Appendix — Walker Process Equipment, Inc. v. Food MacHinery & Chemical Corp.

Supreme Court brief1965

Ask Donna

What actually matters in this document.

Text

JPREME COURT OF THE UNITED STATES

. OCTOBER TERM, 1064 /745

No. G2 /3

WALKER PROCESS EQUIPMENT, INC.,

PETITIONER,

vs.

FOOD MACHINERY AND

CHEMICAL CORPORATION.

; f wait OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS

o FOR THE SEVENTH CIRCUIT

— INDEX

s Original Print

ings in the United States Court of Appeals

the Seventh Circuit

to appellant’s brief consisting of per:

of the record from the United States Dis-

Court, Northern District of Illinois, Eastern

isi 1 1

ent pursuant to Rule 12(¢) — ~~ ____ 1 1

Compleint 3 3

Ww. H. Lannert, Patent in Suit, No. 2,328,655

a _ and affidavit 6 5

and counterclaim for declaratory judg-

- ment es 11 10

_ Schedule A—List of patents 13 12

Plaintiff's answers to defendant’s interrogatories 13 12

to counterclaim 15 14

Plaintiff’s interrogatory to defendant _- a 16 15

_ Letter from Louis Robertson to Max Dressler,

dated December 18, 1956 17 16

nswer to plaintiff’s interrogatory 1 _..._ 18 17

Press, Printers, New York, N. Y., Fepruary 11, 1965

Appendix to appellant’s brief consisting of portions

of the record from the United States District

Court, Northern District of [llinois, Eastern Divi-

sion—Continued

Defendant’s request for admissions of fact

Admissions Exhibit 1—Chicago Pump Com-

pany, shop order

Admissions Exhibit 2—Letter from A. C.

Durdin, III, of Chicago Pump Company to

R. 8. Carter, dated December 16, 1940 __..

Admissions Exhibit 3—Letter addressed to

“Dear Gus” from “Chuck”, dated January 1,

1941

Admissions Exhibit 4—Letter (1st page only)

addressed “Dear Gus”, dated January 4,

1941

Admissions Exhibit 5—Letter addressed “Dear

Gus”, signed “Topleshay”, dated January 20,

1940

Admissions Exhibit 6—Chicago Pump Co.—

Sewage Treatment Works Operation report

Admissions Exhibit 7—Letter to Louis Robert-

son from Howard Goldsmith, dated June 15,

1961

Plaintiff's answers to defendant’s requesi for

admission ;

Plaintiff’s answers to defendant’s interrogatories

18 to 21

Plaintiff’s answers to defendant’s request for ad-

missions of fact (14-17)

Motion for summary judgment

Affidavit of Charles Lawrenz

Plaintiff's answers to defendant’s request for ad-

missions of fact (18 and 19)

Deposition of Charles E. Lawrenz — = ._

Deposition of Tom H. Forrest

Motion for award of attorneys fees

Motion to dismiss

Motion to award damages and alternative motion

to amend counterclaim

S$ REESS KKB

INDEX

Appendix to appellant’s brief consisting of pertions

of the record from the United States District

Court, Northern District of Illinois, Eastern Divi-

sion—Continued

Memorandum and order on defendant’s motion

for award of attorney’s fees

Order, dated February 20, 1963, denying motion

for fees; denying motion for summary judg-

ment, etc.

Order, dated February 28, 1963, amending order

of February 20, 1963

Order allowing plaintiff’s motion to strike de-

fendant’s counterclaim, ete.

Second amended counterclaim :

Plaintiff's motion to dismiss second amended

counterclaim

Order dismissing defendant’s second amended

counterclaim

Notice of appeal

Clerk’s certificate (omitted in printing)

Appendix to appellee’s brief ( ees: ok

Amended counterclaim

Clerk’s certificate (omitted in printing)

Opinion, Kiley, J.

Judgment

Order denying petition for rehearing

Clerk’s certificate (omitted in prmeting) 3

Order allowing certiorari

Original Print

61 57

64 59

65 60

66 60

70 63

71 64

76 69

77 69

79 70

81 71

91 79

92 80

95 83

96 84

97 84

98 84

(fol. A] [File endorsement omitted]

IN THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

No. 14466

Foop Macurnery AND CHEMICAL CORPORATION,

Plaintiff-Appellee,

vs.

Wa ker Process EQuipMENT, Inc.,

Defendant-Appellant.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

Honorable Edwin A. Robson, District Judge.

Appendix to Appellant’s Brief—Filed March 26, 1964

{fol. 1]

In THE Unrtep States District Court

NortTHern District oF ILLINoIs

Eastern Division

Civil Action No. 60 C 1007

Foop MacHINERY AND CHEMICAL CorporRATION, Plaintiff,

Waker Process Equipment, Inc., Defendant.

Starement Pursuant To Rute 12(c) or THE UniTEep

States Court oF APPEALS FOR THE SEVENTH Cimcors—

January 7, 1964

1. This suit was commenced on June 24, 1960.

2. The plaintiff is Food Machinery and Chemical Cor.

poration, a Delaware corporation. The defendant is Walker

Process Equipment, Inc., a corporation of the State of

Illinois.

3. The following pleadings have been filed in this action:

(a) Complaint filed June 24, 1960.

(b) Answer and Counterclaim filed July 15, 1960.

(d) Amended Counterclaim filed February 20, 1963.

(e) Second Amended Counterclaim filed June 5, 1963.

4, There has been no arrests made, bail taken or prop-

erty attached.

[fol.2] 5. On October 3, 1963, the Honorable Edwin A.

Robson entered an order granting plaintiff’s motion to

dismiss defendant’s Second Amended Counterclaim, and

dismissing said action without leave to amend and with

prejudice.

6. Notice of Appeal from said final order was filed by

defendant on October 31, 1963.

Respectfully submitted,

Louis Robertson, Darbo, Robertson & Vandenburgh,

P. O. Box 67, 15 North State Road, Arlington

Heights, Dlinois.

Jonn W. Hofeldt, Haight, Simmons & Hofeldt, 141

West Jackson Boulevard, Chicago 4, Illinois.

January 7, 1964.

{fol. 3]

In tHE Wyrrep States District Court

Vivii Action No. 60 C 1007

CompLaint—Filed June 24, 1960

Plaintiff, Focd Macninery and Chemical Corporation,

complains of the defendent as follows:

1. Plaintiff, Food Machinery and Chemical Corporation,

is a corporation of the State of Dclaware, and operates a

division, originally known as Chicago Pump Company and

presently known as Chicago Pump, Hydrodynamics Divi-

sion, having its principal office and place of business in

Chicago, Illinois.

2. Defendant, Walker Process Equipment, Inc., is a cor-

poration of the State of Illinois, having its principal office

and place of business in Aurora, Illinois.

3. The jurisdiction of this court is based on the patent

laws of the United States of America.

4, On September 7, 1943, the United States Letters Pat-

ent No. 2,328,655 were duly issued in the name of William

H. Lannert for an invention in a sewage treatment system.

Plaintiff is the owner of the entire right, title and interest

in said Letters Patent No. 2,328,655.

5. Defendant has infringed said Patent No. 2,328,655

by making and selling air diffusion units especially adapted

for use in sewage tanks designed for an aeration type of

sewage treatment and defendant has also actively induced

the infringement of said Patent No. 2,328,655 by the City

(fol. 4] of Houston, Texas, and perhaps others whose names

are not presently known to plaintiff.

6. Defendant was notified with respect to infringement

of plaintiff’s Patent No. 2,328,655, but defendant neverthe-

less has wilfully and deliberately proceeded to infringe

plaintiff’s said Patent No. 2,328,655 as aforementioned.

7. Plaintiff has suffered damage by reason of the afore-

said infringement of defendant.

Wherefore plaintiff prays

1. For an injunction restraining the defendant, its offi-

cers, agents, servants and employees from infringing upon

the said Letters Patent.

2. Foran accounting of damages.

3. For its proper costs and expenses and reasonable

attorneys’ fees.

4. For such other and further relief as the court may

deem just.

Max Dressler, R. Howard Goldsmith, James W.

[fol. 5] Clement, Attorneys for Plaintiff, 1825 Pru-

dential Plaza, Chicago 1, — Telephone:

WHitehall 4-4025.

Schneider, Dressler, Goldsmith & Clement, 1825 Pruden-

tial Plaza, Chicago, Illinois, Of Counsel.

WwW.

H. Lannert, Patent in Suit No. 2,398,655 /;

W. H. LANNERT

SEWAGE TREATMENT SYSTEM

Sept. 7, 1943. 3

2,328,655

2 Sheets—Sheet 1

Filed Feb. 2, 1942

wi Ti

MN,

patie! 1

ASEAN ATEN NC

"i; ais

[fol. 6]

In Unitep States District Court

SS at : 8

DR a ER

oe a I S

tan ik SS ee s

[lt m1 | | SS atl

igen E aS f yagi ttl S

inne: Ln SS

IN en Ws

SS eel La] }

» atti! i!

* mt

ttyl Shy :

i Ht \' ty iH ty

Mi dL Mi | | YW

Q+ wail iat I" , Ne

mi | g SS

TT att uA

oT 5

Sn fl

ati HUT

STE " x m

“|

- _W.H. Lannert, Patont in Suit No, 2,328,656

2,328,655

W. H. LANNERT

SEWAGE TREATMENT SYSTEM

2 Sheets—-Sheet 2

Filed Feb. 2, 1942

< ¢ ; |

“a

e 3 “ /

- - j

se ~ a Sha

at 7c

[fol. 7]

Lip

tet DL

a OM ee

ha f.

agian:

WZ =

GIS

TS, sane

4 ee)

SATA * € 3

SSS

GOLIS

Wiliam # Lannert

AY:

= "i yy ‘ INV . ~~ ‘

Ula -™N

(fol. 8]

sy qi i A

gw id on ana

: Hi Hi ae Ha ileal iis ih PHI

mer ae

7 : ee Ht Rial inl ii

: : gee aangevats HAHA Hh mt Te :

| 9 8 i { a ral ib Hi it i

: : = i tt i HG Ha a

5 i fil UT

Hee Le ial

Sire “TY. Ht. Lannert, Pat 3 . Bult No. TES |

2,828,656

[ fol. 10]

‘i a if Pe

hit bil HN iat Hal a

TH eatin Rann ABIL E pp dads

Ce a

tilt! lt Saine full ti Hilt aE it

aun it Hi si Hu i sete ple g forge

itd ae Lib ie wa hot

i ee a i ve i dy dit

He itp g2§ hl} ht * su" Y

a ta He jaa oe

aU ili sae H HEE i

Evelyn V. Shellberg.

County of Cook, ss.:

State of Illinois,

Subscribed and sworn to before me this 6th day of Sep-

tember, 1962.

Louis Robertson, Notary Public.

(Seal)

[fol. 11]

In Unrtep States District Court

Civil Action No. 60 C 1007

ANSWER AND CoUNTERCLAIM FoR DECLARATORY

Jupement—Filed July 15, 1960

Defendant, Walker Process Equipment, Inc., answers

the Complaint, referring first to the numbered paragraphs

thereof, as follows:

1. Defendant, Walker Process Equipment, Inc., admits

paragraph 1 of the Complaint.

2. Defendant, Walker Process Equipment, Inc., admits

paragraph 2.

3. Defendant, Walker Process Equipment, Inc., admits

paragraph 3.

4, Defendant, Walker Process Equipment, Inc., admits

the issuance of the patent in suit as stated in paragraph

4, except “duly” which characterization is denied, and for

lack of knowledge denies the remainder (2nd sentence) of

the paragraph.

5. Defendant, Walker Process Equipment, Inc., denies

the allegations of paragraph 5.

6. Defendant, Walker Process Equipment, Inc., denies

the allegations of paragraph 6.

7. Defendant, Walker Process Equipment, Inc., denies

the allegations of paragraph 7.

Affirmative Defenses

8. Defendant, Walker Process Equipment, Inc., asserts

that the patent in suit is invalid in view of the prior art

listed in attached Schedule A.

9. Defendant, Walker Process Equipment, Inc., asserts

that the patent in suit is invalid especially as to its broader

claims for failure to define adequately an inventive concept,

if any is disclosed.

10. Defendant, Walker Process Equipment, Inc., asserts

that the patent in suit is invalid because its claims define

a mere aggregation or exhausted combination.

11. Defendant, Walker Process Equipment, Inc., asserts

that the patent in suit is unenforceable because Plaintiff

comes to court with unclean hands with respect to t’:e pat-

ent in suit and is therefore not entitled to relief. Defen-

dant, Walker Process Equipment, Inc., asserts that this

also constitutes violation of the anti-trust laws.

12. The Defendant has at no time knowingly made or

sold parts especially adapted for use in an aeration type

of sewage treatment, but has only sold parts that consti-

tute staple articles or commodities of commerce, and such

parts as sold were for the single installation of Houston

where use is and will remain experimental until after the

patent expires, such use as a matter of law not constitut-

ing infringement.

(fol. 12]

Counterclaim for Declaratory Judgment

13. Plaintiff has submitted itself to the venue of this

court and established a controversy under the patent laws

by filing this complaint.

14. Paragraphs 8 to 12 of the foregoing Answer are

adopted herein by reference as part of the counterclaim.

Prayer for Relief

Wherefore, Defendant, Walker Process Equipment, Inc.,

prays:

For a declaratory judgment that the patent in suit is

invalid and/or is not infringed.

For an award of costs and reasonable attorneys fees

herein.

For an award of treble damages.

Walker Process Equipment, Inc., By its attorneys:

Louis Robertson, Jones, Darbo & Robertson, 20

North Wacker Drive, Chicago 6, Illinois.

Of Counsel:

Frank J. Belline, Jones, Darbo & Robertson, 20 North

Wacker Drive, Chicago 6, Illinois.

[fol. 13] Acknowledgment of Service (omitted in print-

ing).

Scuepute A To ANSWER AND CUCUNTERCLAIM FOR

DECLARATORY JUDGMENT

Nordell U.S. Patent 2,144,385

Banko U.S. Patent 1,894,390

Borge U.S. Patent 2,218,635

FYolding piping for filling fuel trucks, of

common knowledge, of which examples

will be cited when known

In Unrtep States District Court

Puarntirr’s ANSWERS TO DEFENDANT’S INTERROGATORIES

—Filed February 2, 1961

Interrogatory No.1

When did Lannert first investigate gas or air supply

piping for extending downwardly into a tank and hav-

ing two pivoted joints connected by riding pipe, a first

joint near the top and a second spaced between the

first and the bottom to permit a folding of the piping

and raising it from the tank (hereafter called “such

piping”) ?

