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INDEX

Supsect INDEX

Petition for writ of certiorari.......................

Summary statement of matter involved..........

I na G's gp kk kab bac 445

Beseme Ramen Patemt......................

ee Sad Oe i ead og aw kick a

LG sais yh ast givin d as woken

Reasons relied upon for allowance of the writ... ..

5) ERNE SENS ESSE ls ae als apie ee

Brief in support of petition.........................

Opinions of the courts below. ..................

I ars are Or eed ee

Specification of errors......... 2.2... eee eee

SI Or PIII, on hos nS cp avakun sas bvcan

pe RES eet eee ee ye eee

Point I—The Court of Appeals for the Sixth

Circuit appears to have overlooked the pub-

lic interest in applying the rule of res ad-

judicata in this case and in not following the

application of the rule of upholding the

public interest as this Court stated should

be done in Mercoid Corporation . a

Continent Investment Co. 320 U. 8. 661,

Point II—The Court of Appeals for the Sixth

Circuit has failed to give proper considera-

tion to the public interest in holding the

second Hagen patent valid, which patent the

patentee Hagen now admits is merely an

adaptation of the structure of the first

Hagen patent, which was applied to an in-

duced draft fan, to a forced draft fan (R.

114), and the fact that such adaptation is

taught by the art; Cuno Engineering Cor-

poration v. Automatic Devices Corporation,

314 U.S. 84; 86 L. Ed. 58; Sinclair & Carrol

Company, Inc., v. Interchemical Corpora-

tion, announced May 21, 1945............

—8840

|

ll INDEX

Page

Point I1I—The Court of Appeals for the Sixth

Circuit has failed to guard the public interest

in not holding the second Hagen patent in-

valid on this record which shows that the

adjustment of the vanes through an angle of

90 degrees is merely a matter of mechanics,

and that it is merely a matter of mechanics

to make the vanes of the first Hagen patent

adjustable through that range of degrees and

that such range of adjustment of vanes and

the arrangement of the pivots of the vanes

obliquely to the rotor axis is not only taught

by the art of record but was done by Hagen

and his associates purely as a mechanical

expedient to minimize obstruction of the

kkk _ PIE SRRI Dg cr ea MI arsenate

Point 1V—The Court of Appeals for the Sixth

Cireuit, by adopting and applying respond-

ent’s present theory of 100% overlapping of

vanes in fully open position and construing

the claims to cover petitioner’s structures

Exhibits B and C because they have vanes

overlapping in space, has disregarded the

public interest to’ the extent that this inter-

pretation of the claims would make them

apply to most multiple vane controls and

most of the prior art patents, many of which

have expired and are in the public domain.

Point V—The Court of Appeals for the Sixth

Circuit has overlooked the public interest in

holding petitioner’s Exhibits B and C to

infringe both patents in suit on the basis of

results accomplished, and has further over-

looked the public interest to the extent of

giving the claims such scope as to embrace

the prior art structures and has given the

mechanical Claim 2 of the first Hagen

patent the effect and scope of the method

Claim 1 held invalid by the Court of Appeals

SCPE ss PIMA Ye

Conclusion

for the First Circuit, and has unwarrantedly

extended the finding of the Court of Appeals

San thee Poneh CHP: ok eon cn kas

Point VI—This Court in the public interest

should exercise its supervisory authority and

review the decision of the Court of Appeals

for the Sixth Circuit, determining the

validity of both patents in the light of the

record in this case, the admissions of the

respondent herein and the respondent’s

presently urged theory of 100% overlapping

of the vanes in fully open position, which is

an incident to several prior art patents.

