Petition for A Writ of Certiorari — Pangborn Corp. v. American Foundry Equipment Co.

IN THE

Supreme Court of the United States

Octoser Term, 1948

No. |

PANGBORN CORPORATION,

Petitioner,

vs.

THE AMERICAN FOUNDRY EQUIPMENT

COMPANY,

Respondent

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

THIRD CIRCUIT AND BRIEF IN SUPPORT THEREOF.

: Wintuam F. Ha,

Y . Ennatis BeEr.,

J Cuartes M. THomas,

Attorneys for Petitioner.

INDEX

Page

Petition for writ of certiorari to the United States

Court of Appeals for the Third Cireuit........... 1

Jurisdictional statement ..................... 2

Summary statement of the matter involved. __.. 2

Questions ag CN vance hn eck we nas 13

Reasons relied on for the allowance of the writ. 15

reed Wh Gumpert OF mOUMtIOM. .. .. 0 enn 17

ET Ie tae cht en eek epee hve ik ce ek alk hs 28

TaBLe oF Cases CITED

American Foundry Equipment Co. v. Pittsburgh

Forgings Co. and Pangborn Corporation, 67 F.

Supp. 911; 102 Fed. 2d 964...................... 4

Hazel-Atlas Glass Co. v. Hartford-Empire Co., 137

i EE OE I oe ss cake ek cw ewnns 21, 22

Mallard, Ex parte, 71 USPQ 294................... 11, 21

Marshall v. Holmes, 141 U.S. 589.................. 21

Mas v. Coca-Cola Co., 163 Fed. 2d 505.............. 21

Oliver v. City of Shattuck, 157 Fed. 2d 150.......... 21

Petk v. Rosenberger and Keefer, 113 Fed. 2d129.... 5,6

Precision Instrument Mfg. Co. v. Automotive Main-

tenance Machinery Co., 324 U.S. 806............. 21

Publicker v. Shallcross, 106 Fed. 2d 949............. 5

Root Refining Co. v. Universal Oil Products Co., 78

I as aay crane aL ire Gh dates doe Ken's Wk vo 21, 22

Steelman v. All Continent Corp., 301 U. S. 278... ... 21, 26

United States v. Throckmorton, 98 U.S.1.......... 5

Universal Oil Products Co. v. Root Refining Co., 328

ESE RR ae pre 5 A ee a i Sal ae 21

Statutes Crrep

Title 28, United States Code, Section 1254.......... 2

_—_

In THe

Supreme Court of the United States

Ouronen Team, 1948

PANGBORN CORPORATION,

I’etitioner,

Va,

THI AMERICAN FOUNDRY EQUIPMENT

COMPANY,

Respondent

PETITION FOR WRIT OF OERTIORARI TO THE

UNITED STATES COURT OF APPEALS FOR THE

THIRD OIROCUIT.

To the Honorable the Chief Justice and the Associate

Justices of the Supreme Court of the United States:

Your petitioner respectfully prays that a writ of cer-

tiorari issue to the United States Court of Appeals for

the Third Circuit to review a decision of that Court entered

September 28, 1948 (170 Fed. 2d 339), affirming a decree of

the United States District Court for the District of Dela-

ware,

A certified transcript of the record, including the pro-

ceedings in said Court of Appeals, is furnished herewith in

compliance with Rule 38 of this Court.

la

2

Jurisdictional Statement

Jurisdiction is invoked under Title 28, United States

Code, Section 1254.

Summary Statement of the Matter Involved

Your petitioner, a corporation of Maryland, having its

factory and principal place of business at Hagerstown

in said state (hereinafter called ‘‘Pangborn’’), seeks to have

reviewed and reversed a judgment by the Court of Appeals

for the Third Cireuit made on September 28, 1948 (R. 393-

400), holding, in effect, that Pangborn’s pleadings in

said action filed in the District Court for the District of

Delaware fail to state a claim upon which Pangborn would

be entitled to relief under any state of facts which might be

proved in support thereof.

Said action sought to obtain from a ‘‘suitor’’, in an

earlier patent suit, appropriate relief from irreparable and

continuing injury sustained by petitioner, by reason of

fraud perpetrated in the Patent Office by respondent in an

effort to obtain a species patent directed to a tool of

industry petitioner was marketing, and fraud and deceit

perpetrated by respondent in the Courts in said patent suit,

whereby respondent obtained a decree and affirming judg-

ment finding claims of the patent declared on valid, for

a pioneer invention and infringed by said tool; respondent’s

proofs and representations in said patent suit being false

and antithetical to its proofs and representations earlier

submitted in the Patent Office and involving Interference

No. 72,090, which respondent provoked as the result of the

corruption of another application it there had pending; said

interference proceedings and a subsequent Protest filed by

respondent serving to so delay the grant of a third-party

patent that it was not available for establishing prior inven-

tion in said patent suit.

—_

3

The respondent, a corporation of Delaware (herein-

after called ‘‘American’’), has its factory and principal

place of business in Mishawaka, Indiana.

The parties are competitors in the manufacture and

marketing of directional control, centrifugal, blasting ma-

chines (in construction and operation practically replicas),

used primarily for the surface cleaning of castings and

analogous articles, by mechanically propelling thereagainst,

at high velocity, broken steel shot, known as ‘‘grit.’’

In the fall of 1934 American commenced to market its

machine under the name ‘‘Wheelabrator.’’ In construction

and operation the machine is substantially that of its Ham-

mell application S. N. 725,055, filed May 11, 1934, the salient

features of which are illustrated on p. 36x of the Exhibit

Book to the Appendix to Pangborn’s Brief in the Court of

Appeals (hereinafter identified by the letters ‘‘E. B.’’).

American never marketed a machine substantially the

same, structurally or functionally, as that disclosed in the

Peik application S. N. 685,025 (Post 28; E. B. 1x), or that

disclosed in the Peik patent No. 1,953,566 (Post 28; E. B.

16x-20x). The latter, although the acme of Peik’s achieve-

ment, was of no practical worth and was scrapped; the

former died a-borning.

Pangborn first exhibited its directional control, centrif-

ugal, blasting machine (E. B. 26x-34x; bottom 35x) to the

foundry industry in October, 1934. It was a joint invention

of its employees Rosenberger and Keefer. As early as Jan-

uary, 1935, it was selling these machines in substantial

quantities, under the name ‘‘RA Rotoblast’’ (Post 29).