Answer:

Sometime prior to January 6, 1940.

Interrogatory No. 3

State the date and location of each installation of

one or more such pipings, or if not installed the con-

struction thereof, beginning with the first known to

[fol. 14] Plaintiff or with which Lannert had any con-

nection, and continuing thereafter to include the second

such installation of public nature.

Answer:

The first completed installation was at the Hunter

Air Force Base, Savannah, Georgia, which installa-

tion was completed on or about February 28, 1941.

The second completed installation was at Camp Shelby,

Hattiesburg, Mississippi, sometime after May 8, 1941.

Interrogatory No. 4

As to each such installation or construction desig-

nated in response to Interrogatory 3:

A. State the first dates of (1) commencing construc-

tion of such piping, (2) shipping such piping,

(3) testing such piping, and (4) useful func-

tioning of such piping.

Answer:

4A (1) Sometime after November 5, 1940 and prior

to February 19, 1941.

(2) Between December 6, 1940 and February 19,

1941,

(3) On or about February 28, 1941.

(4) On or about February 28, 1941.

* * + * * * *

Interrogatory No. 6

When and where was the first advertising for bids

for such piping or installations including such piping?

Answer:

The first advertising for bids was sometime prior

to October 23, 1940. Plaintiff does not know at this

time whether the first advertising was for the Hunter

Air Force Base or for Camp Shelby.

[fol. 15] Interrogatory No. 10

Was Lannert an employee of Chicago Pump at the

time of the invention and assignment and is he now,

and is he a managing agent of Plaintiff?

Answer:

Mr. Lannert was an employee of Chicago Pump at

the time of the invention and assignment. Mr. Lan-

nert is no longer employed by Plaintiff and never

was a managing agent of either Plaintiff or its prede-

cessor during the term of his employment.

In toe Unirep States District Court

Civil Action No. 60 C 1007

Rerty to CountTerctarim—Filed February 2, 1961

Plaintiff, Food Machinery and Chemical Corporation, re-

plies to the counterclaim of defendant, Walker Process

Equipment, Inc., as follows:

13. Plaintiff admits the allegations of paragraph 13 of

the counterclaim.

14. Plaintiff replies to paragraphs 8-12, inclusive of the

answer, incorporated by reference in paragraph 14 of the

counterclaim as follows:

Plaintiff denies the allegations of paragraphs 8-12, in-

clusive.

Wherefore, Plaintiff prays that the counterclaim of de-

fendant, Walker Process Equipment, Inc., be dismissed

and that Plaintiff be awarded the relief which it seeks in

its complaint filed herein.

Max Dressler, R. Howard Goldsmith, James W.

[fol. 16] Clement, Attorneys For Plaintiff, 1825

Prudential Plaza, Chicago 1, Illinois, Telephone:

WHitehall 4-4025.

Certificate of Service (omitted in printing).

In toe Unrrep States District Court

Civil Action No. 60-C-1007

Puarntirr’s InrerrocaTory To DereNDaNT—

Filed October 19, 1961

Plaintiff, Food Machinery and Chemical Corporation, re-

quests that defendant, Walker Process Equipment, Inc.,

answer the following interrogatory in accordance with the

Federal Rules of Civil Procedure:

1. State the factual basis for the assertions made in

the letter from Mr. Robertson to Mr. Dressler under date

of December 18, 1956, copy attached. In answering this

interrogatory, the question is asked both with respect to

“extensive public use by the owner of the patent” and

[fol. 17] “the question of fraud” referred to in said letter.

Defendant is also requested to identify all documents upon

which the assertions in said letter are based and to state

who has custody of said documents, and where they may

be available for plaintiff’s examination.

R. Howard Goldsmith, Schneider, Dressler, Gold-

smith & Clement, Attorneys for Plaintiff.

Certificate of Service (omitted in printing).

ATTACHMENT TO Piarntirr’s INTERROGATORY

to DEFENDANT

(Letterhead of Jones, Darbo & Robertson)

(Received Dec 19 1956—Schneider, Dressler & Goldsmith)

December 18, 1956

Mr. Max Dressler

Schneider, Dressler & Goldsmith

Suite 1825

Prudential Plaza

Chicago 1, Illinois

Dear Mr. Dressler:

Re: Lannert Patent 2,328,655

Walker Process Equipment, Inc. has informed us that

the subject matter of the above patent was in extensive

{fol. 18] public use by the owner of the patent, your client,

more than a year prior to the application filing date. You

are invited, if you so desire, to check into this and let me

know if we are erroneously informed, and any facts you may

care to tell us bearing on the question of fraud.

Unless we are given, within two weeks, adequate reason

to doubt the correctness of our information, we will as-

sume it is correct.

Yours very truly,

/s/ Louis RoBerTson

for Jones, Darbo & Robertson

Iw tHe Unrrep Srares District Court

Civi] Action No. 60-C-1007

Answer TO PLAINTIFF’s evmunbnsmone 1--

Filed November 6, 1961

Irterrogatory 1, the only one filed so far, reads as fol-

lows:

“1, State the factual basis for the assertions made in

the letter from Mr. Robertson to Mr. Dressler under

date of December 18, 1956, copy attached. In answer-

ing this interrogatory, the question is asked both with

respect to “extensive public use by the owner of the

patent” and “the question of fraud” referred to in

said letter. Defendant is also requested to identify

all documents upon which the assertions in said letter

are based and to state who has custody of said docu-

ments, and where they may be available for plaintiff’s

examination.”

Answer:

Defendant has no actual knowledge comprising the basis

of assertions of extensive public use by the owner of the

[fol. 19] patent or of the related question of fraud in filing

an oath denying such public use.

A. W. Nelson, Office: Vice President.

State of Illinois,

County of Kane, ss.:

Subscribed and sworn to before me this 26th day of

October, 1961.

Helen M. McGeachy, Notary Public.

I~ tHe Unrrep Srates Districr Court

Civil Action No. 60 C 1007

DEFENDANT’S REQUEST FoR ADMISSIONS oF F'act—

Filed January 30, 1962

_ Under Rule 36, Defendant hereby requests Plaintiff, with-

in ten days after service of this request, to make the

following admissions (to admit the truth of the following

statements) for the purpose of this action only, and sub-

ject to all pertinent objections to admissibility which may

be interposed at the trial. Plaintiff is reminded of the

final sentence of Rule 36 (a) requiring specifying so much

as is true if a part must be denied.

1. Admissions Exhibits 1 to 6 attached hereto are true

copies of papers retained in regular course of business

in Plaintiff’s files, Exhibits 2 to 6 having been received

or written by Plaintiff soon within a few days of the

dates therein (except that “Jan. 20, 1940” should be “Jan.

20, 1941”) and the Shop order Exhibit 1 having been writ-

ten and issued by Plaintiff about Nov. 5, 1940. (Reference to

Plaintiff here and throughout includes Plaintiff’s predeces-

sors in business).

{fol. 20] 2. All of said exhibits relate to swing diffuser

equipment according to the patent in suit, including piping

carrying diffusers at the bottom and, pivoted to an air

supply connection at the upper end and having a pivoted

knee intermediate the ends.

3. The swing diffuser equipment of the patent in suit

was installed and operating usefully in an aeration tank

for sewage treatment accessible to persons unrestricted as

to divulging details thereof, as early as Jan. 22, 1941.

4. The swing diffuser equipment of the patent in suit

was sold and delivered and installed in aeration tanks by

Jan. 1, 1941. _

5. The sale of swing diffuser equipment referred to in

Statement 4 was an outright sale at a full commercial

price.

6. Another set of swing diffuser equipment according

to the patent in suit was ordered for another installation,

Camp Shelby, prior to Oct. 23, 1940 as shown by Shop

Order 58055 written on or about that date.

7. The swing diffusers of Statement 6 were shipped

on or about the week of Nov. 11, 1940.

8. The papers from which said Exhibits 1 to 6 were

copied were in files in the files of Plaintiff’s attorney when

he prepared “Plaintiff’s Answers to Defendant’s Interroga-

tories” sworn to by Milton Spiegel the Ist day of Feb.

1961.

9. Milton Spiegel, when signing the paper of State-

ment 8* knew that Answers to Interrogatory 4A (1) were

evasive and that nonevasive answers would have admitted

unequivocally dates earlier than Feb. 2, 1941, the date

one year before the filing date of the application for the

patent in suit.

10. Plaintiff’s attorney, in preparing the answers of

Statement 8* knew that answers to Interrogatory 4A (1)

[fol. 21] were evasive and that nonevasive answers would

have admitted unequivocally dates earlier than Feb. 2, 1941,

the date one year before the filing date of the application

for the patent in suit.

11. Plaintiff did not inform the Patent Office of the

sale, installation or use of swing diffuser equipment re-

ferred to in Exhibits 1 to 6, and filed the usual oath deny-

ing public use or sale more than a year before the filing

of the application.

12. Plaintiff’s counsel, after a request for more specific

answers to the interrogatories replied in a letter of June

15, 1961, of which Exhibit 7 is a true copy, ignoring the

crossed out additions.

13. Defendant’s counsel selected the originals of Ex-

hibits 1 to 6 for copying and so indicated to Plaintiff’s

counsel on or about December 15, 1961, but in spite of

reminders, copies were not sent to Defendant’s counsel

until January 23, 1962.

Louis Robertson, Darbo, Robertson & Vandenburgh,

15 North State Road, Arlington Heights, Illinois,

Attorney for Defendant.

Certificate of Service (omitted in printing).

* Meaning “Plaintiff’s Answers to Defendant’s Interrogatories,”

referred to in Statement 6 above.

[fol. 22]

Apmissions Exuisir 1

(See opposite) =

Wee aes man cot nt CHICACY PUIAP ComePsnnd

eis SHOP’ ORDER

es PAVING & CONSTRUCTIN CO

SSSIAH_BIRPORT, SAVAINAH GA

CONSTRUCTING ROX QUARIERIASTER -SAVAITIAN aa Oe

HAEACA = FOR ACCT OF ESPY PAVING & CLISTR. CO

ome ee foucrer

DIFFUSERS-PURCHASE ‘RoER NO,29-87, THIS PKGE

nmmarion _ TYVE °B° S#ING DIFFUSERS. SER

FEEDER UA oe ASSEMBLIES GITH GASKETS AND BOLTS FOR 6 FT.

0 1H, COP

| oie JOHN ASSEIBLIES.FD-A0 FTF Tusa Ds Tee NiO 1 FT. 104"

DIFFUSER 1 FUSER TBE CEADER ASSEVBLYS 12°-4° LONG -

yy CEMINGS IN EACH HEACIR ASSEV3LY ~~

oe TUBE HEADER ASSEVOLY 7°49" LONG 22 OPETINGS IW EACH

ge 4 .0.CASS020riNV. CIFPUSER TIES A CARTRIDGES. TUBE PERIEA-_

LBILITY_40.0_A1R_RATE_4 108 CFU

2 1 Da CARBOSUIOU'S 0’

praed) ——— ‘ TT wt

1B" COUNTER SUX BRASS PIPE PLUGS 7 y x

-SiMNGHOR BARS =027F _LLI 2h

aft 4 |

minTCR OPGPATED MOIST ITH SOFT. posse COVERED CABLE 110 VOLT

ene crc RRR Sa ome en epee: = 6 O° os 0+: cme 6 go

IPUENT”TO RE FURNISHED” IN ACCORDANCE 1TH co gum”

Re ee

| |

“te “tin 18 10 FURNISH A WAN TO SUPERVISE THE INSTALLATION SES RR

ms EQUISMENTAND_ INITIAL BPERATION FOR 30 DAYS oe canto

SEN SSR Stee aver bier opin f «por. —

SH TAPERED ACRATION LICENSE 4a Sert3-cu.

STRUCTION PRINTS. AT ONCE oe ei hk

psc BARS-BY. tA Sie 11M ans § FOR when (227

{ negroes

7 44

| SAN oor T4540 wal i no

COPY 5 an CO:TTUCED OW SUPPLEMENTARY SHEET_—_ oF__

¢ : «

ace’ c ie er we PAM READY

Apmissions Exuisit 2

(Letterhead of)

CHICAGO PUMP COMPANY

December 16, 1940

R. 8S. Carter

c/o Desoto Motel,

Savannah, Ga.

Dear Ralph:

I am enclosing a duplicate set of instructions that I

mailed you in Gainesville regarding the setting of the air

valve housings for the Type B Swing Diffuser.

We shipped to Savannah via express last Saturday 10

steel forms and one gauge bar to be used to hold the valve

housing casting in place on the walkway.

The forms are to be used as described in the instructions

and extreme care must be used in setting the top face of

the valve casting at the proper elevation and also level.

Alignment of the point assembly which mounts on the top

of this casting will be naturally effected if the top face is

not level.

Also enclosed you will find other prints showing how

the joint is assembled and the air valve installed. The

best procedure for assembly is left up to you but I sug-

gest that the joint knee be taken apart, and attach the top

section to the valve housing rather than try to handle the

whole joint.

The tube headers are provided with gaskets to permit

leveling if the down pipes are out of vertical. We had

trouble with some of the pipe threads being off and you

may find some of the joints off in this respect.

Keep a close record on time required to install this

equipment, and make notes on any suggestions or com-

ments that the contractor might have to improve the form

work.

(fol. 24] Be sure the form plates, where they bolt to the

casting, are kept clean and free from foreign material that

will interfere with clamping these two surfaces together

tightly. Dirt will throw off the level of the castings top face

with respect to the spirit level check. Also be sure to

take care of the gauge bar and keep it from being bent

or twisted. The forms are our property and when the

contractor is finished crate and ship them back to Chicago.

The contractor

(Two paragraphs illegible, omitted)

Keep me posted on where you are.

Yours truly,

Chicago Pump Company

A. C. DURDIN, III

ACD,1:RW

Apmissions Exuisit 3

(Letterhead of)

DINKLER HOTELS

Written from The Savannah Hotel

Savannah, Georgia

Jan. 1, 1941

Dear Gus.

Just a few lines as to conditions here. The swing de-

fusers are finished except for the tubes as I felt the tubes

might be broken if I installed them.

We have the returned sewage pumps set and are work-

ing on the raw.

I expect to have the pumps finished on Thursday and

then will go to see our agent.

I am hoping that I can install the tubes before I leave

and test them out with water before I leave. As things are

[fol. 25] going I believe I can do all of this with out lossing

(sic) too much time.

