Opposition Brief — Remington Rand, Inc. v. Royal Typewriter Co.

INDEX

PAGE

The Court of Appeals, in Denying the Petition to

Reopen, Exercised a Sound Discretion and There-

fore Its Decision Presents Nothing Reviewable .. 2

Petitioner’s Contentions, Reached by Extension of

Certain Remarks Culled from Opinions of this

Court, are not in fact Supported Anywhere as a

Matter of Decision; Their Acceptance Would

Overturn the Law Established by Repeated De-

cisions of this Court and Would Establish an

Impracticable Precedent of Most Baneful Effect.. 4

The Questions Raised by Petition are not Presented

by the Case ........eeeee seen ee ee ees eceeeesees 6

Conclusion ..... cece ee eeceececeeeceeeeeseeaseees 9

TasBLE OF CASES

Agawam Co, v. Jordan, 7 Wall. 583 .......eeeeeeees 5

Bates v. Coe, 98 U. S. 31 .... eee eee eee ee eeeeereces 5

Blanchard v. Putnam, 8 Wall. BD vc ividanrndttantee 5

Boesch v. Griff, 183 U. S. 697 ..... eee eeeeeececees 3

Buffington v. Harvey, 95 i. % weerreeerer sy 3

Sosa we, Hesnten, Ob WBMES si cnoes ee ivese 5

Cantrell v. Wallick, 117 U. S. 689 ......-+-eeeeeeeee 5

Hazel-Atlas ete. Co. v. Hartford-Empire Co. (1944),

PAGE

Imhaeuser v. Buerk, 101 U. S. 647 ................. 5

Kennon v. Gilmer, 131 U. 8. 22 ..............00.... 3

Mitchell v. Tilghman, 19 Wall. 287 ................ 5

Mumm v. Decker & Sons, 301 U. S. 168 ............ 5

National ete. Co. v. Christensen (1921), 254 U.S. 425 9

Parks v. Booth, 102 U. 8. 96 ...............00.0... 5

Railway Co. v. Heck, 102 U. S. 120 ................ 3

Roemer v. Bernheim, 132 U. S. 108 ................ 3

Rubber Co. v. Goodyear, 9 Wall. 805 ................ 3

Seymour v. Osborne, 11 Wall. 516 ................ 5

Simmons Co. v. Grier ete. Ce, 208 U. B. 68 .......... 2

Steines v. Franklin County, 14 Wall. 15 .......... 3

Toledo Secale Co. v. Computing Scale Co., 261 U. §.

WF ASR Wh onSbades sh 0ethecdcesbalecdvenig ee 3,5

Wayne United Gas Co. v. Owens-Illinois Glass Co., 300

Wo PME WAbhN4sss chadwancows cecny caches 3

IN THE

Supreme Court of the Rnited States

Ocroser TERM, 1949

No. 289

"=

vv

Remincton Ranp Inc.,

Petitioner,

v.

Roya Typewriter Company, Inc.,

Respondent.

rx

ae

RESPONDENT’S BRIEF IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

This petition seeks a review by this Court of an order

of the Second Circuit Court of Appeals denying a petition

to reopen a patent case to raise the defense of invalidity

for lack of invention. The patent 1,961,905 to Woodfine,

issued on July 4, 1933, will expire on July 4, 1950. Or

May 21, 1948 (1st Rec., 256) the Court of Appeals affirmed

a judgment of the District Court of Connecticut holding

the patent infringed over a defense of non-infringement

based on alleged limitation of the claims by the prior art.

The petition to reopen was not filed until a year and

one month later, on June 22, 1949 (2d Ree., 1)*.

* This is the third application by petitioner seeking review in this

Court. A petition for certiorari seeking review of the Court of Ap-

peals decision affirming the District Court judgment was denied on

October 11, 1948, and a subsequent petition for rehearing was denied

The Court of Appeals, in denying the petition to reopen

exercised a sound discretion and therefore its decision

presents nothing reviewable

Since the judgment had been affirmed, the petition to

reopen was properly addressed to the appellate court in

the first instance. An application for leave to reopen ig

addressed to the sound discretion of the appellate court

and will be denied unless the petition, and the papers filed

in support of it, meet the requirements as to the materi-

ality of the new matter and as to diligence in its presenta-

tion.

