Petition for a Writ of Certiorari — Stern v. Gillman

IN THE

Supreme Court of the

November Term, 19

No. O 93

y<

—_

WILLIAM GILLMAN, JACK GILLMAN, and

LASZLO WENCZEL, etc.,

Respondents,

—vs—

WILLIAM STERN,

Petitioner.

PETITION OF WILLIAM STERN FOR A WRIT OF

CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR

THE SECOND CIRCUIT AND BRIEF IN SUPPORT THEREOF

MICHAEL HALPERIN,

Attorney for Petitioner, William Stern.

Honey L. BuRKITT, j

Of Counsel.

&

New York Appeals Co. Inc. 38 Ferry St. :

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INDEX

PAGE

Petition of William Stern for a Writ of Certiorari to

the Circuit Court of Appeals for the Second Circuit 1

Summary and short statement of the matter in-

VORVOG: .i053 See te ee ek errr ee ees ee 1

Opinions of the Courts below .....-...s.seccee §&

ee QUIRIOGE PIOUS Fas ciciicisccseiaeccs 3

Reasons relied upon for the grant of a Writ of Cer-

UEC N RI coe sc So ewe Rae ae 2 Ge WO wR ls 9

Brief in support of Petition for Writ of Certiorari .... 13

Opinions of the Courts below .......... Sages oe

ORI a5 55.5 a Ros 0s eR Ledeen ened

WORE Sc osceRe ees ReHEAS ORR RES neewek ieee wk: ae

Specification of errors ............ (‘inmikeveaenee, See 3

RUE: 0. GIRS ook cin theececvectanense “SO

PIR) i Saar eT OPa wNRS pe e e e

I. Can a patentee, in his patent, instruct how to

do something, lay down essential requirements how

that something be done, and, despite admitted fatai

fallacy and description inoperative for the purposes

enumerated in the patent, be sustained in a monop-

oly for that which he did not describe or require? 16

II. Is it non-analogous use to blow thread

through a machine that blows sand or paint, where

no change whatsoever is even made in the structure

of the prior patent art machine to adapt the

machine for that purpose? ........ ry ova oe

Ill. Is there non-analogous use where, during

prosecution of the application, the patentee himself

ii

PAGE

acquiesced in, and cancetled claims in response to

rejection, where the whole essence of the rejection

was just that, the analogy between use of material

such as sand or asbestos and thread? .......... *

IV. Is an admitted use, commenced long prior to

any date upon which the patentee relies, known to

many parties, extensive, and continuing even at the

date of the trial, to be held no bar to a patent

merely because the user did not show his machine

to every Tom, Dick and Harry, and especially did

not show it or tell of it to his competitors, includ-

ing plaintiffs? .............-..56-- SE er ee ee

V. Is the rule of Macbeth-Evans Glass Co. Vv.

General Electric Company, 246 Fed. 695, Certiorari

denied 246 U. 8. 659, that a use known to more than

one person, extensive and in great industrial use, a

bar to a patent regardless of safeguards by the user

to keep information from his competitors, to be

discarded for this case? ....... NLR range ee

VI. Is the ancient doctrine of necessary equit-

able conduct on the part of a plaintiff as a suitor

in a court of equity to be discarded completely, and

are plaintiffs to be countenanced in a court of equity

even when they have made active, unequivocal mis-

representations regarding decrees of Court bearing

on the suit patent? ............ Peet eee bvkisior ius

Defendant’s Exhibit M ........ eet OER

VII. Is defendant who succeeds in establishing

the invalidity of the suit patent, and acts of unfair

24

25

29

30

31

ili

PAGE

dealing by plaintiffs with such patent, to the in-

jury of the business of defendant, to be denied his

costs and his injunction and accounting for dam-

ages, merely because he might have infringed if

there had been a patent to infringe? ............ 33

Defendant shoul€ recover costs .......... 33

IN 6 5 A eS Votes eee he bed eee Kae 34

a Te rere Tes Tr er eT eer eee ree ee 35

Table of Cases Cited

Opinion of Circuit Court of Appeals, page , Record;

114 Fed. (2d) 28; 46 USPQ 430 .............. 5, 13

Opinion of District Court, page 299, Record; 44 USPQ

ME TEC EE OCP ILE CT eee eT ETE TERT E ETE 0, 13

Altoona Publix Theatres, Inc. v. American Tri-Ergon

CE. OF Og Des ek ek Sa eb is vaneses 10, 14

Altoona Publix Theatres, Inc. v. American Tri-Ergon

bo ee ey ee ee oe 18, 23

American Ball Co. vy. Federal Cartridge Corp., et al.

