Respondents Brief — Western States Machine Co. v. S. S. Hepworth Co.

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IN THE

Supreme Court of the United States

OCTOBER TERM, 1944

No. 1251

THE WESTERN STATES MACHINE COMPANY, eae

Petitioner,

v8. ;

S. S. HEPWORTH COMPANY, See

RESPONDENT'S BRIEF IN OPPOSITION TO. __

PETITION FOR WRIT OF CERTIORARI g

Counsel for Respondent. _

Of Counsel : Py,

W. F. Sownexizs, Jr.

May, 1945.

Surrems Printinc Company,

INDEX

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Reasons Orrvernep ny Prririoxer ror GRANTING THE

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Table of Cases

Boyd v. Janesville, 158 U.S. 260; 39 L. Ed. 973 ....

Computing Seale Co. v. Automatic Seale Co., 204 U.S.

OUD, G52; Si LL. Bd G85; GG i. ciccackk ck.

Curtis Co.

(CCA

V.

‘)

Master Metal Co. 125 F. (2d) 690

SS SPSS SATARGCLACKES BHO WADE SSO EO

Denaro v. Md. Baking Co., 50 F, (2d) 1074 (CCA 4)

ame. 40:2. (30) GS GS Cc ee

Detrola v. Hazeltine, 313 U. 8. 259 ................

Dyer v. Coe, 125 F. (2d) 192, 196 (CCA DC)" ......

Kleetrol Ine. v.

(CCA 8)

Exhibit Supply Co. v. Ace Patents, 315 U.S. 1296...

Kx Parte Bullowa & Ratish, 56 U.S. P. Q). 421

Gasifier Co. v.

(CCA 8)

Merrell & Co., 39 F. (2d) 873, 877

G. M. Corp. 188 F. (2d) 197, 200

Hazeltine Corporation vy. Abrams, 79 F. 2d) 329

(CCA

2)

LSA AALRAST OSD CHARA RA RS OS OR BOR ee &

6

LP

D

il

Page

In re Minn. Mining Co. Vv. Coe, 100 F. (2d) 429,

eet SERIA GUD caccecnacevsens nee se sees ttSh Fs

In re Youker, 77 F. (2d) 624 (CCPA) ...eeeeeeeees

Kokomo Fence Co. Vv. Kitselman, 189 U. S. 8, 23; 47

SMR OO GOR. Ln Sass skein apasceesteressese®

Lemley v. Dobson-Evans, 243 Fed. 391 (CCA 6) ..-

Office Spec. Co. v. Fenton, 174 U. S. 492, 498; 48 L. Fd.

CE WE acs kes ke SS ESS RSX ERENT oe

Ottinger v. Ferro Mfg. Co, 59 F. (2d) 640, 648

PO EE ea esa ee sasatn sees see

Penmae v. Esterbrook, 108 F. (2d) 695, 696 (CCA 2)

Pope v. Gormully, 144 U. 5. 948, 253; 36 L. Ed. 423,

Moe gy phan a NECA REA ENTE TES RE Ph

Singer Mfg. Co. v. Cramer, 192 U. 8. 269; 48 L. Ed.

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IN THE

Supreme Court of the United States

No. 1251

0-0

Tur Western States Maciine CoMPANY,

Petitioner,

Vv.

S. S. Hepwortn Company,

Respondent.

—0-0

RESPONDENT'S BRIEF OPPOSING PETITION FOR

WRIT OF CERTIORARI.

The petition does not present any question of conflict

of opinion between Cirenit Courts of Appeal nor any

question of general or public importance. The suit is an

ordinary one for alleged patent infringement decided ad-

versely to the patents on orthodox principles well set-

tled among the circuits and by this court.

OPINIONS BELOW.

The opinion of the Cireuit Court of Appeals for the

Second Circuit is reported in 147 Fed. (2) 345 (Adv.

sheet #3) and the opinion of the District is reported in

51 Fed. Sup. 859. A supplemental opinion of the District

Court is not reported but is printed in Volume A of the

record, at page 64.

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STATEMENT OF THE CASE.

