Petition for a Writ of Certiorari — Scott v. Harman

INDEX.

Petition for Writ of Certiorari.

NI ht ee he ok onl ae eh ys aut ig 2

nerdy ad cand Ma eee a ve 2

I Cs tia hace pin 'un ae Pee eames 2

I St leg dig wah s Bee e ERK On TEU RN 3

re ee nt fren ee ARTE Rea COS 3

Specification of errors to be urged.................. 5

Reasons for granting the writ...................... 5

Brief in Support of Writ.

EE a ne ee ro ee ey ae ee 6

eer Oe MAUD, ne occ acy coat nk de ven es 7

NR ee tS SL Por ee ee eet SA, eh eR 7

RR re ata eben hipaa Ich gh aie meee, A Me 14

Authorities Cited.

Cases.

American Tobacco Co. v. Streat, 83 F. 700, 704 ....... 11

A. & P. Tea Company v. Supermarket Corporation, 340

SS aS ee Re Se eee oe Oe Se Cea 6 DO Se SA Bee

et.

Burt v. Ritchie & Co., 251 F. 909 at 918, D.C. E.D. N.Y. 12

Carbice Corporation of America v. American Patents _

Development Corporation, 283 U. S. 27.......... 13°

Cuno Engineering Corporation v. Automatic Devices

Corporation, 314 U. S. 84 at 91.................. 9

In re Hodler, 73 F. (2d) 507,C.C. P. A............... 12

In re Hughes, 48 F. (2d) 478, C.C. P. A... 12

In re Smith, 36 F. (2d) 302,C.C. P. A................ 12

Lincoln Engineering Co. v. Stewart-Warner Corpora-

oo ree 8

Morgan Envelope Co. v. Albany Perforated Wrapper

Paper Co., 152 U.S. 425, 431... .. 10, 11

Motion Picture Patents Co. v. Universal Film Manufac-

turing Co., 243 U.S. 502 at 512... _

Toledo Pressed Steel Co. v. Standard Parts, Inc., 307

=H

RE SEES ST AE RD st

IN THE

Supreme Court of the United States

OCTOBER TERM, 1951

LAWRENCE B. SCOTT,

Petitioner,

VS.

HAL W. HARMAN,

Respondent.

PETITION FOR WRIT OF CERTIORARI

Petitioner, Lawrence B. Scott, prays that a writ of

certiorari issue to review the judgment of the Court of

Appeals for the Sixth Cireuit (R. 509) affirming the deci-

sion of the United States District Court for the Southern

District of Ohio, Eastern Division (R. 456).

OPINIONS BELOW

The findings of fact and conclusions of law and opinion

of the District Court appear in the record on pages 456 to

471, The opinion of the Court of Appeals appears in the

record on pages 509 and 510.

JURISDICTION

The jurisdiction of this Court is invoked under ec. 646,

62 Stat. 928, 28 U. S. C. A. 1254, of the Act of June 25,

1948. The judgment of the Court of Appeals, which the

petitioner here seeks reviewed, is dated February 18, 1952.

The petition is, therefore, timely.

QUESTIONS PRESENTED

1. In the repair of crackfastings, did it amount to inven-

tion to use malleable inserts applied in drilled openings

across the cracks to hold the parts together when prior art

devices showed the use of similar metal inserts, malleable

and non-malleable, applied in drilled openings across

cracks or joints as fastening devices for holding the sepa-

rated parts together?

2. After the decision of this Court in A. & P. Tea Com-

pany v. Supermarket Corporation, 340 U. S. 147, should

the Court of Appeals of the Sixth Circuit have affirmed the

District Court’s decision in this case, when the standard

of invention was no higher than that of the invention

involved in said A. & P. case?

3. May a patentee claim a combination of a device, and

the material upon which the device works, or to which it

is applied?

ARNE BPE RATS eS IER ESA RRR TS IS OGM TERN CE EOI PO ORE ID MMPS OTOL Gp

STATUTE INVOLVED

The questions here presented involve the construction

of the patent law and more particularly one section thereof,

R. S. 4886, 35 U. S. C. 31, the relevant portions thereof

being as follows:

“R. S. 4886—Inventions Patentable.

“Any person who has invented * * ° any new

and useful art, machine, or composition of matter, or

any new and useful improvement thereof °

not patented or described in any printed publication i in

this or any foreign country , a,

obtain a patent therefor.”

STATEMENT

This is an action involving the alleged infringement of

United States Letters Patent No. 2,142,896, issued to Hal

W. Harman, for a thin cup-shaped metal fastening device

for repairing cracks in castings (R. 398, 23, Figs. 5 and 6).

The charge of infringement is based upon the use by the

defendant of a substantially square bar fastening element

also used for repairing cracks in castings, and illustrated

in the record at page 406, 254, Figs. 1 to 4, inclusive. In

the complaint as originally filed, plaintiff sued upon three

patents, Nos. 2,011,484 (P. Ex. 1, R. 395, 22,), 2,142,896

(P. Ex. 2, R. 398, 23,) and 2,198,167 (P. Ex. 3, R. 402, 23,),

involving in all some sixteen claims. Plaintiff was forced,

however, in answer to defendant’s motion for a bill of

particulars (R. 4) to withdraw two of said patents, Nos.

2,011,484 (P. Ex. 1) and 2,198,167 (P. Ex. 3), and to limit

his charge of infringement as to the six claims of the

remaining patent now in suit, No. 2,142,896 (P. Ex. 2), to

claims 1 and 2 which read as follows:

“1, An improved locking fastener comprising a body

of substantially thin metal composed of bulged and

TY APY OE

4

connected restricted portions, said bulged portions

being expansible by pressure, in combination with two

separated parts of stock across which is drilled an

opening ahventially conforming in size and shape to

said fastener, and into which opening said fastener is

inserted and compressed.

“2. An improved locking fastener comprising a body

of substantially thin metal composed of bulged and

connected restricted portions, said bulged portions

being expansible by pressure and adapted to be flat-

tened out to increase the overall dimensions of the

bulged and restricted portions, in combination with

two separate parts of stock across which is drilled an

opening slightly larger than the fastener and into

which the fastener is inserted and expanded.”

The use of metal fasteners applied across cracks or sepa-

rated parts of materials, for holding the parts together, is

old as shown in the prior art patents to Pierce (R. 418,

248,), Cordes (R. 409, 240), Richardson (R., 422, 248),

Darrach (R., 436 248,), Roberts (R., 446, 248), Buckner

(R., 416, 248), and Peckover (R., 440, 248). These prior

art devices meet all the elements of claims 1 and 2 in

suit in that they are made of metal, having bulged or

enlarged portions connected by restricted portions, and

are designed to be placed in drilled or recessed openings

across two separated parts of stock, and are capable of

being locked in place by pressure or force applied to the

fastener.

In addition to being invalid in view of the prior art,

claims 1 and 2 are also invalid in that they claim the

fastening device in combination with the material upon

which the fastening device is used.

SPECIFICATION OF ERRORS TO BE URGED

The Court of Appeals erred:

1. In affirming the decision of the District Court holding

that the fastening device of claims 1 and 2 amounted to

invention.

2. In not holding that the claimed combination consists

essentially of old elements which do not demonstrate such

a degree of novelty as to constitute patentable invention

over the prior art in the light of the strict standards laid

down by this Court in Cuno Engineering v. Automatic

Devices Corporation, 314 U. S. 84 at 91, and more recently

in A. & P. Tea Company v. Supermarket Corporation, 340

U. S. 147 at 153.

3. In not holding that claims 1 and 2 of the patent in suit

are invalid because they claim the fastening device in com-

bination with the material upon which the fastener is

used.