If this Court should determine the patents

in suit to be valid the rights of the public

should be definitely determined by fully de-

fining the meaning and scope of the claims,

inasmuch as this has not been done by any

court considering them but which, without

attempting to apply to Exhibits B and C

the Court of Appeals for the Sixth Circuit

has, on the basis of results accomplished

thereby, extended to cover prior art patents

having spin control vanes overlapping in

TaBLE oF Cases CITED

B. F. Sturtevant Co. v. Massachusetts Hair & Felt Co.,

SF Te cK Cea aren eie akan cena bene e es

Cuno Engineering oe v. Automatic Devices Cor-

poration, 314 U.S. 84; 86 L. Ed. 58....... 8,10,16,17,19

DeForest Radio Corporation v. General Electric Co., 283

General Electric Company v. Wabash Appliance Cor-

poration, 304 U.S. 364, 82 L. Ed. 1402............

Market Street Cable Railway Co. v. Rowley, 155 U.S. 621.

Mercoid Corporation v. Mid-Continent Investment Co.,

320 U.

20

S. 661, 88 L. Ed. 376.......... 7,10,13,15,21,23

PREMERA IL LOI IEE EIRENE TERT AEG TL PIM FILE BOE GSES RETEST

iv INDEX

Page

Motion Picture Patents Corporation vy. Universal Film

oe LL SO rer re ret errr 21,23

Ue Se ee eee 21

Sinclair & Carrol Company, Inc. v. Interchemical Cor-

poration, Announced May 21, 1945 (unreported),

8,10, 16,17,19,21,23

United Carbon Company v. Binney & Smith Co., 317

es Sa ee ie SESS ioc ve oh icg x sea oe ses Dis 8

United States v. Masonite Corporation, 316 U. S. 265... 21,23

mamrensey or iat TO PRETER e PEO ROT supe

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1945

q

i

4

No. 150

4

CLARAGE FAN COMPANY, :

si Petitioner, :

B. F. STURTEVANT COMPANY

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES CIRCUIT COURT OF APPEALS

FOR THE SIXTH CIRCUIT.

To the Honorable the Chief Justice of the United States,

and the Associate Justices of the Supreme Court of the

United States:

Your petitioner, Clarage Fan Company, prays for a writ

of certiorari to the United States Circuit Court of Appeals

for the Sixth Circuit to review the judgment of that Court

entered on the 4th day of April, 1945 (R. 412), 65 USPQ

203, as amended on the 22nd day of May, 1945 (R. 423),

not reported.

A certified transcript of record in the case, including

proceedings in said Circuit Court of Appeals, is furnished

herewith in compliance with the rules of this Court.

1b

bo

Summary Statement of Matter Involved

This suit was brought by the respondent against the peti-

tioner for infringement of Claim 2 of the first Hagen pat-

ent 1,846,863 for Fan and Method of Operating Same (R.

263), and all four claims of the second Hagen patent

1,989,413, for Centrifugal Fan (R. 264). The United States

District Court for the Western District of Michigan held

all claims in suit valid and infringed by petitioner’s strue-

tures exemplified by Exhibit 3 and Exhibits B and C (Find-

ings of Fact and Conclusions of Law, R. 36). Tae Court

of Appeals for the Sixth Circuit affirmed the judgment of

the District Court (R. 412), 65 USPQ 203, and on May 22,

1945, amended its judgment (not reported).

The two Hagen patents here in suit were involved in the

case of B. F. Sturtevant Company (respondent herein) v.

Massachusetts Hair & Felt Company, in the United States

District Court for the District of Massachusetts, charging

infringement of the claims here involved and also method

Claim 1 of the first Hagen patent by Exhibit 3.

That case was referred to a Master who found method

Claim 1 of the first Hagen patent invalid, Claim 2 valid

and infringed, and all four claims of the second Hagen pat-

ent invalid. The Master’s finding was affirmed by the Dis-

trict Court (31 Fed. Supp. 975). The Court of Appeals for

the First Circuit affirmed the District Court with respect

to the first Hagen patent, holding method Claim 1 invalid

and Claim 2 valid and infringed, but reversed the finding

of the Master and the judgment of the District Court in

respect to the second Hagen patent, holding all four claims

valid and infringed (122 Fed. (2d) 900; Petition for Re-

hearing denied 124 Fed. (2d) 95; Petition for Writ of Cer-

tiorari denied, 315 U.S. 823, 86 L. Ed. 1219).

