Brief for the Respondents in Opposition — Heath v. Frankel

SUBJECT INDEX.

PAGE

Statement of the case 3

PATIO onan n en neen sean neseenevenpnensncennen seennnnnensnsnennnnsnnnonnamnensntans 5

TABLE OF AUTHORITIES CITED.

CAasEs. PAGE

General Talking Pictures Corp. v. Western Elec.’ Co., 304 U. S.

a

Hazel-Atlas v. Hartford Empire Glass Co., 322 U. S. 328........ 2,

Precision Instrument & Mfg. Co. v. Automotive Maintenance

Machinery Co., 324 U. S. 806............. 2,5, 6

Sinclair & Carroll Co. v. Interchemical Corp., 89 L. Ed. 1099... 2

Tennessee Coal I. & R. Co. v. Muscoda Local No. 123, 321

RE Bl a ercccteenstentreretternentttetnennecieteenennnnenanennenttanentt 5

Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U. 5.

a8 nm a

Wolverine Fab. & Mfg. Co. v. Detroit Gasket & Mfg. Co., 148

F. (2d) 399 2

SPS ENP T GRRE RES INS OE MY PTS

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IN THE

Supreme Court of the United States

October Term, 1945.

No. 1105.

Atmonp A. Heatu,

Petitioner,

veAY .

Henry G. FRANKEL and L. V. FRANKEL,

Respondents.

RESPONDENTS’ BRIEF IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI.

This case is before this Court on petition for a writ of

certiorari to the United States Circuit Court of Appeals

for the Ninth Circuit to review a decree of the Circuit

Court of Appeals [R. 1067] affirming a judgment [R.

72-75] of the United States District Court for the South-

| ern District of California, Central Division, adjudging

Patent No. 1,989,922 and Claims 1 to 10, inclusive, 12,

13, 15, 18 and 19 of Patent No. 2,203,280 invalid and

void for want of patentable novelty and invention [R. 67-

69; Findings of Fact 11-23).

The oral opinion of the District Court is found at R.

| 53-56; its Findings of Fact and Conclusions of Law, at

R. 65-71; the opinion of the Court of Appeals, at R.

| 1062-1065, reported in 153 F. (2d) 369.

Se PTR Ty RAR DISET es TART OIE ATLEAST UST ERS ENS

lie

We submit that this case presents no reason or ground

for the grant of certiorari such as is required by Rule 38,

subdivision 5, of this Court. No court has sustained any

of the patent claims in suit; there is no conflict of decision

with respect to the validity of such claims. This Court

has uniformly indicated that it will not review concurrent

findings of invalidity for want of invention in the ab-

sence of any conflicting decision sustaining validity of the

claims. In affirming the findings of the trial court that

the claims in suit did not involve more than the exercise

of ordinary mechanical skill and knowledge and did not

require invention, the Circuit Court of Appeals followed

and expressly applied the decision of this Court in Sinclair

& Carroll Co. v. Interchemical Corp., 89 L,. Ed. 1099, and

the opinion of the Sixth Circuit Court of Appeals in Wol-

verine Fab. & Mfg. Co. v. Detroit Gasket & Mfg. Co.,

148 F. (2d) 399. The decisions below are not in con-

flict with the opinions of this Court in Haszel-Atlas v.

Hartford Empire Glass Co., 322 U. S. 328, or Precision

Instrument & Mfg. Co. v. Automotive Maintenance Mach-

inery Co., 324 U.S. 806.

The petition herein does not seek a review of any of

these Findings of Fact or Conclusions of Law respecting

the invalidity of said patent claims.

We restate the case only in so far as is necessary to

correct inaccuracies and omissions in petitioner’s statement

with respect to the sole question (Pet. p. 3) for the review

of which certiorari is sought.

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SRG EINE OT SO OPT TS FRIES . -

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Statement of the Case.

Petitioner in his original complaint alleged ownership

and the grant to him of Patent No. 2,203,280 and infringe-

ment thereof by respondents-[R. 2-6]. Only the claims

adjudged by the District Court and the Court of Appeals

invalid, were alleged infringed. Respondents’ answer [R.

10-14] denied validity or infringement of Patent No.

2,203,280. Respondent Henry G. Frankel also served and

fled his “Counter Claim for Unfair Competition and

Cross-Complaint for Declaratory Relief Respecting Let-

ters Patent Nos. 1,989,922 and 2,203,280” [R. 15-30],

bringing in as a cross-defendant thereto Milo Harding

Co., Ltd., alleging an actual controversy between petitioner

and Milo Harding Co., Ltd., and respondent Frankel [R.

16-20] respecting the invalidity of such patents [R. 20-

25], denying infringement [R. 25], and alleging unfair

competition of petitioner and Milo Harding Co., Ltd.

Judgment of invalidity of the patents was prayed, together

with an injunction and damages [R. 27-9]. Respondents’

answer to the original complaint denied that petitioner

was the original and first inventor of anything patented

in Patent No. 2,203,280; that the claimed invention had

been described in sundry printed publications; and that

it had been known and used by sundry persons, including

respondent Henry G. Frankel [R. 9-12]. Respondent

Henry G. Frankel’s counterclaim and cross-complaint

similarly alleged the invalidity of Patent No. 1,989,922

for the same reasons [R. 20-23], including the allegation

TES ELE SE LEE EERO RRS NEE RINE, NETS ESTE ET TS MED TRIN EE PONS

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of prior knowledge and use by respondent Henry G.

