Opposition Brief — Foxboro Co. v. Taylor Instrument Companies

B OMMes - Susieme Ocurt, U. 3.

FILAD

FILE COPY DEC 19 1946

CHAMLES ELMORE ORDPLIY

ERX

Supreme Court of the United States

October Term, 1946

No. 704... '/ 4.0)

THE FOXBORO COMPANY,

Petitioner,

vs.

TAYLOR INSTRUMENT COMPANIES,

Respondent.

—_—

ee

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

nae mere ern amnn n

Drury W. Cooper, ,

D. Cuype Jonzs, //

Drury W. Cooper, JR.,

Counsel for Respondent.

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- TO,

INDEX

PAGE

1. Petitioner’s First Point ............... cece eeees 2

2. Petitioner’s Second Point ................ee eee. 5

8. Petitioner’s Third Point ...........cccccccccees 8

4. Petitioner’s Fourth Point ..................068- 10

Rasrompanmr’s Poms ........cccsscccccccccsccccnes 11

5. The Mason Patent is Void for not Disclaiming All

that Should have been Disclaimed ............. ll

Wiis OF GE 6 ons ko 004605cccasnceccis 16

e.g chnecten beknhehee enki heheeeeeeneen 20

Table of Cases

Bellavance v. Frank Morrow Co., 140 F, 2d 419, at pp.

422-3 (C. C. A. 1) certiorari denied, 322 U.S.472... 4

Brooks et al. v. Fiske, 15 How. (56 U.S.) 212 ........ 18

Ensten v. Simon, Asher & Co., 282 U. S. 445, 453 ...... 16

General Electric Co. v. Wabash Electric Co., 304 U. S.

cn Ken cdncdecnnbecghcssanscnbscnencueeeenceenss 19

Haliburton Oilwell Cementing Co. v. Walker, decided

Movember 18, 1966 2... cvcsccccccccsscccecscseses 18, 19

Hanovia Chemical & Mfg. Co. v. David Buttrick Co.,

ge & | Fe eS | Be errrrerr rr eT 7

Heald v. Rice, 104 U. S. 737, 749 20... cee eee e ee eee 6

Himmil Bros. Co. v. Serrick Corporation, 122 F. 2d 740

OD, Bi. FD) nccesncvesscccnccvcensccacacwasnnsss 7

ii

; PAGE

~ Tasue or Casgs (Continued)

Kuhn v. Princess, ete., 119 F’. 2d 704 (C. C. A. 3) ...... 7

Marconi Wireless Telegraph Company of America v.

eo GS 8 ree 11, 13, 15

Maytag Co. v. Hurley Co., 307 U.S. 243 .............. 14

McClain v. Ortmayer, 141 U. S. 419 ................. 9

Murray v. Noblesville Milling Co., 131 F. 2d 470

SU MEMEEED SANGaGNAGNAR GAHAN NEA A Sadcenbudenasien'’s 7

Paquette et al. v. Potter Mfg. Co., 46 F. 2d 271, 272

Si MALMO 454600 a 56Gb nen 6 5nnh 05566 06540050044 14

Picard v. United Aircraft Corporation, 128 F. 2d 632,

636 (C. C. A, 2), certiorari denied 317 U.S. 651 ..... 4

Potts v. Crenaet, 200 U. GH. GBT. wc ccc cece cc ccccunses 6

Sinclair & Carroll Co. Inc. v. Interchemical Corp., 325

ED Sie eC RGRAWESEGWAE SON KaS Weave enaNne’ 4,7

Singer v. Cramer, 192 U.S. 265, 275 ..............0., 6

State Farm Mutual Automobile Insurance Co. v. Bon-

naci, 111 F’. 2d 412, 415 (C. C. A. 8) 2... ccc cee eee 7

Smyth Mfg. Co. v. Sheridan et al., 149 Fed. 208, 211

i ce ree ee wie uh en kin Gh he cenewnes 13

United Carbon Co. v. Binney, 317 U. S. 228 .......... 18

U. S. Gypsum Co. v. Consolidated Co., 130 F. 2d 888,

892 (C. C. A. 6), certiorari denied, 317 U.S.698 .... 4

United States v. Esnault-Pelterie, 303 U. S. 26,30 .... 6

Statutes and Rules

Federal Rules of Civil Procedure, Rule 52 ........... 5

R. S. Sec. 4888 (35 U. S. C. A. Sec. 33) .............. 18

Supreme Court of the United States

October Term, 1946

No. 704

“>

Vv

Tue Foxsoro Company,

Petitioner,

vs.