As Ever Chuck

P.S. I am short one 1” countersunk head Pipe Plug for

the headers on the duffusers.

C.L.

Apmissions Exuisir 4

(Letterhead of)

DINKLER HOTELS

Written from The Savannah Hotel

Savannah, Georgia

Jan. 4, 1941

Dear Gus.

Received your two letters to-day.

Mr. Peck and I were out to Camp Savannah to-day but

have nothing to report, as the plant has not progressed

very far.

I am figuring on returning on Monday or Tuesday nite.

This depends on the electricans (sic). What I am trying to

do is to run the blowers so I can test the tubes. We are

installing the tubes to-day. They were hid away in one

of the warehouses.

The pumps and all the equiptment (sic) is set and ready

to go.

They have not chosen an operators as yet, and I have

been hounded to death for the job.

No one here knows much about an Activated plant and

I have been answering questions galore.

You say Bill found that the leveling bar was off when

he bolted it down. 1 g ess he worked differently than I

did as I didn’t pull my bar down more than snug and used

a@ carpenters

(rest of letter omitted)

aae

aie

Bo 3

{fol. 26]

Apmissions Exuusit 5

640 W. 37 St.

Savannah, Ga.

Jan. 20, 1940

Dear Gus:

Arrived yesterday afternoon and started on the job this

morning. The plant is completed sufficiently to operate

and at present have everything going. There is still a

lot of work to be done, in fact they are still pouring

concrete but at the rate they work around here it should

all be done by the end of next week.

I do not know how much data I will be able to get as

the lab. equipment has just been ordered and it may not

be here for some time unless they are able to get much

better service than we usually get. There has not been

an incubator ordered so I am trying to get one so that we

can get some B.O.D.’s.

I have not checked the dimensions of the final tank but

it looks enormous and I do not know how it will work.

The engineer told me that the length of it was increased

over the original design and it is now as long as the

aeration tanks.

The velocity to both the primary tank and the aera-

tors is very low also the ports to the primary tank seem

to be pretty small but I won’t be able to tell how things

work out until we run awhile.

The primary sludge draw off hopper has a flat bottom

which is very poor.

There is a civilian operator and three soldiers so that

the plant will have twenty-four hour operation.

Yours truly,

/s/ Topleshay

Apmissions Exursir 6

(See opposite)

a < 3

peer At SEWAGEY TREATMENT WORKS OPERATION REPORT; 2 anid dak wee uk

P CHICAGO, ILL. pee ti ‘ ay 4€6, 4-22

es WEATHER 8 FLOW $ AERATION SLIDGE AND GAS [ELECTRIC Kye ANALYSES

a ae FLow= 4.9.9. x |acRa sovios rd 20.0 PAM. | susPENDED | SETTLEASLE

§ ey a for -oneees RO 6 cay sovios sorios si

: i ay ysl {ade AE : mar ;

‘ a ‘ . 6 3e2 7 gelige| s jdelide geige| = [gelze Z<

:- i] j i 5} 2/3 eff] aE eat eS eo g|§ a /E5/88) 8/28/88) 2 |e8/ ds] 2 es|ds|ea)as) 8)

7 tt Atti ti 2 is = Peres Bi ee eee craars eee ee ee ee ee er ee ee eee ae ee

' FES tie ojo |. |%o 5.6 7 zo

cS tle é 30 cq) 7 a4)

Be 312 Q EY] Z 22

: 4 O14 Ifo \lz¢ as wake L7

a lolé J.0 rarl) 2

siz ole i) 45\7 *

? P) Mb 25\9 1%

ae sje o|4 j¢.c}6.3 43 4019 Lo 2.3

& 108 616 [42192 FA a2 4.3

=e wile olé [salty 4g 15172

a “io r . 3S 2.21 /0 AZ

e 2 : ce edt SS FE 6.6 70 £1\t0 4

or 312 WIITAEL iT ee VANGL 67

py 416 £2 joe 42\ 8 2212 LH

me wile 2 400 PAL2£ ¥}

a Kr) eis itel@eiv | ~ je foo - - 21.2126

on - = pn ‘a ‘as ve! - 25122

2 wile ole 7194 Se tro 1.0 | fo

ie ile Oo} ? lev le.5\267 Ze TT "DSS 9 1:01 7 2.£ 12.712. 4

og eo! o}6 £2|__\ge 100 o| | by rir ¥;

— Ta

z 221 @ JO3i 0 16 if4 7) 125 2

se 2/0 wl ole 25 P) 6514 22

‘a aesig ole IS7i42 25 Prd o ee £2\f4 25

“2 rT elo |#fls 34 ED 2 416| £ rW)

tis ole la7ide 34 /30 0 6.41 5 Y

i aw) ole a6 20 4.68) § 2.8

ee eel o| 6 66 20 20 bo\| b 2.0

im elo 4io ‘2 r) 20 Aa 4.$\, 26

; 301 @ io vi 2

sid div £4 S rye

vera,

ave.

‘| om.

REMARKS: (mecene ewvenas. cxmsse ons “au Mews, OrEnAmIOG TROUELES, LANE TO GEUACE GR SISESTUR, GLEREUTON, SOUFLANTS ETC., OFINE RATER. SOTE TuEE OP Out avEReSE oF a.A meaemes ;

“ Ye Tae. AA + GER aTOR Our Of SERVICE,

44. fer *s - sace * ”

2/7 Terk owe Prinrta’ TAWK oer of SéRVKE,

OF SE

Apmissions Exuisir 7

(Letterhead)

Schneider, Dressler, Goldsmith & Clement

June 15, 1961

Louis Robertson, Esq.

Jones, Darbo & Robertson

20 North Wacker Drive

Chicago 6, Illinois

Re: FMC v. Walker (Chicago Suit)

Dear Mr. Robertson:

In reply to yours of June 10, we believe that the an-

swers to the interrogatories which were originally fur-

nished you were as specific as possible, and we do not

believe that we can be more specific at this time.

Frankly, however, in view of our activities in the Greens-

boro suit, we have not made any further search for docu-

ments. Naturally, we will be agreeable to produce in-

formally any documents to which you are entitled and which

we have located to date. If you will let us know when

you wish to do this, we will be glad to make arrange-

ment. Perhaps the documents that you will see will an-

swer some of the questions that you may now have.

Yours very truly,

Schneider, Dressler, Goldsmith & Clement

By /s/ Howard Goldsmith

RHG/rhw

‘29

In Unrrep States Distraicr Court

PiLaInTiFF’s ANSWERS TO DEFENDANT’S REQUEST FOR

Apmission—Filed March 19, 1962

Request No. 1

Admissions Exhibits 1 to 6 attached hereto are true

copies of papers retained in regular course of business

(fol. 30] in Plaintiff’s files, Exhibits 2 to 6 having been

received or written by Plaintiff within a few days of

the dates thereon (except that “Jan. 20, 1940” should

be “Jan. 20, 1941”) and the shop order Exhibit 1

having been written and issued by Plaintiff about Nov.

5, 1940. (Reference to Plaintiff here and through-

out includes Plaintiff’s predecessors in business.)

Answer:

Admitted.

Request No. 2

All of said exhibits relate to swing diffuser equip-

ment according to tae patent in suit, including piping

carrying diffusers at the bottom end, pivoted to an

air supply connection at the upper end and having

a pivoted knee intermediate the ends.

Answer:

Admitted, except that Plaintiff denies any infer-

ence that may be present in said request to the effect

that the “swing diffuser equipment” mentioned in said

exhibits includes all of the equipment referred to in

Claims 1, 3, 4, 5 and 6 of patent in suit.

Request No. 3

The swing diffuser equipment of the patent in suit

was installed and operating usefully in an aeration

tank for sewage treatment accessible to persons un-

restriéteds\as to divulging details thereof, as early

as Jan. 22,4941.

Request No. 4

The swing diffuser equipment of the patent in suit

was sold and delivered and installed in aeration tanks

by Jan. 1, 1941.

[fol. 31] Answer:

Denied with respect to Claims 1, 3, 4, 5 and 6 of

the patent in suit. Admitted with respect to Claim 2.

Request No. 5

The sale of swing diffuser equipment referred to

in Statement 4 was an outright sale at a full com-

mercial price.

Answer:

Admitted.

* *

Request No. 8

The papers from which said Exhibits 1 to 6 were

copied were in files in the files of Plaintiff’s attorney

when he prepared “Plaintiff’s Answers to Defendant’s

Interrogatories” sworn to by Milton Spiegel the 1st

day of Feb. 1961.

Answer:

Admitted.

* *

Request No. 11

Plaintiff did not inform the Patent Office of the

sale, installation or use of swing diffuser equipment

referred to in Exhibits 1 to 6, and filed the usual

oath denying public use or sale more than a year

before the filing of the application.

Answer:

Admitted.

Request No. 12

Plaintiff’s counsel, after a request for more spe-

cific answers to the Interrogatories replied in a letter

of June 15, 1961, of which Exhibit 7 is a true copy,

ignoring the crossed out additions.

Answer:

. Admitted.

[fol. 32]

In Untrep States District Court

Piarntirr’s ANSWERS TO DEFENDANT’S INTERROGATORIES

18 tro 21—Filed March 19, 1962

Interrogatories Nos. 18A & B

(A) State any and all facts relied upon as saving

the patent in suit from invalidity on account of the

sale, installation and use of swing diffuser equipment

referred to in Exhibits 1 to 6.

(B) If any ultimate facts or conclusions are given

in response to Part “A” hereof, state all primary

facts relied upon in support thereof.

Answers:

The “equipment” was not installed as set forth in

Claims 1, 3, 4, 5 and 6 of the patent prior to Febru-

ary 2, 1942.

The subject matter as set forth in the claims of the

patent was not in operation prior to February 2,

1942.

In Unirep States District Court

Piarntirr’s ANSWERS TO DEFENDANT'S REQUEST FOR

Apmissions or Fact (14-17) —Filed August 29, 1962

Request No. 14

14. Plaintiff relied solely* (*If “solely” is too strong,

admit so much of the statement as is true, preferably

with such precision and clarity as to leave no need

for clarifying requests.) On the non-delivery of the

hoist prior to February 2, 1941 as the justification for

the following:

(a) The first paragraph of its answer to Interroga-

tory 18A and B,

(b) The second paragraph of its answer to Inter-

rogatory 18A and B,

[fol. 33] (Note: It is noted that the dates stated in

those answers were 1942. Defendant thinks may have

been intended, and suggests that if the answer would be

untruthful with the date 1942 as stated, Plaintiff cor-

rect it. Plaintiff is also requested to check the ac-

curacy of the second paragraph of the answer to Inter-

rogatory 18A unless by a revise answer claim 2 is

excluded from such paragraph.)

(d) Denial of Request No. 3,

(e) First sentence cf answer to Request No. 4,

Answer:

14(a). In the first paragraph of plaintiff’s answer

to Interrogatory 18A and B, plaintiff relied on the

non-delivery of the hoist and also upon the fact that

its swing diffuser equipment included as an integral

part thereof operational supervision which was not

completed prior to February 2, 1941. (The date of

February 2, 1942 in the two paragraphs of the answers

to Interrogatory 18A and B was a typographical error

and should have been February 2, 1941.)

14(b). In the second paragraph of plaintiff's an-

swer to Interrogatory 18A and B, plaintiff relied upon

(a) non-delivery of the hoist, and (b) the fact that

its equipment, exclusive of the hoist, was not in satis-

factory operation prior to February 2, 1941.

14(c). This request is ambiguous as defendant’s Re-

quest No. 2 does not refer to delivery or non-delivery ;

insofar as the answer to the request refers to “swing

diffuser equipment”, the denial portion of the answer

related to the hoist.

[fol. 34] 14(d). In denying Request No. 3, plaintiff

relied upon (a) non-delivery of the hoist, and (b) the

fact that its equipment, exclusive of the hoist, was not

in satisfactory operation prior to February 2, 1941.

14(e). Admitted.

Request No. 16

16. There are no facts concerning the swing diffuser

equipment (other than the hoist) to which said Ex-

hibits 1 to 6 relate which keep that equipment (other

than the hoist) from being part of the “prior art”

designated in Sec. 103 of the Patent statutes, (35 USC

103).

Answer:

This request has been objected to.

Request No. 17

17. There are no facts about the piping which was

the subject of Interrogatory 4 (the hoist not being

included in said interrogatory) which keep it from

being part of the “prior art” designated in Sec. 103

of the Patent statutes, (35 USC 103).

Answer:

This request has been objected to.

FMC Corporation

By /s/ Tom H. Forrest

In tHe Unrrep States District Court

Civil Action No. 60 C 1007

Morion ror Summary JUDGMENT—

Filed September 7, 1962

Defendant hereby moves for a summary judgment that

the patent in suit was invalid when issued.

{fol. 35] The evidence on which Defendant relies com-

prises the accompanying copy of the patent in suit (iden-

tified by attached affidavit) and the admissions by Plaintiff

on file, including admissions in answers to interrogatories.

Briefly, the admissions show that the Plaintiff by its

predecessor had sold and delivered the swing diffusers of

this patent more than one year prior to the filing date of

the application for this patent.

That which was sold is prior art under Section 102(b) of

the Patent Statute. The technicality that the patent claims

require not only swing diffusers (defined in detail) but also

“means” for raising the swing diffusers, is of no avail to

Plaintiff in view of Section 103 of the Patent Statute which

requires that differences over the prior art (over that

which was sold) be not obvious. The use of some means

for accomplishing the described raising (i.e. means such

as the mere cable illustrated in the patent in suit, or a

lever) would surely have been obvious. -In fact, Plaintiff

admits having previously sold hoists for an earlier version

of swing diffusers.

Louis Robertson, Darbo, Robertson & Vandenburgh,

P.O. Box 67, 15 North State Road, Arlington

Heights, Illinois, Attorney for Defendant.

[fol. 36]

Ix tHe Unrrep States District Court

Civil Action No. 60 C 1007

Arrwavit or Cuarites Lawrenz—Filed October 5, 1962

State of Illinois,

County of Cook, ss.:

Charles Lawrenz, being first duly sworn, deposes and

says:

1. Iam a Senior Installer employed by Chicago Pump,

Hydrodynamics Division of FMC Corp. (formerly known

as Food Machinery & Chemical Corp.). I have been em-

(fol. 37] ployed in the sewage treatment field by my present

employer and its predecessor, Chicago Pump Company, for

26 years.

2. In 1941 I was employed as a Service Tield Engineer

with Chicago Pump Company.

