Petitioners Brief — Deepsouth Packing Co. v. Laitram Corp.

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SUBJECT INDEX

Page

Index and Table of Cases ................0005 i

Citations to the Opinions Below .............. 1

{il Statement of Jurisdiction .................... 2

; ¥. Question Presented for Review .............-. 2

-Y. Constitutional Provision and Statutes Involved. 3

* 4A. Constitutional Provision Involved ......... 3

. B. Statutes I cs bh ik Soe dams os ca veeuce 3

“VL. Statement of the Case ........ i vieeaueas un 5

A. Proceedings in the Courts Below .......... 5

I OM bs sk pecs cs'esecaceenes 7

fy The Potente in Balt oii. 5 8. cc scsives 7

(2) Defendant’s Deveining Machinery ..... 10

(3) Foreign Shipment of the Accused De-

kbd ipa ins Acbeencdescdeas 11

= (4) Laitram’s Foreign Patents ....,....... 12

y fil. Summary of Argument ................2.4. eee

i Argument ...,... BEER Pe PTE EOL Ty FT 16

A. As Recognized by This Court, the Patent Sys-

tem Functions as Intended Only If a Patent

Is Confined to the Thing Patented ......... 17

B. A Combination Claim Can Be Infringed Only

by the Thing Patented, i.e., the Assembled

ombination ....... ecigeneces itkekwes oboe 19

©. ceongeeoeanee lt and Sale of All Elements With-

out Assemb 4 in the United States for As-

sembly and Use Abroad Is Not Infringement

preaee the Tisiating LG onic vss cca sates 22

ii Index Continued

D. Manufacture or Sale of Unassembled Ele.

ments Is Actionable as Contributory In-

fringement Only If There Is Direct Infringe-

ment Within the United States ............ x

7 E. The Decision of the Court Below Miscon-

strues the Controlling Statute and Ignores

Controlling Decisions of This Court ....... 4

F. The Law Controlling Infringement of Com-

bination Claims Is Consistent With the Law

Controlling Their Validity ................ 4

Tes SI aisha kan cen ewkaescisneeccoee &

TABLE OF CITATIONS

Cass:

Anderson’s Black-Rock, Inc. v. Pavement Salvage Co.,

369 U.S. 57, 24 L. ed. 2d 258 (1969) ...... 13, 15, 31,4

Aro Manufacturing Co. v. Convertible Top Replace-

ment Co., 365 U.S. 336, 5 L. ed. 2d 592, 81 S. Ct 599,

reh. den., 365 U.S. 890, 6 L.ed. 2d 201, 81 S. Ct.

1024 (1961) isi kGeids dhe kee neabaoeas 14, 21, 32, 33,47

Aro Manufacturing Co. v. Convertible Top Replace-

ment Co., 377 U.S. 476, 12 L. ed. 2d 457 (1964)

Cimiotti Unhairing Co. v. American Fur Ref. Co., ie

U.S. 399, 49 Le BS err 15, 4

Cold Metal Process Co. v. United Engineering & Found-

ry Company, 235 F. 2d 224 (3rd Cir. 1935). ..14, 24,8

ie 3} ohn Deere Co., 383 U.S. 1, 15 L. ed. 2d 545

(1966

Great py BP & Pacific Tea Co. Super Market

Equipment Co., 340 U.S. 147, 95 en ed. P62 (1950)

15, 21,4

Hewitt-Robins v. Link-Belt Co., 371 F. 2d 225 (7th Cir,

SEE bcs cucbvenk isda ccduanasesanie es 14, 22, 27,2

Laitram Corp. v. Deepsouth Packing Co., 443 F. 2d 936

CE INE, DOE OD ok kei p Wi vinsscndance 1, 29, 36, 39, 40, 42

Leeds & Catlin Company v. Victor Talking "Machine

Company, 213 U.S. 301, 53 L. ed. 805 (1908) . 13,19

— 4 Couch Patents Co., 190 Fed. 565 (1st Cir.

Index Continued iii

Leeds & Catlin egg! v. Victor Talking Machine

Company, 213 U.S. 325, 53 L. ed. 816 (1908) ..... 20

Mercoid Corporation v. Mid-Continent Investment Co.,

390 U.S. 661, 88 L. ed. 396 (1944) ........... 13, 17, 20

Mercoid Corporation v. Minneapolis Honeywell Regu-

lator Co., 320 U.S. 680, 88 L. ed. 396 (1944) . .13, 16, 20

Prouty v. Ruggles, 16 Peters 336, 10 L. ed. 985 ...... 13, 19

io Corporation of America et al v. Andrea et al,

79 F. 2d 626 (2nd Cir. 1935) ............-4.. 14, 22, 28

jo Corporation of America et al v. Andrea, 90 F.

Oa GIN (Bad CRPRET ) odes ccc ccc cececeaccs 14, 24, 28

Reed v. Parrack, 276 F. 2d 784 (5th Cir. 1960) ...... 15, 44

Ric-Wil Co. v. E. B. Kaiser Co., 187 F.2d 1 (7th Cir.

BY oe es vb ee Reh tds Ri dahon beeen

Seim v. Hurd, 232 U.S. 420, 58 L. ed. 667 ........... 34, 40

Wallace v. Holmes, 29 Fed. Cas. 74, No. 17,100 (C.C.

eee) Ea eer ree

Westinghouse v. Experimentors Information Service,

B/29,100 (USDCSDNY 1924) ..................

Woodward Co. v. Hurd, 232 U.S. 428, 58 L.ed. 670

FABER) ow vate vccvanceccenscneteessuesevones 15, 33

* * ” .

Journal of the Patent Office Society, Vol. 35, No. 7

NS oo snc cs ees sacs

Manual of Patent Examining Procedure, § 706.03(f)

WE PD kui w a hakwe cv edie hcckne oN chen icees 38, 47, 48

The British Patent System, July, 1970, p. 77 ......... 45

SraTUTES:

Sad

IN THE

Supreme Court of the Anited States

OcroserR TERM, 1971

No. 71-315

DEEPsOUTH PacKINnG Co., Inc., Petitioner

Vv.

THE LAITRAM CORPORATION, Respondent

On Writ of Certiorari to the United States Court of Appeals

for the Fifth Circuit

BRIEF FOR THE PETITIONER

Il. CITATIONS TO THE OPINIONS BELOW

The decision of the Court of Appeals for the Fifth

Circuit in appeal No. 29776 (A: 76), from which the

Writ of Certiorari has been issued, is reported at 433

F.2d 936, 170 USPQ 196 (1971). The relevant opinion

of the district court (A: 70) is reported at 310 F.

Supp. 926, 165 USPQ 147 (1970).

The opinion of the Court of Appeals for the Fifth

Circuit in appeal No. 28286 (A: 81) on the basic issues

of the validity, enforceability and infringement by acy

conducted wholly within the United States,’ is reporte

at 443 F.2d 928, 170 USPQ 190 (1971). The opinion

of the District Court (A: 25) on these issues ig rp.

ported at 301 F. Supp. 1037, 162 USPQ 14 (1969).

The District Court’s unreported Findings of Fa¢

appear at (A: 1 and 149). An additional opinion of

the district court on an interlocutory decision involving

inter alia, a denial of a motion for summary judgment,

is reported only at 156 USPQ 662 (1968).

Ill. STATEMENT OF JURISDICTION

1, This is a suit arising under the Patent Laws of

the United States, Title 28, Section 1338, of the United

States Code.

2. The jurisdiction of this Court is invoked under

Title 28, Section 1254, of the United States Code.

3. The petition for Writ of Certiorari was filed

August 31, 1971, and was granted January 17, 1972.

IV. QUESTION PRESENTED FOR REVIEW

Is an apparatus claim of a United States patent

directed to a combination of elements, each of which is

old, infringed under 35 U.S.C. § 271 (a)? when:

(a) although the individual elements are manv-

factured in the United States,

(b) the individual elements are never assembled

into the patented combination in the United

States, and

1 Certiorari was not granted in respect to questions raised by

this decision (A: 96).

2«¢ |. whoever without authority makes, uses or sells any pat-

ented invention, within the United States during the term of the

patent therefor, infringes the patent.’’

into an operable combination or appara-

tus occurs, and all testing, adjustments, modi-

fication and use of the assembled appara-

tus is conducted in a foreign country ?

Restated in terms of this case, can the two claims in

suit, each directed to a combination of old elements, be

employed to enjoin manufacture and sale of all the

individual parts of the combinations in the United

States, when the only assembly of the claimed combina-

tions and the machine embodying them and all testing

and use occurred in Brazil?

y. CONSTITUTIONAL PROVISION AND STATUTES

INVOLVED

A. Constitutional Provision Involved

Article 1, Section 8:

“The Congress shall have Power * * *

“9 Promote the Progress of Science and useful

Arts, by securing for Limited Times to Authors

and Inventors the exclusive Right to their re-

spective Writings and Discoveries; * * *.”

[U.S.C.A., Constitution, 1st Vol., p. 39].

B. Statutes Involved

35 U.S.C. §102 Conditions for patentability;

novelty and loss of right to patent

A person shall be entitled to a patent unless—

(a) the invention was known or used by others in

this country, or patented or described in a

printed publication in this or a foreign coun-

try, before the invention thereof by the appli-

cant for patent, * * * July 19, 1952, ¢. 950. §1,

66 Stat. 797. [35 U.S.C.A., Ist Vol. p. 715].

35 U.S.C, § 103 Conditions for patentability ;

obvious subject matter v—

A patent may not be obtained though the invep.

tion is not identically disclosed or described ag get

forth in section 102 of this title, if the differences

between the subject matter sought to be patented

and the prior art are such that the subject matter

as a whole would have been obvious at the time the

invention was made to a person having ordi

skill in the art to which said subject matter per.

tains. Patentability shall not be negatived by the

manner in which the invention was made. July 19,

1952, c. 950, § 1, 66 Stat. 798. [35 U.8.C.A., Ist

Vol., p. 715].