The petition mentions three patents 1,758,901, (the

Control Patent), 2.096.341 (the Brake Patent) and

2 145,633 (the Separator patent). Two other control pat-

ents were also involved in the suit; beth were held not

infringed and have been dropped.

Both infringement and validity of all patents were

challenged.

The Control Patent.

Validity of this patent was attacked on the grounds of

anticipation, of prior public use and of lack of invention,

The Court of Appeals did not pass upon any of those

erounds, except insofar as it found the prior control of

the Carlson patent to require a limitation of the claims

in suit if they were to have any validity. On that score

the court said:

“This does not mean that we must hold the claims

invalid for all! purposes. When a_ patentee has dis-

closed a meritorious invention, but has claimed it too

broadly he is not always forced to a reissue; courts

will at times read into the broad language limita-

tions drawn from the specifications, which save the

claims as they stand.”’

The implication plainly is that the court was faced with

these alternatives: It could find the claims invalid he-

cause too broadly drawn, or it could read them as they

mieht have been drawn and find them not infringed. The

Court took the second alternative.

Then, as to the other defenses, the court took pains to

say:

‘Italics throughout the brief are supplied by respondent.

Leb Seay

“We need not consider the Andrews & Newman pat-

ent, or any of the other references although we do

not wish to be wide rstood as holding that they too

may not be a sufficient auswer,’

Hence the important question of validity would require

this court's detailed consideration if there were sufficient

reason to grant the writ to review the appellate court’s

findings of non-infringement.

The Control patent® is based on an intrieate assembly

of devices including links, levers, gears and a timing

mechanism of an odd and particular sort, for m assuring

the duration of the three periods of centrifugal opera-

tion (called purging, washine and drying periods) and

to set the brake automatically. The controls of the pat-

ent In suit are entirely mechanical,

In contrast the accused controls* are electrical, simply

employing three common commercial electric time clocks

to measure the duration of the purging, washine and

drying periods.

The Carlson patent® (whose system defendant em-

ploys)® disclosed the use of electric time clocks to meas-

ure the duration of the pureing and washing periods;

and the prior patent to Andrews & Newman? disclosed a

time clock to terminate the drying period and to set the

brake for automatically stopping the machine. But the

appellate court correctly held® that (even without the dis-

* The several defenses relied on in the Court of Appeals

are found in the “Statement of Points of Defendant-

Appellant’? (Vol. C, p. 563).

* Ree. Vol. B, pp. 686, 754

* Vol. B, pp. 786, 788, 790

* Vol. B, p. 782

* Vol. A, p. 37

‘Vol. D, p. 614; Vol. B, p. 776

® Vol. E, p. 172

4

closure of Andrews and Neuman) the addition of a third

time clock to Carlson’s system, to carry automaticity be-

yond the purging and spraying periods, would be no war-

rant for allowing it to be the basis of a patent. There-

fore the appellate court logically concluded as to the

claims in suit:

“The only invention, which can support them at all,.

lies in the specifie timing mechanism, together with

its accompanying train of mechanical elements. To

that defendant owes nothing; its whole svstem has

a totally different structure and a totally different

provenience.”? (Ree. Vol. KE, p. 173.)

The case therefore does not involve, as Petitioner ar-

enes, an evasion of the patent by mere difference in form.

The aceused controls are, as the appellate court found,

‘a totally different structure’? than the patented control.

But even if plaintiff's argument was accurate, the basis

for review would be merely factual, which is insufficient

by itself for grant of the writ.

The Brake Patent.

This patent® is based on a brake cooling system, where-

in water is let into a hollow rotating brake drum by an

inlet pipe and any excess is scooped out by an offtake

or scoop pipe as the drum rotates. Review is asked only

as to claims 8 and 9.

Concurrent decisions below held claim 8 invalid over a

public use at the Baltimore refinery of the American

Sugar Refining Company. No sound reason appears why

the petitioner should be accorded a third hearing on valid-

* Vol. B, p. 694

ity of a claim twice held invalid in view of the same prior

use structure,

Claim 9 differs from claim & by including as an addi-

tional clement a valve in the inlet line of the cooling svs-

fem, which is operated by the brake lever to shut off the

flow when not desired, i.e. when the brake is operated

to bring the machine to rest.