Vien oan We - va: Fo ab oe) Sere 33

American Lava Co., et al. v. Steward, et al. (C. C. A.

Oa), Ree OR, Filly CFSE ovis scien es see seein 18

Art Metal Works, Inc. v. Abraham & Straus, Ine.

(C. ©. A. Ba}, TO Ped. (2a) 641, 649 .......... 11, 32

Ball & Socket Co. v. Kraetzer, 150 U. S. 111, 116-

OS SEES ES pe Par ee Fears reer 9, 14,18

The Barbed Wire Patent, 143 U. 8. 275 ........5000%> 27

Barber vy. Otis Motor Sales Co. (C. C. A. 2d), 271 Fed.

TEE ga 2s Bos PEN REN REE OSS ASO Oi 20

tage te a eee Meee nt a ee ea

a Le re CSE

iv

PAGE

E. W. Bliss Co. vy. Southern Can Co., 251 Fed. 903 .... 10

Paul Boynton Co. vy. Morris Chute Co., et al. (C. C. A.

3rd), 87 Fed. 225, 226, 227, i 18

Brady Brass Co. vy. Ajax Metal Co. (C. C. A. 3rd), 160

SCP etre rr ee ee 2 te ee ee 19

Bromley Bros. Carpet Co. v. Stewart, et al. (C. C. E. D.

Pa.), 51 Fed. 912, 916 .......- cece cree cece eeees 26

Brush v. Condit, 132 U. S. 39, 49 0.2... eee eee eee cee 28

Busell Trimmer Co. vy. Stevens, 187 U.S. 423, 433, 435.. 19

Cadwell, et al. vy. Firestone Tire & Rubber Co., 13 Fed.

(DA) OBB, 488 onc c cc cee reece crenecsoresorces 17

Carbice Corp. of America vy. American Patents Develop-

ment Corp., et al, 288 U.S. 420, 421 ...----- 10, 14, 82

Clisby, et al. v. Reese (C. C. A. 7th), 88 Fed. 645, 647.. 29

Coffin vy. Ogden, 18 Wall. (85 U.S.) 120, 124-125 .... 27

Concrete Appliances Co. et al. v. Meinken, et al. (C. C. A.

6th), 262 Fed. 958, QGO-9G1 2... ccc cecrccecccces 22

Corona Cord Tire Co. vy. Dovan Chemical Corp., 276

U. S. 358, 382, 388, 384-885 2... eee eee eee eee 26, 27, 29

C. B. Cottrell & Sons Co. vy. Claybourn Process Corpora-

tion (D. C. E. D. Wise.), 17 Fed. (2d) 279, 7... @

Dryfoos v. Wiese, 124 U.S. BE cx av Eve sian ee news oes 24

Dwight & Lloyd Sintering Co., Inc. v. Greenawalt

(C. C. A. 2d), 27 Fed. (2d) 823, BOD cis savieawss 22

E. Edelmann & Co. v. Triple-A Specialty Co. (C. C. A.

7th), 88 Fed. (2d) 852, 853, certiorari denied 300

ht 2 Lerner ee. eee eT es tee 34

Electrie Storage Battery Co. v. Gould Storage Battery

Co. (C. C. A. 2d), 158 Fed. 610, Sl: 5 Sarr 18

Equitable Asphalt Maintenance Co. vy. Parker-Washing-

ton Co. (D. C. W. D. Mo. W. D.), 197 Fed. 920,

ER POL ery UE TTT TER eee SS Oto 20

PLE RLS FIN

PAGE

Gardner Sign Co. v. Claude Neon Lights, Inc., et al.