Petitioner assumed the defense of the Massachusetts case.

Exhibit 3 is the same as the structure held to infringe in

3

the Massachusetts case. Exhibits B and C were not involved

in that case.

First Hagen Patent

The principle of controlling the output of a fan by vary-

ing the spin of the entering air in the direction of rotation

of the rotor of the fan is admittedly old and in fact is re-

ferred to as ‘‘ancient.’’ This control is best accomplished

by a plurality of coacting pivotally adjustable vanes and

this is old in the art.

The first Hagen patent (R. 263) is an adaptation of this

ancient principle of variable spin control to an induced

draft fan in which the vanes are arranged in an annular

series in a scroll-shaped inlet, the axes of the vanes being

parallel to the axis of the rotor. The vanes are connected

for simultaneous operation which is old in the art, for

example in Hickhoff (R. 356, Chart Exhibit P) and the

Beaudrey French patent (R. 392, Chart Exhibit U). The

vanes of this Hagen patent are curved and the Court in the

Massachusetts case distinguished Hagen from Eickhoff’s

straight vanes, pointing out the differences, 122 F. (2d)

900, at 910. On page 911 (also R. 285) the Court of Appeals

for the First Circuit summarized what it considered to be

Hagen’s contribution in the following language:

“It does not seem to us that it would have occurred

to a mechanic or designer skilled in the art either to

disregard increasing shock-loss by radically increasing

the spin of the entering air or to construct vanes of

cylindrical contour for the purpose of providing pas-

sages between them ‘of substantially uniform cross-

section as the vanes are moved to closed position,’ so

that céntrol to minimum capacity by spin rather than

by throttling would result. Thus the finding of patent-

able invention made by the master and confirmed and

adopted by the court must stand.’’ (Italics ours.)

RE TOI ee te a

POR TTT PRR POTD ee Ee Ae

4

Hagen sought to pre-empt this ancient principle of spin

control by method Claim 1 of the first Hagen patent which

the Court of Appeals for the First Circuit held invalid for

lack uf patentable invention. This claim was held to be

invalid on the ground that if patentable novelty was present

in Claim 1 it must reside in adjusting the spin through a

range from substantially the full capacity of the fan to a

minimum capacity thereof with a substantially tangential

admission of fluid, such variation through this range being

effected by increasing the spin component while reducing

the area, as defined in the concluding clause of Claim 1, the

claim being as follows:

‘‘1. A method of operating a centrifugal fan which

consists in rotating the fan wheel at constant speed and

controlling the output of the fan in aceordance with

the variations in demand thereon by supplying fluid

to the fan with a spin component of velocity in the

direction of rotation of the wheel, adjusting the spin

through a range to produce variations in output from

substantially the full capacity of the fan to a minimum

capacity thereof with a substantially tangential admis-

sion of fluid, said variation from maximum output to

lower outputs being effected by increasing the spin

component while reducing the area through which the

fluid passes at a rate not proportionately greater than

the rate of increase of the spin component.’’

The Master held that this was merely extending the range

of control by a known method and that any novelty in Claim

1 resides in results rather than method. Both Courts

affirmed the finding.

Claim 2 of the first Hagen patent, held valid, is as follows:

‘2. The combination with a constant speed motor,

of a centrifugal fan having a rotor, an inlet, a plurality

of vanes in the inlet forming fluid directing passages

to admit fluid to the rotor with a spin component of

velocity in the direction of rotation of the rotor, the

vanes being adjustable to vary the output of the fan

through a range from maximum capacity with the vanes

open to a minimum capacity with a substantially tan-

gential admission of fluid when the vanes are closed,

adjacent vane surfaces continuously approaching

parallelism and having extended overlapping portions

shaped to define passages of substantially uniform

cross-section as the vanes are moved toward closed

position.’’