In Hazel-Atlas etc. Co. v. Hartford-Empire Co. (1944),

322 U. S. 238, 248, this Court said:

“*The hearing conducted by the appellate court on the

petition * * * is not just a ceremonial gesture. The

petition must contain the necessary averments, sup-

ported by affidavits or other acceptable evidence ; and

the appellate court may in the exercise of a proper

discretion reject the petition * * *. National Brake

Co. v. Christensen, 254 U. S. 425, 430-433."":

In National etc. Co. v. Christensen (1921), 254 U. §,

425, 430, the Court said:

“‘Such applications are addressed to the sound disere-

tion of the appellate tribunal, and should be decided

upon considerations addressed to the materiality of

the new matter and diligence in its presentation.”’

The averments necessary on such a petition are

(1) That the petition has been filed promptly after the

discovery of the new evidence (Simmons Co. v. Grier etc.

Co., 258 U. S. 82, 91);

3

(2) That the failure to discover the evidence in time

for the trial was not due to a lack of diligence (Toledo

Scale Co. v. Computing Scale Co., 261 U. S. 399, 421) ; and

(3) That the character of the evidence is such that if

received it will affect the decree already rendered (Rubber

Co. v. Goodyear, 9 Wall. 805, 806).

The petition to reopen contained none of these essential!

averments and the affidavit in support of the petition

failed to make any showing with respect to these indis-

pensable prerequisites for a reopening. Indeed it appears

from an examination of the petition and supporting affi-

davit that all substantial items of the evidence sought to

be introduced by the reopening were not only available

at the time of the original trial but were introduced in

evidence and considered by the courts below. Under these

circumstances it can hardly be contended that the Court

of Appeals failed to exercise a sound discretion in con-

sidering and denying the petition for reopening. Indeed

the opinion by Judge Learned Hand (ist Rec., 256-7)

shows that the court gave careful consideration to the

propriety of accepting defendant’s (petitioner’s) conces-

sion of validity under the circumstances of this case and

in the light of this Court’s more recent pronouncements.

That being so, the order denying the petition to reopen

would not under the decisions of this Court be reviewable.

In Wayne United Gas Co. v. Owens-Illinois Glass Co.,

300 U. S. 131, 137, this Court said:

“The granting of a rehearing is within the court’s

sound discretion, and a refusal to entertain a motion

therefor, or the refusal of the motion, if entertained,

is not the subject of appeal.’”*

* See Steines v. Franklin County, 14 Wall. 15, 22; Buffington v.

Harvey, 95 U. S. 99, 100; Railway Co. v. Heck, 102 U. S. 120;

Kennon v. Gilmer, 131 U. S. 22, 24; Roemer v. Bernheim, 132 U. S.

103, 106; Boesch v. Graff, 133 U. S. 697, 699.

Petitioner’s contentions, reached by extension of certain

remarks culled ivom opinions of this Court, are not

in fact supported anywhere as a matter of decision;

their acceptance would overturn the law established

by repeated decisions of this Court and would estab.

lish an impracticable precedent of most baneful

effect

The burden of the present petition is that in patent

cases where the defendant does not challenge the validity

of the patent, the district court has the duty to and must

in all cases initiate an investigation into that question

either by appointing its own master or expert to conduct

the investigation or by calling in the law officers of the

United States, and that where the court fails to do so, the

defendant, however negligent, may nevertheless raise the

question of validity at any time because of the public

interest.

It may be conceded that the public interest in the patent

system is dominant and that as a result where defendant

challenges the validity of the claims as well as their in-

fringement, it is the better practice to pass on both issues;

that a court may act sua sponte to strike down a patent

that is invalid either on its face or on uncontrovertible

evidence in the record, and that where a sound defense

going to validity exists, public policy is promoted by the

making of the defense and contravened by defendant’s

refusal to make it.