3 I am familiar with the installation of the Lannert

“swing diffusers” at Hunter Air Force Base, Georgia, as

I was one of the people who made that installation. These

“swing diffusers” are similar to those of U. S. Letters

Patent No. 2,328,655, issued September 7, 1943, on an ap-

plication filed February 2, 1942, in the name of W. H.

Lannert.

4. I have read defendant’s motion for summary judg-

ment, the brief of defendant in support of that motion,

and I am familiar with the subject matter and most of

the alleged facts set forth in said documents.

5. Many of the alleged facts as set forth in the afore-

mentioned documents are incorrect and/or incomplete,

and I take issue with them. I do not agree with the con-

clusions sect forth in the defendant’s motion for summary

judgment and the accompanying documents filed by de-

fendant; for example, I do not agree with the assertions

made with respect to the alleged facts set forth therein

and relating to:

(a) The alleged “obviousness” of a means for re-

moving the swing diffusers from the sewage

treatment tank.

(b) The allegations that the “means” could be a pipe

wrench, a lever, a rope, a cable, or any of various

other tools.

was working satisfactorily prior to February 2,

1941; to be in satisfactory operation the swing

diffusers would have required satisfactory means

to remove them from the sewage treatment tank.

[fol. 38] (d) The satisfactory operation of the equip-

ment; the equipment could not be said to be in

satisfactory operation until Chicago Pump Com-

pany~-had- completed 30-day operational supervi-

sior which was an integral part of the contract for

installation of the equipment, and which was not

completed prior to February 2, 1941.

Charles Lawrenz

Subscribed and sworn to before me this 4th day of

October, 1962.

Tracy B. Menke, Notary Public

(Seal)

In Unrrep States Distrricr Court

Puaintirr’s ANSWERS TO DEFENDANT’s REQUEST FOR

Apmissions or Fact (18 and 19)—Filed October 17, 1962

Request No. 18

18. Prior to February 2, 1941, all equipment shown

in the drawings of the patent in suit, except cable 68,

was installed in aeration tanks of a sewage treatment

plant substantially* in accordance with said drawings

* Discrepancies may be described if desired to avoid interpreting

the word “substantially.”

and was in use for aerating sewage in said tank for

the purpose of usefully treating said sewage, and was

exposed to view of persons having no obligations of

secrecy with respect to it. The equipment had already

been sold by Plaintiff’s predecessor, delivered, and

installed under Plaintiff’s predecessor’s supervision.

Answer:

[fol. 39] Plaintiff admits request No. 18 except that

(presuming that by “the equipment” referred to in the

second sentence Defendant means complete installa-

tion) Plaintiff expressly denies the second sentence,

and Plaintiff also denies that equipment in aeration

tanks was in satisfactory use for the purpose of use-

fully treating sewage prior to February 2, 1941.

Request No. 19

19. Prior to February 2, 1941, there was means at

hand at the site of the aeration tanks of the pre-

ceding paragraph for pivoting the upper pipes of the

swing diffusers of the patent in suit to raise or lower

the diffusers, and at least one of said diffusers had

been raised or lowered by such pivoting.

Answer:

Denied.

In Unrrep States District Court

Dzpositions or Cuarues BE. Lawrenz anv Tom Forrest

Taken Octoser 18, 1962

Mr. Goldsmith: * * *

***T might state for the record, Mr. Robertson, that

after some study last night in connection with the suit, and

discussing the matter with Mr. Forrest, for the reasons

stated in the motion, we have decided to dismiss the suit

with prejudice, and I will ask you in view of that whether

you believe there is any point in continuing with these

depositions.

Mr. Robertson: Yes, I do, because I believe it relates

to the question of the recovery of attorneys’ fees and may

relate also to the possible claim of Walker against F.M.C,

€ 7 * * * ™ *

[fol.40] Cartes E. Lawrewz, called as a witness here-

in, having been first duly sworn, was examined and testi-

fied as follows:

Direct examination.

By Mr. Robertson:

Q. Mr. Lawrenz, you are the Charles Lawrenz who exe-

cuted an affidavit in this case, a copy of which I show you,

are you not? -

A. Yes.

Q. In paragraph 3 of your affidavit, you stated that “I

was one of the people who made the installation.” Who

were the others, to the extent that you can tell us offhand,

or describe them by class, if they were just workmen?

A. They were workmen.

Q. Working under you?

A. Working for the contractor.

Q. What was your part in the installation?

A. Supervision.

Q. Your letter of January Ist indicates that the swing

diffusers are finished, except for the tubes, so I judge that

certainly by that time the concrete work of the tanks was

completed. Is that correct?

A. Well, you leave me kind of vague there. They were

complete to the extent that we could install the swings with

the tubes, and could put water in the tank.

Q. I show you a copy of the patent in suit, and «sk

if the tanks comprise two side-by-side aeration tanks, as

shown in the patent.

A. They do.

‘39

Q. And they had sort of a Y-shaped wall between them,

did they?

A. Yes. ,

(fol. 41] Mr. Goldsmith: You are speaking of the instal-

lation at Hunter now?

Mr. Robertson: Hunter Air Force Base.

The Witness: Yes.

Q. Can you tell us when you left that Hunter Air Force

Base job? .

A. The exact date, I couldn’t, no.

Q. Was the aeration tank filled and operating when you

left?

__A. It was filled with water, but the operation, I couldn’t

say.

Q. I call your attention to your letter, admissions Ex-

hibit 4, to the second paragraph, which reads, in part,

“What I am trying to do is to run the blowers so I can

test the tubes. We are installing the tubes today.”

I call your attention to it to refresh your recollection

on it. Before you left you did operate the blowers, did

you?

A. Yes.

Q. And the tubes appeared to work properly.

A. As I recall.

Q. When you went down to Hunter Air Force Base for

this installation work, were you already acquainted with

these knee-action swing diffusers of the type B swing dif-

fusers? .

A. No.

Q. You had never seen them, even in the shop, before?

A. I can’t be sure of that answer. I probably did. I

knew what they looked like. .

[fol.42] Q. And in spite of never having seen one of

them raised, do I understand correctly that you installed

them and left Hunter Air Force Base without ever raising

one of them, to make sure that it raised properly?

A. I see no reason to be concerned, as I recall it, about

their ability to do what they were supposedly to do. I

couldn’t have raised it, for there was no way of raising it,

unless I used some outside means, such as a crane or some

power device.

Q. They were doing a lot of work around that plant,

weren’t they, so there were cranes around there?

A. Yes.

Q. There were cranes around there?

A. Yes.

Q. So if you had wanted to test one out, you could

have brought one over and raised it, couldn’t you?

A. I suppose I could have, if I needed to.

Q. Referring again to the affidavit which you executed

in this case, did you study that affidavit to be sure it was

truthful before you signed it?

A. I thought so.

Q. In item 5 you state, “Many of the alleged facts set

forth in the aforesaid mentioned documents are incorrect

and/or incomplete.”

When you made this affidavit, did you mean that some

of the facts stated were incorrect, and that some were in-

complete, or did you mean merely that some of them were

either incorrect or incomplete but maybe not both? Or, in

other words, what was your meaning in using that phrase

incorrect and/or incomplete?

A. The reference was in connection with this method of

raising with a rope a lever or a pipe wrench.

{fol.43] Q. Of course, that is just one. Your wording

that I read before says, “many of the alleged facts.”

A. Many is more than one. Right.

Q. Quite a few more than one, I would think.

A. Well, there are three here.

Q. Three being—what three are you talking about? A

pipe wrench, a lever, a rope?

A. Yes.

Q. Those were the three you thought were incorrect?

Is that correct?

A. Yes. |

Q. Those were the ones to which you were referring

when you said “many of the alleged facts were incorrect”?

A. Yes.

Q. And that is all that you were referring to?

A. Yes.

Q. You are supposed to answer the question, whether a

cable could be used to raise one of the swing diffusers.

A. No, I am a little vague. Could a cable be used in

itself? No. It has to be powered.

By Mr. Robertson:

Q. You would have to have something adequate for pull-

ing the cable, is what you mean.

A. Yes, that is right.

Q. And that would also be true of a rope, would it not?

A. Yes.

Q. A rope would be used with something adequate to

pull it.

A. Yes. —

Q. Further on in paragraph 5 in your affidavit, you

state twice, “I do not agree,” the last one being, or more

[fol. 44] completely stated, “I do not agree with the asser-

tions made with respect to the alleged facts set forth there-

in and relating to :”

Now, when you said you do not agree, do you mean that

you definitely disagree that the assertions made with re-

spect to the alleged facts set forth therein relating to the

following items were definitely untrue or merely that you

were not agreeing that they were true?

Q. Now, as to the other items, did you also mean to be

definitely asserting that they were untrue, or did you

merely mean to say you didn’t agree with them, you

wouldn’t commit yourself to being in agreement with them?

A. That is correct. I would not be in agreement with

them.

Q. That you would not commit yourself to being in agree-

ment with them.

A. Yes.

Q. When would you expect the need for raising the swing

diffuser to develop at Hunter Air Force Base? In the mat-

ter of a few days, from the beginning of operations, a few

months, or what?

The Witness: The need could be a variable, depending

on many facts.

Q. A broken tube could develop at any time, is that what

you mean?

A. Possibly.

Q. In which case you might need the swing diffuser

fairly soon.

A. Yes.

[fol.45] Q. If there wasn’t a broken tube, or a tube which

developed a bad leak, which I suppose would be a form of

break, the next time, the next occasion for raising them

would be when they became clogged or needed cleaning

them, is that correct?

A. Yes, sir.

Q. And you wouldn’t expect that to occur in less than

a few months, would you?

The Witness: I can’t—the time element is so uncertain.

Q. Do they clog so badly that they might need to be

raised even sooner than two months for cleaning?

A. I couldn’t answer that.

Q. Have you any that needed to be raised sooner than

two months for cleaning?

A. No, I can’t recall any case.

Q. What basis did you have for the statement in para-

graph D that the equipment could not be said to’ be in

satisfactory operation until the end of this supervisory

period?

A. On the basis of acceptance by the U. S. Government.

Q. Well, your affidavit doesn’t say it hadn’t been ac-

cepted by the U. S. Government. Your affidavit says it

could not be said to be in satisfactory operation.

Mr. Goldsmith: He has just explained it for you now.

By Mr. Robertson:

Q. All you meant was it had not been accepted by the

U. S. Government, is that correct?

A. That brings it up to the satisfactory conclusion >of

the job.

[fol. 46] Q. I don’t think you quite answered my ques-

tion. All you meant in that part of paragraph D was that

it had not been accepted yet by the government, is that

correct?

A. Yes.

Q. Do you remember some inspections, or inspection?

A. To the degree that there was, I assume, an engineer

representing the air force base on the job continuously.

Q. I judge you mean that there was definitely someone

there, and you assume he was an engineer, is that correct?

A. Yes. I didn’t see his diploma, or anything like that.

Q. And he was generally inspecting for the army the

installation around the whole plant, was he?

A. Yes, sir.

Q. Including the installation in which you were par-

ticipating.

A. Yes, sir.

Q. As far as you know, he was satisfied with your in-

stallation work.

A. As far as I know, yes.

Tom H. Forrest, called as a witness herein, having been

first duly sworn, was examined and testified as follows:

Direct examination.

By Mr. Robertson:

Q. Mr. Forrest, you are the Tom H. Forrest who swore

to various papers in this case, are you not?

A. That is right, yes.

{fol. 47] Q. Starting at the end with your answer to re-

quests 18 and 19, at the top of page 2, you have a paren-

thetical clause reading, “presuming that by the equipment

referred to in the second sentence defendant means com-

plete installation.”

You were there referring, were you not, to the absence

of the hoist?

A. I believe I was referring to that, and I may have

also been referring to this operation supervision which

was part, presumably part of the order.

Q. What was the source of your information for your

denial of request 19?

A. The source was what became, or what is indicated

as admissions Exhibit Number 1, and—just a second. I

believe there was another exhibit in here. (Examining

file. ) :

It was Exhibit Number 1 and Exhibit 5.

Q. Are you again referring to the fact that the hoist

had not been delivered?

A. That is correct. In that case also, the fact that in

Exhibit Number 5, I believe, it was indicated that the tanks

were not completed, or something wasn’t completed. Let’s

see, what is that date again? Yes, it would be those two.

For the moment, those two.

Q. I don’t understand what the second of those two have

to do with request 19. Can you explain?

A. Well, at the time, at least by January 20—now, I have

no later information that is before February 2nd, I realize

_—pbut at that time, it was indicated that they were still

pouring concrete, and this didn’t indicate that the pivoting

could be done necessarily. I have no information as to

what concrete was being poured. So I would say that this

might have had some effect on the pivoting of the unit.

[fol.48] Q. Since the aeration tanks were in operation,

isn’t it pretty clear that the conerete must have been in

the process of being poured somewhere else?

A. As of this date, which was what? The 20th? There

was no indication where this concrete was being poured,

nor no indication, as I recollect, as of the 20th, that there

was operation.

Q. Doesn’t this exhibit 5 say the plant is completed suf-

ficiently to operate, and at present has everything going?

A. That is right, but that doesn’t mean that it was

in my connotation of operation. Now, we may get into

a discussion about what operation is.

Q. To have everything going would indicate it was in

some form of operation, wasn’t it?

A. That is right. Some form of operation, but not what

we would consider operation, necessarily.

Q. But the fact that everything was going, would tend

to indicate, would it not, that concrete pouring was an

adjunct of the plant rather than operating units of the

plant?

A. It could be. It could have been in the aeration tank

itself.

Q. How?

A. They could have been pouring copings. All sorts

of things. I don’t know. That is it. I have no knowledge

of this directly.

Q. Are copings outside of the tank?

A. No, they are inside the tank, in part.

Q. If the tank were in operation, it would be rather

strange to be pouring copings at that time, wouldn’t it?

A. It would be strange, but from what has been indi-

eated in this project, things were moving very rapidly;

[fol. 49] that is, from what I have read. I don’t know. I

wasn’t there.

Q. However, you knew that the swing diffuser equip.

ment had been installed, did you not?

A. I was aware of the fact from one of the other ex-

hibits,

Q. So the copings on which they rest must have been

complete by that time.

A. At least sufficiently to install the valve housing and

hang the equipment.

Q. There is nothing you know of that gives any indi-

cation that any of this concrete pouring was in connec-

tion with the aeration tanks, is there?

A. No, nor the reverse.

Q. But you based your denial on the bare possibility,

in part on the bare possibility, that it might have been in

connection with the aeration tanks?

