Petition for a Writ of Certiorari — York Corp. v. Refrigeration Engineering, Inc.

TABLE OF CONTENTS

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Respondent’s Business ....................

Patent Invalidity Defenses Raised by Peti-

satis Dinnkih Continecens ommbahawls ohana de

Prior Knowledge, Sele and Use.........

Swift & Company at Elmira, N. Y. ....

Polar Ice Installation at Indianapolis. .

Carnegie Steel Company at Pittsburgh

Illinois Steel Company at South Chi-

WUE iia a0 cadadec antics Caxenaabiaes

Northwestern Iron Company at May-

PEN: MEME “Sins cv aatacs ees enna

Trullinger & Eustice at Yamhill, Oregon

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Reasons Relied Upon for the Allowance of the

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Summary of Argument. .................0..008.

Argument:

Point I In holding that Respondent did not

misuse its patent in an effort to control com-

petition on unpatented devices, the Court of

Appeals decided an important question of Pat-

ent Law in conflict with the decisions of this

Court and of other Courts of Appeals........

Point II In refusing to disturb the District

Court’s findings of fact which are inferences

from undisputed evidence or which are based

upon documentary evidence or depositions

only, the Court of Appeals gave an interpreta-

tion to Rule 52a contrary to the decisions of

this Court and of other Courts of Appeals...

Point III In giving the claims of the patent an

interpretation specifically abandoned in the

Patent Office, the Court of Appeals decided a

question of patent law contrary to the de-

IE Gr Wa a neds bnaccdesaskuseess

Point IV In holding infringement to exist when

Petitioner’s device did not have all the ele-

ments of combination Claim 13, the Court of

Appeals applied a rule of law contrary to that

long established by this Court...............

I re a cia di ia oss Se awee ae kane

18

24

TABLE OF CASES

PAGE

B. B. Chemical Co. v. Ellis et al., 313 U. 8. 558; 314

U.S. 495 (1942)... 0... e eee cece cece e cece neces 22, 24

Banister v. Solomon, (2 Cir., 1942) 126 F. 2d 740,

OE 2c iv ckecchac¥esiasuccesqaoseuesacsesnss 14, 27

Carbice Corp. v. American Patents Corp., 281 U. 8.

711; 283 U. S. 27 (1931). ..... 2. eee eee eee ee eee 22, 24

Carter Oil Co. v. McQuigg, (7 Cir., 1940) 112 F. 2d

915, 279 cece cence cece ence cence ec eeeeeeeeees 14, 27

Cimiotti Unhairing Company v. Am. Fur Ref. Co.,

198 U. &. B00, 41D... cece ce geet eee eeseees 15, 32

Equitable Life Assur. Soc. of U. 8. v. Irelan, (9 Cir.,

1941) 123 F. 2d 462, 464..........-. cece e eee eeee 27

Fleming v. Palmer, (1 Cir., 1941) 123 F. 2d 749, 751;

cert. den. (1941) 316 U. S. 662...........-----00 14, 27

Frank Adam Electric Co. v. Westinghouse Elec. Mfg.

Go., (8 Cir., 1945) 146 F. 2d 165, J67........... 14, 19, 23

Galion Metallic Vault Co. v. Edward G. Budd Mfg.

Co., (3 Cir., 1948) —— F. 2d ——, 78 U.S. P. Q.

i ae, Sek eaeeiee dak seenne ensue waee 14, 23

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

a : errs CP rerer rere errs ry 30

Hazel-Atlas Co. v. Hartford Co., 322 U. 8. 238, 246. . 32

Kaeser & Blair v. Merchants’ Assn., (6 Cir., 1933)

64 F. 2d 575, 576... eee eee eee eee eens 14, 27

Kycoga Land Co. v. Kentucky River Coal Corp., (6

Cir., 1940) 110 F. 2d 894, 896; cert. den. (1940) 312

MI: ices cS deeded Bakendeeds sacs svotaeess 14, 26

Iv

Landis Machinery Co. v. Chaso Tool Co., (6 Cir.,

1944), 141 F’. 2d 800; cert. den. (1944) 323 U. §, 720 14,93

Leitch Mfg. Co. v. Barber Co., 302 U. S. 673; 302

MATION 5s} 5k 5b cnns 5 inh csbebeks ce 22,4

Master Metat Strip Service Inc. v. Protex Weather.

strip Mfg. Co., (7 Cir., 1948) —— F. 2d —., 78

U.S. P. iy Bee ils wb ihe: Ve ante wniins oak costae Sie

Mercoid oom. v. Sentnool Co., 320 U. S. 680... .14, 21, =

23, 24

Mercoid Corp. v. Mid-Continent Co., 319 U. S. 737 ; ‘

320 U. S. 661, 667-668, 670.............. 14, 15, 19, 20, 21

22, 23, 24, 39

Morgan Envelope Co. v. Albany Paper Co., 152 U.S.

Ph Se SNRs cas emake bdid san’ cd 15, 30

Morton Salt Co. v. Suppiger Co., 313 U. S. 555; 314

ee RIND nth asd d. hhc Be BRL dd Cdvned cca: 22, 4

Munroe v. Smith, (1 Cir., 1919) 259 F.1,2.......... 14, 26

Nashua Mfg. Co. v. Berenzweig, (7 Cir., 1930) 39 F.

2d 896, Md usnebbahh Ghsndacscdeundcccn cr. ots 14, 27

Photoplay Pub. Co. v. LaVerne Pub. Co., (3 Cir.,

PE CE, WON 55K chs Codwaeasccaacguck 14, 27

Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co.,

(9 Cin, 1065) 162 FP. 90 01, 06... 5 oc oc ceca cee 25

Refrigeration Engineering v. York Corp., 9 Cir. 1948,

Be he I V0. eh on he ore wk oor ae 2, 3, 5, 11, 26

Schriber Co. v. Cleveland Trust Co., 311 U. 8. 211,

MPU RACE AREA os v ORL ee hve vm cakes 15, 30

Stewart v. Ganey, (5 Cir., 1941) 116 F. 2d 1010, 1013.. 14, 26

v

PAGE

stork Restaurant v. Sahati, (9 Cir., 1948) 166 F. 2d

GAB, SUZ .. eee nec ccceeeeecceeeetnereeeeneeeness 27

Vihlein v. General Electric Co., (7 Cir., 1931) 47 F.

94997, 1003 ... 2... cece cece cece eeeeeeseeeeeees 14, 27

United States v. Corporation of the President etc.,

(10 Cir., 1939) 101 F’. 2d 156, By duces awdoases 15, 27

United States v. U. S. Gypsum Co., 333 U. S. 364,

EE pu ns cus hnuonsbSbseen Sens sshwns see yaenne 14, 25

Wigginton v. Order of United Commercial Travelers,

(7 Cir., 1942) 126 F. 2d 659, 661; cert. den. (1942)

SOP UW). B. GOS... ccc asncwcessaccsevees eaecay 15, 26

SraTuTes

Declaratory Judgment Statute, Section 274d of the

Judicial Code (28 U. S. C. § 400; now 28 U. S. C.

SO Sv sicntn annuus cdechasburenienncueuean sis 13

Jndicial Code (28 U. S. C. §1254(1)) and Rule

FC) eee 13

Patent Laws of the United States, Section 24(7)

Judicial Code (28 U.S. C. § 41(7) ; new 28 U.S. C.

