# Petition for a Writ of Certiorari — Remington Rand, Inc. v. Royal Typewriter Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for a Writ of Certiorari
- **Published:** January 1, 1949
- **Citation:** 338 U.S. 859

## Text

aj VvrP it

Supreme Court of the Unite

Ocroser TzRm, 1949

REMINGTON RAND INC.,

Petitioner,

vs.

ROYAL TYPEWRITER COMPANY, INC.,
Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE SECOND CIRCUIT AND SUPPORT-
ING BRIEF

‘ Frawors J. McNamara
Josers V. Meics
Attorneys for Defendant-Petitioner.

Y Praxcrs J. McNamana, |
JoszpH V. Metas, 2d¢on. 42° *
J. A. W. Suuson,

Frank C. STEeRox,
Wurm C. Conner,
Of Counsel.

Se ——————

INDEX

PAGE

Petition:
Questions PRESENTED - - 1,2

1. Is public policy contravened where a Dis-
trict Court decrees a patent to be valid and in-
fringed without trying the issue of validity, the
court having no adequate means to decide that

issue because defendant conceded validity? _.____ 1
2. Is public policy contravened where a court
of appeals affirms such a decree? _____________-_- 1

| 3. Should the Court of Appeals in such a case
permit the presentation of evidence on the issue
of validity so that the trial court may have ade-
quate means to decide that issue while the case is
still in the interlocutory stage and before account-
ing has. bagual ............... 2

VOLVED .......... oe

JURISDICTION —_-

Reasons RELIED ON FOR THE ALLOWANCE OF THE WRIT

PORTIA: inn siiciitinennivtiitebiines 6,7
Brief in Support of Petition:

JURISDICTION AND STATEMENT OF CasE _ 9

SprciricaTion oF Errors 9

Summary or ARGUMENT -_-- 9, 10

ARGUMENT:

I. The Woodfine patent in suit should be held in-
valid and the patented structure should be in
the public domain —~_------_ prea 10

®

ii INDEX
PAGE
II. In the patent system, the public interest (in pre-
serving the public domain) is paramount _____ 15

III. A concession of validity in a patent infringe-
ment suit contravenes the public policy which
requires that in the public interest, the issue of
validity shall be contested to protect the public
domain from conversion into illegal private
ne eR eee Ry —

IV. Failure of a party to contest the issue of valid-
ity does not foreclose the Court from deter-
mining that issue, in the public interest, and
does not relieve the Court of its duty to do so 17

V. A concession of validity does not create any
preclusion by estoppel in pais or by judgment
or otherwise. Even where private rights are
created thereby, they must be set aside where
it is necessary to do so to protect the public in-
terest __ ne “ 19

VI. The decree of the Court of Appeals should be
reversed because (1) the District Court contra-
vened public policy by failing to require a trial
of the issue of validity and thereby failing to
protect the public interest (2) the Court of
Appeals participated in and confirmed that
error, and (3) the Court of Appeals further
erred by refusing to give defendant any oppor-
tunity to correct those errors _..._.-__ 23

Conclusion:

This case involves questions of the greatest
importance in patent litigation, to wit, the pro-
cedure to be followed by members of the bar and
the District Courts and Courts of Appeal in pro-
tecting the public interest which is paramount in
every patent suit. Questions 1 to 3 inclusive under
the heading ‘‘Questions Presented’’ (supra, p. 1)

ae

INDEX iii

PAGE
should be answered in the affirmative and by
so doing this Court will confer a benefit on the
lower Courts, the legal profession and the entire
public. The decision of the Court below is er-
roneous and should be reversed -------~---- 27

List or AUTHORITIES
Addressograph-Multigraph Corp. v. Cooper, 60 %.
Supp. 697, 156 F. (2d) 483 (1946) __- 19, 22

Atlantic Works v. Brady, 107 U. 8. 192, 2 S. Ct. 225 13

Baker, et al. v. Hughes-Evans Co., et al., 270 Fed. 97,
® ain 13

Concrete Appliances Co. v. Gomery, 269 U. 8S. 177, 46
S. Ct. 42, 45 (1925) 13
Cuno Engineering Corporation v. Automatic Devices
Corporation, 314 U. 8. 84, 62 S. Ct. 37 (1941) ------ 11, 12

Edward Katzinger Co. v. Chicago Metallic Mfg. Co.,
399 U. 8. 394, 67 S. Ct. 416, 420 (1947) ----6, 16, 19, 20, 23

Exhibit Supply Company v. Ace Patents Corporation,
315 U. §. 126, 138, 63 8. Ct. 513, 519 (1941) 45 U.S.

P. Q. 601 to 603, 119 F. (2d) 349 23, 24
Fitzsimmons v. Eagle Brewing Co., 3 Cir. 107 F. (2d)

BL Gatarioees 18
General Electric Co. v. Wabash Appliance Corp., et

al., 304 U. S. 364, 58 S. Ct. 899, 903 (1938) ---------- id
Halliburton Oil Well Cementing Co. v. Walker, 329

U. S. 1, 67 S. Ct. 6 (1946) ---- 14
Hazel-Atlas Glass Co. v. Hartford-Empire Co., 332

U. 8. 238, 246, 64 S. Ct. 997, 1001 (1944) 15

Hill v. Wooster, 132 U. S. 693, 10 8. Ct. 228 ~...---- 26

iv INDEX

: waa
Hollister v. Benedict Manufacturing Co., 113 U. 8. 59,
72, 5 S. Ct. 717, 724 ~-

Mercoid Corp. v. Mid-Continent Investment Co., 320
U.S. 661, 64 S. Ct. 268, 271, 273 (1944) ________ 15, 16, 19,
21, 22, 23, 25

Morton Salt Co. v. Suppiger Co., 314 U. S. 489, 62 §.
Ct. 402 (1942) ___ totiinnninccthinigenihsoncemebiocdneaeae 15

Muncie Gear Works, Inc. v. Outboard etc., 315 U. S. 759,
766, 768, 62 S. Ct. 865, 870 (1941) ___.._ 17, 18

