Petition for Writ of Certiorari — Blanc v. Spartan Tool Co.

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FILE COPY See

AUG 23 1948

CHARLES EiMun vi ver

; Ci&

5°

Supreme Court of the United States

Goroser Team, A. D. 1947.

eeerecececee

SAMUEL O. BLANC,

Petitioner,

vs.

SPARTAN TOOL COMPANY,

Respondent.

PETITION FOR WRIT OF CERTIORARI AND

BRIEF IN SUPPORT THEREOF

J Gornon F. Hook,

38 South Dearborn Street,

Chicago, Illinois

Counsel for Petitioner

Scheffer Printing Company, Del. 717i

+ A A RI IEE

INDEX

PAGE

Prerrrion For Wrir or CERTIORARI.

immary Statement of the Matter Involved ............... 1

irisdiction .. 3

uestions Presented 4

easons for Granting the Writ 5

Brier 1n Support or Petrrion ror Writ or CERTIORARI.

pinions of the Courts Below 9

irisdiction .. CALTON Root ESSERE 9

SINS SE EE RENNIN accsXirdoctsameaeanostsenct inser noe eta as 9

pecification of Errors iRcivietanattheitadani 9

SIU ncictiiatahsinas ates ietattnennes onsen ctisasnanataniasniatshiaiigs ainda 10

Validity of Machine and Cutter Patents Sustained.... 10

I SIND: sicersincanstinshaudhtibiidihaccnnsintnsieciibteettbiasetenabnsnlcics 10

RNS EPID AcniicthiteinnitabtniinthennitneadindenasitiinAoneibiasiabisniabie 18

IE, BIN: ca leciinai cheaccitieiaribitnetsdcatnieinidlatticahapsitnnisiiibsanies 22

Cases Crrep.

lanc v. Cayo, 139 FP. 2d GO5 .........cscssssscscsecesesescesesseeee 5, 10, 12

lanc v. Cayo, 50 F. Supp. 552 ..........ccsccsccssssssessesssssenses 10

lane v. Curtis, 119 F. 2d 395

piagonioneincuanauae 5, 6, 7, 10, 11, 12, 13, 15, 16, 17, 19, 20, 21, 22

lanc v. Longstaff; Blanc v. Smith, 58 U.S.P. Q. 54

iscilisiadapieiplannaneiaiiahanadaiiniiihhninblnnasinbiitenie aeieniontiiniatpannnsed 6, 10, 15, 20

lanc v. Weston, 33 U.S.P.Q. 466 saipinanenasttininnihintiginl 7, 10, 19

lanc v. Weston, 35 U.S.P.Q. 150 ........ccccsssseseeees 7, 10, 20

lanc v. Weston, 42 U.S.P.Q. 427 .......cccccsscssssssssessseees 7, 10, 15

me Ws OMe, BOD TP, BU BRE isceensescssvenseccsessnsncessareenoes, 7, 10

lectric Cable Joint Co. v. Brooklyn Edison Co., Inc.,

292 U. S. 69 .. spamitininaeasianahinnieaninnmnbedianiatennianiitianibinaninie 6

PAGE

a v. Simon, Ascher & Company, Inc., 282 U. 8. ,

Goodyear Tire & Rubber Co. Inc. v. Ray-O-Vac Co.,

321 U. S. 275 10

Juniper Mills, Inc. v. J. W. Landenberger & Co., 76

U.S.P.Q. 300 8, 23

Lincoln Electric Co. v. Linde Air Products Co., 74 F.

Supp. 293 8, 23

National Brass Co. v. Michigan Hardware Co., 75 F.

Supp. 140 8, 23

Permutit Co. v. Graver Corporation, 284 U. S. 52 ........ 6

Smith, Administratrix v. Springdale Amusement Park

Limited, et al, 283 U. 8.121 6

Williams Co. v. United Shoe Machinery Corp. 316 U. 8.

364 . 10

STaTurss.

Revised Statutes, 35 U.S.C.A., Sec. 70 ..........000+

Supreme Court of the United States

» Oocroper Term, A. D. 1947.

SAMUEL O. BLANC,

Petitioner,

vs.

SPARTAN TOOL COMPANY,

Respondent.

PETITION FOR WRIT OF CERTIORARI.

To the Honorable, the Chie} Justice and Associated Jus-

tices of the Supreme Court of the United States:

Your petitioner, Samuel O. Blanc, prays that a writ of

certiorari should issue to review the judgment of the

United States Circuit Court of Appeals for the Seventh

Cireuit entered May 27, 1948 (Rec. p. 556) in the above

entitled cause.

A certified transcript of the record in the case, includ-

ing the proceedings in said Circuit Court of Appeals, is

furnished herewith in compliance with Rule 38 of the rules

of this Court.

Summary Statement of the Matter Involved

This is a suit brought by petitioner against respondent

for infringement of petitioner’s patent Re. No. 22,113,

issued July 16, 1942, and based on original patent No. 2,-

Fame,

111,527, dated March 15, 1938, and petitioner’s patent No.

