Petition for Writ of Certiorari — Bernard Edward Co. v. Falkenberg

SEP 1 2 1948

FILE COPY

r “E

Supreme Court of the United States

Ocroser Term, 1949.

No. 331

BERNARD EDWARD CO.,

Petitioner,

VS.

DOUGLASS R. FALKENBERG,

Respondent.

PETITION FOR A WRIT OF CERTIORARI AND

BRIEF IN SUPPORT THEREOF.

+ Wn FREEMAN,

Counsel for Petitioner.

W. M. Van Scrver,

Of Counsel.

Chicago, Illinois,

THE GUNTHORP. WARREN PRINTING COMPANY, 210 WEST JACKSON, CHICAGO

INDEX.

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BRP RAVSSVSHPFARS FAO SE ODEO Eh4 SOS OES

Paw 3.88335 6 6 66 8:46:64 8 064646 8 6 OS

Second Question—Contributory Infringement

Third Question—‘‘Cuno”’ Doctrine

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

Conflict With Applicable Decisions of This

a

Conflict With Decisions of Other Courts of

ANGERS SESE NESE GAIN EOR pi ac aa ere

Important Federal Question Which Has Not

Been Decided by This Court

Conclusion

Aer PRMOVASSARSARARCSAECS AES D 44 O05 OOD

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Brief in Support of Petition for Writ of Certiorari.. :

Opinions of the Courts Below

Specification of Errors

Summary of Argument

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SSBeeeseesd es ene e008 0606 86

te te ee ee oe ne

First .Juestion—Misuse and Unclean Hands

DESO aerate bt eet

Each Patent Claim is a Separate Monopoly. .

The ‘‘Mercoid’’ Doctrine

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Second Question—Contributory Infringement. ...

Third Question—The Court Below Rejected This

Court’s ‘‘Cuno”’ Decision

Conclusion

inka t tt ot es be Lone eS Oe

to? ne PASSER RAEERAARACR ENO KOS OO

TaBLe oF AuTHorities CIrTep.

The Alemite Company v. Jiffy Lubricator Company,

(C. A. 8th Decided August 17, 1949. Cases Nos,

13,835 and 13,840—not yet reported)............., 8, 3

American Lecithin Co. v. Warfield Co., 105 F. (2d)

eg SO Ph nc dbicanavccnssan@cedbscusk

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

Carbice Corporation of America v. American Patents

Development Corporation, et al., 283 U. S. 420,

CD 5 Ge cL on EU hie hE cect 1

Chicago Pneumatic Tool Co., et al. v. Hughes Tool Co.,

61 F. Supp. 767, (D. C. Del., 1945)................ 35

Conmar Products Corporation v. Tibony, 63 F. Supp.

ee Ms Ws Oe ee Is Ms BOs ons cht ccac cs censsavec 3

Cuno Engineering Corp. v. Automatic Devices Corp.,

se |e Se) | errr 2, 3, 5, 6, 12, 37,3

Detroit Lubricator Co. v. Toussaint, 57 F. Supp. 837,

ic a ck aan eth eekacwbakun cack 3

Ethyl Gasoline Corporation, et al. v. United States,

ee. a Oy Ce wide cide Vea is acne 18, 19

Exhibit Supply Co. v. Ace Patents Corporation, 315

se I nS 5. cs a's ee ei a eecnennie 7, 32

Feinstein v. I. T. 8. Co., 68 F. Supp. 15, (D. C. N. D.

PAIN SNS abs bac on pee Uke oe damned bdw ays 3)

Florence-Mayo Nuway Co. v. Hardy, et al., 168 F. (2d)

Cam ane Mn. OR, BOOB) 0c hs h SSdiadi. cn 3

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

169 F. (2d) 72, (C. A. 3d, 1948) ; cert. den. 69 S. Ct.

BEE it ha hicks Ch ipa bil sawn tn ntllhamenmened) cys 8, 2

Girdler Corporation v. E. I. DuPont de Nemours &

Co., 56 F. Supp. 871, (D. C. Del., 1944) ............

iii

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

ge wee Re eg) ) re 38

International Salt Co., Inc. v. United States, 332 U. S.

SE ioc ee ine haa pki kabea dp cep cowed s 6, 7, 15

Johnston v. Atlas Mineral Products Co. of Pennsyl-

vania, 140 F. (2d) 282, (C. A. 6th, 1944).......... 35

Keystone Driller Co. v. General Excavator Co., 290

Fe 8 Se ee 4, 6, 14, 24, 25

Landis Machinery Co. v. Chaso Tool Co., Inc., 141 F.

(2d) 800, (C. A. 6th, 1942) ; cert. den. 323 U.S. 720.. 35

Leitch Mfg. Co., Inc. v. Barber Co., Inc., 302 U. S. 458,

ERTS ASN ESSE a ah eS ey Sang a ee de ae he 7

Lempco Products, Inc., et al. v. Simmons, 140 F. (2d)

UM POND s 6 x ccainsndatetcdiUirviecd bi. 35

Mandel Brothers, Inc. v. Wallace, 335 U. S. 291, (1948) 6

Mercoid Corporation v. Mid-Continent Inv. Co., et al.,

See ars oy Wek, CIDER)... oc cee aes 4, 5, 6, 7, 14, 15, 33, 36

Mercoid Corporation v. Minneapolis-Honeywell Regu-

lator Co., 320 U. S. 680, (1944)....................

pA e ENA KWeseestcnesasn 4, 5, 7, 14, 15, 16, 17, 20, 21, 22

Morton Salt Co. v. G. S. Suppiger Co., 314 U. S. 488,

SUE RRL en. Sip ch Kk Kass dae ccek ices ens 6, 28

Oil Shares Incorporated v. Commercial Trust Company

of New Jersey, et al., 304 U. S. 551, (1938)......... 3

Philad Co. v. Lechler Laboratories, Inc., 107 F. (2d)

a i ARERR Ara cee 8, 18

Precision Instrument Mfg. Co., et al. v. Automotive

Maintenance Machinery Co., 324 U. S. 806, (1945)..

RNAS EC SHOR eNO Aan bud ude bea SOL vedo ca uh ck 4, 6, 14, 27

: Public Service Commission of Wisconsin, et al. v. Wis-

/ consin Telephone Co., 289 U. S. 67, (1933)......... 3

‘Sanitary Dist. of Chicago v. Activated Sludge, Inc.,

et al., 90 F. (2d) 727, (C. A. 7th, 1937); cert. den.

Pig Sy aes bude bic adddes saa Kae cs 18

—

iv

Special Equipment Co. v. Coe, 324 U. S. 370, (1945)... 3

Stroco Products, Inc. v. Mullenbach, et al., 67 U. §,

P. Q. 168, (D. C. S. D. Calif., 1944).........0...... 36

Sunlite Mfg. Co. v. Clarvan Corporation, 73 F. Supp.

O08, {2. ©. BD. Wiss., 1947)... 2.5. ee 35, 36

Sylvania Industrial Corporation v. Visking Corpora-

tion, 132 F. (2d) 947, (C. A. 4th, 1943)......... 7, 14, %

Sratutes Crrep.

Rule 52(a), Rules of Civil Procedure................ 3

Title 28, U. S. Code, Sec. 1254(1)...........0.000.... 4

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IN THE

Supreme Court of the United States

Octoser Term, 1949.

Ee

BERNARD EDWARD CO.,

Petitioner,

vs.

DOUGLASS R. FALKENBERG,

Respondent.

PETITION FOR A WRIT OF CERTIORARI.