(D.C. W. D. Pa.), 836 Fed. (2d) 827 ....---- +e 33

Gayler, et al. v. Wilder, 51 U. S. 477, 496 ......-..... 27

Gerosa vy. Apco Mfg. Co. (Cc. C. A. Ist), 299 Fed. 19,

LC CURE EN ORD EREES ESP REET OAS ETS ROMS 33

Hall v. MacNeale, 107 U.S. 90, 97 2.6. e eee eee eee 28

Haslem y. Pittsburgh Plate-Glass Co. (C. ©, W. D. Pa.),

GS Wedd: STO, GRE oink ain sc bs coev ed ec ston staens 26

iookless Fastener Co. v. G. E. Prentice Mfg. Co.

ic. C. A. 2d), 68 Fed. (2d) 848, 851 2... eee eee 25

Keystone Driller Co. v. Jeneral Exeavator Co., et al.,

29) U.S. 240, on certiorari from 64 Fed. (2d) 39 14,32

Krentler-Arnold Hinge Last Co. v. Leman, et al., 13

Wd: DA) TOE i cid vce cece ewedesceneenseaeees 34

Leman vy. Krentler-Arnold Hinge Last Co., 284 U.S. 448 34

M. & B. Mfg. Co. v. Munk, ef al. (CG. C. A. 2d), 77 Fed.

(Pad BBL, BOS cc ccceccnadwsecsacseneteasesesnee 22

Macbeth-Evans Glass Co. vy. General Electric Company

(D. CN. D. Ohio), 231 Fed. 183, affirmed 246 Fed.

695 (C. C. A. 6th). certiorari denied 246 U. S.

GN eee Arr err ee eee &, 10, 28, 29, 30

Manhattan Medicine Co. v. Wood, 108 U. 8. 218, 222,

Be ot OMS EAs 8s LARS a gee eee SRI eS 11, 32

Miller, et al. v. Life Savers, Inc. (C. Cc. A. 2d), 62 Fed.

CDA) GED, DEG ccd cece se ccncanrnretesscaeces 21

Moore y. Cotton Exchange, 270 U. 8. 598, 610 .....--- 33

Pennsylvania Railroad Co. v. Locomotive Engine Safety

Truck Co., 110 U.S. 490, 494 2... eee eee eee eee 19

Pormutit Co. v. Graver Corporation, 284 U. 8. 52, 57-08 7

Roberts v. Ryer, 91 U. 5. 150, A: ree ore eet ee ee 22

A RNID NS Bay Bi AIO TR RS OR

¥

——

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vi

PAGE

Section 4888, Revised Statutes, 85 U.S. CO. §B8 ss acxs 16

Smith & Griggs Manufacturing Company Vv. Sprague,

123 U. 8. 249, 256 2... cre cceccccscccrccccceres 27

Smyth Mfg. Co. vy. Sheridan, ef al, (C. ©. A. 2nd), 149

Fed. 208, 211, 212 ......--.esseecereecceccecees 21

Stelos Co. vy. Hosiery Motor-Mend Corp., et al., 295 U. 8.

OE DRE os iw tid ease es eae eee new sce ees 9, 14,18

Union Special Mach. Co. v. Quaker City Flour Mills

Co. (D. C. E. D. Pa.), 286 Fed. 246, > eT 28

Western Electric Mfg. Co. vy. Ansonia Brass & Copper

Co., 114 U.S. 447, 452 «0.60 ee eee cere eee 17,18

Worden vy. California Fig Syrup Co., 187 U. 8. 516, 527,

B28, et SEG. .. cere e eee receeeecs Sek pannede nee 11, 32

Zenie Bros. vy. Miskend, et al. (D. C. 8S. D. N. Y.), 10

Fed. Supp. 779, T80 «20... - ee eee cece reer ee reese 34

a2 TE

IN THE

Supreme Court of the United States

November Term, 1940

No.

