Petition for a Writ of Certiorari — Excel Auto Radiator Co. v. Bishop & Babcock Manufacturing Co.

Office - Supreme Court, U, §

FILED

JUL 19 J949

CHARLES ELMORE .UPLEY

—— CLERK

IN THE

Supreme Court of the United States

Ocroszr Term, A. D. 1947.

No. 162

EXCEL AUTO RADIATOR COMPANY,

Petitioner,

vs.

THE BISHOP AND BABCOCK MANUFACTURING

COMPANY,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES CIRCUIT COURT OF APPEALS

FOR THE SIXTH CIRCUIT.

Max W. ZaBEL,

Foster York,

Counsel for Petitioner.

‘THE GUNTHORP. WARREN PRINTING COMPANY, 210 WEST JACKSON, CHICAGO

ee eee

PAGE

Petition for Writ of Certiorari to the United States

Circuit Court of Appeals for the Sixth Circuit .... 1-7

Summary Statement of Matter Involved ........ 1

CURSES DIINVONE © 6 8.5 on vows seq honcesvervesess 4,5

Reasons for Granting the Writ ................ 5, 6

Brief in Support of Petition ...................... 8-25

ML i. inet k pind saHuny KGisne tea eee aoe 8

IR odin d Woah NS aH nS x0a0ce aces dacabanae 8

Specification of Errors ..................00. 00s 11

eee Os Wee Se eee ey SC, er rr 14

I. The Cireuit Court of Appeals for the Sixth

Circuit, in Sustaining the Validity of the

Patent in Suit Departed From the Principles

of Morgan vs. Daniels, 153 U. S. 120 ...... 14

II. The Circuit Court of Appeals for the Sixth

Circuit, in Affirming the Judgment of the

District Court in Rejecting the Evidence as

to Interferences 75,056, 75,057 and 75,058

Departed From the Principles of Sinclair vs.

Interchemical Company, 325 U. S. 327, 330 17

III. The Circuit Court of Appeals for the Sixth

Circuit, in Arriving at Its Conclusion That

It Would Not Follow the Findings of the

Court of Customs and Patent Appeals, Re-

ported in 141 F. 2nd 816, Based Its Ruling

on an Erroneous Assumption of Fact, Which

Error is Visually Demonstrable by an Ex-

amination of Two Small Exhibits Before This

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ii

IV. The Mayo Patent is Invalid Because the

Court of Appeals Held Invalid Claim 6

Which the Court of Customs and Patent Ap.

peals Had Previously Indicated Was Invalid.

Under the Doctrine of Triplett, et al. vs,

Lowell, et al., 297 U. S. 638, 646, Mayo’s

Failure to Disclaim Claim 6 Renders the En-

tire Mayo Patent Invalid

V. Opinion of the Circuit Court of Appeals for

the Sixth Circuit Runs Counter to the Doe.

trine of Halliburton vs. Walker, 329 U. 8.1 %

Cases CITED.

Ensten v. Simon Ascher & Co., 282 U. S. 445, 453.... 4

Halliburton v. Walker, 329 U. S. 1, 91 L. Ed. 15

: iese: wild sai nl Bedi tetas 3. Lea 3, 4, 5, 6, 1258, 95

Maytag Co. v. Hurley Machine Co., 307 U. S. 243....4,21

Morgan v. Daniels, 153 U. S. 120, 38 L. Ed. 657

3, 4, 5, 6, 11, 12, 1480, 1

Radio Condenser Co. v. General Instrument Corp., 65

F. (2nd) 458, 459

Radio v. Radio, 293 U. S. 1

Refrigerator Patents Corp. v. Stewart-Warner, 159

F, (2nd) 972 3, 6, 12, 22, 24

Sinclair v. Interchemical, 325 U. S. 327, 330

Sinko Tool and Mfg. Co. v. Automatic Devices Corp.,

157 F. (2nd) 974

Sperry v. Aufiero et al., 134 F. (2nd) 174, 179 (5). .3,9, 14

Sperry v. Payne, Sperry v. Teschner, 141 F. (2nd)

816, 821, 822, 827

Triplett et al. v. Lowell et al., 297 U. S. 638, 646

4, 5, 6, 12, 21

iii

Svratutes Crrep.

Judicial Code (Federal Declaratory Judgment Act)

U.S. C. Tit. 28, Sec. 347, Sec. 240(a) Judicial Code....

U.S. C. Tit. 28, Sec. 400, Judicial Code Sec. 274(d)..

U.S. C. Tit. 28, Sec. 41(7), c. 231 Sec. 24, par. 7, Stat.

OPINION OF THE CouRT Biiow.

The Opinion of the Circuit Court of Appeals for the

Sixth Circuit is officially reported in Excel v. Bishop

and Babcock Mfg. Co., 167 F. (2nd) 962.

IN THE

Supreme Court of the United States

Ocroper Term, A. D. 1947.

eR AL

EXCEL AUTO RADIATOR COMPANY,

Petitioner,

vs.

THE BISHOP AND BABCOCK MANUFACTURING

COMPANY,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES CIRCUIT COURT OF APPEALS

FOR THE SIXTH CIRCUIT.

