Petition for A Writ of Certiorari — Smith v. General Foundry Machine Co.

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No. 3 25, mn =

IN THE

| Supreme Court of the United States

| ae Ocrosper TERM, 1949

Forrest H. Smiru, et al.,

Petitioners,

vs.

GeneRAL Founpry Macurne Company,

INCORPORATED, et al.,

Respondents.

PETITION FOR WRIT OF CERTIORARI AND

BRIEF IN SUPPORT THEREOF

v

CiareNnce M. FisHeEr,

W. Brown Morton,

Counsel for Petitioners.

INDEX

PAGE

Petition for Writ of Certiorari:

Summary Statement of the Matter Involved .... 2

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Reasons for Granting the Writ ................ 9

Brief in Support of Petition for Writ of Certiorari:

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Cases CITED

Graver Tank & Mfg. Co., Inc. v. Linde Air Products

i ce cac ee cub acunckaan ass 5, 11

Frederick Hart & Co., Inc. v. Recordgraph Corpora-

viel 169 F. 2d 580, 581 (C. C. A. 3)

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IN THE

Supreme Court of the Ruited States

Ocrosper TERM, 1949

+

v

Forrest H. Smiru, et al.,

Petitioners,

vs.

GENERAL Founpry MacuIneE CoMPany,

INCORPORATED, et al.,

Respondents.

—*

v

PETITION FOR WRIT OF CERTIORARI

To THe Honorasite, THE CuHrer JUSTICE AND ASSOCIATE

JUSTICES OF THE SUPREME Court or THE UNITED

STATES:

Your petitioners, Forrest H. Smith, et al., pray that a

writ of certiorari issue to the United States Court of Ap-

peals for the Fourth Circuit to review the judgment of that

court in this cause filed May 6, 1949 (R. 143). <A petition

for rehearing was denied on June 13, 1949 (R. 149).

A certified transcript of the record in this case, includ-

ing the proceedings in the Court of Appeals, is furnished

herewith in compliance with Rule 38 of the Rules of this

Court.

Summary Statement of the Matter Involved

This action arose as an action by petitioners charging

respondents with infringement of claims 1, 2 and 3 of

petitioners’ patent No. 1,811,980, dated June 30, 1931, and

claim 3 of petitioners’ patent No. 2,051,348, dated August

18, 1936, relating to drying houses for curing tobacco.

Respondents, on the 2nd day of July, 1948 filed a motion

for summary judgment (R. 26) on the grounds that

the claims relied upon by respondents had not been in-

fringed by respondents. The question of the validity of

the claims was not raised by the motion.

The construction of respondents’ drying house alleged

to constitute the infringement was sufficiently disclosed

by the affidavits and accompanying photographs and prints

filed in connection with the motion.

Petitioners contended before the lower Court and also

before the Court of Appeals of the Fourth Circuit that

on a motion for summary judgment involving merely the

question of infringement and not the question of validity,

the sole question presented was whether or not the lan-

guage of the claims construed in accordance with the

plain import of their terms, so limited the claims as to

exclude respondents’ structure. In other words, that for

the purpose of the motion the claims must be considered

as valid and of a scope commensurate with their terms.

The lower Court granted the motion without opinion.

The Court of Appeals for the Fourth Circuit, although

finding that the combination of elements recited in the

claims relied upon was present in respondents’ drying

house, read into the claims certain additional limitations

from the specification, and when so construed found that

said claims were not infringed by the respondents’ struc-

ture.

_——

3

The drying house disclosed in the patents in suit con-

sists of a tobacco drying barn of ordinary construction

provided with so-called flues, also of ordinary construc-

tion, said flues coasisting of large sheet metal pipes placed

about the floor of the barn, usually around the walls, and

also across the middle of the barn and connected to a

common smoke stack on the outside of the barn. Prior

to the invention of the patents in suit it was the common

practice to connect the flues to a furnace which was in

almost every instance designed for burning wood (R.

42). By the petitioners’ invention it was proposed

to do away with the wood-burning furnace which was

usually installed in the wall of the barn to be fired from

the outside, and in lieu thereof to heat the flues by oil

burners placed in the barn beneath openings cut in the

bottom of the flues.

