To Court oF “Ap PEALS

For Sev ‘ENTH ‘Crrcv'r.

e

. PETITIONERS’ PETITION FOR REHEARING.

Petitioners, on the grounds following, petition for re-

3 hearing’ of so much of this. Court’s Judgment as holds. flux

claims 18, 20; 23, and 23 infringed:

ae Ruling of law mistakenly treated as finding of

fact. The Court has affirmed, the judgment as to infringe-

‘ment on‘the ground it rests upon a question of fact. In

truth the trial court’s judgment of infringement rests, not ‘

upon any finding of fact, but upon a reading of the language

of the patent. | This, as ‘all cases hold, and as this Court’s

opinion in overthrowing the other flux claims recognizes,

is a. pure question of law.

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Each of the claims held infringed is. unambiguously’

~ limited .to a flux ‘‘containing a major proportion of alka-

_ line earth metal silicate.’?)_ <a |

But the trial court found.as facts: ”

be That the accused Lincoln flux is composed ‘iin major

. proportion of manganese silicate.. Said the trial

court, ‘< Essentially the accused welding composi-

"> tion comprises manganese. silicate to which has

been added a small amount of caleium fluoride’

(R.-919, Finding 21, R. 926). : 3

"2. That the manganese Lincoln used ‘‘is not an alka- ~

- line earth metal’’ (Finding 12, R. 925).?. .

Accordingly,-as the trial court: found, ‘‘Since the ae-

cused flux is composed principally of manganese silicate,

it does not literally infringe composition claims 18; 20, 22

and 23’? (R- 919-20). , ;

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‘1The alkaline earth metals are calcium, magnésium, ‘stron

tium and barium (Finding 11, R. 925). The .elaims read:

‘'18. A composition for electric welding containing a ma jor .

proportion of alkaline earth metal silicate, and being -sub-

Stantially : free from uncémbined iron oxide and from sub-

stances capable of evolving gases under welding conditions.

._ 20. "A composition for electrie welding containing a fit-

_ oride and a major proportion of alkaline earth metal silicate, —

and being substantially free from un¢ombined iron oxide and

from substances capable of evolving gases under welding con-

ditions. .— a

‘22. A finely-divided unbonded fusible electric welding ©,

composition containing a fluoride and a ma jor. proportion of

an alkaline carth metal silicate. io <9

. 23. A finely-divided unbonded fusible composition for ‘use

— . . im eleetrie welding employing a bare metal electrode as a

‘souree-of weld metal, said composition being substantially free —

from substances capable of. evolving a detrimental quantity

of gas under welding conditions and containing caleium flu-

oride and a major proportion of ohe or mare alkaline earth

metal silicates.’’ (R. 960:) Mi

* Eniphasis supplied throughout.

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‘The trial cgurt. however, found infringement. by reine

‘ipg these claims, confined to. alkaline earth agfal tlt

‘ates, to cover also lmanganese. silicate, which, as the

trial court found, is ‘hot an alkaline earth.metal silicate.

_ The question of law—namely,.the extent of the erant —the

trial court resolved by reading the specification into these

_¢laims. - This i is the way the tr ial court solved that question: :

‘‘In the patent ‘[that is, in the specification, K. 956,.-”

col. 1, lines 62-5] the inventors state, ‘We have used

galeium silicate and silicates ‘of sadintny bariuin, iron,

manganese, cobalt, magnesium, nickel ‘and alaminum,

. bath in: binary and ternary combinations, in various

- proportions.’ Thus, the fact that manganese fa

proper substitute for ‘ealéium silicate as a major.

. gredient of the welding composition invented by cei,

Kennedy and Rotermund is fully disclosed in the

- specification of their patent.” - (R. 920.)

Accordingly, the trial court found:

‘*Manganese silicate is one of. the nine metallic sili-

cates whick the. specification’ discloses that the in.

-ventors have used as principal constituents in weld-

ing compositions attaining more or less Papper

the objectives of: their invention’’ (Finding 1 a, Be. S25}...