It is a long step, however, from these propositions to

petitioner’s contention here. That contention in effect is

that even where the patent presents no evidence of in-

validity on its face and defendant, having presumably

determined in its best judgment that no good defense of

invalidity exists, concedes validity, the court cannot enter

a decree of infringement without first initiating an in-

vestigation to determine for itself whether there is any

defense. 2 |

5

The acceptance of this contention would in effect over-

rule a century of precedents of this Court. In Seymour

y. Osborne, 11 Wall. 516, 538, this Court said:

««* * * the law is well settled that the letters patent

in question, where they are introduced in evidence in

support of the claim, if they are in due form, afford

a prima facie presumption that the first-named allega-

tion [that the patentees are the original and first

inventors] is true, and the rule is equally well settled

that that presumption, in the absence of satisfactory

proof to the contrary, is sufficient to entitle the party

instituting the suit to recover for the alleged viola-

tion of the exclusive rights secured to him in the

letters patent.”’

Similar statements of the law appear in the following

Supreme Court cases: Agawam Co. v. Jordan, 7 Wall. 583,

596; Blanchard v. Putnam, 8 Wall. 420, 424-5; Mitchell v.

Tilghman, 19 Wall. 287, 390-1; Cammeyer v. Newton,

94 U. S. 225, 230-1; Bates v. Coe, 98 U. S. 31, 40; Imhaeuser

vy. Buerk, 101 U. S. 647, 662; Parks v. Booth, 102 U. S. 96,

99; Cantrell v. Wallick, 117 U. S. 689, 695; Mumm v.

Decker & Sons, 301 U. S. 168, 171.

It is also apparent on reflection that the rule for which

petitioner contends is an impracticable one. It would in-

deed make litigation in patent cases immortal while men

remain mortal, to invert Justice Story’s famous remark®*.

This fact is somewhat masked by petitioner’s reference

to the defense of invalidity in the singular. Actually, of

course, there are many defenses which may be raised to

a patent. Aside from novelty and invention, there are the

defenses of new matter, improper claiming, failure of

complete or adequate disclosure, lack of utility, public use,

or publication more than one year prior to the filing of

* See Toledo Co. v. Computing Co., 261 U. S. 399, 425.

“ae

6

the application, abandonment, delay in claiming, to men.

tion only a few. The logic behind petitioner’s contention

would require a court to reopen the case again and again

at any stage whenever defendant raises a defense of in.

validity not previously made in the case, regardless not

only of defendant’s negligence but of all considerations of

public policy that underlie the doctrines of laches, estoppel,

and res adjudicata.

If this Court wished to deal a death blow to the patent.

system, we can think of no expedient that would be more

effective than the adoption of petitioner’s contention,

Expensive as patent litigation is at present, the rule con-

tended for would place in the hands of defendant a means

of increasing the costs to a prohibitive degree”.

Indeed, even the expedient of having the court initiate

its own investigation where no issue as to validity is

raised by the parties would not guard against subsequent

reopenings, since, according to the rule advanced, it would

be the court’s duty to consider any defense subsequently

suggested by defendant which had not been considered by

the court on the investigation. Such a rule would lead

to chaos.

The questions raised by petition are not presented

by the case

The questions are predicated on the assumption that the

District Court had no adequate means to decide the issue

of validity (presumably here the question of invention)

(Petition, 1-2).

* The present case itself presents a premonitory sample of what

would follow. In a straightforward patent case, tried simply and

inexpensively (the record is unusual in its brevity), the affirmance

of the judgment is followed by three applications to this Court and

one to the Circuit Court of Appeals, all requiring the attention of

numerous counsel and adding greatly to the expense of the litigation.

a

7

While defendant did not press any invalidity defense in

the District Court, it did advance on the issue of infringe-

ment all of the pertinent prior patents to limit the scope

of the claims. These patents were discussed by defend-

ant’s expert and some of them by plaintiff’s expert (1st

Rec., 46-57; 60-64). The defense of non-infringement

based on limitation by the prior art can hardly be dis-

tinguished in anything more than legalistic fantasy from

the defense of invalidity, as the case demonstrated. The

prior art patents and their relation to or bearing on the

patent in suit were discussed both in argument and in the

priefs as fully as if the defense of invalidity were present.