A. In part. More on exhibit 1, of course.

Q. But as to the part on which you based it, as we just

stated, did you do any checking as to whether the—

A. I had no way to check.

Q. You could have asked Mr. Lawrenz, couldn’t you?

A. I suppose I could have. I didn’t.

Q. Likewise, did you do any checking as to their being

some other means at hand beside the hoist?

A. No, I did not.

Q. Yet you signed the sworn denial on as little infor-

mation as you have indicated?

A. I believe I said something to the effect somewhere

that this was to the best of my knowledge. I am not so

sure about that. I don’t see it here. But I can recollect

signing such papers. Whether it was with this one or not,

I don’t know.

[fol.50] Q. And you felt that justified you in taking the

oath when you knew that your knowledge was very, very

slim?

A. That is right. But is based on my best knowledge

and belief.

Q. Did Mr. Goldsmith realize that you had virtually no

knowledge?

Mr. Goldsmith: I object to the question. I don’t think

the witness knows what Mr. Goldsmith knew.

Mr. Robertson: Let’s ask him. I ask him if he did.

The Witness: I have no knowledge about how much Mr.

Goldsmith knows about what I know about this job.

By Mr. Robertson:

Q. Did he inquire about the extent of your knowledge?

A. I don’t believe he did.

* * * + * * *

Q. Doesn’t admissions exhibit 6 indicate treatment of

sewage?

* * * oa * * *

A. Admission 6 shows no information regarding the

treatment that was taking place, if any. It shows that

some metering was being done, that is about all.

Q. The figures in the first three filled-out columns under

the heading of “Sewage temperature and flow” indicate

flow of sewage to the plant, do they not?

A. Yes. Columns 8, 9 and 10 indicate the sewage flow.

Q. And column 11 indicates none was bypassed doesn’t

it?

A. Correct.

Q. That means none of the raw sewage was bypassed.

A. Around the primary tank.

Q. Around the primary tank.

A. Right.

[fol.51] Q. And under aeration, that is the heading that

would be pertinent to the tanks where the swing diffusers

are located, is it?

A. Which are you talking about? What column num-

bers? There are numbers on this.

Q. Numbers 13 to 21.

Mr. Goldsmith: What is the question now?

By Mr. Robertson:

Q. Related to the answer where the swing diffusers are

located, would it not?

48 c

A. Yes, in part it would, yes. Column 19 would not

necessarily relate to that.

Q. Doesn’t the return of sludge, indicated in column 19,

show that sewage was being treated in the aeration tanks?

A. It shows that sludge was being settled in the sec-

ondary tank, that is correct.

Q. And returned to the aeration tanks?

A. That is right. We assume that is so.

Q. And that would be sludge from sewage, would it not?

A. Yes, I assume so.

Q. In any event, it is clear, is it not, that sewage was in

the aeration tanks, or at least one of them, prior to Feb-

ruary 2, 1941, and was being aerated for the purpose of

treating it?

A. Mr. Robertson, I cannot say that that is so, based on

what I see here.

Q. Why not?

A. Because if this—again, I do not know how this plant

was built, but if I may believe that that plant was built

with a bypass after the primary tank, it is not clear to

me from this that sewage was being taken through this

[fol. 52] plant, return sludge or not, because there is noth-

ing with reference to the return sludge as to the quality

of that return sludge. I don’t know.

Q. But that, again, would be the satisfactoriness of the

treatment rather than whether it was being treated, would

it not?

A. You are asking me questions that I don’t know. I

cannot answer. I can produce, or I think I could produce,

this kind of information treating clear water. Now, I am

not saying I can. I am merely saying that I think most

of this data could be obtained from clear water. There

is only one piece of information that would indicate any-

thing different, and that is column 17.

Q. What does that indicate different, that tends to in-

dicate that sewage was being treated?

A. That indicates that something was settling.

Q. I call your attention to column 22 showing waste-

activated sludge on some of the days; for example, Janu-

ary 27th, 28th and 29th. Doesn’t that indicate that sewage

was being treated?

A. Yes, I suppose that it might.

Q. You really suppose that it does, don’t you?

A. I assume that it does, but I can’t be sure. I didn’t

see this plant. I am perfectly willing to talk about things

I know for sure, but—

Q. You were willing to swear to this statement, how-

ever, apparently, but I notice that again at the end. It

includes the words “that the same are true to the best of

his knowledge and belief,” on page 5.

A. That is correct.

Q. With those words there you feel no responsibility

for having any knowledge? Is that correct?

A. I put that in there because I have no real knowl-

edge other than what I have ascertained with reference

to this plant within the past two years or 80.

[fol. 53] Q. But in some matters you didn’t inquire of

people who would have known; for example, I think you

said you hadn’t inquired of Mr. Lawrenz.

A. That is right. I did not. I felt I had sufficient in-

formation—perhaps I didn’t—but I felt I had sufficient

information from the face of the information that was

available.

Q. You have no reason to believe there was any inade-

quacy in the treatment achieved with the quality of the

aeration equipment, have you?

A. I don’t know. I can’t answer that one way or the

other. I would believe that the equipment was satistac-

tory, but that is just what I believe, not what I know.

Q. You admitted that the swing diffuser equipment with

respect to claim 2 had been sold and delivered and in-

stalled by January 1, 1941, is that correct?

A. I believe on the basis of the information that I had

available, I believed that to be so.

Q. Plaintiff’s interrogatory to defendant asked a ques-

tion about a letter—you can look at my copy if you want

—dated December 18, 1956, in which I write to Mr. Dressler,

counsel for plaintiff, and invited them to check into the ©

question of the patent having been, or the subject of the

matter of the patent having been ia public use more than

a year prior to the application filing date.

A. Yes.

Q. Do you have any information as to what investiga-

tion was made at the time of my letter?

A. No, I don’t. I wasn’t even aware of your letter until

- recently. .

[fol. 54] Q. Plaintiff has been enjoying an enviable posi-

tion in the trade with respect to selling diffusion equipment

throughout the life of the patent in suit, has it not, in that

there was virtually no competition in the sale of swing

diffusers?

A. I believe that is probably correct.

* * * * * * *

Q. And Chicago Pump Company has sometimes bid the

swing diffuser equipment together with equipment other

than aeration tank equipment, has it not, at one price, one

lump sum bid, in other words?

A. I believe it possibly has.

Q. Don’t you really know that it has happened some-

times?

A. I can’t recall a specific instance, but I believe it has,

yes.

Q. And throughout the life of the patent, the Chicago

Pump Company has advertised its swing diffuser equip-

ment as patented, has it not?

A. I would assume that they have, yes. I assume so,

yes. I can’t verify that for sure.

Q. In fact, you would be amazed if they had not, wouldn’t

you?

A. Well, some of our advertising practices are not that

sure. I wouldn’t be too amazed. I believe we have, but I

wouldn’t be too amazed if they forgot it.

[fol. 55]

Ly THE Untrep States District Court

Civil Action No. 60 C 1007

Motion ror Awarp or ATTORNEYS F'EES—

Filed October 22, 1962

Defendant moves, in the event the Court grants either

Plaintiff’s motion to Dismiss or Defendant’s motion for

Summary Judgment, for an award of reasonable attorneys

fees ($5,000 unless the Court determines some other figure)

to be paid by Plaintiff to Defendant, because of unusual

circumstances in this suit as follows:

A. The filing of the patent application included the

usual oath denying knowledge or belief that the in-

vention had been in public use or on sale more than

a year before the filing date, which allegations must

be deemed false in view of Plaintiff’s knowledge of

its own delivery, installation and initial public use of

the alleged invention more than a year before the fil-

ing date.

_ The failure of Plaintiff to recognize any duty or take

any suitable action with respect to the possible in-

validity of its patent when the question of public

use more than a year prior to the application filing

date wis specifically raised in a letter from Defen-

dant’s attorney received by Plaintiff’s attorney De-

cember 19, 1956 (copy in file attached to Plaintiff’s

Interrogatory served October 17, 1951).

. The bringing of this suit when the only items De-

fendant was charged with selling were “air diffusion

units” corresponding to the very items Plaintiff had

sold, or placed on sale and delivered, more than one

year prior to its application filing date, and main-

taining this suit for two years after the patent ex-

pired, the considerations in Plaintiff’s motion to dis-

miss being as applicable at the beginning of said two

years as now.

(fol. 56] D. Plaintiff’s unconscionable reluctance to clearly

state the true facts relative to its swing diffusers

being on sale, delivered, installed, and in initial use

more than one year prior to its application filing

date throughout Defendant’s successive steps of dis-

covery in this litigation as set forth in the following:

Account of Successive Efforts by Defendant to Elicit

Facts, and Evasions by Plaintiff

E. Interrogatories 1 to 17 served July 14, 1960. Inter-

rogatory 4A (2) asked the shipping date of piping

(defined in Interrogatory 1 but here more easily

identified as the patent’s swing piping). Plaintiff

answered “Between December 6, 1940 and February

19, 1941” although in fact said patent’s swing piping

was shipped well prior to the critical date of Febru.

ary 2, 1941, and Plaintiff knew so.

F. Asked by letter under date of June 10, 1961 for more

specific answers, Plaintiff’s counsel replied by letter

of June 15, 1961 (Admissions Exhibit 7 attached to

Defendant’s first Request for Admissions) that “we

do not believe we can be more specific at this time.”

Documents were offered for inspection (though not

actually made available until several months later)

and Plaintiff’s counsel stated “perhaps the documents

that you will see will answer some of the questions

that you may now have.” No explanation has ever

been given as to why more exact answers could not

be given if they could be found in the documents.

G. After inspecting Plaintiff's documents, Defendant

served on January 26, 1962, Interrogatories and Re-

quests for Admissions. In answer to Interrogatories

18A and B, Plaintiff stated that the equipment was

not installed as set forth in certain claims of the |

~~), [fol. 57] patent prior to February 2, 1942. The ques- __

~\tion had not been in terms of claims of the patent prior __

\e February 2, 1942. The question had not been in

terms of claims of the patent, Plaintiff apparently

choosing reference to them so as not to make clear

that the entire swing diffusers had been delivered and

installed, and only delivery of the hoist was delayed.

Plaintiff’s next sentence stated that the subject mat-

ter of the claims “was not in operation prior to Feb-

ruary 2, 1942,” while in fact it was operating to

aerate sewage well prior to February 2, 1941. The

use of the year 1942, although an error under oath,

was presumably entirely inadvertent, and need not

be considered as reason for award of attorney’s fees,

except as one more evidence of general carelessness

of Plaintiff’s answers. Subsequent attempts by Mr.

Forrest to justify this denial of operation, aside from

the date error, relied on the assertions that the oper-

ation was not satisfactory (though admitting that

the swing diffusers were performing their job of

aeration properly) and that in his terminology he

does not consider a job in operation until the con-

tracted supervision by his company is over.

_ In answer to Request No. 2, Plaintiff (by Mr. For-

rest) denied any inference that the swing diffuser

equipment mentioned in Admissions Exhibit 1 to 6

includes all the equipment referred to in certain claims

of the patent in suit. This has since been admitted

to be an error under oath.

. On August 3, 1962, Defendant served Further Re-

quests for Admissions. In answer to these, Plaintiff

finally admitted that his prior (evasive) answers re-

garding swing diffuser equipment had relied on non-

delivery of the hoist and that in denying operation

he had relied on lack of satisfactory operation. Plain-

[fol. 58] tiff at this time also introduced the further

concept that he relied in part on the fact that the

period of operation of supervision was not completed

prior to the critical date. Plaintiff’s employees as wit-

nesses have subsequently admitted that there was

nothing unsatisfactory about the aeration operation

of the diffusers.

J. Although Request No. 6 had been answered with a

simple “Denied” the subsequent answer to Interroga.

tory No. 24 stated “Request No. 6 is true insofar as

it relates to the equipment listed in said request.”

The answer to Interrogatory 24 proceeded to explain

the denial on the ground that the claims of the patent

in suit includes certain elements in addition to the

equipment listed in Shop Order No. 58,055, but this

is not because any real explanation of the denial be-

cause the Request No. 6 referred to the equipment

of said Shop Order, not to equipment of the patent

in suit. Furthermore, the only “elements in addition”

which Mr. Forrest could later mention were the aera-

tion tanks themselves.

. The last set of answers continued the pattern. Re-

quest No. 19 was simply “Denied,” but on subsequent

deposition, Mr. Lawrenz who supervised installation

of the swing diffusers in question admitted that (con-

trary to said denial) cranes were at hand at this first

treatment plant which could have raised the swing

diffusers. Mr. Forrest, who swore to the denial of

Request No. 19, had no personal knowledge of what

had been available and admitted that he did not ask

his fellow employee, Mr. Lawrenz, and that he did

not have any other real basis for the denial (except

that the hoist had not been delivered). He excused

his oath by referring to the words in the oath he

signed “to the best of his knowledge and belief,” and

[fol. 59] made clear he did not feel any duty with

those words to have or seek knowledge or to have any

particular basis for relief. He stated that Mr. Gold-

smith did not inquire as to the extent of his knowledge.

When asked further if anyone associated with Mr.

Goldsmith so inquired Mr. Goldsmith instructed him

not to answer and he refused to answer.

Louis Robertson, Darso, Robertson & Vandenburgh,

15 North State Road, Arlington Heights, Illinois,

Attorneys for Defendant.

Iw THE Unrrep States District Court

Civil Action No. 60 C 1007

Morton to Dismiss—Filed October 22, 1962

Motion

Plaintiff moves this Honorable Court to dismiss this

suit with prejudice.

The reasons for the motion are the following :

1. Plaintiff's Patent No. 2,328,655 here in suit has now

expired.

9. Plaintiff has learned of no infringements of its patent

by defendant prior to the expiration of its patent other

than a sale by defendant to the City of Houston, Texas.

3 Plaintiff has no desire to put defendant to the trouble

and expense of defending this suit wherein, after careful

consideration, plaintiff has concluded that any damages

that may be recovered by it by virtue of defendant’s in-

[fol. 60] fringement at Houston, Texas would probably not

be greater than the expenses of plaintiff in prosecuting this

suit against defendant.

4. Plaintiff is aware of the crowded calendar of this

Court and believes, for the reasons above given, that it is

appropriate to have this suit dismissed.

Very respectfully,

Schneider, Dressler, Goldsmith & Clement, Attor-

neys for Plaintiff.

Dated: October 19, 1962.