35 U.S.C. §271 Infringement of patent

(a) Except as otherwise provided in this title,

whoever without authority makes, uses or sellg

any patented invention, within the United

States during the term of the patent therefor,

infringes the patent.

(b) Whoever actively induces infringement of a

patent shall be liable as an infringer.

' machine, manufacture, combination or com-

position, or a material or apparatus for use in

practicing a patented process, constituting a

material part of the invention, knowing the

same to be especially adapted for use in an

infringement of such patent, and not a staple

article or commodity of commerce suitable for

substantial noninfringing use, shall be liable

as a contributory infringer.

(d) No patent owner otherwise entitled to relief

for infringement or contributory infringement

of a patent shall be denied relief or deemed

guilty of misuse or illegal extension of the

patent right by reason of his having done one

or more of the following: (1) derived reve-

nue from acts which if performed by another

without his consent would constitute contri-

putory infringement of the patent; (2) licens-

ed or authorized another to perform acts which

if performed without his consent would con-

stitute contributory infringement of the pat-

ent; (3) sought to enforce his patent rights

against infringement or contributory infringe-

ment. July 19, 1952, c. 950, §1, 66 Stat. 811.

[35 U.S.C.A., 3rd VoL, pp. 17, 18].

VI. STATEMENT OF THE CASE

A. PROCEEDINGS IN THE COURTS BELOW

On June 14, 1967, the Laitram Corporation, plaintiff-

respondent and the owner of the patents in suit, filed

suit charging the shrimp deveining machines manu-

factured and sold by defendant-petitioner, Deepsouth

Packing Co., Inc., constituted infringement of both

US. Patent 2,694,218 (A: 114) entitled ‘Shrimp De-

veining Machine’? (hereinafter referred to as the

“9918” or “‘slitter’’ patent) and U. 8. Patent 2,825,927

(A: 120) entitled ‘‘Shrimp Vein Remover” (herein-

after referred to as the “‘ ’927’’ or ‘‘deveiner”’ patent).

On June 30, 1969, after the trial on the merits, the

district court found that only Claim 3 of the eight

asserted claims of the ’218 patent was infringed, albeit

only by virtue of the doctrine of equivalents (A: 53).

Similarly, the district court held that six of the seven

asserted claims of the ’927 patent were invalid as

“hopelessly vague and indefinite ’927” (A: 57) and

that only Claim 1, whose ‘language can claim no prize

for clarity or artistry’, was valid and infringed (A:

57). Deepsouth was enjoined (A: 67) from any fur-

ther infringement (301 F’. Sup. 1027).

On July 30, 1960, Deepsouth filed an appeal (Appea)

No. 28286) to the Court of Appeals for the Fifth (iy.

cuit from the decision of the district court.

During the pendency of Appeal No. 28286 to the

Court of Appeals, defendant filed a motion (A: 222)

in the district court seeking modification of the injune.

tion to explicitly exclude manufacture and sale in the

United States of all the parts of its deveiners for ag.

sembly and use only in a foreign country. The district

court ruled (A: 70-75) that such acts did not constitute

infringement in view of existing law, and therefore, no

modification of the injunction was required (310 PF,

Supp. 926). Laitram ‘filed an appeal (Appeal No,

29776) to the Court of Appeals for the Fifth Cireuit

from the district court’s ruling. The two appeals were

consolidated and proceeded concurrently.

In separate decisions dated May 6, 1971, the Court

below affirmed the district court in Appeal No. 28286

on the issues of validity, infringement and enforce

ability and remanded the case for ‘‘accounting, damage

and cost proceedings” (A: 81-93). The Court of Ap

peals reversed the district court in Appeal No. 29776,

refusing to follow the existing Circuit Court law relied

upon by the district judge and held that the manv-

facture and sale of the unassembled elements of the

combinations claimed in the patents in suit constituted

direct infringement under 35 USC §271(a) (A: 7%

80).

On August 27, 1971, Deepsouth petitioned this Court

for Writ of Certiorari from both decisions of the Court

below. The petition was granted (A: 96), but limited

to the question of whether the manufacture and sale

in the United States of all elements of a claim reciting

a combination of old elements constituted infringement

of a United States patent when all assembly, testing

and use occurred in a foreign country.

B. FACTS OF THE CASE

~ (1) The Patents in Suit

The 218 and 927 patents (A114 and 120) in suit

are directed to machines for removing the veins from

the backs of peeled shrimp (A: 1).

The °218 patent, as shown particularly in Fig.1 (A:

114), discloses a single embodiment of a ‘‘slitter’’ for

cutting the backs of the shrimp, thereby exposing the

yeins for removal by suitable means.’ ’ This slitter com-

prises a static, inclined trough carrying a series of

knives (razor blades) positioned slightly above the

trough surface in an opposed, zig-zag configuration.

Water spray nozzles are directed downward from above

the knives. When shrimp are delivered to the top of

the trough, they slide down the water-lubricated sur-

face on their sides and are shunted back and forth

between the opposed edges of the oppositely disposed

knives, resulting in the slitting of the backs of the

shrimp and exposure of the vein.

Claim 3 of the ’218 patent recites the patented com-

bination as follows: ;

“A shrimp deveining machine comprising :

an inclined trough down which shrimp are in-

duced to slide,

——

* When the application maturing into the ’218 patent was filed,

the applicants believed the structure disclosed would satisfactorily

remove the vein as well as slit the backs of the shrimp, When it

was found that the water sprays of the ’Bvr patent were ineffective

in achieving this result, it became necessary to develop the equip-

ment of the ’927 patent to effect satisfactory vein removal (A: 4,

33, 54).

a knife in said trough positioned to be encoyp.

tered by shrimp to cut the membrane confining

the vein,

and a water spray to the trough directed upon —

the shrimp for sliding the shrimp down the trough

and for flushing out the vein from the severej —

membrane.”’

Claim 3 thus recites a combination of three admittedly

old elements,‘ viz., an inclined trough, a knife, and q

water spray, all disposed in a particular cooperative

relationship to effect the desired slitting operation.

The ’927 patent in suit discloses apparatus for re.

moving the vein exposed by the action of the ‘‘slitter”,

In all the embodiments shown, the structure effecting

removal of the vein is a punched metal sheet material

having, as a result of the punching, ‘‘lips’’ or ‘‘ ’

nails’’ protruding at an acute angle from the surface

of the sheet. The punched sheeting is a standard

material of commerce and was found by the inventors

in, and ordered from, a standard materials catalog (A:

4, 38, 55; 175-177).

In a preferred and commercial embodiment, this

punched sheet material is formed into a drum with the

‘‘lips’’? projecting inwardly from the surface (A: 4).

When shrimp and water are introduced at one end of

. the drum and flow therethrough, the revolving of the

drum causes the lips to contact and remove the vein

*Indeed, these same three elements are the basic operative

elements used in the prior art McKinstry deveiner disclosed in U.S.

Patent 2,644,980 (A: 152-162).

5It is interesting to note that in the body of the claim about

80% of the verbiage is directed to the operative interrelationships

between the elements rather than to mechanical description of the

elements themselves.

Bera

when the semi-floating shrimp are positioned in juxta-

position to the revolving lips by action of the water (A:

58, 129). In all embodiments, water is described as the

means associated with the support member (carrying

the “‘lips’’) to effect relative movement between the

shrimp and the support. )

Claim 1 of the ’927 patent recites the claimed com-

bination as follows:

‘‘TIn a shrimp vein remover,

a support member,

a lip protruding at an acute angle from the sup-

rt member and having a smooth rounded free

edge for engaging beneath the vein of a shrimp

and for wedging the vein between the lip and the

support member,° and

means operatively associated with said support

member for relatively moving the shrimp with re-

spect to said member to cause separation of the

vein from the shrimp meat.”’

Claim 1 of the 927 patent thus recites a combination

of admittedly old elements employed in cooperative

relationship (A: 54, 55), viz, a support member, a lip

projecting from the support member (the support and

lip defining the ‘‘fingernail’’ material) and means

(water) for relatively moving the shrimp with respect

to the support member."

—_——

* Although recited as separate elements, i.e. a base and a lip

protruding therefrom, this language refers to the punched metal

material available as a staple article of commerce.

‘Here again the great preponderance of the claim verbiage is

directed to the operative interrelationships between the elements

rather than to mechanical description of the elements themselves.

(2) Defendant's Deveining Machinery

Deepsouth’s commercial deveiner consists of thre

‘units arranged in series—a rocking slitter, a jet washer,

and a discharge conveyor, on each of which Deepsouth

has been granted a separate patent, i.e., U.S. Patent

3,031,714 (A: 14, 133), 3,024,490, and 3,414,934 (4;

145), respectively. Only the first and third units wer

charged with infringement.

The Deepsouth slitter comprises an inclined rocking

trough or table which reciprocates (rocks) through an

are about its longitudinal axis. Several long razor

blades are mounted in parallel relationship on the flat

surface of the trough. A water header, i.e., a length of

ordinary pipe with a series of spaced holes along its

length, is located at the top of the trough to supply

lubricating water to the top of the tray.*. When shrimp

are fed to the top of the rocking tray and slide dom.

ward between the blades, the rocking action of the

trough drives the blades into the shrimp to effect the

required slitting. The shrimp then are fed into the

jet washer.

The jet washer comprises a flume in which the slit

shrimp are tumbled by high pressure jets of water to

open the slit membranes and wash out the great major-

ity of the veins before passage to the point of discharge

through the discharge conveyor.