This must be construed to define what the Court in the

Massachusetts case stated Hagen’s contribution to be as

distinguished from what would have occurred to a mechanic

or designer in the paragraph we have quoted.

Second Hagen Patent

The second Hagen patent (R. 264), as admitted by the

inventor Hagen, is merely an adaptation of the first patent

to a forced draft fan (R. 114) ‘** * * That is all that it is

supposed to be.’’ This adaptation was old and taught by

the art; in fact, some of the prior art patents show both

adaptations in single patents, as in Moody 1,460,428 (R.

357, Chart Exhibits Q and R).

Whether an induced draft fan or a forced draft fan should

be installed in a particular system is a matter of engineering

and sometimes both are employed in a single system (R. 94),

the forced draft to push the air into the system and the

induced draft to pull it out of the system. With both in-

duced and forced draft the spin control vanes are arranged

in advance of the rotor; in the induced draft commonly in

a seroll-shaped inlet chamber connected to a conduit, and in

the forced draft in an inlet open to the air.

In the first Hagen patent the vanes are arranged in an

annular series with their pivot axes parallel to the axis of

the rotor. In the second Hagen patent they are arranged

in an annular series with their axes oblique to the axis of

2b

SEARHCES I

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AMY IRE SN RE ETL NS SPS ORES

By.

Pi eereen ee renccmr

6

the rotor. Both arrangements are old in the art, Moody

(R. 357) being an example. While the axes of the vanes in

this patent are shown in the drawing at right angles to the

axis of the rotor, the specification states,

‘*The guide vane axes in Fig. 2 are shown in the same

plane although they might be equally well contained in

a conical surface having its apex in the pump axis.”’

In adapting the first Hagen patent to a forced draft fan

the axes of the vanes were first arranged perpendicular

to the axis of the rotor; as this served to choke the inlet

the design was changed by moving the vanes forward in

the conical throat (Hagen, R. 89).

Claim 1, which may be regarded as typical, is as fol-

lows:

‘*1, A centrifugal fan comprising a rotor, a casing

having an eye and a substantially conical inlet passage

leading to the eye, and a plurality of vanes in the inlet

pivoted on axes which are oblique to the rotor axis

and substantially at right angles to the conical inlet,

the vanes being adjustable about their axes from sub-

stantially wide open position in which they do not

appreciably obstruct the flow of gas to the rotor

through an angle of nearly 90 degrees to a closed posi-

tion, throughout which adjustment they direct the en-

tering gas to the rotor with an appreciable spin, the

work done by the fan on the gas being variable in ac-

cordance with the adjustable spin introduced by the

vanes at different positions.”’

Respondent’s expert Berry states that it is a matter of

mechanics to provide a 90-degree range of adjustment of

the vanes in the first Hagen patent (R. 138).

Claim 1 concludes with the statement,

‘*the work done by the fan on the gas being variable

in accordance with the adjustable spin introduced by

the vanes at different positions’’.

POE RE EINE, TY OTE RTE OMIT ERIN TELS OEE I ET RAE, ae ao

7

This is the same as in the first Hagen patent and in the

ancient art, the principle having been discovered in the

Eighteenth Century by a Swiss mathematician and physi-

cist named Euler and reduced to an equation.

The added hub element on the rotor axis of Claim 2 of

the second Hagen patent is old in the art. The added

‘“‘means for simultaneously and uniformly adjusting the

vanes about their axes’’ of Claims 3 and 4 are common in

the old art.

Jurisdiction

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

United States, Judicial Code, Sec. 24 (7) (28 U.S. C., See.

41 (7).

2. The jurisdiction of this Court is invoked under Sec-

tion 240 (a) of the Judicial Code, as amended by the Act

of February 13, 1925 (28 U.S. C., See. 347).

3. The date of the judgment which petitioner seeks to have

reviewed is April 4, 1945 (R. 412), as amended May 22,

1945 (R. 423).

Questions Presented

1, Whether public interests are not paramount in the

application of rules of res adjudicata in this cause as was

held by this Court in Mercoid Corporation v. Mid-Conti-

nent Investment Co., 320 U. S. 661, 88 L. Ed. 376.

