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

> Briefs, arguments, decisions, and more.

URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_2385%3A1

## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1949
- **Citation:** 338 U.S. 870

## Text

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.

eeeeeeeeeteeeeeeeneen
eee ee ee
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

ee ee eee ne

eee eeeeeeeeeee

Brief in Support of Petition for Writ of Certiorari.. :
Opinions of the Courts Below
Specification of Errors
Summary of Argument

eeeeeeereeeeeneensed
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

SSSR eseeeeseaesesenseses

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
SS |

eS SPS SREDCSERA WA OSE B04 666 as

9 SSS SOS SSS ® Os. OS'e WR. COS

ee

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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386416_2385%3A1. Public record. Not legal advice.