2,069,871, issued February 9, 1937. Reissue patent No,

22,113 relates to a sewer cleaning machine embodying a

helically wound flexible coil spring as one of its essential

elements which is capable of being wound to a high ten-

sion, the same being insertable into a length of drain or

sewer pipe for removing roots, debris, and obstructions of

various types from the sewer. The machine is also pro-

vided with a cutting tool, preferably of the type disclosed

in patent No. 2,069,871, which is attached to the free end

of the flexible coil spring, the other end of the flexible

coil spring being attached to and supported by a storage

means in the form of a reel, either of the external or in-

ternal type which, when rotated, imparts to the flexible

coil spring a rotary motion about its longitudinal axis

for rotating and spinning the cutter attached at the free

end thereof. The arrangement of the reel and its driving

connection to the motion imparting means, as well as the

arrangement of the reel to the anti-kinking device and guide

for the flexible coil spring at the forward end of the ma-

chine, is such that the flexible coil spring may be readily

manipulated without damaging the machine and without

endangering the operator during the operation of the ma-

chine, and particularly when high torque is built up in the

flexible coil spring.

The entirely new concept of petitioner’s machine re-

sides in the fact that in order to cleanly cut roots and

other debris from the inner surface of a sewer or tile,

it is necessary to build up a high degree of torque within

the mechanical spring which, when released, causes the

cutter to rapidly spin. Petitioner’s inventive concept con-

templates a particular arrangement of the guide and anti-

kinking device with respect to the reel so as to provide

an effective drive for rotating the flexible spring coil and

to provide for the control and manipulation thereof even

wba

when. wound to high tension, in which condition it becomes

a highly dangerous instrumentality in that the same has

a decided tendency to kink and to become uncontrollable.

Cutters made in accordance with patent No. 2,069,871

embody five essential characteristics, described more in

detail hereafter, which make them particularly suitable

for use as an element of said machine where high torque is

built up in the flexible coil spring for cutting roots and

the like from sewers.

For the convenience of this Court, Reissue patent No.

22,113 will hereinafter be referred to as the ‘‘Machine

Patent” and patent No. 2,069,871 as the “Cutter Patent.”’

The District Court for the Northern District of Illinois,

Eastern Division, held claims 4, 5, 7, 8, 9, 10 and 11 of

the Machine Patent invalid for lack of invention over the

prior art, and not infringed by respondent, and claims 3

and 6 of the Cutter Patent invalid. for lack of invention

over the prior art, and not infringed by respondent (Rec.

p. 296).

The Court of Appeals for the Seventh Circuit affirmed

the judgment of the District Court with respect to in-

validity and non-infringement of the specified claims of

both the Machine and Cutter Patents (Rec. p. 556).

This petition is directed to a review of the decision of

the Court of Appeals with respect to the holding of in-

validity and non-infringement of the Machine and Cutter

Patents.

Jurisdiction.

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

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

Sec. 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., Sec. 347).

i ices

3. The date of the judgment which petitioner seeks to

have reviewed is May 27, 1948 (Rec. p. 556).

Questions Presented.

The decision of the Cireuit Court of Appeals for the

Seventh Circuit presents the following questions:

1. Whether the conflict between the decision of the Cir-

cuit Court of Appeals for the Seventh Circuit in this

cause, and the decision of the Circuit Court of Appeals for

the Sixth Circuit with respect to the validity of the pat-

ents in suit should be resolved in the interest of uni-

formity of decisions in the various Circuit Courts of Ap-

peals throughout the United States.

2. Whether the conflict between the decision of the

Cireuit Court of Appeals for the Seventh Circuit in this

‘cause, and the decisions of the Circuit Courts of Appeals

for the Sixth and Eighth Circuits and the District Courts

within the Eighth Circuit, with respect to the scope and

interpretation of the patents in suit, should be resolved in

order that the public at large may be properly advised as

to what devices and mechanisms constitute infringements

of the patents in issue.

3. Whether the Cireuit Court of Appeals for the

Seventh Circuit properly held that the claims of the Ma-

chine and Cutter Patents in issue are invalid as lacking

invention, and that respondent’s machine and cutters do

not infringe said claims.

4. Whether in an ordinary patent suit, as in the in-

stant case, where the suit was instituted and prosecuted

in good faith, and the record is absolutely devoid of any

showing of fraud or dilatory practices on the part of

petitioner or that respondent has been subjected to harass-

ment or unfair, oppressive or vexatious litigation, a Dis-

trict Court is justified in assessing attorneys’ fees against

2 :

Et eae

petitioner under the general provisions of Revised Stat-

utes, 35 U. 8. C. A. Sec. 70.

5, Where it is unlikely and highly improbable that

Circuit Courts of Appeals will review and interpret the

general provisions of Revised Statutes, 35 U. S. C. A.,

Sec. 70 (with the possibility of ultimate conflict of de-

cisions), with respect to when the assessment of attorneys’

fees is proper, because of the discretionary powers repos-

ing in the District Courts (the decision of the Circuit

Court of Appeals for the Seventh Circuit in this case

probably being typical of such Courts’ unwillingness to

ascertain the determinative facts with respect to whether

the assessment of attorneys’ fees in any case is justified),

whether the conflict between the decision of the District

Court for the Northern District of Illinois, Eastern Di-

vision, in this cause, and the decisions of the District

Courts of the Third and Sixth Circuits, with respect to

the interpretation and application of Revised Statutes,

35 U. S. C. A., Section 70, as it applies to the assessment

of attorneys’ fees in any particular case, should now be re-

solved and said Statute construed by this Court in the in-

terest of the public and the uniform application and ad-

ministration of federal justice.

