Brief on Behalf of Petitioner — Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp.

Supreme Court brief1951

Ask Donna

What actually matters in this document.

Text

LIBRARY er

SUPREME COURT. U © | FILE

i SEPT 3

| © Bee nae :

SUPREME COURT OF THE UNIT TATES

OCTOBER TERM, 1950

No. 32

! a

‘THE GREAT ATLANTIC & PACIFIC TEA COMPANY,

Petitione z

vs.

SUPERMA RKET EQUIPMENT CORPORATION, SUB-

(STITUTED FOR EVELYN B. BRADLEY AND JOE

- WEINGARTEN

BRIEF ON BEHALF OF PETITIONER

ee, | ‘Joun H, Guaceum,

Attorney for Petitioner. mn

Mewn, Lippy & GiaccuM,

Epwin J. Bauuvrr,

Of C@unsel.

+ Pee ree fe er

INDEX -

Supsecr INpex

Brief on Be half of P etitioner

Jurisdiction } oe

Stitement of the Case

The Turnham Patent — ,

ilistory of the Super Market

Specification of Errors Urged

Summary of Argument

Areunitnt

The Myth of Commercial Buccess

“one ‘lusion

Taste or Cases Crrep

a ; aan

Altoona Public Theatres, Ine. v. American Tri-Erqon

Corporation, 294 U.S. 477; 79 L. Ed. 1005

-Ansonia Co. v. Electrical Supply Co., 144 U.S. 11

(1892)

Cuno Engineering C orporation v. A utomatic Devices

Corgncanion S14U.S. 84; 80 L. Ed. 58 )

Eusten v. Simon Ascher & Co., 282 U.S. 445, 75 L,.

Kd. 453

. Ford Motor Co. v. Gordon Rite Lathe Co., 90 F. 2d

999; C.CLA,. 6

Halliburton Ol Well Come tig. 4 fap v. Crauford P.

Walker, 91 L. Ed. 15; 329 U. ’

Jungerson v. Osthy & Barton Co Oe, i. U.S. P. Q. 32;

330 U.S. 560; 93 L. Ed. 232

Kendall Co. v. Tetley Tea Ce., Tne, ‘81 FE. Supp. ose

OSS eae Ni ucaa oe

Lewis Construction J0o. -v. Semple, V7 Fed. 407,

410 (1910), cert. den. 218 U. S. 679; 54 L. Ed.

1207 ive

McCarty v. Railroad Co., 160 U.S. 11, 1164 40 L. Ed.

398, 361 | “ye rf

— 97ST

il . INDEX ,

Morton Trust Co. v. American Car & mounery Cea.

169. Fed. 109 sted ey oe

Neptune Meter Cov Nationai Me ter Co., 127 Fed.

963 (1904). ae * 44

Patent Clothing Cv. v.G ‘lover, 1410. S. 563 (1891 -

Peiers v. Active Mfg. Co., = 29 U.S. 580 (1889)

Peters.v. Hanson, 129 U.S. 541 (1889)

| St. Germain v Brunswt a % 135 U. S. 227; 34 ‘ ‘Ea.

122, 123 (1890)

Walker on Patents

= Sratrures Crrep

62 Statute 928, 28 U.S. C. A. 1254.0

R. S. 4922, Be 8 ys Ce ie eo eres

20°-

| SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1950

No. 32

THE GREAT ATLANTIC & PACIFIC TEA COMP: ANY,

Petitioner,

‘ete

u . g

SUPERMARKET EQUIPMENT CORPORATION, SUB-

STITUTED FOR EVELYN B. BRADLEY AND JOE

WEINGARTEN

BRIEF ON BEHALF OF PETITIONER .

eee

This catis¢ comes before this Court on a Writ of Cer-

tiorari to the United States Court of Appeals for the Sixth

Cireuit. The opinion of the United States Cireuit Court

‘of Appeals is reported in 179 Fed. (2d) 636 and appears

at page 531 of the, record. The opinion of the District

*Court ig re ported i in 78 F "ed. Supp. 388 and appears at page

511 of the record. Certiorari was granted on May 1, 1950s

The District Court held three claims—claims 4, 5 and 6—

of the patent*in suit valid and infringed. The Circuit

Court of Appeals affirmed by a divided court, Judge Martin

_ dissenting. The petition for rehearing was denied by a

divided court, Judge Martin voting to grant the rehearing.

Jurisdiction

The jurisdiction of this Court is invoked under C. 646

of *the Act of June 25, 1948, 62 Statute 928, 28 U.S. C. A.

16. ep

Statement of the Case

{

This action originated in the United States District’

Court for the Eastern District of Michigan, Southern Divi-.

sion, and was based upon alleged infringement by your

petitioner, The Great Atlantic & Pacific Tea Company, of

the Turnham patent: No. 2,242,408 issued on May 20, 1941

and emanating from an application filed October 28, 1938. ,

The original plaintiffs were Evelyn B. Pradley and Joe

._/Weingarten, but the Supermarket. Equipment Corporation

was substituted for the original plaintiffs (530). The peti-

tioner operates retail food stores throughout the greater

part of the United States and is charged with infringing

the Turnham patent within the Eastern District of Michi-

gan, which is within the Central. Western Division, one of

the seven divisions into which the petitioner is divided.

