Petition for a Writ of Certiorari — Lewyt Corp. v. Health-Mor, Inc.

IN THE

Supreme Court of the United States

Ocroser TERM, 1950.

ms, sve

LEWYT CORPORATION,

Petitioner,

Us .

HEALTH-MOR, INC. and EDWARD H. YONKERS, JR.,

Respondents.

PETITION FOR WRIT OF CERTIORARI.

Cartton HI,

Casper W. Ooms,

Altorneys for Petitioner.

Davip S. Kane,

Samve. W. Krirenis,

Of Counsel.

July 3, 1950.

INDEX.

PAGE

Petition For Writ oF CERTIORARI............0200000: 1

ENS EEESER SEL TE LINE IDC EP Ee HEE PETITE TE,

PR SOUENO be ogo cae ec eas Ca oe Cena oe eke 3

Decisions of the Courta Below... 2... ccc cee ness 4

eT Bg, Pe Serer errr er rere er tere 6

Reasons REuIED oN FoR ALLOWANCE OF WRIT.......... 7

1. The possibility of conflict between circuits is

' SO eee Ee Pe PE eee ee ee ee TT 7

: 2. The decision of the Court of Appeals reversing

the District Court is in direct conflict with the

; emia OF Git TANG a vce aees cece ccivenss 7

3. The Court below has departed from the ac-

cepted course of judicial procedure........... 8

4. Failure to clarify the question of file wrapper

estoppel will make it impossible for the public

to proceed with new designs.................

8

Brier In Support OF PETITION FoR WRIT OF CERTIORARI... 9

9

| PEPE TT VTEC SUT TET CITE C TTT Ere eee

NN RG aA eed aesake edvavencanawceinxes 10

a | eee eee Pee ree et rere ey Tee 10

a 2 errr reer ree reer rere 10

PE eT Teer ee Tee Sree eee ne rey ee 11

Reasons Relied on for Allowance of Writ............ 11

I. No possibility of conflict between different cir-

| Rae earn ear area aay wre ery pL eae eee 11

a Ba ho ee ead | ASS Meee ee ee

ii

II. The decision of the Court of Appeals reversing

the District Court is in direct conflict with the

decisions of this Court... ...........ceeeseeees

1. The Court of Appeals has revived claims re-

jected and cancelled.................2-00555

2. The Court of Appeals has sustained a claim

which does not mention the element found to

Dit GURNEE coo kc ccntnn ceca ctaatonsusauwe

III. The Court has departed from the accepted course

of judicial procedure. ..............eeeeeeeeees

SEL CE SS CLEC ET ET TT TTT CC OCT.

12

iii

AUTHORITIES.

Altoona Publix Theatre v. Tri-Ergon Corp. (1935), 294

U. S. 477, 487, 492.0... cee eee eee eee ees 7

Exhibit Supply Co. v. Ace Patents Corporation (1942),

PLM OS) ) . ee oe 7,11, 14

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

Co. (1949), 336 U.S. 271, 274-5... 6.6 ee eee eee 8, 16

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

Co., 85 U. S. P. Q. 328... eee eee eee ee eee ees 8, 12, 16

The Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp. (No. 32, October Term, 1949)..... 8,15

Lavender v. Kurn (1946), 327 U. 8. 645-653.......... 8

Lewyt Corp. v. Health-Mor, Inc., et al.:

D. C., 84 F. Supp. 189 (R. 247)... 6... eee eee 1,9

C. A., 85 U.S. P. Q. 335 (R. 342)........ ee aeeey 1,9

Mackay Radio & Telegraph Co. v. Radio Corporation

of America (1939), 306 U. S. 86, 89.........-.-- 7, 11,12

Muncie Gear Works, Inc. v. Outboard Marine & Manu-

facturing Co. (1942), 315 U. S. 759, 765-6.......... 7,33

Permutit Co. v. Graver Corp., 284 U.S. 52.........-. 8, 15

Schriber-Schroth Co. v. Cleveland Trust Co. (1938),

- . eS & Sinner re rer eet ore. 7,11

Schriber-Schroth Co. v. Cleveland Trust Co. (1940),

ee |: enh er error 8, 14, 15

Sutter v. Robinson (1886), 119 U. S. 530, 541.......-. 7,14

Rule 52(a), Federal Rules of Civil Procedure........ 5, 16

Judicial Code, Sections 1254(1) and 2101(¢)......-..- 2,10

IN THE

Supreme Court of the United States

Ocrosper TERM, 1950.

ROUSE Deter 9

LEWYT CORPORATION,

Petitioner,

vs.

HEALTH-MOR, INC. and EDWARD H. YONKERS, JR.,

Respondents.

PETITION FOR WRIT OF CERTIORARI.

To the Honorable, the Chief Justice and the Associate

Justices of the Supreme C of the United States:

Petitioner prays that a w.. of certiorari issue to re-

view the judgment entered by the United States Court of

Appeals for the Seventh Cireuit (R. 351), wherein the

Court reversed 85 U. S. P. Q. 335 (R. 342) the decision

of the trial Judge Hon. William H. Holly, U. S. D. C.,

N. D. Il, 84 F. Supp. 189 (R. 247).

The judgment relates to Yonkers Patent No. 2,198,568

(R. 214) for a replaceable filter canister type vacuum

cleaner.

The District Court (R. 249) held invalid and not in-

fringed all claims in suit. The Court of Appeals reversed

(R. 351), finding infringement of Claims 2, 4 and 7 by

2

resorting to the doctrine of equivalents, and of Claim 8,

which does not embody the very element which the Court

of Appeals found to be the essential element of novelty.

The Court disregarded the doctrine of file wrapper es-

toppel and gave the claims their pre-amended scope (R.

348-9) and disregarded the District Court’s findings of

lack of invention and anticipation (R. 345-6).

The case presents the problem whether cancelled and

abandoned claims may be revived by resorting to the doc-

trine of equivalents and whether a court of appeals may

treat the lower court’s findings of non-invention and an-

ticipation as no more binding than the presumption of

validity arising from the patent grant.

JURISDICTION.

This Court has jurisdiction to review said judgment un-

der Sections 1254 (1) and 2101 (c) of the new Judicial

Code.

The judgment was entered May 4, 1950 (R. 351). Peti-

tion for rehearing, duly filed (R. 351), was denied June 3,

1950 (R252).