Nachman Spring-Filled Corp. v. Kay Mfg. Co., 2 Cir.,
139 F. (2d) 781, 783 (1943) at ae

Oscanyon v. Winchester Repeating Arms Co., 103 U. 8.
261 __ 18

Paramount Publix Corp. v. American Tri-Ergon Corp.,
294 U. S. 464, 477, 55 S. Ct. 449, 455 (1935) _____ 26

Pittsburgh Forgings Co. v. American Foundry Equip-
ment Co., 3 Cir., 119 F. (2d) 619 (1941) ______ 25

Pope Mfg. Co. v. Gormully, 144 U. S. 224, 12 8. Ct. 632,
636 (1892) ____ 16, 19, 21, 23

Precision Inst. Mfg. Co. v. Automotive Maintenance
Co., 324 U. S. 806, 65 S. Ct. 993, 998 ( WE eich cinetiees 15

Roberts v. Criss, 2 Cir., 266 F. 296, 302 __ Behe. 18

Scott Paper Company v. Marcalus Mfg. Co., 326 U.S.
way ee Oe ee) 16, 19, 20, 23
Sinclair & Carroll v. Interchemical etc., 325 U. S. 327,
65 S. Ct. 1143, 1145 (1945) ___ dis 17
Sola Electric Co. v. Jefferson Electric Co., 317 U. S.
173, 63 8. Ct. 172 (1942) ______ x!

22

Thomson-Houston, etc. Co. v. Lorain, etc. Co., 117 Fed.
my A A Ue i a eee 13

INDEX Vv

PAGE
United States v. Masonite Corp., 316 U. S. 265, 278,

62 S. Ct. 1070 (1942) 15
Universal Oil ete. v. Root Refining Co., 328 U. S. 575,

581, 66 S. Ct. 1176, 1179 (1946) 26
Veaux v. Southern Oregon Sales, {nc., 33 F. Supp. 605,

610, 9 Cir., 123 F. (2d) 455 (1942) 25, 26

Orner AUTHORITIES

Restatement of Contracts, Sec. 600, Comment -------- 18

Rivise and Caesar, Patentability and Validity, page 202,

Sec. 117
Walker on Patents (Deller’s Edition) Vol. 1, page 142 13
Williston, Contracts (Rev. Ed.), Sec. 1630a --------- 18

—

In THE

Sunreme Court of the United States

Ocroses Team, 1949

——— >

Remineton Ranp Inc.,

Petitioner,
vs. .
Royal TyPewRiTeR CoMPANY, Inc.,
Respondent.
senile

——

PETITION FOR WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE SECOND CIRCUIT

To the Honorable The Chief Justice and the
Associate Justices of the Supreme Court
of the United States:

Your Petitioner, Remington Rand Inc., respectfully
prays for a Writ of Certiorari to the United States Court
of Appeals for the Second Circuit to review a decree of
that Court entered on June 22, 1949.

A certified transcript of the record, including the pro-
ceedings in said Circuit Court of Appeals, is furnished
herewith, pursuant to Rule 38 of the rules of this Court.

Questions Presented

1. Is public policy contravened where a District Court
decrees a patent to be valid and infringed without trying
the issue of validity, the court having no adequate means
to decide that issue because defendart conceded validity ?

2. Is public policy contravened where a court of appeals
affirms such a decree ?*

*The Court of Appeals expressly stated that it and the District
pe had “no adequate means to decide the issue” (of validity).
nfra, p. 4.

3. Should the Court of Appeals in such a case permit the
presentation of evidence on the issue of validity so that the
trial court may have adequate means to decide that issue
while the case is still in the interlocutory stage and befor
accounting has begun?

Summary and Short Statement
of the Matter Involved

This petition relates to the case of Royal Typewriter
Company v. Remington Rand, Inc., a patent infringement
action involving U. S. Patent No. 1,916,905 to Woodfine,
relating to automatic, that is, spring-actuated, mechanism
for setting the margin controlling stops on a typewriter
carriage. The structures of the patented device and of the
accused device are described in the opinions of the District
Court for the District of Connecticut and the Court of
Appeals for the Second Circuit. See 76 F. Supp. 220 and
168 F. (2d) 691. Although the defendant! in its answer
pleaded the invalidity of tke Woodfine patent and cited
several prior art patents, at the trial defendant did not
contest this issue and put in no evidence to show the applica-
bility of these references im anticipation of the W oodfine
patent or as negativing invention therein. The trial issue
was erroneously narrowed to the sole question of infringe-
ment.”

*In this petition and accompanying brief, the petitioner and re-
spondent are identified by their positions in the District Court, :. é,
as defendant and plaintiff, respectively.

? The statement of counsel for defendant during the trial (opening
statement, Trial Record, page 23) was as follows:

“The validity of those claims may be doubtful, but non-in-
fringement by the defendant structure is so clear that we prefer
to rely upon the defense of non-infringement.”

In his brief in the Court of Appeals, defendant's attorney said
(Opening brief, p. 1):

“In the Court below we did not contend that the patent in suit

was invalid, nor do we make such contention here, but our positi

was and is that the claims in suit of the Woodfine patent are not

infringed by the structure manufactured and sold - appellant.”

—
| 3

i

was entered in favor of plaintiff. ( Res. '
On appeal to the Court of Appeals on the only issue tried,

and the District Court had “no adequate means to decide”
the question of validity (infra, p. 4). This Court denied
certiorari October 11, 1948, 69 S. Ct. 50, and rehearing was
denied November 11, 1948, 69 S. Ct. 129. The only issue
involved in those proceedings was the question whether the
doctrine of equivalents should be invoked to stretch the
claims to cover defendant’s device. .