It was a success from the outset, and Pangborn continued

the marketing thereof, in increasing quantities, until the

judgment of the Court of Appeals for the Third Circuit on

March 23, 1939 (102 Fed. 2d 964), affirming the decision of

the District Court for the Western District of Pennsyl-

4

vania in American Foundry Equipment Company v. Pitts-

burgh Forgings Company and Pangborn Corporation (67

F. Supp. 911). This case will be hereinafter referred to as

‘‘The Pittsburgh Suit.’’

The Court of Appeals in ‘‘The Pittsburgh Suit’’ found

the Peik patent No. 1,953,566 to be valid, and infringed by

the ‘‘RA Rotoblast’’ upon the hypothesis that the patent

disclosed for the first time a directional control, centrifugal,

blasting machine, and that:

‘‘The accused structure infringes claim 16, which is

typical of the claims in suit, for it embodies the funda-

mental concept of the Peik patent, namely, directional

control.’’?

No finding was made by the Appellate Court that the

accused structure exhibits substantially the same number

of elements, or substantially the same structure or function

thereof, as any Peik claim. Claim 16 was accorded a scope

sufficiently sweeping to cover any sort of centrifugal blast-

ing machine which had been, or might be, devised, provided

it exhibited the function of ‘‘directional control,’’ or in

which directional control of the abrasive stream could be

effected.

The decree of the District Court in ‘‘The Pittsburgh

Suit,’’ and its affirmance by the Court of Appeals, were

induced by corruption and fraud perpetrated by American

in the Patent Office, and fraud and deceit perpetrated by it

in the Courts.

Prior to the ascertainment by Pangborn Corporation of

the corruption, fraud and deceit, it filed in this Court a

petition for a writ of certiorari to the Court of Appeals,

praying for its allowance and that the judgment of the

Court of Appeals of March 23, 1939 be reviewed and re-

1 Indubitably refuted by the Grocholl patent No. 2,224,647 (antedating

the earliest date ever asserted for Peik).

—

versed. The petition was denied October 9, 1939 (308

U. S. 566).

Promptly after the proceedings in Interference 72,090

and the subsequent Protest became available to the public,

(on the grant of the Grocholl patent), Pangborn filed in the

Court of Appeals, based upon this newly discovered evi-

dence, a petition for leave to file in the District Court a

petition for leave to file a bill in the nature of a bill of

review and for a rehearing. After full oral arguments and

the consideration of printed briefs, the Court granted the

petition. The petition was thereupon filed in the District

Court. It was treated there as a petition for rehearing

and denied, because of the rule of United States v. Throck-

morton, 98 U. 8. 1, which at that time in the Third Circuit

was ‘‘more honoured in the breach than the observance’’

(Publicker v. Shallcross, 106 Fed. 2d 949) and was abolished

by Rule 60(b)3, R. C. P., and upon other equally untenable

grounds.

July 1, 1940 in interference 71,085 Pangborn’s employees

Rosenberger and Keefer were adjudged prior inventors to

Peik (113 Fed. 2d 129).

Interference 71,085 was declared July 9, 1935 between

American’s Hammell application S. N. 725,055 aforesaid,

and Pangborn’s Rosenberger and Keefer application S. N.

726,188.

Over Pangborn’s objection, American in this interference

substituted for its Hammell application a tainted revived

Peik application S. N. 685,025, which application had been

permitted to abandon upon the filing, to take its place, on

Jan. 24, 1934, of application for the Peik patent No. 1,953,-

566, granted April 3, 1934.

On May 21, 1935, former Asst. Commissioner of Patents

Frazer revived application S. N. 685,025 upon a petition

filed March 9, 1935, by American, supported by a false and

4)

6

fraudulent showing. (July 19, 1948 the present Commis.

sioner of Patents, because of this false and fraudulent show-

ing, vacated the order which had been made reviving the

application, dissolved it out of Interferences 74,841 and

TAATT, in whieh it was then invelved with applications owned

by Pangbeorn, and held it to be abandoned. CR. 398.)

Pangborn had opposed the substitution for the Hammell

application of the Peik tainted application in Interference

71089. Panghborn had petitioned that an investigation be

made to determine whether the application had been revived

without authority in law and upon a false and fraudulent

showing.

The petition was denied upon the hypothesis stated by the

then Asst. Conunissioner of Patents, Mr. Justin W. Macklin,

that while the Commissioner has authority to revive an

abandoned application, once having exereised this right he

has no power to kill it, so long as it remains in interference;

irrespective of the conclusiveness of such showing as might

be made that the petition te revive was false and fraudulent,

Upon the denial of Pangbern's petition, Interference

71,08) (then entitled Rosenberger and Keefer v. Peik) was

proceeded with, and in due course on July 1, PMO a final

decision was made by the United States Court of Customs

and Patent Appeals (113 Fed. 2d 129), affirming the decision

of the Board of Appeals in the Patent Office awarding prior-

ity of Invention te Rosenberger and Keefer.

In respect to American and Pangborn this decision is

res pudtcata in the Patent Office, as to all patentable subject

matter common to either the Hammell application, or the

Peik application, and Pangborn’s Rosenberger and Keefer

application (Patent Office Rule 109).

After this final decision in Interference 71,085 Rosenber-

get and Keefer, on behalf of Pangborn, filed application

S. N. 382,256, which is a continuation in part of application

—

S. N. 726,188, which had been involved in said interference,

and upon the former application on June 27, 1944 patent No.

2252588 was issued to Pangborn Corporation (EK. B.

26x-34x).

Claims 7 to 10 of this patent clearly define the “RA

Rotoblast’* type of directional control, centrifugal, blasting

machine for which priority was awarded to Pangborn as

stated, in Interference 71,085,

American having learned prior to February 1933 of the

use in Germany of a directional control, centrifugal, blast-

ing machine, substantially as disclosed in the Grocholl Ger-

man patent No, 539,056? which issued on an application

filed May 10, 1930, planned to monopolize, patentwise, the

manufacture, use and sale of directional control, centrifugal,

blasting machines in the United States.