The Deepsouth discharge conveyor comprises a

high speed upwardly-inclined endless belt leading

through an elongated box (about six feet long) from

the jet washer to a discharge point. Two sets of later-

ally opposed water jets are spaced along the belt. In

® The trial judge held that the header was not a ‘‘spray”’ but

that the delivery of water to the top of the trough was the

equivalent of a ‘‘spray’’ upon the shrimp (A: 48).

Deepsouth’s first commercial model, the belt was made

of woven mesh material, admitted by Laitram not to be

an infringement (A: 111). The mesh material pre-

sented cleaning problems and was replaced with a belt

made of the ‘‘fingernail’’ type material® disclosed in

the 927 patent (A:6, 7). It is the latter structure

which was held in Appeal No, 28286 to be an infringe-

ment when the discharge conveyor was made, used and

sold in the United States.

When the slit, jet-washed shrimp are fed at a slow

speed onto the high speed conveyor belt, tumbling is

induced. Any remaining veins then are caught in the

interstices of the mesh belt or under the “‘lips’’ of the

fingernail belt (depending on which material is used),

andremoved. If necesssary to complete deveining, the

opposed water jets are employed to lift the shrimp

from the belt and induce additional tumbling.

(3) Foreign Shipment of the Accused Deveiner

The elements recited by the claims” in suit never

were assembled in this country for any purpose. All

were separately manufactured and crated for shipment

in three different boxes” as follows:

Bor 1—

1, discharge conveyor with jets and non-infringing

mesh belt installed ;

*It was this same ‘‘fingernail’’ material which is a standard

article of commerce and was merely found by the inventors in a

commercial materials catalog (A: 38, 177). Note use of this type

of material as an abrading belt in U.S. Patent 2,518,488 (A: 171)

and in hand-operated fish sealers as shown in U.S. Patent 565,999

(A: 166) and U.S. Patent 1,028,736 (A: 168).

The trough, a knife and a water spray (’218 patent), or the

“‘fingernail’’ material and water (927 patent).

“The boxed parts are pictured and their contents listed at A:

392-393 and 395, respectively.

2. razor blades for the slitter (held covered by

Claim 3 of the ’218 patent) ; and

3. various frame and support members, structural

parts, water pump, a feed conveyor, motors, and

the like (not recited by any claim).

Boz 2—

1. the rocking trough or table (held covered by

Claim 3 of the ’218 patent) ; and

2. frame base and hold-downs for rocking tough

(not recited by any claim).

Boz 3—

1. two ‘‘fingernail’’ replacement belts (held eoy-

ered by Claim 1 of the ’927 patent) ;

2. rocking table water manifold or header with

hose (held covered by Claim 3 of the 218

patent) ;

3. a feed conveyor and rocking table connecting

arm (not recited by any claim).

The three boxes were transported by ship to Brazil and

all assembly, testing and use occurred in the foreign cus-

tomers’ plant. (A: 285-302, 308-309, 322-324, 334-336;

225-226 ; 230-235.)

(4) Laitram’s Foreign Patents

Liatram (through its affiliate Liatram International,

Ine.) owns forty-one foreign patents corresponding to

one or both of the patents in suit. In Brazil the slitter

is covered by Brazilian Patent 54,882. (A: 183-189.)

RAO DMN AD BEN BLOTS IETS

VII. SUMMARY OF ARGUMENT

Petitioner, Deepsouth, advocates a strong patent

system to effectuate the constitutional purpose of pro-

moting the progress of the useful arts. But strength

will become weakness if the system is extended be-

yond its intended purposes. The decision below makes

such an extension and, contrary to 35 U.S.C. § 271, and

the controlling decisions of this Court, gives the

patents in suit extra-territorial effect.

A. A patent is a privilege granted in return for

a disclosure of an invention. To achieve this pur-

pose intended, the patent must be limited strictly

to the terms of the grant (Mercoid Corp. v. Mid-

Continent Investment Co. 320 U.S. 661 (1944);

Mercoid Corp. v. Minneapolis Honeywell Regu-

lator Co. 320 U.S. 680 (1944) ). A clear line

must be observed between subject matter fairly

within the claims and the right of the public to

employ the disclosure outside the legitimate scope

of the grant. Patent claims and the patent law

governing their interpretation must permit the

public with reasonable certainty to determine the

scope of the patent grant (United Carbon Co. v.

Binney & Smith Co. 317 U.S. 228 (1942) ).

B. Combination patent claims, such as those in

suit, are infringed only if the recited elements are

assembled within the territorial jurisdiction of the

patent. A patent on a combination is a patent on

the assembled or functioning whole—not on the

separate parts. Unassembled parts are not charac-

terized by requisite synergistic relationship and

are not the thing patented. (Mercoid I and II,

supra; Prouty v. Ruggles, 16 Peters 336; Leeds

& Catlin Co. v. Victor Talking Machine Co. 213

U.S. 301 (1908) ; Anderson’s Black Rock v. Pave-

ment Salvage Co., 369 U.S. 57 (1969)).

C. The decision that petitioner’s manufacture

and sale within the United States of the wnassem-

bled elements of a combination constitutes di

infringement under 35 U.S.C. § 271 (a) when al}

assembly, testing and use occurs in a foreign coyp.

try, is in direct conflict with well reasoned degj.

sions by the Courts of Appeal for the Second,

Third and Seventh Circuits (Radio Corporation

of America v. Andrea, 79 F.2d 627 (2d Cir. 1935)

and 90 F.2d 612 (2d Cir. 1937) ; Cold Metal Process

Co. v. United Engineering & Foundry Co. 235 F.%4

224 (3rd Cir. 1935); Hewitt-Robins v. Link-Bel

Co., 371 F.2d 225 (7th Cir. 1966) ). The conflict

ing rule in these Circuits is in accord with both the

letter and spirit of 35 U.S.C. § 271, and the con.

trolling decisions of this Court.

D. The Court below has confused subsections

(a) and (c) of 35 U.S.C. §271 by finding direct in.

fringement on the facts of this case. Those faets

would support a finding of contributory infringe.

ment only if a direct infringement by assembly

and/or use of the claimed combination occurred in

the United States. One who with requisite knowl

edge manufactures and sells and/or factors one

or all of the elements of a combination claim,

which are not staples of commerce and are especi-

ally made or adapted for subsequent assembly

and/or use in a patented combination within the

United States, is a contributory infringer under

§271(c). The one who assembles and/or uses the

claimed combination within the United States

directly infringes the patent under §271(a). With-

out direct infringement, there can be no contribu-

troy infringement(Aro Mfg. Co. v. Convertible

Top Replacement Co. 365 U.S. 336 (1961) and 377

U.S. 476 (1964) ).

E. The Court below improperly preoccupied

itself with immaterial consideration of

south’s legitimate competition with Laitram out

side the jurisdiction of the patents in suit. In the

mistaken belief that such competition was wrong,

the Court ignored the nature of combination

claims as established by the decisions of this Court

as well as to its own precedent. (Reed v. Parrack,

276 F.2d 784 (5th Cir. 1950) ). The invention of

a combination claim is not ‘‘made’’ within the

scope of 35 U.S.C. § 271(a) until the elements of

the combination are assembled. (Woodward Co. v.

Hurd, 232 U.S. 428 (1913) ). The presence of

each element of a combination claim is critical to

a finding of infringement. Non-assembly of the

recited elements within the United States cannot

be brushed off as ‘‘minor”’ or a mere technicality.

(Cimiotti Unhairing Co. v. American Fur Ref. Co.,

198 U.S. 399 (1904) ; Reed, supra.)

The approach of the Court below was improper-

ly influenced by its finding in the companion ap-

peal (No. 28286), that respondent directly infring-

ed the patents in suit by its domestic manufacture

and sale of the assembled combination. The criti-

eal significance of lack of assembly of the elements

of the claimed combination in the United States

was ignored. Where no assembly occurs in the

United States, Laitram must rely on its foreign

patents (here the Brazilian) to protect its com-

petitive position in foreign markets.

F. The existing law controlling infringement of

combination claims is consistent with the law con-

trolling their patentability and validity. To be

patentable or valid, a combination claim must re-

cite the cooperative relationship between the ele-

ments of the combination which is responsible for

the net result of the combination exceeding the

sum of the parts. Such synergistic relationship is a

prerequisite to the patentability of a combination

of elements. (Great Atlantic & Pacific Tea Co. v.

Super Market Equipment Co., 340 U.S. 147

(1950); Anderson’s Black Rock, supra.) The

same synergism must characterize every infring-

ing device and can exist only in the assembled

combination. Absent assembly, the sum of the

parts necessarily cannot be exceeded.

The erroneous decision below should be re

versed.

VIII. ARGUMENT

While often the target of criticism throughout its

nearly two hundred years of history, the United States

patent system manifestly has served and continues to

serve its constitutional purpose to “promote the prog.

ress of Science and the Useful Arts.’’” Let it be clear

from the outset that petitioner, Deepsouth, comes he

fore this Court as an advocate for a strong patent

system“ which encourges prompt disclosure and ulti-

mate transfer to the public domain of innivative con.

cepts. But strength begets weakness in any system

when, erroneously or unwittingly, it is employed t

effect a result never contemplated and contrary to its

fundamental precepts.

In its decision, the Court of Appeals for the Fifth

Circuit ostensibly has employed two United States

patents to prevent economic competition in a foreign

jurisdiction—a result wholly contrary to any intent

or justifiable purpose of the patent system. In reason-

ing its way to this result, the Court below necessarily

has ignored the fundamental purpose of a United

States patent, as well as the nature and scope of a

patent claim directed to a combination of elements,

In effect, the decision of the Court below attempts to

turn back the clock past 35 U.S.C. 271 with its carefully

drafted statutory definitions of infringement; past the

12Constitution of the United States, Article 1, §8: “The Congress

shall have the Power . . . to promote the Progress of Science and the

Useful Arts, by securing for limited times to authors and inventors

the exclusive Right to their respective writings and discoveries.”