& —

> +

WILLIAM GILLMAN, JACK GILLMAN, and

LASZLO WENCZEL, etc.,

Respondents,

WILLIAM STERN,

Petitioner.

y=

~

PETITION OF WILLIAM STERN FOR A WRIT OF

CERTIORARI TO THE CIRCUIT COURT OF

APPEALS FOR THE SECOND CIRCUIT

To the Honorable, The Chief Justice and Associate Justices

of the Supreme Court of the United States:

Your petitioner, WILLIAM STERN, respectfully prays

for a Writ of Certiorari to the Cireuit Court of Appeals

for the Second Cireuit, to review the Judgment of that

Court, entered on August 24, 1940. A transcript of the

Record in the case, including the proceedings in said Circuit

Court of Appeals, is furnished herewith in accordance with

the Rules of this Court.

Summary and Short Statement of the Matter Involved.

(1) Letters Patert No. 1,919,674 in suit, for an improve-

ment in what is known in the dress embroidery trade as a

“puffing machine,” were issued on an application by

PERN. ARIE Terai 8 ce WEL A SR ARETE Rg ae bah 6 ae vl Di talen Shae = —

LASZLO WENCZEL, who assigned, before issue, to

STERLING AIRBRUSH CO., which consisted of WEN-

CZEL and WILLIAM GILLMAN, Plaintitfs.

(2) The suit patent never, before this suit, had been

adjudicated, although, in a few previous actions in which

no answers were even filed, consent decrees, waiving all

damages, profits or costs, were entered.

(3) This suit was instituted in the Southern District of

New York against a number of defendants, but Defendant,

WILLIAM STERN, the only one who of record was served,

is the only one ever actively to contest validity or charges

of infringement of the suit patent, or the right of Plaintiffs

to bring any action.

(4) Long prior to WENCZEL’S application filing date,

HANS HAAS made machines, which functioned identically

as the machine of the suit patent, and had structures either

identically the same as or encompassed by the suit patent

claims.

(5) Plaintiffs are concluded by the application filing

date.

(G) HAAS has used his machines since long before the

application, and continuously to the present time.

(7) HAAS has had employees using the machines since

long before the application filing date, has shown the

machines to persons in whom he tried to create an interest

for their exploitation, and has used these machines com-

mercially in his plant in the presence of these persons.

(8) It was not denied, and, in fact, curiously enough, one

of the arguments presented by Plaintiffs before the Circuit

PEI ILIOOL ALI SOI LLNS ELE RON Bee Ete A gat

ib er OS Se ee ee

3

Court of Appeals for patentability to WENCZEL was, that,

long before WENCZEL’S application filing date, HAAS,

not WENCZEL, had the field of use of these machines

entirely to himself, and, through persons who used the

products of his machines, benefited from a virtual monopoly

until Plaintiffs’ machines came into use.

(9) Prior to the application filing date, others sought to

ascertain the construction of, and to duplicate, the HAAS

machines.

(10) At the time a certain RETHY was experimenting

in view of the known use of the HAAS machines, Plaintiffs,

WILLIAM GILLMAN and LASZLO WENCZEL, were em-

ployed by RETHY.

(11) HAAS had knowledge of and experience with paint

spraying machine or air-brushes, and directly connects his

machines with the known structures of these air-brushes.

(12) Prior art patents show air-brushes and similar de-

vices, which, in every detail, are the structures of the suit

patent claims.

(13) During their employment by RETHY, Plaintiffs,

WILLIAM GILLMAN and LASZLO WENCZEL, also

worked upon air-brushes.

(14) Plaintiffs make no denials of this relationship to

RETHY, or knowledge of the HAAS machine, or direct

contact with the RETHY developments.