This is a case where defendant’s trial attorney and the
District Court contravened the public policy by failing to
try the issue of validity. The Court of Appeals in its
opinion said, 168 F. (2a) 691 (decided May 1948):

“Judge Smith’s opinion in the district court has
been published, and states the disclosure in substance
and the claims in full. We shall assume a familiarity
with it in what we say and confine our discussion to
the only issue in dispute—infringement. As a pre-
liminary it is to be observed that the defendant con-
cedes the claims in suit to be valid; a concession we
shall accept, although the Supreme Court has said that,
when the defendant challenges the validity of claims
as well as their infringement, it is better practice to
pass on their validity. At first blush it might appear

8 There are two transcripts of the Record in this case. The first
was filed as a part of the petiti for certiorari denied Oct. 11, 1948,
69 S. Ct. 50, rehearing denied Nov. 11, 1948, 69 S. Ct. 129. The
question of validity was not involved. The second transcript of Record
is that filed as a part of the present petition to this Court for a writ
of certiorari and shows the proceedings in the Court of Appeals on
defendant’s petition in that seeking a hearing on the issue of
validity. To avoid confusion the first and second transcripts will be
identified as “First Rec.” and “Second Rec.” respectively.

4

that the situation is the same when validity is cop.
ceded, because the reason why we should pass on that
question, even though we can dispose of the suit other.
wise, ts so that invalid claims shall not remain ix
terrorem of the art. There is however *his di

im so proceeding, when the defendant concedes the
validity of the claims. He then puts in no evidence,
nor does he seek to defeat them on the patentee’s ows
presentation; and the Court has therefore no adequate
means to decide the issue.”

Note the statement of the Court of Appeals that neither
it nor the District Court had adequate means of deciding
the question of validity.

For reasons hereinafter set forth the Court of Appeals
should have, then and there, sua sponte, remanded the case
to the District Coxrt with instructions to obtain adequate
means to decide the issue by requiring a trial of the issue
of validity.

The judgment of the District Court as affirmed by the
Court of Appeals is therefore based on error, i. ¢., contra-
vention of public policy by failure to try out the question
of validity.

The purpose of the petition in the Court below was to
correct the above mentioned error and thereby promote
the public policy.

On June 13, 1949, defendant petitioned the Circuit Court
of Appeals as follows (Second Rec. 1 to 17):

“*(a) For an order recalling and amending the mandate
of this Court to the District Court for the District of Con-
necticut in this action, and remanding the case to the Dis-
trict Court for the filing of an amendment to the answer,
as appended hereto, and for a hearing on the issue of the
validity of the patent in suit, U. S. Patent No. 1,916,905 t»
Woodfine, and for a stay of the accounting.

_
3 5

(b) For such other and further relief as this Court may
deem appropriate for the purpose of permitting defendant
to show the invalidity of the Woodfine patent.’’

The grounds upon which that petition was based are as
follows:

“(1) The Woodfine patent is invalid and should be de-
elared to be so, for the reasons set forth in the accompany-
ing affidavit of Edwin W. Hammer.®

(2) For reasons of public policy, the defendant-peti-
tioner has the right to contest the validity of the Woodfine
patent.”

Plaintiff filed no answer and merely submitted a brief.

On June 22, 1949, the Court of Appeals denied defend-
ant’s petition without opinion and without giving any
reasons for such denial; in fact, the Court below omits in
its decree dated June 22, 1949 any reference to the real
relief prayed for; ¢. e., that the case be remanded to the
trial Court for a trial of the issue of validity.

The case is still in the interlocutory stage. Accounting
has not begun.

Jurisdiction

1. This is a suit arising under the Patent Laws of the
United States (28 U. S. C. Sec. 41 (7), Judicial Code Sec.
24 (7), New Title 28, Sec. 1338).

2. The jurisdiction of this Court is invoked under New
Title 28 U. 8. C. Sec. 1254 (1) and Rule 38 (5) (b) of the
rules of this Court.

3. The date of the decree which petitioner seeks to have
reviewed is June 22, 1949 (Second Ree. 17).

* That affidavit stands admitted. See footnote 5 infra, page 12.

6

Reasons Relied On for the Allowance
of the Writ

(1) It is of the greatest public importance to have
affirmative answers to the questions 1, 2, and 3 presented
above (supra, pp. 1, 2).

The answers should be in the affirmative because this
Court has laid down the general rule that fatlure to contest
validity is against public policy. See Edward Kateinger
Co. v. Chicago Metallic Mfg. Co., 329 U. 8. 394, 401, 67 S. Ct.
416, 420 (1947), where this Court clearly stated that failure
to make the defense of invalidity is a contravention of pub-
lic policy.

In that case this Court said:

“* * * public policy * * * is promoted by his making
the defense, and contravened by his refusal to make it.”

The fact that both the District Court and the Court of
Appeals in the present case acted in contravention of
that public policy emphasizes the need for a clear direc-
tive from this Court particularly when the Court of Ap-
peals admitted that it and the District Court had no ade.
quate means to decide the issue.

(2) There is no likelihood of litigation resulting in a
conflict of decisions between different Circuit Courts of
Appeal. See Petitioner’s Briefs, Petition for Certiorari,
Remington Rand, Inc., Petitioner v. Royal Typewriter Com-
pany, Inc., Respondent, 69 S. Ct. 50.

Prayer

Wuenerorg, your petitioner respectfully prays that a
writ of certiorari be issued to the United States Court of
Appeals for the Second Circuit to the end that this cause
may be reviewed and determined by this Court; that the

7

decree of said Court of Appeals dated June 22, 1949 be re-
versed and that petitioner be granted such other and fur-

ther relief as may be just.
Respectfully submitted,

Frawor J. McNamara
Joszpx V. Mezrcs
Attorneys for Defendant-Petitioner.

eS...

9

BRIEF IN SUPPORT OF PETITION

Decree of the Court Below (without opinion)

The United States Court of Appeals for the Second Cir-
cuit denied defendant’s petition without opinion (Second

Rec. p. 17).
Jurisdiction and Statement of the Case

The jurisdictional statement and the essential facts are
set forth in the accompanying petition.