Reasons for Granting the Writ.

The discretionary power of this Court to grant a writ

of certiorari is invoked upon the following grounds:

(1) The Court of Appeals for the Seventh Circuit has

held claims 4, 5, 7, 8, 9, 10 and 11 of petitioner’s Machine

Patent invalid, whereas the Court of Appeals for the

Sixth Circuit, in the earlier cases of Blanc v. Curtis, 119

F., 2d 395, and Blanc v. Cayo, 139 F. 2d 695, held claim 4

of petitioner’s Machine Patent valid. In the former case,

claim 4 was the only claim involved, while in the latter

ease, the Court of Appeals expressly overruled the trial

a en

court’s decision in holding claim 4 invalid as being in

contravention to the decision in Blanc v. Curtis, 119 F. 2d

395, and decided the case with respect to claims 5, 7, 8, 9,

10 and 11 also in issue, solely upon the ground of non-

infringement. Under similar circumstances, certiorari was

granted by this Court in Ensten v. Simon, Ascher € Com-

pany, Inc., 282 U. S. 445, Smith, Administratriz v. Spring-

dale Amusement Park, Limited, et al., 283 U. S. 121, Per-

mutit Co. v. Graver Corporation, 284 U. S. 52, and Elec-

tric Cable Joint Co. v. Brooklyn Edison Co., Inc., 292

U. S. 69.

(2) The Court of Appeals for the Seventh Circuit held

claims 4, 5, 7, 8, 9, 10 and 11 of petitioner’s Machine

Patent in suit, not infringed by respondent’s machine,

whereas the Court of Appeals for the Sixth Circuit in the

earlier case of Blanc v. Curtis, 119 F. 2d 395, in consider-

ing claim 4 of the original of the Reissue Machine Patent,

evaluated petitioner’s contribution in the art, and in con-

struing said claim 4 then in issue, ascribed to petitioner’s

invention the very device complained of in this cause.

The District Court for the Southern District of Iowa,

Southern Division, in the case of Blanc v. Longstaff and

Blanc v. Smith, 58 U. 8. P. Q. 54, recognized the precedent

established by the decision in Blanc v. Curtis, 119 F. 2d

395, and held petitioner’s Machine and Cutter Patents

valid and infringed by the defendants, Longstaff and

Smith, the defendant Longstaff’s machine being in all

essentials identical with respondent’s machine in this case.

(3) The Court of Appeals for the Seventh Circuit has

held claims 3 and 6 of petitioner’s Cutter Patent in suit

invalid as lacking invention over the prior art, whereas

the Court of Appeals for the Sixth Circuit in the earlier

ease of Blanc v. Curtis, 119 F. 2d 395, held claims 3 and

6 of this patent valid and construed the patent as dis-

closing a meritorious invention which substantially ad-

ons nian

vanced the art. It further held that the patent was en-

titled to a liberal construction. In deciding the case of

Blanc v. Curtis, 119 F. 2d 395, the Court of Appeals for

the Sixth Circuit emphasized that its decision with re-

spect to the patents was in conformity with the decisions

reached by the District Court for. the Southern District

of Iowa, Southern Division, in the cases of Blanc v. Wes-

ton, 33 U.S. P. Q. 466, Blanc v. Weston, 35 U. S. P. Q. 150,

and Blanc v. Weston, 42 U. S. P. Q. 427. The decision of

the Court of Appeals for the Eighth Circuit in the case

of Blanc v. Weston, 109 F. 2d 911, with respect to the

scope and interpretation of the claims of petitioner’s

Cutter Patent is not inconsistent with the dec‘sion in Blanc

vy. Curtis, 119 F. 2d 395, but is in conflict with the decision

of the Court of Appeals for the Seventh Circuit in this

cause.

In its holding, the Court of Appeals in the case of

Blanc v. Curtis, 119 F. 2d 395, held the cutters manu-

factured and sold by the defendant Curtis, which are in

their essentials indistinguishable from respondent’s cut-

ters in the present case, to constitute infringements of

claims 3 and 6 of petitioner’s Cutter Patent.

(4) That an important question of federal law which

has not been settled, but should be settled by this Court,

is presented by the decision of the District Court and the

Court of Appeals for the Seventh Circuit in this case, in

allowing respondent attorney’s fees, where the record

fails to show that the case is other than an ordinary pat-

ent case and that there are any special circumstances of

gross injustice prejudicial to respondent’s interests and

position. The assessment of attorney’s fees under Revised

Statutes, 35 U. S. C. A., Section 70, being a discretionary

matter not reviewable by Circuit Courts of Appeals in the

absence of abuse, it becomes necessary for this Court

at the present time to define and interpret this Section

snsliwaie

of the Statutes to resolve the cenflict existing between the

decision of the District Court in this case and the de-

cisions in Juniper Mills, Inc., v. J. W. Landenberger &

Co., 76 U. S. P. Q. 300 (D. C.,, E. D., Penn.), National

Brass Co. v. Michigan Hardware Co., 75 F. Supp. 140

(D. C., W. D., Mich., S. D.), and Lincoln Electric Co. vy.