‘The charge of infringement is based upon the use by the

petition@r of a simple three-sided bottomless rack slideable

on a checkout counter. The rack used by the petitioner is

shown in plaintiff’s Exhibit 2 (288) and egain in plamtiff’s

Exhibits 14 and 15 (310-312). |

The complaint did not limit the charge of infringement

to any specific claim or’claims, and the patent in suit con-

tains six claims, all of which petitioner alleges are invglid

for lack of invention, At the. trial it was stipulated that

the claims of the patent in suit if valid would be infringed

* by petitioner’s structure, but there was nq stipulation at

any time providing for the withdrawal of any of the claims,

although respondent withdrew over petitioner’s strenuous

objection claims 1, 2 and 3. (186).

\ t

The Turnham. Patent

The Turnham patent No. 2,242,408 (Exhibit 18, p. 318)

shows four figures. Fig. iis a top plan view of an elongated

counter having a top thereon and an extension 6 for a eash

at 7. A place is provided at 5 for a bagger. Figure 2 is a

side elevation of the counter while Figures 3 and 4 are

taken on the lines 3-3 and 4-4 respectively of Figure 1.

Turnham provided a ‘*U’’-shaped rack with a frent side

bar 26, rear side bar 27 joined byethe end bar 28. He

provided a channel member 30 which was anehored to the

counter and which cooperated with an inner fitting channel

“member 31 affixed to the side bar 27 by bolts on screws 32,

thus preventing the framework 20. from being elevated

beyond the side gf the channel 30. Ingorder to guide the

frame in its sliding movement the side bar 26 was provided

with a base 35 which fits into a’channel 36 affixed on the

edge 37 of the counter 15. This is a much more complicated

device than petitioner’s device, shown in Exhibit 13 and the

photographs of the device used by the petitioner, Exhibits

I4and 15. It was this complicated device which was before

the Patent Office. Exhibit 13 does not show the Turnham

structure as originegly designed nor as in use today (56-57).

It will be noted that although the Turnham application

was fiied on October 28, 1938, approximately a year and

four months after the merchandise handlers designed by

Turnham are claimed to have been put into operation in the

Weingarten stores, no mention is made in the patent of the

segregatron of the merchandise into yroups such as vege-

‘tables, canned goods, meats and groceries, which was used

in the petitioner's presorter (288), nor was the Turnham

device designed for operation by the cheeker. There was

no operating handle such as shown in F of Plaintiff's Ey.

hibit 25 (374). The patent contemplated a pusher-boy to

) me

load the groceries from the customers’ baskets onto the

rack on the extension of the counter and to push them up

to the eashier when needed. It is believed that the lower

Court in its opinion misinterpreted the language of the

patent specifi¢ation. At (512) the Court referred to the

patent (at page,2, column . line 35) as disclosing a handle

for the checker when Said handle was clearly for the pusher.

The Turnham patent appears at pages 318, et seq. of the_

record. Page 2, column 1, lines 25-35 describes a handle

24 ‘‘which may beegrasped by the pusher-boy in order. to

move” the rack, or the frame may be grasped dirgetly. This

obviously refers to the action of a pusher- boy. ‘The Turn-

‘ham device as now used is substantially thé same as that

shown in the patent embodying channels 30, and 36 but

has been modified to include a weight to automatically

return ‘the pusher to the extension of the counter and

roller bearing wheels to make it run easilK (57), and a

handle has been added for operation by the checker.

po daa History. of the Super Market.

The super market, as such, is a relatively new develop-

ment. - It is true that for some time there have existed

self-service stores, ie. stores whereit~the eustomer waits

upon hin'self and then pays at the exit. One Clarence

Saunders opened the Piggly-Wigely Stores in 1917 or 1918

(84+) and Weingarten opened -his first store in 1919 (84).

Other small developments, such as the A B C Stores. (46)

sprung up from time to time. In the early days, the eus-

_tomer would use a wicker or splint basket and carry -it

around the store picking up merehandise and would even-

tually check out through a straight counter. About 1927

an extension was made to the eounterste accommodate

the cash register (47). Apparently there were not many

changes-in the industry until after 1935. At about that

time the Kroger Grocery and Baking Company openéd up

self-service stores and many of the so-called ‘‘super mar-

kets’? were opened up. The term ‘tsuper market’? appar-

ently originated on Long Island in the late 30’s and was

defined by the witness, Bucher, as ‘ta market that does

a large volume of business at the minirzum eost to the

customer and maximum operating efficiency ’’ (39).

The industry has continuously changed its equipment

to give more efficient service.

By 1937 the Super Market Institute was organized among

the smaller chains and information exchanged (95). At

(95) Mr. Weingarten was asked by the Court—‘‘ Does

A. & P. and Kroger belong to that?”’ Sewmor—/ Re, sil

We don’t allow them to.”’ |

The larger clains operated on a gredter volume at a

smaller profit. In 1937 or thereabouts the plaintiff, Wein-

garten, joined in a price war with petitioner, The Great

Atlantic & Pacific Tea Company (94 & 78-79). In waging

this. price war Weingarten cut his-gross proms by 4% to

6% and thereby increased his sales some 25% (79). ;

This increase in sales presented a: eee in handling

the flow of customers from the stores. In 1937 Adolph

Sobotix, the manager of the Weingarten Store No. 7, found

that his four check-out counters were crowded and requested

additional check-out counters. Around June of 1937 Wein-

garten called up Mr. Turnham and ordered-him to ‘*Give

Adolph some relief over there.’? Sobotik testified:

“Q. Did-ven run into any problems from the stand-

point of handling vour customers during that period?