In carrying out this scheme, American acquired United

States application for patent of Hollingsworth S. N. 570,-

782, filed Oct. 24, 1931, disclosing a centrifugal, blasting

machine, unprovided with means for effecting directional

control. American corrupted this application by an amend-

ment filed February 3, 1933, interpolating into its specifi-

cation a description of one means for effecting directional

control. Subsequently, for the same purpose, it changed

the drawing of the application (KE. B. 21x-22x).

Repeatedly it asserted in the prosecution of the Hollings-

worth application that he was the first inventor of a diree-

tional control, centrifugal, blasting machine’; antithetical

to its own proofs and arguments presented in the Pittsburgh

Suit.

Peik brought to the attention of The Wean Engineering

Company the idea of a directional control blasting machine

7

? Drawings corresponding to the later granted Grocholl United States

patent No. 2,224,647 (E. B. 2x-10x).

* And adduced proofs to that effect in Interference 72,090, post 9.

2a

8

disclosed in the Peik application S. N. 685,025 (described

post 28; E. B. 1x).

He, with his associates Bird and Schultz, entered into a

joint venture with The Wean Engineering Company which

contemplated the design, manufacture and marketing of a

practical directional control blasting machine. In October,

1933, an order was obtained for two of such machines con-

ditioned upon the successful operation thereof. Duplicate

machines were completed as early as January, 1934, and an

application for patent disclosing this machine was filed by

Peik (and assigned to The Wean Engineering Company) on

January 23, 1934, to take the place of the Peik application

S. N. 685,025, which had been rejected by the Patent Office

on October 14, 1933.

The substituted application issued as patent No. 1,953,-

566 to The Wean Engineering Company on April 3, 1934

(E. B. 16x-20x).

At least one of these machines was tested by the purchaser

in the blasting room of its factory, under the supervision of

its experts, and Peik and Wean, in March 1934. Because

of fundamental infirmities, it failed and was scrapped. This

marked finis to Peik’s work and to the Peik machine.

About January 1935 American induced The Wean En-

gineering Company to sell its associates ‘‘down the river”

and transfer to it the Peik inventions. Wean’s quid pro quo

was the right to sell to the steel industry American's

‘*Wheelabrators’’.

On February 4, 1936 American commenced The Pitts-

burgh Suit.

On the same date it provoked Interference 72,090 between

its corrupted Hollingsworth application S. N. 570,782, filed

October 24, 1931, and the United States application of Gro-

choll S. N. 534,249, filed under the International Convention,

—

9

based on the application filed May 10, 1930 by Weber and

Grocholl for German patent No. 539,056.

In Interference 72,090 American adduced proofs on the

eve of the trial of The Pittsburgh Suit, which, according to

its own representations to the Patent Office, established

that as early as 1929 (more than 3 years prior to the earliest

date ever. asserted for Peik) Hollingsworth had in success-

ful use in this country one, or more, directional control,

centrifugal, blasting machines constituting ‘‘ prior uses’’ to

the Grocholl application. Priority of invention, in Inter-

ference 72,090, was in consequence awarded to Hollings-

worth.

Thereafter, based upon these proofs and this award,

American filed in the Patent Office a ‘‘Protest’’ to the issu-

ance of any patent on the Grocholl application.

The effect of these proceedings—(a) corruption of the

Hollingsworth application; (b) declaration of interference

72,090; (c) proceedings therein; and (d) American’s pro-

test—was to so delay the issuance of a patent on the Gro-

choll application that no patent granted thereon was ever

available in The Pittsburgh Suit for establishing prior in-

vention.* Had such patent been available, it would have

shown, as the present Grocholl patent, granted on the same

application, now does, that Peik was not the first inventor

of a directional control, centrifugal, blasting machine.

This fact, according to American’s own contention in

Interference 72,090, was established by the proofs in that

interference of the Hollingsworth ‘‘prior uses’’.

American in The Pittsburgh Suit concealed from the

Courts the knowledge it had of the United States Grocholl

application and the date to which it was entitled under the

* Patent No. 2,224,647 (E.B. 2x-10x) which was issued December 10,

1940 to Grocholl, both discloses and claims (claim 4) one type of di-

rectional control, centrifugal, blasting machine, having an effective date

antedating the earliest date ever asserted for Peik.

10

International Convention, and its virtual suppression, or at

loast eritiont delay in the issuance, of a patent on this appli-

eation. Tt alse eoneealed the knowledge it had of the 1929

Hollingsworth ‘prior uses’ and the many representations

it had made to the Patent OMice that Hollingsworth was the

tirst inventor of the directional control, centrifugal, blasting

machine,

American's proofs and arguments in The Pittsburgh Suit

regarding Poik'’s pieneership are antithetical to the proofs

and representations American made in the Patent Ofice,

partionlarly in’ Interference 72,000, These proofs and

representations estep American from denying that Peik

trailed both Lollingswerth and Grocholl,

Thus by fraud and deceit American succeeded in having

acoorded to its Peik patent, for a machine of no practical

worth, a sweeping scope; limited only by the function, or

effeet, of directional coutrol,

Indeed it is apparent from the opinion of the Court of

Appeals in The Pittsburgh Case that it made no comparison

between claim 16 of the Peik patent (that) selected as

typical) and the "RA Rotoblast,’’ for ascertaining whether

the latter exhibited the same number of elements as the

claim requires, or elements substantially identical in strue-

ture and funetion.

For further fortifying its patent position, after it learned

that the “SRA Roteblast’’ was being sold in substantial

quantities, American, in carrying out its original scheme or

plan of monopolizing this important tool of industry, sought

to obtain a species patent which would dominate the multi-

vane impeller having an axial unimpeded passageway which

had proven to be a sine qua non of the ‘*RA Rotoblast”’.

It did this by filing a petition to revive the Peik application

S. N. 685,025, which had been intentionally abandoned, and

supporting the petition with a false and fraudulent show-

_——

ing. It almost succeeded in this undertaking. It might have,

save for the view publiely expressed by former Commis-

sioner of Patents Casper W. Ooms (the predecessor of the

present incumbent of that high office) in an address to the

American Bar Association at its annual convention in At-

lantic City on October 26, 1946, and his decision in Ex parte

Mallard, 71 USP?'Q 294; and the decision on July 19, 1948 of

the present Commissioner of Patents (R. 398).