2. Whether a claim of a patent should be held valid which

is so indefinite and vague as to permit the owner of the

patent (respondent) to urge one interpretation in the Mas-

sachusetts case in order to support a charge of infringe-

ment by Exhibit 3, and to advance another theory of inter-

pretation in the present case in order to support a charge

of infringement by Exhibits B and C. The interest of

the public and equity to the petitioner demand that a claim

capable of being so manipulated should be held invalid

_ aren cae SERRE RE LAE HEIN LUD NE IAT TIA

‘ a a :

8

under the established rules of law applied to this Court in

United Carbon Company v. Binney & Smith Co., 317

U. S. 228, 87 L. Ed. 232; and

General Electric Company v. Wabash Appliance Cor-

poration, 304 U. S. 364, 82 L. Ed. 1402.

3. Whether public interest should not be considered in

determining validity of the second Hagen patent which

admittedly is merely an adaptation of the first Hagen pat-

ent, applied to an induced draft fan, to a forced draft fan

(R. 114), such adaptation being taught by several prior

patents,

Sinclair & Carrol Company, Inc., v. Interchemical Cor-

poration, Announced May 21, 1945 (unreported) ;

Cuno Engineering Corporation v. Automatic Devices

Corporation, 314 U.S. 84, 86 L. Ed. 58.

4. Whether the Court of Appeals for the Sixth Circuit,

in view of the statement of the inventive step which the

Court of Appeals for the First Circuit held was taken by

Hagen, properly held petitioners structures Exhibits B

and C to infringe the patents in suit, and whether the Court

of Appeals for the Sixth Circuit has not unwarrantedly ex-

tended the findings of the Court of Appeals for the First

Cireuit to the detriment of public interest and petitioner’s

rights.

5. Whether respondent’s urging the theory of 100%

overlap when the vanes are in fully open position is such

a shift of theory from that taken by respondent in the

Massachusetts case as warrants refusal to apply the doc-

trine of res adjudicata.

6. Whether overlapping of vanes in space should be re-

garded as imparting patentable novelty to the patents in

suit or in determining infringement thereof by Exhibits B

and C when such overlapping in space is an incident to all

BASIE PORES ME LUTE IL ERLE SATIN YELENA IT NETL IMT EES E SEI SERINE SIRS EE TEED

9

prior art multiple vane spin controls to the same degree as

is present in petitioner’s structures Exhibits B and (C,

held to constitute infringements because of such over-

lapping in space, the public interests being thereby dis-

regarded and permitting respondent to reclaim and re-

capture admittedly ancient principles of spin control and

structures of patents long since expired.

7. Whether the application of the doctrine of res adju-

dicata to Exhibit 3 justifies holding Exhibits B and C to

constitute infringement on the ground that they produce

substantially the same results in spin control in substan-

tially the same way as Exhibit 3 when, as a matter of

fact, they are within the range of spin control of structures

embodying the prior art, and Exhibit B has substantially

the same as and Exhibit C has substantially less range

of spin control than structures embodying the prior art,

and this spin control is accomplished in both Exhibits B

and C in the same way and by the same means as the spin

controls of the prior art.

8. Whether this Court should in the public interest exer-

cise its supervisory authority in reviewing the decision in

this cause, not only determining the validity of both patents

in suit in the light of the record in the present case, the

admissions of the respondent herein, and the respondent's

presently urged theory of 100% overlapping of vanes in

fully open position which is incident to several prior art

patents, but also, if the patents are valid or determined to

be valid, defining the rights of the public by defining the

meaning and seope of the claims, which has not so far been

done by any court considering them, but which have been

extended by the Court of Appeals for the Sixth Cireuit to

include practically all prior art patents on multiple vane

spin control,

OS HOS RED Ug POR : BATEMANS Ue j

10

Reasons Relied Upon for Allowance of the Writ

I. The Court of Appeals for the Sixth Cireuit appears

to have overlooked the public interest in applying the rule

of res adjudicata in this case and in not following the ap-

plication of the rule of upholding the public interest as this

Court stated should be done in Mercoid Corporation v. Mid-

Continent Investment Co., 320 U. S. 661, 88 L. Ed. 376.