18 and, indeed, is a patent holder in its own right (p. 10 supra).

Mercoid cases“ with their penetrating examination into

the nature of combination claims; even past the earlier

decisions in which this Court established the standards

for direct infringement and specifically in respect to

claims drawn toa combination of elements. But as

will be developed hereinafter, this Court did establish

the law of direct infringement and following enact-

ment of 35 U.S.C. § 271 has held that § 271(a). has left

that law unchanged. In the 1952 Act, The Congress,

in § 271 has re-established the law of contributory in-

fringement (§ 271(c) ) in terms quite different than

those used to define direct infringement. The clear

line of distinction between direet and contributory in-

fringement, fully recognized by this Court,”* precludes

the confusing intermingling of the two attempted in

the decision below.”

Unless reversed to conform to controlling decisions

of this Court and Legislative definitions of infringe-

ment, errors in the decision of the Court will perpetu-

ate uncertainties which only Congressional action can

correct.

A. As Recognized by This Court, The Patent System Func-

tions as Intended Only If a Patent is Confined to the Thing

Patented

The purpose and scope of a United States patent are

succinctly expressed in Mercoid Corporation v. Mid-

% Mercoid Corporation v. Mid-Continent Investment Co., 320

US. 661, 88L. ed. 376 (1944); and Mercoid Corporation v. Minne-

apolis Honeywell Regulator Co., 320 U.S. 680, 88 L. ed. 396 (1944).

%* Aro Manufacturing Co. v. Convertible Top Replacement Co.,

377 U.S. 476, 12 L. ed. 2d 457 (1964).

The many other errors of omission and commission of the Court

below will be treated separately in Section VIII-F of this brief.

Continent Investment Company, 320 U.S. 661, 665, 98

L. ed. 376, 381 (1944), where this Court stated:

“The grant of a patent is the grant of a special

privilege ‘to promote the Progress of Science and

useful Arts.’ Const. Art. I, §8. It carries, of course,

a right to be free from competition in the practice

of the invention. But the limits of the patent are

narrowly and strictly confined to the precise terms

of the grant ..: It is the public interest which is —

dominant in the patent system... It is the protege.

tion of the public in a system of free enterprix

which alike nullifies a patent where any part of it

is invalid ... and denies to the patentee after issn.

ance the power to use it in such a way as to acquire

a monopoly which is not plainly within the term

of the grant. The necessities or convenience of the

patentee do not justify any use of the monopoly of

the patent to create another monopoly. . . . The

patent is a privilege. But it is a privilege which is

conditioned by a public purpose. It results from

invention and is limited to the invention which it

defines.**’’

The beneficial system here described and, delimited is

served only by strict observance of a clear-k

tween the thing patented and the rights of the pub

outside the scope of the patent grant. Moreover, the

- patent claim and the law under which it is to be in

terpreted must permit competitors within the frame

work of the free enterprise system to determine with

reasonable certainty the precise scope of the monopoly

which has been granted to the imnovator. ‘‘A zone of

uncertainty which enterprise and experimentation

may enter only at the risk of infringement claims

would discourage invention only a little less than un-

equivocal foreclosure of the field.” United Carbon Co.

18 A similar admonition appears in Graham v. John Deere Co. 388

U.S. 1, 5, 15 L. ed. 2d 545, 549 (1966).

v. Binney & Smith Co., 317 U.S. 228, 236, 87 L. ed. 232,

237 (1942) It is evident on its face that the decision

below introduces unnecessary confusion and unpre-

dictability into an area where clarity and certainty

heretofore has existed.

B. A Combination Claim Can be Infringed Only by the Thing

Patented, i.e., the Assembled Combination

This Court uniformly has held that a combination

claim can be infringed only by the assembled com-

bination.. Examination of several chronologically

spaced opinions establishes the rule.

In Prouty v. Ruggles, 16 Peters. 336 10 L. ed. 985,

987 (1842), the Court stated:

“The patent is for a combination and the im-

provement consists in arranging different portions

of the plough, and combining them together in the

manner stated in the specification for the purpose

of producing a certain effect. None of the parts re-

referred to are new, and none are claimed as new;

nor is any portion of the combination less than the

whole claimed as new, or stated to produce any

given result. The end in view is proposed to be

accomplished by the union of all, arranged and

combined together in the manner described. And

this combination, composed of all the parts men-

tioned in the specification, and arranged with

reference to each other, and to other parts of the

plough in the manner therein described, is stated

to be the improvement, and is the thing patented.”

In the landmark case of Leeds & Catlin Company v.

Victor Talking Machine Company, 213 U.S. 301, 318,

53 L. ed. 805, 813 (1909), the Court held:

“A combination is a wnion of elements, which

may be partly old and partly new, or wholly old or

wholly new. But, whether new or old the combina-

tion is a means—an invention—distinct from thém.

They, if new, may be inventions and the p

subjects of patents, or they may be covered

claims in the same patent with the combination,

But whether put in the same patent with the

combination or made the subjects of se

patents, they are not identical with the combina.

tion. To become that they must be united under the

same co-operative law. Certainly, one element is

not the combination, nor, in any proper sense, can

it be regarded as a substantive part of the inven-

tion represented by the combination. ...

... It is not of claim 35, for that claim is fora

combination and one element is not the combina-

tion. Indeed, all the elements are not. To b

that,—to be identical with the invention of the com-

bination,—_they must be united by the same opera-

tive law. Of course, an element is a part, an essen-

tial part, of the combination, and enters as an

operative agent in the performance of its functions,

But this does not make it identical with the com-

bination.”’

In Leeds & Catlin Company v. Victor Talking

Machine Company, 213 U:S. 325, 332, 53 L. ed. 816, 819

(1909), a companion case, the Court reiterated:

“A combination is a composition of elements,

some of which may be old and others new, or all

old or all new. It is, however, the combination that

is the invention, and is as much a unit in contem

plation of the law as a single or noncomposite it-

strument. Whoever uses it without permission is

an infringer of it.”

Later in Mercoid Corporation v. Mid-Continent In

vestment Company, 320 U.S. 661, 667, 668, 88 L. ed

376, 382 (1944), this Court observed:

“The patent is for a combination only. Since

none of the separate elements of the combination

is claimed as the invention, none of them when

dealt with separately is protected by the patent

monopoly. ... Whether the parts are new or old,

the combination is the invention, and it is distinct

from any of them.”

In the second Mercoid case, Mercoid Corp. v. Min-

neapolis Honeywell Regulator Co., 320 U.S. 680, 684,

88 L. ed. 396, 399 (1944), it was stated:

“The fact that an unpatented part of a combina-

tion patent may distinguish the invention does not

draw to it the privileges of a patent. That may be

done only in a manner provided by law. However

worthy it may be, however essential to the patent,

an unpatented part of a combination patent is no

more entitled to monopolistic protection than any

other unpatented device. For as we pointed out in

Mercoid v. Mid-Continent Invest. Co., 320 U.S.

661, ante, 376, 64 S. Ct. 268, supra, a patent on a

combination is a patent on the assembled or func-

tioning whole, not on the separate parts.” The

legality of any attempt to bring unpatented goods

within the protection of the patent is measured by

the anti-trust laws not by the patent law.’”

“% As developed in Section F, infra, the decisions of this Court re-

quire that, to be valid, a combination of old elements exhibit a

“synergistic’’ result Anderson’s Black-Rock, Inc. v. Pavement

Salvage Co., 396 U.S. 57, 60, 24 L. ed. 2d 258, 261 (1969). “The

conjunction or concert of known elements must contribute some-

thing: only when the whole in someway exceeds the sum of its

parts is the accumulation of old devices patentable.’’ Great

Atlantic and Pacific Tea Co. v. Super Market Equipment Co., 340

U.S. 147, 151, 152, 95 L. ed. 162, 166 (1950).

* The attempt of the Court below to brush aside the authoritative

statements on the nature and scope of combination claims in the

Mercoid cases on grounds that these decisions involve misuse (443

F.2d 939) is disposed of by this Court-in Aro Manufacturing Co. v.

Convertible Top Replacement Co., 365 U.S. 336, 334, 5 L. ed. 2d

592, 598 (1964) where footnote 10 states: “Although the Mercoid

cases involve the doctrine of patent misuse, which is not an issue in

this case, they also specifically delimit the character of a combina-

tion patent monopoly and it is upon that matter that they are rele-

vant here.”

Despite a diligent search, petitioner has been unable

to find a single case where any Court, faced with a

necessity to decide the issue on that basis alone, ever

before has held that a collection of unassembled parts

constitutes a direct infringement of a United States

patent.”

C. Manufacture and Sale of all Elements Without Assembly in

the United States for Assembly and Use Abroad is not Ip.

fringement Under the Existing Law

In this ease, the decision of the Court of Appeals for

the Fifth Circuit is in direct conflict with well reasoned

decisions of the Courts of Appeal for the Second, Third

and Seventh Circuits. No rationale advanced by the

Court below affords a tenable basis for affirmance—an

affirmance which would require a reversal of the hold-

ings of the Second, Third and Seventh Circuits, hold-

ings based on settled principles of law consistently

enunciated by this Court.”

21 Three cases have been relied on below to support the proposi-

tion that unassembled parts can infringe a combination claim. None

does. The language of the Court in the unreported case Westing.

house v. Experimentors Information Service, E 29/110 (DCSDNY,

1924) (A:402), establishes that the machine there had been assem.

bled by the defendant, then disassembled and sold, and subsequently

reassembled. In Ric-Wil. Co. v. Kaiser Co., 187 F. 2d 1 (7th Cir.

1951), no infringement was found. Unclear dictum in the opinion

was considered and discarded as inapposite in Hewitt-Robins vy.