REASONS FOR GRANTING THE WRIT

1. The decision of the Court of Appeals affirming the

District Court is in direct conflict with the applicable deci-

sions of this Court.

2. The decisions of the Courts below affect a large por-

tion of the casting repair industry, and will result in ex-

tensive litigation in other Circuits against users of devices

similar to defendant’s.

Wherefore, it is respectfully submitted that this peti-

tion should be granted.

Lawrence B. Scott

By JOHN J. MAHONEY

Attorney for Petitioner

IN THE

Supreme Court of the United States

OCTOBER TERM, 1951

LAWRENCE B. SCOTT,

Petitioner,

vs.

HAL W. HARMAN,

Respondent.

BRIEF IN SUPPORT OF WRIT OF CERTIORARI

STATEMENT

The opinion below, jurisdiction, the questions presented,

the statute involved, and the specifications of errors are

stated in the petition.

The patent involved purports to cover a thin cup-shaped

metal stamping (R. 398, P. Ex. 2, Figs. 5 and 6), for use as

a fastening device in the repair of cracked castings. In the

use of this device, overlapping holes are first drilled across

and lengthwise of the crack in the casting (R. 398, Fig. 1.).

The cup-shaped fastener, which is smaller than the holes,

is inserted into the drilled opening and hammered down flat

(R. 398, Figs. 2, 3 and 4) until it conforms to the outline of

the drilled openings. This acts to lock the metal parts on

sed

ae

7

opposite sides of the crack preventing it from opening or

expanding.

Defendant’s device, which is alleged to infringe claims

1 and 2 of the patent in suit, is illustrated in Scott patent

No. 2, 195, 741 (D. Ex. K, R. 406, 254 Figs. 1 to 4). It is

a substantially square bar with undulating or irregular

longitudinal sides which hold it in locked position when

forced into the grooves having a complemental outline,

and extending across or lengthwise of a crack in a casting.

SUMMARY OF ARGUMENT

1. The Harman patent in suit does not involve invention

in view of prior art.

2. Claims 1 and 2 of the Harman patent in suit are

invalid, because one may not patent a combination of a

device, and the material upon which the device works.

ARGUMENT

1. The Harman patent in suit does not involve invention.

All that Harman did was to drill holes in a casting across

or lengthwise of a crack and insert a metal link therein to

hold the part together. The idea of holding separated

metal parts together by use of a metal link, or bar, inserted

in a recess across a crack or joint is shown in a number of

prior art patents. Some of such patents are as follows:

Pierce (R. 418, 248), Richardson (R. 422, 248), Darrach

(R., 436, 248), Roberts (R. 446, 248), and Peekover (R.

440, 248).

In order to strengthen its holding that the claims in suit

were valid, the District Court found various faults with

GE creer thes re en ast Ak PA RA 8 EAN CA REM OT IN DOP - ti

.

8

these prior art references. It could not deny, however, that

the said patents show the basic concept of the claims in

suit, consisting of a metal link inserted or forced into a

groove or recess across a crack for holding separated parts

together.

In addition to the said prior art patents, various other

methods of repairing cracks were known prior to Harman.

The District Court stated in his opinion (R. 459) as follows:

“That castings are subject to cracking is shown by

the proof in the case and is, as well, a matter of com-

mon knowledge. Before Harman, there were several

processes of repair used. One common process was by

welding. Another was a ‘shrink link’.”

Harman, the patentee, on page 105 of the record, stated

that the “shrink link” method consisted of taking a metal

link, heating it, and forcing it into a drilled opening or

recess across a crack. Upon cooling, the link shrinks and

tends to pull the separated parts together. Thus, the ad-

mitted prior art “shrink link” met the basie elements of

claims 1 and 2 in that it consisted of a metal link forced

into a groove across a cracked casting to hold the separated

parts together.

To the extent that the combination claimed in these

claims may be merely combinations of old elements, it is

clear that to be patentable, they must demonstrate some-

thing new and useful, either in result or the method of its

achievement.

In Lincoln Engineering Company v. Stewart-Warner

Corporation, 303 U. S. 545, 549, this Court held:

“The mere aggregation of a number of old parts or

elements which, in the aggregation, perform or pro-

duce no new or different function or operation than

that theretofore performed or produced by them, is

not patentable invention.”

g

9

To the same effect is Toledo Pressed Steel Co. v. Stand-

ard Parts Inc., 307 U. S. 350.

It is submitted, therefore, that the claimed combinations

consist essentially of old elements, and that the combina-

tions do not demonstrate such a degree of novelty as to

constitute patentable invention over the prior art, in the

light of the strict standards laid down by this Court in

Cuno Engineering Corporation v. Automatic Devices Cor-

poration, 314 U. S. 84 at 91, and more recently in A. & P.

Tea Company v. Supermarket Corporation, 340 U. S. 147 at

153. The fact that there may be some improvement in one

or more of the old elements does not make the old combina-

tion repatentable as such (Bassick Manufacturing Com-

| pany v. Hollingshead Company, 298 U. S. 415).

If the Court of Appeals, after having been reversed in

the A. & P. case, had followed this Court’s instructions in

that case, by scrutinizing the combination claims 1 and 2

of the patent in suit, it is submitted that it could not have

affirmed the decision of the District Court. In this case, as

in the A. & P. case, the combination claims consist merely

in an assembly of old elements, with no change in their

respective functions. The Harman patent in suit has

merely brought together segments of prior art and claims

them in congregation as a monopoly.

2. In addition to being invalid in view of the prior art,

claims 1 and 2 are invalid in that they claim the fastener

device in combination with the material upon which the

fastener device is used. If the patentee made any inven-

tion, it was in the fastener per se which the patentee

describes (R. 399) on page 1 of the patent in suit, column

1, lines 46 to 52 as follows:

“Referring more particularly to the drawing, and

for the present to Figures 5 and 6, 12 designates gener-

10

ally one of the improved locking fastenings which is

made up of appropriate metal of desired gauge or

thickness, and includes a number of bulged or enlarged

—- parts separated by diminishing connecting

necks.”

They are unitary structures that may be sold in quan-

tities like nails, screws or rivets. They are punched or

stamped out of flat metal to the form shown in Figures 5

and 6 of the drawings. These facts are confirmed by state-

ments in the specification of the patent (R. 399), page 1,

column 2, lines 11 to 14. as follows:

“In other words these fastenings are commercial

units which are punched or stamped out of flat metal

to the form shown in Figures 5and6 * * *.”

In claiming this device, the patentee should not have

included as elements of the combination the two separated

parts of stock with which his device is used. In doing this

he made the claim invalid.

That the material upon which the fastener device works

is made an element of the combination claims is confirmed

by the decision of the District Court who in analyzing the

claims in suit said (R. 467):

“Tt includes a metal ‘Fastening’ or lock having lobes

or, enlarged or bulged portions connected by restricted

portions. The other elements include two separated

parts of stock which may be the parts on opposite

sides of the crack in a casting.”

One cannot have a patent for a combination of a device

and the materials upon which the device works. This

principle of law was enunciated in Morgan Envelope Com-

pany v. Albany Perforated Wrapper Paper Company, 152

U. S. 425, 431, in which this Court held as follows:

“The first defense raises the question whether, when

a machine is designed to manufacture, distribute, or

11

serve out to users a certain article, the article so dealt

with can be said to be a part of the combination of

which the machine itself is another part. If this be so,

then it would seem to follow that the log which is sawn

in the mill; the wheat which is ground by the rollers;

the pin which is produced by the patented machine;

the paper which is folded and delivered by the print-

ing press, may be claimed as an element of a combina-

tion of which the mechanism doing the work is another

element.”