MATTER INVOLVED.

Petitioner was forced to bring this declaratory judgment

action by respondent’s tactics in threatening, but not suing,

petitioner’s customers with patent infringement suits un-

der three patents (R. 2-8). At the trial, respondent ad-

mitted that one! was not infringed and it was dismissed

(R. 247). The other two? were held invalid and not

infringed (R. 265). Respondent then appealed only from

so much of the judgment as adjudged Yonkers Claims 2,

4, 7 and 8 invalid and not infringed (R. 266). The Court

of Appeals reversed (R. 351).

The application for the Yonkers patent disclosed, in its

specification and drawings, a cleaner in which a conical

paper filter is held in place by a perforated metal sup-

port, and an air inlet into the dust compartment terminates

in a nozzle positioned ‘‘adjacent to and parallel with’’

the conical paper filter (R. 142, 146).

When the application was filed, all claims to the cleaner

were broad in defining the relationship between the air in-

take and the filter as ‘‘an air intake * * * below * * * said

filter’? (R. 148-151)* but, pursuant to rejection (R. 155),

the claims were cancelled or amended (R. 156, 163, 167,

185, 194). Meanwhile, original Claim 20 (R. 156), re-

numbered as Claim 35 (R. 188), which, after several

amendments became issued Claim 2 of the patent (R. 188),

was added. In this claim the distance or relationship be-

tween the nozzle and the filter was clearly limited as one

in which the nozzle was ‘‘adjacent to and parallel with the

filter surface’’ (R. 179).

(1) U.S. Patent No. 2,296,359.

(2) U.S. Patents Nos. 2,280,495 and 2,198,568.

(3) Of these, original Claims 9 and 10 (R 149) are typical.

a RPE GIP LOLOL EAL PMS LEENA TU SAR SEILER EE oS PT OT NNR

4

This limitation was necessary because all other features

of the cleaner were old. This is clear from the drawings .

from the patent in suit and the prior art and that of the

accused structure attached to the back cover of this brief.

The vital amendment made to the claims as the price

of their allowance by the Patent Office is manifest by the

comparison of allowed claim 2 with original claim 9 repro-

duced on the chart attached to the back cover of this brief.

Later, Yonkers added Claim 40, which became Claim 4

of the patent (R. 194), and Claim 45, which became Claim

7 of the patent (R. 202). Both of these claims contain the

limiting amendment.

Yonkers argued in the Patent Office that that particular

relationship was vital (R. 197-9) and it became the basis

of the grant (R. 201).

Petitioner’s air intake, in contrast to that shown in Yon-

kers, does not terminate in a nozzle positioned adjacent to

and parallel with the filter surface. Petitioner’s air intake

discharges the air neither adjacent to nor parallel with the

filter surface, but rather introduces such air adjacent the

outer side wall of the dust compartment as far away from

the filter surface as is possible (R. 41). in so doing, peti-

tioner follows the prior art patents to Kirby (R. 290) or

Upton (R. 308), in which the air intake is just as far away

from the filter as possible. In the Patent Office the pat-

entee distinguished his structure from these earlier pat-

ents by the special form of air intake nozzle and its loca-

tion ‘‘adjacent to and parallel with’’ the filter (R. 197-9).

Decisions of the Courts Below:

The District Court held (R. 262-265) the Yonkers claims

invalid for want of invention and not infringed. The Court

of Appeals reversed and accorded the claims a wide range

of equivalents, notwithstanding that, in so holding, the

LITLE PRACT TAP AED GER RE EN MATS NPY Ri AR IR DOLE S SS AL MRR DE serena

—

5

Court of Appeals, in effect, enlarged Claims 2, 4 and 7 to

the scope of rejected and cancelled claims (R. 348-9).

The cancelled claims read directly on petitioner’s cleaner;

Claims 2, 4 and 7 do not.

Thus, the Court of Appeals has held that the doctrine

of equivalents permits enlargement of the scope of a pat-

ent monopoly beyond the verbal bounds of the claims,

notwithstanding that to secure the allowance of the claims

the patentee was compelled to restrict them in the very

respect in which they were enlarged by the Court of Ap-

peals in order to encompass petitioner's cleaner.

The Court of Appeals predicated its finding of inven-

tion upon the form and cooperation between the air intake

and the filter. Claim 8 omits completely the air intake

which the Court of Appeals found to be an essential ele-

ment of this combination.

The Court of Appeals refused to give effect to the find-

ings of fact of the trial Court as required by Federal

Rule 52(a). It set aside such findings with the observation

that the finding of anticipation is no more conclusive upon

the Court of Appeals than was the issuance of the patent

upon the District Court (R. 345-6).

The findings of the Districi Court were hased upon prior

patents and physical exhibits in evidence (R. 280-316),

upon the conflicting testimony of patent experts (R. 28-68;

83-97)* and scientific demonstrations in open court (R.

43).

(4) Petitioner’s patent expert disagreed with respondents’

patent experts on many points (Compare R. 41, 57 with BR. 50,

94, 110-113}. The District Court accepted the testimony of peti-

tioner’s expert (R. 247-253).

QUESTIONS PRESENTED.

1. Where the applicant cancels claims broadly cover-

ing a certain combination, after rejection of such claims

on prior art, and secures the allowance of new claims lim-

ited to a specific arrangement of the parts by persuading

the Patent Office to allow the claims on the ground that

such specific arrangement was the feature which dis-

tinguished the invention from the prior art, can the pat-

entee avoid the estoppel which he has thus created and

maintain that the allowed narrow claims cover a struc-

ture which lacks the distinguishing feature and would have

been covered by the rejected and cancelled claims?

2. Is the public entitled to rely on the doctrine of file

wrapper estoppel in designing new structures to avoid

infringement of an issued patent?

3. Is a patent claim valid where it omits what the

court found to be the essential element of patentable nov-

elty?

4. Where the District Court entered findings of fact

based on conflicting testimony of patent experts, scien-

tific demonstrations in open court and documentary and

physical exhibits, may the Court of Appeals treat such

findings as no more conclusive upon that Court than was

the issuance of the patent upon the District Court?

REASONS RELIED ON FOR ALLOWANCE OF WRIT.