Had American suceeeded in connection with the Peik

application 685,025 it would have had a Peik patent with a

sweeping scope and in addition might well have obtained

a species patent to dominate the RA Rotoblast and with a

life extending far beyond the date of expiration of the Peik

patent 1,953,566,

The rulings adverse to Pangborn by the Court of Appeals

in its judgment of September 28, 1948 are in effect that

Pangborn’s pleadings do not state a claim which, if estab-

lished by proof, would entitle it to relief; that the denial of

its motion of May 15, 1944 (R. 196a-203a) by the District

Court’s deeree of May 15, 1947 (R. 364a) should be affirmed;

and that on remand of the cause an order should be made

striking out Pangborn’s answer * filed January 6, 1948 (R.

370a-391a).

* This is not an answer to a pleading “which the Court below did not

allow American to file.” This answer was filed, by leave of Court. It

is a response to an amendment and supplement to defendant's counter-

claim lodged in the office of the District Court on August 13, 1946, the

ease then being in the Court of Appeals. The opinion of September 28,

1948 of the Court of Appeals says:

“We will treat the amendment and supplement to the counterclaim,

as did the court below, as having been properly filed on the day

stated.”

American also by motion of January 3, 1947 submitted a proposed

amendment for averring a declaratory judgment claim re Pangborn’s pat-

ent No. 2,352,588. The motion was denied by the District Court (R.

363a). The Court of Appeals affirmed. (R. 399-400.)

a

We submit that Pangborn’s pleadings sub judice are:

(A) Amended complaint (R. 151a-195a).

(B) Answer to defendant’s counterclaim (R. 142a-150a;

see particularly R. 142a, 143a; paragraph (f) R. 144a; and

section 7, R. 150a).

(C) Answer to amendment and supplement to defend-

ant’s counterclaim (R. 370a-391a).

12

Pangborn by a motion filed May 15, 1944 sought to amend

its amended complaint. Inter alia, it averred the filing

about September 1, 1934 by Hollingsworth, at the behest of

American, of a second application for patent practically

the same as the first application as filed, plus the disclosure

of means for effecting directional control; that therein

Hollingsworth averred that he was the original, first and

sole inventor of the subject matter of the second application;

that he (Hollingsworth) did not know and did not believe

that such subject matter was ever known or used before his

invention, or patented or described in any printed publica-

tion more than two years prior to the date of filing of his

first application, or in public use in the United States more

than two years prior to said date. The proposed amend-

ment to the amended complaint aiso averred that American

had aided and abetted Hollingsworth in the preparation

and filing of the oath of this application.

It further averred that Pangborn had no knowledge of

this second Hollingsworth application prior to September

1, 1943, when it was disclosed in an exhibit forming a part

of an affidavit of Austin, executed on that date, and filed in

the case at bar.

The disclosure in the amendment of February 3, 1933 in

the first Hollingsworth application (constituting ‘‘concep-

tion’’), coupled with the second Hollingsworth application

(constituting ‘‘reduction to practice’’) establish completion

13 :

of the act of invention of a directional control, centrifugal,

blasting machine antedating the invention ascribed in The

Pittsburgh Suit to the Peik patent.

Although repeatedly called to his attention, the District

Court of Delaware did not dispose of the motion of May

15, 1944 until May 27, 1947, when he denied it nunc pro tunc

as of May 15, 1947 (R. 364a).

The opinion and judgment of the Court of Appeals here

sought to be reviewed and reversed contains no statement

indicating a realization that petitioner was asserting a

claim bottomed on corruption by American, in the Patent

Office, of the Hollingsworth application, and the delaying

of the issuance of a patent on the United States Grocholl

application S.N. 534,249 (virtually making away with evi-

dence) by involving the latter application in Interference

72,090 with said corrupted Hollingsworth application; ad-

ducing proofs in said interference of ‘‘prior uses’’ of diree-

tional control blasting machines in the United States as

early as 1929 by Hollingsworth, and antithetical proofs and

representations made by American in the Courts in ‘‘The

Pittsburgh Suit,’’ constituting the perpetration of fraud

and deceit in said Courts; resulting in the tainted decree of

the District Court and the tainted judgment of the Court of

Appeals,

Questions Involved

(1) Have the pleadings sub judice, averring a claim

bottomed on fraud perpetrated in the Patent Office by

American in obtaining the revival of an abandoned patent

application, and a claim bottomed on fraud perpetrated in

an ordinary patent suit by American in obtaining a de-

cree finding the patent declared on valid and infringed, and

an affirming judgment, become obsolete because the deci-

sion of the Commissioner of Patents (R. 398) has practi-

cally made moot the first claim?

— aE

14

(2) In an ordinary patent suit brought by American

against Pangborn a decree having been made and affirmed

by the Court of Appeals holding the patent declared on valid

and infringed on American’s proofs and argument that

a claim selected as typical of those in suit is for a pioneer

invention; whether there should be dismissed, on the

ground that its pleadings fail to state a cause of action, a

second suit brought by Pangborn against American, in

a different federal court having judisdiction of the latter,

said second suit averring a claim based on grounds, inter

alia, that American’s proofs and arguments aforesaid in

the first suit were false and fraudulent and antithetical to

proofs and representations made by American in the Patent

Office for preventing, and which did critically delay, the

issuance of a third-party patent which would otherwise

have per se established invalidity, or non-pioneership, of

the patent declared on; said Patent Office proceedings in-

cluding proofs and arguments that another assignor of

American had the asserted pioneer invention in public use

in this country long prior to the earliest date of invention

asserted for the patent declared on in the first suit; said

second suit praying for relief from an injunction issued in

the first suit, for restitution of royalties paid by reason

thereof, and the decree and judgment thereon, and for

damages otherwise arising from the decree and judgment.

(3) Do the pleadings in the second suit aforesaid fail to

state a claim; they averring, inter alia, that American cor-

rupted its application for patent, induced the Patent Office

to declare an interference between it and a third-party

application, the latter having an effective date of invention

prior to that of the patent declared upon in the first suit,

and in the interference adduced proofs and made representa-

tions for establishing a date of invention for the cor-

rupted application antedating that of the third-party appli-

cation, thereby obtaining a priority award in the interfer-

15

ence, and thereafter filing a Protest to the issuance of any

patent on the third-party application, resulting in such

delay in the issuance of a patent thereon that it was not

available as a prior invention item in the patent suit; and

said pleadings praying for relief from the injunctive order

issued pursuant to the decree and for restitution and

for exemplary damages.