A. Yes, [have. In 1937, about the first quarter of the

year, my business was on the upgrade and T only had

four checking -eounters -in that grocery department.

[had diffeulty taking care of my customers and check.

ing them out, especially on Saturdays in the peak

hours. [asked Mr. Turnham, who was our supervisor,

to get me additional checking counters, that T can not

take care of my-business with the present equipment

I have: , He kind of put me off a few days, and I went

up to Mr. Joe Weingarten. Then Mr. Joe Weingarten

got together with Mr. Turnham, they come back te look

the situation over, and Mr. Turnham said he has an

idea that he can relieve the situation on the present

checking counters, to give him a few more ‘days. And

that happened just. about the first part of July, 1937.

Then about the middle of-J uly, 1937, Mr. Turnham came

out there with one of the carpenters, and put a slide

similar like I saw in the Exhibit No 138, with a little

counter on the end’’ (77).

This apparently did not solve the problem since increased

business necessitated additional check-out, counters. On

cross-examination the witness Sabotik was asked:

“*Q. Mr. Sabotik, you testified, I believe, that origi-

nally in 1937 there were four check-out counters in ‘that

No. 7 store? A. Yes, sir.

(). How-.many are there today? <A. Today there-

are seven. ]

. Seven. You found it necessary to increase the

number of check-out counters? A. Yes. The busi-

ness is about one hundred per cent more than it was

then, today.’

Joseph Weingarten testified that there were eight coun-

ters at the time of the trial in the No. 7 store (96). It is

passing strange that despite the alleged efficiency of Turn-

ham’s device the number of check-out counters increased

almost in direct proportion to the inerease in business.

At the trial petitioner introduced into evidence four. pa-

tents cited by the Patent Office during the prosecution of

the Turnham application and some seventeen patents not

cited by the Patent Office. The prior art shows varions

means for moving objects from one place to another ane

the more pertinent patents will be discussed later,

The patent contains six claims, three of which—1, 2 and

3--were withdrawn from the action over the defendant’s

objection. At the trial it was coneeded that the claims

im suit would be infringed if the patent were valid. The

patent in suit appears in the record at page 319, and a pho-

tograph of the alleged infringing device at page 288A.

Claims 4, 5 and 6 read as follows:

“4. A checker’s stand including a counter of the

character described, an. open bottom pusher frame

thereon,,means to guide said frame in sliding move-

ment so that goods placed on the end of said counter®

within said frame may be pushed along the counter in

a group toa position adjacent the checker by movement

of said frame.

A ecashier’s counter for cash and carry type of

eeocery Comprising a portion spaced from the eashier’s

stand and upon whieh the nerchandise may be deposited

and arranged, a bottomless three sided frame on said

portion and within which the merchandise is deposited

and arranged, means whe reby said Prange is movable

on said counter from said portion to a position ad-

jacent the cashier's stand so that the m ‘rehandise may

thus be moved as a group to a point her re it may be

conveniently observed, counted and registered by the

cashier. ,

“6, A cashier’s counter for cash and carry type of

grocery comprising a portion spaced from the cashier’s

rstand and upon which the merchandise may be le-

posited and arranged, a, bottomless frame or said por-

tion ‘and within which the merchandise is deposited

and arranged, means whereby said frameeis movable

on said counter from said portion to a position ad-

jacent the cashier’s stand so that the merchandise may

thus be moved as a group to a point where it may be

conveniently observed, counted and registered by the

‘ashier, saéd frame being open at the end adjacent the

eashier’s stand and readily movable to be returned

over said portion so as to receive the merchandise

of another customer while the cashier is oceupied with

the previous group.”’

The Distriet Court in its opinion (page 515)y"stated: -

**The bettomless tray is not novel, as note, for ex-

ample, the well known pool rack. Neither is a check-

ing-out counter nor the use of guide rails.” These have

been seen in self-serve restaurants for vears. How-

ever, the extension of the cheeking-out counter was

apparently something new, as it automatically placed

the register farther ug on the cheeking-out aisle, and

the use of the bottomless tray on that extension, self-

unloading its contents right in front of the cashier,

was decidedly a novel feature.”’

The majority opinion of the Circuit Court of Appeals

quoted with approval the Distriet Court finding 15 (533-4);

495. Claims 4,5 and 6 of the patent in suit define

-a new combination of elements brought together for

the first time by Turnham to provide an impPyxoved

* checkout counter. :

‘<Three-sided bottomless racks -or travs had been

used in racking pool balls priser to the Turnham in-

vention. Also checking-out counters were known.

Moreover, guide rails for trays had been, used in self-

serve restaurants, :

‘* “However, the conception of a counter with an ex-

tension to receive a bottomless self-unloddinge tray with

which to push the contents of the tray i front of the

cashier was a decidedly novel feature and constitutes

anew and useful combinatio:s.* *’

The: District Court allowed the respondent te withdraw

over petitioner’s objection claims 1, 2 and 3 and the Cir-

cuit Court of Appeals held in thsanajority opinion that the

District Court did not err in refusing to pass on the valid-

ity of these elainus.