TayLor InstruMENT CoMPANIES,

Respondent.

0

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

i The petition for writ of certiorari and supporting brief

nowhere describe the patent in suit, or the supposed inven-

‘ tion that it contains; much less does either discuss the prior

art which the Court of Appeals found to leave no room for

3 invention in the claims in issue; but, by purely abstract

statements seek to show that that Court made a decision

that should be reviewed by this Court. No effort is made to

analyze the huge record that is tendered.

The decision below is reported, 157 F. 2d 226.

6d amet

——— < eZ

4 The petition and supporting brief set forth four alleged

reasons for the allowance of the writ which will be dis-

cussed seriatim herein. It will be shown that no reason for

allowance exists and that, therefore, the petition should be

{ denied.

NE SE eee oe a ee ee,

to

1. Petitioner’s First Point.

The first reason (Pet. 2-3) sets forth that there is a

conflict between the decision in the instant case by the

Court of Appeals for the Second Circuit and those of the

First, and other circuits, because the Second Circuit Court

‘*based its decision on an erroneous assumption that the

Supreme Court in recent decisions has revolutionized the

law determining the boundary between invention and skill-

ful application’’.

We shall not attempt to refute this alleged conflict be-

tween the circuits because the Court of Appeals for the

Second Circuit, in this case, did not rest its decision on

‘‘the change in recent years in the standard of invention

adopted by the Supreme Court’’ as urged by petitioner

(Pet. 2, last two lines). While the Court, in the last para-

graph of its opinion, did make the statements quoted on

the last three lines of page 2 and top of page 3 of the peti-

tion, yet it should be noted that it began that paragraph

with these words (R. 1558): ‘‘Finally, when all else is said,

we cannot ignore the change in recent years * * *’’. This

shows clearly that it was an added reason and not the main

reliance for the holding of invalidity.

Prior to that last paragraph the court had set forth

cogent reasons for that holding having nothing to do with

the so-called change in the test of invention by the Supreme

Court. The Court actually held the patent in suit invalid

because, while there were some differences in its disclosure

over the prior art, yet those points of distinction were not

included in the claims which themselves were not distin-

guishable over the prior art. This is shown by the follow-

3

ing quotation from the opinion of the Court of Appeals

(R. 1555-6) :

‘‘That there are differences between the disclo-

sures of these three prior patents and Mason’s is

true, but these are irrelevant except in so far as they

appear in Mason’s claims, and they do not appear

there, except the element of an ‘elastic fluid’ in all

but the first three; and Wiinsch disclosed ‘air’ or a

‘gas’ as an alternative to ‘oil’.* We should have no

warrant for limiting the claims by the elements of

the disclosure which they do not include, even if the

elements were new. A patentee who claims broadly

must prove broadly; he may not claim broadly, and

recede as he later finds that the art unknown to him

has limited his invention. That is the chance he must

take in making broad claims; if he has claimed more

than he was entitled to, the statute does give him a

locus poenitentiae, but he must seasonably disclaim

the broad claims in toto. He may not keep them by

interpretative limitation ; he must procure new claims

by reissue. This is the significance of Milcor Steel

Co. v. George A. Fuller Co., 316 U. S. 143. This ap-

plies with exceptional force to the case at bar, in

which Mason not only had his day in the Patent Of-

fice, but twice thereafter amended his claims; first,

by his disclaimer, next, by reissue. It is true that

Mason’s single figure discloses no ‘needle valve’ in

the pipe, ‘43’, and the flapper, ‘35’, as free from any

opposing force, yet from start to finish neither the

claims nor the specifications so much as intimate that

either of these features was an element of the inven-

tion. It would be enough to prevent such an inter-

pretation of the claims that, after so many efforts

the claims remained silent upon these details, even if

the specifications had mentioned them; but the inter-

pretation becomes doubly impossible when we re-

member that no invention can be saved by features

which appear only in the figures, and are not men-

* Emphasis supplied unless otherwise noted.