RWBDB(G)) 2. oc ccc cc esses veneeseccesenenceess 13

Rule 52a of the Federal Rules of Civil Procedure,

98 U.S. C. A. 7286... 2. ec es ccececccncccceccees 14, 24

SOR Eder iE Pm mh

——

Supreme Court of the United States

OCTOBER TERM 1948

No.

Menges ‘

York CogPpoRATION,

Petitioner,

vs. L

REFRIGERATION ENWorneenrne, Inc.,

Respondent.

A

PETITION OF YORK CORPORATION FOR WRIT OF

CERTIORARI TO THE COURT OF APPEALS FOR

THE NINTH CIRCUIT

To rHE HonoraBLE THE CHIEF Justice AND THE ASSOCIATE

Justices oF THE SuPREME CoURT OF THE Unrrep States:

Your Petitioner, York Corporation, respectfully prays

for a Writ of Certiorari to the United States Court of Ap-

peals for the Ninth Circuit to review a judgment of that

Court entered on June 29, 1948.

A certified transcript of the record, including the pro-

ceedings in said Court of Appeals, is furnished herewith,

pursuant to Rule 38 of the Rules of this Court.

SUMMARY AND SHORT STATEMENT OF THE MATTER

INVOLVED

Petitioner, York Corporation, brought this action

against Refrigeration Engineering, Inc., seeking a declara-

tory judgment that the McAdam patent No. 2,219,393 was

invalid and that Petitioner did not infringe any of the pat-

ent’s fourteen claims. In its answer Respondent ineludej

a counterclaim charging infringement by Petitioner, t

which Petitioner filed a reply, denying validity and in.

fringement.

The United States District Court for the Southern Dis

trict of California, Central Division, rendered an oral

opinion of two paragraphs, holding claims 1 to 12, and 14

invalid; claim 13 valid because it was ‘‘the only claim

which has the entire combination for constantly maintain.

ing temperatures in a room below the freezing point of

water’’, and holding this claim infringed (R. I, 12)*.

The District Court adopted verbatim the proposed Find.

ings of Fact, Conclusions of Law and the Judgment sub.

mitted by Respondent (R. I, 13-26).

The Court of Appeals affirmed the District Court's

holding of invalidity of claims 1-9, 12 and 14 and of validity

and infringement of claim 13; and held claims 10 and 11

also valid, but made no finding as to infringement of such

claims (R. V, 1562; 168 F. 2d 896).

Petitioner urged invalidity of the patent because of ap.

ticipation and lack of invention, not only in view of prior

patents, but also because of five instances of prior public

. knowledge and use, and one instance of prior public knowl-

edge an¢ sale of mechanisms having the same combination

of old parts.

In support of these defenses, Petitioner offered prior

patents, which were not the subject of any oral testimony,

and the depositions of 25 witnesses plus, as to one prior

use, the oral testimony in Court of two witnesses. In spite

of the fact that this prior art, published and practical, con-

stituted Petitioner’s main defenses with respect to inval-

idity, and were fully supported by the evidence, there is

not one word of discussion, or even mention, of any of this

prior art in the opinions of either Court below.

* While the five volumes of the Record are paged con-

secutively, for convenience the volume will be indicated

by Roman numerals.

During Petitioner’s cross-examination of Respondent’s

Vice President and General Manager, facts were brought

to light which conclusively proved that Respondent was it-

self not selling the entire patented combination, was at-

tempting to use the patent to protect such unpatented busi-

ness from competition, and was therefore misusing its

patent (R. I, 79-81). Petitioner therefore moved; before

the close of its case (R. III, 1053-1060), to amend its com-

plaint to set up this defense, urging that Respondent should

be barred from relief on the patent, but this motion was

denied by the District Court (R. ITI, 1060-1063). The Court

of Appeals held that th motion was properly denied be-

cause ‘‘there was no proof that defendant had misused the

patent’’ (R. V, 1561; 168 F. 2d 896, 901).

The patent in suit

The McAdam patent is for a mechanical device con-

sisting of a combination of parts for a commercial re-

frigerating machine, some of these parts serving the func-

tion of removing frost which accumulates upon the cooling

coils of the refrigerator. Such removal is desirable be-

cause the frost reduces the cooling efficiency of the coils.

The patented device (R. IV, 1428) shown at the top right

of the illustration opposite page 4, consists of a unit

placed in the space which is to be refrigerated, that is, the

refrigerator box 10, which unit has cooling coils 5, a water

supply conduit 17 into which water is allowed to flow through

valve 18 into the pan 14 which is placed above the coils. The

water flows through the holes 15 in the pan, down over the

coils, melting the frost, and is then collected in the bottom

pan 8 from which it flows out of the refrigerated space

through a self-draining conduit 11. When the frost has

been removed from the coils, the valve 18 is closed, turning

off the inlet water, and any water remaining in the pan over

the coils drains down onto the coils through the holes, and

may also drain back through the supply conduit 17 and out

through the valve. This valve is of the well known “‘stop

+

and waste’’ type, which allows back drainage of the water

in the pipe even while it shuts off the incoming water.

Claim 13° calls for a

inlet pipe

means for periodically supplying water (here a

valve), all in combination with a

refrigerated space, that is, the refrigerated room

or refrigerator box.

TD Om ge po

a

3

E

a

Claim 10 adds certain elements to those listed above,

including fins on the coils, and ‘‘channels’’ in the coils

Claim 11 adds to claim 10 the element of water pipes of

slow heat conducting low-specific-heat material.

* 13. In combination with a refrigerated space**, a coil

adapted for periodic defrosting, a spray-head positioned to

distribute water over said coil for defrosting thereof, a

fan to move air of said space over said coil adapted to be

discontinued during defrosting periods whereby the air

of said space does not rise above the freezing point of

water during the defrosting period, a drip pan Fispoeed

below said coil to receive water and ice gravitating from

said coil, a self-draining conduit leading from said drip

pan to points remote from said space, and an inclined water

supply conduit leading from a point remote from said space

to said spray-head; said water supply conduit at said

remote point provided with an opening normally open to

the atmosphere [through a valve] whereby the conduit

and spray-head respectively are self-draining, and means

{in this instance a valve] for periodically supplying water

to said supply conduit during period when said fan is

inoperative.

** Italics ours unless otherwise indicated.

As the Court of Appeals stated (R. V, 1553;-168 F. 2d

896, 899) :

‘‘Defendant [Respondent] concedes that all ele-

ments of the claimed invention were old and well

known to the refrigeration art prior to such

invention’’.

The patent is thus clearly for a mechanism consisting

of a combination of physical elements. Since the inven-

tion resides in the combination of all of the elements, when

any mechanism lacks one or more of the elements of the

combination, that mechanism is not the patented one.

Respondent’s business

Respondent’s Vice President and General Manager, its

only officer to testify, stated that Respondent’s business

was the ‘‘manufacturing of nothing but coils’’ (BR. I, 41),

only one of the elements of the combination. It did, how-

ever, sell some of the other parts of the combination, such

as the fan and pans, with the coils it manufactured. But

Respondent does not sell all of the elements of the combina-

tion. The evidence as to this is clear and there is no evi-

dence to the contrary. Respondent does not sell the inlet

conduit between the valve and the spray pan. Nor does it

sell the outlet conduit from the drip pan to the outside of

the refrigerated space (R. I, 80, 79). Both of these parts

are essential elements of the patented combination. Nor

does Respondent install the unit in (or in connection with)

the refrigerated space, that is, the refrigerator box, nor

does it sell such box, with which the rest of the elements are

in combination (R. I, 81). The combination of the patent

does not come into existence until after the parts sold by

Respondent have passed out of its hands and the remaining

parts of the combination, sold by someone else, have been

added to it.