The reasons relied on for the issuance of the writ

prayed for are:

1. The possibility of conflict between circuits is remote

despite the doubtful validity of the patent. Petitioner is

respondent’s only competitor in the field of replaceable

filter canister type cleaners. Accordingly, the possibility

of further litigation to settle the validity of the patent is

remote. (See appended affidavits of George H. Scott, Alex

M. Lewyt and David S. Kane.) This alone warrants re-

view by this Court for the reasons pointed out in Mackay

Radio & Telegraph Co. v. Radio Corporation of America

(1939), 306 U. S. 86, 89; Muncie Gear Works, Inc. v. Out-

board Marine & Manufacturing Co. (1942), 315 U. S. 759,

763-6; Exhibit Supply Co. v. Ace Patents Corporation

(1942), 315 U. S. 126, 128; Schriber-Schroth Co. v. Cleve-

land Trust Co. (1938), 305 U. S. 47, 50.

9. The decision of the Court of Appeals reversing the

District Court is in direct conflict with the decisions of

this Court. Thus,

(a) To find infringement the Court below read

Claims 2, 4 and 7 to cover what was eliminated from

the patent grant by the cancellation of broad claims

initially presented. This does not accord with the de-

cisions of this Court in Schriber-Schroth Co. v. Cleve-

land Trust Co. (1940), 311 U. 8. 211, 218, 220-2; Al-

toona Publix Theatre v. Tri-Ergon Corp. (1935), 294

U. S. 477, 487, 492; Exhibit Supply Co. v. Ace Patents

Corporation (1942), 315 U. S. 126, 136-7; Sutter v.

Robinson (1886), 119 U. S. 530, 541. Such revival of

cancelled claims is clearly contrary to the public in-

terest ;

(b) The Court below sustained Claim 8 despite the

fact that a feature found by the Court to be an essen-

tial element of the patented combination was not in-

cluded in that claim. This is in direct conflict with

the decisions of this Court in Permutit Co. v. Graver

Corp., 284 U. 8. 52; Schriber-Schroth Co. v. Cleveland

Trust Co, (1940) 311 U. S. 211, 217. This very ques-

tion is before this Court in The Great Atlantic & Pacific

Tea Co. v. Supermarket Equipment Corp. (No. 32,

October Term, 1949) to be argued next October.

3. The Court below has departed from the accepted

course of judicial proceedings by treating findings of fact

as entitled to no greater weight than the presumption of

validity arising from the patent grant. This is in direct

conflict with the decisions of this Court in Graver Tank &

Mfg. Co., Inc. v. Linde Air Products Co. (1949), 336 U. S.

271, 274-5; on rehearing 85 U. S. P. Q. 328; Lavender v.

Kurn (1946), 827 U.S. 645, 653.

4. Unless this Court clarifies the important question of

file wrapper estoppel presented by the decision of the

Court of Appeals in this case, it will be impossible for the

public at large or counsel representing them to know

when to proceed with new designs where the use of alleged

equivalents to a patented structure is involved.

Wuererorr, it is respectfully submitted that the writ

should issue.

Respectfully submitted,

Carutron Hi,

Casper W. Ooms,

Attorneys for Petitioner.

Davin S. Kane,

SamugE. W, Kipnp,

Of Counsel.

July 3, 1950.

IN THE

Supreme Court of the United States

Ocroser Term, 1950.

CRA anes

LEWYT CORPORATION,

Petitioner,

vs.

HEALTH-MOR, INC. and EDWARD H. YONKERS, JR.,

Respondents.

BRIEF IN SUPPORT OF PETITION FOR WRIT OF

CERTIORARI.

The writ should issue to free the public of the unjust

monopoly which the Court of Appeals has awarded to re-

spondents in reviving rejected and cancelled claims by re-

course to the doctrine of equivalents.

OPINIONS BELOW.

The opinion of the District Court is found at R. 247. It

is reported in 84 F. Supp. 189.

The District Court’s findings of fact and conclusions of

law are found at R. 262-265.

The opinion of the Court of Appeals (R. 342) is re-

ported in 85 U.S. P. Q. 335.

RRS OAR ELEN ONLY, LN ER ATSERELI TE ENIOR SELEY EBERLE SS AOS LES SLT ILE NOI TE

10

JURISDICTION.

As noted in the petition, jurisdiction is invoked under

Sections 1254 (1) and 2101 (c) of the Judicial Code.

STATEMENT OF FACTS.

The facts are stated in the petition.

SPECIFICATION OF ERRORS.

The Court of Appeals erred:

1. In failing to hold that respondents were estopped

by their conduct in the Patent Office from contending that

Petitioner’s cleaner is within the scope of claims 2, 4 and 7

of the Yonkers patent;

2. In bringing within the scope of claims 2, 4 and 7

structures abandoned by the patentee by application of the

doctrine of equivalents where there was a file wrapper

estoppel;

3. In holding valid and infringed claim 8 which makes

no mention of the feature found by the Court of Appeals to

be the essential element of novelty lending patentability to

the claims;

4. In setting aside findings of fact based upon conflict-

ing testimony and demonstrations in open court.

ll

ARGUMENT.

I.

REASONS RELIED ON FOR ALLOWANCE OF THE WRIT.

This Court should grant the writ prayed for because:

1. No Possibility of Conflict Between Different Circuits.

The trial Court held the patent claims in suit invalid

for lack of invention and not infringed. The Court of

Appeals reversed. Despite the fact that the two courts

have thus disagreed as to the validity and infringement

of a patent, which quite clearly is of doubtful validity,

the possibility of further litigation and conflict of decision

between the circuits is remote. Although the device in-

volved is a household appliance, potentially useful in every

home, the parties to this suit are the only ones engaged

in the business of manufacturing and selling it in the

United States. Lewyt Corporation remains the only com-

petitor in this field. (See appended affidavits of George

H. Scott, Alex M. Lewyt and David S. Kane.) The judg-

ment, therefore, is likely to foreclose all further inquiry

into the validity of the Yonkers patent in suit.

These circumstances properly should result in the allow-

ance of the writ. The Court so pointed ort in:

Mackay Radio & Telegraph Co. v. Radio Corpora-

tion of America (1939), 306 U. S. 86, 89.

Muncie Gear Works, Inc. v. Outboard Marine &

Manufacturing Co. (1942), 315 U. S. 759, 765-6.

Exhibit Supply Co. v. Ace Patents Corporation

(1942), 315 U. S. 126, 128.