4

tioned in the text. Permutit Co. v. Graver Corp., 284

U. S. 52, 60; Vickery v. Barnhart, 118 Fed. (2) 578,

oe (CG, © F. 23." * * *

‘*For these reasons, merely as a matter of inter-

pretation, we could not properly save the claims by

incorporating into them those elements upon which

the plaintiff relies to distinguish from the prior art;

and even if we could, it would not save them.’’

Thus it appears that the last paragraph of the opinion,

upon which petitioner bottoms its first point, is nothing

more than another reason for the reversal, philosophically

discussed.

Cases in which statements by the Courts of Appeals

similar to that here relied upon, have been made the basis

of application for review by this Court and denied, are

Picard v. United Aircraft Corp., 128 F. 2d 632, 636

( C. C. A. 2), certiorari denied 317 U.S., at page

651;

Bellavance v. Frank Morrow Co., 140 F. 2d 419, at

pp. 422-3 (C. C. A. 1), certiorari denied, 322

U. S. 472;

U. S. Gypsum Co. v. Consolidated Co., 130 F. 2d

888, 892 (C. C. A. 6), certiorari denied, 317 U.S.

698.

On page 14 of its brief, petitioner cites Sinclair é Car-

roll Co. Inc. v. Interchemical Corp., 325 U. 8. 327, 330 in

support of the principle that invention should be only more

than the ‘‘mere exercise of the skill of the calling.’’ In that

case this Court independently construed the prior patents

and patent in suit, just as the Court of Appeals did in the

instant case. In the Sinclair case, the District Court held

the patent invalid and not infringed. The Court of Ap-

peals reversed both holdings, and this Court reversed the

Court of Appeals and held the patent invalid. It is in-

teresting to note that this Court did not refer to the find-

ings of the District Court and did not apply the principles

of Rule 52 of the Federal Rules of Civil Procedure—for

the obvious reason that the patent and the prior art were

conceded facts which the Court could see for itself left no

room for invention. This topic is discussed under the next

heading.

2. Petitioner’s Second Point.

_ The second point which petitioner raises is that the

Court of Appeals ‘‘has substituted its judgment, not of law

but of pure fact on the question of invention (citing cases),

for that based upon the oral evidence * * * heard and be-

lieved by the judge of the District Court who decided this

question of fact on the evidence in the case’’ (Pet. 3). Such

reversal is asserted to be in conflict with many opinions of

this and lower courts. This is argued at pages 1415 of

the supporting brief under the title ‘‘The error in reversing

a finding of fact of the District Court based on ample sup-

porting oral evidence’’.

Petitioner is in error in taking this position for the Cir-

cuit Court of Appeals did not substitute its judgment on a

question of fact based on oral evidence for that of the Court

below. As appears from the opinion of the Court of Ap-

peals, its reversal is based on documents in the case, namely

what the prior art patents and patent in suit clearly dis-

close. This is apparent from the discussion of what is

clearly apparent on the faces of the Mason patent in suit

(R. 1545) the prior Lindsay (R. 1548-50), Wingfield (R.

6

1550-2), and Wiinsch (R. 1552-5) patents, leading to the

conclusion:

- “That there are differences between the disclo-

sures of these three prior patents and Mason’s [the

patent in suit] is true, but these are irrelevant except

in so far as they appear in Mason’s claims, and they

do not appear there, except the element of an ‘elastic

fluid’* in all but the first three; and Wiinsch dis-

closed ‘air’ or a ‘gas’ as an alternative to ‘oil’ * *’’

(R. 1555).

The Court of Appeals correctly went to the disclosure of

the patent in suit and those of the prior patents, and made

its own comparison to decide whether the patentee’s struc-

ture was to be classified as a patentable invention or whether

it was not. Potts v. Creager, 155 U. S. 597; Heald v. Rice,

104 U. S. 737, 749; Singer v. Cramer, 192 U. S. 265, 275;

United States v. Esnault-Pelterie, 303 U. S. 26, 30. These

authorities establish that not only when there is no sub-

stantial dispute either as to the devices of the prior art

or as to what the patentee did, but also when the prior art

and what the patentee did is clearly apparent to the appel-

late court from the record and exhibits, then it is for that

Court to compare the alleged invention with the prior art

and from that comparison to say whether the patentee’s

structure is to be classified as a patentable invention over

* The idea of “elastic fluid” did not come into the claims until the filing on

May 11, 1933 of disclaimer with respect to the original of the reissue patent in

suit (Defdt.’s App. 399). This was two years and eight months after the filing

of the Mason application on September 15, 1930 (Defdt.’s App. 296) and three

months after the granting of the original Mason patent.