Respondent’s business therefore is the sale of a device

having only five of the eight elements of the combination.

ye ae

eae at

The mechanism it sells is not that of the patented gop.

bination.

The evidence also shows the manner in which Respond.

ent was using its patent to protect its unpatented business.

Where the device sold by the Respondent, which was

less than the entire combination and therefore unpatented,

was purchased from it, Respondent did not at any time

sue the purchaser for infringement of the patent, either

when the unit was installed or resold. But suits were

brought upon the patent against Petitioner and others when

those defendants manufactured themselves or went to some-

one other than Respondent to purchase the unpatented

parts of this combination (R. I, 89, 104-5).

Petitioner urged that the patent was invalid because of

anticipation and lack of invention, in view of prior patents,

prior knowledge, sale and use.

It was admitted that all the parts of the combination

were old in the refrigeration art. It was Petitioner’s con-

tention that the combination itself was also old, and further,

that even if this particular combination had not been old

there was-no invention in making it.

Prior Patents

Among the prior patents in evidence, reference will only

be made here to the French Jensen patent No. 800,640 of

1936. This patent covers a refrigerating mechanism having

a

cou

spray-head

fan

outlet pipe

inlet pipe, all in combination with a

refrigerated space (refrigerator box).

7

Figure 1 of the diagrammatic drawings of that patent

(R. IV, 1286), reproduced at the top left of the illustration

opposite page 4 of this Petition, shows that the air enters

at the top of a surrounding cylinder 15, passes down be-

tween the inside of cylinder 15 and the outside of cooling

container 2, and thence up through cooling tubes. When

the cooling tubes are sufficiently cold so that the air sucked

through them will be reduced to a temperature of —2°C. a

fan 9 is set in operation. (R. IV, 1282). The air to cool

the refrigerated space is thus at a temperature below

freezing.

Defrosting is accomplished by causing either a ““ stream

of air or water”’ (R. IV, 1282) to flow over the cooling

container 2 from a perforated spray pipe 16 placed over

the container. The melted frost and water are collected

in a drip pan 14 and conducted outside the refrigerated

space by the drain pipe 18. A control is provided whereby

the fan is stopped during the defrosting period.

The Jensen refrigerating unit is placed within the space

it is intended to refrigerate. The patent refers to the fan

blowing the cooled air ‘‘against the ceiling of the cooling

chamber’’, stating that the ‘‘blower keeps the air of the

chamber in continuous circulation, which is of advantage in

the preservation of foodstuffs’? (R. IV, 1282). Since the

thermostat is set to operate the refrigerating unit fan when

the temperature gets up to —2°C., which is between 28° and

99° F., the refrigerated space is continually kept below

freezing.

This patent shows all of the parts called for in Me

Adam’s claim 13 except a ‘‘means for periodically supplying

water’’ such as a valve, for instance the common stop and

waste valve. It is obvious that Jensen must have used some

such well known ‘‘means”’ to start and stop the flow of the

defrosting water. The particular ‘‘means’’ was left to the

man skilled in the art.

This patent was offered by Petitioner and although

Respondent had a ‘‘patent’’ expert testify, he did not at-

8

tempt to distinguish the Jensen patent from the combina.

tion of the McAdam patent.

Neither the opinion of the District Court nor that of

the Court of Appeals referred to this patent or any other

of the published prior art.

Prior Knowledge, Sale and Use

Petitioner proved six instances of prior use 01 sale of

refrigerating apparatus with water defrosting mechanism,

supported by the depositions of 25 witnesses who had per-

sonal knowledge of the facts, plus two witnesses who tes-

tified before the District Court with respect to one of the

prior uses. The evidence with respect to all but one of these

instances of prior use and sale was thus entirely by deposi-

tions and documents.

All of these prior devices had in combination all of the

eight elements listed above as the combination claimed by

McAdam. In all of the devices water was used to defrost

commercial refrigerating coils.

Swift € Company at Elmira, N. Y.

The refrigeration unit, with defrosting device, was in-

stalled by Swift & Company in 1935 and was stil! in use at

the time the depositions in this case were taken.

The construction of the unit may be seen at the left-

hand lower side of the illustration opposite page 4 of

this Petition. Like the McAdam patent it consists of a

spray head, supply conduit and control valves for the de-

frosting water, finned coils, fan (not shown in the drawing),

drip pan and drain. Photographs of the installation are

included in the Record (R. IV, 1206 to 1210) and the con-

struction, installation and operation of the plant were testi-

fied to by the man who installed it, by the superintendent of

the plant and by the operator of the unit (R. II, 690, 654,

680).

9

Polar Ice Installation at I ndianapolts

This blower type fin coil unit was sold in 1934, three

years before the conception of the McAdam device. This

sale and the construction, installation and operation of

the unit were testified to by eight witnesses (R. II, 402,

435, 466, 470, 477, 497, 501). The order specified that the

anit was to maintain the refrigerated space at a tempera-

ture below freezing; it was designed to do this ; upon instal-

lation it was tested and found to maintain such tempera-

tures and to defrost satisfactorily.

The portion of this unit located within the refrigerated

space is shown in the righthand lower figure of the illus-

tration opposite page 4 of this Petition. The unit had

all of the eight elements listed above as the combination

claimed by McAdam. Its defrosting operation was the same

as that of the McAdam patent.

Carnegie Steel Company at Pittsburgh

The water defrosting apparatus was used from 1906 to

1921. The facts were testified to by five witnesses, with

supporting blueprints and other documents (R. I, 298, 309,

313, 361; IT, 384; IV, 1117, 1118).

Illinois Steel Company at South Chicago

This water defrosting device was used from 1907 to 1912,

and its construction and operation were testified to by five

witnesses who operated the plant (R. II, 568, 505, 539, 573).

Their testimony was documented by construction drawings

showing the defrosting system (R. TV, 1153) and 40 tem-

perature charts (R. IV, 1154-1193).

Northwestern Iron Company at Mayville, Wisconsin

The water defrosting device was here used from 1909 to

1998 and its construction and operation were testified to by

the man in charge during all those years (R. Il, 573). His

nae |

— si‘ Prt

10

testimony was supported by drawings (R. IV, 1125, 1205)

and temperature charts (R. IV, 1194-1204).

Trullinger & Eustice at Yamhill, Oregon

The construction and operation of this installation were

testified to by the owners of the refrigeration plant where

the unit was installed, by salesmen who made the sale of

the water defrosting unit and by the men who made the

installation (R. II, 751; IIT, 832, 869, 919).

As this evidence showed that water defrosting was old

in the art, and that the combination of specific elements was

also old, Respondent urged upon the Court, in an attempt to

avoid the effect of this mass of anticipating material, that

the McAdam invention was for a unit ‘‘located within a

space continually maintained at a temperature below the

freezing point of water’’ (Respondent’s Brief ©. C. A. p. 2)

and that ‘‘clearly the McAdam invention is not anticipated

by a refrigerating apparatus which is not maintained con.

stantly below the freezing point of water’’ (Respondent's

Brief C. C. A. p. 29, emphasis theirs).