(15) WILLIAM GILLMAN, Plaintiff, testified that cer-

tain parts of the machine manufactured under the suit

patent must assume a definite relationship to each other in

order to effect the puffing function for which the machine

4

was designed, and, furthermore, that air must and does flow

backwardly through a certain part called the thread guide

when the machine functions for puffing. But the suit patent

itself states directly the contrary, requiring that the parts

of the machine be arranged in a wholly different relationship,

one in which, by the admission of GILLMAN, the machine

will not puff. The suit patent fails to say anything at all

about the specific relationship of parts required by GILL-

MAN for an operative structure. Furthermore, the suit

patent specifically requires that the arrangement of the

machine parts in the patent is to prevent air from flowing

backwardly through the thread guide.

(16) The structures of the prior patent art machines, and

the structure of the machine of the suit patent insofar as it

is described, function identically to suck material into the

machine and then to blast that material out of the machine.

Whether sand, or paint, or thread be used, the machine

functions identically the same; the suit patent fails to

teach any details of construction, or any relationship of

parts or use different from the arrangement of parts of

the prior patent art, and the uses are entirely analogous.

(17) During prosecution of the application, Plaintiffs

acquiesced in a rejection of claims directed to a puffing

machine upon a reference for a device for blasting asbestos

by means of air into the space between wall partitions, and,

after vigorous prosecution, cancelled the claims; now they

urge that their machine is non-analogous to devices for

blasting sand, paint and such substances which certainly

are analogous to asbestos.

(18) Plaintiffs deliberately made completely false state-

ments in regard to the suit patent in order to interfere with

the business of selling or using puffing machines, including

the business of Defendant.

5

(19) The false statements concerned decrees of Court.

(20) These false statements, in fact, inferred that the

Supreme Court of the United States had passed upon this

suit patent and had granted rights and powers to Plaintitts

in connection with that patent.

(21) Plaintiffs stated specifically that the Court,—not

specifying the Court in the same sentence, but referring

specifically to the Supreme Court of the United States in

that statement, and only the Supreme Court,—had given

Plaintiffs the right to CONFISCATE and DESTROY

(with similar emphasis in the statement) machines held

to be infringements, and had given Plaintiffs the right to

recover damages and profits, costs and disbursements.

(22) The only decrees Plaintiffs ever had obtained were

consent decrees; Plaintiffs never asked for, the decrees never

granted, the right or power to confiscate and destroy

machines; in fact, to obtain those decrees, Plaintiffs waived

all profits, damages, costs, and disbursements.

Opinions of the Courts Below.

(1) The opinion of the District Court (Judge John

W. Clancy) is in the form of findings of fact and conclusions

of law, was filed February 8, 1940, may be found at page .

299 of the Record, and is reported at 44 USPQ 496.

(2) The opinion of the Circuit Court of Appeals (Judges

Learned Hand, Augustus N. Hand and Chase, Judge Learned

Hand writing) was filed August 5, 1940, may be found at

page of the Record, and was reported at 114 Fed.

(2d) 28 and 46 USPQ 430.

(3) The District Court held the suit patent invalid be-

cause of the HAAS prior knowledge and use.

ee Lame ey i

6

(4) The District Court did not comment upon the prior

art patents.

(5) The District Court made no finding upon the in-

complete, misleading and inaccurate disclosure of the suit

patent, and upon the fact that the disclosure was exactly

opposite from the actual construction and use of the machine.

(6) The District Court, observing the conduct of Plain-

tiffs both from the evidence and on the witness stand, found

Plaintiffs to have circulated extensively circulars and cards

which were clearly false and misleading and were given

this character deliberately and intentionally by Plaintiff,

WILLIAM GILLMAN, which was an abuse of such a char-

acter as to merit severe treatment by the Court, and not

entitled to any relief.

(7) The District Court held, because Defendant failed

to give any evidence regarding obtaining legal counsel be-

fore he manufactured machines, he also came into Court

with unclean hands, and, therefore, was entitled to no relief

against the unfair competition of Plaintiffs, and to no costs.

but did not consider that Defendant could not have in-

fringed an invalid patent.

(8) The Circuit Court of Appeals reversed the District

Court, holding that the HAAS knowledge and use were not

public.

(9) The Cireuit Court of Appeals reached a conclusion

that, even though the suit patent instructed otherwise, and

instructed in a manner by which Plaintiffs admitted the

result could not be attained, still the suit patent was opera-

tive.