Schriber-Schroth Co. v. Cleveland Trust Co.

(1938), 305 U. S. 47, 50.

* re, SHOTS ey EKER RS PEE MINIS ps NSLS RTO YET ROR eo ~

SANE TE PTS SRR UNE, WORSE TEMPTS PEN ITE ALARIERERL eet aE i} ASE EES SARA RE See

12

Not only are the questions raised of large public import-

ance and the patent doubtful, but, as in Mackay Radio &

Telegraph Co. v. Radio Corporation of America (1939),

306 U. S. 86, the only competitor left to make the challenge

is Lewyt. There the Court said (p. 89):

‘‘We granted certiorari * * * because of the nature

and importance of the case, on a petition which urged

as grounds for its allowance that validity and infringe-

ment * * * were in doubt and that, as petitioner is the

only competitor of respondent * * * further litigation,

resulting in conflict of decision among circuits, was

improbable.”’

The writ should likewise issue here.

Il.

THE DECISION OF THE COURT OF APPEALS REVERSING THE

DISTRICT COURT IS IN DIRECT CONFLICT WITH DECISIONS

OF THIS COURT.

1. The Court of Appeals has revived claims rejected and

cancelled.

The Court of Appeals, in conflict with earlier decisions

of this Court, revived rejected and cancelled claims by

resorting to the doctrine of equivalents and found infringe-

ment by a structure abandoned by the patentee. Coming

on the heels of this Court’s decision in Graver Tank & Mfg.

Co. v. Linde Air Products, 85 U. S. P. Q. 328, the failure

of this Court to correct this situation is likely to place the

long settled doctrine of file wrapper estoppel in doubt with

injurious consequences to the public.

Claims 2, 4, and 7 are expressly limited to a replaceable

filter canister type cleaner wherein the nozzle is posi-

tioned ‘‘adjacent to and parallel with the filter.’’ This is

because the claims initially presented called for ‘fan air

intake * * * below * * * the filter’’ and in compliance with

BT 6 i iE eS fe ee at [Apert aeuc sea aCe

13

the requirements of the Patent Office, Yonkers cancelled

those original claims and limited them to an arrangement

in which the air intake terminated in a nozzle ‘‘adjacent

to and parallel with the filter.’’

When Yonkers cancelled the original claims he recog-

nized that in the prior art patents to Kirby (R. 290) and

Upton (R. 308) the air intake was positioned below the

filter, as it is in petitioner’s cleaner. Yonkers cancelled

those claims and in submitting the new claims (now patent

Claims 2, 4 and 7) argued that the particular positioning

of the nozzle with respect to the filter was vital and was

the fact which distinguished ithe claims from the prior art

(R. 197-198). He specifically pointed out that'in the Upton

prior patent ‘‘the intake nozzle is shown as being a sub-

stntial distance away from the filter surface.’’ The fact

is that in petitioner’s cleaner the air intake is even fur-

ther away from the filter surface than in the Upton patent

(R. 36).

But the Court of Appeals disregarded the file history

and completely overlooked the fact that claims reading

directly on petitioner’s cleaner were rejected on the earlier

patents, then cancelled and abandoned, whereas the claims

in suit do not read directly on petitioner’s cleaner and can

be made to cover petitioner’s cleaner only by resorting

to the doctrine of equivalents and ignoring the limitations

which the Patent Office compelled the patentee to insert

in his claims as the price of their allowance.

; Moreover, if by resorting to the doctrine of

equivalents, Claims 2, 4 and 7 are construed to cover

petitioner’s cleaner, they likewise read on the prior art

Kirby or Upton cleaners wherein the air intakes are posi-

tioned closer to the filter than in petitioner’s cleaner.

A claim once abandoned cannot be reviewed. Such has

been the law as declared by this Court for over 60 years.

The claim, having been abandoned, in order to obtain the

14

patent, Sutter v. Robinson (1886), 119 U. 8. 530, the pat-

entee (P. 541):

‘is not at liberty now to insist upon a construction

of his patent which will include what he was expressly

required to abandon and disavow as a condition of

the grant.”’

The Court has consistently applied the same rule ever

since. In Schriber-Schroth Co, v. Cleveland Trust Co.

(1940), 311 U. S. 211, the Court said (p. 218):

‘‘Where the patentee in the course of his applica-

tion in the patent office has, by amendment, cancelled

or surrendered claims, those which are allowed are

to be read in the light of those abandoned and an

abandoned claim cannot be revived and restored to

the patent by reading it by construction into the claims

which are allowed.’’

The Court made it clear that the rule may not be evaded

by recourse to the doctrine of equivalents in Exhibit Sup-

ply Co. v. Ace Patents Corp., 315 U. 8. 126. The Court

said (P. 137):

‘‘Tt follows that what the patentee, by a strict con-

struction of the claim, has disclaimed—-conductors

which are carried by the table but not embedded in

it—cannot now be regained by recourse to the doc-

trine of equivalents, which at most operates, by liberal

construction, to secure to the inventor the full bene-

fits, not disclaimed, of the claims allowed.”’

What this Court says may not be done, the Court of

Appeals has done. It reversed and restored to the patent

the very claims which were cancelled and abandoned in

order to distinguish from the prior art. The result is that

both the Upton and Kirby constructions, now in the public

domain, and petitioner’s cleaner are brought within the

scope of the Yonkers claims in spite of the patentee’s

agreement with the Patent Office that he was not entitled

to claims of that scope.

15

2. The Court of Appeals has sustained a claim which does

not mention the element found to be essential.

The Trial Court found that the Yonkers claims did not

involve invention and were anticipated. The Court of Ap-

peals reversed and predicated patentable novelty upon the

feature of ‘‘form of and cooperation between the air intake

and the replaceable conical paper filter’’ (R. 346). That

feature is not mentioned in Claim 8. Hence, Claim 8 is

clearly invalid. Permutit Co. v. Graver, 284 U. S. 51, 58;

Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 215.

This very question is before this Court in The Great Atlan-

tic & Pacific Tea Co. v. Supermarket Equipment Corp. (No.

32, October Term, 1949) to be argued next October.

III.

THE COURT HAS DEPARTED FROM THE ACCEPTED COURSE

OF JUDICIAL PROCEEDINGS.