To the Honorable, the Chief Justice and Associate Justices

of the Supreme Court of the United States:

Your Petitioner, Bernard Edward Co., of Chicago, Illi-

nois, respectfully prays for a writ of certiorari to the

United States Court of Appeals for the Seventh Circuit,

to review the judgment entered by that Court, June 21,

1949 (R. 153 to 160), reported at 175 F. (2d) 427, re-

versing the judgment of the District Court for the North-

ern District of Illinois, Southern Division, reported at 79

F. Supp. 417 (R. 107 to 109), in which the District Court

adjudged that Claims 14 and 15 of the United States Let-

ters Patent No. 2,409,425, issued to Respondent, Douglass

R. Falkenberg, on October 15, 1946 (R. 119 to 127), were

invalid.

A certified transcript of the Record in this case is fur-

nished herewith, in accordance with Rule 38 of the Rules

of this Court.

2

Summary Statement of Matters Involved.

This is a suit brought by Respondent, FaLKEenseErs, for a

decree adjudging that Claims 14 and 15 of Falkenberg

Patent No. 2,409,425 (R. 119 to 127) are valid and Peti.

tioner has infringed and contributed to the infringement

thereof.

The Falkenberg patent in suit relates to a hanger for

drapery materials for obtaining a decorative effect in the

home (R. 125).

Claim 14 covers a single hanger (mounting). Claim 15,

however, covers a pair of hangers (mountings) in combi-

nation with a support and, as far as that claim is con-

cerned, the hanger is an unpatented part. Both Petitioner

and Respondent manufacture and sell only hangers and

do not manufacture or sell a support, which is the window

frame. If Claim 15 may be read on Petitioner’s struc-

ture, Petitioner can be only a contributory infringer, as

recognized by Respondent’s Complaint (R. 3).

The question of misuse of the patent was presented to

the District Court in Petitioner’s Brief, but that Court in

its decision (R. 107 to 109) passed only on the question

of validity. The District Court decided that the claims

were invalid because they did not arise to the dignity of

invention in accordance with the standards laid down in

the case of

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U. S. 84, (1941).

There was no holding in the District Court that the claims

in issue were infringed. There was a holding that the

commercial devices were similar. Respondent then ap-

pealed.

The Court of Appeals for the Seventh Circuit passed on

all of the defenses raised.

The Court of Appeals held that the claims were valid

Re Cv Wie ERS

a CS RIT oO

se

3

and reversed the District Court. The District Court stated

that as a result of the decision in

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U. S. 84, (1941),

something additional had been added by the Supreme Court

to the tests for invention, but the Court of Appeals re-

jected that reasoning. Petitioner urged that regardless of

the tests used, that is, the tests of the Supreme Court

cases, or the tests of later cases by the Court of Appeals

for the Seventh Circuit, still the subject matter of the

claims in issue did not amount to invention.

It is particularly of note that the Court of Appeals in-

dependently decided (R. 160) that the claims in suit were

infringed, even though the Petitioner can only be guilty

of contributory infringement of Claim 15, and even though

the District Court made no finding of fact or conclusion

of law with respect to infringement. This is contrary to

Rule 52(a) of the Rules of Civil Procedure. There was

also no assignment of error with respect to that question

by Respondent. Such practice as to findings of fact and

conclusions of law has been condemned many times by this

Court, for example in

Public Service Commission of Wisconsin, et al. v.

Wisconsin Telephone Co., 289 U. S. 67, (1933) ;

Ou Shares Incorporated v. Commercial Trust Com-

pany of New Jersey, et al., 304 U. 8. 551, (1938).

The Court of Appeals decided that the claims in suit

were not invalidated by any of the patents cited by Peti-

tioner.

The Court of Appeals held that there was no misuse of

the patent in suit.

The Court of Appeals decided that there was no file

wrapper estoppel as to the claims in suit.

Judgment, therefore, was for Respondent.

4

Jurisdiction.

The jurisdiction of this Court is invoked under Sec-

tion 1254 (1) of the Judicial Code of September 1, 1948

(Title 28, U. S. Code) and under the Anti-Trust Laws,

Title 15, U. S. Code, Section 15.

Questions Presented.

I. First Question—Misuse.

1. Under the decisions of this Court in

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U. S. 661, (1944) ;

Mevcoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U.S. 680, (1944) ;

Keystone Driller Co. v. General Excavator Co.,

290 U. 8. 240, (1933),

are the Anti-Trust Laws violated per se when a patentee

uses one combination claim in a patent to control and pro-

tect his business in something less than the complete claim

of the patent (in other words, in an ‘‘unpatented part’’),

in view of the fact that the same patent contains a claim

which is for the part alone?

2. In a suit involving two claims of a patent, where

one claim is misused (to protect the sale of an unpatented

part insofar as that misused claim is concerned), does

such misuse amount to unclean hands to preclude relief as

to the other claim, in view of the decisions by this Court in

Keystone Driller Co. v. General Excavator Co.,

290 U. 8. 240, (1933) ;

Precision Instrument Mfg. Co., et al. v. Automo-

tive Maintenance Machinery Co., 324 U. S. 806,

(1945) ?

5

II. Seconp Question—ConrTnisutTory INFRINGEMENT.

Does the Doctrine of Contributory Infringement extend

to a situation where Petitioner is now precluded from

manufacturing and selling a drapery hanger of an expired

patent, when the infringement is brought a. ut by the

user of the hanger placing it at an angle on a window

frame instead of horizontally on a window frame, as is

shown in the expired patent?

III. Tarp Question—‘‘Cuno’’ Docrraine.

In view of the many decisions of this Court defining in-

vention, including the case of

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U. S. 84, (1941),

which the Court of Appeals said ‘‘we reject,’’ but which

the District Court followed, do the claims of the Falken-

berg patent in issue arise to the dignity of invention?

Reasons for Granting the Writ.

The discretionary power of this Court to grant a writ

of certiorari is invoked upon the following grounds:

1. Conflict with applicable decisions of this Court.

a. The decision of the Court of Appeals in failing to

hold that Claim 15 of the patent in suit is not enforceable

because of misuse due to violation of the Anti-Trust Laws

(using a combination claim to protect the patentee in sale

of something less than the full claim of the patent) is in

direct conflict with the decisions of this Court in

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, (1944);

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U. S. 661, (1944) ;

B. B. Chemical Co. v. Ellis, et al., 314 U. 8. 495,

(1942) ;

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

488, (1942) ; |

International Salt Co., Inc v. United States, 330 |

U. S. 392, (1947).

b. The decision of the Court of Appeals in failing to |

hold that both Claims 14 and 15 of the patent in suit are |

not enforceable because of unclean hands with respect to

Claim 15 is in direct conflict with the decisions of this |

Court in

Keystone Driller Co. v. General Excavator Co,

290 U.S. 240, (1933) ; |

Precision Instrument Mfg. Co., et al. v. Automo- |

tive Maintenance Machinery Co., 324 U. S. 806,

(1945).

ce. The decision of the Court of Appeals in reversing |

the District Court’s decision of invalidity is in direct con |

flict with and, in fact, rejects the decision of this Court |

relating to the ‘‘flash of creative genius’ test for inven- }

tion in

Cuno Engineering Corp. v. Automatic Devices |

Corp., 314 U. S. 84, (1941),

and also is in conflict with

Mandel Brothers, Inc. v. Wallace, 335 U. 8. 291,

(1948).

d. The Court of Appeals, in holding that the acts of [

Respondent, in prohibiting the purchase from competitors

of an unpatented part, do not violate the Anti-Trust Laws,

is in conflict with the judgments of this Court in

Mercoid Corporation v. Mid-Continent Inv. Co,

et al., 320 U. S. 661, (1944) ;

7

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, (1944) ;

International Salt Co., Inc. v. United States, 332

U. S. 392, (1947).

e. The Court of Appeals for the Seventh Circuit, in

holding infringement by Petitioner, which at best could

have been only contributory infringement, did not follow

this Court’s decisions in

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U. S. 661, (1944) ;

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, (1944) ;

Carbice Corporation of America v. American Pat-

enis Development Corporation, et al., 283 U. S.