(10) The Circuit Court of Appeals said the prior art

patents were not applicable, but did not consider that HAAS

EAI a Naa nancy aera ct rem ert ccnst eae

7

derived his machines from his knowledge of those prior

art machines, and that LASZLO WENCZEL, the patentee,

also had had direct contact with machines from that same

specific prior art long before he filed his application.

(11) The Circuit Court of Appeals found patentable the

discovery of a new use for an old prior patent art structure,

without being able to point out in a single phase wherein any

change had been made in the structures of the prior art

patents to derive the structure of the claims of the suit

patent. The Circuit Court of Appeals said, in this con-

nection, that the devices of the prior art “always worked by

suction. As we have said, WENCZEL’S ‘puffer’ did so too

for as long as the end of the ‘tube 40’ was telescoped within

the inner end of the needle; but not after it was withdrawn,

as it had to be for ‘puffing.’” Yet the patent does not show,

and the Circuit Court of Appeals does not point out in the

patent any requirement, that the parts should ever be with-

drawn from the telescoped relation into this critical rela-

tion where the parts are separated. The claims specify

nothing to adapt the structures only for thread as against

paint, or demonstrate no solution of a problem by the

patentee in converting an air-brush to a puffing machine,

and this after it had to be admitted that HAAS was known

in the trade to have been using air pressure, and an air

stream, and a needle, for forcing thread into a pocket.

(12) The Circuit Court of Appeals said that Plaintiffs

made untrue statements regarding decisions of Court bearing

on the suit patent so as to “give to laymen the impression

of a judicial countenance of the invention which the facts

did not warrant,” but still held the defense of unclean

hands a “scurvy” defense, despite the ancient and accepted

character of the rule, from the English courts of chancery

to the rule obtaining in many decisions of this Court, that

he who comes into court seeking equity must come with clean

8

hands and not himself be guilty of unconscionable conduct

such as false representations regarding the matter in issue,

and especially false representations touching upon decisions

of the courts in that connection.

The Questions Presented.

(1) Can a patentee, in his patent, instruct how to do

something, lay down essential requirements how that some-

thing be done, and, despite admitted fatal fallacy and

description inoperative for the purposes enumerated in the

patent, be sustained in a monopoly for that which he did

not describe or require?

(2) Is it non-analogous use to blow thread through a

machine that blows sand or paint, where no change what-

soever is even made in the structure of the prior patent art

machine to adapt the machine for that purpose?

(3) Is there non-analogous use where, during prosecution

of the application, the patentee himself, after vigorous pro-

test, acquiesced in, and cancelled claims in response to,

rejection where the whole essence of the rejection was just

that the analogy between use of material such as sand or

asbestos and thread?

(4) Is an admitted use, commenced long prior to any

date upon which the patentee relies, seen by many parties

and known generally in the trade, extensive, and continuing

even at the date of the trial, to be held no bar to a patent

merely because the user did not show his machine to every

Tom, Dick and Harry, ane especially did not show it or

tell of it to his competitors, including Plaintiffs?

(5) Is the rule of Macbeth-Evans Glass Co. v. General

Electric Company, 246 Fed. 695, certiorari denied 246 U. S.

Ses

9

659, that a use known to more than one person, extensive and

in great industrial use, a bar to a patent regardless of safe-

guards by the user to keep information from his competitors,

to be discarded for this case?

(6) Is the ancient doctrine of necessary equitable con-

duct on the part of a plaintiff as a suitor in a court of equity

to be discarded completely, and are plaintiffs to be counte-

nanced in a court of equity even when they have made active,

unequivocal misrepresentations regarding decrees of Court

bearing on the suit patent?

(7) Is Defendant who succeeds in establishing the in-

validity of the suit patent, and acts of unfair dealing by

Plaintiffs with such patent, to the injury of the business of

Defendant, to be denied his costs and his injunction and ac-

counting for damages, merely because he might have in-

fringed if there had been a patent to infringe?

Reasons Relied Upon for the Grant of a Writ of

Certiorari.

