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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1948
- **Citation:** 335 U.S. 853

## Text

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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,

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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.

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_1826%3A1. Public record. Not legal advice.