The patentee contended that by his improvement the

individual burners could be spaced about the barn floor

in such manner that the flues would be uniformly heated,

as distinguished from the prior installations wherein the

flues were heated to a higher temperature at one side of

the barn adjacent the furnace than prevailed in the flues

at their ends connected to the stack. The drawings of

the patents in suit disclosed fifteen burners distributed at

spaced intervals’ beneath the flues.

The patents in suit also describe and claim the novel

method of connecting the individual flues to the burners,

namely, by placing the individual burners under holes in

the bottoms of the flues whereby the hot gases generated

by the burners pass directly into the flues, and the flues,

which are interposed between the burners and the over-

hanging tobacco, protect the tobacco from the direct radia-

tion of heat from the burners.

Claim one of Patent No. 1,811,980 is typical of the

claims in suit.

an ai

4

**1. Ina drying house, the combination with a sub-

stantially horizontal flue, extending adjacent to and

inside of the walls of said house; of a plurality of

spaced openings in the bottom of said flue; a fluid

fuel burner positioned under each of said openings;

and means for supplying fluid fuel to said burners.”’

The respondents’ structure charged to infringe com-

prises the usual tobacco barn with the flues arranged

around the walls of the barn and also across the middle,

and with two burners within the barn each of which is

placed beneath a hole on the under side of a cast iron elbow

forming part of the flue system. The two burners are so

placed with respect to the outside flue connections that

each burner heats one half of the flues.

The Court of Appeals, in holding that the claims were

not infringed, held that the word ‘‘plurality’’, although

including two, should be read in connection with the draw-

ings which show fifteen burners because, according to the

Cireuit Court of Appeals, a greater number than two

burners were required to obtain the ‘‘prime purpose’’ of

petitioners’ invention, namely, the uniform distribution of

heat.

‘*We have seen that the prime purpose of the patent

was to do away with a central heating system, with

its loss of heat and lack of uniformity of temperature

in various parts of the drying house, and to sub-

stitute a plurality of individual heating units spaced

apart and variously located under the flue inside the

warehouse so that the heat would be evenly distrib-

uted and easily controlled throughout the building’’

(Opinion, p. 7, R. 1438).

Although the Court of Appeals of the Fourth Circuit

in its opinion stated that “‘there is no genuine issue as

to any material fact’’, its decision that the claim must

be construed by reading into it limitations from the speci-

5

fication is itself a decision on an issue of material fact

with respect to which petitioners have been denied the

opportunity to present evidence. In the case at bar the

Court has gone beyond the terms of the claim in an attempt

to construe the claim as commensurate with what the

Court, on the meager record before it, believes to be the

patentee’s invention.

The Court’s conclusion as to what constitutes the pat-

entee’s invention is a decision on ‘‘an issue of material

fact’’—usually the most important fact issue presented in

a patent case.

This Court has frequently ruled, that even upon a trial

on the merits, the specification of the patent is not to be

resorted to in construing the claims either to enlarge or

restrict their scope.

Graver Tank & Mfg. Co., Inc., v. Linde Air Prod-

ucts Co., 336 U. 8. 271, 276.

“The Court of Appeals considered that because there

was nothing in the record to show that the applicants

for the patent intended by these claims to assert a

monopoly broader than nine metallic silicates named in

the specifications, the court should have construed the

claims as thus narrowed and limited by the specifica-

tions.

The statute makes provision for specification sepa-

rately from the claims and requires that the latter

‘shall particularly point out and distinctly claim the

part, improvement, or combination which he claims as

his invention or discovery.’ R. S. § 4888, as amended,

35 U. S. C. §33. It would accomplish little to require

that claims be separately written if they are not to be

separately read. While vain repetition is no more to

be encouraged in patents than in other documents, and

claims like other statements may incorporate other

matter by reference, their text must be sufficient to

6

‘particularly point out and distinctly claim’ an iden-

tifiable invention or discovery.

