# Petitioners Petition for Rehearing — Graver Tank & Mfg. Co. v. Linde Air Products Co. (No. 2) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386406_0271%3A09 ## Record - **Collection:** Supreme Court brief - **Document type:** Petitioners Petition for Rehearing - **Published:** January 1, 1949 ## Text i SL IBRARY = SUPREME COURT. U.S _ ss yr ae es ee 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 — | aan . ee gona ¢ - Petitioners, arent : vs. eh eae ee ‘THE LINDE AIR PRODUCTS COMPANY, . Respondent. Cee Sa Pine 4 S é 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. . ee 7 >) ’ Ri Each of the claims held infringed is. unambiguously’ ~ limited .to a flux ‘‘containing a major proportion of alka- _ line earth metal silicate.’?)_ 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). , ; o ‘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 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. ‘ “ . . a GS ~ a on 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: ‘ o- .. % 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. ra / --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386406_0271%3A09. Public record. Not legal advice.