(4) Has the Court in the second suit, in the exercise of

: its equitable power, authority to afford Pangborn relief from

the tainted decree in the first suit by an order enjoining the

4 enforcement of the injunctive order made therein, and to

: accord Pangborn restitution of all royalties or other pay-

3 ments made pursuant to the decree in the first suit, and

- damages?

; (0) Assuming the Commissioner of Patents has gone to

4 the full extent of his authority and power in according Pang-

born relief from the fraud and deceit practiced by American

in connection with the revival of the Peik application S. N.

689,025,—does that prevent the District Court for the Dis-

(6) Whether the denial of P

1944 was untenable, contrary t

Provision of Rule 15(a), R.C.P

angborn’s motion of May 15,

0 custom, and to the express

Reasons Relied On for the Allowance of the Writ

Exercise of the power of this Court to grant the writ of

certiorari prayed is sought on grounds as follows:

(1) Because the holding by the Court of Appeals that

Pangborn’s pleadings prior to the attempted amendment

(motion filed May 15, 1944, R. 196a) state no controversy

cognizable in the District Court of Delaware, is untenable

and in conflict with the applicable decisions of this Court.

(2) Because the holding of the Court of Appeals that

petitioner’s pleadings and attempted pleadings are now ob-

; 7

solete because of the decision of the Commissioner of Pat-

ents of July 19, 1948, finding that respondent had perpe-

trated fraud in obtaining the order reviving the Peik appli-

cation S. N. 685,025, vacating the order, dissolving the re-

vived application out of interferences in which it was then

involved, and holding it-to be abandoned, is untenable, and

states an important question of federal law which has not

been but which should be decided by this Court.

(3) Because the statement of the Court of Appeals is un-

tenable that petitioner still seeks to have the District Court

of Delaware perform the functions of the Patent Office.

(4) Because the statement of the Court of Appeals is un-

tenable in its opinion of September 28, 1948 that petitioner

seeks to have set aside the decree of the District Court in

“The Pittsburgh Suit.’’ Petitioner’s action is against a

former suitor in that Court and not against the Court.

(5) Because the Court of Appeals’ affirmance of the de-

nial of petitioner’s motion of May 15, 1944 for leave to

amend its amended complaint is untenable, contrary to estab-

lished custom and practice and in contravention of the ex-

press provisions of Rule 15(a), R. C. P.

(6) Because of the remand of the cause to the end that the

District Court may make an order striking out Pangborn’s

answer filed January 6, 1948 (R. 370a), which it was per-

mitted to file (if that is the answer referred to in the con-

cluding paragraph of the decision of the Court of Appeals)

(R. 400).

Wituuam F. Hatt,

EK. Ennatts Bert,

Cuartes M. THomas,

Attorneys for Petitioner.

In THE

oupreme Court of the United States

Ocroper Term, 1948

PANGBORN CORPORATION,

Petitioner,

vs.

THE AMERICAN FOUNDRY EQUIPMENT

COMPANY,

Respondent

BRIEF IN SUPPORT OF PETITION

As pointed out, after American learned of the species of

directional control, centrifugal, blasting machine disclosed

in the Weber and Grocholl German patent No. 539,056, it

did the following:

(1) Planned to monopolize the manufacture, use and sale

of such machines in the United States by patents.

(2) Acquired the Hollingsworth application S. N. 570,782,

filed October 24, 1931. ‘

(3) Corrupted this application by interpolating therein

a description and illustration of means for effecting direc-

tional control of the abrasive stream.

a

18

(4) Provoked Interference 72,090 between the corrupted

application and the United States application for patent of

Grocholl, 8. N. 534,249, filed May 1, 1931, having an Interna-

tional Convention date of May 10, 1930, and disclosing the

same species of directional control blasting machine as that

disclosed in the Weber and Grocholl German patent.

(5) Repeatedly contended in the prosccution of the

Hollingsworth application that Hollingsworth was not only

the first inventor of a directional control blasting machine,

but in fact the inventor of such machines as the species

then on the market, namely, American’s ‘‘ Wheelabrator”’

and Pangborn’s ‘‘RA Rotoblast.’’

(6) Adduced proofs in Interference 72,090 and in the

Patent Office asserted that they established that as early

as 1929 Hollingsworth had, in this country, one or more

directional control blasting machines in successful use, con-

stituting ‘‘prior uses’’ to Grocholl’s Convention date (May

10, 1930),' a fortiori earlier than Peik’s inventions, which

proofs induced the Patent Office to award to Hollingsworth

priority of invention in Interference 72,090.

(7) Thereby, and by a subsequent ‘‘Protest’’ based on

the proofs and the priority award, delayed the grant of a

patent on the Grocholl application beyond the date of the

judgment of the Court of Appeals in ‘‘The Pittsburgh

Suit’’.

(8) Concealed from the Courts in ‘‘The Pittsburgh Suit”

all knowledge of Interference 72,090 and the facts afore-

said occurring therein, and stemming therefrom.

The proofs and representations made by American in

the Patent Office are antithetical to those which it made

1 Complete refutation, if true, of findings by the courts in “The Pitts-

burgh Suit” that Peik was the first inventor.

19

in ‘‘The Pittsburgh Suit’’. In ‘‘The Pittsburgh Suit’’ the

Courts found that the Peik patent No. 1,953,566 is valid,

and that the accused structure (the ‘‘RA Rotoblast’’) in-

fringed claim 16 thereof (the claim selected as typical of

those in suit) ‘‘for it embodies the fundamental concept

of the Peik patent, namely, directional control.’’

Civil Action 193, brought by Pangborn in the Dis-

trict Court of Delaware, wherein American jis incor-

porated, averred, inter alia, in its jurisdictional paragraph

that the matter in controversy exceeded the sum of $3,000.00,

excluding costs.