We have frequently held that it is the claim which

measures the grant to the patentee. See, for example,

Mileor Steel Co. v. Fuller Co., 316 U. S. 148, 145 [53

USPQ 268, 269-270]; General Electric Co. v. Wabash

Co., 304 U.S. 364, 369 [37 USPQ 466, 468-469] ; Altoona

Theatres v. Tri-Ergon Corp., 294 U. S. 477, 487 (24

USPQ 308, 313]. While the cases more often have

dealt with efforts to resort to specifications to expand

claims, it is clear that the latter fail equally to per-

form their function as a measure of the grant when

they overclaim the invention. When they do so to

the point of invalidity and are free from ambiguity

which might justify resort to the specifications, we

agree with the District Court that they are not to be

saved because the latter are less inclusive. Cf. General

Electric Co. v. Wabash Co., 304 U. S. 364, 373-374 [37

USPQ 486, 470]; see McClain v. Ortmayer, 141 U. S.

419, 424-425; Cimiotti Unhairing Co. v. American Fur

Refining Co., 198 U. S. 399, 410.’

In granting the motion for summary judgment for non-

infringement on an interpretation of the claims not in ac-

cord with the meaning of their plain terms, the Court of

Appeals for the Fourth Circuit followed a practice con-

demned by this Court in Sartor v. Arkansas Natural Gas

Corporation, 321 U. S. 620, and directly in conflict with the

ruling of the Court of Appeals for the Third Circuit in

Frederick Hart & Co., Inc. v. Recordgraph Corporation,

169 F. 2d 580, 581 (C. C. A. 3):

‘‘We are of the opinion that the District Court

erred. It is well-settled that on motions to dismiss

and for summary judgment, affidavits filed in their

support may be considered for the purpose of a@scer-

taining whether an issue of fact is presented, but they

cannot be used as a basis for deciding the fact issue.

7

An affidavit cannot be treated, for purposes of the mo-

tion to dismiss, as proof contradictory to well-pleaded

facts in the complaint. Farrall v. District of Columbia,

“Amateur Athletic Union, 1946, 80 U.S. App. D. C. 396,

153 F. 2d 647; United States v. Association of Ameri-

ean Railroads, D. C. Neb. 1945, 4 F. R. D. 510; 2

Moore’s Federal Practice (2nd ed. 1948) pages 2254,

2255.

It is also well-settled that on a motion to dismiss

the complaint must be viewed in the light most favor-

able to the plaintiff and that the complaint should not

be dismissed unless it appears to a certainty that the

plaintiff would not be entitled to relief under any state

of facts which could be proved in support of his claim;

further, no matter how likely it may seem that the

pleader will be unable to prove his case, he is en-

titled, upon averring a claim, to an opportunity to try

to prove it.”’

When the Court of Appeals of the Fourth Cireuit con-

cluded that in order for the claims in suit to be commen-

surate with the patentee’s invention it was necessary to

read into them limitations from the specifications, the

Court of Appeals should have terminated its consideration

and denied the motion.

Hart v. Recordgraph, supra, (p. 583):

“The foregoing clearly establishes the existence of

a fact issue with respect to what was actually said

by Murray to Weber. It was at that point that the

District Court’s consideration should have terminated

and Recordgraph’s motion denied. Instead, the Dis-

trict Court proceeded to decide the fact issue and

thereby committed error under the applicable prin-

ciples of law stated earlier in this opinion. It is im-

material that it decided the fact issue in Record-

- graph’s favor—the point is that it went beyond its

8

province to resolve any fact issue on a motion to dis-

miss or for summary judgment. Cf. Sarnoff v. Ciaglia,,

3 Cir., 1947, 165 F. 2d, 167.”

Even if it be assumed that the specification of the patent

may properly be resorted to for limitations not expressed

in the claims, the Court of Appeals erred in limiting the

claims to include the elements which it believed to be neces-

sary for carrying out the ‘‘prime purpose’’ of the inven-

tion, as the claims themselves, without such limitation,

define a novel sub-combination, namely, the construction

and arrangement of the individual burners with respect to

the flues, which is useful whether or not sufficient burners

are employed to attain the prime purpose of the inven-

tion. It is the established rule of this Court that such

combinations are patentable, and as the question of valid-

ity was not before the Court the claims should have been

construed as defining a novel and patentable sub-combina-

tion which is incorporated in the respondents’ structure:

Jurisdiction

The jurisdiction of this Court is invoked under Sec.