‘9

Specification of Errors Urged te

The Circuit Court of Appeals erred:

1. In adoptiiweas an element of the claims in suit the

extenséon to the checkout counter which was not an element

of the claims in order to-find a novel ¢ombination.

e °

2. In finding that the adaptation of a three-sided bottom-

less rack, old*in the art, to a checkout counter constituted

invention over the prior art. ‘ ue

3. In affirming the District Court's action in allowing °

plaintiff to withdraw his broader claims—claims 1, 2 and

3—from snit and refusing to pass on the validity thereot,

4. In not holding that the Turnham contribution was a

mere expedient not rising to the dignity of invention.

5. In affirming by a divided court the decision of the

District Court. | :

Summary of Argument

1. The courts: below based the finding of invention on a

combination of elements not set forth in the claims in suit.

6°2. The Turnham patent in suit does not involve inyen-

tion @ver the,prior art, but is merely the expedient of a

skillef{l] mechaaie. ——_—

3. Jt was error to allow the plaintiff to withdraw the

broadest claims from the suit

Argument

1. The courts below based the finding of iuvention on a

combination of elements not set forth in the claims in suit.

The District\Court and the majority opinion of the Cir-

cuit Court of Appeals found that novelty and invention re-

side in a combination of three elements: 1) a checkout

counter; 2) an extension on the checkout counter; 3) a

three-sided rack. |

10-

This is obvious from the District. Court’ s oe: (R.P.

515) wherein Judge Picard stated :

‘“The bottomless tray is not novel, as note, for ex-

ample, the well known pool rack. Neither is a check-.

ing-out counter nor the use of guide rails. |These have

been seen in self-serve restaurants for years. How-

ever, the extension of the checking-Dat counter was ap-

> parently something new, as it automatically placed

the register farther up on the ¢hecking-out aisle, and

the use of the bottomless tray on that extersion, self-

unloading its contents right in | front of the’ cashier,

was decidedly a novel feature.’

The majority opinion (R.,524) quoted with approval

finding 15:

“615. Claims 4, 5 and 6 of ‘the patent in suit define

- a new combination of elements brought together for’

the figgt time by Turnhain to provide an improved

cheek-ont counter.

‘¢*Three-sided bottomless racks or. trays had been

used in racking pool balls prior to the Turnham in-

vention. Also checking-eut* counters were known.

Moreover, guide rails for trays had been used in self-

serve 1 rests iurants, ’

~ *** However, the conception of a counter with an ex-

tension to receive a bottomless self-unloading tray

with which to push the}contenis of the tray in front

of the cashier was a decidedly. novel feature and con-

stitutes a new and useful « cotbination.’

An examination of the claims in suit makes it clear that

the extension was not set forth nor ¢ laimed. ( ‘aim 4, for

instanee, reads as follows:

“4. A checker’s stand incle dine a countgy of the.

character described, an open bottom pusher frame

thereon, means to guide said frame im sliding move-

ment so that. goods placed on the end of said counter

within said frame may be pushed along the counter

ina “group to a position fd jacent the checker by move—

ment of said frame.’’ ; ~

The only structure specifically defined. in said claim: is

“A checker’s stand including a counter’, which is’ ad-

mittedly old, and“‘tan open bottom pusher frame’. These

elements the weurts found to be old. They did, however,

‘base the finding of invention on the combination of blcane

elements with an extension on the checkout counter, Cir-

cuit Judge Martin recognized that the extension of the coun-

ter was not claimed in claims“4, 5 and 6, and in his dissent-

ing opinion stated: ‘

‘*T ane unable to find invention in the patent claims

2insuit. It seems to- me that the combination of the ad-

mittedly oldelements’ as deseribed in the claims does

not rise,to the dignity of invention, and that the find-

‘ ings of fact of the district court are clearly erroneous.”’

_It is well settled law that every element and limitation re- |

lied upon to-establish te validity of a claim must be par-

ticularly pointed out and distinetly claimed.

WwW alker on Patents. (D- 770) summarizes the function of

a paite nt claim as follows

“Tt j 1s the claims of a patent which ‘measure the in-

- vention,’ and which ‘apprise the public of what is still *

jeft open to them.’ (Paper Bag Pt. Case, 210 U.S

405, 409; UL S. L. & H. Corp. v. Safety Car “ & L. Co.,

261 Fed. 915, 918, C. CC. A. 2; Fulton o.- Powers

Reg. Co., 263 Fed, 578, 580, C. C. A. 2; ation Picture

Patents Co. v. Universal Film Mfg. Co., 248 U.S. 502,

61 L. Ed. 871, 876). A elaim is not ‘like a nose of wax

which may be turned and twisted in any direction,’ so

as to make it include something more ‘than, or some-

thing different from, what its words express, by merely

referring tothe specification. The claims are the crea-

ture of statute in which the inventor is required to par-

ticularly point out and distinctly claim his invention.

(White v. Dunbar, 119 U.S. 47, 51. oP

12 5

As long ago as 1895 this Court held that an clement may

not be read into a claim for the purpose of sustaining :

~ patent. In VeCarty v. Railroad Co. (160 U.S. 116, 116,

40 L. Ed. 358, 361), Mr. Justice Brown writing for this

Court stated:

‘“There is no suggestion in’ either of these claims.

that the ends of the holster rests upon springs in) “the

side trusses, although they are deseribed in the speci-

fication and éxhibited in the drawi ings. It is suggested,

however, thagthis feature may be read into the claims

for the purpose.of sustaining the patent. While’ this

may be done with a‘view of showing the connéction in

.. whic h a device is used, and prov ing that it is an oper-.

ative device, we know of no principle of law: whieh

would authorize us to re: ad into’n claim an element which

is not present, for the purpose of making out a case of

novelty or infringement. The difficulty is that if we

once begin to include elements not-mentioned in the

eaim in order to limit such claim, and avoid a defense

of anticipation, we should neyer know where to stop.