Petitioner argued that the anticipating art did show

apparatus maintained constantly below the freezing point

of water, but that even if this were not so, Respondent could

not urge this limitation to its patent in order to save it from

anticipation,

(a) because Respondent had specifically abandoned such

a position in the Patent Office, cancelling from its claims

such limitations (R. IV, 1371-73, 1413, 1414); and

(b) because any such argument in effect turns mech-

anism claims into method of use claims, and such method

claims were specifically asked for, then cancelled and aban-

doned in the Patent Office (R. IV, 1342-43, 1414).

These arguments of Petitioner are obviously subsidiary

to, and in support of, its main argument that the prior

11

art anticipates and shows lack of invention, and these argu-

ments were made to meet Respondent’s argument that the

claims may be saved by a narrowed interpretation. The

Court of Appeals appears to have misunderstood Peti-

tioner’s argument, for it states:

‘‘While abandonment of method claims is thus

suggested argumentatively in plaintiff’s brief, no

mention is made concerning such an issue in the find-

ings of the Court, the statement of points to be relied

upon on appeal, or in plaintiff’s specifications of

error, and the contention will not be considered here’’

(R. V, 1555).

In addition, the Court’s statement is incorrect. Peti-

tioner’s Statement of Points to be Relied upon on Appeal

(R. IIT, 1109-1113) includes complete reference to invalidity

in view of prior patents and prior use and sale (pars. 1, 7,

10, 15-19) and lack of invention (pars. 3, 4, 8). Petitioner’s

Specification of Errors (Court of Appeals Brief pp. 4-6)

includes error for failure to find anticipation by prior pat-

ents and publications, and prior knowledge, use and sale

(pars. la, 1b); for failure to find lack of invention (par.

1c); and for ‘‘ignoring the fact that Refrigeration was

estopped from urging that such limitation existed’’ (par.

2), referring to the narrowed interpretation urged by Re-

spondent. Nothing could have brought up the point more

clearly. The Court of Appeals erred seriously when it de-

termined that ‘‘the contention will not be considered here’’

(R. V, 1555).

What consideration the District Court gave to the prior

patents, and evidence of prior knowledge, use and sale is

not clear, since no mention whatsoever of these main de-

fenses is made in its opinion (R. I, 12). The Findings of

Fact which it entered dealing with these defenses were just

as Respondent submitted them and Petitioner’s proposed

Findings were ignored. With respect to these Findings the

Court of Appeals stated (R. V, 1556; 168 F. 2d 896, 899) :

‘“The court, by its above mentioned findings, de-

termined two questions—the question of novelty and

12

the question of invention. Both were questions of

fact. Ralph N. Brodie Co. v. Hydraulic Press

Co., 9 Cir., 151 F, 2d 91; Maulsby v. Conzevoy, 9 Cir

161 F. 2d 165. The findings are supported by sub,

stantial evidence, are not clearly erroneous ang

should not be disturbed.’’

The Court of Appeals did not otherwise comment upon,

or discuss, the anticipating patents or the testimony by

deposition of 25 witnesses who gave evidence relating to

instances of prior knowledge, use and sale, nor the question

of patentable invention.

The evidence forming the basis of the Findings of Fact

with respect to anticipation, novelty and invention being

documentary and by deposition, wus of the kind which appel-

late judges are in as good a position to weigh as was the

trial judge. Under such circumstances, there should be

little presumption in favor of the trial court’s Findings of

Fact based upon that evidence and the Court of Appeals

should have reviewed the entire evidence to determine

whether a mistake had been committed.

Infringement

The evidence as to the apparatus which Petitioner sold

is contained in a stipulation (R. IV, 1527-29), which shows

that Petitioner sold certain ‘‘standard sectional coil units”

and supplied ‘‘water defrosting connections with its stand-

ard sectional coil unit, where the unit was installed to main-

tain a temperature well below freezing in the refrigerated

space’’ or refrigerator box. It does not state Petitioner

installed the unit or sold the refrigerator box.

Petitioner sold the coil unit and the connections. It did

not sell the refrigerator box into which the unit was to be

placed, nor did it have any control over whether the re-

frigerated space was to be kept ‘‘constantly’’ above or

below freezing.

There is no evidence that any unit sold by Petitioner

was ever used in connection with a refrigerated space ‘‘con-

stantly’’ kept below freezing, as required by the District

Court’s interpretation of claim 13 (supra p. 2).

13

JURISDICTION

1. This is a suit arising under the Declaratory Judg-

ment Statute, Section 274d of the Judicial Code (28 U. 8. C.

4400; now 28 U. S. C. § 2201) and under the Patent Laws

of the United States, Section 24(7) Judicial Code (28 U. 8S.

(. §41(7) ; now 28 U. 8. C. § 1338(a)).

9, The jurisdiction of this Court is invoked under the

Judicial Code (28 U. 8. C. § 1254(1)) and Rule 38(5)(b) of

the rules of this Court.

3. The date of the judgment which Petitioner seeks to

have reviewed is June 29, 1948 (R. V, 1564).

QUESTIONS PRESENTED

1, May the owner of a patent for a combination of old

elements, who sells less than the entire patented combina-

tion, use the patent to protect such unpatented business

from competition?

9. When Findings of Fact of the District Court per-

taining to the defenses of invalidity of the patent are infer-

ences from undisputed evidence or are based solely upon

documentary evidence or depositions, as distinguished from

oral testimony taken before the trial court, is the presump-

tion in favor of such Findings so strong that they should

remain undisturbed if supported by ‘‘substantial evidence’,

even though they be against the weight of the evidence?

3. Can claims for a mechanical combination of a patent

be saved from anticipation by giving them an interpreta-

tion specifically abandoned in the Patent Office; and can

such claims be turned by such interpretation into method

claims, when method claims were rejected by the Patent

Office and later cancelled?

4. Can a patent for a combination of old elements be

infringed by a mechanism which does not include all the

elements or equivalents thereof?

14

REASONS RELIED UPON FOR THE ALLOWANCE

OF THE WRIT |

1. In holding that Respondent did not misuse its patent

by attempting to control competition on unpatented devices,

the Court of Appeals decided an important question of

patent law in conflict with the decisions of this Court

and of other Circuit Courts of Appeals. Mercoid Corp. y.

Mid-Continent Co., 320 U. S. 661; Mercoid Corp. y. Honey.

well Co., 320 U. S. 680; Galion Metallic Vault Co. v. Edward

G. Budd Mfg. Co. (3 Cir., 1948) —— F. 24 ——, 78 U.§

P. Q. 135; Landis Machinery Co. v. Chaso Tool Co. (6 Cir,

1944) 141 F. 2d 800; cert. den. (1944) 323 U. S. 720; Master

Metal Strip Service, Inc. v. Protex Weatherstrip Mfg. Co.

(7 Cir., 1948) —— F. 2d , 78 U. S. P. Q. 119; Prank

Adam Electric Co. v. Westinghouse Elec. Mfg. Co. (8 Cir,

1945) 146 F. 2d 165.

2. In refusing to disturb the District Court’s Findings

of Fact relating to the defenses of invalidity for anticipation

and lack of invention, which Findings were inferences from

undisputed evidence or were based upon documentary evi-

dence or depositions only, the Court of Appeals gave an

interpretation to Rule 52(a) of the Federal Rules of Civil

Procedure 28 U.S. C. A. 723c that is contrary to the decisions

of this Court and of other Courts of Appeals. United States

v. U. S. Gypsum Co., 333 U. 8. 364; Fleming v. Palmer, (1

Cir., 1941) 123 F. 2d 749, 751; cert. den. (1941) 316 U. S. 662;

Munroe v. Smith, (1 Cir., 1919) 259 F. 1, 2; Banister y.