** The specification of the Mason patent in suit merely calls for “Fluid under

pressure, such as compressed air * * *” (Defdt.’s App. 296, col. 1, lines 41-2) and

the claims as originally issued cover any pressure whether oil, water or air

(Defdt.’s App. 396).

a

the prior art or whether it is not. See Hanovia Chemical &

Mfg. Co. v. David Buttrick Co., 127 F. 2d 888 (C. C. A. 1).

This is what this Court did in Sinclair & Carroll Co. Inc. v.

Interchemical Corp., 325 U. S. 327 (supra).

This rule applies all the more strongly in the instant

case because the trial court made no true finding of fact

below with respect to the prior art. It made only a general

conclusion with respect to invention over the prior patents.

The only place in the findings where the District Court

dealt with the prior art patents, upon which the Court of

Appeals based its reversal, is in the following finding:

«58. The defendant cited and introduced evidence

relating to the following prior art patents, publica-

tions and devices: Wingfield Br. Patent No. 254,469,

Lindsay Br. Patent No. 218,370, Lindsay Br. Patent

No. 234,194, Smoot 1,680,750, Wiinsch 1,959,889, Fry-

moyer, 1,799,131, Mason 1,950,989, Trinks’ Book, Hy-

erostat, Taylor Type P Controller, Taylor Type D

Controller, Smoot Controller, Taylor Type 3R Con-

troller, Taylor Type 27R Controller. None of them

anticipates the inventions of Mason as disclosed in

the patent. The inventions of Mason constitute pat-

entable improvement and invention over the subject

matter of all of the prior patents, publications or de-

vices herein referred to.’’ (Defdt.’s App. 689)

The above quoted conclusion falls into that category

where the appellate courts are not bound by Rule 52 of the

Federal Rules of Civil Procedure, but are free to decide

themselves. Himmil Bros. Co. v. Serrick Corporation, 122

F. 2d 740 (C. C. A. 7); Murray v. Noblesville Milling Co.,

131 F. 2d 470 (C. C. A. 7); Kuhn v. Princess, etc., 119 F.

2d 704 (C. C. A. 3); State Farm Mutual Automobile Insur-

ance Co. v. Bonacci, 111 F. 2d 412, 415 (C. C. A. 8).

At the very end of its opinion, the Court below adverted

to the plaintiff’s mode of trying the case—which apparently

had befuddled the trial Court—by saying ‘‘once the

cloud of complicated scientific theory, with which it [7.e., the

patent] has been surrounded, is blown away, and the issues

are bared as they really are, we have no doubt’’ (R. 1558)

of its disposition.

Therefore we say the Court of Appeals was fully justi-

fied in the course it took to relieve the public of the incubus

of an invalid patent.

3. Petitioner’s Third Point.

Petitioner’s third point is that the Court below, in its

decision, rejects ‘‘the industry’s acceptance of these ma-

chines as any evidence whatever that Mason’s claims were

valid’’ (Pet. 3). This statement was made by the Court of

Appeals, but petitioner has lifted it out of its context there-

by changing its meaning, and from that argues that the suc-

cess ‘‘was directly attributable to the novel combination

claimed’’ (Pet 16).

The Court, after a general discussion of success, men-

tioned factors other than novelty and value of the disclosure

which might account for success. It then said (R. 1557):

‘In the case at bar let us, nevertheless, eliminate all

such possible factors; let us suppose that it was only

the differences between the disclosure of Mason and

those of Lindsay, Wingfield and Wiinsch, which for

the first time made possible a machine acceptable to

the art. We should still be as far as ever from any

safe use of this evidence, for the question is of the

success to be attributed to that part of the disclosure

which the claims have selected.’ Only in case we have

1 See the discussion of petitioner’s assertion with reference to success as

related to the combination claimed, at page 19 hereof.

eaad

some assurance that the success was here due to

those factors by which the claims differed from the

prior art, ought we take it as a criterion; and it

would certainly be a gratuitous assumption to sup-

pose that the industry’s acceptance of these ma-

chines was due in any measure to those factors in

the claims if indeed there are any. We therefore

reject the industry’s acceptance of these machines

as any evidence whatever that Mason’s claims were

valid; and, being thrown back upon any advance

over the art discoverable in them, we are at a loss

to find any unless it be the gathering of factors which

had all appeared before. When that occurs by a

gathering from remote arts, it is often an index of

much insight and perspicacity; but not when the

combination is of factors to be found in the very

field, and especially in so special a field as this; and

certainly not when the tempo has been so swift as

it was here’’ (R. 1557-8).