The Court of Appeals set aside findings of fact of the

trial court upon the issues of invention and anticipation

with the comment (R. 345-6):

‘*However, it is to be observed that the finding of

anticipation is, in this case, no more conclusive upon

this Court than was the issuance of the patent upon

the District Court for it was made on the basis of

documentary evidence which is now before this Court

and which this Court is free to interpret for itself

in determining whether the finding is correct.’’

The Court of Appeals overlooked the fact that the

District Court’s findings of fact were not based upon docu-

mentary evidence alone. The trial court heard the testi-

mony of experts and witnessed scientific demonstrations.

It was upon all the evidence that the trial court’s findings

were based.

_ rH SOREN CaS ARISING EIEN A ERE TY a et Mi POMC MANS UME PMR LON GSU Orn RAO, FEN CENA

7

16

There was substantial evidence to support the District

Court’s findings and, although conflicting testimony was

offered,®> the District Court accepted the testimony of

petitioner’s expert.

It is firmly established that the trial court's findings

should not be set aside unless clearly erroneous (Rule

52(a) F. R. C. P.) and

‘«* * * due regard shall be given to the opportunity

of the trial court to judge of the credibility of the

witnesses. ”’

This Court held in Graver Tank & Mfg. Co. v. Linde

Air Products Co., 336 U. S. 271, 275:

‘‘The rule requires that an appellate court make

allowance for the advantages possessed by the trial

court in appraising the significance of conflicting tes-

timony and reverse only ‘clearly erroneous’ findings.’’

And in the same case on rehearing, Graver Tank €

Mfg. Co. v. Linde Air Products Co., 85 U. S. P. Q. 328,

this Court said:

‘It is not for this Court to essay an independent

evaluation of this evidence. This is the function of

the trial court.’’

The Court of Appeals failed to apply the law as de-

clared by this Court. It tried this case de novo. Moreover,

it disregarded the testimony of the patent experts. This

is clear error.

5. R. 41, 57, 80, 94, 110-113.

DRESS RIMM NIL RO ERED ELI ON NR

~—

17

CONCLUSIONS.

We respectfully submit that the decision of the Court

of Appeals for the Seventh Circuit is in direct conflict

with applicable decisions of this Court and is inconsistent

with the policy of the patent laws of importance not only

to petitioner but to the public.

It is respectfully urged that the writ should issue.

Respectfully submitted,

Carutton HILt,

Casper W. Ooms,

Attorneys for Petitioner.

Davip S. Kane,

Samvue. W. Kipents,

Of Counsel.

July 3, 1950.

18

AFFIDAVIT IN SUPPORT OF PETITION FOR WRIT OF

CERTIORARI.

State oF Onto,

CounTY oF CUYAHOGA.

George H. Scott, being duly sworn, deposes and says:

That he is of legal age, a resident and citizen of the

City of Cleveland, County and State aforesaid, and is

President of the Vacuum Cleaner Manufacturers Associa-

tion having its principal office in the City of Cleveland,

County and State aforesaid, an association composed of

members whose business is that of manufacturing and

selling vacuum cleaners;

That he is familiar with all vacuum cleaners now manu-

factured and sold and that the only cleaners of the char-

acter involved in this litigation, to wit, utilizing a conical

paper filter, are those made by the petitioner, Lewyt Cor-

poration, Brooklyn, New York, in the Second Judicial

Cireuit of the United States and respondent, Health-Mor,

Inc., Chicago, Illinois, in the Seventh Judicial Circuit of

the United States.

/s/ Georce H. Scort.

Sworn to and subscribed before me this 23rd day of

June, 1950.

/s/ W. J. Montanary,

(SEAL) Notary Public.

My Commission expires July 25, 1950.

AFFIDAVIT IN SUPPORT OF PETITION FOR WRIT OF

CERTIORARI.

State or New York,

County or KrnGs.

Alex M. Lewyt, being duly sworn, deposes and says:

That he is of legal age, a resident and citizen of the City

of New York, County of New York and State aforesaid

and is President of Lewyt Corporation, respondent herein;

That he is familiar with all of the vacuum cleaners now

being manufactured and sold in the United States and that

the only vacuum cleaners of the character involved in this

litigation, to wit, those employing a conical paper filter,

are manufactured and sold by petitioner, Lewyt Corpora-

tion, in Brooklyn, New York, within the Second Judicial

Circuit of the United States and respondent, Health-Mor,

Inc., of Chicago, Illinois, within the Seventh Judicial Cir-

cuit of the United States.

/s/ Avex M. Lewyrt.

Subscribed and sworn to before me this 23 day of June,

1950.

/s/ Mance L. Ferrepy,

(SFAL) Notary Public.

Madge L. Ferredy

Notary Public for the State of New York

Qualified in New York County No. 31-1200800

Cert. filed in Kings County

Commission expires March 30, 1951.

20

AFFIDAVIT IN SUPPORT OF PETITION FOR WRIT OF

CERTIORARI.

State or New York,

County or New York.

David S. Kane, being duly sworn, deposes and says:

That he is of legal age, a resident and citizen of the

City of New York, County and State aforesaid and is an

Attorney-at-Law and Counsel for Petitioner in the above

case ;

That prior to filing this action in the United States Dis-

trict Court for the Northern District of Illinois, Eastern

Division, your aftiant made a diligent investigation to

ascertain whether the Respondents herein, Health-Mor,

Ine., and Edward H. Yonkers, Jr., were subject to the

jurisdiction of any other United States District Court.

As a result of that investigation affiant is of the opinion

and therefore asserts that the only federal district in

which suit may be filed against the Respondents herein is

the Northern District of Illinois, Eastern Division, within

the Seventh Judicial Cireuit of the United States.

Daviv S. Kane.

Sworn to and subscribed before me this 26th day of

June, 1950.

Vuasta L. KNakat,

(SEAL) Notary Public.

Viasta L. Knakal

Notary Public, State of New York

No. 31-7309400

Cert. filed in N. Y. Co. Reg.

Residing in New York County

Commission expires March 30, 1952.