If, for example, a prior device were produced exhibit- .

ing the combination of fhese claims plus the springs,

the patentee might insist upon reading some other ele-

ment into the claims, such, for instance, as the side .

franies and. all Bhe other operative portions of the

mechanism constituting the car truck to prove that the

prior deFice was not an anticipation. It might also

require us to read into the fourth claim the flanges and

pillars déseribed in the third.” This doctrine is too

obviously untenable to require argument.” :

- The foregoing case has been cited with: approval con-

—sistently through the year, and more recently the same

principle was set forth in- the ease of Altoona Publix

Tieatres, Inc., v. American Tri-Ergon.Corporation (294

U.S. 477, 79 L. Ed. 1005). There the Court stated, at page

487: °

13 | '

‘*The Court of Appeals, in upholding the patent,

made no examinationof its separate claims, but treated

the patent throughout-as though it were a combination

of five distinct elements, the photoelectric cell, the

arcuate flexing of the film, the flywheel, the flexible con-

nection of the flywheel and the optical slit, athough

no where in the patent is a¢ny'such combination claimed.

The patent thus upheld is’ one which was neither

claimed nor granted. Under the statute it is the claims

of the patent which define the invention. See White

v. Dunbar, 119 U.S. 47, 51, 52, 30 L. Ed. 303, 304, 305,

/7 S. Ct. 72: MeClain v. Ortmayer, 141 U. S. 419, 423-

425, 35 L. Ed. 800, 802, 803, 12 S. Ct: 76: Continental

Paper Bag Co. v. Eastern Paper Bag Co., 210 U.S

405, 419, 52 L. Ed. 1122, 1128, 28 S. Ct. 748: Smith v.

Snow, decided Januaty 7, 1935 (294 U.S. 1, ante, 721, 55

S.Ct. 270). And each claim must stand or fall, as it,

self sufficiently defining invention, independently of

the others. See Carlton v, Bokee, 17 Wall. 463, 472, 21

L. Bd.517, 519; Russell v. Place, 94 U.S. 606, 609, 24

lL. Ed. 214, 215; rigs & C..Co. v. Viefor Talking

Macli. Co.; 213, U. 301, 319, 53 L. Ed. 805, 813, 29

S. Ct. 499; T. HW. Ssmineton Co. v. National Alalleable

Castings Co., 250 U.S. 383, 385, 63 L. Ed. 1045, 1048,

39 S. Ct. 542; § Smith - v. Snow (294 U.S. 1, ante, 721,

55 S. Ct. 279), supra; Walker, Patents, 6th ed. § 220.

As none of the flywheel claims as drawn-define an in-

vention, none can be aided by reading into it parts of

the specifications, or of other claims, which the paten-

tees failed to include in it."’ Sg

The foregoing case also stands for the proposition that

where the Court of Appeals dees not pass on the separate

claims in issue but finds ti.vention in a combination of

elements not embraced in any single, claim, the case pre-

e . . : . F ans 2 . * bd

sents no question of concurrent findings by the courts below

that the claims in issue involved invent@n. “

It is submitted that the dissenting opinion below is ob-

. he

% °

viously correct in finding a lack of invention in the claims

in suit. ' :

Revised Statute 4888 requires that« the inventor point

out and distinetly clayn the part, improvement or combina-

tion which he claims as his invention or discovery. This

statute was recently construed in the case of Halliburton

Oil Well Cementing Co. v. Cranford P. Walker (91 L.Ed.

15; 329. U. S. h). There the Court lield that the claims of

the Walker patent in suit were invalid, because they de-

scribed the crucial element in terms of what it would do

rather than in terms of its own physical characteristics or

its arrangement in the new conibination.

€laim 1 of the Turnham patent quite obviously described

what is alleged to*be new by its function and merely defines

‘fan open bottom enclosure movable relatively to the ex-

tension and counter to slide the merchandise along the said

top and extension to a position on said counter.’’

Claim 2 merely calls for ‘‘means slidablcon the surface.

of the counter to enclose and move such merchandise to the

eashier station.”’ Be

Claim 3 merely call for ‘‘means to enclose such mer-

chandise on the surface of the counter and to move with

such merchandise to the eashier station, so that all the

articles of merchandise of a customer will be postitioned

together.”’ :

Claim 4 calls for an open bottom pusher frame thereon

and ‘*means to guide said frame in sliding movement so that

voods\placea on the end of said counter within said frame

may be pushed along the counter in a group to a positien

adjacent the checker.’’ The means there to guide the frame

are the channel members 30 and 36 shown in the drawings

and they are. not particularly pointed out nor distinctly

claimed. .

=, ; : .

Claim 5 ealls for a Hatt omless three-sided frame within

> 15 “

which the merchandise -is deposited and arranged ,and

‘*imeans whereby said frame is movable on said, counter."