27, (1931) ;

Leitch Mfg. Co., Inc. v. Barber Co., Inc., 302 U.S.

458, (1938).

f. The Court of Appeals, in holding the claims in is-

sue infringed, is in conflict with the decision of this Court in

Exhibit Supply Co. v. Ace Patents Corporation,

315 U. S. 126, (1942).

2. Conflict with Decisions of Other Courts of Appeals.

a. The decision of the Court of Appeals, in failing to

hold that both Claims 14 and 15 of the patent in suit are

not enforceable because of unclean hands and misuse with

respect to Claim 15, forbidden by the Anti-Trust Laws,

is in direct conflict with the decision of the Court of Ap-

peals for the Fourth Circuit in

Sylvania Industrial Corporation v. Visking Cor-

poration, 132 F. (2d) 947, (C. A. 4th, 1943).

b. The Court of Appeals for the Seventh Circuit, in

not holding that Respondent’s method of doing business

8

precludes the relief sought, is in conflict with the judg.

ments of the Court of Appeals for the Second, Third and

Seventh Circuits in the cases of

Philad Co. v. Lechler Laboratories, Inc., 107 F.

(2d) 747, (C. A. 2d, 1939) ;

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

Co., 169 F. (2d) 72, (C. A. 3rd, 1948) ;

American Lecithin Co. v. Warfield Co., 105 F. (2d)

207, (C. A. 7th, 1939).

ce. The Court of Appeals, in holding the claims of the

Falkenberg patent in suit valid and in rejecting the Cuno

Doctrine, is in direct conflict with the judgment of the

Court of Appeals in the Eighth Circuit in the case of

The Alemite Company v. Jiffy Lubricator Com-

pany, Decided August 17, 1949, Case Nos. 13,835

and 13,840 (Not yet reported).

3. Important Federal Question Which Has Not Been

Decided by This Court.

This Court has never passed on the question of a pat-

entee having one claim of a patent which is misused to ex-

tend the monopoly of the patent and the effect thereof on

the enforcement of the remaining claims of the patent. This

question involves more than the rights of the Petitioner and

Respondent—it involves the public at large. The public

at large is entitled to be free of illegal extension of pat-

ent monopoly with respect to patents having claims there-

in, some of which, under the decisions of this Court, are not

enforceable and others of which, if valid, might be enforced

if standing alone. Many existing patents are in that cate-

gory.

Conclusion.

Questions raised by this Petition are important ques-

tions in the administration of the Patent Law, particularly

with respect to misuse, contributory infringement and the

proper tests for invention. It is respectfully submitted,

therefore, that this Petition be granted and a writ of cer-

tiorari be issued to the Court of Appeals for the Seventh

Circuit.

Wit FREeMan,

Counsel for Petitioner.

W. M. Van Scrver,

Of Counsel.

Chicago, Illinois,

September 7, 1949.

ie at aban DIS eo lc NOI a a i 0s thn, 5 Aa A OAR CTA ae CL ba kta bE

IN THE

Supreme Court of the United States

Ooroser Term, 1949.

SOO Si icieli

BERNARD EDWARD CO.,

Petitioner,

vs.

DOUGLASS R. FALKENBERG,

Respondent.

BRIEF IN SUPPORT OF PETITION FOR A WRIT OF

CERTIORARI.

Opinions of the Courts Below.

The Memorandum, Findings of Fact, Conclusions of

Law and Judgment of the District Court for the Northern

District of Illinois, Eastern Division, appear in the Rec-

ord at pages 107 and 109, inclusive, reported at 79 F. Supp.

417.

The opinion of the Court of Appeals for the Seventh

Circuit was filed June 21, 1949 and appears in the Record

at pages 153 to 160, inclusive. It is reported at 175 F.

(2d) 427.

12

Specification of Errors.

The errors which the Petitioner will urge if the writ of

certiorari is issued are that the Court of Appeals for the

Seventh Circuit erred:

1. In holding that the Falkenberg patent No. 2,409,425

(R. 119 to 127) is not being misused and that there is no

violation of the Anti-Trust Laws.

2. In not holding that the owner of a patent having a

combination claim therein who does not make, use, sell or

install the complete combination, but who makes and sells

hangers for use in the combination and requires the pur-

chase from it of hangers not covered by the combination

claim, as a condition for obtaining freedom from a possible

suit for infringement, is making improper use of the pat-

ent and is attempting to create a monopoly in an unpat-

ented device.

3. In holding that the manufacture and sale of a hanger

not covered by combination Claim 15, for use in complet-

ing the combination, contributes to the infringement of the

patent.

4. In rejecting the decision of this Court in

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U.S. 84, (1941),

and thus holding the claims in issue valid.

5. In holding that the claims in issue are valid and pat-

entable over the prior art.

6. In holding that the claims in issue are infringed by

the manufacture and sale of hangers by the Petitioner.

13

Summary of Argument.

The Summary of Argument re-states the reasons relied

upon for the allowance of the writ of certiorari (pp. 5 to

8, supra).

First Question.

Misuse and Unclean Hands.

In GENERAL.

Claims 14 and 15* of the Falkenberg Patent No. 2,409,-

425 (R. 119 to 127) were the only claims placed in issue

by Respondent (R. 15). Claim 15 is a combination claim

and includes matter other than the hanger—it includes ‘‘a

support,’’ which is the window frame (R. 61). Claim 14

is a claim on the mounting or hanger per se. Hence the

charge in Respondent’s complaint of infringement and

contributory infringement (R. 3).

Respondent, FaLkensera, has granted an exclusive sales

distributorship for brackets or hangers to the Kirsh Com-

pany (R. 43). As recognized by the court below in its de-

cision (R. 159), neither Petitioner, Respondent, nor the

Kirsh Company manufacture or sell window frames or

*14. A mounting forming one of a plurality of similar hangers

for the decorative hanging of draperies, comprising a body having

a succession of spaced slots intersecting the periphery thereof and

forming passages for successively folded portions of the drapery

material, the body being further formed with chambers which are

continuations of the respective slots and provide for adjustable

take-up of the drapery material, the body being formed with an

extension serving to support the material exteriorly of the body

proper.

*15. In drapery mountings, the combination with a support, of

a pair of hangers secured to the support and inclined toward each

other, the hangers being formed with chambers having spaced

open-ended entrances for the sliding passage into the chambers

of folded drapery material whereby there is provided by the cham-

bers a flexible accommodation for material to facilitate selective

decorative dependent draping of the material from the hangers.

14

anything which corresponds to the portion of the claim

termed ‘‘a support.’’ Neither Petitioner, Respondent or

Kirsh Company incline the hangers at an angle or insert

the drapery material, as called for by Claim 15.

The fact that the Respondent utilizes combination Claim

15 to control his business in hangers per se and has

granted an exclusive sales distributorship to the Kirsh

Company for the sale of such hangers (R. 43) amounts to

an illegal extension of the patent monopoly and thus Re-

spondent’s conduct is measured by the Anti-Trust Laws

(Title 15, U. S. C., Sections 1 and 14) and not the Patent

Laws. Respondent’s conduct, which is in violation of the

Anti-Trust Laws, amounts to unclean hands rendering the

patent unenforceable in its entirety. This is the holding

in the cases by this Court of

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U.S. 661, (1944),

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U.S. 680, (1944).

It is contended by Petitioner that if one part of the

patent is misused the entire patent is unenforceable, in

view of the decisions of this Court in

Keystone Driller Co. v. General Excavator Co,

290 U.S. 240, (1933),

Precision Instrument Mfg. Co., et al. v. Automo-

tive Maintenance Machinery Co., 324 U.S. 806,

(1945),

and that the decision by the Court below is in direct con-

flict with those decisions.