Tink Belt Co., 371 F. 2d 225 (7th Cir. 1966), one of the cases in

conflict with the Court below. In Kreplik v. Couch Patents Co., 1%

Fed. 565 (1st Cir. 1911), the district court had found liability on

grounds of both direct and contributory infringement. The facts in

the case indicate that the purchaser of the two separate beds in-

volved needed to do nothing but slide the smaller under the larger

without physical connection to complete the patented combination.

Kreplick also was discarded by the Ovourt of Appeals in Hewitt.

22 The decisions of the three Circuit Courts will be examined in

some detail to present both the facts and reasoning behind the de

cision reached.

In Radio Corporation of America v. Andrea, 79

F. 2d. 626 (2d Cir. 1935), hereinafter called Andrea I,

the defendant had been preliminarily enjoined by

the district court from shipping certain radio sets

with a set of unassembled tubes abroad on the

ground that plaintiffs’ patents were thereby infringed.

Reversing the District Court, the Court of Appeals

for the Second Circuit, stated:

“Under the facts at bar, .... we cannot say that

the patented combination was complete until

physical connection is established between the ter-

minals of the circuits and the electrodes of the

tube, for such relationship is the essence of the

patent.

Nor is this conclusion so highly technical as it

may at first blush appear. No wrong is done the

patentee until the combination is formed. His mo-

nopoly does not cover the manufacture or sale of

separate elements capable of being, but never

actually, associated to form the invention. Only

when such association is made is there a direct in-

fringement of his monopoly, and not even then

if it is done outside the territory for which the

monopoly was granted. This is the basis for the

doctrine of contributory infringement, which per-

mits the elements of a patented combination to be

sold in this country with the intent that the pur-

chaser shall make and use the invention abroad.

... Not disputing this principle of law when only

part of the elements of a patented combination are

involved in the sale, the plaintiffs apparently con-

tend that it is inapplicable when all the elements

are sold together, though disassembled and in-

tended to be put into operable relationship only

abroad. No authority has been cited which puts

any such limitation upon the doctrine of contribu-

tory infringement; and on principle none such is

justifiable. By their sales for export the defend-

ants were guilty of neither direct nor contributory

infringement.” (79 F.2d at 628-629).

At the trial subsequent to the Andrea I decision, it

was determined that each radio in question ac

had been fully assembled and subjected to operational]

tests, and was subsequently disassembled by removal

of the tubes from their sockets. The tubes then were

packaged separately but placed with the tubeless

chasis in a single, larger carton for export. The district

court found that the patents in suit now had been in-

fringed in that the defendant had made and used the

claimed combinations. On appeal, Radio Corporation of

America v. Andrea, 90 F. 2d. 612, 614 (1937), (here-

inafter referred to as Andrea II), the Court of Appeals

stated :

‘On this record it appears that the receiver and

tubes were assembled completely and tests of

operation were made after which the tubes were

taken out, packed in separate cartons but within

the same larger carton as the receiver. The sales

for the completed receiving sets were made within

the territorial limits of the United States and

shipped in export. The single package contained

all the elements of the combination.

* * * * *

“Tn the instant case, the invention is defined as

a combination of vacuum tubes with circuits. De-

fendants may not be relieved of infringement

merely because the tube electrodes are physically

disconnected from the circuits at the moment of

sale. Cf. Spirella Co. v. Nubone Corset Co., 180 F.

470, 473 (C.C.Pa); Strobridge v. Lindsay, Sterritt

& Co., 6 F.510 (C.C.Pa). We a therefore, that

on this record, there is ement by the sale

of the combination as described: ” (90 F.2d at 614).

In Cold Metal Process Co. v. United Engineering &

Foundry Company, 235 F. 2d. 224 (3rd Cir. 1956), the

defendant was the licensee of plaintiff-patentee. Con-

troversy arose with respect to the amount of royalties

due on the production and sale by defendant of steel

rolling mills. The mills broke down into two types. In

the first, all parts of the mills were manufactured in

the United States. The parts ultimately were assem-

bled in the United States and employed by defendant’s

customers. This type of mill was found to infringe the

combination claims in suit.

With respect to the second type of mill, assembly of

the claimed combination occurred outside of the

United States. In a first group of this second type,

most of the parts were made by defendant in the

United States and shipped abroad, but one element of

the claimed combination was made outside the United

States. The Court held that infringement was avoided

merely because all elements of the combination of the

claims had not been manufactured in the United

States.”

A second group of this second type of mill presented

the same situation as that before the Court in the case

at bar. All parts of the mills were manufactured in

the United States. Defendant, United, had manufac-

tured most of the parts but had obtained some from

another manufacturer.* The contracts for all of these

mills were executed in the United States and payment

was received on delivery to the purchaser or its repre-

sentatives FAS at a designated port in the United

** Note that the Court below reserved decision on this state of

facts. (443 F. 2d at 939). By failure to comment on the situation

where different elements were made by different manufacturers in

the United States and assembly was first effected abroad it would

appear that the Court of Appeals does consider this to be infringe-

ment as well.

* Petitioner obtains its “knife” (razor blades) for the “slitter”

(A:290-5) from an outside vendor (A:292-5).

States. The combination recited by the claims wag

never completely assembled within the United States,

The district court’s decision of non-infringement

was affirmed by the Court of Appeals for the Third

Circuit in the following language:

‘This brings us to the consideration of the see-

ond group of mills, all the parts of which were

manufactured in the United States, but which

were shipped unassembled to foreign countries

and there assembled and used. The master held

that these mills were not within the license be-

cause, if there had been no license, United would

not have been either a direct or a contributory in-

fringer with respect to them. He based his conclu-

sion upon the rule laid down by the Court of Ap-

peals for the Second Circuit in Radio Corporation

of America v. Andrea, 1935, 79 F.2d 626, a case

involving the sale for export of unassembled radio

sets involving a patented combination when as-

sembled.” (235 F.2d at 229, 230).

After quoting extensively from the opinion of Judge

Swan in Andrea I, the Court then stated:

“We are in full accord with the rule thus laid

down in the Andrea case and we think that the

master and the district court were right in apply-

ing it here. Its force, in our view, is not impaired

by the latter opinion of the court after final hear-

ing in the same case, 2 Cir., 1937, 90 F.2d 612,

which held that the defendant had infringed the

combination patent there sued on in view of evi-

dence that the radio sets in question had been com-

pletely assembled in this country and tests of

operation made after which they were disassem-

bled and shipped to purchasers abroad. We do not

quarrel with the conclusion of the court that such

assembling and testing constituted a making and

use of the patented combination in this country. In

the present case, however, no such assembling or

testing in this country took place. Accordingly, the

rule laid down in the first Andrea opinion applies

here rather than that stated in the second.” (235

F.2d at 230).

Hewitt-Robins, Inc. v. Link-Belt Co., 148 USPQ 530

(D.C.-ILL. 1966)'* presents the same legal question.

The district court stated:

“Tt is clear and uncontroverted .. . that the de-

fendant entered into a contractual arrangement

... to supply certain reclaiming facilities includ-

ing certain reclaiming apparatus parts to be as-

sembled and erected at a site in Eregli, Turkey.

It is further apparent that the parts supplied by

defendant were at no time assembled together,

tested or placed in operable relationship within

the United States.* * *

* * * *

The available case law on this subject firmly

indicates an absence of actionable infringement on

these facts. Initially, it should be noted that the

patent in suit contains nineteen claims, each di-

rected to a combination of at least three elements,

digging buckets, support means, and a bridge.

Thus, it is apparent that no infringement can re-

sult from the individual manufacture and sale o

each individual element without assembly thereof

Aro Mfg. Co., Inc., v. Convertible Top Replace-

ment Co., 365 U.S. 336, 344, 128 USPQ 354, 358. ...

We must therefore consider whether the manu-

facture and sale in this country of parts for an

apparatus to be assembled outside the territorial

limits of the United States falls within the lan-

guage of Section 271. This question requires a

negative response.”’ (148 U.S.P.Q. at 531).

* The case was not reported in the Federal Supplement.

The Court of Appeals for the Seventh Circuit af.

firmed in Hewitt-Robins, Inc. v. Link-Belt Co., 37}

F.2d 225 (7th Cir. 1966), stated:

“Tf anything is settled in the patent law, it ig

that a combination patent covers only the totality

of the elements in the claim and that no element,

separately viewed, is within the grant. Aro Mfg,

Co., Inc. v. Convertible Top Replacement Co., 365

US. 336, 81 S.Ct. 599, 5 L.Ed. 2d 592. We deem it

equally clear that wnassembled elements of a com-

bination patent do not constitute the ‘patented in-

vention.’

In granting summary judgment on defendant’s

second counterclaim, the District Court relied

upon Cold Metal Process Company v. United En.

gineering & Foundry Co., 3 Cir., 235 F.2d 224 and

Radio Corporation of America v. Andrea, 2 Cir.,

179 F.2d 626, as affording clear precedents that

the manufacture and sale in this country of parts

of an apparatus to be assembled outside the terri-

torial limits of the United States does not infringe

a combination patent limited to the embodiment

of those parts as elements in combination. We

agree.”’** 371 F.2d at 229.

Thus, in Andrea, Cold Metal and Hewitt-Robins, the

decision of non-infringement has been bottomed on

sound principles of law long established by this Court

26 The Court below erroneously stated: “It should be noted that

the last two decisions (Cold Metal and Hewitt-Robins) did nothing

more than follow Andrea.” In point of fact, the Master in the Cold

Metal case made a thorough analysis of the issues involved and ap-

plicable case law (A :408-42). The district court in Hewitt-Robins

had the benefit of the Masters report in Cold Metal and made its

own analysis of the case law including several cases not considered

in Cold Metal. The opinion of the Court below, on the contrary, is

strictly ad hoc, No analysis of statute or case authority is presented

to support the decision reached.

and codified “unchanged” by Congress in 35 U.S.C.