Claim 6 is even more vague and indefinite. It refers

merely to a portion te receive the groceries, a bottomless

- frame and **means whereby said frame is movable on said

counter from said portiongto a position adjacent the -

cashier stand so that the merchandise may thus* be moved —

asagrouptoa poi where it may be-conveniently observed,

counted and registered by the cashier.’’ The means whereby

said frame is movable are the channels 30 and 36\and these

are not distinetly claiméd as required by the statute. If they

were pepper ly claimed and described defendant's structure

would not infringe. The stipulation as to infringement

referred to the claims as:draun, not as they should have

been drawn, i. eater ee .

It is obvious from reading the claims that all of the

claims attempt to define the structure in ‘‘terms of what it

will do rather than i in terms of its own physical characteris-

ties”’ and are, therefore, inv alid. (Hialliburton v. Walker,

supra.) .. : eee

. The Turnham patent in suit does not involve mrvention.

—?

It is submitted that the dissenting opiion below is ob-

viously correct in finding a lack of invention in the claims

insmt. Evena cursory exaniination Sftows that it was com-

mon in the art to supply racks, puskers and similar devi ices

wherever they were needed. Eyen the patents ci ied by the

atent Office teach thiss. (The Storch patent (405), for jin-

stance, shows a device for moving packages from outside

a building through the tvall thereof without the person de-

livertng gaining entrance to the building. Harvey, page 416,

shows’a store counterowith a traek and a small truck mounted

onthe track to be used in re-stocking thy shelves: Mabe

perv nent patents are contained in Exhibit F. These patents,

4 a

16 te

reproduced at page 421, ef seq., were not cited by the Patent

Office during the proseention of the. application and their

pertinence: is overlooked by the court below. Marois, page

423, shows a rack slidable on a cashier’s counter with means

to protect the cashier. One of the- most pertinent patents

is the patent to: Varnum, at page 427, which shows a three-

sided bottomless rack: for stacking pool balls. The major-

ity opinion below stated at page 536 that this rack was not.

self-unloading, but it-is as much self-unloading as the

Turnham rack waich must be pushed or pulled back after it

has been used to move the merchandise up to the cashier.

The language of the Varnum specification starting at line

108 on page 428 makes this obvious. Varnum reads as |

‘follows:

“In using the pool ball rack of my invention, it is

manipulated by grasping the handles 21 and 22 and

separating the sides 7 and & against the action-of the

springs 12 and 13. The rack may then be used as a

scoop, by sliding fit over the surface of the pool table

to gather in the balls 26. When all fifteen balls have

thus been gathered in, the sides 7 and & should be

permitted to turn upon their hinges 12 and 13 toward

each, other, urging the balis 26 together and collecting

them m the form of a triangle or pyramid, in aecord-

ance with the rules of the game. The collected balls

26 and Trame-are-then moved across the table to posi-

tion them properly for the start of the game, after

which the sides 7 And 8 may be separated _to permit

removal of the frame without disturbing the accurate

arrangement of #he balls 26."

The Dickinson patent, page 430, particularly Figure 4, shows _

a similar rack with a runway to receive the balls. This

runway terminates in a rack which, as is shown in Figure 4,

may be opened so as ta be sélf-unloading when it is moved

to the rear.

“

17 ce

ers

Respondent would dismiss the Vaynum and Dickinson

disclosures on the ground that they are not used in con-

nection with a grocery counter,

It is well settled that new use of an old object or the slight

modification of an old object, does not constitute invention.

Sea v. Active Mfg. Co., 129 U. S. 530 (1889) : Peters

, Hanson, 129 U.S. 541 (1889); St. Germain v. Brunswick,

: 30 U.S. 227, 230, 34 L. Ed. 122, 123 (1890); Patent Cloth-

ing Co. vy. Glover, 141 U. S. 563 (1891): Ansonia Co. v;

Electrical Supply Co. 144 U.S. 11. (1882) ; Neptune Meter

Co. v. Natienal Meter Co., 127 FAL. 563 (4904); Morton

Trust Co. v. American Car & Poanake Co., 169 Fed. 169

(1909); Lewis Construction Co. v. Semple, 177 Fed. 407,

410 (1910), cert. den: 218 U.S. 679, 54° L. Ed. 1207.)

The patent to Arnold (page 483) shows a grocery store

appliance which has a rack or a tray shown in Figure 7

Which is reper to move merchandise out where the cus-

‘tomer can reach it. As the customer takes the otitside

device off the en the rack moves another in piace.

~ The Rorrer patent (page 459). shows rails or tracks to

guide a tray or other container to be slid over the counter.

The Greenberg patent (pagt 491) shows a tray to be

slid along a counter and means to guide it against lateral

movement. : a re soe

The Anderson patent (page 455) shows a store in which

a roller track is provided so that trays carrying merchan-

dise may be easily pushed around from spot to spot. —

The other patents constituting Exhibit F all show vari-

ous means for moving merchandise from one point to an-

ether. Morsa (page 482) shows a U-shaped rack for mov-

ing cans.in and out of a boiling device. The Court recog-

nized that the use of U-shaped bottomless frames for mov-

ing merchandise was not new (515 & 524).

Even the chart prepared by respondents’ witness, Lester

B. Clark, Exhibit 26 (page 376) shows-the various elements

alleged to be claimed by the Turnham patent are not new,

each of the eight elements—except the alleged extension

_ to the check-out counter—appearing in the art cited.