Linde Air Products Co., 74 F. Supp. 293 (D. C., N. D.

Ohio E, D.), in the interest of uniformity and consistency

in the decisions with respect to this question and in order

that an authoritative precedent may be established for

all Circuits throughout the United States.

Wherefore, it is respectfully submitted that a writ of

certiorari to the Circuit Court of Appeals for the Seventh

Cireuit should be granted.

Gorpon F. Hoox,

Counsel for Petitioner.

a

BRIEF IN SUPPORT OF PETITION FOR WRIT

OF CERTIORARI.

Opinions of the Courts Below.

The findings and conclusions of the United States Dis-

trict Court for the Northern District of Illinois, Eastern

Division, were filed June 19, 1947 (Ree. p. 283) and the

judgment entered pursuant thereto on June 26, 1947 (Rec.

p. 306).

The opinion of the Circuit Court of Appeals for the

Seventh Circuit was filed May 27, 1948 (Ree. p. 548). It

is reported in 168 F. 2d 296.

Jurisdiction.

Note petition (supra, p. 3).

Statement of the Case.

The essential facts of the case are stated in the accom-

panying petition for writ of certiorart.

Specification of Errors.

The errors which petitioner will urge if a writ of cer-

tiorari is issued are that the Circuit Court of Appeals for

the Seventh Circuit erred:

1. In holding that claims 4, 5, 7, 8, 9, 10 and 11 of the

Machine Patent are invalid, and not infringed by respond-

ent’s sewer cleaning machine.

2. In holding that claims 3 and 6 of the Cutter Patent

are invalid, and not infringed by respondent’s cutters.

3. In approving the District Court’s finding that at-

torneys’ fees should be assessed against petitioner in this

case.

ARGUMENT.

Validity of Machine and Cutter Patents Sustained.

The validity of the original and Reissue Machine Pat-

ent, as well as the Cutter Patent, has been sustained by

the Court of Appeals for the Sixth Circuit in its prior

decisions in Blanc v. Curtis, 119 F. 2d 395 and Blanc vy.

Cayo, 139 F. 2d 695, the Court of Appeals for the Eighth

Circuit in Blanc v. Weston, 109 F. 2d 911, and the District

Court for the Southern District of Iowa, Southern Divi-

sion, in 58 U.S.P.Q. 54, 42 U.S.P.Q. 427, 35 U.S.P.Q. 150

and 33 U.S.P.Q. 466. Prior to the present decision, both

patents have been sustained with the exception of the case

of Blanc v. Cayo, 50 F. Supp. 552, in which the District

Court for the Western District of Michigan, Southern

Division, held claims 4, 5, 7, 8, 9, 10 and 11 of the Machine

Patent, and claims 1 to 6 of the Cutter Patent invalid in

view of the prior art, and not infringed by the defendant

Cayo. In that case on appeal (139 F. 2d 695), the Court of

Appeals for the Sixth Circuit expressly reversed the trial

court with respect to its holding of invalidity of claim 4

and decided the case with respect to all of the claims of

both patents in issue on the predicate of non-infringe-

ment.

Such findings, on the authority of Goodyear Tire ¢

Rubber Co., Inc. v. Ray-O-Vac Co., 321 U. S. 275, 278,

Williams Co., v. United Shoe Machinery Corp., 316 U. S.

364, 367, and others, should not be disturbed by this Court

and the issues herein should be limited to the determina-

tion of infringement of the patents involved.

Machine Patent.

The petitioner, Blanc, through the inventions of the

patents in suit, was the first to disclose to the art the

eae

combination of a machine and cutter (Machine Patent,

claim 11) in which high torque could be built up within

the flexible spring element, which coulé be safely manip-

ulated and controlled and which, as one of its essential

characteristics, operates on the principle of releasing such

torque for rapidly rotating the cutter for effectively clean-

ing the interior surface of sewers, drains and the like.

The machine and cutters of the two patents involved are

of novel construction and possess recognized practical

and commercial merit.

The sewer cleaning machine of the Machine Patent in

suit differs from all other machines of the prior art in

that the same embodies a combination of elements which

cooperate and co-act in a manner entirely foreiga and dis-

tinct to anything suggested in the prior art for the clean-

ing of such sewers and drains. Whereas, for the most

part, the prior art machines were confined to structure

capable of operating merely to ram or dislodge the stop-

page in sewers and the like, petitioner’s Machine Patent

has the novel characteristic of being able, not only to ac-

complish such functions, but also to operate in the man-

ner described to assure cleaning of the sewer at the in-

side surface thereof. Petitioner’s patented machine and

its principle of operation are not disclosed or even sug-

gested in the prior art.

The Circuit Court of Appeals for the Sixth Circuit,

in the case of Blanc v. Curtis, 119 F. 2d. 395, recognized

petitioner’s contribution in the art and, while it was of

the opinion that the various elements of the combination

were not new, nevertheless, it ascribed invention to peti-

tioner’s sewer cleaning machine.