In the first place, commercial success can only be con-

sidered as supporting invention when doubt exists (McClain

v. Ortmayer, 141 U. 8. 419). The Court of Appeals neither

expressed nor inferred doubt of validity.

In the second place, the Court of Appeals held that

none of the differences of the Mason patent over the prior

art appeared in the claims in suit (R. 1555). Thus, in the

portion of its opinion last quoted, no success could be at-

tributed to any differences over the prior art, which imme-

diately brought the Court to considering the success as at-

tributable to ‘‘the gathering of factors which had all ap-

peared before’’ (R. 1557, bottom). Directly after this,

the Court said (R. 1557, foot) :

‘When that occurs by a gathering from remote arts,

it is often an index of much insight and perspicacity ;

but not when the combination is of factors to be

found in the very field, and especially in so special

field as this; and certainly not when the tempo has

been so swift as it was here.’’

10

It is because of this, and because there was no doubt

of invalidity, that the Court of Appeals rejected any evi-

dence of success to support validity, and in this it was

upon absolutely sound ground—long since settled as indi-

cated by the McClain case just cited.

We submit that this point does not stand analysis, and

should be rejected.

4. Petitioner’s Fourth Point.

The fourth point which petitioner attempts to make in

support of its petition is that the Court of Appeals ‘*has

decided as a fact that in this art ‘the tempo has been * * *

swift’ ’? and argues that ‘‘The decision conflicts with the

oral testimony of the witnesses seen, heard and believed by

the judge of the District Court who decided this question

of fact on this evidence, as to which there was no conflict’

(Pet. 4—argued pp. 17-8).

There was nothing to prevent the Court of Appeals from

so holding in view of the undisputed facts that the prior

patents to Lindsay, in 1925, Wingfield, in 1926 and Wiinsch,

in 1929—upon which it relied (R. 1548-52)—were quickly

followed by the application for the patent in suit in 1930 (R.

1545). As that Court held ‘‘the law unsparingly charges

him [the patentee of the patent in suit] with an acquaint-

ance with all the earlier developments of the art’’ and that

‘his work is merely the latest refinement of a continuous

progress, proceeding by trial and error’’ (R. 1557). The

prior patents referred to were of course those which the

Court of Appeals said contained the elements of the pat-

entee’s claims (R. 1555).

11

In addition, petitioner’s point is wholly collateral since

+t makes no difference whether the tempo was swift or slow,

because regardless of that the elements of the claims were

all found in the three prior patents.

We submit that the point is wholly lacking in substance.

RESPONDENT’S POINTS

There are certain points not mentioned by petitioner

which have a bearing upon the grant or denial of the peti-

tion.

5. The Mason Patent is Void for not Disclaiming

All That Should Have Been Disclaimed.

This point was decided adversely to the defendant (re-

spondent here) by the Court of Appeals, but the Court did

not consider the case in this Court controlling on the facts,

although it was pressed in the defendant’s brief in the

Court below. That is the case of Marconi Wireless Tele-

graph Company of America v. United States, 320 U.S. 1.

The facts at bar are these: The original patent was ap-

plied for September 15, 1930, and granted February 14,

1933 (Defdt.’s App. 296). On March 27, 1933, Frymoyer

of plaintiff wrote to Swift of defendant charging infringe-

ment of the original of the patent in suit by its Fulscope-

Dubl-Response Controller (Defdt.’s App. 324-5), which had

been on the market since shortly before September 19,

1932 (Defdt.’s App. 33).

Swift immediately replied, March 30, 1933 (Defdt.’s

App. 326) and advised Frymoyer of four prior patents

>.

12

which negatived the novelty of the claims of the original

patent. Frymoyer says he had never previously seen any

of these prior patents (Pltff.’s App. 925) and the record

shows that immediately recognizing their controlling im-

portance he consulted with Miller, his patent attorney

(Pltff.’s App. 926), and with the officers of his company.