Specification of Errors

The errors which petitioner will urge if the writ of
certiorari is issued are that the United States Court of
Appeals for the Second Circuit erred:

1. In contravening the public policy in respect of pat-
ents by affirming a decree of patent validity and infringe-
ment in a case where the issue of validity was not tried and
then

2. by refusing to give defendant any opportunity to cor-
rect error No. 1.

Summary of Argument

I. The Woodfine patent in suit should be held invalid and
the patented structure should be in the public domain.

II. In the patent system, the public interest (in preserv-
ing the public domain) is paramount.

III. A concession of validity in a patent infringement
suit contravenes the public policy which requires that
in the public interest, the issue of validity shall be
contested to protect the public domain from conversion
into illegal private monopolies.

IV. Failure of a party to contest the issue of validity does

not foreclose the Court from determining that issue, in

the public interest, and does not relieve the Court of its

duty to do so.

10

V. A concession of validity does not create any prech. —
sion by estoppel in pais or by judgment or otherwise
Even where private rights are created thereby, they
must be set aside where it is necessary to do so t
protect the public interest.

VI. The decree of the Court of Appeals should be reversed
because (1) the District Court contravened public pol.
icy by failing to require a trial of the issue of validity
and thereby failing to protect the public interest; (2)
the Court of Appeals participated in and confirmed
that error, and (3) the Court of Appeals further erred
by refusing to give defendant any opportunity to cor-
rect those errors.

ARGUMENT

I. The Woodfine patent in suit should be held
invalid and the patented structure should
be in the public domain.

(A) Nature of the Alleged Invention

The essence of the Woodfine patented structure is the
use of a spring* to caase quick, automatic movement of the
margin controlling stops on a typewriter, instead of manual
movement.

(B) Reasons for Invalidity

The Woodfine patent is invalid and the subject matter
is in the public domain because that patent seeks to monopo-
lize the use of a notoriously old expedient, i. e., the use of
& spring to automatically move a slidable member (the mar-
gin controlling stop on a typewriter carriage) toward a
fixed abutment. The use of such an expedient was common
to many diverse arts prior to Woodfine’s alleged invention
and Woodfine’s use thereof represents nothing more than
mechanical skill lying within the public domain.

* Emphasis throughout the brief has been supplied.

a

aca aran meena er sr

The following quotation from the well-known text,
“Patentability and Validity’ by Rivise and Caesar, page
202, Sec. 117, states the general rule as follows:

“$117. Utilising Expedient Common to Many Arts.

The second rule is that it generally requires nothing
more than the exercise of mere mechanical skill to
utilize an expedient common to many diverse arts,
even though its new use had never before been con-
templated.’’

The above rule merely reiterates the doctrine recog-
nized by this Court over a period of many years.

One of the most recent applications of the rule was in
the case of Cuno Engineering Corporation v. Automatic
Devices Corporation, 314 U. S. 84, 62 S. Ct. 37 (1941).
There, the essence of the patented structure was the use,
in a cigar lighter such as is commonly found on automobile
dashboards, of a bi-metallic element automatically to cut
off the electric heating current when the heating element
of the lighter reached a predetermined temperature. It was
shown that this expedient had been commonly used in di-
verse arts for the purpose of automatically cutting off the
electrical current in resistance heating elements, and this
Court held that its use for the particular purpose of the
patent represented the skill of the calling but not invention.

Mr. Hammer’s affidavit (Second Ree. 4 to 17)° attached
to the petition in the Court below shows that it is a com-
mon expedient in many diverse arts and also in the type-
writer art to use a spring to cause quick, automatic move-
ment of an element as a substitute for manual movement;
indeed it may be said to be axiomatic to cause quick, auto-
matic movement by the use of a spring. The patents dis-
cussed in Mr. Hammer’s affidavit are set forth in the

12

proposed amended answer (Second Rec. 3). None of those
patents were cited in the original answer.

The following is quoted from Mr. Hammer’s affidayit
‘Second Ree, 16, 17):

“As stated at the outset, I find that the essence of the
subject matter on which a patent was granted to Wood.
fine by the Patent Office was the use of a spring to cause
a margin setting stop on a typewriter to automatically
move toward and into engagement with an abutment,
instead of manual movement.

‘*In summary it will be seen:

(1) that the use of a spring to cause an element to
move quickly and automatically as a substitute for
manual movement is notoriously old.

(2) that the elements of the Woodfine structure in
the same or analogous functional relationship are found
in the patents discussed above. Those elements and
their functional relationship may be briefly described
as follows:

A slidable member or stop is normally held in en-
gagement with a rack bar or equivalent by a detent or
latch. The slidable member is biased toward a fixed
abutment by a spring. Release of the latch or detent
permits the spring to act and causes the slidable mem-
ber to ‘jump’ toward and into engagement with the
fixed abutment.’”*

Regarding the Benzing patent discussed in Mr. Ham-
mer’s affidavit, it will be seen (Second Rec. 8 to 9) that
the structure of that patent is the complete equivalent
of the Woodfine structure in every respect, indeed the
Benzing patent may be said to be a “judicial photograph”
of the Woodfine structure. The Benzing patent was applied

*See Hammer affidavit (Second Rec. 5 to 6) for a description
and illustration of the Woodfine patent in suit. A copy of that
patent was inadvertently omitted from the binder attached to defend-
ant’s petition in the Court below. A copy will be found in the First

Rec. (69 to 73).
—

(ERI a aa a SSH
| 13

for in Germany about forty days after Woodfine’s fili

date.

The principle set forth by this Court in Concrete Ap-
pliances Co. v. Gomery, 269 U. 8. 177, 46 8. Ct. 42, 45 (1925),
is applicable here. In that case, the Court said:

«e © * The adaptation independently made by engi-
neers and builders of these familiar appliances to the
movement and distribution of concrete cement in build-
ing operations and the independent patent applica-
tions, within a comparatively short space of time, for
devices for that purpose are in themselves persuasive
evidence that this use, in combination of well known
mechanical elements was the product only of ordinary
mechanical or engineering skill and not of inventive
genius. Atlantic Works v. Brady, 107 U. 8. 192, 2
g. Ct. 225, 27 L. Ed. 438. It is but ‘the suggestion of
that common experience, which arose spontaneously
and by a necessity of human reasoning, in the minds of
those who had become acquainted with the circum-
stances with which they had to deal.’ Hollister v. Bene-
dict Manufacturing Co., 113 U. 8. 59, 72, 5 8. Ct. 717,
| 724 (28 L. Ed. 901).”’