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In a suction cleaner, a housing having

In a suction cleaner, a housing having

a dust compartment in the bottom thereor,

a dust compartment in the bottom thereof,

e generally conical air filter forming

en air filter* of long fiber unsized paper

the top cover of said compartment with

having a smooth surface covering seid com-

the apex of the cone extending inwardly

towerd the bottom of said compartment,

geaid filter comprising a perforseted sup-

porting member and a flexible filtering

member against said supporting member,

partment,

a perforated member disposed above said

filter for supporting the same against

collapse,

en inteke connection into said dust com-

pertment below ssid filter,

and air intake and

seid intake connection terminating in

a nozzle for discharging dirt-laden

air adjacent to and parellel with the

filter surface and

an exhaust connection above said filter. exhaust connections below and above

filter reepectively.

AL

* Original claim 10, also rejected and

cancelled, added only that the filter is

"conical",

R. 156, 188, 216 R. 149

ORIGINAL CLAIMS 9 AND 10 WERE REJECTED AND CANCELLED ALTHOUGH

THEY DIFFERED FROM ALLOWED CLAIM 2 SUBSTANTIALLY ONLY IN THE

DEMAND THAT THE INTAKE TERMINATE IN A "NOZZLE * * * ADJACENT

TO AND PARALLEL WITH THE FILTER SURFACE", A FEATURE ENTIRELY

ABSENT FROM THE STRUCTURES HELD TO INFRINGE.

THE PATENT IN SUIT WAS ALLOWED ONLY AFTER CLAIMS WERE SPECIFICALLY

LIMITED TO REQUIRE THAT THE INTAKE NOZZLE BE ADJACENT TO AND PARALLEL

WITH THE FILTER SURFACE, THE ONLY FEATURE NOT SHOWN BY THE PRIOR ART,

BUT THIS LIMITATION, DEMANDED BY THE PATENT OFFICE, WAS COMPLETELY

IGNORED BY THE COURT OF APPEALS, AND THE DOCTRINE OF FILE WRAPPER

ESTOPPEL THUS COMPLETELY THWARTED. -

Apr ae, sor. “Ee VONKERS See ‘GHtEVIO;I00"

SUCTION CLEANER VACUUM CLEANER.

APPLICATION FILED JOLY 9, 1909. BENEWE! JAN. 10 1914

1,100,575. Patented June |

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Filed Sept. 8, 1937

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THE PATENT IN SUIT SHOWS

THE INTAKE NOZZLE

"ADJACENT TO AND PARALLEL WITH

THE FILTER SURFACE"

(R, 214)

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VACUUM CLEANER ELECTRICAL VACUUM ce

Filed Sept. 14.

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THE PRIOR ART

ACENT TO -ARALLEL

EVERY FEATURE OTHER THAN THE INTAKE NOZZLE “ADJACENT TO AND PARALLE

WITH THE FILTER SURFACE"® IS SHOWN IN PRIOR ART PATENTS, WHICH COMPELLED

THE INSERTION OF THE LIMITATIONS IN THE CLAIMS OF THE PATENT IN SUIT

AS A PREREQUISITE TO THEIR ALLOWANCE BY THE. PATENT OFFICE,

PEAR Hd RNA TE PORE ci EO INES ONG IBS

1 1933. K KORITTKE 1,921,085

ELECTRICAL VACUUM CLEANER

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LEWYT COMMERCIAL CLEANER

THE ACCUSED STRUCTURE HAS ITS AIR

INTAKE REMOTE FROM AND DIRECTED

AWAY FROM THE FILTER SURFACE,

NEITHER ADJACENT THERETO NOR

PARALLEL THEREWITH (R. 241)

PE CHER RNTNS e O LERNER TINT alee DE MR RI HY

IN THE

Supreme Court of the United States

Ocroser TreRM, 1950.

No. 182

LEWYT CORPORATION,

Petitioner,

vs,

HEALTH-MOR, INC, and EDWARD H. YONKERS, JR.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR

WRIT OF CERTIORARI

Max W. ZaseEt,

Benton Baker,

Attorneys for Respondents.

Howarp A. Brunpace,

Rosert L. Kann,

Of Counsel.

The Scheffer Press, Inc.—FInancial 6-2694

CHER

SII ‘athlete actrees

The Reasons Relied on For Allowance of Writ are

RRS EER ere oe

Tas_e or Casea.

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

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

The Great Atlantic & Pacifie Tea Co. v. eaten

Equipment Corp. (No. 32, October Term, 1950)........

Henry E. Jacobs v. Chas. Peckat Mfg. Co., et al., 339

U. S. 915; 94 L. Ed. 458.

—_ Corp. v. Health-Mor, Inc., et al. (CCA 7) 181

F. (2) 855, 84 F. Sup. 189

Mackay Radio & Telegraph Co. v. Radio Cae

of America (1939), 306 U. S. 86.

Chas. Peckat Mfg. Co. v. Jacobs, 178 F. (2) 7...........

IN THE

Supreme Court of the United States

Octoser Term, 1950,

No. 182

LEWYT CORPORATION,

Petitioner,

vs,

HEALTH-MOR, INC. and EDWARD H. YONKERS, JR.,

Respondents.

BRIEF IN OPPOSITION TO PETITION FOR WRIT

OF CERTIORARI.

STATEMENT.

The p-tition misstates the decision of which review

is sought. It misstates the history of both the litigation

and the patent, and the matter involved. Not one of the

questions alleged to be presented is supported in the

record. The reasons relied on for the issuance of the

writ either do not exist or are without merit.

There is no foundation for the introductory statement

under the heading of ‘‘Matter Involved’’ (top p. 3) that

‘petitioner was forced to bring this declaratory judg-

ment action by respondents’ tactics in threatening but not

suing petitioner’s customers * * *.’? Respondents had

notified only one of petitioner’s customers and had re-

ceived no response when petitioner began suit a few days

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a an

later. The second cause of action stated in the complaint

which was directed to this subject was dismissed at the

trial on motion of petitioner (R. 23).

The invention of the Yonkers patent in suit lies in a |

novel -ombination of elements providing a bagless, canister

or pail type of suction cleaner, in which a disposable

paper filter conical in form is employed in a cylindrical

container or pail. The dirt, removed by suction from the __

floor covering or other work surface, is introduced through

an air intake or nozzle into the pail below the paper

eone. This dirt is separated from the air by the whirling

action of the dirt-laden air in association with the filtering

action of the paper cone, and thereupon accumulated in

the bottom of the pail (R. 346). }

This cleaner has important advantages over prior art

cleaners. In addition to performing an efficient and econ-

omical cleaning operation and dispensing with the bother-

some bag of prior art cleaners, which had to be cleaned

frequently (R. 248), the structure is such that the suction-

generating unit and other parts including a removable

top or cover are arranged as a removable group, which

serves to maintain the filter in operative position.