Solomon, (2 Cir., 1942) 126 F. 2d 740, 741; Photoplay Pub.

Co. v. LaVerne Pub. Co., (3 Cir., 1921) 269 Fed. 730, 732;

Stewart v. Ganey, (5 Cir., 1941) 116 F. 2d 1010, 1013;

Kaeser & Blair v. Merchants’ Assn., (6 Cir., 1933) 64 F. 2

575, 576; Kycoga Land Co. v. Kentucky River Coal Corp.,

(6 Cir., 1940) 110 F. 2d 894, 896; cert. den. (1940) 312 U.S.

688; Carter Oil Co. v. McQuigg, (7 Cir., 1940) 112 F. 2d

275, 279; Nashua Mfg. Co. v. Bereneweig, (7 Cir., 1930) 39

F. 2d 896, 897 ; Uthlein v. General Electric Co., (7 Cir., 1931)

15

47 F. 2d 997, 1003; Wigginton v. Order of United Commer-

cial Travelers, (7 Cir., 1942) 126 F. 2d 659, 661; cert. den.

(1942) 317 U. S. 636; United States v. Corporation of the

President, etc., (10 Cir., 1939) 101 F. 2d 156, 160.

3. In giving the claims of the patent an interpretation

specifically rejected and abandoned in the Patent Office, the

Appellate Court decided a question of patent law contrary

to the decisions of this Court. Schriber Co. v. Cleveland

Prast Co., 311 U. S. 211, 220; Morgan Envelope Co. v. Al-

bany Paper Co., 152 U. S. 425, 429.

4. In holding infringement to exist when Petitioner’s

device did not have all the elements of the combination

claim, the Court of Appeals applied a rule of law contrary

to that long established by this Court. Cimiotti Unhairing

Co. v. Am. Fur. Ref. Co., 198 U. S. 399; Mercoid Corp. v.

Mid-Continent Co., 320 U. S. 661.

PRAYER

Wherefore your Petitioner respectfully prays that a

writ of certiorari be issued to the United States Court of

Appeals for the Ninth Circuit to the end that this cause may

be reviewed and determined by this Court; that the judg-

ment of said Court of Appeals be reversed as to the matters

hereinafter specified as error, and that Petitioner be

granted such other and further relief as may be just.

Respectfully submitted,

ALExanpeER C. NEave,

Attorney for Petitioner

Cuarence D. Kerr,

Wuuium J. O’Hearn, Jr.,

Of Counsel.

BRIEF IN SUPPORT OF PETITION

Opinions of the Courts Below

The opinion in the District Court for the Southern Dis-

trict of California, Central Division, was filed September

97, 1946, and appears in the Record (R. I, 12).

The opinion of the Court of Appeals for the Ninth

Circuit was filed June 29, 1948 (R. V, 1550).

The jurisdictional statement appears in the foregoing

petition.

Statement of the Case

The facts are stated in the foregoing petition.

The errors which Petitioner will urge, if the writ of

certiorari is issued, are that the Court of Appeals for the

Ninth Circuit erred:

1. In holding that there was no proof that Respondent

had misused the patent; in denying Petitioner’s motion to

amend its complaint to set up such defense; and in not

considering the question of misuse sua sponte.

2. In not determining whether Petitioner’s contention

of invalidity because of prior patents and publications, and

prior knowledge, use and sale were supported by the weight

of the evidence.

3. In giving undue weight to the District Court’s Find-

ings of Fact with respect to matters proved solely by docu-

mentary evidence and testimony taken by deposition.

17

18

4. In holding that claims 10, 11 and 13 of the McAdam

patent were valid and in not holding that they were in-

valid because of anticipation and lack of novelty and inven.

tion, in view of prior patents and publications, and of prior

knowledge, use and sale.

5. In not considering Petitiener’s contention that the

claims of the McAdam patent cannot be construed suff.

ciently narrowly to avoid anticipation, and in not holdi

that Respondent is estopped from having the benefit of such

interpretation because of the proceedings in the United

States Patent Office.

6. In holding that claim 13 of the McAdam patent js

infringed by Petitioner, and in not holding that Petitioner

did not sell all of the elements of this claim and therefore

did not infringe.

Summary of Argument

The reasons for the allowance of the writ, stated on

pages 14-15, supra, constitute a summary of argument.

ARGUMENT

POINT I

IN HOLDING THAT RESPONDENT DID NOT MISUSE

ITS PATENT IN AN EFFORT TO CONTROL COMPETITION

ON UNPATENTED DEVICES, THE COURT OF APPEALS

DECIDED AN IMPORTANT QUESTION OF PATENT LAW

IN CONFLICT WITH THE DECISIONS OF THIS COURT AND

OF OTHER COURTS OF APPEALS.

In this case the Respondent is asking for an injunction

from a court of equity. It is asking for this injunction in

order to protect its own unpatented business from competi-

tion. It is clearly a matter of public interest that the

processes of the couii should not be used for an improper

purpose. As this Court has said:

‘¢ Where an important public interest would be

prejudiced’, the reasons for denying injunctive relief

‘may be compelling’. Harrisonville v. Dickey Clay

Co., 289 U. §..334, 338. And see United States v.

Morgan, 307 U. S. 183, 194. That is the principle

which has led this Court in the past to withhold aid

from a patentee in suits for either direct or indirect

infringement where the patent was being misused.”’

Mercoid Corp. v. Mid-Continent Co., U. 8. 661,

670.

It is respectfully submitted that this Court should be

quick to review decisions of lower courts where it appears

that the court’s processes would be used for an improper

purpose, and particularly where the lower courts forestall

the application of an established rule of law by technical

ruling and by failure to apply sua sponte such rule of law.

That is the situation in this case.

The Court below sustained the District Court’s denial

of Petitioner’s motion to amend its pleadings to set up Re-

spondent’s misuse of its patent. Such amendment, how-

ever, was unnecessary in order to allow the Court to decide

the question, for the Courts below could have and should

have acted sua sponte and denied relief. As stated in

Frank Adam Electric Co. v. Westinghouse Elec. Mfg. Co.,

(8 Cir., 1945) 146 F. 2d 165, 167:

«* ® *© The rule is firmly established that whenever

in the course of the proceeding the court is informed

in any way that the plaintiff is without clean hands,

that it is using the monopoly of the patents in suit to

restrain competition on unpatented things in viola-

tion of law, the court should inquire into the facts of

its own accord, and if it finds the charge to be true

relief should not be granted.’’

Also see Mercoid Corp. v. Mid-Continent Co., 320 U. 8.

661, 670.

fs Pe OO ct ns at

ON:

That Petitioner is misusing the McAdam patent is

clearly established by the admissions of its vice president

and general manager and by its patent expert (R. I, 79-81,

277-79). Without contradicting and thus impeaching its

own witnesses there is no evidence which Respondent could

have introduced which would have altered the situation,

All the facts which were necessary for a determination of

this issue were in the Record and it was therefore within

the province of both Courts below to consider and apply

the doctrine of ‘‘unclean hands’’.