In Baker, et al. v. Hughes-Evans Co., et al., 270 Fed. 97,
99 (2 Cir., 1920), the Court said, quoting from Thomson-
Houston, etc., Co. v. Lorain, etc., Co., 117 Fed. 253, 54
0. C. A. 285:

‘Where a number of workers in a single field, when
confronted by an obstacle to the development of a
device, naturally, and practically contemporaneously,
independently substitute one well-known material for
another, * * ° the presumption is raised that such
workers rightly regarded the substitution as a mere
improvement, * * ° such as would be adopted or
selected by the skilled workman.’’

See also Walker on Patents (Deller’s Edition), Vol. 1,
page 142.

coer
aes

14

In addition to invalidity because of lack of invention
claims 1 and 2 are invalid because they are functional anj
indefinite and do not comply with Sec. 4888, Revised Stat.
utes,”

The spring which is the essence of the alleged invention
(as conceded by plaintiff’s counsel) is not even mentioned
in claims 1 and 2.

Instead of a definite statement of the spring, use is
made of the functional expression (in claim 1)

“means etc. tending to slide the stops in one direction
on the rack bar * * °,

and in claim 2
“means etc. tending to slide the stops in opposite diree-
tions on the rack bar * * *”, (First Rec, 229, 230)

In General Electric Co. v. Wabash Appliance Corp. et
al., 304 U. S. 364, 58 S. Ct. 899, 903 (1938), this Court said:

“‘But the vice of a functional claim exists not only when
a claim is ‘wholly’ functional, if that is ever true, but
also when the inventor is painstaking when he recites
what has already been seen, and then uses conveniently
functional language at the exact point of novelty.”

So here claims 1 and 2 use functional language to de-
scribe what plaintiff’s attorney asserted to be the ‘‘essen-
tial novelty’’ of Woodfine (supra, p. 3).

The rule prohibiting the misuse of functional phrase-
ology in patent claims was recently and emphatically set
forth by this Court in Halliburton Oil Well Cementing Co.
v. Walker, 329 U. 8S. 1, 67 S. Ct. 6 (1946).

* Only claims 1, 2, and 3 of the four claims of the Woodfine patent
in suit were placed in issue (First Rec. 232, 233).

—

ee

II. Inthe patent system, the public interest (in
preserving the public domain) is para-
mount.

In Mercoid Corp. v. Mid-Continent Investment Co., 320
U. 8. 661, 665, 64 8. “t. 268, 271 (1944), this Court said:

“It is the public interest which is dominant in the pat-
ent system.’’

ain in Precision Inst. Mfg. Co. v. Automotive Main
tenance Co., 324 U. 8. 806, 65 S. Ct. 993, 998 (1945), this
Court said:
‘The possession and assertion of patent rights are ‘is-
sues of great moment to the public.’ Haeel-Atlas Glass
Co. v. Hartford-Empire Co., 322 U. 8. 238, 246, 64 8.
Ct. 997, 1001. See also Mercoid Corp. v. Mid-Conti-
nent Investment Co., 320 U. S. 661, 665, 64 S. Ct. 268,
271; Morton Salt Co. v. Suppiger Co., supra; United
States v. Masonite Corp., 316 U. S. 265, 278. A pat-
ent by its very nature is affected with a public interest.
As recognized by the Constitution, it is a special privi-
lege designed to serve the public purpose of promoting
the ‘Progress of Science and Useful Arts.’ At the same
time, a patent is an exception to the general rule
against monopolies and to the right to access to a
free and open market. The far-reaching social and
economic consequences of a patent, therefore, give the
public a paramount interest in seeing that * * * such
monopolies are kept within their legitimate scope.”

16

Itt. A concession of validity in a patent is.
fringement suit contravenes the Public
policy which requires that in the public
interest, the issue of validity shall be con.
tested to protect the public domain from
conversion into illegal private monopolies,

In Edward Kateinger Co. v. Chicago Metallic Mfg. Co,
329 U. S. 394, 67 S. Ct. 416, 420 (1947), this Court em.
phasized the necessity of preserving the public domain
against inroads upon it by private monopolies in the form
of invalid patents in the following language:

‘*In Scott Paper Co. v. Marcalus Co., 326 U. 8. 249, it
was held that even an assignor who had sold a patent
issued to itself was free to challenge the validity of the
patent and thereby defeat an action for infringement
by showing that the invention had been described in
an expired patent. In thus emphasizing the neces.
sity of protecting our competitive economy by keep.
ing open the way for interested persons to challenge
the validity of patents which might be shown to be
invalid, the Court was but stating an often expressed
policy that ‘it is the public interest which is dominant
in the patent system’ Mercoid Corp. v. Mid-Conii-
nent Investment Co., 320 U. S. 661, 665, (64 S. Ct. 268,
271) and that the right to challenge ‘is not only a private
right to the individual but it is founded on public policy,
which is promoted by his making the defense, and con-
travened by his refusal to make it.’ Pope Mfg. Co. v.
Gormully, 144 U. S. 224, 235."

_—
| 17

Iv. Failure of a party to contest the issue of
validity does not foreclose the Court from
determining that issue, in the public inter-
est, and does not relieve the Court of its
duty to do so.**

In Muncie Gear Works, Inc. v. Outboard Marine Manw-
facturing Co. etc., 315 U. 8. 759, 766, 768, 62 S. Ct. 865, 870
(1941), the issue of invalidity of a patent (because of pub-
ijo use of the claimed subject matter more than two years
before it was first presented to the Patent Office) was
pleaded but “was not clearly presented, if indeed it was

at all” in the District Court and Court of Appeals.