The Court of Appeals for the Fourth Circuit applied

this Court’s ruling in a patent misuse case; namely, in

Sylvania Industrial Corporation v. Visking Cor-

poration, 132 F. (2d) 947, (C.A. 4th, 1943).

15

and the decision of the Court below is in direct conflict

with that decision.

Petitioner contends Claim 15 is misused and thus the

Fourth Circuit has ruled one way in a patent misuse

case and the Seventh Circuit has applied a different rul-

ing, the ruling of the Seventh Circuit being also in con-

flict with a ruling of this Court.

In its decision, the Court of Appeals for the Seventh

Circuit stated (R. 160):

«# * * The defense of misuse is not sustained

because no evidence was presented to prove plaintiff

used his patent to secure a monopoly beyond the scope

of his grant. * * *”

However, this Court, in the case of

International Salt Co., Inc. v. United States, 332

U. S. 392, 396, (1947),

stated as follows:

“7 * * Not only is price-fixing unreasonable,

per se, * * * but also it is unreasonable, per se,

to foreclose competitors from any substantial mar-

ket. ° * #9)

It follows that, when Respondent uses the patent to

prevent Kirsh Company from buying the unpatented (in-

sofar as Claim 15 is concerned) hangers from Petitioner

or others, it is per se a violation of the Anti-Trust laws

and no further proof is necessary for a Court to reach

that conclusion. The Court of Appeals disregarded this

situation.

The law with respect to misuse of a patent containing

a combination claim is summed up by the following deci-

sions of this Court:

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U.S. 680, (1944),

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U.S. 661, 668, (1944).

16

In the latter case, the Supreme Court stated:

‘co * 6 6*©6) ©The rule of the Leeds & Catlin Case

(No. 2) accordingly must no longer prevail against

the defense that a combination patent is being used

to protect an unpatented part from competition. That

result obtains here though we assume for the pur-

poses of this case that Mercoid was a contributory

infringer and that respondents could have enjoined

the infringement had they not misused the patent for

the purpose of monopolizing unpatented material.

Inasmuch as their misuse of the patent would have

precluded them from enjoining a direct infringement

(Morton Salt Co. v. G. 8. Suppiger Co., supra), they

cannot stand in any better position with respect to a

contributory infringer. * * *’? (Emphasis ours

throughout.)

Again, in the case of

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U.S. 680, 684, (1944),

the Court stated:

‘“* * * For as we pointed out in Mercoid v.

Mid-Continent Investment Co., supra, a patent on a

combination is a patent on the assembled or func-

tioning whole, not on the separate parts. The legal-

ity of any attempt to bring unpatented goods within

the protection of the patent is measured by the anti-

trust laws not by the patent law. * * *”

The unpatented part insofar as Claim 15 is concerned is

the bracket or hanger per se. The Court of Appeals ap-

parently did not understand this to be the case, because

in the opinion (R. 159-160), the Court stated:

“*Tt is difficult to follow defendant’s reasoning. At

one point it seems to refer to the window frame as

the unpatented part, but later the bracket is specifically

mentioned under that category. However, the bracket

referred to in Claim 15 is a patented article. * * *”

17

It is urged that the Court of Appeals misunderstood

because, insofar as Claim 15 is concerned, it is clear that

the bracket is not a patented article.

This Court, in speaking of controlling the business or

sale of unpatented parts, has referred to such parts as

‘‘ynpatented’’ because they are outside of the monopoly

granted by the combination claim or claims of the patent

involved, even though that part is an element of the com-

bination. This Court said in the case of

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U.S. 680, 684, (1944),

‘“The fact that an unpatented part of a combination

patent may distinguish the invention does not draw to

it the privileges of a patent. That may be done only

in the manner provided by law. However worthy it

may be, however essential to the patent, an unpatented

part of a combination patent is no more entitled to

monopolistic protection than any other unpatented

device. For as we pointed out in Mercoid v. Mid-

Continent Investment Co., supra, a patent on a com-

bination is a patent on the assembled or functioning

whole, not on the separate parts. The legality of

any attempt to bring unpatented goods within the

protection of the patent is measured by the anti-trust

laws not by the patent law. For the reasons stated

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

the effort here made to control competition in this

unpatented device plainly violates the anti-trust laws,

even apart from the price-fixing provisions of the

license agreements. It follows that petitioner is en-

titled to be relieved against the consequences of those

acts. It likewise follows that respondent may not ob-

tain from a court of equity any decree which directly

or indirectly helps it to subvert the public policy

which underlies the grant of its patent. Morton Salt

Co. v. G. S. Suppiger Co., 314 U. S. 488, 494, 62 S. Ct.

402, 406, 86 L. Ed. 363; B. B. Chemical Co. v. Ellis,

314 U. S. 495, 62 S. Ct. 406, 86 L. Ed. 367.* * *”’

18

Whether or not the part is the subject of another patent

monopoly makes no difference insofar as misuse is con-

cerned.

The case of

Ethyl Gasoline Corporation v. United States, 309

U. S. 436, 459, (1940),

is to that effect.

In the case of

Philad Co. v. Lechler Laberatories, Inc., 107 F.

(2d) 747, (C. A. 2d, 1939),

it was specifically held that the ‘‘unpatented’’ part need

not be a staple article.

Eaca Patent Ciam Is a Separate MoNnopocy.

The Courts have held in many cases that each claim

of a patent is a separate monopoly and that each claim

must be separately considered as though it were in a sep-

arate patent in determining the questions of infringement

and validity. The same should be true in determining the

question of misuse. In the case of

Sanitary Dist. of Chicago v. Activated Sludge,

Inc., et al., 90 F. (2d) 727, 730, (C.A. 7th, 1937) ;

cert. den. 302 U.S. 736,

the Court held:

‘‘Appellant with considerable emphasis challenges

the correctness of our opinion in the first Milwaukee

ease. This contention is based on the ruling in Al-

toona Theatres v. American Tri-Ergon Corporation,

294 U.S. 477, 55 S. Ct. 455, 79 L. Ed. 1005, wherein

the well known rule is reiterated that each claim of a

patent constitutes a separate grant of monopoly, and

each must be considered by itself both with respect

to validity and infringement. This, appellant says,

we did not do, but that on the contrary we treated all

19

the claims of all the patents, both process and ap-

paratus, as constituting one method patent. We had

no intention of doing so, and we think we did not,

* « *

One patent monopoly may not be exploited to enlarge a

second patent monopoly. This Court held in the case of

Ethyl Gasoline Corporation, et al. v. United

States, 309 U.S. 436, 459, (1940),

«* * * he licensing conditions are thus not

used as a means of stimulating the commercial de-

velopment and financial returns of the patented in-

vention which is licensed, but for the commercial de-

velopment of the business of the refiners and the ex-

ploitation of a second patent monopoly not embraced

in the first. The patent monopoly of one invention

may no more be enlarged for the exploitation of a

monopoly of another, see Standard Sanitary Mfg. Co.

v. United States, supra, than for the exploitation of

an unpatented article, United Shoe Machinery Co. v.

United States, supra; Carbice Corporation v. Amer-

ican Patents Corporation, supra; Leitch Manufactur-

ing Co. v. Barber Co., supra; American Lecithin Co.

v. Warfield Co., 7 Cir., 105 F. 2d 207, or for the ezx-

ploitation or promotion of a business not embraced

within the patent. Interstate Circuit, Inc. v. United

States, supra, 306 U. S. at pages 228-230, 59 S. Ct. at

pages 475, 476; 83 L. Ed. 610. * °* °”

The above cases are clear authority for the proposition;

first, that each claim of the patent must be considered as a

separate patent monopoly; and second, a patent monopoly

of one invention may not be enlarged for the exploitation

of a patent monopoly of another invention. Each is a

separate patent monopoly or invention.