To the Honorable Frederick N. Vinson, Chief Justice of the

United States, and the Associate Justices of the Supreme

Court of the United States:

Your petitioner respectfully shows:

Summary Statement of Matter Involved.

Petitioner (plaintiff below) seeks a review of a judgment

of the United States Circuit Court of Appeals for the Sixth

Cireuit rendered May 3, 1948 (R. 458), rehearing denied

June 2, 1948 (R. 477). That judgment affirmed a judg-

2

ment (R. 438) of the District Court of the United States

for the Northern District of Ohio, Eastern Division, hold.

ing all 13 claims of Mayo patent No. 2,322,041 (R, 135)

valid, and all claims excepting claim 11, infringed,—with

this exception that the Cireuit Court of Appeals held

claim 6 invalid.

This action was initiated Sept. 21, 1945 by petitioner

upon filing its complaint under Sec. 274d, Judicial Code

(Federal Declaratory Judgment Act) for a declaratory

judgment to have said patent declared invalid.

The Court will find (please see the brief) that this cause

is quite analogous to one in which two Courts of last re-

sort have differed.

The device involved is one used in the great majority of

automobiles and is called a heater, in which there is provi-

sion for two streams of heated air, one to heat the car, and

the other to aid in windshield defrosting. It is two separate

and distinct devices driven by one motor but mounted in

one. framework.

The patent in suit was clearly indicated as invalid ina

decision by the Court of Customs and Patent Appeals in

February 1944 (Sperry v. Payne, Sperry v. Teschner, 141

F. (2nd) 816), based upon the existence and successful

testing in the year 1935 of certain devices constructed by

petitioner and now before this Court (Petitioner’s Exhibits

1 to 6 incl.).

The existence and successful testing of these devices in

1935 antedates the earliest invention date (R. 62) claimed

by Mayo (Mayo claimed Feb. 1936, Ex. N, p. 14).

The decision as to which review is sought revitalizes this

patent and enjoins petitioner from making the devices made

by it since 1935, that is, the very devices now before this

Court, whose existence in 1935 has been found by six tri-

bunals,—twice by the Patent Office Interference Examiner,

both decisions (R. 328, 330; R. 353, lines 1 to 7; R. 355,

358), twice by the Patent Office Board of Appeals, both

decisions (R. 344; R. 365), and twice by the Court of Cus-

toms and Patent Appeals, both decisions, Sperry v, Aufiero,

et al., 134 Fed. (2nd) 174, 179; Sperry v. Payne, Sperry v.

Teschner, 141 (2nd) 816, 821, 822. These same 1935 devices

now before the Court are fully and completely operative to

perform their functions. The Court of Customs and Pat-

ent Appeals in 141 Fed. (2nd) 816, 822 and 827, held that

they were successfully tested in 1935. See also R. 460.

The decision of the Circuit Court of Appeals overruling

the Court of Customs and Patent Appeals is in direct con-

flict with the doctrine of Morgan v. Daniels, 153 U.S. 120,

38 L. Ed. 657. The District Court refused to consider the

Patent Office Interference record on which the six decisions

establishing the existence of the devices is based (R. 432).

The Court of Appeals upheld such ruling by the District

Court on the ground that Mayo was not bound by such

prior use testimony, and refused to follow the findings of

the Court of Customs and Patent Appeals because of what

it believed was controlling new evidence, and based its dect-

sion on an entirely erroneous (visually demonstrable) as-

sumption of fact which the Court mistakenly believed fol-

lowed from the new evidence. The erroneously assumed

fact was never asserted by respondent and when the error

was called to the attention of the Court by petition on re-

hearing, respondent made no effort to justify the Court’s

erroneous finding. The petition was summarily dismissed.

The decision runs counter to Halliburton v. Walker, 329

U.S. 1, 91 L. Ed. 15. The interpretation of that decision

by the Court of Appeals of the Sixth Circuit is clearly

erroneous, and is contrary to the interpretation given by

other circuits. See particularly Refrigerator Patents Corp.

v. Stewart-Warner, 159 Fed. (2nd) 972.

4

The second decision by the Court of Customs and Patent

Appeals finding invention by Sperry prior to Mayo

earliest claimed date was such notice as required Mayo

either to disclaim or else test the issue in another proceed.

ing following that decision. Mayo chose to test the isgue

by filing a counterclaim in the instant suit. Claim 6 was

held invalid by the Court of Appeals. Under the doctrine

of Triplett, et al. v. Lowell, et al., 297 U. S. 638, 643, the

entire patent is invalid. See also, Radio Condenser Co,

v. General Instrument, 65 F. 2d 459; Ensten v. Simon

Ascher & Co., 282 U.S. 445; Maytag Co. v. Hurley Machine

Co., 307 U. S. 243.

The device of the patent in suit and petitioner’s device

operate upon entirely different principles and are not

capable of being comprehended by one patent.

The patent merely combines in one framework two prior

art devices which accomplish the same functions.

The patent covers such devices broadly, and as its use is

confined to the automobile trade which is concentrated in

the Sixth Circuit, no other litigation is foreseeable.

Questions Involved.