The discretionary power of this Court is invoked upon

the following grounds:

(1) Because the Circuit Court of Appeals has held the

patent valid because of something which is not in the

patent, and, in fact, which cannot even be inferred into the

patent because it would be directly contrary to the express

terms of the patent, and, under these circumstances, the

holding of the Circuit Court of Appeals is directly opposite

to the decisions of this Court in Stelos Co. v. Hosiery Motor-

Mend Corp., et al., 295 U. 8. 237; Ball & Socket Co. v. Kraet-

ver, 150 U. 8. 111; and many others.

(2) Because the Circuit Court of Appeals has overruled

the District Court’s finding that knowledge and use of the

Cate

Bese OEE INE IRE LAT LET IRE

DREAIEBLE A WIE ADA AW Sey 2 REA

10

alleged invention of long duration and continuing even at

the time of the trial was anticipation of the suit patent,

because of restrictions interposed against general promulga-

tion of the knowledge and use, despite a statement of the

District Court of “the suspicion attaching even to the

WENCZEL claim to invention of the patent in suit apparent

from the facts found,” where the facts found were that, long

before the application date and while Plaintiffs were em-

ployed by RETHY, the knowledge of the HAAS machine

was brought to the employer of Plaintiffs, and that there-

after the Plaintiffs separated from their employer, where

the holding of the Circuit Court would be directly in con-

flict with Macheth-Erans Glass Co. v. General Electric Com-

pany, 246 Fed. 695, certiorari denied 246 U.S. 659, and PL. W.

Bliss Co. ¥. Southern Can Co., 251 Fed. 903, and, therefore,

requires decision by this Court.

<%) Because of the directly opposite conclusions reached

by the District Court and the Circuit Court of Appeals on

the question of prior knowledge and use, and unclean hands.

(4) Because the Circuit Court of Appeals has, by its

holding, given a monopoly to a patentee who, by the un-

disturbed findings of fact of the District Court, had been in

direct contact with results of the work of one accredited

with prior knowledge and use, and thus has given a power

to harass the one having the prior knowledge as well as

large number of people, already threatened, as in Carbice

Corp. of America v. American Patents Development Corp.,

et al., 283 U. S. 420, 421, and Altoona Publix Theatres, Ine.

v. American Tri-Ergon Corp., et al., 293 U. 8. 528.

(5) Because the Circuit Court of Appeals has announced

a new doctrine for monopoly for a newly selected use for an

old appliance, even where no change is made in the appliance

to adapt it for the new use, and where function, operation

11

and result of the apparatus remain the same in the new

relationship, and this in direct opposition to many decisions

of this Court.

(6) Because the Circuit Court of Appeals found the al-

leged new use to be non-analogous to the uses of the patent

art, and ignored the evidence that the patentee had ac-

quiesced as to the analogy of arts when his application was

pending in the Patent Office.

(7) Because the Circuit Court of Appeals has discarded

the doctrine of clean hands for a suitor in equity, particularly

with regard to truthful representations of the subject mat-

ter of the suit, in direct contravention of the decisions of this

Court in Worden v. Fig Syrup Co., 187 U. 8. 516, Manhattan

Medicine Co. v. Wood, 108 U. 8S. 218, the decision of that

same Circuit Court of Appeals in Art Metal Works, Ine. v.

Abraham & Straus, Inc., 70 Fed. (2d) 641, and many other

cases.

WHEREFORE your Petitioner respectfully prays that a

Writ of Certiorari be issued, under the Seal of this Court,

directed to the United States Circuit Court of Appeals for

the Second Circuit, commanding said Court to certify and

send to this Court, on a date to be designated, a full and

complete transcript of the Record and all proceedings of the

Circuit Court of Appeals had in this cause, to the end that

this cause may be reviewed and determined by this Court;

that the judgment of the Circuit Court of Appeals be re-

versed; and that Petitioner be granted such other and

further relief as may seem proper.

MICHAEL HALPERIN,

Counsel for Petitioner.

HENRY L. BURKITT,

Of Counsel.