Respondent, Fatxenserc, (R. 43) testified that he man-

ufactures the brackets and that Kirsh is the ‘‘exclusive

distributor’? (R. 43). Kirsh, the exclusive distributor,

20

has an exclusive right to sell the patented article. Such

a right is the same as an exclusive license to sell and pre-

cludes Respondent from selling the bracket to others. The

suit brought by Respondent against Petitioner is solely

for the purpose of protecting Respondent and Kirsh’s

exclusive selling rights under a patent containing Claim

15 which, if it were not for Respondent’s misuse, might

make Petitioner a contributory infringer if, under the

Mercoid Doctrine, there still is such a thing as contributory

infringement. Since Claim 15 is misused, Claim 14 must

receive the same fate in accordance with the equitable

maxim of unclean hands.

Tue ‘‘Mercorp’’ Doctrine.

The decision of this Court in the case of

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, 683, (1944),

may be paraphrased to fit exactly into the facts of Re-

spondent’s conduct herein with respect to Claim 15, as

follows:

‘‘Neither the petitioner (Bernard Edward) nor the

respondent (Falkenberg) sells or installs the Freeman

(Falkenberg) system in furnaces (on window frames);

that is to say, they do not practice the invention. They

are competitors in supplying the switch (bracket) to

control the fan and limit circuits (to control the drap-

ing of material) employed in such systems. That

switch or combustion furnace control (bracket) is un-

patented’ and respondent concedes that it is ‘less than

the complete claimed invention’ But, as we have

said, the Circuit Court of Appeals took the view that

the control (bracket) provides ‘the sequence of opera-

1. There is some suggestion that this device is patented. But

according to the District Court any such patent ‘‘is owned by some

person other than Minneapolis-Honeywell and Mercoid, so that

as to them and so far as this case is concerned, it is an unpatented

device.’

21

tions (control of draping) which is the precise essence

of Freeman’s advance in the art.’ And the accused

device (bracket) has, according to the Circuit Court

of Appeals, ‘no other use than for accomplishing the

sequence of operations (control of draping) of the

Freeman (Falkenberg) patent.’ The Circuit Court of

) Appeals concluded that although the combustion fur-

) nace control (bracket) was unpatented, it served ‘to

distinguish the invention’ and to mark the ‘advance

in the art’ achieved by the Freeman (Falkenberg)

patent. It accordingly held that the patent laws per-

mit and the anti-trust laws do not forbid the control

over the sale and use of the unpatented device (bracket)

which Minneapolis-Honeywell (Falkenberg) sought to

achieve through its licensing agreements (Kirsh ez-

clusive rights). We do not agree, even though we as-

sume the patent to be valid. * * *’’

It is urged that the Court of Appeals in the present case

fell into the same error as it did in the case above quoted.

In the present case the Court of Appeals stated, (R. 159-

160) :

««* * * However, the bracket referred to in Claim 15

is a patented article. The bracket of course has to be

attached to some kind of support; it cannot be used

suspended in thin air. No evidence was offered to

suggest that plaintiff sought to have his bracket used

as a tie-up with any particular brand or type of win-

dow frame, or otherwise sought to enlarge the monop-

oly given to him. * * *’’

Likewise, in the case of

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, (1944),

the switch, of course, had to be placed in some kind of a

furnace. It could not be used suspended in thin air. Like-

wise, no evidence was offered that Minneapolis-Honeywell

sought to have its switches used as a tie-up with any par-

ticular brand or type of furnace.

22

In the decision below, the Court of Appeals further

stated, (R. 160):

«* * * Tn the Mercoid case, 320 U. S. 661, 680, the

»oyalty payments were based only upon sales of the

unpatented stoker switch, and the right to use the

patented system was granted only when the stoker

switches of licensee were purchased from it and used

in the system. * * *’’

Likewise, in the present case, the right to use the pat-

ented system or combination of Claim 15 is given to the

purchaser and user only when Respondent’s brackets (non-

patented with respect to Claim 15) are purchased from

Kirsh Company. In the present case, the purchasers of

Kirsh brackets are given an implied license, but it makes

no difference whether an implied or express license is

given. Neither Kirsh Company nor Respondent could suc-

cessfully maintain a suit against a user of brackets (the

unpatented part of Claim 15) bought from Kirsh Company.

However, Respondent could bring suit against any pur-

chaser of the brackets of Petitioner or others, and such

purchaser could not plead a license in defense, because of

purchase from the patent owner’s exclusive distributor.

Thus Respondent extends the patent monopoly of Claim 15

over an unpatented part and compels users to buy such

unpatented part from his exclusive distributor, Kirsh.

Otherwise such user buys with the fear of being charged

with infringement of Claim 15. Thus Respondent holds a

powerful club over prospective purchasers, yet the patent

owner and his distributor sell something less than the full

Claim 15. Respondent precludes, by his Claim 15, free

competition in the unpatented part of such claim.

This Court in the case of

Mercoid Corporation v. Minneapolis-Honeywell

Regulator Co., 320 U. S. 680, 684, (1944),

23

stated as follows:

‘The fact that an unpatented part of a combination

patent may distinguish the invention does not draw to

it the privileges of a patent. eo, ae

Respondent recognized his need of the combination claim

to protect his manufacture of the hanger or bracket by

bringing suit on that claim and charging Petitioner to be a

contributory infringer (R. 3). Attention is directed to

the case of

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

Co., 169 F. (2d) 72, 75, (C. A. 3rd, 1948) ; cert.

den. 69 S. Ct. 132.

The offering of licenses and the bringing of suit for

contributory infringement by a patentee who only manu-

factures and sells ( or has others sell for him, which makes

no difference) an unpatented part of the combination claim,

is misuse of that claim. The Court of Appeals for the

Third Circuit stated:

“Though our views on the validity issues dispose

of this appeal we consider the question of appellant’s

misuse of the patents of sufficient importance to rule

on it. Pyrene Mfg. Co. v. Urquhart, 3 Cir., 168 F. 2d

310. The District Court found that the claims to both

patents were not limited to the truck body and there-

fore that appellant’s practice in connection with the

patents was misuse. Appellant admits that i offers

competing body manufacturers ‘a license to use Plain-

tiff’s patents in constructing their truck bodies.’ Those

truck bodies are not patented. The assertion that the

Palmer claim was confined to the truck body is not

tenable. The claim itself carefully states that the pat-

ent is a combination of a load carrying platform with

a chassis frame in an automobile truck. It is insisted

that references to the truck and the chassis ‘were

mere orientation or background to define the use of

the body on the truck.’ That statement is hardly ac-

24

ceptable from either a reading of the claim or from

the other proofs.

ws

**It is obvious that the Biszantz patent is not lim-

ited to the truck body. This does not seem to be

seriously questioned by appellant. The patent, it is

remembered, consists of an adjustable tire support and

is actually mounted on the truck chassis.

‘*Appellant’ S practice in connection with these pat-

ents is not excused, as is argued, by the decision in

Williams Mfg. Co. v. United Shoe Machinery Cor-

poration, 316 U. S. 364, 62 S. Ct. 1179, 86 L. Ed. 1537,

which is not applicable to the circumstances before

us. * @ #9)

It is noted that the patent owner merely offered com-

peting body manufacturers a license to use its unpatented

load carrying platform in combination with their truck

bodies, thus making the complete combination of the pat-

ent claim. There is nothing in the decision to show that

licenses were actually granted. Therefore, the Court of

Appeals of the Third Circuit decided that the offering of

licenses and the actual bringing of a suit on a combination

claim was sufficient to establish misuse. In the present

case, exclusive sales rights were granted and a suit was

brought against Petitioner, who was in competition with

Kirsh, on the unpatented part (hanger) of Claim 15.

Respondent’s conduct clearly establishes misuse of Claim

15.

THe Maxim or ‘‘UncLtEaN Hanps.’’