In THE Unitep States District Court

Civil Action No. 60 C 1007

Motion To Awarp DamMaGEs AND ALTERNATIVE Motion 10

AMEND CouNnTERCLAIM—Filed November 2, 1962

1. To permit prompt disposition of the entire case, De-

fendant moves for judgment awarding damages to the

Defendant, with provisions for subsequent determination

of the amount of the damages, either by subsequent sub-

mission to this Court of facts bearing on exemplary dam-

ages, or by accounting for actual damages (to be trebled),

or both.

2. In the event motion 1 is not granted at this time,

Defendant moves that the counterclaim in the answer of

the above cause be amended by accepting the accompany-

ing proposed “Amended Counterclaim” in lieu of the origi-

nal Counterclaim, and that the date of granting this motion

can be the date from which the ten days for response by

[fol. 61] Plaintiff runs under Rule 15 (a) FRCP.

Defendant believes that the procedure as to briefs set

forth in local rule 13 is appropriate for these motions. The

accompanying brief includes argument as to these motions.

Defendant assumes that unless Plaintiff takes steps to the

contrary, or the Court designates differently after the re-

maining briefs are filed, the above motions will be heard

with other motions December 13, 1962.

Louis Robertson, Darbo, Robertson & Vandenburgh,

P.O. Box #67, 15 North State Road, Arlington,

Heights, Illinois, Attorneys for Defendant.

Certificate of Service

This is to certify that two copies of each of this “Motion

to Award Damages and Alternative Motion to Amend

Counterclaim” and the accompanying “Amended Counter-

claim” were mailed by first-class mail, postage prepaid, to

R. Howard Goldsmith, Attorney for Plaintiff, at Schneider,

Dressler, Goldsmith & Clements, 1825 Prudential Plaza,

Chicago 1, Illinois, this ........ day of November, 1962.

Louis Robertson.

Ix tHe Unitep States District Court

Civil Action—No. 60 C 1007

MEMORANDUM AND ORDER ON DEFENDANT’s MoTION FOR

Awarp or Atrorney’s Fzrs—February 20, 1963

Plaintiff moved for dismissal of this suit, and immedi-

ately thereafter defendant moved for the award of attor-

[fol. 62] neys’ fees. Subsequent to filing the latter motion,

defendant filed other motions.

The authority under which defendant seeks attorneys’

fees is 35 U. S. C. §285, which provides:

“The court in exceptional cases may award reason-

able attorney fees to the prevailing party.”

The alleged facts upon which defendant deems itself

entitled to attorneys’ fees are set out in several categories

lettered from “a” to “k”, the substance may be stated as

follows:

1. “The filing of the patent application included

the usual oath denying knowledge or belief that the

invention had been in public use or on sale more than

a year before the filing date, which allegations must

be deemed false in view of Plaintiff’s knowledge of

its own delivery, installation and initial public use

of the alleged invention more than a year before the

filing date.”

9. “The maintenance of this suit for two years

after the patent expired, the considerations in Plain-

tiff’s motion to dismiss being as applicable at the be-

ginning of said two years as now.”

3. “Plaintiff’s unconscionable reluctance to clearly

state the true facts relative to its swing diffusers

being on sale, delivered, installed, and in initial use

more than one year prior to its application filing date

throughout Defendant’s successive steps of discovery

in this litigation... .”

Although the Court’s power to grant attorneys’ fees

is discretionary under the statute, the teachings of the

decisions in this Cireuit (as well as other Circuits) re-

quire an extremely clear showing that the case is excep-

tional. In Armour & Co. v. Wilson & Co., Inc., 274 F. 2d

143 (7th Cir., 1960) a suit where the defendant sought

attorneys’ fees, charging that a fraud had been perpetrated

[fol. 63] on the Patent Office in the solicitation of the pat-

ent, the Court said thus (at p. 148):

“In a patent case it was held that clear and definite

proof is required to establish fraud on the part of a

patentee in soliciting his patent... .

“We have reached the same conclusion as to the

other charges of fraud. We conclude there is no merit

in them because they have not been established by the

requisite degree of proof. The Findings and Conclu-

sions of fraud by the District Court are not warranted

on this record. They are clearly erroneous and must

be and are disapproved.

“The decree of the District Court awarded to the

defendant its actual and reasonable attorney fees in-

curred in the litigation. The basis of this award is

not clearly stated. We assume that it was due to the

finding of fraud, a charge which we have decided can-

not be sustained on this record. Whether or not our

assumption is correct, we hold there is no proper basis

for an award of attorney fees in this case. Continental

Art Co. v. Bertolozzi, 7th Cir., 194 F. 2d 399, 403-404;

Laufenberg, Inc. v. Goldblatt Bros., 7th Cir., 187 F.

2d 823, 825.”

The Court has reviewed the charges which the defen-

dant believes justify allowance of attorneys’ fees and con-

cludes they do not constitute the “exceptional” case con-

templated by the statute, 35 U. S. C. $285.

The motion for the allowance of attorneys’ fees is there-

fore hereby

Denied.

Edwin A. Robson, Judge.

Dated: February 20, 1963.

[fol. 64]

Iw THE Unirep States District Court

[Title omitted]

Orper—February 20, 1963

Pretrial Conf. (on pdg. motions)

Memo & order combined

Names and Addresses of other counsel entitled to notice

and names of parties they represent:

Pursuant to Memorandum filed herewith order defts’

motion for allowance of attorneys’ fees denied.

Draft

Pretrial conf. held. Order leave to pltff. to dismiss

complaint with prejudice and without costs. Order motion

for Summary Judgment denied as being moot. Order leave

to counterclaim to amend its counterclaim instr. with pltff.

to reply or otherwise plead thereto by March 20, and cs.

set for rept. on status on April 17, 1963.

Robson, J.

In THE Untrtep States District Court

[Title omitted]

[fol. 65]

Orper—F'ebruary 28, 1963

Enter order amending order of Feb. 20, 1963 by in-

cluding ruling by Court, on said date denying defendant’s

motion for award vf damages, and said motion hereby

denied nunc pro tune as of said date. Order defendant’s

motion for further consideration of rulings on Feb. 20,

1963 entered and denied.

ly tHe Unrrep Stares District Courr

[Title omitted]

Orper—May 17, 1963

Ruling on pltffs’ motion to dismiss Amended Counter-

claim.

Names and Addresses of other counsel entitled to notice

and names of parties they represent:

Order pitffs’ motion to strike defts counterclaim as

amended allowed with deft to file second Amended counter-

claim within 20 days and cause contd to June 28, 1963 for

rept on status.

Robson, J.

[fol. 66]

In toe Unirep Srates District Court

Civil Action—No. 60 C 1007

Szconp AMENDED CountTEercLaIMm—Filed June 5, 1963

For its second amended counterclaim in the foregoing

Civil Action, Defendant alleges as follows:

13. Plaintiff has submitted itself to the venue of this

Court and has a place of business in this district.

14. Plaintiff has voluntarily accepted a dismissal of

its Complaint herein with prejudice.

15. Plaintiff (including its predecessor) illegally mo-

nopolized interstate and foreign commerce by fraudulently

and in bad faith obtaining and maintaining against the

public and this defendant its patent in suit No. 2,328,655,

well knowing that it had no basis for and had forfeited

any rights it might have had to a patent, the elements

of fraud and lack of good faith being set forth below.

16. More than one year prior to February 2, 1942, the

filing date of the patent in suit:

A. With Plaintiff’s participation, there had been in-

stalled in the United States, in tanks as set forth in

claim 2 of the patent in suit, all of the equipment defined

by claim 2, and all of the equipment defined by the other

claims of the patent excepting only a portable hoist for

servicing not yet delivered or needed; and said tanks

and equipment were in use for the purpose of aerating

sewage and were exposed to persons having no obligation

of secrecy with respect thereto ;

B. The entire of said equipment sold and in use more

than one year before the filing date of the application

for patent, as set forth in paragraph A, had been sold

by Plaintiff and had been installed, under Plaintiff’s

(fol. 67] supervision, in said tanks, and the assembly was

as contemplated and as set forth in all of the patent claims

with the sole exception that as to claims 1 and 3 to 6,

the hoist (to be used for servicing when needed and

constituting the final “means” of each of said claims)

had not yet been furnished by Plaintiff, though contracted

for;

C. On the site of the sewage treatment plant of which

said tanks were a part, cranes were present more than

a year prior to the filing date of the patent in suit which

cranes did constituute said final “means” (being available

if needed for servicing said equipment).

17. In filing the application for the patent in suit, Plain-

tiff submitted to the Patent Office the usual oath stat-

ing with reference to the improvements described and

claimed that the applicant “does not know and does not

believe that the same was... in public use or on sale

in the United States for more than one year prior to this

application.” Patent claim 2 was one of the original ap-

plication claims. Additional original claims also did not

require the hoist. Plaintiff did not inform the Patent Office

of the foregoing facts set forth in paragraph 16, al-

though it had full and complete knowledge of said facts

when filing said application or had conscious knowledge

of some portions thereof and failed to discharge its duty

to determine the remainder.

18. By letter of December 18, 1956 (of which a copy

is attached to Defendant’s Interrogatories 18 to 21), De-

fendant called Plaintiff’s attention to the question of public

use more than a year prior to the application filing date

leading to the patent in suit. In reply, Plaintiff denied any

duty to look into the question, and did not divulge to De.

fendant any of the facts set forth in paragraph 16 and

did not take any action toward removing or reducing the

monopoly effect of the patent in suit.

{fol. 68] 19. Subsequent to all of the foregoing, Plaintiff

filed this suit against Defendant and asserted that the

patent in suit was “duly issued,” well-knowing that such

allegation was without basis. In its initial answer to

interrogatories in this suit, Plaintiff failed to admit any

of the facts set forth in Paragraph 16, although all of said

facts (except the presence of cranes) were shown by papers

at Plaintiff’s hand in preparation of said answers.

20. Plaintiff has used its patent to restrict and impede

competition, in interstate and foreign commerce, in the

sale of equipment not covered by the patent in suit

(thereby monopolizing trade in said commerce).

21. The acts of Plaintiff complained of deprived De-

fendant of profitable business Defendant would otherwise

have had throughout the period running from shortly after

the Defendant was organized in 1946 until the expiration of

said patent ; the effects continuing even thereafter by virtue

of having deprived Defendant of experience it would have

had but for Plaintiff’s unlawful monopoly and threats of

suit, which experience purchasers often require, and hav-

ing unreasonably and maliciously subjected Defendant

to the cost of defending against the Complaint herein.

22. Instances where Defendant had received orders or

was low bidder for aerator equipment but lost them be-

cause of the patent include:

A. At Tomah, Wisconsin, profit lost, $1,500.

B. At Bergen County, New Jersey, profit lost,

$10,600.

C. At Asbridges Bay, Canada, profit lost, $37,000.

D. At Phoenix, Arizona.

E. At Roanoke, Virginia, profit lost, $25,000.

(fol. 69] 23. Plaintiff was unjustly enriched by its opera-

tions under said patent at Defendant’s expense and to De-

fendant’s damage by reason of the foregoing acts.

Prayers for Relief

Wherefore, Defendant, Walker Process Equipment, Inc.,

prays:

For adjudication that the patent was sought and main-

tained, and was here asserted by Plaintiff, with knowl-

edge (denied under oath at the filing of the application)

of facts not disclosed to the Patent Office as to Plaintift’s

own sales of diffusers, delivery, installation according to

the patent and public use thereof, more than a year

before the filing date, and that this constitutes a fraud

on the Patent Office and on this Court, a violation of anti-

trust laws, and unjust enrichment of Plaintiff.

For adjudication that Plaintiff’s use of the patent to

monopolize sale of equipment not the subject of the patent

constituted a violation of antitrust laws.

For an award of treble damages and an award of gen-

eral punitive damages.

For an award of costs, attorney’s fees and expenses of

this litigation.

Louis Robertson, Darbo, Robertson & Vandenburgh,

P.O. Box #67, 15 North State Road, Arlington

Heights, Illinois, Attorneys for Defendant.

{fol. 70]

In roe Unrrep States District Court

Civil Action No. 60 C 1007

Piaintirr’s Motion to Dismiss Szeconp AMENDED

CounrercLaam—Filed June 19, 1963

Plaintiff, by its attorneys, moves the court pursuant

to Rule 12(d)(6), Rules of Civil Procedure, to dismiss de-

fendant’s Second Amended Counterclaim because it fails

to state a claim against plaintiff upon which relief can be

granted under the federal antitrust laws or under any other

law or laws.

Max Dressler, R. Howard Goldsmith, Sheldon 0,

Collen, Attorneys for Plaintiff.

Sehneider, Dressler, Goldsmith & Clement, Prudential

Plaza, Chicago 1, Illinois, WHitehall 4-4025, Of Counsel,

Friedman, Koven, Salzman, Koenigsberg, Specks &

Homer, 1 North LaSalle Street, Chicago 2, Illinois, CEntral

§-8494, Of Counsel.

{fol. 71]

In tHE Unirep States District Court

No. 60 C 1007

Transcript of Proceedings—October 2, 1963

had in the above-entitled cause before the Honorable

Edwin A. Robson, one of the Judges of said Court, in his

courtroom in the United States Courthouse, Chicago, Illi-

nois, on Wednesday, October 2, 1963, at 10:00 o’clock a.m.

Present:

OPINION

* * * The Court: On June 19, 1963, plaintiff moved

pursuant to Rule 12(b) (6) to dismiss defendant’s second

amended counterclaim because it “fails to state a claim

. . . upon which relief can be granted under the Federal

antitrust laws or under any other law or laws.”

The complaint had been dismissed with prejudice on

plaintiff’s motion on 2/20/63.

Heretofore, on May 17, 1963, this Court granted plain-

tiff’s motion to strike defendant’s counterclaim as amended,

for prolixity.

An examination of the second amended counterclaim

reveals that while prolixity has been diminished clarity of

statement of the cause of action has not been improved.

Without specifically designating any statutory basis for

this Court’s jurisdiction, the gist of the second amended

counterclaim would seem to be as follows:

Plaintiff has illegally monopolized interstate and foreign

commerce through fraudulent procurement of Patent No.

2,328,655. The Patent Office fraud is stated to have been

[fol. 72] prior public use more than one year prior to Feb-

ruary 2, 1942, the filing date of the patent.

Further, defendant asserts that “Plaintiff has used its

patent to restrict and impede competition” in such com-

merce “in the sale of equipment not covered by the patent

in suit, (thereby monopolizing trade in said commerce).”

Defendant alleges that since it was organized in 1946

and until the expiration of the patent and after, plaintiff’s

acts deprived defendant of business it otherwise would

have had, and by “having unreasonably and maliciously

subjected the defendant to the cost of defending against

the complaint herein.”