After pointing out that the flexible shaft of petitioner’s

machine was the same as the flexible element of the

Stremel patent No. 1,616,833 (119 F. 2d. 396) it discussed,

among others, the three principal patents to Yohn, Nos.

‘nic OA il

2,037,103 and 2,037,104 and Kugelman No. 2,042,407, and

concluded that invention was involved with the following

remarks:

“The amount of power stored in Blanc’s spring

coil is very high and the working out of a device

which would control this amount of power and at

the same time fulfill the other needs of the work to

be done in the ordinary house sewer required more

than mechanical skill. We conclude that claim 4 is

valid.”

The decision of the Circuit Court of Appeals for the

Sixth Circuit affirmed the opinion of the Patent Office that

invention was involved in allowing the claims in the origi-

nal and reissue applications over these prior art patents.

The Cireuit Court of Appeals for the Sixth Circuit in

its decision in Blanc v. Cayo, 139 F. 2d 695, specifically re-

affirmed its holding of validity of claim 4 and, accordingly,

it must have agreed that petitioner’s Machine Patent dis-

closes inventive ingenuity, as expressed in its prior decision

in Blanc v. Curtis.

The Circuit Court of Appeals for the Seventh Circuit

in the present case, premised its holding of invalidity of

the claims of the Machine Patent on the theory that the

elements of petitioner’s machine were old and that the

same function no differently than corresponding elements

in the prior art. It made reference to the disclosure of

flexible shafts (Rec. p. 552) in patents of the prior art,

comparable in all respects to the Stremel patent No. 1,-

616,833 referred to for the same purpose by the Circuit

Court of Appeals for the Sixth Circuit in deciding the

ease of Blanc v. Curtis. The Court of Appeals then pro-

ceeded to give its interpretation of three prior art patents

which it considered to fully anticipate petitioner’s con-

tribution in the art, and on which it rested its conclusion

that no invention was involved. These are the Yohn

eae en

patents Nos. 2,037,103, 2,037,104 and the Kugelman patent

No. 2,042,407. These patents were reviewed by the Court

of Appeals for the Sixth Circuit in the case of Blanc v.

Curtis, but that court held that the same were not an-

ticipatory and concluded that petitioner’s contribution

amounted to inventive ingenuity. The Court of Appeals

in this case concluded its opinion with respect to the in-

validity of petitioner’s Machine Patent with the following

remarks :

“To us it appears that all the elements of 113 were

old in the art and functioned no differently in plain-

tiff’s patent than they did in the prior art. Bringing

together of old devices, without securing some new

and useful result as the joint product of the combina-

tion, does not constitute a patentable invention,

Adams v. Bellaire Stamping Co., 141 U.S. 539, and

when no new function results from a combination of

elements and the new result is merely that which

arises from the operation of each one of the elements,

the arrangement does not constitute invention. ‘There

is merely an “aggregate of old results.”’ General

Machinery Corp. v. Clearing Machine Corp., 99 F. 2d

20, 27. See also Lincoln Engineering Co. v. Stewart-

Warner Corp., 303 U.S. 545, 549; McIlvaine Patent

Corp. v. Walgreen Co., 138 F. 2d 177; and Allen-

Bradley Co. v. Square D. Co., ...... | a eee , decided

by this court on March 6, 1948.”

Thus, it will be seen that the decisions of the Court

of Appeals for the Sixth Circuit and the decision of the

Court of Appeals for the Seventh Circuit in this cause,

are irreconcilable and in complete conflict with one an-

other, not only from the standpoint of the conclusions

reached, but the premises and reasoning advanced in sup-

port of such conclusions.

The specific embodiment of petitioner’s invention is

shown in the patent (Rec. p. 336). From the drawings

and description, it clearly appears that the machine com-

prises an elongated flexible element 49 of coiled spring

pS

wire which is capable of being inserted to any length in a

sewer pipe, and when the end thereof is held against rota-

tion by the cutter 56 engaging roots and the like, of being

wound to high tension; a reel 28 for holding and storing

the flexible spring element; guide means 20, 21 on the

axis of rotation of the reel through which the flexible

spring element passes when it is fed onto and off of the

reel; a motor 57 for imparting rotational movement to

the reel and to the flexible spring element; and an anti-

kinking device in the form of a tubular member 35 which

imparts a crank-like formation to that portion of the flexible

spring element lying between the reel and the guide, and

which maintains its crank-like formation against kinking

under conditions of high tension so that at all times during

the operation of the device, the flexible spring element

may be turned by the crank and thereby be wound up

to create the high tension required for the cutting of roots

and the like. This tension when released functions to

exert a high and quickly applied force to the root cutter

56 which is mounted on the inner end of the flexible

spring element, with the result that roots and the like are

quickly and effectively removed from the sewer.

The action of the flexible coil spring is more particv-

larly described in the patent (Rec. p. 338, (p. 2 of Patent),

lines 49 to 59, col. 2).