240(a) of the Judicial Code as amended by the act of Feb-

ruary 13, 1925, ¢. 229 (28 U. S. Code, See. 347).

The judgment of the Court of Appeals for the Fourth

Cireuit which petitioners seek to have reviewed was en-

tered on May 6, 1949 (R. 148) and petition for rehearing

denied on June 13, 1949 (R. 149).

Question Presented

The question presented is whether a Court, on a motion

for summary judgment for non-infringement, may read

into the claims additional limitations from the specifica-

tions in an attempt to construe the claims as commensurate

with the invention.

9

Reasons for Granting the Writ

The question presented by this petition is a procedural

question with respect to which there is direct conflict be-

tween the decision here and the rule of the Circuit Court of

Appeals for the Third Cireuit in Hart v. Recordgraph,

supra. The question has not been decided by this Court,

but should be, as motions for swmmary judgment in patent

eases are frequently presented in an effort by a litigant to

save the cost of litigation which in patent cases is usually

burdensome. While it is highly desirable that unnecessary

litigation expense be avoided, the procedure should not be

earried so far as to deny litigants their day in Court.

WHEREFORE YOUR PETITIONERS respectfully pray that a

writ of certiorari be issued to the United States Court

of Appeals for the Fourth Cireuit to the end that this

cause may be reviewed and determined by this Court;

that the judgment of the Court of Appeals for the Fourth

Cireuit be reversed; and that petitioners be granted such

other and further relief as may be proper.

CLARENCE M. FsHER,

W. Brown Morton,

Counsel for Petitioners.

New York, September 8, 1949.

BRIEF IN SUPPORT OF PETITION FOR

WRIT OF CERTIORARI

Opinion of Courts Below

The decision of the District Court appears at page 51

of the Record and is not reported. The opinion of the

Court of Appeals for the Fourth Circuit appears at page

136 of the Record and is reported in 174 F. 2d 147.

Jurisdiction

The jurisdictional statement appears in the accompany-

ing petition.

Statement of the Case

The essential facts of the case are stated in the accom-

panying petition and need not be related here.

Specification of Errors

1. The Court of Appeals for the Fourth Cireuit erred

in reading into claims 1, 2 and 3 of Patent No. 1,811,980

limitations not expressed therein.

2. The Court of Appeals for the Fourth Circuit erred

in not holding that as the language of claims 1, 2 and 3

of Patent No. 1,811,980 did not clearly exclude the accused

structure, the question of infringement could not be de-

cided on motion for summary judgment.

3. The Court of Appeals for the Fourth Circuit erred

in not holding that as claims 1, 2 and 3 of Patent No.

1,811,980 define a useful sub-combination, they are infringed

10

11

by respondents’ structure, regardless of the number of

burners employed.

4. The Court of Appeals for the Fourth Cireuit erred

in not holding that claim 3 of Patent No. 2,051,348 covers

an improvement on the structure of the individual burners

as used in the combination covered by Patent No. 1,811,980

and that that modification is incorporated in respondents’

burners.

ARGUMENT

The practice of reading into the claims from the speci-

fication or elsewhere limitations not therein expressed is

so clearly contrary to the ruling of this Court in Graver,

et al. v. Linde, supra, that further argument is super-

fluous. The claims are not ambiguous. The patentee

obviously chose the word ‘‘plurality’’ to designate the

number of burners in order that the claims should not

be limited in that respect.

The question of infringement is a question of law for

the Court only when the claims are read as they should

be, in accordance with the principles laid down in the

ease of Graver, et al. v. Linde, supra.

The purpose of claims is to define the metes and

bounds of the grant. If the language of the claims clearly

excludes the respondents’ structure the issue of infringe-

ment may be disposed of by motion for summary judg-

ment. If the language of the claims does not explicitly

exclude respondents’ structure, then the motion should

be denied because any construction of a claim at variance

12

with its plain language involves the determination of

fact issues. In the case at bar the Court has attempted

to construe the claims not in accordance with their terms,

but in accordance with what the Court believes to be the

scope of the patentee’s invention.