The next question is whether or not Claim 14 of the

patent, on the bracket per se, changes the situation with

respect to the patent being non-enforceable. This Court in

the case of

Keystone Driller Co. v. General Excavator Co.,

290 U. S. 240, (1933),

25

had a very similar situation before it. In that case, the

unclean hands related to one out of five patents covering

devices constituting parts of a ditching machine. One pat-

ent, the Clutter patent, was basic and four Downie patents

were for improvements. The unclean hands was based on

fraud in obtaining only the first Downie patent. There

cannot be degrees of unclean hands. Fraud amounts to

unclean hands and likewise misuse of a patent amounts to

unclean hands. However, the unclean hands in both cases

should result in a court of equity denying relief.

This Court did so and the Seventh Circuit did not.

In

Keystone Driller Co. v. General Excavator Co.,

290 U. S. 240, 244, (1933),

this Court held:

‘‘The meaning and proper application of the maxim

are to be considered. As authoritatively expounded,

the words and the reasons upon which it rests extend

to the party seeking relief in equity. ‘It is one of the

fundamental principles upon which equity jurispru-

dence is founded, that before a complainant can have

a standing in court he must first show that not only

has he a good and meritorious cause of action, but he

must come into court with clean hands. He must be

frank and fair with the court, nothing about the case

under consideration should be guarded, but everything

that tends to a full and fair determination of the mat-

ters in controversy should be placed before the court.’

Story’s Equity Jurisprudence (14th Ed.) §98. The

governing principle is ‘that whenever a party who, as

actor, seeks to set the judicial machinery in motion

and obtain some remedy, has violated conscience, or

good faith, or other equitable principle, in his prior

conduct, then the doors of the court will be shut against

him in limine; the court will refuse to interfere on his

behalf, to acknowledge his right, or to award him any

remedy.’ Pomeroy, Equity Jurisprudence (4th Ed.)

26

§ 397. This Court has declared: ‘It is a principle in

chancery, that he who asks relief must have acted in

good faith. The equitable powers of this court can

never be exerted in behalf of one who has acted fraud-

ulently, or who by deceit or any unfair means has

gained an advantage. To aid a party in such a case

would make this court the abetter of iniquity.’ Bein

v. Heath, 6 How. 228, 247, 12 L. Ed. 416. And again:

‘A court of equity acts only when and as conscience

commands; and, if the conduct of the plaintiff be of-

fensive to the dictates of natural justice, then, what-

ever may be the rights he possesses, and whatever use

he may make of them in a court of law, he will be held

remediless in a court of equity.’ Deweese v. Reinhard,

165 U. S. 386, 390, 17 S. Ct. 340, 341, 41 L. Ed. 757.

* @ @»)

The Court then went on to hold at page 247:

‘‘The relation between the device covered by the

first Downie patent and those covered by the other

patents, taken in connection with the use to which

plaintiff put the Byers decree, is amply sufficient to

bring these cases within the maxim. * * *”’

This Court thereupon affirmed the decision of the Sixth

Cireuit Court of Appeals denying all relief.

The same doctrine was applied by the Court of Appeals

for the Fourth Circuit in

Sylvania Industrial Corporation v. Visking Cor-

poration, 132 F. (2d) 947, 956, (C. A. 4th, 1943).

In that case the patent owner urged that its improper

conduct (because of violation of the Anti-Trust Laws)

was confined to the use of only one patent and that the

other three patents in suit should not be tainted or held

unenforceable because of the misuse of one. The Court re-

jected such theory and held:

‘c# * * The case is within the ruling in Keystone

Driller Co. v. General Excavator Co., 290 U. S. 240,

54S. Ct. 146, 78 L. Ed. 293, where five patents relating

27

to different parts of the same machine were in suit, as

to one of which the patentee had corruptly suppressed

evidence of an invalidating prior use, and had secured

a prior decree of infringement. It was held that the

relation of the patents to one another and the use made

of the prior decree brought the case within the doc-

trine that he who comes into equity must come with

clean hands; and therefore the cases on all of the

patents were dismissed. We are in accord with the

conclusion of the District Judge on this point ex-

pressed as follows in its memorandum opinion in the

pending case: ‘The plaintiff and defendant are com-

petitors in the business of manufacturing and selling

regenerated cellulose sausage casings. The suit in-

volves four patents, two for the casings per se and

two for a method of making the casings. The unlawful

practices of the plaintiff with reference to the Freund

patent have immediate and necessary relation to the

equity which the plaintiff seeks in respect of the matter

in litigation and such practices cannot be deemed un-

connected with the causes of action based on the other

three patents.’ * * *”’

In the case of

Precision Instrument Mfg. Co., et al. v. Automo-

tive Maintenance Machimery Co., 324 U. S. 806,

816, (1945),

this Court again held that inequitable conduct with respect

to one of several patents and related contracts impregnated

the entire cause of action so as to preclude relief, even

where the conduct of the adversary was not entirely free

from blame. This Court held:

‘«* * * The far-reaching social and economic con-

sequences of a patent, therefore, give the public a

paramount interest in seeing that patent monopolies

spring from backgrounds free from * * * inequitable

conduct and that such monopolies are kept within their

legitimate scope. The facts of this case must accord-

ingly be measured by both public and private stand-

ards of equity. * * *”’

28

The question, therefore, which should be decided here

is whether or not the maxim applies to claims in a single

patent in the same manner it applies to claims in several

different patents. It is respectfully urged that the same

maxim should apply for the reasons given above and

particularly in view of the well settled rule of patent law

that each claim is a separate and distinct monoply, even

though in the same patent.

In conclusion with respect to this point, the case of

Morton Salt Co. v. G. 8S. Suppiger Co., 314 U. 8.

488, 493, (1942),

is referred to for authority that:

‘*# * * the successful prosecution of an infringe-

ment suit even against one who is not a competitor in

such sale is a powerful aid to the maintenance of the

attempted monopoly of the unpatented article, and is

thus a contributing factor in thwarting the public

policy underlying the grant of the patent. * * * Equity

may rightly withhold its assistance from such a use of

the patent by declining to entertain a suit for infringe-

ment, * # @

The rights of the public are involved in the general

propositions raised by patents of this type. Many pat-

ents contain combination claims and article claims. Some-

times they are in separate patents. In either case, is the

patentee to be excused for his misconduct because he has

an article claim? He has brought suit on the combination

claim—clearly to protect the business of his exclusive sales

distributor. Does not the misconduct with respect to one

part of a patent render the entire patent unenforceable!

If such misconduct renders related patents unenforceable,

it should render much closer related claims in the same

patent unenforceable. It is urged that this is a question

of great importance to the public, which has never been

directly passed upon by this Court.

1200 NOT READABLE ON AND

NOT AN INFRINGEMENT

OF CLAIM 15

HANGER OF EXPIRED BERGLUND PATEN

READABLE ON AND AN

INFRINGEMENT

OF CLAIM 15

HANGER OF EXPIRED

NOT READABLE ON AND

NOT AN INFRINGEMENT °

OF CLAIM |5

HANGER OF EXPIRED

ww

camels ert 14

. Oe oe

}& fe 4

4 :

z

- AT AN ANGLE

BERGLUND PATENT.

- VERTICAL

os hilelilaa as eaa

BERGLUND PATENT

} =- HORIZONTAL

OS STS

CHART |

29

Second Question.

Contributory Infringement.

The startling effect of the decision by the Court of Ap-

peals in the present case is that Petitioner is precluded

from taking two brackets of the expired Berglund Patent

No. 1,746,577 (R. 133-136) and mounting them on a window

frame, or telling others to mount them on a window frame,

inclined toward each other. The framers of the Constitu-

tion and the Patent Laws never intended that the public

' would not be free to use an expired patent which shows

a bracket mounted horizontally on a window frame, and

movmt a pair of such brackets in an inclined position on a

window frame. (Claim 15 does not state where the in-

clined brackets are to be mounted on the window frame.)