1, Isit proper for a Circuit Court of Appeals to overrule

a decision by the Court of Customs and Patent Appeals

indicating patent invalidity when the only basis for its ral-

ing is an erroneous assumption of fact, the error of which

is not denied by respondent, and which error is visually

demonstrable by examination of two small exhibits before

this Court? Morgan v. Daniels, 153 U.S. 120. The Dis-

trict Court made no like finding of fact and even the re

spondent did not at any time assert the existence of such

erroneously assumed fact. Four Patent Office Tribunals

and the Court of Customs and Patent Appeals differ with

the Court of Appeals for the Sixth Circuit. Petition for

Rehearing was denied without comment even though re-

spondent’s reply to Petitioner’s Petition for Rehearing did

not deny but instead accepted Petitioner’s contention that

the Court had made an erroneous assumption.

2. Is it proper to hold infringement of a patent by a

device operating upo” an entirely different principle, Halii-

burton v. Walker, 329 U.S. 1, simply because the patent

contains ‘‘means’’ claims which can be made to read on

the device?

3. Is the aggregation of two prior art devices (auto-

mobile heaters) into one framework and driving them by

one motor instead of two, a patentable invention?

4. Is it proper for a Circuit Court of Appeals to fail to

hold a patent invalid in its entirety after it has held invalid

one claim which assignee of patent failed to disclaim after

assignee had been given notice of invalidity of all claims by

a previous decision of the Court of Customs and Patent

Appeals? Triplett, et al. v. Lowell, et al., 297 U. S. 638,

646.

Reasons for Granting the Writ.

1. The four Patent Office decisions and the two decisions

of the Court of Customs and Patent Appeals being in con-

flict with the decision of the Circuit Court of Appeals for

the Sixth Circuit constitutes a situation analogous to that

in which two Circuit Courts of Appeals differ, Morgan v.

Daniels, supra. Especially is this true where the basis for

overruling the Court of Customs and Patents Appeals is

a visually determinable error of fact assumed by the Ap-

pellate Court, unsupported by any findings by the District

Court and neither urged by Respondent at any time nor

defended in its reply to our petition for rehearing which

was summarily denied. The point is one which has there-

fore never been argued. This single point on which the

decision of the Court of Appeals overruling the Court of

6

Customs and Patent Appeals was based is the statement by

the Court that the fan blower element of Exhibit 1, whig

was part of the 1935 Sperry development, was identicg]

with a fan blower element made by ‘‘ Midwest’’ which wa;

not made until 1936. A mere visual inspection of the

blower element made by Midwest and said &xhibit | js

sufficient to dispel such fallacy. Both are before this Court,

2. The District Court and the Circuit Court of Appeals

failed to give effect to the Patent Office Interference de.

cisions and thus violate the dictates of Morgan v. Daniels,

153 U.S. 120.

3. The decision revitalizes a patent whose invalidity

was indicated years ago and which invalidity was confirmed

by the Court of Appeals as to one claim; and thus the deci-

sion violates the disclaimer doctrine of Triplett, et al. y,

Lowell, et al., 297 U. S. 638, 646.

4. As automobile heaters are installed almost exclo-

sively in the Sixth Circuit no other litigation involving

the patent is foreseeable.

5. The decision is in conflict with the doctrine of Halli-

burton v. Walker Corp. as the device held to infringe

operates upon a new and entirely different principle from

that of the patent in suit. The interpretation of Halli-

burton v. Walker decision by the Court of Appeals for the

Sixth Circuit nullifies the decision by the Supreme Court

in the Sixth Circuit and is contrary to the interpretation

in other circuits, particularly the Seventh Circuit. See

Refrigerator Patents Inc. v. Stewart Warner, 159 Fed

972.

6. The devices in question are standard articles of trade

and the patent in suit would blanket them until 1960.

Wherefore, Petitioner prays that a Writ of Certiorari

issue under the seal of thi. Court directed to the United

States Circuit Court of Appeals for the Sixth Circuit, sit-

7

ting at Cincinnati, Ohio, commanding said Court to cer-

tify and send to this Court on a day to be designated, a

full and complete transcript of the record, and all pro-

ceedings of the said Circuit Court of Appeals had in the

case numbered and entitled on its docket No. 10,548, Excel

Auto Radiator Company, Appellant v. The Bishop and

Babcock Manufacturing Company, Appellee, to the end

that this cause may be reviewed and determined by this

Court; that the judgment therein of the said Circuit Court

of Appeals be reversed by this Court; and that the cause

be remanded to that Court with directions to hold the pat-

ent in suit invalid, and sach other and further relief as

this Court may deem proper.

Max W. Zaset,

Foster York,

Counsel for Petitioner.

BRIEF IN SUPPORT OF PETITION.

Jurisdiction.

Petitioner would invoke the jurisdiction of this Conri

under Section 240(a) of the Judicial Code as amended by

the Act of February 13, 1925, U. S. C. Title 28, See. 347,

te review a judgment of the United States Circuit Court

of Appeals for the Sixth Circuit dated May 3, 1948 (R.

458), in a suit based upon the Declaratory Judgment Act,

U. S. C. Title 28, Sec. 400, Judicial Code, Sec. 274(d),

alleging jurisdiction under the Act of March 3, 1911, ¢

231, Sec. 24, par. 7, Stat. 1902, U. S. C. Title 28, Sec. 41(7),

and in which a counterclaim was filed charging infringe.

ment of United States Letters Patent. Petition for re

hearing was denied June 2, 1948 (R. 477). This petition

is presented within three months from and after the denial

of petition for rehearing.