This Court said (62 S. Ct. 870):

“We think the conclusion is inescapable that there was

public use, or sale, of devices embodying the asserted

invention, more than two years before it was first pre-
oreclosed

guarded by the patent statutes, and so frequently pres-
See
on.”

In Nachman Spring-Filled Corporation v. Kay M. fg. Co.,
2 Cir., 139 F. (2d) 781, 783, there was failure in the District
Court to try the issue of validity and the Court of Appeals
remanded the case to the District Court with instructions

** Where infringement is found (as in the case at bar) that
duty is mandatory because an invalid patent cannot be infringed.
Even where non-infringement is found, the Court should inqui
fully into validity as a general rule. Sinclair & Carroll Co. v. Inter-
chemical Corporation, 325 U. S. 327, 330, 65 S. Ct. 1143, 1145.

18

to vacate the decree and hear evidence as to validity, Ip
that case the Court of Appeals followed the doctrine of
the Muncie case and said (speaking through Frank, (jp.
cuit Judge) with reference to the failure to try the issue
of validity in the District Court (139 F. (2d) 783) :

This contention was not made in the court
below; but we do not reject it on that account, since
Muncie Gear Co. v. Outboard Co., 315 U. 8. 759, 766,
768, 62 S. Ct. 865, 870, 86 L. Ed. 1171, seems to us tp
hold that regard for ‘the public interest sought to be
safeguarded by the patent statutes, and so frequently
present but so seldom adequately represented in pat-
ent litigation’, requires that an upper court should con-
sider important defenses in such litigation even though
not raised in the court below.’’

It is of interest to note the analogy drawn by the Court,
in the Nachman case, between (1) the doctrine of the Muncie
case that in patent litigation a Court should sua sponte
investigate the defense of invalidity, and (2) the doctrine
in the field of contract law that a Court should sua sponte
investigate the important defense of illegality of a contract,
(It may also be noted that it is well settled that a patent
is a contract, between the patentee and the Government.)

That analogy is set forth by the Court in a footnote,
139 F. (2d) 783, as follows:

**:Also pertinent are cases holding that a court should
sua sponte raise the question of the illegality of an
agreement where the illegality is serious (especially
where an important public interest is involved), and
that the defense of illegality cannot ordinarily be
waived. See e. g., Oscanyan v. Winchester Repeating
Arms Co., 103 U. S. 261, 26 L. Ed. 539; Roberts v. Criss,
2 Cir., 266 F. 296, 302, 11 A. L. R. 698 ; Fitzsimmons
v. Eagle Brewing Co., 3 Cir., 107 F. 2d 712, 126 A. L. B.
681; Williston, Contracts (Rev. Ed.) Sec. 1630a; Re-
statement of Contracts, Sec. 600, comment.’’

__ still
19

vy. A concession of validity does not create
any preclusion by estoppel in pais or by
judgment or otherwise. Even where private
rights are created thereby they must be set
aside where it is necessary to do so to pro-
tect the public interest.

That the above proposition has been established by this
Court is shown by numerous decisions. It will suffice how-
ever to discuss briefly only the following:

1. Pope Mfg. Co. v. Gormully, 144 U. S. 224, 12 S. Ct.
632, 636 (1892) ;

9. Scott Paper Company v. Marcalus Mfg. Co., 326
U. 8. 249, 66 S. Ct. 101 (1945) ;

3. Edward Kateinger Co. v. Chicago Metallic Mfg. Co.,
399 U. S. 394, 67 S. Ct. 416, 420 (1947) ;

4. Mercoid Corp. v. Mid-Continent Investment Co.,
390 U. 8. 661, 64 S. Ct. 268, 271, 273 (1944).

See also Addressograph-Multigraph Corp. v. Cooper, 60
F. Supp. 697 (1945), affirmed 2 Cir., 156 F. (2d) 483 (1946).

In Pope Mfg. Co. v. Gormully, 144 U. S. 224, 12 S. Ct.
632, 636 (1892), specific performance was sought on a li-
cense agreement in which the defendant had expressly
agreed not to attack the validity of certain patents. The
question was:

«@ © © whether the defendant can estop himself from
disputing patents which may be wholly void * * °.”’

In that case defendant had agreed never to make or
sell any machines covered by plaintiff’s patents. That was
equivalent to extending the patents far beyond their terms.
Defendant further agreed to the entry of an injunction
against him, without notice, in the event that after expira-
tion of the license he should make, sell or use any of
the machines patented by plaintiff. Long after the date of
the contract, defendant in a suit for specific performance,
repudiated the illegal agreement and was justly permitted

20

to do so, on the ground that that agreement was in con-
travention of public policy.

This Court pointed out that validity of patents is a mat.
ter of public policy, and, comparing the defense of in.
validity with the defense of usury to an action on a note,
quoted with approval from an earlier decision as follows:

“«e * © the right to make the defense is not only a
private right to the individual, but it is founded on
public policy which is promoted by his making the de.
fense, and contravened by his refusal to make it. * * *
With regard to all such matters of public policy, it
would seem that no man can bind himself by estoppel
not to assert a right which the law gives him on rea.
sons of public policy.”*

In Scott Paper Company v. Marcalus M fg. Co., 326 U.§,
249, 66 S. Ct. 101 (1945), Marcalus had assigned the patent
in suit to the plaintiff. Thereafter Marcalus organized and
controlled defendant Company and proceeded to make and
sell the patented machine and method. At the trial of the
infringement suit the essence of the defense was that the
plaintiff’s patent was invalid because it was completely
anticipated by an expired prior art patent to Inman, that
the accused machine was substantially a copy of the struc-
ture of the expired Inman patent and was therefore in the
public domain. The plaintiff invoked the rule of estoppel
by which an assignor was precluded from asserting the
invalidity of the invention and patent assigned. The Dis-
trict Court applying that rule gave judgment for the plain-
tiff. The Court of Appeals for the Third Circuit reversed
and its decision was affirmed by this Court.