Thus, because the mangangse silicate Lincoln used is

named in the specification as one of tlie nine the inventors

used, the trial court read claims 18, 20, 22 and 23 to cover

not only the alkaline earth metal silicates, to which these

claims are confined, but expanded theni to embrace also

manganese silicate which is not claimed. ‘But this, as this

Court recognized in holding invalid claims 24 and 26, can:

not be done. This Court seid: ea |

“The statute makes Provision for specific ation sep

arately from the claims and requires that the kitter

‘shall particularly point out and distinetly claim the

part, Improvement ‘or combination which he daims as

his invention or discovery.” ~ RLS. 6 4888, as amended,

80 TL SL OL 85. Tt would accomplish little to require

that clams be separately written if they are not to be |

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separately read. WhileVain repetition is no more to

* he encouraged in patents than i in Other documents, and -

‘claims like other statements may incorporate other

matter bw reference, their text must be sufficient to

; ‘particularty: point out and distinetly. claim’ an iden-

tifiable ‘uevention or discovery. We have frequently

held-that it is‘the claim which measures the grant to

the patentee... See, for example, Mileor Steel Co. es

Fuller Co., 316 U. S. 143, 145; General Electric Co,

Wabash Ks. ., 304 U. S. 364, 369; Altoona Theatres s

Tri-Ergon Corp., 294 U. S. 477, 487. While the cases

more often have dealt with efforts to resort to speeifica-

tions to expand claims, it is clear that the latter fail.

equally ‘to perform their function as a-measure of the .

grant when.they overclaim the.invention. When ‘they

_do so to the point of invalidity. and are free from am-

biguity, which might justify resort to the specifica-

tions, we agree with the District Court that they are

‘ not to be saved because the latter are less inclusive.

Cf. General Electric Co. v. Wabash Co., 304 U. S. 364,

dio-3i4+: see McClain v. eianey 141 U.S, 415, 424-

425; Cimio'ti Unhairing Co. v. American Fur Refin-

ing ae 198 U. S. 399; 4107" (S slip Opirion, p. 6).

What this Court thus says on page.6 of the slip_opin-

ion cannot he done, it has dorfe-on page 5. ‘To this result

the Court has come by failing to note that the trial court's ~

judgment of infringement rests riot tipon a finding of fact

_bnt turns solely and entirely on a point of law. Manifestly,

the rule which destroys claims 24 and 26 necessarily bars

any finding of infringement of claims 18, 20, 22 and 23.

That the trial court’s judgment of infringement rests

npon a point of law is plain. The trial-court, as its opinion

makes cleqs, found infringement only by expanding the

claims to make them cover a composition admittedly not

covered bythe claims as written. Aecordingly, because it

was dealing with a question of law and not-of fact, the trial

court declared the infringement, not as a finding of: fact

hit as a conelusion of law (Conelusiow 4, Ry 928)

The trial court thus clearly understood that what. it

‘was ruling.on was a point of law—namely, the measure. of

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the grant--whereas this © ourt has affirmied as though the’

Judgement of infringement rested upon facts found. The

facts found show no infringement ; if to those facts is ap.

plied the rule of law this Court applied to flux claims 24

and 26, ind has always. applied, there ean be no inftinge-

ment. 7

The. vice of the construction by whic h the judgment of

infringement is affirmed is that it expands the claims by

resort to the Specifications i in the teeth of the Court’s asser-

tion that this may not be done. Not only does the judgment

of affirmance mutilate the law in this réspect, but its ef-

fects will be far-reaching. If the manganese silicate Lin-

coln.used is to be culled from the list of nine in the specifi-

‘ation, and read into the claims, so also must each of the.

remaining eight. As a consequence, many fluxes now in>

the public domain must likewise infringe the) present pat-

ent. (See petitioners’ opening brief, pp. 7 and 57-67.)

Moreover, new uncertainty is introduced into the pat-

ent law. The public no longer ean rely on the claims of the

patent as written to define like the metes and bounds of a

deed, the area from which it is excluded. It must spec.

ulate whether, and, if so, how gnuech of, the specification is

to be read as a claim. This risk not many will care to

assume... The result awill be that by deft use of specifica-

tions, operating in terrorem, otherwise clear-cut claims ean

be used to exclude the public from an additional penumbr: al

area to w hich’ the patent ow ner in law has no title.

This: Court notéd:

“Tle [the trial judge]. concluded that what was really .

invented was that which was claimed and bounded by

the composition claims Nos. 18, 20, 22 and 25°" (Shp

Opinion, p. 3)- . :

Those claims have now. been held valid. Thes y, along

with. the other Claims not in issue, give the patentees evert

protection to Which they are entitled. Plaintiff retains a

monopoly on the flux w hich it has successfully exploited

0

— (Finding 9, R. 925). There is no call to expand that

monopoly. beyond the terms of the grant. |

2. Fact findings misread. This Court has erroneously

"assumed that:

‘‘the District Court. found that the Lineoln Electrie Co.