Statement.

A short historical statement may here be desirable.

Mayo (inventor of the patent in suit) filed his patent

application March 28, 1936. Petitioner’s employee and

assignor (Sperry) filed his patent application (for a device

operating upon a novel and entirely different principle)

on March 20, 1937. Patent Office interference proceedings

were instituted between these two and seven other patent

applicants.

The Patent Office Interference Examiner held (R. 328,

lines 12 et seq.) that the devices now before this Court had

been in existence ‘‘in co-operative relation at least by the

end of October, 1935’’, and then proceeded to declare

9

Mayo (whose earliest date was February, 1936) as the

first inventor on the extremely technical ground that (R.

339, ninth line from the bottom) Sperry’s testimony had

not shown sufficient testing, although the said devices in

the same form constituted Sperry’s commercial device.

The Patent Office Board of Appeals (R. 345) affirmed,

so that we have a second tribunal holding the existence of

the Sper ry devices in 1935.

On appeal to the Court of Customs and Patent Appeals

that Court affirmed on the same technical ground of in-

sufficient testing (Sperry v. Aufiero, et al., 134 F. (2nd) 174,

179 (5)).

Three tribunals have thus far held that the devices be-

fore this Court were in existence in 1935, but relied upon

the technical Patent Office ground of insufficient testing.

The Courts in general do not favor the same degree of

strictness. Sinko Tool and Mfg. Co. v. Automatic Devices

Corp., 157 Fed. (2nd) 974.

In the course of the above proceedings, on or about

February, 1937 (about eleven months after the filing of

the Sperry patent application), Payne filed a patent appli-

cation on a device operating upon the Sperry principle.

That patent application was wnder the control of Respond-

ent. Patent Office interference proceedings were instituted

between the same Sperry patent application (involved in

the Mayo interference), the Payne patent application, and

several other applicants.

Sperry relied upon the same devices in this second

interference proceeding but further elaborated his evidence

as to testing. The Patent Office Interference Examiner

again held that the devices were in existence in 1935 (R.

353 line 1). He then said that they were probably tested

(R. 353, line 16 from bottom) but, not sufficiently.

The Board of Appeals again affirmed such decision.

10

On appeal to the Court of Customs and Patent Appeals

(Sperry v. Payne, Sperry v. Teschmer, 141 F. (2nd) 816)

the additional Sperry evidence with regard to testing

was held sufficient and Sperry prevailed as to his

specific device. Since all evidence by Sperry related

to these 1935 devices, such decision by the Court js

in effect a reversal of its previous opinion. The Circuit

Court of Appeals in referring to this decision by the Court

of Customs and Patent Appeals says: ‘‘but the Court of

Customs and Patent Appeals reversed these decisions

(141 Fed. (2nd) 816), holding that the evidence estab.

lished Sperry’s reduction to practice in 1935 by adequate

testing of his models, and awarded priority to Sperry”

(R. 460). The opinion of the Circuit Court of Appeals

in regard to this ruling of the Court of Customs and Patent

Appeals states: ‘‘It would however be persuasive if rele.

vant and if based on the same evidence as that presented

here’’ (R. 460, lines 28 thru 30). The Court (R. 460, last

three lines) further says, ‘‘Also though we gave careful

consideration to the findings of fact of this expert court,

we have before us testimony, not previously introduced

which, if it had been before the patent tribunals, might

have changed the decision of the Court of Customs and

Patent Appeals in the last case (141 Fed. (2nd) 816).”

The testimony referred to by the Court is testimony on

which the Court made an error of fact which is apparent

by visual examination of two exhibits: Ex. 1 and Ex. NN.

This was called to the Court’s attention on Petition for

Rehearing; it was not denied by respondent in its reply.

The Court denied the Petition for Rehearing without

comment.

That this erroneously assumed fact had a determining

character upon the judgment of the Circuit Court of

Appeals, is evident from the statement (R. 460, lines 16

ee

11

and 17) that ‘‘this question has a fundamental bearing on

the outcome of the case’’.

The Court of Appeals justifies its exclusion of the prior

inventorship evidence on the ground that Mayo is not

pound by it because not a party to the second interference

proceeding, even though respondent was in control of both

Mayo and Payne patent applications.

Morgan v. Daniels, however, applies when the assignee

is the same even though one of the inventors (Mayo) was

not a party in the final interference. Radio v. Radio, 293

U. 8. 1.

The Mayo patent having issued, the Court of Customs

and Patent Appeals could take no action with regard to

it, and unless this Court grants Certiorari it will for over

a decade blanket the industry. Petitioner is not here ask-

ing for a ruling that the patent be granted in behalf of

Sperry, as such action is foreclosed by the first decision

of the Court of Customs and Patent Appeals.

Petitioner’s only recourse to continue making what it

had made since prior to Mayo’s date was the petition for

declaratory judgment.

Specification of Errors.