The McAdam patent is a combination patent. Each

claim of the patent, if valid, covers only the combination

of all of the elements recited in that claim. Any one ele.

ment, or any combination of elements, less than all of the

elements recited in the claim is, therefore, unpatented. This

principle was clearly stated in Mercoid Corp. v. Mid-Conti-

nent Co., 320 U. S. 661 (1944) at page 667:

‘** * * The patent is for a combination only. Since

none of the separate elements of the combination is

claimed as the invention, none of them when dealt

with separately is protected by the patent monopoly.

Leeds & Catlin Co. v. Victor Talking Machine Co.

(No. 1), 213 U. S. 301, 318. Whether the parts are

new or old, the combination is the invention and it is

distinct from any of them. See Schumacher v. Cor-

ag hg U. 8. 549, 554; Rowell v. Lindsay, 113 U. §.

aS

20

As already stated Respondent does not sell the supply

conduit ; it does not sell the outlet conduit (R. I, 80, 79).

Both of these are admittedly important elements of the pat-

ented combination (R. I, 221). In addition, the elements

are stated in the claims to be ‘‘in combination with a refrig-

erated space’’, that is, the refrigerator box. Respondent

does not install the unit in combination with a refrigerator

box and it does not sell any such box (R. I, 81). By the

admission of Respondent’s patent expert, Doble, this ‘re-

frigerated space’’, or refrigerator box, is an important

element of the claims because it imports into the claims from

‘ :

the specification of the patent the fact that the defrosting

device is used in or in connection with a refrigerator box

which is maintained at a temperature below the freezing

point of water (R. I, 277-8).

It follows then that the device, which Respondent sells,

does not include all of the elements of the combination, those

elements not included being of importance to the function-

ing of the apparatus. The unit which Respondent sells is

an unpatented product.

Respondent’s counsel admitted at the trial that:

‘‘The evidence clearly shows that perhaps we are

selling less than we are entitled to under the com-

bination and giving a license to use the rest of it’’

(R. ITI, 1055).

Respondent and its licensees, by law, impliedly grant

a license under the McAdam patent to all who purchase the

unpatented water defrosting unit from them. That Re-

spondent intended that such a license be granted is shown

by the fact that it has never sued for infringement any

user or seller of a water defrosting device which was pur-

chased from it or from one of its licensees, but it has sued

for infringement non-licensed manufacturers and their cus-

tomers (R. I, 89). For example, so long as Petitioner pur-

chased the unpatented Recold units from Respondent and

resold them, Respondent did not sue Petitioner for in-

fringement (R. I, 104-5). Now, however, that Petitioner

itself manufactures and sells water defrosting devices it has

been charged with infringement by Respondent and sued.

By this course of conduct, Respondent is illegally using

the McAdam patent to control competition in an unpatented

product, by attempting to compel the trade to purchase

from it the unpatented device, that is, less than the entire

combination.

Prior to the cases of Mercoid Corp. v. Mid-Continent

Co., 320 U. S. 661 (1944), the Mercoid Corp. v. Honeywell

Co., 320 U. S. 680 (1944), the above misuses of patents were

recognized and condemned where a patent for a machine or

process was being used to secure a partial monopoly in-sup.

plies or unpatented materials used in the process or by the

machine.” The Mercoid cases merely extended the mignse

doctrine to include those cases in which ‘‘the unpatented

* * * device is itself an integral part of the structure em.

bodying the patent’’ (320 U. S. 665), which is precisely the

case here.

In the first Mercoid case, neither Mid-Continent nor its

licensee Minneapolis-Honeywell installed the entire com.

bination, nor did either sell the entire combination, but the

latter did sell a portion of the entire patented combination,

Mid-Continent sued Mercoid for contributory infringement,

because of its sale of part of the patented combination. This

Court held this to be a misuse of the patent and stated (320

U. S. 661, 667) :

‘< * * * the competition which is sought to be con-

trolled is not competition in the sale of the patented

assembly but merely competition in the sale of the

unpatented thermostatic controls. The patent ig

employed to protect the market for a device on which

no patent has been granted.”’

This Court further said (at p. 667):

‘*That result may not be obviated in the present case

by calling the combustion stoker switch the ‘heart of

the invention’ or the ‘advance in the art’. The patent

is for a combination only. Since none of the separate

elements of the combination is claimed as the inven-

tion, none of them when dealt with separately is pro-

tected by the patent monopoly * * * Whether the

parts are new or old, the combination is the invention

amd it is distinct from any of them.’’

* Carbice Corp. v. American Patents Corp., 283 U.8.

27 (1931) ;

Leitch Mfg. Co. v. Barber Co., 302 U. 8. 458 (1938);

Morton Salt Co. v. G. S. Suppiger Co., 314 U.S.

488 (1942);

B. B. Chemical Co. v. Ellis, 314 U. S. 495 (1942).

The second. Mercoid case (320.U. 8. 680) involved pre-

asely the same situation as to another combination patent.

The Court stated (at p. 684):

« * © * The fact that an unpatented part of a com-

bination patent may distinguish the invention does

not. draw to it the privileges of a nt. That may

be done only in the manner provided by. law. How-

ever worthy it may be, however essential to the pat-

ent, an unpatented part of a combination patent is

no more entitled to monopolistic protection than any

other unpatented device, For as we pointed out in

Mercoid. v. Mid-Continent Investment Co., supra, a

patent on a.combination ts a — on the assembled

or functioning whole, not on the separate parts. * * *”’

The practice which is condemned in both Mercoid cases

is the attempt to use a combination patent so as to give an

economic advantage in the market to an unpatented product

which is itself an integral part of the combination.

In the present case Respondent is illegally using its com-

bination patent to induce purchasers to buy from it, or

from its licensees, a device which is admittedly less than

the entire combination, and, therefore, an unpatented mech-

anism. The Court of Appeals is aiding Respondent in mis-

using its patent by its failure to apply in this case the rule

of law established by this Court, and followed by other

circuits. :

Galion Metallic Vault Co. v. Edward G. Budd Mfg.

Co., (3 Cir., 1948) —— F.. 2d ——, 78 U.S. P. Q.

135;

Landis Machinery Co. v. Chaso Tool Co., (6 Cir.,

1944), 141 F. 2d 800; cert. den. (1944) 323 U.S.

720;

Master Metal Strip Service Inc. v. Protex Weather-

strip Mfg. Co., (7 Cir., 1948) —— F. 2d ——, 78

U.S. P. Q. 119;

Frank Adam Electric Co. v. Westinghouse Elec.

Mfg. Co., (8 Cir., 1945) 146 F. 2d 165.

uA

The denial of Petitioner’s motion by the Court of

peals and its refusal to apply sua sponte the rule of law

established by this Court, is a matter of public interest

which this Court should review, as it has in other cages

involving patent misuse.

McCullough v. Kammerer Corp., 322 U. 8. 766 ; 323

U. S. 327; 329 U. 8. 712; 331 U. 8. 96;

Mercoid Corp. v. Mid-Continent Co., 319 U. 8. 737 ;

320 U. S. 661; :

Mercoid Corp. v. Minneapolis-Honeywell Regula-

tor Co., 319 U. S. 739; 320 U. S. 680;

Morton Salt Co. v. Suppiger Co., 313 U. 8. 555;

314 U. S. 488;

B. B. Chemical Co. v. Ellis et al., 313 U. 8. 558;

314 U. S. 495;

Leitch Mfg. Co. v. Barber Co., 302 U. 8. 673; 302

U. 8S. 458;

Carbice Corp. v. American Patents Corp., 281 U.§,

711; 283 U. S. 27.