This, however, is the effect of the decision below. Note

Chart I. The top figure shows the Berglund hanger at an

angle—it reads on Claim 15 and thus would be an infringe-

ment thereof in accordance with the decision of the court

below. The bottom two figures show the Berglund hanger

hung vertically and horizontally and they do not read on

Claim 15 and thus, no infringement.

In holding that Petitioner is an infringer of Claim 15,

it is clear that Petitioner could be no mor: than a con-

tributory infringer at best of that claim, since it manufac-

tures and sells less than the full claim, that is only

brackets per se.

Petitioner’s brackets have closed entrances to enlarged

chambers for retaining drapery material (Respondent’s

Exhibit 1, introduced R. 15). The expired Berglund patent

likewise has closed entrances to enlarged chambers for the

reception of drapery material (R. 133 to 136). In both the

Petitioner’s device (Respondent’s Exhibit 1, introduced

R. 15) and in Berglund (R. 135) the material of the bracket

must be distorted to permit the drapery material to enter

the chambers. In the Falkenberg patent, the chambers are

open and, while the claims are very broadly worded, both

are limited to open entrances (R. 127). The similarities

between Berglund’s hanger and Petitioner’s and the dif-

ferences are graphically illustrated in the Charts 2 and 3.

~4

=

wes Js ees 1 ee

oi aaa tt | j@i jei |

FALKENBERG PATENT — FIG. 4.

Sk ke ah oh

BERGLUND PATENT — FIG. 53.

& Se AN CA A a am a

DEFENDANT'S BRACKET

CHART 3

31

Claim 15 reads as follows:

**15. In drapery mountings, the combination with

a support, of a pair of hangers secured to the support

and inclined toward each other, the hangers being

formed with chambers having spaced open-ended en-

trances for the sliding passage into the chambers of

folded drapery material whereby there is provided by

the chambers a flexible accommodation for material to

facilitate selective decorative dependent draping of

the material from the hangers.’’

The portions of Claim 15 which are not italicized is

what is sold by Petitioner and Kirsh Company. The por-

tions of Claim 15 which are italicized is what the user

does in his home when he mounts the bracket on a window

frame and hangs drapery material thereon.

The result of the decision of the Court of Appeals is

that Petitioner, who has followed Berglund (as has another

manufacturer now on the market) when it tells others to

place the equivalent of the Berglund brackets at an angle

or to incline them on the window frame, instead of placing

them horizontally, as shown by Berglund, is a contributory

infringer. Any of Petitioner’s or Kirsh Company’s users

who place the brackets at an angle or inclined on the

window frame become direct infringers. Petitioner’s users

have the threat of infringement hanging over them, but

that does not apply to Respondent’s distributor’s users,

because of the protection of Claim 15 of the patent. How-

ever, if the brackets are mounted horizontally or vertically,

the claim does not apply. Petitioner merely sells hangers

—the choice and manner of positioning the hanger on a

window frame is left entirely to the desire and artistic

taste of the user.

The unusual situation here brought about necessitates

brief reference to the proceedings before the Patent Office

with respect to the patent in suit.

32

Respondent, in order to read the claims on Petitioner’s

structure, endeavored to recapture something which he

definitely disclaimed during the prosecution of his patent

in the Patent Office. The Berglund patent (R. 133 to 136)

was cited by the Examiner against claims requested by the

Respondent (Petitioner’s Exhibit 23). Respondent then

distinguished his claims, and particularly by the terms

‘*slots’? and ‘‘chambers having open-ended entrances.”’

Respondent cannot now assert that the term ‘‘slots,’’ or

‘‘chambers having open-ended entrances,’’ are not mate-

rial and specific limitations. The file wrapper of Respond-

ent’s patent (Petitioner’s Exhibit 23) includes amendments

made by the patentee on May 31, 1945, December 8, 1945,

and August 22, 1946, which clearly limit the claims to open

slots.

Petitioner’s structure differs from the Respondent’s

patent in exactly the same manner that Berglund differs

from the Respondent’s patent. Petitioner’s structure (1)

does not have slots or passages permitting free communi-

cation with the pockets; (2) it is necessary to warp and

distort the bracket to permit passage of material into the

pockets; and (3) because the bracket is warped for insert-

ing the drapery material, the material is thereafter clasped

therein.

The decision of this Court in

Exhibit Supply Co. v. Ace Patents Corporation,

315 U. S. 126, (1942),

supports our position that Respondent is now estopped

from asserting for Claims 14 and 15 a scope sufficiently

broad to embrace Petitioner’s structure.

Respondent, FaLkenBerc, is not the first to place a

drapery bracket on a window frame (R, 26). Obviously,

placing the Berglund brackets at an angle would not arise

to the dignity of invention, even in the absence of any

—_—

33

prior art. That is a matter purely within the desire and

artistic taste of the user of the bracket. These brackets

are used either vertically or at an angle (R. 45). When

used vertically or horizontally, Claim 15 does not apply.

Again, neither Petitioner nor Respondent carry out the

full statutory monopoly of Claim 15. Respondent however

gets the full benefit of such statutory monopoly in the sale

of the unpatented part of Claim 15 and does so because his

users have no fear.

This clearly brings home the seriousness of the Court

of Appeals’ decision, because it forbids Petitioner from

making hangers or brackets which may or may not bring

about reading of Claim 15 on them, depending entirely on

what the user does with the hanger, which is the unpat-

ented part of Claim 15. The Court below was in error in

not distinguishing between infringement and contributory

infringement.

This case, therefore, is a glaring example of the danger

brought about by contributory infringement. This question

should be settled once and for all by the Supreme Court.

Since the announcement of the ‘‘Mercoid”’ doctrine by this

Court, the Patent Bar and the lower Federal Courts have

been in great confusion as to whether there is any such

thing as the Doctrine of Contributory Infringement and,

if so, what is left of that doctrine. In the case of

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U. S. 661, 668, (1944),

Justice Douglas, in discussing the question of contributory

infringement, stated that:

‘** * * The rule of the Leeds & Catlin case (No. 2)

accordingly must no longer prevail against the de-

fense that a combination patent is being used to pro-

tect an unpatented part from competition. * * *

‘“‘The result of this decision, together with those

34

which have preceded it, is to limit substantially the

doctrine of contributory infringement. What residuum

may be left we need not stop to consider. * * *”’

Justice Black, in his concurring opinion with Justice

Douglas, at page 673, and in disagreeing with the dissent-

ing opinion, stated as follows:

‘Tf there is such a wrong as contributory infringe-

ment, it must have been created by the federal patent

statutes. Since they make no direct mention of such a

wrong, its existence could only be rested on inferences

as to Congressional intent. In searching for Congres-

sional intent we ordinarily look to such sources as

statutory language and legislative history. The dis-

sent in question mentions neither of these guides; in

fact, it mentions no statute at all. * * *

‘*It has long been recognized that a socially unde-

sirable practice may seek acceptance under the guise

of conventional moral symbols. And repeated judicial

assertion that a bad practice is hallowed by morals

may, if unchallenged, help it to receive the acceptance

which it seeks. With this in mind, I wish to make

explicit my protest against talking about the judicial

doctrine of ‘contributory infringement’ as though it

were entitled to the same respect as a universally rec-

ognized moral truth.’’

Justice Jackson, in his opinion, at page 680, likewise

said:

‘«* * * Tn these circumstances I think we should

protect the patent owner in the enjoyment of just

what he has been granted—an abstract right in an ab-

struse combination—worth whatever such a totality

may be worth. I see no constitutional or statutory au-

thority for giving it additional value by bringing into

its monopoly all or any of the unpatentable parts.