1, The Circuit Court of Appeals erred in overruling

the Court of Customs and Patent Appeals by not following

the well-established doctrine of Morgan v. Daniels, 153

U. S. 120.

2. The Cireuit Court of Appeals erred in affirming the

District Court in excluding the stipulated records in the

group of interferences won by petitioner, on the ground

that the evidence showing invalidity of the patent in a com-

panion interference (under the control of Respondent) to

which Mayo however was not a party, ‘‘does not bind this

12

Court, since Mayo was not a party to those proceedings”,

The fact that Mayo was not a party does not make the

evidence irrelevant nor take this case out of the ruling

of Morgan v. Daniels, Radio v. Radio, supra.

3. The Court erred in applying the rule that the burden was

upon Petitioner to show that the Mayo patent was not

invalid, whereas, if Morgan v. Damiels had been applied,

as it should have been, the burden would have been the

opposite. The ‘‘new evidence’’ (R. 460, last line; 461,

first line) does not satisfy the ‘‘thorough conviction rule”

which the Court applied contrary to its correct application

(R. 461, lines 4-7).

4. The Circuit Court of Appeals based its decision

overruling the Court of Customs and Patent Appeals on

an erroneous assumption of a fact not urged by Respond.

ent, as to which there had been no finding by the District

Court, never argued, not supported by Respondent in its

reply to Petitioner’s petition for rehearing, not clarified

by the Court in its summary denial of the petition, and

as to which six tribunals (four in the Patent Office and

twice by the Court of Customs and Patent Appeals) have

held the contrary. The error of the Court’s assumption

is obvious by a mere visual inspection of two small simple

elements which are before this Court as exhibits.

5. The Circuit Court of Appeals erred in not applying

the doctrine of Triplett, et al. v. Lowell, et al., 297 U.S.

638, 646, relating to disclaimers.

6. The Circuit Court of Appeals erred in not following

the doctrine of Halliburton v. Walker, 329 U. S. 1, and in

its interpretation thereof differing from the interpretation

placed on said doctrine by the Cirevit Court of Appeals

for the Seventh Circuit in Refrigeration Patents Corp. v.

Stewart-Warner, 159 F. (2nd) 972.

7. The Cireuit Court of Appeals erred in holding Mayo

t

;

}

1

1

e

1

e

13

patent No. 2,322,041 valid and thus revitalizing said

patent, whose invalidity had been indicated several years

before.

8. The Circuit Court of Appeals erred in holding the

Mayo patent No. 2,322,041 infringed by the complained-of

Sperry heater.

9, The Circuit Court of Appeals erred in affirming the

Judgment of the District Court.

14

ARGUMENT.

I. The Circuit Court of Appeals for the Sixth Circuit, in

Sustaining the Validity of the Patent in Suit Departed

from the Principles of Morgan v. Daniels, 153 U. 8. 120,

The reasons why we respectfully contend that this case

comes under the doctrine of Morgan v. Daniels, 153 U. §,

120 and is parallel to one in which two Circuit Courts of

Appeals have differed are the following: Petitioner’s em-

ployee, Sperry (since deceased) constructed various em-

bodiments of the device in suit in (as held by four Patent

Office Tribunals and twice by the Court of Customs and Pat-

ent Appeals) the year 1935. The earliest date to which Mayo

(inventor of the patent in suit) could and did lay claim

is February 1936 (R. 62, Ex. N, p. 14). Mayo filed his

patent application March 28, 1936, and Sperry filed his

on March 20, 1937. The two patent applications being

co-pending the Patent Office declared interference proceed-

ings between said Mayo, said Sperry and seven other

co-pending applications, to determine the question of prior-

ity of invention.

Upon final hearing and after the taking of testimony

by all parties the Patent Office Interference Examiner held

(R. 328, 330) that the Sperry devices now before this

Court had been in existence since October 1935, prior to

Mayo’s earliest date of February 1936, but awarded prior-

ity to Mayo over Sperry on the technical ground that the

devices had been insufficiently tested (R. 328, 330), despite

the fact that those same devices constituted Petitioner’s

commercial product and are now as then in operable con-

dition.

The Patent Office Board of Appeals affirmed the decision

(R. 343), and so did the Court of Customs and Patent

Appeals (Sperry v. Aufiero, et al., 134 F. 2d 174). The pat-

15

ent in suit thereupon issued to Mayo, thus settling the con-

troversy in so far as it concerned who as between Mayo and

Sperry obtained a patent on the broad claims in issue.

Sperry’s assignor is therefore here not asking for a patent

in its own behalf.

The important thing however is the fact that so far

three technically informed tribunals have held the Sperry

devices to have been in existence in 1935.

The said Sperry patent application disclosed a device

which, although performing the same functions as the

Mayo device, operated upon an entirely different and novel

principle not disclosed in the Mayo patent application.

During the course of the above proceedings, Payne, and

also Teschner filed patent applications on a device following

Sperry’s principle, and the said Sperry application became

involved in a second interference proceeding initiated by

the Patent Office. The interference proceedings in behalf

of Payne and also Teschner were under the control of

Respondent (R. 29, 34).

During this second proceeding further testimony was

added in behalf of Sperry to further elaborate his tests

of the 1935 devices, but the Patent Office Interference

Examiner again held that although the devices were in

existence in 1935, the tests were insufficient and awarded

priority to Payne (R. 362, and on other counts to Teschner,

R. 380). The Patent Office Board of Appeals affirmed

(R. 366, 372, 385).