The scope of a patentee’s invention is the fundamental

question presented in any infringement case, to determine

which it is necessary to determine the state of the art at

the time of the patentee’s invention and the nature and

extent of the departure from existing practice, by a com-

parison of the patented structure with the existing appa-

ratus. To make this comparison on the basis of excerpts

from file wrappers of abandoned applications* (Opinion,

R. 142) and from statements in the specification that

central heating furnaces are old (Opinion, R. 141)**

is directly contrary to the established principle that fact

issues are to be determined on the basis of evidence sub-

mitted to the jury or to the trial Judge, in cases where

a jury is waived or is not required.

The claims define a patentable sub-combination.

Special Equipment Company v. Coe, Com’r. Pats.,

324 U. 8. 370:

‘‘The statutes permit, and it is the settled practice

of the Patent Office, many times sustained by this

Court, to allow claims to a combination and also its

sub-combinations. Railroad Co. v. Dubois, 12 Wall.

47, 60; Deering v. Winona Harvester Works, supra;

* The matter quoted £¥ém the opinion relates to a different heat-

ing system wherein no flues are employed.

** Incidentally, it is plain from the context that by “central heat-

ing furnaces” the patentee meant a furnace to which all the flues

were connected, and not a furnace located centrally in the barn.

——————————

13

Leeds & Catlin v. Victor Talking Mach. Co., 213 U. S.

301, 318; Altoona Theatres v. Tri-Ergon Corp., 294

U. S. 477, 487 (24 USPQ 308, 313) ; Mercoid Corp. v.

Mid-Continent Co., supra, 667 (60 USPQ at 25).”’

Applying this rule to the claims of Patent No. 1,811,980

here in suit, if it be novel to combine oil burners with flues

by providing ‘spaced openings in the bottom of the flue’’

and positioning ‘‘a fluid fuel burner”’ ‘‘under each such

opening’’ the patentee is entitled to claims to that sub-

combination whether or not the number of burners em-

ployed is sufficient to provide the uniform heating of the

entire flue area required to carry out the principal object

of his invention.

As this case is before the court on a motion for sum-

mary judgment on the sole ground of non-infringement,

the novelty of the combination recited in the claims is not

here in issue.

That this arrangement has utility quite apart from

the number of burners employed is self evident. The

burner is placed directly on the ground so that the natural

air currents carry the heated products of combustion into

the overlying flue which protects the tobacco from direct

radiation from the burners.

IV

Patent No. 2,051,348 is for the most part directed to

a type of heating system for tobacco barns wherein

the flues are discarded altogether. However, it shows

in Figs. 15-18 a modification of the flue system form-

ing the subject-matter of the earlier patent. Claim 3

here in suit is directed to this improvement. The ar-

rangement of burners and flues in Patent No. 2,051,348

is precisely the same as in Patent No. 1,811,980, the im-

provement consisting in placing around each burner an

enclosure or so-called ‘‘boxing’’ to prevent any escape

14

of the products of combustion into the barn (Pat. p. 3, col.

1, ll. 73 et seg. R. 97). The Court of Appeals questioned

the applicability of this claim ‘‘taken literally’’ to the

respondents’ structure because in this claim the plu-

rality of burners are described as arranged in series, etc.,

the Court apparently regarding ‘‘series’’ as implying

more than two. Petitioners are not in accord with this

view, and if this petition be allowed, will argue that the

language of the claim, taken literally, does not exclude

from its scope the respondents’ structure.

Conclusion

By the granting of the motion for summary judgment

petitioners have been denied the opportunity of estab-

lishing by competent evidence the nature and scope of

their invention and its appropriation by respondents.

Where the claims are so limited as to plainly exclude the

respondents’ structure, respondents may not be called to

account, even though they have incorporated petitioners’

invention in their drying houses, and the dismissal of the

suit on motion would have been in order, but as the claims

are not so limited, the motion should have been denied and

the case remanded to the lower Court to try the fact issues

presented by the pleadings.

WuHereroreE, petitioners earnestly pray that this peti-

tion for writ of certiorari be granted, the cause reviewed,

and the decree of the Court of Appeals for the Fourth

Circuit reversed.

Respectfully submitted,

CLareNcE M. FIsHER,

W. Brown Morton,

Counsel for Petitioners.

Dated: New York, N. Y.,

September 8, 1949.

——s

we

sais