The Court abstained from expressing an opinion on

whether the paper roll could enter into a patented combina-

tion with the holder for it. But it intimated that it could

not. It was not necessary for it to decide the case on valid-

ity because the facts of the case failed to sustain the charge

of infringement.

A number of the United States Courts of Appeals and

District Courts have interpreted the language of Mr. Jus-

tice Brown at page 431 in Morgan Envelope v. Albany

Paper Co., 152 U. 8. 425, as prohibiting the inclusion in a

patent combination of a device, the material upon which

the device works or operates.

In American Tobacco Company v. Streat, 83 F. 700, 704

(C. C. A. 4), the Court held that a leaf of tobacco could not

be considered an element of the patent claim, stating as

follows:

“In our opinion, the leaf of tobacco called the ‘sec-

ond binder’ is not the mechanical equivalent of the

rolling apron described in the Streat patent, * * *.

We do not think that an article manufactured in a

machine in the manner and for the purposes con-

templated when the machine itself was made can be

held to be a part of the machine which so produces it.”

(Citing Morgan v. Albany, 152 U. S. 425, case as au-

thority for its holding.)

12

In Union Paper Bag Machine Company v. Advance Bag

Company, 194 F. 126 (C. C. A. 6), it was attempted to use

a paper blank upon which the machine worked as an ele-

ment of the combination but Judge Warrington, speaking

for the Court, held as follows at page 139:

“Counsel for complainant rightly concede that the

use of the tang in question in place of the lower central

gripper does not amount to the substitution of a

mechanical equivalent; for that would be to treat the

paper made into diamond folds by the machine, as an

element of the patent. See Morgan Envelope Co. v.

Albany Paper Co., 152 U. S. 425, and language of

Justice Brown at page 431, 14 Sup. Ct. 627, 38 L. Ed.

500, although obiter; American Tobacco Co. v. Streat,

83 Fed. 700, 705, 28 C. C. A. 18 (C. C. A. 4th Cir.).”

In re Hughes, 49 F. (2d) 478, C. C. P. A., the Court

held as follows:

“Appellant’s claims involve several elements. Tak-

ing, for illustration, said claim 12, it will be observed

that an attempted combination is made of the machine

and the material or dye solvent used therewith. We

have held in Re Smith, 36 F. (2d) 302, 17 C. C. P. A.

644, that a person may not patent a combination of a

device and the material upon which the device works,

nor limit other persons from the use of similar material

by claiming a device patent. If the material which

appellant uses here for printing is new to tue art, then

such material may be patentable; but he may not take

advantage of this in applying for a patent upon a

mechanism to apply it.”

To the same effect are Burt v. Ritchie & Co., 251 F. 909

at 918, D. C. E. D. N. Y.; In re Smith, 36 F. (2d) 302,

C. C. P. A. 1929; In re Hodler, 73 F. (2d) 507, C. C. P. A.

In Motion Picture Patents Company v. Universal Film

Manufacturing Company, 243 U. S. 502 at 512, this Court

made it clear that materials with which or on which a

EO ig ISS OO : <i DESEO OAL PLC APSE

13

patented device works are no part of the combination

which produces the patented result, stating as follows:

“Plainly, this language of the statute and the estab-

lished rules to which we have referred restrict the

patent granted on a machine, such as we have in this

case, to the mechanism described in the patent as

necessary to produce the described results. It is not

concerned with and has nothing to do with the ma-

terials with which or on which the machine operates.

The grant is of the exclusive right to use the mechanism

to produce the result with any appropriate material,

and the materials with which the machine is operated

are no part of the patented machine or of the combina-

tion which produces the patented result.”

In the “Dry Ice” case, Carbice Corporation of America

v. American Patents Development Corporation, 283 U. S.

27, a patent (No. 1,595,426) on a shipping package was

involved. Claim 6 of the patent was for a transportation

package including in the combination, material to be

refrigerated, and frozen carbon dioxide as a refrigerant.

The claim made the carbon dioxide an element of the

patented combination but this Court refused to give effect

to the patent, and virtually held the patent invalid by

refusing to hold the defendant guilty of contributory in-

fringement. An attempt was made to distinguish the case

from prior decided cases but this attempt met with failure

as this Court said:

“Plaintiffs seek to distinguish the Motion Picture

Patents Co. Case from that at bar, by pointing out

that there, as in Henry v. A. B. Dick Co. 224 U. S. 1,

56 L. ed. 645, 32 S. Ct. 364, Ann. Cas. 1913D, 880, the

unpatented supplies, over which the licensor sought

to extend its monopoly, were merely used in the pat-

ented machines, whereas here the unpatented refriger-

ant is one of the necessary elements of the patented

product. And to distinguish the ease at bar from

Bitte ecncrenerne sence renee RINE SRT OS A Ee RL NTE

14

Morgan Envelope Co. v. Albany Perforated Wrapping

Paper Co. 152 U. S. 425, 433, 38 L. ed. 500, 503, 14

S. Ct. 627, it is pointed out that the Carbice Corpora-

tion is furnishing not a passive element in the combi-

nation, like the paper in the Morgan Envelope Co.

Case fixture, but the dynamic element which produces

refrigeration. These distinctions are without legal sig-

nificance.”

The Court thereupon denied the patentee relief even

though the refrigerant material contained in the package

constituted an element of the combination claim.

It is submitted that the Courts below should have held

claims 1 and 2 in suit invalid because they claim the

fastener device in combination with the material upon

which the fastener device is used. This may not be done.

It is submitted, therefore, that these claims are invalid.

CONCLUSION

Wherefore, it is respectfully submitted that this petition

for writ of certiorari should be granted.

Respectfully submitted,

JOHN J. MAHONEY,

Attorney for Petitioner.

CORBETT, MAHONEY & MILLER,

THOMAS M. DOUGHERTY,

Of Counsel

ae 713.

| Supreme Court of the tite Sus

OCTOBER TERM, 1951.

LAWRENCE B. SCOTT,

. Petitioner,

vs.

HAL W. HARMAN,

Respondent.

BRIEF IN OPPOSITION TO PETITION FOR WRIT oF

CERTIORARI |

WAYNE 8. GERBER,

- AUBREY A. WENDT,

60 W. Bra ly Colin Ohi

INDEX.

Counter-statement of questions presented

Statement .

History of patent in suit

Patent directed to a lock for repairing broken

castings

Petitioner’s lock is for repairing broken castings

Petitioner learned of the invention in confidence

Petitioner went into business for himself

Utility of the invention

Summary of argument

Argument... Ale Deh ae Sette

1. Petition for writ of certiorari should be dis-

missed

. Claims define patentable subject wandter

3. Prior art _.. oe re

Pierce

Darrah Saal T arent tr ee

ER ly Ss ot eid pom aS

ins casn, ROU OE ee

4. Claims of the patent are fox a new combination

of elements ' Lk Gee eee ee

o. A & P and Cuno cases not applicable

6. Claims not directed to a machine and its product

Conclusion

bo

Authorities Cited.