Upon appeal to the Court of Customs and Patent Appeals

said Court reversed the Patent Office ruling (Sperry v.

Payne, Sperry v. Teschner, 141 F. (2nd) 816) and ruled

that these 1935 Sperry devices had been sufficiently tested.

That the Court of Customs and Patent Appeals so held is

conceded by the Circuit Court of Appeals in its opinion (R.

460, lines 3 to 8) saying ‘‘but the Court of Customs and

Patent Appeals reversed these decisions (141 F. (2nd) 816),

holding that the evidence established Sperry’s reduction to

16

practice in 1935 by adequate testing of his models, ang

awarded priority to Sperry.’’ Yet it is in respect to this

very testimony of the second interference proceeding that

the Court of Appeals affirmed the District Court in exelud.

ing it on the ground of irrelevancy and immateriality,

There were thus three additional rulings to the effect

that the Sperry devices before this Court were in existence

in 1935, making six decisions in all.

This later decision by the Court of Customs and Patent

Appeals thus nullified its prior decision in the Sperry-

Mayo interference by holding that Sperry’s invention date

in reality was in 1935, and hence prior to Mayo’s earliest

alleged date of February 1936. It established prior inven-

tion by Sperry and thus clearly indicated invalidity of

the Mayo patent which had in the meantime issued.

We respectfully submit that the six decisions by tech-

nically qualified tribunals, being in conflict with the decision

of the Circuit Court of Appeals, constitutes a case parallel

to one in which two Circuit Courts of Appeals have differed

upon the question of patent validity. Thus where the

Court of Appeals refuses to apply Morgan v. Daniels its

decision is subject to review by the Supreme Court.

And also more particularly is this true when the Circuit

Court of Appeals bases its finding (R. 463, lines 3 and 4

from bottom of page) that ‘‘Sperry did not prove concep-

tion earlier than the fall of 1936’’ upon an erroneously

assumed fact, whose non-existence can be established by

mere visual inspection of two small simple elements in

evidence.

17

II. The Circuit Court of Appeals for the Sixth Circuit, in

Affirming the Judgment of the District Court in Reject-

ing the Evidence as to Interferences 75,056, 75,057 and

75,058 Departed from the Principles of Sinclair v.

Interchemical Company, 325 U. 8. 327, 330.

The Court went far afield from Sinclair v. Interchemical,

295 U. 8. 327, especially when we find the District Court

(R. 438) holding as conclusion of law 4 that the second

interference record is irrelevant and immaterial, and the

Cireuit Court of Appeals saying (R. 460): ‘‘We think the

District Court did not err in rejecting the evidence as to

interferences 75,056, 75,057, and 75,058,’’ which were the

second set of interference proceedings. That evidence is

material on the question of validity. Refusal to consider

records and decisions bearing on the validity of a patent

is contrary to Sinclair v. Interchemical, 325 U. S. 327, 330,

wherein it was held that where invalidity appeared the

Court must so find.

Ili. The Circuit Court of Appeals for the Sixth Circuit, in

Arriving at Its Conclusion That It Would Not Follow

the Findings of the Court of Customs and Patent

Appeals, Reported in 141 F. 2nd. 815, Based Its Ruling

on an Erroneous Assumption of Fact, Which Error Is

Visually Demonstrable by an Examination of Two

Small Exhibits Before This Court.

That the Circuit Court based its ruling solely upon the

before-mentioned single erroneously assumed, easily con-

trovertible, alleged fact is clear from the following excerpts

from the opinion:

‘‘This evidence relates to the bakelite blower which

was part of Sperry’s Exhibit No. 1.’’ (R. 461, lines 8

and 9.)

‘Only one plastic mold was made for Midwest,

18

and this was the only one ever made by Weis.’’ (R.

461, lines 32 and 33.)

‘The first samples of the mold were made in July

1936.’ (R. 462, line 1.)

‘*Two bakelite wheels, made by Midwest, introduced

in evidence, appear to be of material and structure

identical with that of Sperry’s Exhibit No, 1.” (R.

462, lines 8 to 12.) (Emphasis ours.)

‘‘We think the testimony of the three disinterested

witnesses as to the manufacture of the blower mold

and the blower wheels which were a part of Sperry’s

first experimental model, supported by the documen-

tary evidence from three independent companies,

proves that Sperry’s story of reduction to practice

in 1935 is a mistake.’’ (R. 462, last paragraph.)

‘*They not only support the award of priority to

Mayo over Sperry in 134 Fed. (2nd) 174, but they

demonstrate from Sperry’s own evidence that his

conception, as well as his reduction to practice, was

in 1936 instead of 1935.’’ (R. 463, lines 13 to 16.)

‘*Since the first machine was actually made in the

latter part of 1936, and since Sperry, so far as he

dates his conception at all, places it in close time

connection with the making of Exhibit No. 1, these

facts militate strongly against the correctness of the

second decision of the Court of Customs and Patent

Appeals (141 Fed. (2nd) 816).’’ (R. 463, lines 22

thru 28.)

‘*Unquestionably the first device was made some

time after September 1936. Sperry did not prove con-

ception earlier than the fall of 1936.’’ (R. 463, lines

1 to 5 from bottom of page.)

No other fact is used as a basis for the Court’s ruling.