POINT II

IN REFUSING TO DISTURB THE DISTRICT COURTS

FINDINGS OF FACT WHICH ARE INFERENCES FROM

UNDISPUTED EVIDENCE OR WHICH ARE BASED UPON

DOCUMENTARY EVIDENCE OR DEPOSITIONS ONLY, THE

LOWER COURT GAVE AN INTERPRETATION TO RULE

52a CONTRARY TO THE DECISIONS OF THIS COURT AND

OF OTHER COURTS OF APPEALS.

That portion of Rule 52a of the Federal Rules of Civil

Procedure, 28 U. S. C. A. 723c, which is pertinent to this

matter, reads as follows:

‘‘Findings of fact shall not be set aside unless

clearly erroneous, and due regard shall be given to

the opportunity of the trial court to judge of the

credibility of the witnesses.’’

This Court has recently pointed out, in United States

1.U.8. Gypsum Co., 333 U. S. 364, 394, that Rule 52a “‘was

intended, in all actions tried upon the facts without a jury,

to make applicable the then prevailing equity practice’’.

This practice, this Court stated,

‘‘was that the findings of the trial court, when depend-

ent upon oral testimony where the candor and credi-

bility of witnesses would best be judged, had great

weight with the Appellate Court. The findings were

never conclusive, however.’’ (333 U. S. 364, 395)

In such a situation, the Court stated, ‘‘A finding is ‘clearly

erroneous’ when although there is evidence to support it,

the reviewing court on the entire evidence is left with the

definite and firm conviction that a mistake has been com-

mitted’? (333 U. S. 364, 395).

Thus the reviewing court must consider the entire evi-

dence, and the findings should not be sustained if they are

against the weight of the evidence, even though there may

be ‘‘substantial evidence’’ to support them.

We submit that the opinion of the Court of Appeals, and

the two cases cited by it in support of its opinion, show

that it misinterpreted this rule in this case, and sustained

findings where supported by ‘‘substantial evidence’’

whether or not the findings were against the weight of the

evidence.*

*It would appear from the present case and the cases

cited in the opinion of the Court of Appeals, that having

determined that novelty and invention are questions of

fact, the Court of Appeals concludes that the findings of the

Trial Court on this subject are in effect determinative, and

that the Court of Appeals need only apply the following

‘formula’? :

‘‘These findings are supported by substantial evi-

dence, are not clearly erroneous and should not be

set aside.’’

Ralph N. Brodie Co. v. Hydraulic Press Mfg. Co.,

(9 Cir., 1945) 151 F. 2d 91, 94, affirming a holding

of validity.

(Footnote continued on next page)

As pointed ont by: this Court, the rule relates to.

‘*dependent upon oral testimony: where the candor. and

credibility of the witnesses would best be judged?’ (agg

U. 8. 364, 395),

Where, however, the findings are not dependent upon

such testimony, as where the findings are inferences based

on undisputed facts or are based upon documents or deposi.

tions taken out of Court, the situation is quite different.

Little presumption in favor of a lower court’s findings

of fact exists which binds the independent judgment of ap

appellate court, where the findings are based upon infer.

ences from uncontradicted facts,

Munroe v. Smith, (1 Cir., 1919) 259 F. 1;

Stewart v. Ganey, (5 Cir., 1941).116 F. 24 1010;

Kycoga Land Co. v. Kentucky, River Coal Corp,

(6 Cir., 1940) 110 F. 2d 894; cert. den. (1940) 319

U. S. 688;

Wigginton v. Order of United Commercial Trav.

elers, (7 Cir., 1942) 126 F. 24 659; cert. den,

(1942) 317 U.S. 636.

It is evident that in patent cases there are many in-

portant findings of fact which are in effect conclusions or

inferences drawn from evidence which may be quite undis-

puted, such as prior patents. This is particularly true of

findings with respect to invention or anticipation. If such

‘These findings are supported by substantial evi-

dence, are not clearly erroneous and should not be

disturbed. ’’

Maulsby v. Conzevoy (9 Cir., 1947), 161 F. 2d 165,

167; cert. den. (1947) 332 U. S. 791, affirming a

holding of invalidity.

‘The findings are supported by substantial evi-

dence, are not clearly erroneous and should not be

disturbed. ’’

The opinion in this case (R. V, 1556; 168 F. 2d

896, 899).

fndings were given the full weight of true fact ‘findings

based‘ upon disputed oral testimony taken before the Court,

the question of invention or anticipation, important issues

in a patent case, would have little chance of review on

appeal. The rule applied by the Court of Appeals in this

ease improperly gives such weight to fact findings as to

invention, and anticipation, which findings were in effect

inferences or conclusions based upon ‘prior patents and

publications.

But in addition the Court of Appeals has not followed

in'this case the rule applied in all other circuits, and re-

cently in its own circuit in non-patent cases, that findings

of fact based upon documentary evidencet or upon testi-

mony submitted by depositions taken out of Court,* have

little binding power upon the independent judgment of an

appellate court. The reason for this rule is that an appel-

late-eourt is in as good a position as a trial court to deter-

mine the credibility of the evidence and to draw inferences

from it.

tFleming v. Palmer, (1 Cir., 1941) 123 F. 2d 749;

cert. den. (1941) 316 U. S. 662;

Kaeser & Blair v. Merchants’ Assn., (6 Cir., 1933)

64 F. 2d 575;

Nashua Mfg. Co. v. Berenzweig, (7 Cir., 1930) 39

F. 2d 896;

ty 8 Oil Co. v. McQuigg, (7 Cir., 1940) 112 F. 2d

275;

United States v. Corporation of the President etc.,

(10 Cir., 1939) 101 F. 2d 156.

*Banister v. Solomon, (2 Cir., 1942) 126 F. 2d 740;

Photoplay Pub. Co. v. LaVerne Pub. Co., (3 Cir.,

1921) 269 Fed. 730;

Uthlein v. General Electric Co., (7 Cir., 1931) 47

F. 2d 997;

Carter Oil Co. v. McQuigg, (7 Cir., 1940) 112 F.

2d 275;

Equitable Life Assur. Soc. of U. 8. v. Irelan, (9

Cir., 1941) 123 F. 2d 462, 464;

Stork Restaurant v. Sahati, (9 Cir., 1948) 166 F. 2d

348, 352.

28

In the present case, where Petitioner’s defenses of in.

validity because of prior patents and publications, and be.

cause of five instances of prior knowledge and use, and one

instance of prior knowledge and sale, were dependent

upon depositions* and documents, the Court of Appeals

improperly applied the rule of law appropriate to findings

based upon disputed evidence introduced by way of ora)

testimony before the Trial Court. In this the Court of

Appeals applied a rule of law different from that followed

by other circuits.

It is obvious that such a practice as that followed by the

Court of Appeals may make the review of patent cases op

appeal practically a pro forma matter. There are very few

patent cases in which there is not ‘substantial evidence”

in support of arguments for the validity or invalidity of g

patent.