§271(a). They are:

* (1) The thing pat nted by a combination claim is

the assembled, functioning whole.

(2) The unassembled elements recited by a com-

bination claim do not constitute the patented

invention.

(3) A combination claim is directly infringed

only by the totality of the recited elements

assembled in operative relationship.

(4) Absent assembly of a patented combination

within the territorial jurisdiction of the

patent asserted, there can be no direct in-

fringement.”

The Court below has made the statement that those

following these principles (443 F. 2d. at 938) :

“have worked themselves into what we perceive

to be a conceptual box...”

* Sutton v. Gulf Smokeless Coal Co., 77 F. 2d 439 (4th Cir.

1935), is of collateral interest. In an appeal from an award of dam-

ages for contributory infringement by furnishing unpatented tables

for use in a patented process, the Court of Appeals for the Fourth

Cireuit modified the decision of the District Court to delete damages

for tables shipped to a foreign country for use in the same process

there. The Court stated:

“The claims of the patents relied on are process claims, and no

use of the process in a foreign country would constitute an in-

fringement of these claims. Manufacture and sale of tables for

such foreign use could not constitute contributory infringe-

ment; for in such case there is no infringement to which such

manufacture and sale would be contributory. ‘ Contributory in-

fringement can only arise in this country when somewhere and

somehow in this country there is a completed infringement to

which a contribution can be made.’ Computing Scale Co. v.

Toledo Computing Scale Co. (C.C.A. 7th) 279 F. 648, 678;

Bullock Electric & Mfg. Co. v. Westinghouse, etc., Co, (C.C.A.

6th) 129 F. 105.’’ (77 F. 2d at 441).

Petitioner respectfully suggests that the only ‘‘eop.

ceptual box’’ visible in this situation is the one the

Court below has fashioned for itself.

D. Manufacture or Sale of Unassembled Elements is Actiona.

ble as Contributory Infringement Only If There is Direct

Infringement Within the United States

In finding infringement below, the Court of Appeals

has confused the application of direct infringement |

under §271(a), with contributory infringement under

§271(c).* With no assembly of the combination (the

thing patented under §271(a)) ‘‘within the United

States,” the Court below has found direct infringement

on the basis of acts which could be no more than con-

tributory infringement under §271(c) if the patented

combination subsequently had been assembled by a

direct infringer in this country. Dehors (indeed con-

trary to) authority, the Fifth Circuit has held that the

inventions of the combinations claimed were made

without the necessary assembly of parts in this coun-

try. Thus the ¢ontributory infringer of §271(c) has

been bootstrapped into §271(a) and converted into a

direct infringer when no “patented invention” was in

fact made “within the United States.” * Such obfusea-

tion of heretofore clear decisional law and an equally

clear statute cannot be sanctioned.

28 35 U.S.C. § 271 is reproduced in full on page 4 supra, of this

brief.

2° In “Infringement under Section 271 of the Patent Act of 1952,”

Journal of the Patent Office Society, Vol. 35, No. 7 (1953) at page

491, Giles S. Rich (now Judge Rich of the Court of Customs and

Patent Appeals and a key figure in drafting the 1952 Act) wrote:

“Paragraph (a) defines direct infringement and is present only

for the sake of completeness. We got along without it for 162

years and we could again. Its omission would change nothing.

Under 35 U.S.C. §271(a) [and the decisions it

merely codifies], a combination patent may be directly

infringed only by manufacture, use or sale of the as-

sembled combination. However, a manufacturer and

seller of something less than the assembled combina-

tion may be a contributor to or an inducer of direct

infringement provided there is direct infringement in

the United States. This equitable principle,” now is

expressed in 35 U.S.C. §271(b), (c) and (d), and de-

fines the torts of induced infringement and contribu-

tory infringement separately from the direct infringe-

ment defined in §271(a).

The essence of the ‘‘wrong” of the contributory in-

fringer under §271(c) is his knowledge and intent that

the item or items he sells (less than the assembled

combination) ultimately will be incorporated or assem-

bled into the infringing device (the assembled com-

bination and thing patented). The essence of the

“wrong” of the inducer of infringement under §271(b)

is his role in actively causing someone else to directly

infringe as by “‘hawking” one or more elements of a

combination with knowledge and intent that its use

will result in an infringement.

Paragraphs (b) and (c) deal with two kinds of contributory

infringement. They both belong logically and practically in

this category because they both involve departure from the

claim.”

That, of course, is why less than the assembled combination (re-

quired by this Court for infringement) is not the patented inven-

tion under §271(a). It departs from the claim and, if anything,

must be contributory infringement.

* First expressed in Wallace v. Holmes, 29 Fed. Cas. 74, No. 17,

100 (C.C.D. Conn. 1871).

It is the “settled” law of this Court that there can

be no induced or contributory infringement without a

direct infringement.

In Aro Mfg. Co. v. Convertible Top Replacement Co,,

365 U.S. 336, 341, 5 L. ed. 2d 592, 597 (1961), the Court

stated:

“... it is plain that §271(c)—a part of the

Patent Code enacted in 1952—made no change in

the fundamental precept that there can be no con-

tributory infringement in the absence of.a direct

infringement. That section defines contributory

infringement in terms of direct infringement—

namely the sale of a component of a patented com-

bination or machine for use ‘in an infringement

of such patent.’ And §271(a) of the new Patent

Code, which defines ‘infringement,’ left intact the

entire body of case law on direct infringement.”

Thus, while the enactment of §271(b), (c)” and (d)

reaffirmed the doctrine of contributory infringement

within limited, statutory bounds, it left undisturbed

the requirement of the prior decisions of this Court

that contributory infringement cannot exist without a

direct infringement. Under 35 U.S.C. §271, as con-

strued in Aro, a combination patent cannot be in-

fringed either directly or contributorily unless there

is, in fact, an ultimate manufacture, use or sale of the

complete, assembled combination ‘‘within the United

States”.

31 35 U.S.C. §271(c) specifically was enacted to avoid the exces-

ses of some of the previous decisions granting relief on the basis

of contributory infringement, Staple articles of commerce suitable

for substantial non-infringing use are specifically excluded and it

further is required that the accused contributory infringer know

that what he sells to the direct infringer is “especially made or

especially adapted for use in an infringement of such patent.” Aro

Manufacturing Co. v. Convertible Top Replacement Co., 377 US.

476, 12 L. ed. 2d 457 (1964).

Where the facts establish the requisite knowledge

that what he sells is ‘‘especially made or especially

adapted for use in”’ direct infringement and such in-

fringement does occur in the United States, the con-

tributory infringer may be held liable whether his

contribution be one element essential to the infringe-

ment as in Aro, or all elements of the combination in

unassembled form as in Woodward Co. v. Hurd, 232

US. 428, 429, 430, 58 L. ed. 670, 671 (1914). In Wood-

ward, Mr. Justice Hughes stated:

“Nor did the defendant itself make the patented

article. The defendant buying from the Diamond

Company the rubber that had been made by the

Kokomo Company, and otherwise obtaining the

necessary channel of metal and the retaining

wires, sold all the parts to be united into the

patent structure by its customers... The case as

stated concerns the liability of the defendant as a

contributory infringer upon the assumption that,

in the manner described, it assembles [collects

together] the various elements essential to the

making of the Grant tire, and sells them with the

intent and purpose that they be so combined.

Can the defendant demand immunity upon the

ground that one of the elements in which it dealt

was made and sold by the Kokomo Company? We

think not. It isnot simply a purchaser of, or dealer

in, that which the Kokomo Company produces.

The defendant goes beyond that; it buys from

others the parts that are as much needed in effect-

ing the patented combination as the rubber itself,

and sells them in order that the infringing device

may be constructed by its customers.”

Significantly, the sale of all of the elements in the

Woodward case was not held to be a direct infringe-

ment, but a contributory infringement dependent upon

‘‘the infringing device’’ being ‘‘constructed by its cus.

tomers. 99 82

Thus the opinion below is completely at odds with

all of the relevant precedents of this Court that a com-

bination claim can be infringed only by the completed,

assembled combination. In particular, it directly con-

travenes the holdings in the Hurd cases that the infring-

ing device is constructed by the customer when another

furnishes all of the wnassembled parts.

Manifestly, the Court below has reached a con-

clusion foreclosed by 35 U.S.C. §271 and cited decisions

of this Court. Acts, which under other circumstances

may constitute contributory infringement, do not

“magically” become actionable when, under law, there

has been no direct infringement in this country.

E. The Decision of the Court Below Misconstrues the Con-

trolling Statute and Ignores Controlling Decisions of this

Court

35 U.S.C. §271(a) provides that:

“Whoever without authority, makes, uses or

sells any patented invention, within the United

States during the term of the patent therefor, in-

fringes the patent.”

82 In the companion case of Seim v. Hurd, 232 U. S. 420, 426, 58

L. ed. 667, 670 (1914), this court makes clear the distinction between

the contributory infringement found in Woodward and the direct

infringement involved by assembly of the elements of the com-

bination. The court stated:

“It is thus apparent that the defendants themselves con-

structed the device, effecting that union of the separate ele-

ments which alone could bring the structure within the patent

claims. ... There was no actual infringement until they made

the tire, and for their act in making it they could not escape

liability by the purchase of parts from others.’’

Since the statute is in terms limited to “‘within the

United States,” the Court below obviously was fore-

closed from finding that assembly or use of the claimed

inventions outside of the United States infringes the

patents in suit.

Since the statute proscribes extra-territorial effect,

whatever takes place outside of the United States is

immaterial to the issue of infringement and only acts

occurring ‘‘within the United States” can be relied

upon to establish infringement.