In other words, the Cireuit Court of Appeals decides

counter to the six tribunals on the assumption that the

Midwest blower elements (available only in 1936) are

identical to the blower element of Sperry Exhibit No. 1.

They are far from identical. The blower element of Sperry

Exhibit 1 cowld not come out of the Midwest mold as

clearly apparent from the following:

19

of Blowers of Exhibit 1, Exhibits NN

and OO, and Exhibit M-28

1935

Blower Mold

Ex. M-28

(2 Blowers)

’s trade-mark on

= face between a

pair of blades.

4 1

5890 5890

L.H. R.H. Lon back face

22349 of NN. No numbers.

PO EP NS enter -~

1%" *

*The evidence (Ex. 20, p. 138, XQ. 121) shows that the blades of the blower

ysed in Exhibit 1 were originally longer. L.H. signifies left hand.

On the contrary, the blower element of Sperry Exhibit

No. 1 came from a mold available at least as early as

1935 (Defendant’s Ex. N, pp. 288, 312, 360).

Sperry Exhibit No. 1 was not relied upon to prove

either conception or reduction to practice. It was intended

merely to show in a preliminary experimental manner that

there might be something to Sperry’s novel idea of for

the first time using the non-functioning central portion of

a propeller fan. Substantially all of Sperry’s testimony

is directed to the full-size operative models now before

this Court, Exhibits 3, 4, 5, 6 and 8.

As to the blower element of Sperry Ex. 1, Sperry testi-

fied as to where he believed (P. Ex. 20, pp. 51-52) the

element may have come from. The new testimony in this i

20

suit simply shows that Sperry may have been mistakep

as to where the blower originated but not as to its date

The date is material, not the place, and it was on the

date that the Court of Appeals went astray. The Court’s

error on this point is so clear that Respondent did not

deny it.

We are thus confronted by a clean-cut contest with six

decisions overruled by the decision of the Circuit Court

of Appeals on the ground, (1) of a visually determinable

error of fact and (2) that new evidence not before the

Patent Office does not have to be sufficient to satisfy the

requirement of Morgan v. Daniels in overcoming the effect

of a ruling by the Court of Customs and Patent Appeals.

IV. The Mayo Patent Is Invalid Because the Court of

Appeals Held Invalid Claim 6 Which the Court of

Customs and Patent Appeals Had Previously Indi.

cated Was Invalid. Under the Doctrine of Triplett

et al. v. Lowell et al., 297 U. S. 638, 646, Mayo’s Fail-

ure to Disclaim Claim 6 Renders the Entire Mayo

Patent Invalid.

However, the Court of Appeals held claim 6 of the Mayo

patent invalid. The Court of Customs and Patent Appeals

in Sperry v. Payne, Sperry v. Teschner, 141 F. (2nd) 816,

had previously indicated that claim 6 and all other claims

in the Mayo patent were invalid as shown by its finding

that Sperry had reduced his invention to practice prior to

the earliest alleged invention date of Mayo in that suit

or in the present suit. Respondent refused to accept the

findings of the Court of Customs and Patent Appeals and

did not disclaim any of the claims of his patent in suit. Re-

spondent relinquished the privilege of disclaimer and by

filing a counterclaim in the present suit proceeded to re-

litigate in the Court of Appeals of the Sixth Circuit the

claims which it was under notice were invalid. Under the

21

doctrine of Triplett, et al. v. Lowell, et al., 297 U. 8. 638,

646, Respondent filed this counterclaim at the risk of loss

in the Court of Appeals in the Sixth Circuit of the other

claims in the patent even though valid if the Court of Ap-

peals of the Sixth Circuit would hold invalid any of the

claims previously adjudicated. While the decision of the

Court of Customs and Patent Appeals is not strictly an

adjudication that claim 6, or any of the other claims of the

Mayo patent, was invalid, the decision and the findings

constitute notice that all the claims are invalid under the

doctrine of Radio Condenser Co. v. General Instrument

Corporation, 65 F. (2nd) 458, 459, and Maytag Company v.

Hyrley Machine Co., 307 U. S, 248.

The fact that the Court of Appeals held claim 6 invalid

on different grounds than indicated by the Court of Cus-

toms and Patent Appeals in 141 F. (2nd) 816, does not re-

move this case from the disclaimer doctrine of Triplett,

et al. v. Lowell, et al., supra. In ruling out the evidence

of the second interference on which the Court of Customs

and Patent Appeals based its decision in 141 F. (2nd) 816,

the Court of Appeals placed itself in a position where it

could not hold the claims of the Mayo patent invalid for the

same reasons given by the Court of Customs and Patent

Appeals unless it applied the doctrine of Morgan v. Daniels,

which it should have done but failed to do, as has been

pointed out above.

The holding by the Court of Appeals that claim 6 is in-

valid renders all of the claims of the Mayo patent invalid

under the doctrine of Triplett v. Lowell, supra,

22

V. Opinion of the Circuit Court of Appeals for the Sixth

Circuit Runs Counter to the Doctrine of Halliburton y,

Walker, 329 U. S. 1.

The Court of Appeals for the Sixth Circuit gives ap

interpretation of the Halliburton case, 329 U. S. 1, which

is contrary to that of the Seventh Circuit in Refrigerator

Patents v. Stewart Warner, 159 Fed. 972.