It was the duty of the Court of Appeals to determine

upon ‘‘the entire evidence’’ whether ‘‘a mistake has been

committed,’’ as this Court has said, and to give little

weight to those findings of the District Court that were

based upon documentary evidence or testimony taken by

deposition. When it is noted that the opinion below does

not contain any discussion or even mention of any of the

prior patents, prior uses or prior sales relied upon by Peti-

tioner as its main defense, it is only too evident that the

Court placed undue reliance upon the findings of fact of

the Trial Court with respect to these matters, and did not

apply the established rule of law followed in all the other

circuits.

* Except for two witnesses in one of the instances of

prior use.

~~ >, = SB See eritTr

POINT Ili

IN GIVING THE CLAIMS OF THE PATENT AN INTER-

PRETATION SPECIFICALLY ABANDONED IN THE PAT-

ENT OFFICE, THE COURT OF APPEALS DECIDED A QUES-

TION OF PATENT LAW CONTRARY TO THE DECISIONS

OF THIS COURT.

In considering the prior art in this case, the Court of

Appeals apparently accepted Respondent’s contention,

mentioned above, that the McAdam claims should be inter-

preted as a combination where the refrigerated space is

“maintained constantly below the freezing point of water’’

(supra, p. 10), thus sustaining the claims over the prior

art. Applying this limitation to the claims results in a

manufacturer not knowing whether the device he sells is

an infringement or is not an infringement. Since the appli-

cation of this limitation makes infringement dependent

upon whether the device is used in connection with a re-

frigerated space ‘‘maintained constantly below the freezing

point of water’’, the device may or may not infringe, de-

pending upon the temperature maintained by the user in

the refrigerated room. Obviously the manufacturer and

seller of the device will have no control over the temperature

at which the user keeps his refrigerated room. It is sub-

mitted that no interpretation should be put upon an

apparatus claim which renders it impossible for the seller

of the apparatus to tell whether or not he is incurring

patent liability.

In this case the Respondent was in fact estopped from

so limiting the claims of the patent, because such a limita-

tion was abandoned during the prosecution of the applica-

tion in the Patent Office (supra, pp. 10-11). In not so

holding, the Court of Appeals decided a question of patent

law contrary to the decisions of this Court.

Not only may a patentee ‘‘not broaden his product

claims by describing the product in terms of f»nction’’

(General Electric Co. v. Wabash Appliance Corp., 304 0.8,

364, 371), but it has been long established by this Court

that a limitation either added to, or subtracted from, the

claims during the pendency of an application in the Paten;

Office may not be later ignored when construing the claims

either to narrow the claims to avoid a prior art refe

or to broaden the claims to cover an alleged infringing de.

vice. As this Court said in Schriber Co. v. Cleveland Trust

Co., 311 U. 8S. 211 at pages 220-1:

‘Tt is a rule of patent construction consistently gb.

served that a claim in a patent as allowed must be

read and interpreted with reference to claims that

have been cancelled or rejected, and the claims 4).

lowed cannot by construction be read to cover what

was thus eliminated from the patent.’’

And at page 221:

‘True, the rule is most frequently invoked when the

original and cancelled claim is broader than that al-

lowed, but the rule and the reason for it are the same

if the cancelled or rejected claim be narrower.”

To the same effect: Morgan Envelope Co. v. Albany

Paper Co., 152 U. 8. 425, 429 (1894).

In limiting the claims by interpreting them in the manner

urged by Respondent to save them from anticipation, when

such a limitation had been specifically rejected and aban-

doned in the Patent Office, the Court of Appeals applied a

rule of law contrary to that established by this Court, which

requires the review by this Court.

31

POINT IV

IN HOLDING INFRINGEMENT TO EXIST WHEN PETI-

TIONER’S DEVICE DID NOT HAVE ALL THE ELEMENTS

OF COMBINATION CLAIM 13, THE COURT OF APPEALS

APPLIED A RULE OF LAW CONTRARY TO THAT LONG

ESTABLISHED BY THIS COURT.

It is admitted that Claim 13, the only claim held in-

fringed, is a combination claim, all of the elements of which

are old. The elements are stated in the claim as being ‘‘in

combination with a refrigerated space’’. Respondent’s ex-

pert admitted that the ‘‘refrigerated space’’, or refrigera-

tor box, was one of the elements (R. I, 278). He also stated

that the refrigerating apparatus of the claim ‘‘has to be

used in combination with a refrigerated space. Otherwise,

there is no problem”’ (R. I, 279). Respondent’s witness was

there emphasizing the importance of the refrigerator box

as an element of the combination, and this was made clear

by Respondent’s statement in its brief in the Court of Ap-

peals (page 29) that the patent was ‘‘not anticipated by a

refrigerating apparatus which is not maintained constantly

below the freezing point of water’’ (emphasis theirs).

If prior art does not anticipate unless it shows a refrig-

erator box ‘‘constantly below the freezing point of water’’,

certainly a combination cannot infringe unless it is shown

’ that the refrigerator box which was part of the combina-

tion was ‘‘maintained constantly below the freezing point of

water’’.

There is no proof that Petitioner has made, used or

sold any refrigerator box, ard no proof that any such box

with which its products were used was maintained ‘‘con-

stantly’’ below freezing.

It was stipulated that Petitioner supplied refrigeration

units to be installed to maintain a temperature below freez-

ing in the refrigerated space (R. IV, 1528), but what Peti-

tioner itself sold was the unit and connections only, and not

the refrigerator box; and there is no evidence that Peti-

tioner ever itself installed the units in combination with th

refrigerator box.

This Court has continually maintained that ‘‘no one is

an infringer of a combination claim unless he uses all the

elements thereof.’’ Cimiotti Unhairing Co. v. Am. Fur Ref.

Co., 198 U. S. 399, 410.

This Court has recently reiterated its doctrine in this

respect in Mercoid Corp. v. Mid-Continent Co., 320 U. Ni

661, 667-668, where it said:

‘*Since none of the separate elements of the com.

bination is claimed as the invention, none of then

when dealt with separately is protected by the

monopoly. Leeds & Catlin v. Victor Talking Machine

Co. (No. 1), 213 U. S. 301, 318. Whether the parts

are new or old, the combination is the invention and

it is distinct from any of them.’’

In finding infringement of Cleim 13 when Petitioner

did not sell the entire combination of the claim, the Ninth

Circuit Court of Appeals applied a rule of law contrary to

the decisions of this Court.

Conclusion

As was stated by this Court in Hazel-Atlas Co. v. Hart.

ford Co., 322 U. S. 238, 246:

‘“‘There are issues of great moment to the public

in a patent suit.’’

The Court of Appeals has decided questions in this case

contrary to various principles of law long established by

this Court, and followed for many years by other Courts

of Appeals. In so doing, it has sustained a patent granting

a monopoly to the Respondent for defrosting refrigerator

coils by means of water, something which has been disclosed

many years ago in published documents, and known and

practiced in the trade for years. And in so doing the Court

of Appeals has made it impossible for a manufacturer or

ae ae et.

seller to tell whether or not the device he sells is an infringe-

ment. Finally, this decision of the Court of Appeals makes

available to the Respondent the injunctive processes of the

courts to protect Respondent’s unpatented business from

competition. It is earnestly urged that the decision below

of the Court of Appeals is incorrect and continues an un-

justified monopoly against the public interest.

It is therefore submitted that the petition be granted.

Respectfully submitted,

ALEXANDER ©, NEAvE,

Attorney for Petitioner.

Crarence D. Kerr,

Warum J. O’Hearn, JR.,

Of Counsel.

September 27, 1948.