A. & P. Tea Company v. Supermarket Corporation, 340

ME en Wy oe bh. 5 de Ses ek eae Pekes a

Barbed Wire Patent, 143 U.S. 275 . Le re

Continental Paper Bag Co. v. Eastern Paper Bag Co.,

ME EINE Siig 5 cS ori ese ee .. 2

Cuno Engineering Corp. v. Automatic Devices Corp.,

EIS oe Nc oi Gy Meee ees Oks & 22

Diamond Rubber Co. v. Consolidated Rubber Tire Co.,

220 U.S. 428...... eGR Le eee era erat Ore 19, 24

General Talking Pictures Corp. v. Western Electric Co.,

MN MS peg ad's ee ik when hoylo oe oS 4s cewaw Aw 13

Goodyear Tire and Rubber Co. v. Ray-O-Vac Company,

IE hig FL WS Sh yada ea silh came dct 19

Hamilton-Brown Shoe Co. v. Wolf Brothers & Co., 240

I us OG arnt y pais Sh ee eat) see Cac) 13

Houston Oil Co. v. Goodrich, 245 U.S. 440... . #B

Keller et al. v. Adams-Campbell Company, Inc., 264 U.

MME MOS ee aero a ueare ee enous owns . 18

Keystone Manufacturing Co. v. Adams, 151 U. S. 139.

RAE AEH ink KON OE eye one Es CEL 21, 24

Layne-Bowler Corp. v. Western Well Works, 261 U. S.

a Se RC ea eee Se

Magnum Import Co. v. Coty, 262 U. S. 159 ee 12

Metropolitan Device Corp. v. Cleveland Electric Ilumi-

mares Ce. OF. (38), 477... . 21

Morgan Envelope Co. v. Albany Perforated Wrapper

Paper Co., 152 U. S. 425 Deters eee sa see 23

Parks v. Booth, 102 U.S. 96........... dy 21, 24

ii

EOI AER POE NS IE PL PRTRD APOE RHE ENR ENTREES CREE NT BSCE TT EMRE ENE EY —

IN THE

Supreme Court of the United States

OCTOBER TERM, 1951.

No. 713.

LAWRENCE B. SCOTT,

Petitioner,

Vs.

HAL W. HARMAN,

Respondent.

BRIEF IN OPPOSITION TO PETITION FOR WRIT OF

CERTIORARI.

In response to the petition for writ of certiorari to the

United States Court of Appeals for the Sixth Cireuit filed

herein, the respondent, Hal W. Harman, by. his attorneys,

respectfully requests that the petition be dismissed.

COUNTER-STATEMENT OF QUESTIONS

PRESENTED.

1. In an ordinary patent ease, with the usual issues of

invention, construction of claims and infringement, and

involving merely an interlocutory order, will this court

grant a writ of certiorari to review the concurrent findings

of the lower courts on such order?

2. Where there are concurrent findings of the lower

courts that the claims in issue are valid in law, and that no

one prior to the patentee-respondent had conceived of a

combination which would give the patentee’s result, that

the patentee in suit, if not indeed a basic one, at least is

one of high rank (R., 461, 509, 510), will this court. re-

view the decision in the absence of any showing in the

record that such findings are clearly erroneous?

STATEMENT.

History of Patent in Suit.

Petitioner, in his brief, states the respondent was forced,

in answer to a motion for a bill of particulars, to withdraw

two of said patents (Exhibit 1 and Exhibit 3) from the

complaint. Respondent was not foreed to withdraw. the

patents in question because of said motion. The record

shows that the motion in question was filed August 3, 1944

(R., p. 2). The answer to the motion for a bill of particu-

lars was filed November 25, 1946 (R., p. 4). During this

period of over two years, the United States was actively

engaged in World War IT and the respondent here was

serving with the United States Navy as a civilian expert

in the salvage and repair of naval vessels through the ap-

plication and use of the locking fastener disclosed in the

&

0

patent in suit. Witnesses originally available in 1944 were

scattered by the war and not available in 1946. Having a

previous adjudication sustaining his earlier patent, No.

2,011,484 (Exhixit 1 (R., p. 5), respondent decided to pro-

eeed only on his second and later patent, No. 2,142,896

(Exhibit 2).

The patent in suit (Exhibit 2) is directed to an improve-

ment in fasteners, or what is known in the trade as locks.

The application for the patent was filed August 7, 1937 and

the patent issued January 3, 1939 having six claims al-

lowed, claims 1 and 2 of which were sued upon in the court

below.

The invention comprises a metal fastener or lock for

repairing broken castings or for joining two pieces of metal

stock (Exhibit 2). The lock is formed with lobes, which

are described as enlarged or bulged portions connected by

restricted portions. An opening is drilled in the casting

across the fissure substantially conforming in size and

shape to the lobe type lock. The shoulders on the lobes

of the lock abut the complementary shoulders in the drilled

opening. The lock is formed of ductile material and is

hammer-drawn cold in the opening to compress and expand

the lock whereby the side walls of the lock, including the

complementary shoulders, form a seal with those of the

opening. The lock is thus held in position and prevents

relative movement between the joined parts of stock (R.,

p. 467, No. 8).

The fastening or lock must have sufficient thickness or

depth so that after it is compressed or hammer-drawn cold,

it will not tear due to strains placed upon it and must be

thin enough so that it can be compressed and thereby ex-

panded transversely by hammer blows so that the shoulder

lobes intimately engage the shoulders of the drilled design

or recess (R., 467, No. 9).

BRL ert mere ered |

Baie swt ath Bip

+

There must be intimate contact of the shoulders of the

lobes and the complementary shoulders of the recess

throughout the depth of the lock so that the spreading

strains are uniform throughout the depth of the lock, since

it is desirable to restore the tensile strength at the crack

or fissure in the casting. The depth to which the lock ean

he compressed and expanded, by hammer blows, is limited.

Therefore, if the casting, to be repaired, is thicker than the

practical depth of expansion of the lock by hammer blows,

a plurality of locks are each expanded by compression in

laminated form in the recess whereby each of the shoulders

of each of the locks is expanded, throughout the depth

thereof, into intimate metallic contact with the respective

complementary shoulders of the drilled recess across the

fissure (R., p. 468, No. 10).

Petitioner’s Fastener (Lock) is for Repairing Broken |

Castings.

Petitioner, at the time of filing suit, was doing business

in repairing cracked castings under his own name and was

a party to the business conducted under the name of

“Metalock Company” and “Metalock Casting Repair Serv-

ice”, a licensee of petitioner. The petitioner has other

licensees throughout the United States who repair broken

castings and in such repairs use locks under the trade name

“Metalock”, all of which locks are manufactured by

Metalock Casting Repair Service in Columbus, Ohio (R.,

pp. 221, 222, 231).

Petitioner and his licensees are now in the business of

repairing cracked castings using the metal lock known to

the trade as “Metalock”. Examples of the locks or

fasteners petitioner made and sold are Exhibits 4, 5, 6, 7,

10,11, A and Q (R., p. 467). Petitioner’s fasteners or locks,

oe

5)

as exemplified by Exhibits 4, 5, 10 and 11 perform the same

work in substantially the same way and accomplish sub-

stantially the same result as the fasteners or lock of the

patent in suit (R., p. 470, No. 28).

Petitioner Learned of Respondent’s Invention in Confidence

and Violated That Confidence.

The petitioner, Scott, while he was employed by the re-

spondent, had certain territories in which he acted as

respondent’s agent and in which he had the right to license

others to do the work. Occasionally the petitioner came to

the El Paso shop where the respondent was using his new

lock. At the time respondent was using his invention peti-

tioner saw the respondent demonstrate it (R., p. 462).

Scott Went Into Business for Himself and Used Harman’s

Invention About One and a Half Years Before Har-

man’s Patent Issued.