But he did not communicate with defendant.

After discussions with plaintiff’s counsel of the cited

prior patents (Exs. P-152-5, Defdt.’s App. 327-31), and as a

result of them, a disclaimer was drawn up, signed and

filed (Pltff.’s App. 926-7) May 11, 1933. Among other

things there was disclaimed ‘‘the subject matter’’ of claim

3 of the original patent (Defdt.’s App. 399). That claim is

identical with claim 4 of the original patent (claim 2 of the

reissue in suit and relied on by petitioner, in the District

Court as typical) except for the addition of the last four

lines of claim 2 which are here printed in italies:

‘*2. A fluid-pressure-operated control mechanism

of the supply and waste valve type comprising a con-

trol couple, one element of which affords a port to

atmosphere and the other a valve for said port, the

relative approach and recession of said elements

governing the pressure in the system, and means con-

jointly to control the relative position of said ele-

ments comprising a device responsive to the fluctua-

tions of a variable condition which is affected by the

controlled action, and a chamber subject to the con-

trolled pressure having a part movable responsively

thereto, said chamber being adjustably movable as

a whole and by such adjustment effecting movement

and adjustment of one of said elements relative to

the other’’ (Defdt.’s App. 299, 396).

The drawing shows and the specification of the Mason

patent (original, Defdt.’s App. 391—reissue, Defdt.’s App.

eee

13

295) describes a particular way of securing adjustability

of the nozzle relative to the flapper of the control couple,

namely, ‘‘adjusting screw 49’’ (p. 1, col. 2, lines 36-7,

Defdt.’s App. 296) so that the adjustment may be made

manually for new conditions encountered. Without that

mechanical feature adjustability is unobtainable in the

Mason device. The adjustability is intended to set the

mechanism to control at different selected temperatures

just as the household thermostat can be set manually, for

example, at 65, 70, 75 degrees. It takes no part in the opera-

tion of the combination, but, once set, continues unchanged

until manually readjusted (Defdt.’s App. 296, Pat. p. 1,

col. 2, lines 53-4).

The last clause of claim 4 of the original (claim 2 of

reissue in suit) is merely a functional statement of adjust-

ability and does not mention, indicate or describe any ele-

ment by which that function is to be attained.

The fact that a part is made adjustable has never been

considered by the courts as constituting a definite or patent-

able distinction over that which is old or even between

claims themselves.

In Marconi Wireless Telegraph Company of America

v. United States, 320 U. S. 1, 32, the Court said:

‘‘The variable inductance imparted no new function

to the circuit; and merely making a known element

of a known combination adjustable by a means of

adjustment known to the art, when no new or unex-

pected result is obtained, is not invention.’’ (Citing

cases.)

‘‘Mere adjustability of parts does not constitute in-

vention.”? Smyth Mfg. Co. v. Sheridan et al., 149

Fed. 208, 211 (C. C. A. 2).

SPN POLONE AR cea ee

14

Since ‘‘the subject matter’’ of claim 3 was disclaimed,

making that ‘‘subject matter’’ adjustable as in claim 2) of

the reissue, did not make it patentable.

“It involved adjustability only and adjustability, js

not invention.’’ Paquette et al. v. Potter Mfg. Co.,

46 F. (2d) 271, 272 (C. C. A. 6).

Upon the above state of facts it is defendant’s cont-en-

tion that Mason original patent is invalid for failure to @is-

claim indistinguishable subject matter, i.e. claim 4 of the

original (claim 2 of the reissue in suit), when he disclaimed

claim 3 of the original; and the reissue is invalid becayse

claim 4, the claim of the original which should have been

disclaimed, came over into the reissue unchanged as claim

2 in suit, and is still held in terrorem over the art. It was

relied upon as ‘‘typical’’ by our adversaries, and was sus-

tained in the District Court.

When plaintiff, upon notice from the defendant of cer-

tain prior patents, filed its disclaimer on May 11, 1933, giv-

ing up the entire subject matter of claim 3 and admitting

through Mason that it was not his invention, it was in diuty

bound to disclaim the patentably indistinguishable claim 4

(claim 2 in suit) and failure to do so brings it under the

rule of Maytag Co. v. Hurley Co., 307 U. S. 243.