Defendant cites five instances with asserted profit lost

- of $74,100, instances “where defendant had received orders

or was low bidder for aerator equipment but lost them

because of the patent”; and plaintiff was unjustly enriched

by its operations under said patent at defendant’s expense.

Defendant seeks an adjudication that the patentee had

knowledge undisclosed to the Patent Office, constituting

fraud, of the prior public use, and for an adjudication

that plaintiff’s use of the patent to monopolize sale of

equipment, not the subject of the patent, constituted a

violation of the antitrust laws. It seeks treble damages

and an award of general punitive damages, costs, and

attorney’s fees.

The Court has carefully studied the allegations of the

seconded amended counterclaim and concludes that it fails

to state a cause of action. Irrespective of a failure to allege

diversity, jurisdictional amount, or the precise statutory

basis for the second amended counterclaim, the Court is

of the opinion that there has been no statement even of

an antitrust action.

As hereinbefore noted the defense of fraud in procur-

ing a patent can be the basis for a suit by the United

[fol. 73] States, and only the United States, for cancella-

tion or annulment of the patent theretofore issued. It is

not usable as a defense in a suit for infringement, although

it has been said that the same facts which constitute the

fraud might constitute a defense.

In this case we do not have admitted or adjudicated

fraud vitiating the validity of the patent. We have an

assertion that there was a prior public use, although one

element of the claims in some instance was not present,

but that an equivalent means was at hand. Nor is the

issue of fraud being raised in defense; the suit in chief

has been dismissed.

The issue of fraud is here being used to do indirectly

what defendant cannot do directly, namely, procure a can-

cellation of the patent for fraud. Defendant argues it has

been damaged in two respects by an illegal monopoly, a

patent invalid because it was fraudulently procured, and

a patent invalidly used. This Court does not determine

the invalidity of a patent for fraud at the instance of a

private litigant.

Defendant’s allegation that plaintiff has used its patent

in sale of equipment not covered by the patent is defec-

tive in that it does not specifically allege that such illegal

action caused damage to it, which is essential to a private

litigant’s cause.

The vagueness of the allegation and its dragnet scope

make it meritless as a pleading.

There can be no question that the defense of fraud in

the procurement of a patent may not be raised as a defense

in a suit for infringement. Thus this Circuit’s Court of

Appeals stated in Hazeltine Research, Inc. v. Aveo Manu-

facturing Corporation, et al., 227 F. 2d 137, at page 146:

“... it has been held that a person sued for in-

fringement will not be permitted to set up as a de-

(fol. 74] fense that the patent was fraudulently ob-

tained, no fraud appearing on its face . . .”, citing

cases in support thereof.

There are further cases that make the same statement

in connection therewith.

There can be no question that there can be a proper

allegation in a counterclaim of misuse of a patent in vio-

‘67

lation of the antitrust acts as demonstrated by the pleading

quoted and found adequate in Dairy Foods Incorporated

y. Dairy Maid Products Cooperative, 297 F. 2d 805.

In that case there was involved a conspiracy in violation

of Sections 1 and 2 of the Sherman Act through pooling

of patents and using the patents in the pool in a manner

and with objectives which violated the Sherman Act.

The specific alternatives with which that plaintiff con-

fronted defendant, any of which led to defendant’s injury

and damages, were held a sufficient allegation to sustain

the counterclaim. 3

In Morton Salt Company v. G. S. Suppiger Company,

314 U.S. 488, the Supreme Court held there was an im-

proper use of the patent monopoly on a machine where

the patent monopoly was used to restrain competition in

the marketing of the unpatented tablets for use with the

patented machines, and to aid in the creation of a limited

monopoly in the tablets not within that granted by the

patent.

There are three Supreme Court decisions in this area:

Mercoid Corporation v. Minneapolis-Honeywell Regulator

Company, 320 U.S. 680; Hazel-Atlas Glass Company v.

Hartford-Empire Company, 322 U.S. 288, and Precision

Instrument Manufacturing Company, et al. v. Automotive

Maintenance Machinery Company, 324 U.S. 806.

In the Hazel-Atlas Company decision it was stated at

page 251:

[fol.75] “To grant full protection to the public

against a patent obtained by fraud, that patent must

be vacated. It has previously been decided that such

a remedy is not available in infringement proceedings,

but can only be accomplished in a direct proceeding

brought by the Government.”

In E. W. Bliss Company v. Cold Metal Process Com-

pany, 102 F. 2d 105, it was said at page 110:

“ .. The rule is well settled that a private litigant

cannot by bill in equity have a patent declared void

on the ground that it has been fraudulently obtained.

”

The principle is well-established that only the United

States can sue to cancel an issued patent for fraud in its

procurement. See the discussion of Walker in his Treatise

on Patents at Section 233, Volume II, page 1185.

In Mercoid Corporation v. Minneapolis-Honeywell Reg-

ulator Company, 320 U.S. 680, the Supreme Court held

that an owner of a combination patent may not so use

it as to control competition in the sale of an unpatented

device, even though the unpatented device may be the

distinguishing part of the invention.

In Precision Instrument Manufacturing Company, et al.

v. Automotive Maintenance Machinery Company, 324 U.S.

806, the Supreme Court held in a suit for infringement

of patents and breach of contracts related thereto that

the District Court’s findings sustained the judgment of

dismissal on the ground of the complainant’s unclean

hands.

In Electro-Bleaching Gas Compaay, et al. v. Paradon

Engineering Company, 8 F. 2d 890, it was held that a

defendant in an infringement suit may not properly. raise

the issue that the patent was obtained by fraud and deceit.

(fol. 76] Inasmuch as the defendant’s second amended

counterclaim seems to be predicated upon defendant’s al-

leged fraud before the Patent Office, a matter which is be-

yond the purview of this Court’s jurisdiction, the motion of

the plaintiff to dismiss is therefore granted.

Plaintiff will prepare an order in accordance therewith.

Thank you, gentlemen.

In tHe Unrrep States District Court

Civil Action No. 60 C 1007

Orver Dismissinc Derenpant’s Seconp AMENDED

CountercLaim—October 3, 1963

This cause having come on for hearing on October 2,

1963 on plaintiff’s motion to dismiss defendant’s second

amended counterclaim because such second amended coun-

terclaim fails to state a claim against plaintiff upon which

relief can be granted under the antitrust laws of the

United States, or under any other law or laws, and the

court having received the briefs of the parties under

Rule 13 of the rules of this court, and having read and

reviewed the briefs of counsel, and the court having been

fully advised in the premises and having rendered its

opinion in open court, it is

Ordered that plaintiff’s action to dismiss defendant’s

second amended counterclaim for failure to state a claim

against plaintiff upon which relief can be granted is al-

lowed, and defendant’s second amended counterclaim be

and it is hereby dismissed without leave to amend, and with

prejudice.

[fol. 77] Dated: Oct. 3, 1963.

Enter:

Robson, United States District Judge.

Iw tHe Unrrep States District Court

Civil Action No. 60 C 1007

Notice or Appeat—Filed October 31, 1963

Notice is hereby given that Walker Process Equipment,

Inc., defendant and counterclaimant, in the above cap-

tioned action, hereby appeals to the United States Court

of Appeals for the Seventh Circuit from:

(a) The order of October 3, 1963 dismissing defendant

and counterclaimant’s second Amended Counterclaim

without leave to amend and with prejudice, and

(b) The order entered February 20, 1963 (as amended

February 28, 1963) granting leave to plaintiff to

dismiss the Complaint without cost, denying defen-

dant’s motion for Summary Judgment, denying de-

fendant’s motion for attorneys’ fees, denying that

defendant’s assertions amounted to “unusual circum.

stances” permitting an award of attorneys’ fees and

denying defendant’s motion for an award of damages,

(fol. 78] The names and addresses of attorneys for plain-

tiff, counter-defendant are:

Schneider, Dressler, Goldsmith & Clement, Suite 1825,

Prudential Plaza, Chicago 1, Illinois,

Friedman, Koven, Salzman, Koenigsberg, Specks &

Homer, Suite 1130, 208 South LaSalle Street, Chicago,

Tilinois.

Louis Robertson, Darbo, Robertson & Vandenburgh,

P. O. Box 67, 15 North State Road, Arlington

Heights, Dlinois,

John W. Hofeldt, Haight, Simmons & Hofeldt, 141

West Jackson Boulevard, Chicago 4, Illinois.

October 31, 1963

[fol. 79] Clerk’s Certificate to foregoing transcript

(omitted in printing).

[fol. 80) [File endorsement omitted]

(fol. 81]

Appendix to Appellee’s Brief—Filed May 11, 1964

In rae Unrrep Srares Disraicr Court

Nortsern District or ILLiNois

Eastern Drvision

Civil Action No. 60 C 1007

Foop Macuinery anp Cuemicat Corporation, Plaintiff,

Wa ker Process Equipment, Inc., Defendant.

AMENDED Counrenciam—Filed. February 20, 1963

For its amended counterclaim in the foregoing Civil

Action, Defendant alleges as follows, the first two para-

graphs being the paragraphs of the original counterclaim

and retaining the numbering thereof:

13. Plaintiff has submitted itself to the venue of this

Court and established a controversy under the patent

laws by filing this complaint.

14. Paragraphs 8 to 12 of the original Answer are

adopted herein by reference as part of the amended coun-

terclaim.

Invalidity Because of Plaintiff’s Early Sales

15. The patent in suit is invalid because of statutory

bars arising from Plaintiff’s contracting to sell, delivering,

installing and supervising public use of the swing diffuser

assemblies of the patent in suit, more than one year before

the application filing date thereof, and contracting to sell

a hoist, all as more fully set forth in connection with the

Motion for Summary Judgment heretofore filed, and with

the further allegations that the form of the hoist was

[fol. 82] determined more than one year prior to said filing

date and that means were at hand at the sewage treatment

plant where said diffuser assemblies were installed to raise

them if need arose.

Unfair Competition and Violation of

Antitrust Laws

In particularizing the allegations of paragraph 11 of

the original Answer, Defendant alleges:

16. Plaintiff obtained and maintained its patent by

virtue of at least technical fraud on the Patent Office, the

circumstances indicating, subject to disproof by Plaintiff,

that the fraud was willful. There was at least technical

fraud in filing the patent application with the usual oath

which was inconsistent with facts known to Plaintiff, i.c.,

facts concerning Plaintiff’s own activities in connection

with the sale of diffuser units according to the patent

in suit, and their installation in sewage treatment aera-

tion tanks more than a year before the application filing

date. In the event that Plaintiff would excuse the false

filing on the ground that at the time thereof Plaintiff

relied on trivial facts such as the nondelivery of the hoist,

Plaintiff fraudulently failed to inform the Patent Office

that there were major exceptions to the natural meaning

of the oath Plaintiff filed. The excuse that the hoist

had not been furnished would not be pertinent to claim 2

cf the patent, original claim 12, which does not require

any means for raising.

16A. Plaintiff failed to act suitably in 1956 when the

question of there having been public use by Plaintiff more

than a year prior to the application filing date was spe-

cifically called to Plaintiff’s attention, on behalf of De-

fendant, per letter attached to Plaintiff’s interrogatory

to Defendant in this case. Plaintiff replied to said letter

but gave no indication of willingness to investigate unless

{fol. 83] Defendant disclosed the information it had. De-

fendant’s information or misinformation did not concern the

location (Hunter Air Force Base) of the early sale now dis-

covered. This too early sale either was recognized by

Plaintiff, or would readily have been detected had Plain-

tiff investigated at that time. As stated in this paragraph

and the preceding paragraph, Plaintiff monopolized inter-

state and foreign commerce.

17. Plaintiff has used its patent to restrict and impede

competition, in interstate and foreign commerce, in the

sale of equipment not covered by the patent in suit (there-

by monopolizing a part of trade in said commerce) as

follows:

A. Plaintiff’s patent claims in the patent in suit

are all combination claims including a sewage treat-

ment tank. Plaintiff has been engaged in the practice

of selling unpatented parts for said combination. If

its practice can be justified on the ground that some

of the equipment it sells is especially adapted for

the combination, this special adaptation does not extend

to adjuncts such as the air liberating headers mounted

on the swing units or compressors, yet Plaintiff’s prac-

tice has been to tie swing units and such adjuncts to-

gether in its bids (including both in a single offer),

go that there was no open competition with respect

to the adjuncts. Said adjuncts had no special suit-

ability for the combination of the patent as dis-

tinguished from prior swing units or fixed aeration

units.

B. Plaintiff has also tied its offer of swing as-

semblies under the patent with equipment not directly

related to it, sometimes by a single offer, and some-

times by offering a reduced lump sum price for a

group of items including the swing units of the

patent.

[fol. 84] Facts About Defendant’s Activity

and Damage

18. Defendant was organized in 1946 by a group of

sanitary engineers who are still its officers. The purpose

was to engage in the manufacture and sale of equipment

in the field of sewage and water treatment, in as wide

a range as practicable. Among the first of the products

sold were mechanical aerators and diffuser tubes for dif-

fusing air in the aeration treatment of sewage. By now

Defendant has sold for the aeration of sewage the follow-

ing products, the sales or offering to sell in each instance

beginning at least as early as the year shown for it:

1946 Diffuser Tubes

1946 Impingement Aeration Systems, generally according

to Pat. Nos. 2,616,676 and 2,717,774

1946 Rotary Distributors for Trickling Filter Type of

Aeration

1946 Mechanical Aerators

1946 Blowers

1946 Headers (mounting and supply pipes) for Dif-

fusers

1946 Risers (supply pipes for supplying the Headers,

of fixed nature)

1954 Spargers, usually on Headers and often with Risers

(Patent claims now allowed)

1957 Single Pivot Swing Risers

1957 Hoists for Swing Risers

19. In addition, Defendant has sold various types of

equipment for use in other treatment phases, in sewage

treatment plants using aeration in one phase.