The District Court considered and discussed the prior art

and held the patent valid in its light (1st Rec., Opinion,

934, f. 701, and 235; 241, f. 722, to 242, f. 725; Findings

of Fact, 244-245, F. 10-13; 246, F. 17-18).

The petition repeatedly refers to Judge Hand’s general-

ized statement that where validity is not questioned the

defendant ‘‘then puts in no evidence * * * and the court

has therefore no adequate means to decide the issue’’.

But the fact is that in its decision in this case the Court

of Appeals did take into consideration the prior art. In

the very next paragraph Judge Hand says:

‘‘Coming then to the question of infringement, we are

first to interpret the claims in the light of disclosure ;

and both the claims and the disclosure in the setting

of the prior art’’ (1st Rec., 257 ).

And in evaluating the nature of the patent’s contribution

in the light of the prior art, he said that the patented

device

‘‘did add a convenient novelty to the typewriter,

a machine on which a vast amount of ingenuity had

been expended, and which had for long offered a place

for just such an improvement. Moreover, although

the record amply proves that ‘margin stops’ them-

—_—

8

selves had received much attention and had been the

subject of a number of patents, nobody had ever be-

fore worked out their automatic return; and that was

a change which has proved of substantial service”

(ist Rec., 258; 168 F. (2) 691, 693).

The prior art now sought to be introduced by reopening

is set forth in the moving papers (2d Rec., pp. 3-42). It

adds nothing to the showing already considered by the

courts below. All of the patents of Group B (2d Rec., 3)

except the Dillon patent, were introduced into evidence at

the trial of the case. The Dillon patent is merely another

example of a type of device shown in a number of the

patents already in evidence and discussed by the trial

court in its Findings Nos. 11 and 12 (ist Rec., 245; see

also Opinion, p. 235, f. 704). The patents in Group A

with the exception of the Benzing patent, which is of later

date than the patent in suit, are stated to show in diverse

arts the use of a spring to cause quick automatic move.

ment of an element as a substitute for manual movement.

But the ordinary typewriter carriage—in this very art—

is an exemplification of this expedient, as the petition

recognizes (p. 11). So these spring patents add nothing

to the case that was not already before the court. They

are merely cumulative, and more remote than the evi-

dence at the trial.

We shall not burden the Court with a discussion of the

merits of the patent case. It is sufficient to point out that

the argument in the petition is based on an over-simplifica-

tion of the issues. Compare the definition of the inven-

tion on page 10 of the petition under the sub-heading

“‘Nature of the Alleged Invention’’ with the definition of

the invention by the District Court in Finding 13 (ist

Rec., 245; and see Opinion, 234-5; ff. 702-3) and compare

also with the statement made by the Court of Appeals in

the portion of its opinion quoted above (ante, pp. 7-8).

Conclusion

We respectfully submit the petition should be denied

because

(1) The Court of Appeals, in denying the petition to

reopen, exercised a sound discretion and therefore its de-

cision presents nothing reviewable.

(2) Petitioner’s contentions, reached by extension of

certain remarks culled from opinions of this Court, are

not in fact supported anywhere as a matter of decision;

their acceptance would overturn the law established by

repeated decisions of this Court and would establish an

impracticable precedent of most baneful effect.

(3) The questions raised by the petition are not in fact

presented by the case.

Respectfully submitted,

Wim H. Davis,

Grorce E. FalrHFvu..,

of Counsel.

Davis, Hoxie & FalTHFULL,

Attorneys for Respondent.

Dated, September 22, 1949.