Scott went into business for himself in July, 1937 and

built up a casting repair service, using locks which the

trial court held to be infringements of the patent in suit.

This patent of Harman’s was not issued until January,

1939, the application having been filed on August 7, 1937,

just about the time Scott went into business for himself

(Exhibit 2). Harman was thus at the merey of Scott since

Harman could do nothing to stop Scott’s infringement until

the patent issued. Shortly after the patent issued, Harman

notified Scott of that fact and that his use of the lock was

an infringement (R., p.5). This notice was dated February

27, 1939 and sent to Scott in San Antonio, Texas. There-

after Seott left Texas and started up in business as the

Metalock Repair Service in Columbus, Ohio (Exhibit 29).

MSEREES

6

In the meantime the United States, as of December 7, 1941,

had entered into World War II. Harman then became ac-

tively engaged with the United States Navy in the 11th

Naval District as a civilian expert in the repair of broken

castings in naval vessels through the use of his patented

lock. When Harman learned of the new activity of Scott

in Columbus, Ohio, he investigated and gathered what

evidence he could. Suit was filed in Columbus, Ohio, June

19, 1944. Harman’s counsel deemed it advisable to file the

suit then because of the six-year statute limitations (35

U.S. C., 70; R. S. 4921) governing recoveries for infringe-

ment, the patent having issued in January, 1939. How-

ever, the war activities prevented proceeding even with the

pleadings for another two years; i.e., until November,

1946 (R., pp. 2 and 4).

Utility of Invention of Patent in Suit.

The claims in suit are directed toa new product, ice, a

novel combination of elements which produce a new and

useful result. The form of the claims in the patent has the

approval of the Patent Office and the lower courts.

The present invention is particularly useful in the repair

of broken castings. Cast metal quite often cracks due to

internal stresses in the metal, and quite often castings

crack due to overheating of the same or the quick cooling

of the same after being overheated. Water-cooled engine

blocks are often cracked due to the freezing of the water

therein.

Since the advent of the forming of metal by casting, it

has been desirable to repair cracked castings. Many at-

tempts were made to make these repairs. Some broken

castings could be welded, and some could be fastened to-

RCL EE Weary SARIS LR eh Rap NR BE TARE Edy ER LE eR tt DERRY

7

gether by using a shrink link or key. Welding and shrink

key methods have limited use.

In the welding method, super-heating of the casting

would cause it to warp and in most instances this would

require re-machining of the casting after it had been re-

paired. Furthermore, since super-heating was necessary,

it was necessary to dismantle the entire machinery to re-

move the casting which had to be super-heated.

The shrink key method required a high degree of skill,

was very costly and in many cases was impractical be-

cause the shank of the link upon shrinking in the channel,

would provide a gap for the escape of fluid. Moreover,

upon shrinking of the key, high internal stresses would be

set up in the key for holding the cracked parts together

_ and in many instances the key would break.

Another method which Harman and Scott practiced was

the lacing process using studs or bolts as explained in the

Harman Patent No. 2,011,484 (Exhibit 1).

A manual (Exhibit 12) of disinterested parties to this

suit, namely, officers in the Philadelphia Navy Yard, had

this to say about the known processes and the process em-

ploying the patented locks which Scott and Harman use,

page 14:

“Cold metal repair process of the stud and key type

have been used unsuccessfully for years. After con-

siderable research, this new cold metal process was

developed.”

The “new cold metal process”, referred to, utilizes and

finds its entire success in the invention of the patent in suit,

either in the form manufactured by Harman or the form

manufactured by Scott, as is clear from the manual and

which we will diseuss more in detail later.

ee a eS

PE MEE SLE ATRIA PIS = SRR» SLOPRL ES ERE PERE RAT EMIS OEE MONE

8

Mr. Harman, who had had wide experience in the repair

of castings, testified as follows (R., 104-105):

“* * * Welding is not satisfactory in many cases

and in most cases I am speaking of fusion welding.

Fusion welding is the actual melting of cast iron and

putting it in other cast iron and should not be con-

fused with bronze welding and other kinds. I am

talking about fusion cast-iron welding, which is ac-

tually cast-iron welding. Now, cast-iron because it

must be preheated and brought to relatively high tem-

peratures and cooled slowly after welding the high

heat over the entire casting will produce a_ lot ‘of

warpage and the casting will have to be machined

afterwards to restore it to use. In many cases all that

expense is gone to and the casting only lasts a short

while after it is welded and it is broken again due to

stresses left in from the welding. It would prove too

expensive in most instances to attempt reclamation of

castings along those lines. There was a need for a

simpler way of reclaiming castings, a way that would

be quicker, more sure of results, and that is what |

was trying at the time this invention came out.

Q. Now with respect to the shrink link. A. The

shrink link is a link that is put across the break in the

casting. It could be in the form of a T. Cut a channel

this way. Sometimes it has a straight T here like

that and the erack would be here. They make a link

that is shorter than this channel. The link has the T

in it and they hit and expand that link until its length

will allow it to drop into the channel. The link then

shrinks as it cools and draws the erack together. In

doing so, it sets the original stress in that casting that

broke it, and it isn’t possible for anyone to put in a

series of those links and have them all uniform, have

the tension uniform on all of them. Therefore, there is

one or two, or maybe no more than three where there is

a large use of those links that have all the strain on

them because they would shrink tighter than the others

and that would throw a stress spot at one place in the

casting and break it again.

Q. Can you explain in a short manner what your

invention does on the lock-—-your lock invention does?

9

A. Yes. You drill a design. You may call them en-

larged or bulged places and restricted places all con-

nected together and in them you tighten a lock fastener

by hammering it in cold.”

Although these prior art processes were known, there

were millions of dollars’ worth of castings discarded each

year because of the fact that the welding and other known

methods were impractical. Mr. Kirby (R., 74) testified

that, before the Harman invention, he had thrown away

thousands of dollars’ worth of cast iron because he was

unable to repair them. Mr. Kirby is merely one of the

many thousands of repair men dealing in castings.

Scott also testified that “broken and useless” castings

were repaired (R., 231) by using locks. The castings were

made “Tight to make it a sealed fit and also the alignments

were retained and were restored where the casting was

broken without machining.” Without the requirement of

re-machining, high repair expenses are eliminated.

Harman’s invention is practiced without the use of ex-

traneous heat. In practicing the present invention, the

broken casting can usually be repaired without dismantling

any of the machinery, of which the casting is a part. If

dismantling is necessary, only such dismantling need be

carried out to make the crack accessible, that is, it is not

necessary to remove the casting from the machinery as was

necessary for super-heating prior to welding.

The lock or fastener per se, of the patent in suit, com-

prises a body of ductile metal containing nickel and iron

and known to the trade as Invar. This metal is shaped

into bulged or enlarged portions and connecting restricted

portions. The metal, being ductile, is expansible by

pressure. A recess is fashioned across the crack in the

casting to be repaired. This recess substantially conforms

PGE OSE OE ED G EFS LO EI EIS ODES 8 DE NA ETAT

———

10

in the size and shape to the fastener or lock. The lock is

then placed in the recess and hammered to force the lock

into place and to compress and spread the lock so as to

firmly grip with the-casting. This hammering increases

the tensile strength of the lock metal by cold drawing it.

The peripheral portions of the lobes, between the restricted

part of the lock at the extreme side edges of the lobe, pro-

vide shoulders which hold the parts of the casting in place.

These locks are merely hammered in place to compress

and thereby expand the same and no extraneous heat is

necessary to carry out the operation of repairing the

casting.