20. Knee-action type swing diffusers would unquestion-

ably have been sold or offered by Defendant soon after

organization of the company in 1946 if there had been

(fol. 85] no such patent as the patent in suit, 2,328,655. The

“ten state standards,” adopted in 1949 and widely followed

throughout the country, recommended that diffusion equip-

ment be removable for servicing and indicated that this

should be mandatory under some conditions. The great

majority of diffuser bidding specifications from 1946

to date have required knee-action risers. Defendant

tried to get single-pivot swing diffusers accepted as an

alternate, but without success except in a few isolated

instances. Defendant’s spargers have been actively pro-

moted by Defendant from 1954 to date. They needed

much less servicing than diffuser tubes and enabled De-

* fendant to sell some diffuser systems with fixed head-

ers, but even Defendant’s sale of spargers was greatly

handicapped by its being restrained by said patent, from

selling knee-action swing risers. Among other difficulties

in the sale of spargers was the fact that even when by

great promotional expense Defendant persuaded engineers

to specify them, they were often specified with knee-action

swing risers. Often the bidding specifications permitted

diffuser tubes as an alternate, and Plaintiff would bid

the tubes with the risers in such a manner that Defen-

dant was given no chance to supply spargers for use on

knee-action swing risers (and headers) furnished by Plain-

tiff. In more recent years, when spargers had proved their

advantages, an appreciable number of biddi specifications

specified spargers to the exclusion of tubes, but even then,

as they also specified knee-action risers, Defendant was

usually unable to sell the spargers. Plaintiff sold direct

copies of Defendant’s spargers. Sometimes Plaintiff sold

these copies “tied” to the risers in the offer of sale, thus

precluding Defendant from selling spargers for Plaintiff’s

risers; and sometimes, when the purchaser’s consulting en-

gineer insisted on separate bidding, Plaintiff bid the sparg-

ers at a low price effectively excluding profitable sale by

Defendant. Such prices can best be explained by Plaintiff

(fol. 86] having let the profit portion of the price be largely

absorbed by a high price for knee-action risers, or having

accepted a lower than usual profit or lack of profit for the

purpose of excluding Defendant’s sales. No other explana-

tion is known.

Estimate of Profits Lost

21. An estimate of the profits lost by Defendant because

of the existence of the patent in suit is $500,000. This is

based on the following:

_ Plaintiff's advertisement dated 10-61 advertises

“15,000 swing diffuser aeration units of all models

successfully operating from 1937.” Defendant esti-

mates that at least two-thirds of these would have been

sold in the post war years when Defendant would have

been competing, and that Defendant would have sold

at least one-fifth of these. In fact, Defendant was, dur-

ing those years, the only substantial competitor of

Plaintiff as to diffusion assemblies and would have ex.

pected to sell around half of the units, on that basis,

but recognizes that without the patent there would

have been other competition. Thus, Defendant esti-

mates it would have sold 2,000 swing diffuser units,

Defendant estimates its profit would have been around

$250 per unit in a highly competitive market without

the patent, thus accounting for the $500,000 estimated

gross profit.

Specific Instances of Loss By Defendant

22. There were instances where Defendant had received

orders or was low bidder for aerator equipment but lost

them because of the patent:

(1) At Tomah, Wisconsin, Defendant was low bidder

for mechanical aerators. The City was then persuaded

to change to diffused air, specifying knee-action swing

diffusers, and because Defendant could not bid such

(fol. 87] swing diffusers on account of the patent in

suit, Defendant lost this job. The estimated profit thus

lost was $1,500.

(2) At Bergen County, New Jersey, in 1959, knee-

action swing diffusers with spargers were specified.

Defendant was low bidder for spargers only and by

negotiation got the order for the remainder of the

swing diffusers. The specification required a manufac-

turer who had successfully built equipment of the same

type for at least five years. Defendant’s offer under

its order from the contractor was disapproved by the

Consulting Engineers, the disapproval being dated

December 11, 1959. No reason not attributable to the

patent is known. The patent could be responsible

directly (purchaser’s fear of patent troubles although

the patent was about to expire), or indirectly (Defen-

dant’s lack of experience having resulted solely from

fear of the patent in Plaintiff’s hands). The estimated

loss of profit on this job was $10,600.

(3) At Asbridges Bay, Canada, again shortly be-

fore the patent expired, Defendant obtained an order

from the contractor for swing diffusers with spargers,

as specified. Again the defendant was disapproved

directly or indirectly because of the patent. Estimated

loss of profit on this job was $37,000.

(4) At Phoenix, Arizona, Defendant had the con-

tractor’s order for swing diffusers with carborundum

tubes, as specified. The consulting engineer refused

approval, again for no stated reason other than lack

of experience. Here fear of the patent may have

been an element, although this job involved only

treatment of water which is not within the claims of

the patent, all claims specifying treatment of sewage.

(fol. 88] (5) At Roanoke, Virginia, for 1959 additions

to the plant, swing diffusers with spargers were speci-

fied. Defendant received the order, but because of ‘the

patent, offered single pivot swing diffusers. Tentative

approval was given, but after these were furnished,

final approval was refused. After the patent expired,

Defendant furnished knee-action swing diffusers which

have been approved. The estimated loss (cost of fur-

nishing the single swing units, and extra costs depen-

dent upon replacement, not the costs of the final

units which would have been furnished in the first

place without the patent) is $25,000.

Even Maximum Awards Would Only Partially

Heal Defendant’s Damage

93. Defendant continues to lose business because en-

gineers, presumably copying specifications furnished by

Plaintiff, specify that the manufacturer must have had

five years successful experience with the same type of

equipment. Recovering attorneys fees and even the lost

profits would therefore not fully overcome the damage

to Defendant. It would, however, help Defendant try to

minimize said damage by diligent ,;xomotion, since it

would put Defendant in more nearly the finaz.cial position

it would have been in had it received said proiits.

Plaintiff’s Extra $12,000,000-$24,000,000

Profit Under Patent

24. Information reaching Defendant and believed relia-

ble indicates that Plaintiff now sells swing diffusers profit-

ably at prices in the range of $50 per foot of header

length, but that in non-competitive conditions before the

patent expired, Plaintiff was charging in the range around

$150, possibly sometimes higher. Assuming a $15 gross

profit per foot now, an assumption believed reasonable, even

[{fol. 89] a price of $100 per foot ($50 above present com-

petitive prices) would have more than quadrupled Plain-

tiff’s profits; providing a total of $12,000,000 extra profit

on its 15,000 diffuser assemblies.

Verification

The undersigned, an officer of the Defendant, Walker

Process Equipment, Inc., hereby swears that he has assisted

in the preparation of the foregoing paragraphs 18 to 24 and

has read the same and believes it to be truthful. The facts

in paragraphs 18-20 relative to Defendant are of his own

knowledge, and the rest are of his knowledge or on in-

formation believed to be reliable, as are the other facts

stated not apparent on their face to be from other sources.

A. W. Nelson, V.P.

State of Illinois,

County of Kane, ss.

Subscribed and sworn to before me this 30th day of

October, 1962.

Frank Voris, Notary Public.

(Seai)

Prayers for Relief

Wherefore, Defendant, Walker Process Equipment, Inc.,

prays:

For a declaratory judgment that the patent in suit is

invalid and/or is not infringed.

For adjudication that the patent was sought and main-

tained and here asserted by Plaintiff with knowledge de-

nied under oath of facts not disclosed to the Patent Office

as to Plaintiff’s own sales of diffusers, delivery, installa-

tion according to the patent and public use thereof, more

[fol. 90] than a year before the filing date, and that this

constitutes a fraud on the Patent Office and on this Court,

and a violation of antitrust laws.

For adjudication that Plaintiff’s use of the patent to

monopolize sale of equipment not the subject of the patent

constituted a violation of antitrust laws.

For an award of treble damages and, unless the provable

amount of actual damages is adequate, an award of general

punitive damages.

For an award of costs, attorney’s fees and expenses of

litigation.

Louis Robertson, Darbo, Robertson & Vandenburgh,

P.O. Box #67, 15 North State Road, Arlington

Heights, Illinois, Attorneys for Defendant.

[fol.91] Clerk’s Certificate to foregoing transcript

(omitted in printing).

(fol. 92]

In tHe Unttep States Cour or APPEALS

For THE SEVENTH Circuit

No. 14466—September Term, 1963

April Session, 1964

Foop MacHINERY AND CHEMICAL CoRPORATION,

Plaintiff-A ppellee,

Waker Process Equipment, Inc., Defendant-Appellant.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

Orrnton—July 15, 1964

Before Castle, Kiley and Swygert, Circuit Judges.

Kny, Circwit Judge. The questions before us are

whether the district court erred in striking, for failure to

state a claim upon which relief could be granted, Rule

12(b)(6), Fep. R. Crv. P., the second amended counter-

claim of Walker Process Equipment, Inc., which alleges

that Food Machinery and Chemical Corporation violated

the federal anti-trust laws by maintaining and enforcing a

patent which was obtained through fraud upon the Patent

Office; and whether the district court abused its discretion

in refusing to award Walker attorney fees after dismissing,

with prejudice, Food Machinery’s infringement suit on the

latter’s motion. We think the court did not err in eiiner

ruling.

The second amended counterclaim alleged that Food

Machinery “illegally monopolized interstate and foreign

commerce by fraudulently * * * obtaining and maintaining”

Lannert patent No. 2,328,655. The fraud alleged was that

Food Machinery had knowingly made a false statement

under oath to the Patent Office when it filed the patent

[fol. 93] application and stated that it “does not know and

does not believe the same [the invention claimed in the

application] was * * * in public use or on sale in the United

States for more than one year prior to this application ;”

when it knew that more than one year prior to its applica-

tion it had sold and installed equipment containing the

combination claimed in the patent; and that the acts com-

plained of deprived Walker of profitable business it would

otherwise have had, listing several specific orders it lost

because of the patent in suit. Walker requested an award

of treble damages, punitive damages, costs, attorney fees

and expenses.

The court, in an oral opinion, found that Walker was

attempting to use the issue of fraud to do indirectly what

it could not do directly, i.e., procured a cancellation of the

patent in suit; and concluded no claim was stated upon

which it could grant relief.

Walker’s suit is based on the thecry that since it is

illegal under the anti-trust laws to extend the protection

of a legally issued patent to obtain a monopoly on an

unpatented product, Mercoid Corp. v. Mid-Continent In-

vestment Corp., 320 U.S. 661 (1944), it should be illegal

to secure a monopoly on an unpatentable product by use

of a fraudulently obtained patent. Walker candidly ad-

mits it “knows of no anti-trust case which has involved

the exact violation of the anti-trust laws” alleged in its

counterclaim. It concedes that under Mowry v. Whitney,

81 U.S. (14 Wall.) 434 (1871), only the government may

“annul or set aside” a patent, but it contends this is not

such a proceeding, asserting that “an attack on the va-

lidity of a patent,” such as here, is totally dissimilar from

“an attempt to cancel a patent.” It claims that since fraud

on the Patent Office can be determined as a matter of

defense without violating the concept that only the United

States can bring a suit to cancel a patent, Precision In-

strument Mfg. Co. v. Automotive Maintenance Mach. Co.,

324 U.S. 806 (1945), it must follow that determination of

such fraud in an anti-trust action is not barred because

of that concept. However, besides offering an analogy to

the cases involving patent misuse, Walker offers no other

support of its claim.

{fol. 94] Although patent misuse may be the basis of an

independert anti-trust action, Mercoid Corp. v. Mid-Con-

tinent Investment Co., 320 U.S. 661 (1944), Walker shows

us no case in which the issue of fraud on the Patent Office

was used affirmatively in an anti-trust action. And although

fraud on the Patent Office may bar recovery by a patentee

in an infringement action, Precision Instrument Mfg. Co.

v. Automotive Maintenance Mach. Co., 324 U.S. 806 (1945),

Haezel-Ailas Co. v. Hartford-Empire Co., 322 U.S. 238

(1944), fraud may not be the basis of having a patent

declared invalid in a declaratory judgment action. E. W.

Bliss Co. v. Cold Metal Process Co., 102 F.2d 105 (6th

Cir. 1939), I.C.E. Corp. v. Armco Steel Corp., 201 F.Supp.

411 (S.D.N.Y. 1961). Neither Hazel-Atlas, nor Precision,

nor Mercoid decided, or hinted that fraud on the Patent

Office may be turned to use in an original affirmative ac-

tion, instead of as an equitable defense.

Since Walker admits that its anti-trust theory depends

on its ability to prove fraud on the Patent Office, it fol-

lows that the district court was correct in deciding that

Walker’s second amended counterclaim failed to state a

claim upon- which relief could be granted.

The district court analyzed Walker’s case and the ap-

plicable law when ruling on Walker’s motion for fees.

This analysis obviates the idea of arbitrariness. And we

are further of the opinion that the record would not war-

rant a finding that this is an “exceptional” case. 35 U.S.C.

§285.2 Aerosol Research Co. v. Scovill Mfg. Co., —— F.2d

—— (7th Cir., No. 14251, decided June 3, 1964).

For the reasons given, the order disallowing the fees, and

the judgment on the counterclaim are affirmed.

135 U.S.C. §285 provides that “The court in exceptional cases

may award reasonable attorney fees to the prevailing party.”

[fol. 95]

{iy THe Unrtep States Court oF APPEALS

For THe SeventH Circuit

Before Hon. Latham Castle, Circuit Judge, Hon. Roger

J. Kiley, Circuit Judge, Hon. Luther M. Swygert, Circuit

Judge.

No. 14466

Foop MacHINERY AND CHEMICAL CORPORATION,

Plaintiff-A ppellee,

Vs.

Waker Process Equipment Inc., Defendant-Appellant.

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

J upeMENT—July 15, 1964

This cause came on to be heard on the transcript of the

record from the United States District Court for the North-

ern District of Illinois, Eastern Division, and was argued

by counsel.

On consideration whereof, it is ordered and adjudged by

this court that the order disallowing the fees, and the judg-

ment of the said District Court on the counterclaim, in this

cause appealed from be, and the same are hereby, Affirmed,

with costs, in accordance with the opinion of this Court

filed this day.

[fol. 96]

In THE Unrrex States Court or APPEALS

For THe SEventH Circuit

Before Hon. Latham Castle, Hon. Roger J. Kiley, Hon.

Luther M. Swygert.

[Title omitted]

Appeal from the United States District Court for the

Northern District of Illinois, Eastern Division.

Orpver Denyine Petition ror REHEARING—August 14, 1964

It Is Hereby Ordered by the Court that the petition for

rehearing of this cause be, and the same is hereby, Denied.

{fol.97] Clerk’s Certificate to foregoing transcript

(omitted in printing).

[fol. 98]

SupreMeE Court oF THE UNITED STATES

No. 602, October Term, 1964

Waker Process EquipMent, Inc., Petitioner,

vs.

Foop MacHINERY AND CHEMICAL CORPORATION.

Orver ALLow1ne CerTioraRI—January 18, 1965

The petition herein for a writ of certiorari to the United

States Court of Appeals for the Seventh Circuit is granted.

And it is further ordered that the duly certified copy of

the transcript of the proceedings below which accompanied

the petition shall be treated as though filed in response to

such writ.

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.