The pleadings aver as one claim upon which, if estab-

lished by proofs, the Court should grant relief, that

the decree and judgment in ‘‘The Pittsburgh Suit’? were

obtained by knowingly false proofs and representations

made by American, antithetical to those made in the Patent

Office leading to the declaration of, and the judgment of

priority in, Interference 72,090, Hollingsworth v. Grocholl;

that by said proofs and representations and judgment in

this interference, and the subsequent Protest filed by Ameri-

can to the grant of any patent on the Grocholl United States

application, the grant of the Grocholl patent No. 2,224,647

was delayed beyond the date of the judgment aforesaid

of the Court of Appeals in ‘‘The Pittsburgh Suit’’, so

that a United States Grocholl patent was not available,

as it might well otherwise have been, for establishing a date

of invention by another prior to the earliest date of in-

vention asserted for Peik. The prayer for relief bottomed

on the claim aforesaid was for an order enjoining American

from the further use of the decree, or judgment, obtained

in ‘The Pittsburgh Suit’’, against Pangborn, or anyone

in privity with it; for the restitution by American of all

20

amounts it had received from Pangbern stemming from

such decree, or judgment; and for the damages incurred

by Pangborn arising out of such decree, or judgment and

for an appropriate increase thereof,

Pangborn's pleadings in Civil Action 193 further averred

a claim for an injunctive order® and for damages sub.

stantially as aforesaid arising out of American's fraud

and deceit perpetrated in the Patent Office, whereby it

indueod the latter tribunal te revive the Peik application

S.N. 685,029, which American had intentionally abandoned

after it had filed, to take its place, the application whieh

matured in the Peik patent No. 1,953,566, and induced the

Patent Ofice in Iuterference T1085 to permit it to sub-

stitute for its Hammell application the tainted Peik ap-

plication,

Iu view of the foregoing, Pangborn was compelled, at

large expense, to contest the re-formed interference, and

was in consequence delayed in obtaining a patent on its

Rosenberger and Keefer invention for a period of prae-

tieally tive years, during which American was able to use

such invention and did use such invention (incorporated

in its Wheelabrator) without liability for patent infringe-

ment, and Pangborn was also compelled to contest (until the

decision of the Commissioner of Patents of July 19, 1948)

Interferences 74,841 and 75,177.

Although as early as November 30, 1936 the attention of

the Patent Office was called to the tainted revival of the

Peik abandoned application, and objection made to its

substitution by American in Interference 71,085 for its

Hammell application, the Patent Office then and repeatedly

thereafter held that having revived the application it was

2 Now moot, because of the decision of July 19, 1948 of the Commis

sioner of Patents, holding that the Peik application S. N. 685,025 hed

been revived by fraud and deceit, dissolving it out of Interferences 74541

and 75,177, and holding it abandoned.

ay Ae ae

LAS PT

A A SA INRY | 1/9

A haar

21

impotent to kill it so long as it was in an interference,

however conclusively Pangborn’s petition might establish

that the application had been revived by fraud and deceit ;

and a change in the policy of the Patent Office did not

oceur until the administration of Commissioner of Patents

Mr. Casper W. Ooms."

The action of the Patent Office regarding Pangborn’s

charge of fraud and deceit and requiring that the contests

in Interferences 71,085, 74,841 and 75,177 be continued, we

submit, was contrary to the views of this Court as ex-

pressed in Hazel-Atlas Glass Co. vy. Hartford-Empire Co.

822 U.S. 238; Precision Instrument Mfg. Co. v. Automotive

Maintenance Machinery Co., 324 U. S. 806; and Universal

Oil Products Co. v. Root Refining Co., 328 U. 8. 575; by

the Patent Office in Ex Parte Mallard, 71 USPQ 294; by the

Court of Appeals for the Fourth Cireuit in Mas v. Coca-

Cola Co., 163 Fed. 2d 505; and by the specially designated

Court of Appeals for the Third Circuit in Root Refining

Co. v. Universal Oil Products Co., 78 USPQ 95.

We submit that the District Court of Delaware, and the

Court of Appeals for the Third Circuit on appeal from

the decree of the District Court of Delaware, had the power

to afford Pangborn relief upon the claims recited in its

pleadings in Civil Action 193. (Marshall v. Holmes, 141

U.S. 589; Steelman vy. All Continent Corp., 301 U. S. 278,

291; Oliver v. City of Shattuck, 157 Fed. 2d 150.)

The cireumstance that the District Court for the Western

District of Pennsylvania denied the petition for rehearing

in “The Pittsburgh Suit” (41 F. S. 841), from which there

Was no appeal, should not deter relief being granted Pang-

born in Civil Action 193 brought against a ‘‘suitor’’ which

* Announced in the address of Mr. Commissioner Ooms at the October

26, 1946 meeting of the American Bar Association. Cf. Ex Parte Mallard,

71 USPQ 294.

_

a2

had perpetrated corruption, fraud and deceit on the Patent

Mier and in the Courts,

True, following the denial of the petition for rehearing

by the Distriet Court for the Western Distriet of Pennsyl.

vania aforesaid, Pangborn by eeenomie duress, was im-

pelled to ‘erook the pregnant hinges of the knee’ and make

a settlement with American.

But publie poliey forbids that such a settlement should be

taken as an acquiescence in American's fraudulent conduct,

The situation is little different from that covered by the

statement of the Chief Judge of the Court of Appeals for

the Third Cireuit in the Mazel Atlas ease (137 Fed. 2d 764).

In any event, any dereliction on the part of Pangborn

in the continuation of its efforts to obtain adequate recogni-

tion of the corruption, fraud and deceit perpetrated by

American in the Patent Office and in the Courts in carrying

into efYeet its scheme to monopolize the manufacture, use

and sale of directional ecentrol, centrifugal, blasting ma-

chine, should not deter this Court from affording the pub-

lie relief and vindicating the integrity of the Patent Office

and judicial tribunals. As stated by the specially designated

Court of Appeals for the Third Cireuit in Root Refining

Cov. Universal OW Products Co., T3 USPQ 9%, Le. 101:

‘The matter is not one of merely private concern

subject to the action or inaction of the litigants, but

is one of vast public importance, so that it becomes

immaterial that the injured party may have been

derelict in bringing the fault to the Court's attention.”

Quoting from Hacel-Atlas Glass Co. v. Hartford-E mpire

Co., the Court said:

***Tt is a wrong against the institutions set up to pro-

tect and safeguard the public, institutions in which

frand cannot complacently be tolerated consistently

with the good order of society. Surely it cannot be that

”

~

preservation of the integrity of the judicial process

must always wait upon the diligence of litigants. The

public welfare demands that the agencies of public

justice be not so impotent that they must always be

mute and helpless victims of deception and fraud.”