ES or

The arrangement makes possible, upon removal of the

cover, the convenient emptying into a rubbish container

of the accumulated dirt and used paper filter from the

bottom or pail portion of the machine (See illustrations

of Respondent Health-Mor’s Filter Queen made under this

patent. Def. Exh. 19, 20, R. 244, 245; also Petitioner’s

infringing Lewyt, Def. Exh. 3, R. 219-230). This was

impossible with the older types of cleaners.

This type cleaner was first commercially introduced

under the name Filter Queen in 1940 (R. 248, 129) by Re-

spondent Health-Mor operating under an exclusive license

;

conn

SELLE TIRE IESE SSL LORY TEENS IRRA BE a SLE E SENG TONERS SI ET ATS NE Tia ge en me

from the patentee Yonkers. There had not previously

been anything like it on the market (R. 248). As stated

in the Memorandum of the District Court (R. 248; see also

Findings of Fact 2, 3, R. 262):

‘It manufactured and sold a large number of the

devices until the War stopped its operations in 1941.

After the War it resumed operations and had sold,

up to the time of trial, 150,000.”’

Petitioner did not introduce its Lewyt cleaner until

July 1947 (Findings of Fact 1, R. 262). This is a sub-

stantial copy of the Filter Queen, except that a cloth

cone supported by a metal frame is used instead of a per-

forated metal support for the paper cone. Upon introduc-

ing its Lewyt cleaner petitioner launched an extensive ad-

vertising campaign heralding it as ‘‘new’’ and ‘‘revolu-

tionary’’ (R. 233, 234, 237, 239).

The petition erroneously represents the status of the

claims of the Yonkers patent in suit (R. 216, 217). Claims

2, 4 and 7 are directed chiefly to that part of the struc-

ture in which the dirt is removed from the dirt-laden air.

This includes a housing, a conical air filter forming a cover

for the housing, a perforated member for supporting the

filter, an intake through which dirt-laden air is introduced

into the housing, and means for guiding or discharging

the dirt-laden air in a direction generally adjacent to and

parallel with the filter surface. The presence of each of

these elements is apparent in the patent drawing (R.

214), petitioner’s illustration of its Lewyt (R. 231), and

respondent’s illustration of its Filter Queen (R. 232).

Claim 8 is directed to a different feature of the in-

vention, namely, an arrangement of the parts in which

the suction generating means and the filter support are

grouped to form a cover unit and support the filter ele-

ment against collapse, and are removable as a unit to

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soil were

enable the convenient emptying of the bottom or pail por-

tion of the machine. This is illustrated in petitioner’s cir-

cular (R. 224, 225), and respondent’s circular (R. 245

next to last page).

Referring to the proceedings in the Patent Office in

relation to claim 2 of the patent the petitioner erro-

neously states (bottom p. 3) that ‘‘in this claim the dis-

tance or relationship between the nozzle and the filter was

clearly limited to one in which the nozzle was ‘adjacent

to and parallel with the surface’.’’ The language of the

claim is ‘‘said intake connection terminating in a nozzle

for discharging’ dirt-laden air adjacent to and parallel

with the filter surface’’ (R. 216).

This limitation was clearly recognized by the Court of

Appeals and given effect by it in applying claim 2 to pe-

titioner’s infringing machine (R. 348, 2nd and 3rd pars.)*.

This is also true as to the somewhat different limitations

of claims 4 and 7. The District Court made no finding to

the contrary. The Court of Appeals properly held (R. 348,

2nd par.) that the claims were not limited to a particular

form of nozzle as petitioner had contended and the Dis-

trict Court seemed to think (Finding of Fact 13). Claims

in the application containing such a limitation were

amended with the approval of the Examiner to eliminate

it (R. 156, 179, 186, 188, 193).

The Court of Appeals in holding (R. 346, 348) the as-

serted claims valid and infringed merely gave effect to

their express language consistently with the disclosure and

teaching of the patent. There was no resort to the doc-

trine of eyuvalents or enlargement of scope of the claims

nor any necessity therefor.

1 Emphasis supplied.

* Lewyt Corp. v. Health-Mor, Inc. et al., 181 F. (2d) 855

(CCA 7).

sti Midst

The Findings of Fact of the District Court (R. 262)

insofar as they relate to the questions of validity and

infringement, with the exception of Finding 15 which is

predicated on a demonstration of petitioner’s machine in

open court, were based wholly on documentary evidence

consisting of three prior art patents (R. 344) which had

been thoroughly considered and distinguished in the Pat-

ent Office during the pendency of the application upon

which the patent in suit issued (Pl. Exh. 1, R. 153, 161,

192; R. 345, last par.). The same documentary evidence

on which the Findings of Fact are based was before

Patent Office, District Court and Court of Appeals. Find-

ing 15, which relates to the question of infringement only,

requires no comment beyond what was said by the Court

of Appeals (R. 349, last par.). Jn no instance did those

findings depend on conflicting testimony of experts or

others.

The Questions Presented are Not Supported in the Record.

Question 1 assumes a state of facts which does not

exist. No critical question of estoppel by file history

limitation can be predicated upon the record in this case.

Petitioner’s structure does not lack, but on the contrary

includes the so-called ‘‘distinguishing feature’’ present in

the patent claims. The Court of Appeals, after carefully

considering each of the prior art patents upon which pe-

titioner relied (R. 346), as well as the infringing machine,

properly so held, saying ‘‘this is so clear as to defy con-

tradiction.’’ It is obvious from the language of its opinion

(R. 348, 349) that the Court of Appeals in so holding gave

full effect to those limitations of the claims which were

introduced by amendment and were not present in the

cancelled claims cited by petitioner (R. 349, top).

ao

Petitioner makes an obvious misstatement in saying

(p. 4) that its intake discharges the air ‘fas far away

from the filter surface as possible.’’ See Fig. 4 of Kirby

Patent (R. 290), which shows a nozzle at the outer peri-

phery, and which petitioner might have followed but did

not.