The accused strueture™ has no valve. Its means for in-

terrupting the operation of the liquid supply is totally

different from the patent. The appellate court thereupon

hased its findine of non-infringement. The decision is

manifestly sound and in arriving at it the court followed

established principles. Although the court hinted that the

claim may be invalid for lack of invention, the court

specifically refused to pass on validity and did not affirm

the district court on that ground, choosing instead the

alternative of holding the claim limited to ‘fa measur-

ably similar mechanical train’? to that shown in the speci-

fications. As so const rued, the court could only hold the

claim not infringed.

Manifestly the decision was correct and supplies no

ground whatsoever for the petitioner to seek review.

Claim 9 was not “changed” by the appellate court. No

clement was read into or out of the claim, nor does

the petitioner give any clue as to how the claim was

“‘changed”’ other than to say it was limited ‘too greatly,

That is a matter of opinion.

The court read claim 9 in the only way it is proper to

read a patent claim—in the light of the specification,

against the background of the prior art.

"Vol. B, p. 795

6

The Separator Patent.

This patent’ relates to a means for separating the two

different syrups that are thrown off by centrifugal force

dprine the purging and washing operations in a contrilu-

eal machine, during the refining of sugar,

The patent relied on for anticipation was Holland

TOB.7282 which was not cited in the Patent Office during

the prosecution of the Separator patent. The appellate

court unanimously held Holland ‘tas complete an antici-

pation of elaims 10 and 12 as ean be imagined’? (Vol. BE,

p. 175.)

There is no question for this court to review in con-

nection with the Separator patent except the fact of suf-

ficiency of Holland's specification to inform a person

skilled in the art how to make and use his invention.

Even if this eourt was disposed to review this decision

on a fact question, there is not the slightest reason to

suppose this court would find error. Each point recited

hy petitioner in the appellate court was considered indi-

vidually in the opinion and, without hesitation, was re-

jected. In plain words the Separator patent was held in-

valid over a ‘‘pat’? reference, in a clearly reasoned deci-

sion founded on sound and well established legal prin-

ciples. It calls for no review on any of the grounds com-

monly required by this court in support of a writ of cer-

tiorari.

REASONS OFFERED BY PETITIONER FOR

GRANTING THE WRIT.

I.

Petitioner’s first reason is primarily, that the Appel-

late Court and District Court decisions are in conflict

and secondarily, that for practical considerations suit

ean not be brought in another cireuit for a second adju-

dication.

‘Vol. B, p. 693

2 Vol. D, p. 650; Vol. B, p. 8038

~

1. The mere reversal of a district court decision and the

holding of the patents in suit invalid or not infringed do

not afford adequate grounds for grant of the writ.

2. The decision does not involve any question of gen-

eral or public interest; and the inability' to sue in another

circuit is not due to concentration of the industry in the

second cirenit nor to the concentration of sugar refineries

and factories there. Hence Exhibit Supply Co. v. Ace

Patents, 315 U.S, 126 and like decisions, wherein patents

were held valid and infringed, by the Appellate Court or

the industry was concentrated in one cireuit and the public

was to be saddled with a monopoly, do not apply to this

case,

II.

Petitioner’s second reason raises an old question as to

the effect to be given to a reference patent (Carlson).

Carlson’s patent issued on an application filed prior to the

application for the control patent in suit and prior to the

earliest date asserted for the invention pf the control

patent, but Carlson’s application was copending with

that of the Control patent.

This question has been settled uniformly among the

circuits and by this court in Detrola v. Hazeltine, 313

I. S. 259. It is now universally held that a patent in

suit must disclose invention over a prior patent whose

application was prior to but copending with the patent

in suit. The patent issued on the prior copending applica-

tion is ‘‘prior art’’; and patents issued on applications

copending with that of the patent in suit may be com-

bined with other patents if only mechanical skill is in-

volved, to show lack of invention of the patent in suit.

The point was decided or such combinations were made

or both, in the following cases.