In order to insure the necessary tensile strength at the

repair, it is desirable to superimpose or laminate a plurality

of these locks in a relatively deep recess. Such structure

is shown in Fig. 4 (R., 398) of the drawings in the patent

in suit. As explained in the patent (R., 401) column 2,

line 44, the fasteners or locks are of “thin material as com-

pared with the depth of the stock, requiring a plurality of

fasteners to be overlaid one upon the other to fill the open-

ings”, the openings being the recesses formed in the casting

being repaired.

By this new invention, the patentee can repair in hours

that which took days to accomplish by any of the old

methods. The great need for a substitute for the slow and

costly welding process is clearly brought out by the witness

Stembridge who testified that in 1937 he was garage fore-

man for the El Paso Electric Company, a company which

operated the buses for the city of El Paso, Texas (R., 302):

“Well we had several blocks there, motors, and dif-

ferent parts of motors where there would a crack come

in it, and ordinarily we had been taking the motor

completely out of the car, stripping it down, having

to preheat the block and hold it at that heat while

—_—

11

the weld was being done, and that made it necessary

to tie up the car for several days, and at that time, the

same as now, we were trying to keep the equipment

rolling, keep it in service and not tie it up any longer

than possible, and on some of these cracks we had Mr.

Harman to repair them by his process which took

about three or four hours; in other words, the bus could

go out on the run in the morning and come in off of

that run and he would repair it and it would be ready

to go out in the afternoon. That was the main reason

that I had the kind of work done that he was doing.”

SUMMARY OF ARGUMENT.

1. This is an ordinary patent case having the usual is-

sues of invention, construction of claims and infringement,

involves merely an interlocutory order and no conflict of

decisions, and consequently is not of sufficient general

importance and gravity to warrant review by the Supreme

Court.

2. The petition filed herein should be dismissed because

the careful and detailed findings of fact made by the trial

court, and concurred in by the Circuit Court of Appeals,

depended essentially upon an appreciation of the evidence,

and such findings are not shown by the record to be clearly

in error.

BES ape anes Ye SPER OE OO, = -_ . '

ie ESSE TS Se aa ¢ SID ESE fA Gta os ch IS COREPRESSOR NR SAN NEAT O

12

ARGUMENT.

1. The Petition For Writ of Certiorari Should Be Dis-

missed.

All of the findings in this case are clearly contra to the

petitioner’s stated contentions and warrant a finding in

favor of the respondent here (R., 466-471). Accordingly,

the petition should be dismissed in view of the findings,

none of which are shown to be in error, and which depended

essentially upon an appreciation of the evidence. Houston

Oil Co. v. Goodrich, 245 U.S. 440.

Moreover, the petition here should be dismissed for the

same reasons stated by this court in Layne and Bowler

Corp. v. Western Well Works, 261 U.S. 387, 392 and Mag-

num Import Co. v. Coty, 262 U. S. 159, 163. The record

shows this to be an ordinary patent case involving pri-

marily questions of fact and principles, the settlement of

which are of importance only to the parties, as distin-

guished from that of the public in general. Jurisdiction

to bring up cases from the circuit courts of appeal by cer-

tiorari was given for the two purposes of securing uni-

formity of decisions in the circuits and of having questions

of importance decided by this court when desirable in the

public interest—not for the purpose of giving the defeated

party another hearing. In the case at bar there are no

conflicting decisions in the cireuits—all that is involved is

an interlocutory order of the trial court.

There is no important issue of general patent law under

Sec. 4886, Rev. Stats. (35 U. 8. C. 31) as contended by the

petitioner herein. The record in this case shows it to be

an ordinary patent case, with the usual issues of invention,

13

construction of claims and infringement. Such a case will

not be brought up to this court by certiorari unless it be

necessary to reconcile decisions of circuit courts of appeal

on the same patent. Keller et al. v. Adams-Campbell Com-

pany, Inc., 264 U. S. 314, 319.

It was similarly held in General Talking Pictures Corp.

v. Western Electric Co., 304 U. S. 175 that a writ of cer-

tiorari will not be granted by this court in a patent in-

fringement case to review questions of anticipation and

invention where there is no conflict between the decisions

of the circuit courts of appeal. This latter case also held

that concurrent findings of the district court and the cir-

cuit court of appeals on questions of fact are not dis-

turbed unless plainly without support in the evidence.

In the case at bar, the petitioner has made no showing

that the findings of fact, as found by the trial court and

affirmed by the court of appeals, are plainly without sup-

port in the record.

The exceptional power to review, upon certiorari, a deci-

sion of a circuit court, rendered upon an appeal from an

interlocutory order, as in the case at bar, is intended to be

and is sparingly exercised and then only in cases of peculiar

gravity and general importance, and in order to secure

uniformity of decision. The fact that the decree sought

to be reviewed is not a final one furnishes sufficient ground

for refusing the petition. Hamilton-Brown Shoe Co. v.

Wolf Brothers & Co., 240 U. S. 251, 258. The ease at bar

should be governed by the principle established and ap-

plied by this court in the latter case.

14

2. Claims 1 and 2 of the Patent Define Patentable Subject

Matter.

As stated by petitioner, the problem of joining two pieces

of metal or other materials, has always been faced by man.

But no one prior to Harman provided the successful way

of inexpensively and quickly joining two pieces of metal

such as the broken parts of a casting.

The prior art is replete with fasteners, but none shows

the invention defined by claims 1 and 2 of the patent in

suit. Although the claims in suit do not specifically state

that the two separate parts of stock, which are to be joined,

are formed of metal, we need merely refer to the specifica-

tion of the patent to determine what is meant by “two

separate parts of stock” (R., 399, column 1, lines 6, 7, 18,

18, 30, 40; ete.; column 2, lines 39, 43, ete.). Moreover,

the lock per se 12, or body of metal, is defined as com-

pressible in claim 1 and expandible in claim 2. Obviously

the “parts of stock” must be of sufficiently hard material

to form a solid bottom for the lock. Otherwise the lock

would be driven, for example, down in the wood during the

hammering and would not be compressed or expanded.

Furthermore, this is the first attempt to attack the claims

in this manner and it must fall because the prior art does

not disclose the invention.

Scott was asked by the trial court if counsel could pick

out, from the prior art, those patents which he deemed

anticipated the patent in suit (R., 259), and counsel picked

out the following (R., 270):

Exhibit Patentee Number Date

P-5 Williams 1,201,008 July 4, 1935

P-1 Meldrum 1,742,044 Oct. 10, 1916

P-2 Buckner 154,580 Dee. 31, 1929

P-3 Pierce 1,802,829 Sept. 1, 1874

Pp-4 Richardson 793,958 Apr. 28, 1931

1 Harman 2,011,484 Aug. 13, 1935

ee SE ea ene

apes

Tey.

15

Counsel for Harman in his main brief before the trial

court, narrated these patents for the benefit of the court.