When a check-out. counter is extended or when it is long

enough to start with is, of course, a matter of opinion and

degree. We differ with Mr. Clark in that we find that both

Varnum and Dickinson are self-unloading to the extent that

they leave the pool balls ‘a place when they are opened and

pulled back. By the same token, they deposit the articles,

convey them and unload on the same surface. It will be

noted that most of these items are found in the art not.cited

by the Patent Office. Mr. Clark did not find that Varnum

had operatingfhandles but certainly the elements 21 and 22

cannot be otherwise designated and it will be remembered

that the only operating handle shown in the Turnham pat-

ent, Exhibit 18, is the member 24 which cannot be operated

by the checker but only by a pusher boy. Certainly if the

prior art did not directly anticipate the Turnham patent

it teaches enough so that it did not amonnt:to invention to

apply it to its present use. (Enterprise Railway Equipment

Co. vy. Pullman Standard Car Mfg. Co., 95 F. (2) 47, 21)

Turnham’s development certainly does not meet the test

of invention laid down by this Court. Cuno Engineering

Corporation v. Automatic Devaces Corporation (314 U.S

84, SO L. Ed. 58).

3. 4, was error to allow the’ plaintiff to wethdraw the

broadest claims from the suit. ® ; ‘

The complaint as filed (P. 1) alleged infringement of the

Turnham patent No. 2,242,408 without restriction as to

the claims involved. During the trial plaintiff, over defend-

ant’s objeetion, withdrew claims 1, 2 and 3, but has filed

no disclaimer of these claims (186). Your petitioner at no

‘time aequieseed in the limitation of this action to ¢laims

4, 5 and 6, but, on the contrary, vigoroushy opposed the —

withdrawal of ee (186) and pointed out to the

court that it never consented to the withdrawal of claims

i, 2and 3. It is your petitioner’s contention that the claims

having been placed in litigation by the patent owner and

their validity, having been challenged, the lower court should

not have allowed-the plaintiff-respondent to withdraw these

claims from issue on disclaiming them.

( laims :. 2 and % are obviously broader than. claims,

4, 5 and 6 and it is interesting to note that cl: ene iY. the

only claim to specifically set forth and distinct! claim the

extension to the check-out counter, the element upon which

the ‘lower courts relied to spell out invention. Claim 2

reads as follows: 2

‘*A cashier's counter in a cash and earry type of gre-

“cery, 4 cashier station, a portion on the counter to re-

ceive the merchandise being purchased, and means slid-

able on the surface of the counter to enclose and move

such merchandise to the cashier station.”’

‘The language of this claim is so broad that it would he’

anticipated by any number of the prior art patents and

- would be infringed by sliding : basket along the surface

of. the counter. The language ‘‘means slidable on the sur-

face of the counter to enclose and move such merchandise to |

the cashier station’’ clearly justifies such an inter pre 2p

That claims 1, 2 and 3 were broader than claims 4, 5 Yad

6 is admitted by the respondent and was yever seriously

questioned. Jt is coneeded that if the respondent had

withdrawn these claims on the theory that they were not

infringed, they might have been within their rights, but

such withdrawal would have been with prejudice, No-

where is there any intimation that the respandent consid-

— ered claims 1,2 and 3 not infringed. On the-contrary, in

‘ their brief before this court in oppositien to the petition

for writ of certiorari Point 3 of respondent's argument

is entitled **Respondent’s Reliance on the Three Narrower

Claims of the Patent.and the Refusal of the Two Lower

Court: s to Pass on the Validity of the Broader Claims is not

at Variance with the Statutes or with the Decisions of this

Court”’

It is ‘wubmitted that where a claim is challenged as to

its validity the patentee is under a duty either to disclaim .

the claim or, where he has the-opportunity, to litigate. The

patentee had the opportunity here to litigate but rejected

the opportunity and neglected to disclaim. The law is clear

that where a claim is held invalid it must be either dis-

claimed or be relitigated promptly. Eusten v. Simon As-

cher & Co, (282 U.S. 445, 75 L. Ed. 455). In the present

suit had the court held ¢laims 4, 5 and 6 invalid, the paten-

tee would have been In a position to bring a new action

against amother defendant under claims 1, 2 and 3. De-

fendant had a right to an adjudication of claims 1, 2 and 3.

since, if they should have been disclaimed, the Saris to

so disclaim would affect the question of costs (R. S. 4922,

8oU, S.C. 71). ;

Both of the lower courts dismissed petitioner's aren-

ment and in so doing relied on the case of Ford Motor Co,

v. Gordon Form-Lathe Co,, (90 F.2d 999, CCA 6). (See the

Record, Pg. 521-536.) This case, however, does not support

the position of respondent nor of thegeourts below, as will

be apparent froma reading of the short Per Curiam opinion

in that case. It is very clear from a reading of the opinion

that the’claims involved in that ease were withdrawn from

the consideration of the court and that ‘defendant. ae-

quiesced in this proeeedure’’. Quite obvioush@gt the par-

ties agree to the withdrawal of an issue before the court

it may be withdrawn, but where one party strenuously ob-

jects to the withdrawal of an issue initiated by his opponent,

it is error not to adjudicate’ the issue,

The law on this point is well stated ina recent opinion by

Judge Sweeney sitting in the District Court in Massachus-

etts in the case of Kendall Co. v. Tetley Téa Co., Ine. (81

F. Supp. 387, 388). In that case the complaint did not spec-

ify any specific claims as infringed, but in response to inter-

rogatories the plaintiff ¢harged that claims 1, 2 and 3 were

infringed. Thereafter, and_hefore trial, they attempted to

add additional claims and to eliminate claims 1 to 3 from

the consideration of the court. The defendant agreed to

the inclusion of the additional claims but objected to the

elimination of claims 1 to 3.- The court wrote:

‘*To allow such an amendment, when issue has been

jdgned for such a long period of time, would be an in-

justice to the defendant. Furthermore, the more re-

cent trend of decisions indicates the publie interest in

any adjudication of the issues of infringement and

validity of patent claims, partic ularly the issue of valid-

ity, and for that reason, as well, the motion must be

denied. (See Edward Katzinger Co. +. Chicago Metal-

lic Manufacturing Co., 3829 U.S. 394, oF S. Ct. 416, 424,

91 L. Ed. 374; Sinclair &Canol Co., Ine. v. Interchemi-

cal C et pe ciatti 820 U.S. 327, 65S. Ct. 1148, 89 L. Ed.

1644; Lackner Ce., tak et ‘al. v. Quehi Sign Co.,. 6

Cir., 145 F. = 932; Trico Products Corporation rv.

Anderson Co,, 7 Cir. 147 F. 2d 721; F. E. Myers &

Bros. Co. v. Goulds Pumps Ine., D. C., 7 FL R. dD. 416:

Phillips Petroleum Co, ¢.,Shell Development Ca. D.C.

6 F.R. D. 406.) It is immaterial that the issues as to

claims 1 and 8 have been joined by defendant's answer

rather than by counterclaim or demand for declaratory

judgment. Addition of claims 5, 12 and 14 is allowed:

withdrawai of 1 and 3 is denied.”’ a

It is the position of your petitioner that once a patent has

been put into litigation and the validity of the claims thereof

have been challenged, the patentee is under a duty to either

litigate the claims or disclaim them. The effect of the lower

court's ruling to the coritrary would be to allow the holder |

of an obviously invalid patent to harass industry by bring-

ing repeated actions and then withdrawing all but a single

claim of his patent. The number of actions would only be .

limited by the number of-claims in.the patent.

It is submitted that the courts below should have adjudi-

cated the entire patent and not allowed the patentee to

withdraw, obviously invalid claims without disclaiming

them.

Much ado has been made below about the alleged com-

mercial success of the Turnham device. It is petitioner’s

position that (1) there was no commereial success, and (2)

that no amount of commercial success could raise Turn-

ham’s contribution to the dignity of invention. Up until the

time of trial in April of 1947 only one small chain of four

stores, located in Jackson, Michigan, had taken a license

under the Turnham patent and that license (Plaintiff? s

Exhibit 17) was issued two months before the trial, and

almost ten years after the installation in the Weingarten

stores of the Turnham device. As recently as January 3,

1949 this court considered the doctrine of commercial sue-

cess and in the ease of Jungersen v. Osthy & Barton Co. (S80

U.S. P. Q. 32,385 U.S. 566; 93 L. Ed. 232) stated:

: ‘Numerous licenses under the patent were issued

in the United States and other countries. The fact that

this pracess has enjoyed e6nsiderable commercial sue-

cess, however, does not render the patent valid. It is

true that jn cases where ‘the question of patentable in-

vention is a close one, such success has weight i tipping

the seales of judgment toward patentability. Foshan

Tire & Rubber Co. vr. Ray-O-Vae Co., 321 U.S. 275, 279

(60 USPQ 386, 388), and cases cited in footnote D

thereof. Where, as here, however, invention is pli inky

lacking, commercial success cannot fill o void. Dow

Chemical Co. 7. Halliburton Co., 324 U.S. 3820-330 (64

USPQ 412, 416) Toledo Pressed Steel Co. v. Standard

23 .

Parts, Ine., 307-U. S. 350, 356-7 (41 USPQ 5938, 595) ;

Textile Machine Works t. Hirsch Co., 302 U. S. 490,

498-99 (36 USPQ 27, 40); 1 Walker, Patents (Deller, |

1937). § 44. Little profit would come from detailed ex-

amination of the cases cited above or those indicated

by reference. Commercial success is really a make-

weight where the patentability question is close.

‘*Tnereased popular demand for jewelry or alertness’

in exploitation of the process may well have played an

important part in the wide use of the patent. We ean-

not attribute Jungersen’s suecess sole ly or even largely

to-the novelty of his process.

‘‘We hold all the claims of the patent invalid for

be i

Ww ant of invention. aS

» .

pei

Conclusion

It is submitted that the courts below have erred:

1: In reading into claims 4, 5, and 6 the extension to the

check-out counter which was not an element of the claims

in order to find a novel gombination. é

2, In finding that fhe adaptation of a three-sided bottom-

less rack, old in the art, to a check-out counter constituted

invention over the prior art.

3. In affirming the District Court’s action in allowing

plaintiff to withdraw his broader claims—claims 1, 2 and

3—from suit and refusing to pass on the validity thereof,

‘4, In not holding that the Turnham contribution was a

mere expedient not rising to the dignity of invention.

It follows that the judgment of the Cireuit Court of Ap-

peals and of the District Court should be reversed and the

‘ause remanded for dismissal of the complaint. -

Respectfully submitted,

Joun H. Guaccum, «

Attorney for Petitioner. *

Mewy, Lippy & Giaccum,

Epwiy J. BaLLUFF, :

“Of Counsel. —

=: 7}

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.