Notwithstanding this established principle of law,

the Court below has heavily and improperly relied

upon the fact of ultimate assembly and use abroad to

find a ‘‘wrong” committed in this country. The extent

to which the Court was unduly influenced by subse-

quent foreign assembly and usage is apparent from its

statement of the problem as follows (443 F. 2d. at 937,

A:76):

“Our present problem is to decide whether

Deepsouth may sell its infringing machine in

foreign markets when it produces all essential

parts of the machine in the United States... .”

By presupposing infringement, the Court prejudiced

its solution to the postulated problem.

The reference to foreign markets is irrelevant.

Under §271, there can be no “infringing machine” un-

less the claimed combination is assembled in the

United States. Competition in foreign markets is an

immaterial “red herring” which begs the question here

involved. The sole, statutory issue before the Court

was whether Deepsouth infringed the patents in suit

“within the United States” when it produced all essen-

tial parts of the machine in the United States, but

when the combination claimed was never assembled in

the United States.

Further, the Court below emphasizes the fact that

assembly of the machine could be completed “in leg

than an hour once it arrived overseas” (443 F. 2d, at

938, A:77). The relevant question is whether maki

and selling the unassembled parts of the claimed com.

bination constitutes an infringement when no assem.

bly ever occurred in the United States. Neither the

time taken to assemble overseas nor the fact of ulti-

mate assembly abroad is material to the issue.

Misplaced reliance on extraneous foreign activity “

again appears from the statement (443 F. 2d. at 939,

A:79, 80):

“Tt would allow an infringer to set up shop next

door to a patent-protected inventor whose produet

enjoys a substantial foreign market and deprive

him of this valuable business. If this Constitu-

tional protection is to be fully effectuated, it must

extend to an infringer who manufactures in the

United States and then captures the foreign mar-

kets from the patentee.

The constitutional mandate cannot be limited

to just manufacturing and selling within the

United States. The infringer would then be al

lowed to reap the fruits of the American economy-

technology, labor materials, ete.—but would not

be subject to the responsibilities of the American

patent laws. We cannot permit an infringer to en-

joy these benefits and then be allowed to strip

away a portion of the patentee’s protection.”

There is no such constitutional mandate. Art. I, §8

(p. 3 supra) merely empowers the Congress to enact a

patent law; it does not dictate the standards of patent-

ability or infringement. Significantly, the only in-

fringement statute promulgated by Congress under the

Constitutional power is limited to assembling or selling

the claimed combination “‘within the United States”’

when, as in this case, no use occurs “within the United

States.”

The alleged capture of foreign markets resulting

from manufacture of unassembled parts is entirely im-

material to enforcement of a United States patent. A

United States manufacturer has every right to com-

pete in a foreign market and capture it as long as he

does not make or sell the thing patented—here the

“assembled or functioning whole’—in the United

States. .

Critical examination of the opinion below leads to

the conclusion that the Court was so motivated by its

own concepts of economic and social justice that it

failed to properly apply the clear language of §271 and

the controlling decisions of this Court which have in-

terpreted it. Applying the ad hoc standards of the Court

below, it somehow becomes wrong for one American

to compete in foreign markets with another American

owning a United States patent when such competition

actually occurs outside of the territorial limits of the

patent and the thing patented never comes into being

within those territorial limits. Basis for finding such a

wrong can be justified in no permissible construction

of 35 U.S.C. §271. |

Stripped of concepts of what constitutes fairness in

competition abroad, irrelevant to the issue here, the

decision below seeks to promulgate the rule that where

the thing patented is a combination of elements, direct

infringement is made out if it ean be established that

the separate parts have been manufactured or sold in

the United States, even when the combination—¢y

thing patented—never comes into being ‘‘within thy

United States.” If that rule of law is affirmed, then this

Court will: a

(1) Overrule its previous holdings establishing

_ that direct infringement requires assembly

a claimed combination, and that even eon

tributory or induced infringement cannot be

involved unless there is a direct infringement

through assembly of the combination within

the territorial jurisdiction of the patent. —

(2) Judicially amend 35 U.S.C. §271 to render

meaningless the carefully phrased distinction

between §271(a) and (c) when all the parts

are made and/or sold in unassembled form.

(3) Void the rules of the United States Patent

Office which preclude claiming of a mere cata-

log of parts without recitation of the elements

of a combination in interrelated, operative

relationship.”

There is and can be no “wrong”, no “injustice”, no

“violation” to a patentee’s rights unless there is a

actual and direct infringement of the “patented ir

vention” in this country. Under the decisions of this

* Section 706.03(f) of the United States Patent Office “Manu

of Patent Examining Procedure” provides:

A claim can be rejected as incomplete, if it omits essential

elements, steps or necessary structural cooperative relationship

of elements, such omission amounting to a gap between the ele

ments, steps or necessary structural connection. Greater lat-

tude is permissible with respect to the definition in a claim of

matters not essential to novelty or operability than with respect

to matters essential thereto. See also §706.03(d).’’

During the prosecution of its 218 patent in suit, the original claim

(including application claim 14, which in amended form issued

patent Claim 3 found infringed below), were rejected by the Ex

Court, such direct infringement can be effected solely

by complete assembly of all of the elements of a com-

bination into the functioning, synergistic whole. Up to

the point where the thing actually patented is made or

sold, the manufacturer is merely enjoying, as he has

every right to do, the quid pro quo of the granting of a

patent, viz., the right of the public to use all tech-

nology disclosed by the patentee right up to the limits

of his claims.

In its strained construction of Section 271 (a), the

Court below has emphasized the wrong word. It be-

came so preoccupied with the word ‘‘makes” that it

paid no regard to the really controlling words, “paten-

ted invention”. The Court below said (443 F. 2d. at 939,

A:79):

“We hold that ‘makes’ means what it ordinarily

connotes—the substantial manufacture of the con-

stituent parts of the machine.”

Section 271(a) does not refer to “the constituent

parts” of anything. It pointedly says “whoever makes,

uses, or sells any patented invention within the United

States .. . infringes the patent.” As the cited decisions

of this Court establish, the “ patented invention” is not

one, 80me or indeed all of the “‘constituent parts of the

machine.” Separate parts are not the thing patented.

They do not furnish the unanticipated, unobvious ad-

aminer “as being aggregative in form in that they are a mere cata-

log of parts. Each element recited in a claim must be related in terms

of structure to some other element. See In Re Hall, 614 0.G. 11,

1948 C.D. 534.’? (A:484) In response, the rejected claims (includ-

ing patent Claim 3 were amended: “to traverse the holding of ag-

gregation and to emphasize the patentable, cooperative relationship

existing between a trough like surface, and diagonally disposed

knives positioned in staggered relationship to a path of movement

down an inclined slick, or lubricated surface.”’ (A: 489).

vance over the prior art required by 35 U.S.C.

and 103 respectively.” Unassembled, the parts can or

perform their separate individual functions and se:

aggregation—a catalog—of parts.

The Court indulged in further faulty reasoning fn

its statement (443 F. 2d. at 939, A:79):

“Such a dependence on technicality would re.

quire us to countenance obvious schemes, pe

as simple as omitting an important screw,

signed to evade the mandate of §271(a).”

Such a statement simply ignores the fundamentals

of patent law. Under established principles, all recited

elements of a combination claim are critical and omig-

sion of any one avoids infringement. Cimiotti Unhain.

ing Co. v. American Fur Ref. Co., 198 U.S. 399, 410, 49

L. ed. 1100, 1105 (1905). If an “important screw” isa

recited element, or is the sole connection between two

recited elements, there can be no infringement without

it. On the other hand, if all elements of a combination

are assembled, and a purely structural part (an “im-

portant screw” or equivalent) necessary or proper for

35 §102 “A person shall be entitled to a patent unless—

(a) the invention was known or used by others in this country,

or patented or described in a printed publication in this

or a foreign country, before the invention thereof by the

applicant for patent...”

§ 103 ‘‘Conditions for patentability ; non-obvious subject matter

A patent may not be obtained though the invention is not iden

tically disclosed or described as set forth in section 102 of this

title, if the differences between the subject matter sought to be

“patented and the prior art are such that the subject matter

as a whole would have been obvious at the time the invention

was made to a person having ordinary skill in the art m

which said subject matter pertains. Patentability shall not

be negatived by the manner in which the invention was made,

July 19, 1952, c. 950, §1, 66 Stat. 798.’’

sustained use deliberately is omitted as a basis for

ent that final assembly occurred in a foreign

country, the Courts will hardly be rendered impotent

by such subterfuge. Infringement would be and should

be found on such facts.

This case presents no such problem. None of the

elements recited by Claim 3 of the ’218 patent, i.e., the

trough (packaged in box 2) the knife (packaged in box

1) and water spray (a pipe header in the Deepsouth

design, and packaged in box 3)—were assembled

together in the United States (A :392-5, 295-8). Simi-

larly, the elements recited by Claim 1 of the ’927 patent

(support member with projecting lip and means for

positioning the shrimp) were not assembled together in

this country (A :285-9).

The concern for economic fairness and justice ex-

pressed by the Court below is extraneous but in any

event is misplaced. When an American inventor seeks

a patent for a combination of old elements, he knows

full well what he gets—protection for the combination

and nothing else. That always has been the law. If an

American inventor wishes to protect his invention

abroad, he has a remedy. He can apply for foreign

patents in countries where his invention is or may be

of economic importance. That is exactly what Laitram

did here and owns patents corresponding to one or

both of those in suit in practically every country where

shrimp swim offshore—including Brazil. (A :179-89)*

* Significantly, Laitram presently is involved in infringement

litigation in Brazil under a corresponding ‘‘slitter’’ patent

against Deepsouth’s customer who bought and assembled the parts

involved in these proceedings. It would therefore appear that Lait-

ram is quite capable of protecting its interests “in foreign markets”

oo roe fundamental change in our patent law suggested by the

ow.