‘‘For these reasons I agree with the Court that no

case of infringement could have been made ont had

the issue been raised when it was timely. * * *”’

35

The fact that the lower courts throughout the United

States are in confusion with respect to the subject is shown

by the following tabulation, which is broken down into

‘dictum cases’’ and cases ‘‘on the point’’:

I. Dictum Cases

A. Cases indicating that doctrine of contributory

infringement is not completely eliminated.

Chicago Pneumatic Tool Co., et al. v. Hughes Tool

Co., 61 F. Supp. 767 (D. C. Del., 1945) ;

Feinstein v. I. T. 8S. Co., 68 F. Supp. 15 (D. C. N. D.

Ohio, 1946) ;

Girdler Corporation v. E. I. DuPont de Nemours

& Co., 56 F. Supp. 871 (D. C. Del., 1944) ;

Johnston v. Atlas Mineral Products Co. of Penn-

sylvania, 140 F. (2d) 282 (C. A. 6th, 1944).

B. Cases indicating doctrine is completely abolished.

Special Equipment Co. v. Coe, 324 U. S. 370,

(1945) ;

Landis Machinery Co. v. Chaso Tool Co., Inc., 141

F. (2d) 800, (C. A. 6th, 1942), cert. den. 323 U.S.

720;

Lempco Products, Inc., et al. v. Simmons, 140 F.

(2d) 58, (C. A. 6th, 1944) ;

Sunlite Mfg. Co. v. Clarvan Corporation, 73 F.

Supp. 938, (D. C. KE. D. Wise., 1947).

II. Cases on the point

A. Cases in which the relief granted depended upon

recognition of existence of the doctrine.

Conmar Products Corporation v. Tibony, 63 F.

Supp. 372, (D. C. E. D. N. Y., 1945) ;

Detroit Lubricator Co. v. Toussaint, 57 F. Supp.

837, (D. C. N. D. IIL, 1944) ;

Florence-Mayo Nuway Co. v. Hardy, et al., 168 F.

(2d) 778, (C.A. 4th, 1948).

36

B. Cases holding that doctrine no longer exists.

Stroco Products, Inc. v. Mullenbach, et al., 67 U.S.

P. Q. 168, (D. C. S. D. Calif., 1944).

It is interesting to note that, in the case of

Sunlite Mfg. Co. v. Clarvan Corporation, 73 F.

Supp. 938, 940, (D. C. E. D. Wise., 1947),

Judge Duffy, then sitting as a District Judge, stated as

follows:

‘‘In view of the decision of the Supreme Court in

Mercoid Corp. v. Mid-Continent Investment Co., 320

U. S. 661, 64 S. Ct., 268, 88 L. Ed. 376, it may well be

doubted whether the doctrine of contributory infringe.

ment longer exists as an element in the patent law of

this country. * * *”’

However, Judge Duffy, when he wrote the decision of

the Court of Appeals for the Seventh Circuit in the pres-

ent case, disregarded the fact that Petitioner was at most

a contributory infringer of Claim 15 of the Falkenberg

patent, in order to hold Petitioner guilty of infringement

of that claim.

Another indication of confusion with respect to the

doctrine is found in the fact that a bill by Representa-

tive Celler (H. R. 3866, introduced May 29, 1949), has

been introduced into Congress, which attempts to over-

come the confusion and by statute to define contributory

infringement and make a contributory infringer liable.

This bill has been referred to the Committee on the Ju-

diciary. As stated by Justice Black in the case of

Mercoid Corporation v. Mid-Continent Inv. Co.,

et al., 320 U.S. 661, (1944),

there is nothing at present in the patent statutes or in the

legislative history thereof which defines contributory in-

fringement, or indicates that there is any such doctrine.

Petitioner is prevented from mounting a hanger of an

,

37

expired patent at an angle on the window frame, rather

than horizontally thereon. To restrict Petitioner as the

Court below did is to legalize and protect the Respondent

and his distributor in the manufacture and sale of an un-

patented part, insofar as Claim 15 is concerned, and what

this Court has said is measured by the Anti-Trust Laws

and not the Patent Laws.

Third Question.

The Court Below Rejected This Court’s ‘‘Cuno’’ Decision.

The Trial Court held that Claims 14 and 15 of the

Falkenberg patent did not meet the tests for invention set

forth by this Court in

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U. S. 84, (1941).

The District Court, after quoting from this Court’s de-

cision above referred to, concluded:

‘*Therefore Claims 14 and 15 of Patent No. 2,409,425

are declared invalid for lack of invention * * *.’’

The Court of Appeals for the Seventh Circuit in revers-

ing the Trial Court’s holding of invalidity, said (R. 155):

‘*We hold that the trial court herein erred in con-

struing the phrase, ‘flash of genius,’ as adding a test

for invention of a higher degree or superior to that

which would have produced patentable invention un-

der the law as it existed prior to the date of the Cuno

decision. As we have done heretofore (Chicago Steel

Foundry Co. v. Burnside Steel Foundry Co., supra),

we reject the flash of genius test. * * *”

The overruling of the Trial Court’s decision of inva-

lidity by the Court of Appeals was brought about by the

Court of Appeals rejecting this Court’s decision in

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U.S. 84, (1941).

38

Such decision is also in conflict with the holding of the

Court of Appeals for the Eighth Circuit in

The Alemite Company v. Jiffy Lubricator Com-

pany, (C. A. 8th Decided August 17, 1949—not

yet reported).

The Court there said:

‘‘Tmplications favorable to the plaintiff which might,

perhaps, be drawn from some of the statements of this

Court in Stewart-Warner Corporation v. Jiffy Lubri-

cator Co., supra (81 F. 2d 786), must be considered in

the light of the more recent decisions of the Supreme

Court raising the standards of originality necessary

to sustain a patent. That such standards have been

raised has been expressly recognized by the Circuit

Court of Appeals of the Second Circuit in Picard v.

United Aircraft Corporation, 128 F. 2d 632, 636, cer-

tiorari denied 317 U. S. 651, and by this Court in Frank

Adam Electric Co. v. Colt’s Patent Fire Arms Mfg.

Co., 8 Cir., 148 F. 2d 497, 502-503, and Koochook Co.,

Inc. v. Barrett, 8 Cir., 158 F. 2d 463, 466-467. What

was said in those cases need not be repeated. The

present attitude of the Supreme Court toward claimed

patentable improvements may be gathered from Cuno

Engineering Corp. v. Automatic Devices Corp., supra

(314 U. S. 84), and the more recent cases of Jungersen

v. Ostby & Barton Co., 335 U. S. 560, and Mandel

Brothers, Inc., v. Wallace, 335 U. S. 291.

‘*Since it is our opinion that the evidence, viewed

in the aspect most favorable to the plaintiff, does not

sustain the conclusion that the Johnsons’ contribution

to the art of lubrication rose to the level of patentable

invention, it is unnecessary to consider other ques-

eS

This Court, also, as recently as February 28, 1949, in

the case of

Graver Tank & Mfg. Co., Inc. et al. v. Linde Air

Products Co., 336 U. S. 271, (1949),

39

measured invention by the standards announced in

Cuno Engineering Corp. v. Automatic Devices

Corp., 314 U. S. 84, (1941).

In the same case this Court gave consideration to claims

held invalid by the Trial Court, which decision was re-

versed by the Court of Appeals. This Court said:

‘‘The same deference is due to the findings of the

trial court which overturn claims as to those which sus-

fin them. * * *”

The Trial Court in this case heard all of the evidence and

it was its conclusion, measured by the standards set forth

by this Court, that the claims in issue were invalid for lack

of invention. The Trial Court’s findings should be given

the deference to which they are due.

Conclusion.

It is respectfully submitted that the petition for writ

of certiorari to the United States Court of Appeals for

the Seventh Circuit should be granted.

Respectfully submitted,

Wu FREEMAN,

Counsel for Petitioner.

W. M. Van Scriver,

Of Counsel.

Chicago, Illinois,

September 7, 1949.