The doctrine of the Marcalus case was summarized by
this Court in the later Katzinger case in the following

language (67 S. Ct. 420):

“*In Scott Paper Co. v. Marcalus Co., 326 U. 8. 249, it
was held that even an assignor who had sold a patent

* Cited with approval in Edward Katzinger Co. v. Chicago Metallic
Mfg. Co. (1947), supra.

21

issued to itself was free to challenge the validity of the
patent and thereby defeat an action for infringement
by showing that the invention had been described in

of
open the way for interested persons to challenge the
validity of patents which might be shown to be invalid,
the Court was but stating an often expressed policy
that ‘It is the public interest which is dominant in the
patent system’, M ercoid Corp. v. Mid-Continent Invest-
ment Co., 320 U. S. 661, 665, 64 S. Ct. 268, 271 and that
the right to challenge ‘is not only a private right to the
individual but it is founded on public policy, which is
by his making the defense, and contravened
by his refusal to make it.’ Pope Mfg. Co. v. Gormully,
144 U. S. 224, 235.”’

In the Mercoid case, one of the elements (a switch) of
the patented combination (stoker mechanism) was in the
public domain and plaintiffs tried to monopolize the switch
by granting the right to use the patented combination only
to those who purchased the unpatented switch from one of
the plaintiffs. The defense was misuse of the patent.’

It was asserted that this defense was barred by res
judicata because Mercoid was in privity with the defendant
in a previous suit where the defense was available but was
not made. All this was conceded.

This Court nonetheless refused to apply the doctrine of
res judicata, and allowed Mercoid to raise its belated de-
fense, in furtherance of the public policy against monopoly
of that which is in the public domain (in that case an un-
patented part of a patented combination).

This Court said (64 S. Ct. 273):

“The parties cannot foreclose the Courts from the
exercise of that discretion by the failure to inter-
pose the same defense in an earlier litigation. Cf. Sola

® The “misuse” of a patent is a subdivision of the broader topic
of illegal monopoly of that which is in the public domain. Every
restraint of trade by means of an invalid patent constitutes an illegal
capture of a part of the public domain.

22

Electric Co. v. Jefferson Electric Co., 317 U. 8. 173, 63
S. Ct. 172.”

That the principle of the Mercoid case is broad enough
to protect the public interest against invalid patents as wel]
as against the ‘‘misuse’’ of a patent is shown by the case
of Addressograph Multigraph Corp. v. Cooper, 60 F. Supp.
697, D. C. N. Y. (1945) affd. 2 Cir. 156 F. (2d) 483 (1946),
In that case it was contended (in a suit against the indi.
vidual defendants and a corporation owned and dominated
by them) that a consent decree entered in 1939 in a former
suit brought by the same plaintiff against the individual
defendants acted as a bar to the defense of invalidity in
the later action. The Court rejected that contention, found
the claims of the patent invalid, dismissed 2he complaint
and said (p. 700):

“In the opinion of the Court the claims are clearly in-
valid, and restraints on competition should not be per-
mitted whether brought about by agreement, consent
decree or estoppel. See Sola Electric Co. v. Jefferson
Co., 317 U. 8. 173, 63 S. Ct. 172, 87 L. Ed. 165.’’

In affirming the above case the Court of Appeals for the
Second Circuit, referring to the Mercoid case, said:

““e * © Then in Mercoid Corp. v. Mid-Continent In-
vestment Co., 320 U. S. 661, 670, 64 S. Ct. 268, 88 L. Ed.
376, the Supreme Court held that in patent cases, as
in other litigation, equitable relief should be either
extended or limited as the public interest may require,
and that as a result the doctrine of res judicata in pat-
ent cases is limited by the public policy against

Ee

yI. The decree of the Court of Appeals should
be reversed because (1) the District Court
contravened public policy by failing to re-
quire a trial of the issue of validity and
thereby failing to protect the public inter-
est, (2) the Court of Appeals participated
in and confirmed that error, and (3) the
Court of Appeals further erred by refusing
to give defendant any opportunity to cor-
rect those errors.

The principle enunciated by the cases discussed above
is that it is more important to promote the public policy
and to have the public domain preserved than it is to
enforce doctrines relating to private rights, for example
estoppel by agreement not to contest validity, equitable
estoppel (the Pope v. Gormully, Marcalus and Katzinger
cases) and even estoppel by judgment (res judicata) by
failure to raise the defense in prior litigation (the Mercoid
case).”°

In Exhibit Supply Company v. Ace Patents Corpora-
tion, 315 U. S. 126, 138, 62 8. Ct. 513, 519 (1941), the dis-
senting opinion stated that

‘‘By failing to assign error on the issue of patent-
ability, parties to an infringement suit should not be
permitted to foreclose a court from protecting the
public interest.”’

In the Exhibit Supply case the issue of validity was
tried in the District Court and that Court and the Court of
Appeals (7 Cir.) therefore had adequate means to decide
the issue and it was decided by those Courts in favor
of the plaintiff. In this Court, the petitioners in the Ex-
hibit Supply case did not assign error on the issue of

© In the present case the judgment has not become final and
— cannot seek to invoke the doctrine of res judicata. The
ercoid case is discussed to show the basic principle that even the
doctrine of res judicata will be disregarded where it is necessary to do
so to protect the public interest.

24

patentability. In the present case counsel for the plaintiff
(Royal Typewriter Company, Inc.) may seek to derive
comfort from that fact because in their brief in the Court
below they argued as follows:

“*Counsel omit from their discussion Exhibit Sup.
ply Company v. Ace Patents Corporation, 315 U. §
126, which seems to us the most pertinent of all. J]
was cited by this Court in its opinion in this case (168
F. 2d at 692). Disposition of that case in the Supreme
Court was on all fours with the disposition of the
instant case in this Court.’’