~made, and the other petitioners used and sold, a flux:

- substantially identical with that set forth if the valid

_composition claims?’ (Slip Opinion, p.-5).

_ The District Court did not so find. It did not find the

accused flux was ‘substantially identical.’’ It found: ©

“The two compositions are identical: in operation,

aud the same kind of weld is produced by them’? (R.

919); and 7 2 3

“The accused Lincolnweld flux: and the composi-

tion of the patent in suit are subséantially identical

in operation and in result’? (Findings 20, 21, R. 926).

They are not the same and the trial court did not: so

find. They are merely the same ‘‘in ‘operation and in re-

sult.’?* But a patent cannot cover a result. There may be

* The District Court was wrong in concluding. that the four

claims in question were infringed in view of the express finding

that the ‘‘means’’ employed, viz. petitioners’ manganese silicate,

‘were different from the means, viz. alkaline earth metal silicate,

to which the claims are restricted. Eames v. Godfrey (1863), 1. |

Wall. 78, 80.

’

The effect of the holding of infringement is to give such last-_

defined material, which is the crucial element in the claim, a func-

tional definition. By the same token, any compound ‘‘substantially

identical in operation ‘and in result’’ would infringe. Had the

material of the claims been defined igysuch functional terths, such

a deseription would have been held Pr alid as a violation of Rev.

‘Stat. $4888. Holland Furniture Company v. Perkins Glue Com-

pany (1928), 277 U.S. 245, 256-57; General Electric Co. v. Wabash

Electric Corp. (1938), 304 U. 8.*364, 370-1; Halliburton Oil Well

Cementing Co. v. Walker (1946), 329 U. S.1,9. Here as a result

of. this Court’s adoption of the District Court's mistaken con

clusion, on the assumption it was a finding of fact. ‘‘the broad- -

ness, ambiguity and.over-hanging threat of the functional claim,’**

thus constituted, of each of the four claims in issue becomes ap-

parent, Just as much as in the Halliburton ease.

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many compositions indeed, many may still be unknown

produging the same result. The ‘patentees have claitned

a specific type; it does not follow that any other producing |

the same result infringes. |

In short, the trial court on the issue of infringement.

found three facts. The accused flux is a manganese sili- ©

cate. .Manganese silicate is not an alkaline earth metal

silicate. Manganese silicate as used produces the same

result as an alkaline earth metal silicate. The first two

facts repel the thought of inf ringement. The third affects

only the-result and results a are -never patentable.

3. Erroneous rule applied. This Court has applied a

rule likely to plague it aaa the patent law in cases to

come, in saying:

‘<The petitioners ‘introduced | no, ‘evidence to show that

their accused flux was derived either from the prior

art, by independent. experiment or from any source

other than the teachings. of the patent in suit’* (Slip

| Opinion, p. D). ;

‘Suppose siti had introduced that evidence.

Assuming it admissible, it would not have been a defense.

Petitioners’ case would have been neither better nor worse.

‘Either the flux infringes or it does not; and, if infringing,

it can no more be saved by preof of bednnnaidiont discovery

than it could be condemned, if noninfringing, by proof it

was derived from the patent. That is the rule flowing

from the statute itself, which this Court until now has in

fact always applied.. Indeed, the very .purpose ‘of the

statute in requiring the inventor to ‘‘particularly point

out and distinctly claim’’ the invention is to. free the

: public to build on the past. |

The probability that the judgment of infringement

has been affirmed under misapprehension is so gr eat that

this Court should gran} rehearing on that Issue. This

question arises only in-eause No. 185 which brought to this

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c ourt the flux claims held infri inet ae accordingly rehearing

is asked only in: that ease, and not in companion cause

No. 184.

sRespectfully submitted,

oe Joun F. Operury, .

o Asuney M. Vaw Dvzer,

Tomas V. Koyxxa,

James R. Srewarr,

_Crartes L.: Byron,

”

Attorneys for Petitioners.

me CERTIFICATE.

The foregoing petition for rehearing ‘is believed to

be meritorious and is presented in good faith and not tor

delay.

Joun F. Operuiy,.

Asuuey M. Vay: Duzer,

Tuomas V. KoykkKa,

James R. Srewarrt,

Cuartes L. Byron,

Attorneys for Petitioners. |

Mareh 11, 1949.

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