II. The Court of Appeals for the Sixth Circuit has failed

to give proper consideration to the public interest in hold-

ing the second Hagen patent valid, which patent the patentee

Hagen now admits is merely an adaptation of the structure

of the first Hagen patent, which was applied to an induced

draft fan, to a forced draft fan (R. 114), and the fact that

such adaptation is taught by the art;

Cuno Engineering Corporation v. Automatic Devices

Corporation, 314 U. S. 84; 86 L. Ed. 58;

Sinclair € Carrol, Inc. v. Interchemical Corporation,

announced May 21, 1945 (unreported).

Ill. The Court of Appeals for the Sixth Circuit has

failed to guard the public interest in not holding the second

Hagen patent invalid on this record which shows that the

adjustment of the vanes through an angle of 90 degrees is

merely a matter of mechanics, and that it is merely a matter

of mechanics to make the vanes of the first Hagen patent

adjustable through that range of degrees and that such

range of adjustment of vanes and the arrangement of the

pivots of the vanes obliquely to the rotor axis is not only

taught by the art of record but was done by Hagen and his

associates purely as a mechanical expedient to minimize

obstruction of the eye of the fan.

IV. The Court of Appeals for the Sixth Circuit, by adopt-

ing and applying respondent’s present theory of 100%

11

overlapping of vanes in fully open position and construing

the claims to cover petitioner’s structures Exhibits B and C

because they have vanes overlapping in space, has disre-

garded the public interest to the extent that this interpre-

tation of the claims would make them apply to most multiple

vane controls and most of the prior art patents, many of

which have expired and are in the public domain.

V. The Court of Appeals for the Sixth Circuit has over-

looked the public interest in holding petitioner’s Exhibits

B and C to infringe both patents in suit on the basis of

results accomplished, and has further overlooked the public

interest to the extent of giving the claims such scope as to

embrace the prior art structures and has given the me-

chanical Claim 2 of the first Hagen patent the effect and

scope of the method Claim 1 held invalid by the Court of

Appeals for the First Circuit, and has unwarrantedly ex-

tended the finding of the Court of Appeals for the First

Circuit.

V1. This Court in the public interest should exercise its

supervisory authority and review the decision of the Court

of Appeals for the Sixth Cireuit, determining the validity

of both patents in the light of the record in this case, the

admissions of the respondent herein and the respondent’s

presently urged theory of 100% overlapping of the vanes

in fully open position, which is an incident to several prior

art patents. If this Court should determine the patents in

suit to be valid the rights of the public should be definitely

determined by fully defining the meaning and scope of the

claims, inasmuch as this has not been done by any court

considering them but which, without attempting to apply

to Exhibits B and C the Court of Appeals for the Sixth

Circuit has, on the basis of results accomplished thereby,

extended to cover prior art patents having spin control

vanes overlapping in space.

12

Prayer

WueEnerorE, your petitioner respectfully prays that a writ

of certiorari be issued to the Court of Appeals for the Sixth

Cireuit to the end that this cause may be reviewed and de-

termined by this Court in accordance with the principles

of law heretofore announced by it and that the judgment

of the Court of Appeals as to the finding of res adjudicata

and the application of the rules of res adjudicata in this

cause be reversed; that the finding of validity of Claim 2

of Hagen patent 1,846,863 and of each of the four claims

of the Hagen patent 1,989,413 and the finding of infringe-

ment of all of said claims by petitioner’s structures Exhibits

B and C be reversed; and that petitioner be granted such

other and further relief as may be proper.

CLarace Fan Company,

By Oris A. Ear,

Frep L. CHappeELt,

Ws. S. Hopes,

Attorneys for Petitioner.