The opinion and conclusion set forth in the first and last
sentences, respectively, of the above quotation are erron-
eous.

In the Exhibit Supply case, the majority of this Court
accepted the concurring opinions of both lower Courts that
the patent was valid those opinions being based on a trial
of the issue of validity and full consideration of that issue,
See 119 F. (2d) 349, 7 Cir., (1941). The District Court’s
opinion was rendered orally and is reported in 45 United
States Patents Quarterly, 601 to 603.

Contrast that case with the present case where the
finding of validity by the District Court and affirmance
thereof by the Circuit Court of Appeals was made with
no adequate means to decide the issue, as expressly stated
by that Court (supra, p. 4).

No sanction can be found in the Exhibit Supply case
for the practice of decreeing the validity of a patent in
the absence of a trial of the issue of validity, and such prac-
tice is clearly condemned by this Court, as a contraven-
tion of public policy, in the later Katzinger case.

It is clear that defendant’s trial attorney made an error
in contravening the public interest by failing to contest
validity or conceding validity. That the trial court and
Court of Appeals participated in and confirmed that error
is also true. Indeed the Court of Appeals has refused
defendant’s attempt to correct that error, by denying de-
fendant’s petition for an order instructing the trial judge ,

| __ eae eee R RR ER :

to grant a hearing on the issue of validity. The Court of
Appeals has even gone to the extreme of denying defendant
the privilege of applying to the District Court to ask that
Court for a hearing on the issue of validity.”
The Court of Appeals gave no reasons for denying
defendant’s petition.
In plaintiff’s brief in opposition to defendant’s petition
in the Court below, plaintiff said:
“There is therefore no reason for not holding defend-
ant to its own election not to contest validity and to the
judgment. Any other rule would lead to interminable
litigation in patent cases.”’

The answer to the first sentence of that statement is
that it is against public policy to hold defendant to its
election as clearly shown by the principles of the cases
discussed above. The answer to the second sentence of
that statement is that the District Court has both the power
and the duty of protecting the public interest, in patent
litigation, and must require a trial of the issue of validity
where infringement is found. See footnote, supra, page 17.

As stated by this Court in the Mercoid case, 320 U. 8.
661, 64 S. Ct. 268, 273, protection of the public interest

“Gs not ‘at the mercy’ of the parties”

and as stated in Veaua v. Southern Oregon Sales, Inc., 33
F. Supp. 605, 610 (D. Ore. 1940) affirmed 9 Cir., 123 F.
(2d) 455 (1942),
‘Even if plaintiff and defendant should stipulate that
invention was present, the Court should consider the
question.’’ ”

11 That leave is usually granted as a matter of course, Pittsburgh
Forgings Co. et al. V. American Foundry Equipment Co., 3 Cir., 119
F. (2d) 619 (1941) and could have been granted under paragraph
(b) of defendant's petition (supra, p. 5).

12 The use by the Court of Appeals for the Ninth Circuit of the
word “consider” in the Veaux case necessarily implies that the trial
court should have adequate means to consider and decide the issue,

. as indicated by the court below in its original opinion (supra, pp. 3,4).

26

That statement of principle reiterated the same
enunciated by this Court in Hill v. Wooster, 132 U. §.
10 8. Ct. 228 (1890) and Paramount Publix Corp. v. Ameri.
can Tri-Ergon Corp., 294 U. 8. 464, 477, 55 S. Ct. 449, 455
(1935) .*8

The Government unsuccessfully sought in 1942 to have
legislation enacted which would give the Attorney Genera]
the right to intervene in all patent litigation in order to
protect the public interest. See S. 2730 introduced Aug,
20, 1942, 77th Congress, 2nd Session. See also H. R.
Sec. 27, 79th Congress, 1st Session, June 13, 1945, That
legislation was not enacted.
This Court has accomplished the purpose of protecti
the public interest by establishing the rule that the respon-
sibility for adequately protecting the public interest in pat-
ent litigstion rests on the Courts, i. ¢., the judicial rather
than the executive branch of the Government, as shown by
the cases discussed herein. That rule (as emphasized by
the present case) is not uniformly followed by the lower

Federal Courts and further direction by this Court is there.
fore needed.

The implementation of that rule is clearly within the
power of the trial court. Should the parties refuse or fail
properly to protect the public interest, the court is not
helpless to do so because it has full power and authority to
appoint its own master or expert to make a thorough in-
vestigation of the facts relating to validity, to enable the
court to discharge its duty, and to tax the costs in the
court’s discretion. Furthermore, as stated by this Court
in Universal Oil Products Co. v. Root Refining Co., 328
U. 8. 575, 581, 66 S. Ct. 1176, 1179: «A federal court can
always call on law officers of the United States to serve as

*In the Veaus case where the defendant in the Patent Office
Tribunal had represented the claims to be valid and then reversed
its decision when sued for infringement the Court said, referring
to the Paramount Publix case

“this conduct of defendant does not preclude ‘the Court from
relieving the alleged infringer and the public from the asserted

monopoly when there is no invention’.”

(ag Se ca Rt

amici’’, to represent the public interest in the administra-
tion of justice.

Conclusion

This case involves questions of the greatest importance
in patent litigation, to wit, the procedure to be followed by
members of the bar and the District Courts and Courts of
Appeal in protecting the public interest which is para-
mount in every patent suit. Questions 1 to 3 inclusive under
the heading ‘‘ Questions Presented’’ (supra, pp. 1, 2) should
be answered in the affirmative and by so doing this Court
will confer a benefit on the lower Courts, the legal profes-
sion and the entire public. The decision of the Court below
is erroneous and should be reversed.

It is therefore urged that the petition be granted.
Respectfully submitted,

Franois J. McNamara
Joszern V. Meics
Attorneys for Defendant-Petitioner.

Francis J. McNamara,

Josern V. Meias,

J. A. W. Srmson,

Frank C. STercr,

WruaM OC. ConneR,
Of Counsel.

Dated, August 23, 1949.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_2352%3A1. Public record. Not legal advice.