It will be noted that the specific illustrative form of

the invention of petitioner’s Machine Patent embodies a

reel of the external type, that is to say, one in which

the flexible spring element is stored upon the outside of

the reel in contradistinction to a reel of the internal

type in which the flexible spring element is stored within -

the confines of the reel. The question as to whether these ©

two forms of reels are mechanical equivalents in the com-

bination of the Machine Patent, was first raised for ju-

dicial determination before the Court of Appeals for the

— 15 —

Sixth Circuit in the case of Blanc v. Curtis, 119 F. 2d 395.

That court held that such reels are equivalents in the com-

bination, and stated (p. 397):

“In appellees’ machine (Patent 1,963,561, issued

to Sanger), the shaft is coiled inside an annular space

within the periphery of the drum or reel rather than

wound on a hub in the usual manner. Appellant’s

commercial embodiment of the patent also uses an

internal reel rather than the external reel shown in

the drawings and we regard the difference between

the reels as immaterial.”’

Claim 4 of petitioner’s Machine Patent was the only

claim then in issue and in view of the above, that court

necessarily decided that claim 4 is not limited to a ma-

chine in which an external type of reel is employed, and

ascribed to petitioner’s invention, as defined by said

claim, a device embodying an internal type of reel.

It is further apparent from that decision (p. 397) that

while the court was unwilling to interpret the claim as

being infringed by the device then in issue (exemplified

in the Sanger patent No. 2,167,268, (Ree. p. 496)), because

of what it considered to be a material difference in the

anti-kinking devices employed, nevertheless, it is apparent

from the decision that the court did not intend that

claim 4 should be limited to exclude those devices in

which a tubular anti-kinking device forms a part of the

assembly.

In arriving at the decision in the case of Blanc y.

Curtis, the Court of Appeals had occasion to refer to the

decision of the District Court for the Southern District

of Iowa, Southern Division, in the case of Blanc vy.

Weston, 42 U.S.P.Q. 427, in which claim 4 of the Machine

Patent was similarly construed.

In the later cases of Blanc v. Longstaff and Blanc v.

Smith, 58 U.S.P.Q. 54, the same District Court in recog-

pa”

nizing the precedent established by the Court of Appeals

for the Sixth Circuit in Blanc v. Curtis, with respect to

claim 4, held the defendants’ devices to infringe claims

4, 5, 7, 8, 9, 10 and 11 of the Machine Patent.

The structure of respondent’s sewer cleaning machine

can be best determined from the physical machine itself,

Defendant’s Exhibit A, and the cut (Rec. p. 247) appear-

ing as Defendant’s Exhibit W-1 and, as constructed, con-

tains all of the novel characteristics of the invention of

the Machine Patent, and fully responds in every respect

to the definition which the Circuit Court of Appeals for

the Sixth Circuit in the case of Blanc v. Curtis, gave to

the Blane invention.

Respondent’s machine employs a flexible spring ele-

ment in which the unused portion is held by a reel of

the internal type and is rotated by a motor which drives

the reel. The flexible spring element passes through a

tubular member having a guide portion on the axis of

rotation of the reel for controlling the flexible spring

element while the same is payed out from and retracted

into the reel. The tubular member which integrally em-

bodies the guide at the front of the machine is adapted

to rotate with, or relative to, the reel, and serves as a

means for preventing kinking of the flexible spring ele-

ment when high torque is wound into the same and man-

ipulated to cut roots and the like in sewers. The tubular

member also disposes the flexible spring element in crank-

like formation with respect to the reel and its axis of

rotation, whereby the same may be rotated about its longi-

tudinal axis for rotating the cutter and for winding torque

into the flexible spring element.

The operation of respondent’s machine is described in

respondent’s bulletin (Rec. pp. 203-206).

Of the seven claims in issue, claims 4 and 11 may be

rm ek

taken as typical, it being noted that claim 10 sets forth

the identical structure of claim 11 except for the incor-

poration of the cutter which constitutes an element of the

combination of claim 11. It will be observed that respond-

ent’s device responds literally and in spirit to the terms

of said claims. The device incorporates an internal type

of reel which the Court of Appeals for the Sixth Circuit

in the case of Blanc v. Curtis held to be equivalent to

the external type of reel of the specific embodiment of the

invention disclosed in petitioner’s patent. Respondent’s

machine also includes a tubular anti-kinking device which,

in combination with the other elements as arranged in

respondent’s machine was ascribed by that court as con-

stituting petitioner’s invention, as defined in claim 4 of the

Machine Patent.

It is to be observed that the Circuit Court of Appeals

for the Seventh Circuit in this case decided the issue of

validity adversely to petitioner and merely affirmed the

judgment of the District Court with respect to infringe-

ment without comment. Finding of Fact 16 (Rec. p. 291)

is to the effect that in a sewer cleaning machine as dis-

closed by petitioner’s Machine Patent, reels of the in-

ternal and external type are not equivalents. Finding of

Fact 15 (Rec. p. 290) is to the effect that the tubular mem-

ber of respondent’s device is not the equivalent of, and does

not function to perform the same results as, the anti-

kinking tubular element of the patented structure.