Under our system, protection of an invention from

competition in foreign countries, even from American

competitors, must be provided by patents issued i,

that country, not by giving an extra-territorial effect

to United States patents.

The error committed below becomes even more clear

when it is recognized that the Court inaccurately

framed the issue; then inexorably proceeded to ap

equally inaccurate conclusion. The issue posed was:

‘(Whether Deepsouth may sell its infringing

machine in foreign markets when it produces al]

essential parts of the machine in the United

States but ships it in a form which contemplates

minor final assembly in such foreign markets.”

(443 F. 2d. at 937, A:76)

The resulting conclusion was:

“But we do hold that when all the parts of a

patented machine are produced in the United

States and, in merely minor respects, the machine

is to be finally assembled for its intended use in

a foreign country, that machine is made within

the United States.”’ (443 F. 2d. at 939, A:80)

In beginning its consideration with the conclusion

that the Deepsouth deveiner was “its infringing

machine” the Court below exhibited an unfortunate

predeliction in respect to the limited infringement

issue actually before it. The Court of Appeals seems

to have suffered difficulty in divorcing from its cor-

sideration the fact that:

“We have held this day in a companion case,

... that the district court was correct in deter-

mining that Laitram’s patents were valid and that

Deepsouth had infringed Claim 3 of the 7218

patent and Claim 1 of the ’927 patent.’’ (443 F.

2d. at 937, A:37)

But that infringement was confined to the companion

case and did involve ultimate assembly of the patented

combination in the United States. The different issue

here is whether the shipment of the unassembled ele-

ments recited by the combination claims for assembly

. in a foreign country constitutes infringement of a

United States patent. Clearly, the Court’s analysis of

the pertinent issue here was clouded by its conclusion

in the companion decision that the assembled machine

constituted an infringement.

The issue posed by the Court is additionally in-

accurate in stating that the final assembly of the de-

veiner in Brazil was “in merely minor respects.” The

Court below either ignored or missed the fact that the

asserted “minor” assembly left for the foreign country

is the total assembly together of the several recited

elements of the claimed combinations.

Here, the Court was ignoring the admonition of the

decisions of this Court that the thing patented in a

combination claim is the combination of elements re-

cited by the claim. The machine which the patentee or

accused infringer actually sells is unimportant. The

real issue is whether infringement can exist when the

patented combination of elements is not assembled in

the United States before shipment and assembly and

use occurs only in a foreign country.

Claim 3 of the ’218 patent recites three elements

(assuming, arguendo, that a water spray is an ele-

ment). Claim 1 of the 927 patent also recites three

elements” (assuming, arguendo, that water properly

* Two of which are supplied by the single punched “fingernail”

material, a material commercially available and in varied use long

before the ’927 patent (see footnote 9, p. 11, supra).

may be claimed as a means for moving the shrimp

relative to the lip). These are the few elements which

must be assembled to form the patented combination,

The question, therefore, is not whether such assem.

bly is major or minor, but whether or not these

claimed elements were assembled and, if not, whether

sale of the unassembled parts constituted infringy

ment. In the legal context of this case, the assembly @

disassembly of the recited elements of the combination

claims cannot be brushed aside as minor. It is the only

assembly that is material to any question properly be.

fore the Court. This should have been apparent from

the previous decision of the same Circuit Court in Reed

v. Patrick 276 F. 2d. 784, 787-788 (5th Cir. 1969),

There, Chief Judge Brown stated:

“This ignores the nature of a combination

patent. The novelty is not in the elements. Indeed,

in many, if not most, patents for a combination—

and certainly this one—the individual components

are old, well known parts. The novelty which war.

rants the patent is in the way in which these

things known to skilled artisans are combined to

produce a new result or an old result in a new and

better way. Bryan v. Sid W. Richardson, Ine,, 5

Cir., 1958, 254 F.2d 191, 194. If, to paraphrase the

playwright ‘the combination is the thing’ then all

that goes to make up that combination is indis

pensable to its very existence. In more traditional

terms, this leads to the universal principle of

patent law that in a combination every element is

essential, and the patentee may not after issuanee

assert that that which was described as essential

was immaterial after all.”

To adopt a few phrases: “The combination 1s the

thing.”’? ‘‘The novelty is not in the elements.” Th

novelty which warranted issuance of the combination

claims in suit “is the way in which the recited elements

... are combined to produce a new result or an old

result in a new and better way.” “In a combination,

every element is essential.”

The Court below now “ignores the nature of a com-

bination patent” ” as correctly delineated in its own

previous decision.

*In July, 1970, an official British “Committee to Examine the

Patent System and Patent Law” submitted to Parliament a report

entitled “The British Patent System.” On page 77 of that report,

it is stated:

“We have concluded, therefore, that the acts of contributory

infringement which we consider should be actional should be

included in the definition of infringement. These acts are eee

(ii) sale of the components of a patented apparatus with the

intention that the components be assembled by others in the

United Kingdom to form the patented apparatus, As regards

(ii), we do not consider that, where assembly of the components

takes place abroad, the seller of the components should be liable

for infringement. If the sale of the assembled apparatus also

takes place abroad, the patentee suffers no detriment, If the as-

sembled apparatus is imported into the United Kingdom, the

patentee would be able to proceed against the importer and we

think that, in these circumstances, any damage suffered by the

patentee is too remote from the original sale of the components

to justify making the seller of components liable for infringe-

ment. We, therefore, recommend that:

‘The sale of a known substance -vith clear instructions for

its use in a manner which is patented, and the sale of the

components of a patented apparatus with the intention

that the components be assembled by others in the United

Kingdom to form the patented apparatus, should be ac-

tionable as infringement.’ ”

It will be seen, therefore, that the provision being recom-

mended for enactment by Parliament is quite similar to 35

U.S.C. Section 271(c) and that the opinion of the committee

with respect to the sale of unassembled parts for assembly

abroad is in accord with the decision reached in the conflicting

decisions from the Second, Third and Seventh Circuits.

F. The Law Centrolling Infringement of Combination Claims

Is Consistent With the Law Controlling Their Validity

This Court repeatedly has held that a combination

claim, and especially a claim for a combination of in-

dividually old elements, is valid only if the recited

structural elements are so joined and interrelated as to

produce a result which is greater than the sum of the

parts. In Great Atlantic and Pacific Tea Co. v. Super

market Equipment Corp., 340 U.S. 147, 151, 152, %

L. ed. 162, 166 (1950), the Court said:

“The negative rule accrued from many litiga-

tions was condensed about as precisely as the sub-

ject permits in Lincoln Engineering Oo. v. Stew-

ard-Warner Corp. 303 US 545, 549, 82 L.Ed 1008,

1010, 58 S Ct 662: ‘The mere aggregation of a

number of old parts or elements which, in the ag-

gregation, perform or produce no new or different

ction or operations than that theretofore per-

formed or produced by them is not patentable in-

vention’... . The conjunction or concert of known

elements must contribute something; only when

the whole in some way exceeds the sum of its parts

is the accumulation of old devices patentable. Ele-

ments may, of course, especially in chemistry or

electronics, take on some new quality or function

from being brought into concert, but this is not

a usual result of uniting elements old in mechanics.

“Courts should scrutinize combination patent

claims with a care proportioned to the difficulty

and improbability of finding invention in an a

sembly of old elements. The function of a patent

is to add to the sum of useful knowledge. Patents

cannot be sustained, when on the contrary, their

effect is to subtract from former resources freely

available to skilled artisans. A patent for a com-

bination which only unites old elements with mw

hange in their respective functions, such as is pre-

id here, obviously withdraws ’ what ake

is known into the field of its monopoly and dimin-

ishes the resources available to men.”

‘This same principle was more recently reiterated in

Anderson’s-Black Rock Inc. v. Pavement Salvage Co.,

396 U.S. 57, 60, 61, 24 L. ed. 2d 258, 261 (1969) as fol-

lows:

“The combination of putting the burner to--

gether with the other elements in one machine,

though perhaps a matter of great convenience, did

not mabada a ‘new or different function’, Lincoln

Co. v. Stewart-Warner Corp, 303 US 545, 549, 82

L.Ed. 1008, 1010, 58 8 Ct. 662, within the test of

validity of combination patents.

A combination of elements may result in an ef-

fect greater than the sum of the several effects

taken separately. No such synergistic result is

argued here.”

The claims were held invalid.

Since the patentability, and hence the validity, of a

combination claim depends upon a “ synergistic” in- .

terrelationship between the assembled parts, and the

claims define the scope of the invention,“ it is not sur-

prising that the interconnection and interrelationship

of the elements which produces the synergistic effect

must be defined in the claims. Indeed, such require-

ment is explicit in Section 706.03( f) of the United

States Patent Office “Manual of Patent Examining

Procedure” which states:

“A claim can be rejected as incomplete, if it

omits essential elements, steps or necessary struc-

tural cooperative relationship of e ts

omission amounting to a gap hetwsen the

ments, steps or necessary structural conneg

As indicated in footnote 34 on page 38 ¢ of

brief, Laitram was forced to comply with this reg

ment to obtain allowance of the claims of the ‘

patent in suit. a:

IX. CONCLUSION 4

A combination claim in a United States Patey

not infringed under 25 U.S.C. §271 when the unagj

bled elements of the combination are manufagh

and sold in the United States, but initial assembly

all testing and use of the assembled device occurg

foreign country. Accordingly, sale of the unasseml

parts of its deveiner by Deepsouth, with all assem

testing and use occurring in Brazil, did not consti

an infringement of either Claim 3 of U.S, P

2,694,218 or Claim 1 of U.S. Patent 2,825,927.

The contrary decision of the Court below sho d

reversed. s

Respectfully submitted}:

Harold J. Birch

and

C. Emmett Pugh s

Attorneys for Petitioner,

“1 The full text of this provision appears in footnote 34, p.|

supra. :

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.