It further said:

“The power inheres in the appellate as well as in the

trial court and the former may vacate its own judgment

and direet the vacation of a deerce of the latter entered

pursuant to the mandate of the former. In discussing

this question and rejecting the a rgument that although

the Courts of Appeals have power to permit the trial

courts to review a judgement attacked for fraud in a

ease which the appellate court has reviewed, the ap-

pellate court may not review the judgment itself after

the expiration of the term, the Supreme Court

said * * °,

“Equitable relief against fraudulent judgments

is not of statutory creation. It is a judicially de-

vised remedy fashioned to relieve hardships which,

from time to time, arise from a hard and fast adher-

ence to another court-made rule, the general rule

that judgments should not be disturbed after the

term of their entry has expired. Created to avert

the evils of archaic rigidity, this equitable procedure

has always heen characterized by flexibility which

enables it to meet new. situations which demand

equitable intervention, and to accord all the relief

necessary to correct the particular injustices involved

in these situations, * * * We hold, therefore, that

the Cireuit Court on the record here presented had

both the duty and the power to vacate its own judg-

ment and to give the District Court appropriate

directions.’ ’’

In the case sub judice, it would appear that the Court

of Appeals completely ignored the averment in the plead-

ings that by fraud and deceit perpetrated in the District

24

Court and in the Court of Appeals itself, the latter in ‘The

Pittsburgh Suit’? was induced to reach a conclusion that the

Poik patent is valid, and pioneer in scope, antithetical to

American's representations and proofs in the Patent Office

leading to the declaration of, and judgment in, Interference

72,090,

In the Court of Appeals’ opinion of September 28, 1948

(R. 892), no reference whatsoever is made to this fraud and

deceit. The Court apparently focused its attention entirely

upon the fraud and deceit perpetrated in the revival of the

Peik application S. N. 685,025, of which it had made light

in its opinion of August 12, 1946 (R. 312a). This, as

Pangborn called to the attention of the Court of Appeals

prior to said opinion, had become moot, at least as to the

injunetive order sought, by reason of the decision of the

Commissioner of Patents of July 19, 1948.

The present Commissioner of Patents investigated the

fraud charge and sustained it and thereupon vacated the

order reviving the Peik application S. N. 685,025, dissolved

it out of the interferences in which it was then involved, and

held that it is abandoned. Pangborn promptly informed

the Court of Appeals thereof and suggested that it made

moot this question of frand.

In its opinion of the date last given (R. 392) there is no

indication that the Court of Appeals recognized that Pang-

born was asserting that the decision of the Courts in ‘*The

Pittsburgh Suit,’* and particularly the scope which said

Court of Appeals itself gave to the Peik patent No. 1,953,566

(supra, p. 4), was due to fraud and deceit, including proofs

and representations made in both Courts antithetical to

its proofs and representations made in the Patent Office

regarding the Hollingsworth invention and the ‘‘prior

uses*’ thereof in 1929, and American’s procedure in the Pat-

ent Office whereby it so delayed the issuance of a patent on

the Grocholl application that such a patent was not avail-

RP OME NE tis Bir! Si

25

able in ‘‘The Pittsburgh Suit’’ for establishing that Peik

was not a pioneer inventor.

We submit that American is estopped to deny the verity

of its own representations and proofs made in the /atent

Office. In Interference 72,090, American adduced proofs on

the eve of the trial of ‘* The Pittsburgh Suit’’ and represented

that they established that as early as 1929 Hollingsworth

had in successful public use in this country one or more

directional control, centrifugal, blasting machines, consti-

tuting ‘‘prior uses’’ to the Grocholl application, which in

said interference was conclusively entitled to a date of in-

vention as early as May 10, 1930. The issue of that inter-

ference recited one species of directional control, centrifu-

gal, blasting machine. That being true, on what possible

theory could Peik, who did not enter the field until March 7,

1933, be the first inventor of a directional control blasting

machine, or his patent be infringed on the basis that it is

for a pioneer invention?

We submit that the Court of Appeals is in error in its

statement that Pangborn by its complaint as amended is still

seeking ‘‘to have the District Court of Delaware perform

the functions of the Patent Office,’ if it ever sought this.

As stated, Pangborn called the Court of Appeals’ attention

to the decision of the Commissioner of Patents of July 19,

1948 (R. 398) before the September 28, 1948, decision. No

attempt was made to set aside the decree and judgment in

“The Pittsburgh Suit.’? The action brought was against a

“suitor’’ and not against the Court. It was the ‘‘suitor’’

which by fraud and deceit had induced the Court to make a

tainted decree and tainted judgment. Relief was sought

only from the suitor. This course was, we submit, sanc-

tioned by Cireuit Judge Goodrich in denying American’s

motion to dismiss (R. 94a-95a; citing Steelman v. All-Conti-

nent Corp., 301 U. S. 278).

—

26

The Court of Apneals in the case sub judice says (R. 399)

that ‘‘the Commissioner of Patents has now gone far

toward granting the relief which Pangborn sought to obtain

by its amended complaint.’? We would make a stronger

statement—that the Commissioner of Patents by his deci-

sion of July 19, 1948 has gone as far toward granting the

relief which Pangborn sought to obtain as his power and

jurisdiction would permit.

The Court of Appeals suggests (R. 399) that Pangborn

may by following an appropriate course ‘‘obtain the relief

which it desires.’’ This would be relief from American

from the fraud it perpetrated in ‘‘The Pittsburgh Suit.”

It is, we submit, properly obtainable in the action sub judice.

It might also be obtainable by ‘‘an independent action”

brought pursuant to Rule 60(b)(3), R. C. P. But the latter

apparently would substantially be a duplicate of the action

sub judice, and there would seem to be no occasion why

Pangborn should be put to further delay and expense which

such ‘‘independent action’’ would cause.

We therefore submit the decision of the Court of Appeals

should be reversed on points as follows:

(1) To the extent that it dismissed Pangborn’s pleadings;

(2) Its affirmance of the District Court’s order of May

27, 1947 denying nunc pro tunc as of May 15, 1947 Pang-

born’s motion to amend filed May 15, 1944; and

(3) Its direction that the District Court strike Pang-

born’s answer filed January 6, 1948 (R. 370a-391a).