'Petitioner’s citations to the reeord do not establish

that as a fact.

8

Detrola Radio Corp. v. Hazeltine Corp, 313 U.S.

Hazeltine Corp. v. Abrams, 79 FL (2d) 329

(CCA 2);

Penmac vy. Esterbrook, 108 BF. (2d) 695, 696

(CCA 2);

Denaro v. Md. Baking Ce., a0 F. (2d) 1074 (CCA

4), atfe, 40 BL (2d) 5138, 510-6;

Lemley v. Dobson-Evans, 248 Fed. 3891 (CCA 6);

Ottinaer v. Ferro Mfa. Co., 39 FB. (2d) 640, 645

(CCA 6);

Curtis Co. v. Master Metal Co., 125 F. (2d) 690

(CCA 7);

Gasifier Co. v. G. M. Corp., 138 F. (2d) 197, 200

(CCA 8);

Electrol Inc. v. Merrell & Co., 39 FB. (2d) 873, 877

(CCA 8);

In re Minn. Mining Co. v. Coe, 100 F. (2d) 429

(CCA DC);

Dyer v. Coe, 125 F, (2d) 192, 196 (CCA DC);

In re Youker, 77 F. (2d) 624 (CCPA);

Ex parte Bullowa & Ratish, 56 U.S. P. Q. 421

(Pat. Off. B. of A.).

III.

The third and sixth reasons of petitioner allege that

the Court of Appeals ‘‘changed’’ the claims by limiting

them to what might be considered the invention, if there

was any.

Such limitation is asserted to have been a departure

from accepted legal principles and to have involved deei-

sions on federal questions in conflict with applicable deci-

sions of this court.

The principles applied by the Court of Appeals were

the same principles as this court established more than

half a century ago, in dealing with patent infringement

—

9

questions. This court has repeatedly limited claims to the

ineans disclosed in the patent, in order to avoid the prior

art, as was done by the appellate court in this case.

Pope v. Gormully, 144 U.S. 248, 253; 36 L. Ed.

423, 425;

Boyd vy. Janesville, 158 U.S. 260: 39 L. Ea. 973;

Office Spec. Co. v. Fenton, 174 U. 8. 492, 498; 43

L. Ed. 1058, 1060;

Kokomo Fence Co. v. Kitselman, 189 U. S. 8, 23;

47 L.. Ed. 689, 696;

Simger Mfg. Co. v. Cramer, 192 U.S. 265: 48

L. Ed. 437, 447;

Computing Scale Co. v. Automatic Scale Co., 204

U.S. 609, 622; 51 L. Ed. 645, 652.

The same principles have been followed by the courts

below in eases too numerous to cite. Typical examples are

in the courts opinion (Ree. Vol. EF, p. 173).

The assertion that the limitations went beyond any

‘fair’? construction of the claims, involves the assump-

tion that limiting claims of the Control and Brake patents

to the means therein disclosed, for the reasons given by

the court, was unfair. Such an assumption is highly argu-

mentative; and a review of the decision on that basis would

involve purely fact matters. :

Clearly the Court of Appeals neither departed from the

aceepted course of judicial proceedings nor decided any new

question of federal law nor any federal question in any

way conflicting with this court’s decisions,

Basieally petitioner's complaint against the Appellate

Court’s decision is that it did not repeat the errors made

by the District Court in deciding the ease. That court

ignored the prior art when considering infringement. The

scope accorded the claims for the purpose of infringe-

ment was never measured against the prior art.

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10

IV.

Petitioner’s fourth reason deals with claim 8 of the

Water Cooled Brake patent against which there are con-

current decisions below as to invalidity; and his fifth rea-

son deals with the Separator patent, as to which review

would involve only reconsideration of the fact of oper-

ability of the reference patent (Holland) over which the

Separator was held invalid.

The reasons are plainly inedequate to warrant granting

the writ.

In view of the foregoing, it is respectfully submitted

that the petition should be denied.

Cuartes H. Howson,

Counsel for Respondent.

Of Counsel:

W. F. Sonnexkacs, Jr.

May 31, 1945.

——— ee