Such findings.of fact are incompatible with the findings

of the Circuit Court of Appeals for the Sixth Circuit

in the case of Blanc v. Curtis, and the Circuit Court of

Appeals for the Seventh Circuit, in affirming the District

Court in this case, has brought about a conflict with re-

spect to infringement of petitioner’s Machine Patent which

requires clarification by this Court.

a A EOE

ome 1B am

Outter Patent.

The invention of this patent relates to a specially de.

signed and constructed cutter which is capable of fune.

tioning as the cutter element attached to the end of the

flexible spring element of a sewer cleaning machine made

in accordance with the invention of the Machine Patent,

The cutter of the patent (Rec. p. 332) comprises a

head adapted to be attached to the flexible spring element

at one end, and has blades attached to the other end for

cutting roots and removing debris from sewers and the

like. The assembly is characterized as embodying the

following essential features, namely—

(a) The blades must diverge outwardly from the

mounting hub;

(b) The blades must be capable of flexing inwardly

and outwardly in such manner that they may be pressed

together so as to enter and pass through small restrictions

in pipes, such as encountered at inlet openings and at

joints and bends therein, and when once inside to again

expand to their original positions;

(c) The blades must have rearwardly inclined cutting

edges and be capable of exerting a holding action with

respect to an obstruction for stopping the end of the

flexible spring element to cause the same to wind up to

create the required high tension therein, and at the same

time exert a draw cutting action to sever roots and the

like when the spring tension is released and high rotary

motion is imparted to the cutter;

(d) The leading ends of the cutter must be turned

inwardly to produce a sled-runner action in sliding over

and passing restrictions and bends in the pipe; and

(e) The blades must have such flexibility as to be

capable of responding to centrifugal force produced by

the high speed rotary motion created when the high-ten-

= 19

sion spring is released, so as to be expanded by such

force to a maximum divergence and to thereby engage

the inner surface of the pipe or sewer, irrespective of the

size thereof, and to cut the roots or other debris flush

with the pipe surface, with the result that the pipe is

entirely freed of all obstructions.

The action of the cutter is described in the specification

of the patent (Rec. p. 334 (p. 2 of Patent), lines 6 to 19,

Col. 1).

Petitioner’s Cutter Patent was held valid by the Court

of Appeals for the Sixth Circuit in the case of Blanc v.

Curtts, 119 F. 2d 395, and was recognized as covering a

pioneer implement and entitled to be liberally construed.

It was therein stated (p. 339):

‘‘Appellant’s cutter is a pioneer implement, and

should be given a construction sufficiently broad to

realize the purpose of the patent. It is a meritorious

improvement, substantially advancing the art, and is

entitled to a liberal construction. National Battery

Co. v. Richardson Co., 6 Cir., 63 F. 2d 289, 293. Ap-

pellant’s and appellees’ cutters are substantially iden-

tical, operating on the same principle and accom-

plishing the same result in substantially the same

way. Cf. Sanitary Refrigerator Co. v. Winters, 280

U.S. 30, 50 S. Ct. 9, 74 L. Ed. 147; Sun Ray Gas Corp.

v. Bellows-Claude Neon Co., 6 Cir., 49 F. 2d 886.

The use of a knife practically identical with one of

the accused cutters was held in Blanc v. Weston,

35 U.S.P.Q. 150, to violate the injunction issued in

Blanc v. Weston, 33 U.S.P.Q. 466.”

The scope and interpretation given to claims 3 and

6 by the Court of Appeals in holding the same valid and

infringed by appellees’ cutters in the case of Blanc v.

Curtis, conforms in all respects to that of the District

Court for the Southern District of Iowa, Southern Divi-

sion, in the cases of Blanc v. Weston, 33 U.S.P.Q. 466,

ye oe

aed

~ pn

and Blanc v. Weston, 35 U.S.P.Q. 150, referred to and

acquiesced in by the Court of Appeals in deciding that

case.

As with respect to the Machine Patent, the case of

Blanc v. Curtis established a precedent which was fol-

lowed in the cases of Blanc v. Smith and Blanc v. Long.

staff, 58 U.S.P.Q. 54, wherein the District Court for the

Southern District of Iowa, Southern Division reiterated

its position with respect to the Cutter Patent in holding

claims 1 to 6, inclusive, valid and infringed by the defend.

ants therein.

In contrast to the interpretation given claims 3 and 6

of the Cutter Patent by the Court of Appeals for the

Sixth Circuit in Blanc v. Curtis, the Circuit Court of

Appeals for the Seventh Circuit in this case, held the

identical claims invalid on the ground that no invention

was involved in combining those elements which it con-

sidered to be old in the art on the theory that no new

function was performed by the device.

Respondent’s cutters (Def. Exs. B-1 to B-4) are fairly

represented and their operation described in respondent's

bulletin (Pif. Ex. I, Ree. p. 203) and, as will be apparent,

possess all of the peculiar characteristics and special fea-

tures above enumerated which identify petitioner’s con-

tribution in the art. Such cutters are designed to be

introduced through a small opening of a pipe, and then

expand to the diameter of the larger tile under the action

of centrifugal force, and finally engage roots and other

debris, exert the holding action requisite for winding

high tension in the flexible spring element (where such

action is necessary) and chop or cut roots or other debris

flush with the tile wall when the high tension is released.