In that case claims 1 and 38 had been disclaimed by

plaintiff after an adjudication of their invalidity. But the

court held that another claim, 39, not in issue in the prior

suit or there, was not patentably distinguishable from those

which had been disclaimed. In holding the entire patent: in-

valid for failure to disclaim claim 39, the Supreme Court

said:

15

“There has been unreasonable neglect or delay in

entering a disclaimer of claim 39 within the meaning

of R.S. 4917, and R.S. 4922, unless that claim is

‘definitely distinguishable from the parts claimed

without right’,—that is, the disclaimed method

claims 1 and 38. This must be so, for the company,

by disclaiming those claims, has confessed that the

patentee therein claimed ‘more than that of which

he was the original or first inventor or discoverer’

and that the company, as assignee of the patent,

therefore, ‘did not choose to claim or to hold’ the

method therein disclosed ‘by virtue of the patent or

assignment.’ ’’ Maytag Co. v. Hurley Co., 307 U.S.

243, 245.

The only distinction between the facts in the Maytag

ease and those at bar is that in the former a court had held

the disclaimed claims to be invalid, while in the latter the

disclaimer was the result of plaintiff’s being convinced by

defendant’s citation of prior patents that claim 3 was in-

valid.

Petitioner, in the Court below, has attempted to distin-

euish the case at bar from the Maytag case on the ground

that the disclaimer here was voluntary, but we submit that

that is not a proper difference. In fact, it was due to the

defendant’s calling attention to prior patents.

Besides, the language of the Maytag case admits of no

such distinction. But the point of asserted distinction was

overruled by this Court in Marconi Co. vy. U. S., 320 U. 8.1,

58; which held that a voluntary disclaimer filed some years

after the grant of the patent was too long delayed in view

of patentee’s knowledge of a certain prior patent, where

there had been no decision sustaining that as a defense.

In holding the patent invalid the court said:

‘The purpose of the rule that a patent is invalid

in its entirety if any part of it be invalid is the pro-

= ty i

LB YN SOT Fle ge

EE

16

tection of the public from the threat of an invalid

patent, and the purpose of the disclaimer statute is

to enable the patentee to relieve himself from the

consequences of making an invalid claim if he is able

to show both that the mvalid claim was madvertent

and that the disclaimer was made without unreason-

able neglect or delay. * * * Here the patentee has

sustained neither burden.’’

In the instant case the patentee did not merely let the

invalid claim remain in the patent as in the Marconi case;

he deliberately preserved it by asserting it in the reissue

and in the Courts below as in the Marconi case, he ‘‘has

sustained neither burden’’.

This is the case which the Court below failed to notice,

although it was stressed in our brief to that Court.

We submit that the rule in the Maytag case is applicable

whether the disclaimer was made as a result of a court hold-

ing of invalidity or whether voluntary.

Since

‘*Delay begins whenever the patentee becomes aware

that he has claimed more than he has invented or de-

scribed.’? Ensten v. Simon, Asher & Co., 282 U.S.

445, 453,

plaintiff’s delay has continued for more than 13 years, i.e.

since May 11, 1933, the date of the insufficient disclaimer,

until the present time.

6. Indefiniteness of Claims

Petitioner asserts (Pet. p. 6) that ‘‘claims 10 and 13 are

definite’’. We say, on the contrary, that petitioner in the

Court below, brought in two unnamed elements, in order to

distinguish the prior art: The indefiniteness of the claims,

-_~- =

A. TTT

17

10 and 13, which alone are pressed here, grows in part out

of their use of the phrase ‘‘control mechanism of the supply

and waste valve type’’. By the specification (Defdt.’s App.

296; patent in suit, col. 1, lines 36-41 and lines 50-55) this

undoubtedly refers to the flapper 35 and nozzle 31. That

this is true of the specification was asserted in our brief

below and not denied. Yet in their brief below our adver-

saries (at page 14 and elsewhere) referred to a wholly dif-

ferent part—namely ‘‘control head 19’’, which they now

eall a ‘‘relay’’? valve—as controlling the supply and waste.

Again, neither claim mentions a spring as a part of the

so-called motors—39, 53 of the drawings,—nor is it de-

scribed in the specification. Yet it is asserted in our adver-

saries’ brief below to be a substantive part of both the so-

called ‘‘proportioning”’ controller (PItff.’s Brief below,

p. 15) and the so-called ‘‘reset’’ controller of the patent

(claim 10 is on the proportioning controller ; claim 13 on the

reset). As to this element it was found by the trial court

that without it the operation described in the patent could

not take place (Defdt.’s App. 660).