The proofs and representations made by American in the

Patent Office, and particularly in Interference 72,090, an-

tithetical to American’s proofs and representations made in

‘“‘The Pittsburgh Suit,’’ are averred particularly in para-

graphs 18 to 20, inclusive, of the amended complaint (R.

180a-189a).

27

They are also averred in Pangborn’s answer filed August

23, 1943 (particularly R. 142a-143a; paragraph (f), R. 144a;

and section 7, R. 150a).

They are also averred in Pangborn’s answer filed Janu-

ary 6, 1948 (R. 370a-391a).

Respectfully submitted,

Witura F. Hatt,

E. Ennauts Bert,

Cuartes M. Tuomas,

Attorneys for Petitioner.

a

28

APPENDIX

Machine of Peik Application S. N. 685,025.

The salient features of this machine are disclosed in a

transverse section of the rotor (EK. B. 1x). The machine

structurally and functionally is radically different from

both the ‘‘Wheelabrator’’ and the ‘‘RA Rotoblast.’’

The machine comprises three essential parts as follows:

(1) a gravity feed sand supply; (2) a rotor; and (3) an in-

terposed, coaxial, transfer mechanism.

The rotor comprises side plates and four large sectors 13,

filling the entire space between the plates, less four narrow,

pipe-like passages 18, each having a rearwardly and out-

wardly curved portion and a radial portion with long,

parallel walls. Each segment 13 has a long, arcuate, inner

wall concentric with and in juxtaposition to the periphery

of the shell 24 of the transfer mechanism.

The arcuate walls of the sectors 13, as they pass the single

discharge opening 45, through the wall of shell 24, block the

egress of abrasive therefrom. The blocked sand lodges in

the narrow passages between the arcuate walls and the

contiguous periphery of the shell 24 and by an attrition

action rapidly destroys both. The sand passing through

the radial portions of passages 18 ricochets from wall to

wall of each passage and rapidly destroys the parallel walls.

The gravity feed comprises a sand supply and a vertical

delivery pipe leading from the supply and discharging into

one end of the shell 24 axially thereof.

The transfer mechanism comprises a cylindrical shell 24

normally stationary but adjustable about its axis. The shell

has a single egress opening 45.

The transfer mechanism also ineludes a plurality of

truncated, conoidal, ‘‘agitating lugs’’ 36, located in shell 24,

which are carried by and rotate with the rotor.

This machine was never marketed.

Machine of Peik Patent No. 1,953,566.

This machine (E. B. 16x-20x) is radically different in con-

struction from that of application S. N. 685,025. Instead

of the large segments 13 of the latter, with long, arcuate,

er eee ED a,

29

inner ends, the machine of patent No. 1,953,566 comprises

relatively narrow segments with knife-edge inner ends.

Between the contiguous walls of adjacent segments in-

volute slots 26 are provided, terminating at their outer ends

in short, flaring passages 28, having radial rear walls 29,

faced with abrasive-resistant surfaces 30, such as tungsten

carbide. As shown in Fig. 1 of the patent (E. B. 16x), the

abrasive travels outwardly through the involute passages

and discharges therefrom into collision with the rear wall

of the associated flaring passage, as indicated by dotted

line P. The force of the collision drives the abrasive in the

direction of the arrow designated P" in Fig. 1 of the patent.

The abrasive flows from a suitable supply through a de-

livery spout 19 (KE. B. 17x), which registers with a four-

vane, solid-center impeller, which interferes the entrance of

the abrasive and causes a part thereof to rebound toward

the spout. The abrasive which enters the control sleeve 12

finds egress through outlet 23 into the inner ends of the

passages 26 as they successively register with outlet 23.

This machine is not of the centrifugal type, but the walls

29 drive, or bat, the abrasive toward the article to be treated.

Tests of the machine developed two fatal infirmities:

(1) the solid-center impeller so blocked the abrasive that

but a trickle thereof could reach the involute passages 26;

and (2) the abrasive which reached the batter walls 28

destroyed them in a period not to exceed twenty minutes.

The Practical Machines of the Parties.

American never made or marketed a Peik machine. Its

‘‘Wheelabrator’’ is the machine of the Hammell applicaticn

S. N. 725,055, filed May 11, 1934. Practically a replica of

the RA Rotoblast.

These machines have three main parts, substantially

as follows:

(1) A rotor comprising a plurality of widely spaced

apart, independent, thin, radial blades (E. B. 35x, 36x), each

having a smooth, uninterrupted, propelling face of sufficient

length to accelerate the abrasive smoothly and contin-

aed

30

uously and without abrupt change in direction from the

inner edge of the blade to its outer edge. In a standard

size machine, about nineteen inches in diameter, the rotor

is driven at a speed of approximately 2250 r.p.m., and will

propel upwardly of 30,000 pounds of abrasive per hour.

(2) An abrasive supply including a discharge spout

practically as designated 19 (E. B. 17x) and 21 (E. B. 27x),

(3) A transfer mechanism comprising a shell, or control

ring (EK. B. 35x, 36x), having a single peripheral egress open-

ing, and a multi-vane impeller in the shell having an axial

opening (E. B. 35x, 36x). The shell is designated 26, the

egress opening 27, and the vanes 15, in Fig. 3 of patent No.

2,352,588 (EK. B. 28x).

This patent discloses the ‘‘RA Rotoblast,’’ in which the

rotor comprises a dise 1, carried by a driving shaft 3. Pro-

jecting perpendicularly from one face of the disc, into free

space, are four widely spaced apart, thin dises 10 (E. B.

27x, 28x).

In the operation of the ‘‘RA Rotoblast,’’ as well as the

‘*Wheelabrator,’’ the abrasive discharging from the supply

spout passes unobstructedly into and through the axial pas-

sage of the impeller and is propelled by the vanes of the lat-

ter through the egress opening of the shell, from which it

travels in a stream outwardly in the free space into which

the rotor blades project. The stream is not materially im-

peded by the blades because they are thin and widely sepa-

rated from one another. In the rapid rotation of the rotor

the inner marginal edges of their blades successively nip off

and pick up the top of the abrasive stream. The slug s0

severed is by centrifugal force caused to travel outward

lengthwise of the blade to glide from its outer edge at 4

velocity and in a direction which is the resultant of the

momentum which it acquires in its travel with the blade

(tangential force) and its momentum acquired in its move-

ment lengthwise of the blade (centrifugal force).

(9951)