While respondent’s cutters are formed with blades in

opposed relation to one another, this, however, was consid-

a

ered immaterial by the Court of Appeals for the Sixth

Cireuit in the case of Blane v. Curtis, 119 F. 2d 395, in

conformity with the broad interpretation placed upon

claims 3 and 6 then in issue.

The court therein stated (p. 399):

“In view of the construction that we give this

patent we do not consider these variations material,

nor that the rearward inclination of the blades as

distinguished from that of the cutting edges is the

gist of appellant’s invention. We agree with the

Court of Appeals for the Eighth Circuit (Blanc v.

Weston, 109 F. 2d 911, 912) that an essential charac-

teristic of the Blanc cutter patent is a thin flexible

cutting member of very high resilience. * * *”

Similar cutters were held to be infringements of claims

3 and 6 in the case of Blanc v. Curtis. The cutters held

to infringe in that case are reproduced in this record,

pages 212 to 216, inclusive.

While the Circuit Court of Appeals for the Seventh

Cireuit decided the issues with respect to the Cutter

Patent solely on the ground of invalidity thereof, it

affirmed the judgment of the District Court in its finding

that respondent did not infringe on the basis that re-

spondent’s cutters did not embody the essential elements

above recited which characterize petitioner’s contribution

in the art.

The situation as it involves petitioner’s Cutter Patent

is similar in all respects to the Machine Patent, namely,

irreconcilable conflict with respect to both validity and

infringement between the decision of the Cireuit Court of

Appeals for the Sixth Circuit as expressed in the case of

Blanc v. Curtis and the decision of the Circuit Court of

Appeals for the Seventh Circuit in this case. Similar con-

flict with respect to the Cutter Patent exists between the

decision in this case and the decisions of the District

=, AS

Court for the Southern District of Iowa, Southern Divi-

sion, in the cases above cited, which are clearly in con-

formity with the decision in the case of Blanc v. Curtis.

The situation is such that it is necessary for this Court

to review the Cutter Patent, and that the questions with

respect to validity and infringement be resolved in order

that there may be a determinative evaluation of this

patent in the interest of uniformity of decisions of the

Circuit Court of Appeals throughout the United States.

Attorneys’ Fees.

The Revised Statutes, 35 U.S.C.A., Sec. 70, as amended,

‘provides that

“A court may in its discretion award reasonable

attorneys’ fees to the prevailing party upon entry of

judgment in any patent case.’’

At the time of entry of judgment by the District Court

in this case, no Federal Court had rendered a decision

interpreting this amended Statute and indicating under

what circumstances attorneys’ fees should be assessed

against the losing party in a patent suit. The intent of

the Statute is explicit, as set forth in the Senate Report

No. 1503, June 14, 1946, U.S. Code Congressional Service,

79th Congress, Second Session, 1946, that recovery of at-

torneys’ fees will not become an ordinary thing in patent

suits. The District Court indicated very clearly (Rec.

pp. 303, 305) at the time of entry of the judgment, that

this question as to whether or not this was a proper case

in which to assess attorneys’ fees should be raised in the

Court of Appeals. The record shows that such question

was in effect certified to the Court of Appeals for determ-

ination.

The Cireuit Court of Appeals for the Seventh Circuit

(Ree. p. 555) however, refused to review the point in

question as intended by the District Court, and held that

and 23 <2

the District Court did not abuse its discretionary power

in awarding attorneys’ fees in this case.

The record clearly shows this to be an ordinary patent

ease. There is not an iota of evidence to show that there

are any special circumstances which would warrant the

assessment of attorneys’ fees. The record is entirely

devoid of any showing that petitioner is guilty of fraud,

malice, dilatory practives or vexatious acts in this case;

they are entirely absent. Clearly, extended litigation in-

volving petitioner’s patents does not constitute special

circumstances warranting the assessment of attorneys’

fees in this case.

Since entry of the judgment, at least three United

States District Courts in patent cases on the order of

the present case have refused to assess attorneys’ fees

against the losing party. See Lincoln Electric Co. v.

Linde Air Products Co., 74 F. Supp. 293, National Brass

Company v. Michigan Hardware Company, 75 F. Supp.

140; Juniper Mills, Inc., v. J. W. Landenberger € Co.,

76 U.S.P.Q. 300.

The decision of the District Court in this case with

respect to attorneys’ fees, which the Cireuit Court of

Appeals for the Seventh Circuit refused to review, even

though the question was certified to it for decision, is

in clear conflict with the decisions. of other District

Courts in the Second and Third Circuits.

It is unlikely and highly improbable that Circuit Courts

of Appeals will review and interpret the general provisions

of Revised Statutes, 35 U.S.C.A., Sec. 70 (with the possi-

bility of ultimate conflict of decisions) with respect to

when the assessment of attorneys’ fees is proper because

of the discretionary powers reposing in the District

Courts. Thus, there is an important question of federal

law which has not been settled, but should be settled

attiion

now by this Court in the interest of uniformity in the

decisions of the Courts of the Federal Judicial Circuits,

For the reasons above stated, it is urged that the peti-

tion for writ of certiorari be granted.

Respectfully submitted,

Gorpon F. Hoox,

Counsel for Petitioner.