The situation in the present case is very similar to the

situation in the above mentioned Halliburton case where

the patentee was suing for an infringement on a combina-

tion having the term ‘‘means associated with said pressure

responsive device for tuning said receiving means to the

frequency of echoes from the tubing collars of said tubing

section to clearly distinguish the echoes of said couplings

from each other.’’ This term corresponds to the following

terms used in the Mayo patent in suit:

Claim 12—‘‘means for admitting air which has passed

through said radiator to the central portion of said hous-

ing.’? Compare this term with the structural definition

given in Claim 11 which reads ‘‘a conduit leading from a

relatively small area of said radiator to the central portion

of said housing for conducting heated air from the former

to the latter.’’ Because of this recited structure appellee

withdrew Claim 11 from its charge of infringement.

Claim 10—‘‘means for defining different air flow paths

for said respective impellers.’’ Compare this also with

the admittedly non-infringed Claim 11.

Claims 8 and 9—‘‘means for guiding air through the

radiator in separate paths.’’ This term is based on the

wall 32 and the partition 65 of the Mayo patent, but ap-

pellee contends that it is broad enough to cover the pat-

ented arrangement of appellant’s device whereby such wall

and partition are completely eliminated.

23

Claim 5—‘‘and means within said casing for propelling

air through said radiator and said discharge openings into

the body of the car, and simultaneously propelling a por-

tion of the air which is passed through said radiator to

another portion of said radiator and thence through said

duct.’

Claim 7—‘‘means for heating air and for circulating it

through the body of the car, * * * and means for impelling

air from said first named heater in contact with said

auxiliary surface and through said duct into contact with

the windshield.’’

In the Halliburton Oil case, supra, the Court refused to

give the ‘‘means’’ clause any specific interpretation but

simply held the claim invalid and therefore not infringed.

In the Mayo patent likewise it is not seen how the ‘‘means’’

clauses can be given any specific construction, but such

claims as Claims 5 to 10 and 12 must be held invalid as not

complying with Revised Statute 4888. As the Supreme

Court in Halliburton v. Walker, supra, stated (329 U. 8.

13):

‘‘Had Walker accurately described the machine he

claims to have invented, he would have hadt no

such broad rights to bar the use of all devices now

or hereafter known which could accept waves. For

had he accurately described the resonator together with

the Lehr and Wyatt apparatus, and sued for infringe-

ment, charging the use of something else used in com-

bination to accent the waves, the alleged infringer

could have prevailed if the substituted device (1) per-

formed a substantially different function; (2) was not

known at the date of Walker’s patent as a proper

substitute for the resonator; or (3) had been actually

invented after the date of the patent. Fuller v. Yentz-

er, supra (94 U.S. at 296-97, 24 L. ed. 106, 107); Gill

v. Wells, supra (22 Wall. (U. 8.) at 29, 22 L. ed. 711).

Certainly, if we are to be consistent with Rev. Stat.

4888, a patentee cannot obtain greater coverage by fail-

ing to describe his invention than by describing it as

the statute commands,’’

24

If, however, the Court were to give these ‘‘means”

clauses a structural significance, then the only structuraj

significance that can be given is the structure shown in the

Mayo patent suit, or some structure which is substanti

the same. Such structures are not present in Petitioner's

heaters.

Petitioner’s device is so completely different from the

Mayo device that the Patent Office allowed a patent

(Sperry patent 2,353,274, Rec. 143) on appellant’s device

after full consideration of the Mayo device. Even thongh

Sperry lost Interference No. 73,751 with the Mayo patent,

the fact that appellant obtained a patent on its radically

and basically new device is conclusive proof that its device

does not have substantially the same structure or operate

in the same manner as the device of the patent in suit.

Therefore, appellant’s device and the Mayo patented de.

vice are not equivalents. Any ‘‘means’’ type claim which

can be given an interpretation broad enough to cover ap-

pellant’s device is either invalid or must be given an in.

terpretation such that the claim is not infringed. This

holds for the Mayo ‘‘means’’ claims 5 to 10, inclusive,

and 12.

In regard to the Mayo claims 1 to 4, inclusive, certain

language in these claims such as ‘‘adapted to draw another

supply of air through a relatively smaller number of other

of said passages to the interior of said casing’’ has been

frowned on by the Circuit Court of Appeals in the Seventh

Circuit and said to render the claim so indefinite that it

is invalid (Refrigeration Patents, Inc. v. Stewart-Warner,

supra).

In regard to the language above quoted the Court of

Appeals said:

‘‘We think the Halliburton case was not intended to

eliminate the use of such convenient and uniformly

understood descriptions.’’

A te enn Ts

25

It is submitted that the claim of the Mayo patent by the

use of such ‘‘convenient’’ means terms covers completely

non-equivalent devices, the very situation that the Supreme

Court desired to correct in the Halliburton case. Peti-

tioner’s device is so completely different in structure and

mode of operation that it was the basis of the Sperry patent

2,353,374 (R. 146), allowed by the Patent Office over the

Mayo patent in suit (see file history of Sperry patent Ex.

35).

For the reasons stated, it is believed that the Writ should

issue.

Max W. Zaset,

Foster York,

Counsel for Petitioner.

Sr cee