That the air intake in petitioner’s ‘‘Lewyt’’ cleaner

does for every intent and purpose terminate ‘“‘in a nozzle

for discharging dirt-laden air adjacent to and parallel with

the filter surface’’ within the meaning of claim 2, is ap- |

parent upon a mere inspection of petitioner’s infringing

device and the illustrations of it in the record taken from

petitioner’s advertising (Def. Exh. 3A, R. 228; Def. Exh.

4, R. 231; Def. Exh. 3, R. 219-230; Pl. Exh. 27, R. 70).

This is also true as to ‘‘means for guiding the incoming

dirt-laden air so that the air takes a generally circular

path generally parallel to the filter surface and adjacent

thereto’’ as required in claims 4 and 7 (See testimony of

witness Yeomans, R. 109-113; Def. Exh. 13, identical with

Pl. Exh. 26, R. 241; also testimony of witness Yonkers, |

R. 80, 87). The fact that the intake is secured to the

wall of the housing is unimportant and not in issue.

The comparison of claim 2 of the patent with rejected

claims 9 and 10 made in the chart appended to petitioner’s

brief is quite superficial and meaningless. Claims 9 and 10

were broad claims considered in the early stages of the

ease. There is no occasion for resorting to claims of such

scope in applying the claims in suit to petitioner’s struc-

ture.

The drawings appended to petitioner’s brief do not

alone fairly depict the structures to which they relate

for the purposes of this case. The Court of Appeals prop-

erly held that the disclosures of the prior art patents

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neither separately nor collectively meet the asserted claims

nor affect their application to petitioner’s cleaner, which

petitioner widely advertised as ‘‘new’’ and ‘‘revolution-

ary.”’

Question 2, in the circumstances which have been

pointed out, is a moot question.

Question 3 assumes a condition which has no basis in

the record. There can be no question on the facts in this

case involving the omission of an essential element of a

patent claim.

The language of the Court of Appeals upon which Ques-

tion 3 is predicated was plainly directed to the combina-

tion of claims 2, 4 and 7, and cannot in the circumstances

be considered as applicable to the different and inde-

pendently novel combination of claim 8. The form or ar-

rangement of air intake to which the limitation of claims

2, 4 and 7 is directed, while it may be embodied in the

structure to which claim 8 relates, is not, and could not

properly be, an element or essential of this claim. The

function of the air intake does not pertain to the subject-

matter defined in the claim. It could not be a part of the

removable group on the one hand and its co-operation with

that group or any constituent thereof or any other ele-

ment of the claim would be immaterial insofar as the

arrangement or purposes of the claim are concerned.

The District Court did not separately apply to claim

8 the prior art patents upon which petitioner relied.

There is no showing, no evidence, that they meet it and

they plainly do not. There is nothing inconsistent with

the decisions of this Court in the decision of the Court

of Appeals holding it valid.

Question 4 also is based upon a false premise, already

noted (p. 5, above) and more fully to be discussed (p.

rR SENT

pa

9). There was no critical conflict of testimony. More-

over, the so-called ‘‘scientific’’ demonstrations were mere

demonstrations of normal operation of the machine in-

volved and in evidence in the case, such as are performed

regularly by thousands of users.

The Reasons Relied on For Allowance of Writ are Insuffi-

cient.

The first reason is not substantial. It amounts to this:

That one is entitled to the writ because he is a lone in-

fringer; in other words, because everyone but him re-

spects the patent. The Court will take judicial notice

that there are a large number of manufacturers in the

vacuum cleaner industry. It is implicit in petitioner’s

statement and supporting affidavits that petitioner is the

only one of those manufacturers who has not respected the

patent in suit.

The cireumstances presented here are quite different

from those presented in the cases cited by petitioner and

in which the Court granted the writ. The situation is

utterly unlike that which existed in the Mackay case.

That case, as the Court noted (306 U. S. 89), involved

world-wide public radio communication, a matter of great

public importance.

There has been no showing that the vacuum cleaner

industry is concentrated in the Seventh Circuit or that

respondents, by virtue of their ownership of the petent in

suit or otherwise, either dominate or threaten to dom-

inate the industry or confine litigation involving the patent

to the Seventh Circuit.

The secor] reason misrepresents the record in the case.

The decision of the Court of Appeals does not conflict

with the cited decisions of this Court. The Court of

IPA ES GO TATE OE IS ROI Gy CY MEY ET TOR BS SRNR AT AM

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Appeals, as has been shown in our discussion of Question

2, did not read claims 2, 4 and 7 to cover what was elim-

inated from the application upon which the patent in suit,

issued, but fairly and properly applied the express lan-

guage of those claims as embodied in the patent grant to

petitioner’s structure and held that that structure re-

sponded to that language. There was no revival of can-

celled claims, no enlargement or expansion of claims by

resort to equivalents.

As to claim 8, we have already pointed out in our dis-

cussion of Question 3, that the form or position of the air

intake in relation to the conical filter is not an essential

element of the combination to which this claim is di-

rected. There is no similarity between the instant case

and the A ¢ P case, where the point is made that the prior

art meets the claim unless the omitted element be read

into it. There is nothing in the record here to support

such a contention.

The third reason which corresponds to Question 4 does

not exist. The Court of Appeals merely acted consistently

with the generally accepted procedure in cases where the

finding of invalidity is based on documentary evidence

such as prior art patents, citing its own previous deci-

sion in Chas. Peckat Mfg. Co. v. Jacobs, 178 F(2) 794,

in which this Court denied certiorari on March 13, 1950.

See Docket No. 607, Henry E. Jacobs v. Chas. Peckat Mfg.

Co., et al., 339 U. S. 915; 94 L. Ed. 458. There is no

conflict with decisions of this Court as to the weight to be

accorded Findings of Fact of a trial court. Neither of the

eases cited by petitioner is in point. In its opinion in the

Peckat case the Court of Appeals expressly recognized

the principle of the Graver case.

_

The fourth reason is without merit. The record in this

case reflects no misunderstanding or confusion with re-

spect to the question of file wrapper estoppel requiring

consideration by this Court.

Respondents suggest that the petition does not present

substantial grounds for the granting of the writ and re-

quest that it be denied.

Respectfully submitted,

Max W. Zane,

Benton Baker,

Attorneys for Respondents.

Howarp A. BrunpDAGE,

Rosert L. Kany,

Of Counsel.

PRES SRO EER 2 GENES TIN, gE MOTE GEILE PSY SEIT ORE TS TS FIER NR, OSE BLES REL LOE BRE

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