Seeing that these patents could not be used to anticipate

the invention, Scott shifted to another group of patents in

his brief before the trial court. The new group included:

Exhibit Patentee Number Date

P-7 Schranz 1,905,653 Apr. 25, 1933

P-8 Lovepoy 1,561,872 Nov. 17, 1925

P-9 Darrah 1,417,039 May 23, 1922

P-10 Peckover 390,034 Sept. 25, 1888

P-11 Peckover 381,811 Apr. 24, 1888

P-12 Roberts 1,441,274 Feb. 20, 1923

P-6 Williams 1,338,411 Apr. 27, 1920

Then before the court of Appeals, Scott again shifted

his group of patents which are alleged to anticipate the

invention and selected the following group:

Exhibit

P-2

mt SO > O11 DO CO

bo

ee

BO ao hy be by by hg bg by

— ©

Patentee

Buekner

Meldrum

Pierce

Lovepoy

Schranz

Williams

Williams

Darrah

Roberts

Cordes

Peckover

Peckover

Richardson

Number

154,580

1,742,044

1,802,829

1,561,872

1,905,653

1,201,008

1,338,411

1,417,039

1,441,274

1,165,155

390,034

381,811

793,958

Sept. 25,

Apr. 24,

July 4,

Date

Sept. 1,

Dee. 31,

Apr. 28,

Nov. 17,

Apr. 25,

Oct. 10,

Apr. 27,

May 23,

Feb. 20,

Dec. 21,

1888

1888

1904

1874

1929

1931

1925

1933

1916

1920

1922

1923

1915

Now the petitioner in his brief before this Court, is rely-

ing only upon Pierce, Richardson, Darrah, Roberts and

Peckover (Brief, p. 7).

16

3. Prior Art.

Pierce P-3 (R., 419 and 469).

The Pierce paten shows a resilient link which is obviously

formed of hardened metal. It comprises lobes 10 and 11

which are connected together by a narrow interconnecting

portion 13. The interconnecting portion 13 is arched as is

shown in Fig. 2. Quoting from page 1 of this patent, line

87 (R., 419):

“Before the link is applied to the machine elements

the arched portions 13 are slightly shorter than the

corresponding narrow portions of the recesses and the

links will fit into the recesses only upon being stretched

or deformed to an extent sufficient to separate the en-

larged end portions 11 and 12 to make them register

with the enlarged end portions of the recesses. This

can be accomplished by depressing or flattening the

arched portions 13 until the links snap into place in

the recesses.”

Obviously the link must be formed of hard material (as

distinguished from ductile or malleable material) in order

to be resilient. There is no suggestion whatsoever in this

patent of compressing or expanding the link by deforma-

tion of the material of the link by hammer blow action.

Darrah P-9 (R., 436).

Darrah is directed to a method of making shims. The

body portion 3 of the shim is provided with open side

recesses or notches 4 which receive the tongues 2 of the

bearing metal 1. The bearing metal is very soft (Babbitt).

A shim is employed as a spacer which is clamped by bolts

between two bearing retainers. The edge of the bearing

metal, opposite the tongues 2 embraces the rotating shaft.

Therefore, the bearing metal 1 is held in place by the bear-

,,Dlade.

17

ing retainer bolts and is prevented from displacement by

the rotating shaft. There is no suggestion whatever in this

patent of utilizing the bearing metal as a lock across the

fissure of two pieces of metal.

Roberts P-13 (R., 446 and 469).

Roberts’ patent was cited by the Patent Office and over-

come by the applicant. Roberts is directed to welding locks

in position. In each embodiment, including Fig. 10, the

locking members 4, are held in position by welding only.

Roberts states (R., 449, line 67):

“The edges of each plate and the apertures are

bevelled as shown at la, 5a, respectively, and the edges

of the locking pieces + are also bevelled as shown at

da, Fig. 3, so that when the plates and locking pieces

are assembled a bed or channel is formed to receive

the metal added by the welding operation.”

It is not only the costly welding that patentee eliminates

but also the great cost of tearing down the machinery to

remove the cracked casting, the building of an improvised

oven in the field for slowly heating the casting to be welded

which heating must be gradual, particularly for large

castings which will otherwise crack beyond repair (some-

times this heating requires days), warping during heating

and welding, gradual cooling, and then often remachining

because of warping. Also, by the present invention, re-

pairs can be made which are impossible to make by welding.

Peckover P-10 (R., 439) and P-11 (R., 443).

Both Peckover patents were cited by the Patent Office

and overcome by applicant. The earlier of these two

patents (Exhibit P-11) is directed to a removable saw

tooth, having grooves b’ (Fig. 3), or the equivalent, a flange

(Fig. 7), for retaining the tooth in the saw blade A. Only

one saw tooth can be inserted in a single opening on the

. ag

.

PS DR wy tehees emai |

2 ha

18

The second Peckover patent (Exhibit P-10, R., 441),

shows a key E having grooves, like b’ in Exhibit P-11, for

holding the same in position. Only one key can be inserted

in the stock.

Obviously, structures of the Peckover patents could not

be used for repairing a deep crack in a casting.

The Patent Office recognized the dissimilarity of the

problem the patentee solved and the disclosure of Peckover.

It is interesting to note that these patents issued in 1888,

yet between 1888 and the time that the instant inventor

made his invention, millions of dollars’ worth of castings

were scrapped because they could not be repaired by the

then known locks and processes.

Richardson P-14 (R., 422 and 469).

The Richardson patent is entitled “Method of Making

Brazed Joints”. R., 423, line 10, reads:

“This invention has relation to a method making*

brazed joints, * * *”,

Line 17 reads:

“My invention is particularly applicable to the braz-

ing of broken joints in cast-iron or high-earbon steel.”

The brazing material in each figure is designated by the

letter B. In Fig. 2, the pieces 7 and 8 are welded together,

and brazing material is also indicated at 4. A reinforcing

piece 5, having spaced bulged portions and a connecting

neck is socketed in suitable recesses 6—6 in the pieces 7

and 8. The patentee states (R., 423, line 100):

“s * this reinforeing piece 5 being made of ma-

terial of such character that the brazing material will

flow freely over its surface during the brazing opera-

tion and will tighly braze it in the recesses 6—6”,

19

The patentee states (R., 424, line 31):

“The particular material which I prefer to employ

for the joining strips and for the reinforcing pieces is

steel, noe

as distinguished from malleable material which can be

compressed and expanded.

The Claims in Issue Are For a New Combination of

Elements.

Claims 1 and 2 of the patent in suit include a limitation

not disclosed nor suggested by the prior art. These claims

are limited to the fastener (lock) “compressed” (claim 1),

“expanded” (claim 2) in the opening. They call for a new

combination of elements. None of the patents in themselves

or in combination teaches or suggests the combination. The

question immediately arises, if such patents teach the in-

vention, why wasn’t it practiced? Castings have been

cracking ever since they were first used. Why were mil-

lions of dollars’ worth of castings scrapped? Why make

repairs which required days and weeks when they could

have been made in hours? Why did the skilled Mr. Scott

wait until he was taught how to use the invention by the

instant patentee?

The present case falls squarely under the doctrine of

Diamond Rubber Co. v. Consolidated Rubber Tire Co., 220

U.S., 428 at 434, 435:

“Many things, and the patent law abounds in illus-

thations, seem obvious after they have been done, and,

‘in the light of the accomplished result,’ it is often a

matter of wonder how they so long ‘eluded the search

of the discoverer and set at defiance the speculations

of the inventive genius.’ Pearl v. Ocean Mills, 2 Bann.

& Ard., 469, Fed. Cas. No. 10,876, 11 Off. Gaz., 2.

Knowledge after the event is always easy, and prob-

20

lems once solved present no difficulties, indeed, may be

represented as never having had any, and expert wit-

nesses may be brought forward to show that the new

thing which seemed to have eluded the search of the

world was always ready at hand and easy to be seen by

a merely skilful attention. But the law has other tests

of the invention than subtle conjectures of what might

have been seen and yet was not. It regards a change

as evidence of novelty, the acceptance and utility of

change as a further evidence, even as demonstration.