It is these alterations in the claims that are parts of all

the devices upon which petitioner relies for its proof of

commercial acceptability. They give pertinence to the un-

certainty of the claims; indeed, they make of them the

traditional ‘‘nose of wax’’.

It should be understood that plaintiff relies on its peti-

tion for a review of the entire case. But there were pressed

upon the court below all the claims except No. 18, and a

mere perusal of them will show many that are so fulginous

as to pass understanding. For example claims 11, 12, 13,

15 and 16 prescribe the ‘‘rate of change of condition’’; but

dy cmt - oycatet.

PIPE IE SE SAAT EIR

18

what that is, is not set forth in the specification. In claims

19 to 24 means are set forth which are movable in accord-

ance with a ‘‘predetermined asymptotic curve’’; but that

term is not in the specification, and Mason, the patentee,

seems to admit that what is disclosed is not an asymptotic

curve (Defdt.’s App. 656).

Claims 17 to 25 were not in the original patent but were

added in the reissue [compare Defdt.’s App. p. 397 with

pp. 311-2]. These added claims are, we submit, entirely in-

definite. They substitute for distinct statements of the parts

of a combination, recitals of ‘‘means’’ and of functions of

such means in such involved language as to be practically

non-understandable. For that reason they are all invalid

under a long line of cases in this Court, from Brooks et al.

v. Fiske, 15 How. (56 U. S.) 212, to Haliburton Oilwell

Cementing Co. v. Walker, decided on November 18, 1946.

Mason was interrogated as to the meaning of the claims,

including claim 25, which uses the word ‘‘means’’—for do-

ing this or that—13 times. He said he would not try to

answer that question if the claim used the term but once

(Defdt.’s App. 655). That is, the inventor himself had

no understanding of the claims of his patent. How, then,

could the public apprehend their meaning? Compare

United Carbon Co. v. Binney, 317 U. S. 228, wherein as

appears particularly at pages 233 et seq., the patentee gave

such interpretation to the claims as to make that which ap-

peared to be definite so uncertain as to vitiate the patent.

All this seems to establish beyond ecavil that R. S. See.

4888 (35 U. S. C. A. See. 33) requiring distinctness of

claims, has not been complied with, and the patent is there-

fore invalid as to all its claims except No. 18 which is not in

suit.

—

19

General Electric Co. v. Wabash Electric Co., 304

U. S. 364;

Haliburton Oilwell Cementing Co. v. Walker, De-

cided by this Court Nov. 18, 1946.

At page 16 of the Petition, the top full paragraph gives

an entirely erroneous impression of the evidence, since it

introduces the statement by the sentence that ‘‘the success’”’

[of the Mason device] ‘‘was directly attributable to the

novel combination claimed.’’ The first three references to

the record are to witnesses who, so far as appears, had no

knowledge whatever of the patent in suit, made no refer-

ence to its claims, and were simply describing the utility of

the petitioner’s devices, which contained the improvements

of scores of patents besides the one in issue. So with the

series of references to Mason’s testimony. He was dealing

with the plaintiff’s commercial devices, or else with the

specification of the patent, or with a Bristol patent, or with

one of defendant’s instruments, at the pages cited. He made

no reference whatever to the claims, and on cross-examina-

tion disclaimed all knowledge of them (Pltff.’s App. 695).

It is the fact that the trial Court found that both ‘‘pro-

portioning’’ and ‘‘proportioning plus reset’’ controllers

were old (finding 16, Defdt.’s App. 681} bat that they were

operated by a ‘‘ powerful’’ measuring element; and (finding

No. 17) that none was operable by a *‘weak’’ measuring

element. But neither specification nor claims of Mason

describes or is limited to weak or strong elements.

Petitioner is harping upon things not found in the

claims; whereas the Court of Appeals compared the claims

with the prior art, and on that basis found them invalid.

20

CONCLUSION

We submit that for the foregoing reasons the petition

for writ of certiorari should be denied.

Drury W. Cooper,

D. Ciype Jongs,

Drury W. Cooper, Jr.,

Counsel for Respondent.

(P—1676)