Frankel.

In making its Findings of Fact or Conclusions of Law |

respecting the invalidity of the patents, the District Court _

did not rely upon any of the matters, testimony, or ex-

hibits offered with respect to the allegation of prior

knowledge and public use by respondent Henry G. Frankel

of the patented invention. The facts found by the Dis-

trict Court and affirmed by the Court of Appeals were

proven by the testimony of witnesses having no connec-

tion with respondents and by documents and printed pub-

lications produced by them.

The District Court said [R. 54]:

“Referring now to the counterclaim, and to the

issue of unfair competition, the court finds in favor

of the cross-defendants.

“It is with great regret that the court reached the

conclusion—but it was compelled to—that these de-

fendants have come here with unclean hands. I am

thoroughly in accord with that position, which has

been contended for by the cross-defendants, because

of the testimony of Mr. Buys, the expert, which I |

think conclusively shows that Exhibits Y and Z were _

fabricated, and under such circumstances, in the opin- fF -

ion of this court, the counterclaimants may not re-

cover.”

ee ecient

Therefore the District Court awarded judgment against

respondent H. G. Frankel for five hundred dollars ($500)

for “the necessary costs and disbursements incurred by

EP SAI PR —

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plaintiff in connection with the hiring of plaintiff’s hand-

writing expert, * * *” [R. 74].

No fact creating any estoppel against respondents was

presented to or found by the District Court.

Argument.

(a) In view of the concurrent findings of the courts

below that the claims in suit are invalid for want of in-

vention, and in the absence of any conflict of decision,

this is clearly not a proper case for the grant of a writ

of certiorari. This Court has recently announced that it

will not disturb concurrent findings as to the validity of

| patent claims where there is evidence to support them and

/ no conflict of decision. (Williams Mfg. Co. v. United

| Shoe Machinery Corp., 316 U. S. 364, 367; General Talk-

ing Pictures Corp. v. Western Elec. Co., 304 U.S. 175;

Tennessee Coal I. & R. Co. v. Muscoda Local No. 123,

\ 321 U. S. 590).

(b) The case does not present any question of estoppel.

This Court has never decided that, because of inequitable

conduct or unclean hands, the Court should enter judg-

ment against such defendant that an invalid patent is

valid. Neither Hazel-Atlas v. Hartford Empire Glass Co.

nor Precision Instrument & Mfg. Co. v. Automotive

Maintenance Machinery Co. involved any such question.

The issue of patent validity was of paramount public

interest. It was decided by the courts below upon un-

impeached proofs. A review of such decisions is not

sonliians.

here sought by the petitioner. As said by the court in

Precision Instrument Mfg. Co. v. Automotive Maintenance

Machinery Co., supra:

“In the instant case Automotive has sought to en-

force several patents and related contracts. Clearly

these are matters concerning far more than the inter-

ests of the adverse parties. The possession and as-

sertion of patent rights are ‘issues of great moment to_

the public.’ Hazel-Atlas Glass Co. v. Harford-Em-

pire Co., 322 U. S. 238, 246 (61 USPQ 241, 245). ,

See also Mercoid Corp. v. Mid-Continent Investment |

Co., 320 U. S. 661, 665 (60 USPQ 21, 24); Morton,

Salt Co. v. Suppiger Co., supra; United States v.|

Masonite Corp., 316 U. S. 265, 278 (53 USPQ 396, |

402). A patent by its very nature is affected with al

public interest. As recognized by the Constitution, i

is a special privilege designed to serve the public pur

pose of promoting the ‘Progress of Science and Use

ful Arts.’ At the same time, a patent is an exceptio

to the general rule against monopolies and to th

right to access to a free and open market. The far

reaching social and economic consequences of a paten

therefore, give the public a paramount interest it

seeing that patent monopolies spring from back+

grounds free from fraud or other inequitable con-

duct and that such monopolies are kept within theit

legitimate scope. The facts of this case must act

cordingly be measured by both public and private

standards of equity. And when such measurements

are made, it becomes clear that the District Court’s

action in dismissing the complaints and counterclaims,

‘for want of equity’ was more than justified.” \

\

meneame SEL FL MOL PE LILLIE PANEER EM BOGIES POE AG :

Kae? LRT LOI AOI LE ARG TS PROTA OPO LEO ADE

LIPO EE ON S ITGSR

as

| Admittedly the question (patent validity) of paramount

| public interest was correctly decided and adjudged. The

| petitioner herein does not contend or urge otherwise.

We submit that this case does not present any suf-

ficient reason for the grant of a writ of certiorari within

| the rulings and practice of this Court. It presents no

disputed proposition of patent law, and the decisions

below do not conflict with any applicable decision of this

Court.

Respectfully submitted,

FREDERICK S. Lyon,

Lewis E. Lyon,

Attorneys for Respondents.

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