And it recognizes degrees of change, dividing inven-

tions into primary and secondary, and as they are, one

or the other, gives a proportionate dominion to its

patent grant. In other words, the invention may be

broadly new, subjecting all that comes after it to

tribute (Chicago & N. W. R. Co. v. Sayles, 97 U. S., 554,

056, 24 L. Ed., 1053, 1054); it may be the successor, in

a sense, of all that went before, a step only in the

march of improvement, and limited, therefore, to its

precise form and elements, as the patent in suit is con-

ceded to be. In its narrow and humble form it may not

excite our wonder as may the broader or pretentious

form, but it has as firm a right to protection.”

and in the recent decision in Goodyear Tire and Rubber

Co., Inc., et al. v. Ray-O-Vac Co., 321 U. S. 275, Justice

Black stated:

“Viewed after the event, the means Anthony adopted

seem simple and such as should have been obvious to

those who worked in the field, but this is not enough

to negative invention.”

The novel combination cannot be anticipated by piece-

meal selection of component parts of the combination from

a number of prior art patents, which prior art patents did

not themselves solve the problem.

21

A leading case which laid down this principle is Parks

v. Booth, 102 U. S., 96, 104, wherein the United States

Supreme Court said:

“Where the thing patented is an entirety, consisting

of a separate device or a single combination of old

elements ineapable of division or separate use, the

respondent cannot make good the defense in question

by proving that a part of ‘the entire invention is found

in one prior patent, printed publication, or machine,

and another part, in another, and so on indefinitely,

and from the whole or any given number expect the

court to determine the issue of novelty adversely to

the complainant. Bates v. Coe, 98 U.S., 31.”

Other leading cases illustrating the application of this

principle are The Barbed Wire Patent, 143 U. S. 275 and

Keystone Manufacturing Co. v. Adams, 151 U.S. 139.

In the case of Metropolitan Device Corporation v. Cleve-

land Electric Illuminating Co., 36 F. (2d), 477, 479, C. C. A.

6, 1929, the Court said in holding a combination patent

valid and infringed:

“Nor was plaintiff's invention anticipated by the

prior art. The cable, the insulating compound, the

sleeve with its soldered joint, and possibly the cable

joint construction, were all old, but they were not old

in combination. In the new combination they pro-

duced a new result and therefore were not anticipated.

Webster Loom Co. v. Higgins, 105 US 530, 591, 26 L.

Kd. 1777; Detroit Carrier & Mfg. Co. v. Dodge Bros.,

33 F (2d) 748, 747 (CCA 6); Michigan Carton Co. v.

Sutherland Co., 29 F (2d) 179, 183 (CCA 63; Ferro

669 (CCA 6); Kellogg Switchboard & Supply Co. v.

Concrete Constru. Co. v. Concrete Steel Co., 206 F 666,

Dean Elee. Co., 182 F. 991, 998 (CCA 6).”

A & P and Cuno Cases Not Applicable.

Obviously, in view of the findings of fact made in this

case (R. 466-471), the principle of law established in the

Pee ARATE PE EIT UNLOVE II TIE LIL LULL DL A AGLE BPE EY SPP IE POULT PY YE OE PEE ANH TDPRI |

22

A & P Tea Co. v. Supermarket Corp., 340 U. S. 147 has no

application. In that case the trial court explicitly found

that each element in the device was known to the prior art.

The court did not find that the old elements performed any

additional or different function in the combination than

they performed out of it. That court held that the grocery

counter with an extension to receive a bottomless open-

ended tray for pushing groceries along the counter consti-

tuted a novel feature and a new and useful combination.

The extension was not mentioned in the claims, however.

There was no problem in that case as was solved by the

patentee-Harman in the case at bar. Neither were there

any findings in the A & P case, such as in the case at bar,

to support the finding of invention and the further finding

that “the patent in suit, if not indeed a basic one, at least

is one of high rank.” (R. 461).

Similarly, the Cuno Engineering v. Automatic Devices

Corporation case (314 U. S. 84) can be distinguished from

the case at bar on the facts. In that case a well-known

thermostatically controlled heating unit was incorporated

in an automobile cigar lighter having a removable plug

bearing the heating unit, which was also old and well

known in the prior art. This Court held that this was a

combination of old or well-known devices requiring only

the work of a mechanic skilled in the art to assemble. Such

a case is clearly distinguishable from the one at bar where

it was explicitly found that the invention is more than and

beyond the ordinary and expected mechanical or engineer-

ing skill of persons skilled in the art of repairing cracked

castings (Finding No. 11 R. 568).

23

Claims Not Directed To A Machine and Its Product.

The argument, now advanced by the petitioner, that the

claims in suit are invalid because they claim a fastening

device in combination with the material upon which the

fastener is used, is not based upon fact. The lower courts

did not make any such finding, and neither does the record

support any such contention. Findings of fact Nos. 8 and

27 speak for themselves. (R. 467, 470) All of the cases

cited by the petitioner, of which Morgan Envelope Co. v.

Albany Perforated Wrapper Paper Co. (152 U.S. 425) is

an example, are not applicable to the case at bar since the

claims in those cases were all directed to an attempt to

claim the machine per se and the article produced by the

machine, or worked upon, as a combination. It is to be

noted that in each case the machine is an entity in itself—

a completely operative device separate from the product or

work, i.e., independent thereof. In the instant case the

lock of the patentee-respondent is merely one element of a

combination of elements that cooperate to produce a new

product. (Finding No. 27 R. 470).

In Continental Paper Bag Co. v. Eastern Poper Bag Co.,

210 U. S. 405, the patent claims were for a mechanical

combination of parts for folding a bag. The lower courts

designated the invention as one entitled to “high rank.”

The Supreme Court held that where both of the lower

courts find the inventor has done what has not been done

before, and that there has been infringement, it will not

disturb their findings unless they appear to be clearly

wrong. The case at bar should be governed by these prin-

ciples.

PESO NOLO SEITE AONE INE SERN TET LO Ne PRR eT RE eM Te PN Pa i

24

CONCLUSION.

1. This is an ordinary patent case involving only the

usual issues, an interlocutory order and no conflict of de-

cisions.

2. The concurrent -findings of the lower courts are all

supported by the record, and not shown to be in error.

3. Claims 1 and 2 of the patent in suit disclose patentable

subject matter and are valid when tested by the principles

of this Court as established in Parks v. Booth, 102 U. S.

96, 104; Diamond Rubber Co. v. Consolidated Rubber Tire

Co., 220 U. S. 428 and Keystone Mfg. Co. v. Adams, 151 U.S.

139.

4. The decision of the Court of Appeals affirming the

District Court is not in conflict with any applicable deci-

sion of this Court.

For the reasons stated, the respondent prays that the

petition filed herein be dismissed with costs.

Respectfully submitted,

WAYNE S. GERBER,

AUBREY A. WENDT,

50 W. Broad St., Columbus 15, Ohio,

Attorneys for Respondent.

INDEX.

Reason for this brief

Petition for writ of certiorari should be denied

Answer to petitioner’s questions presented

Statement (To correct inaccuracies and omissions of

petitioner’s statement)

Regarding petitioner’s brief

Summary of argument

Argument

Conclusion ee ee

Table of Cases.

Carnegie Steel v. Cambria Iron Co., 185 U. 8., 403

Diamond Rubber Co. v. Consolidated Tire Co., 220 U.

S., 428

Goodyear Tire & Rubber Co., Ine., et al. v. Ray-O-Vae

Co., 321 U.S., 275

Looms Co. v. Higgins, 105 U. S., 580

Ray-O-Vac v. Goodyear Tire & Rubber Company, et al.,

45 Fed. Supp., 927. ps: eeeee

Im OV