Brief for the Respondent in Opposition — Dayless Manufacturing Co. v. Artmoore Co.

FEB 17 1954

HAROLD B. WILEY, Clerk

IN THE

Supreme Court of the United States

Octoser TERM, 1953.

No. 545

DAYLESS MANUFACTURING COMPANY, INC. ayp

LESLIE HOFFMAN,

Petitioners,

vs.

ARTMOORE COMPANY anp NILES METALCRAFT

COMPANY,

Respondents.

BRIEF OF RESPONDENTS IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI.

Evucene C. Knosiock,

711-713 J. M.S. Bldg.,

South Bend, Indiana,

Attorney for Respondents.

PAGE

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Supplemental Statement of the Matter Involved... 2

gE RISPER A Hip eittol Sone atia ORD C ENE PAN 2

EE SULA Sc B5ict ach Kn deean died kidsehe e840 kalckh 3

The Error of Petitioners’ Premise............. 3

The Decisions in this Case Applied the Proper

EY Seco i aera aaa cag etic et 7

There Is No Conflict of Decisions.............. 8

EE So sacs LAA Kad eda ew eae ne Gheiinne owe 11

TaBLE OF Cases CiTEp.

Barie v. Superior Tanning Co., 182 F. 2d 727........ 9

Cohens v. Virginia, 6 Wheat. 264, 399; 5 L. Ed. 257,

Dba bb sies Vern Wai Ok od vekndheks sds eoubiadasite 9

Cuno Engineering Corp. v. Automatic Devices Corp.,

ee NCR aah eb oad vod Gneebad obo eeu beackne 8,9

Goodyear Tire & Rubber Co. v. Ray-O-Vac Co., 321

oe EN AN Prey Maas NER AN eT NCL 10

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

Mais vdiks a0 ils eee dtionbaeaw swede 8,10

Great Atlantic & Pacific Tea Co. v. Supermarket, 340

ve rl, ET PE POET OTA MR AT Senn REG T ES 7,8

National Slug Rejectors, Inc. v. ABT Mfg. Corp., 164

DE RS aise i WA a pave ae hee awaR eER He es 9

Radio Corp. v. Radio Engineering Laboratories, 293

IE nd x0 Fae ics se Rede eeesid ee clots 9

Royal Patent Tool Corp. v. Monarch Teol Mfg. Co.,

203 F. 2d 299

pd oo

Supreme Court of the United States

Ocroser TERM, 1953.

No. 545.

DAYLESS MANUFACTURING COMPANY, INC. anp

LESLIE HOFFMAN,

Petitioners,

vs.

ARTMOORE COMPANY ann NILES METALCRAFT

COMPANY,

Respondents.

BRIEF OF RESPONDENTS IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI.

To the Honorable Chief Justice and Associate Justices

of the Supreme Court of the United States:

PRELIMINARY.

The petition for writ of certiorari is based upon the

false premise that the prior art patents cited by the peti-

tioners were disregarded by the Court of Appeals and were

more pertinent prior art than that cited by the Examiner,

so that the decision of the Court of Appeals, in holding

claims 7 and 10 of the patent in suit valid and infringed,

departed from the test of invention as announced by deci-

sions of this Court. Petitioners’ premise concerning the

pertinence of the prior art was specifically rejected by the

trial court, and the Court of Appeals also rejected peti-

2

tioners’ premise after reconsideration of the evidence and

the exhibits.

Petitioners present no more than the case of a defeated

litigant attempting to create grounds for the further re-

view of its case by this Court.

Supplemental Statement of the Matter Involved.

Petitioners state, on page 2 (paragraph 4), that each

element of the combination defined by claims 7 and 10 of

respondents’ patent is found in the prior art, and that no

new or different function or operation exceeding the sum

of the functions or operations of the sum of the parts is

performed or produced by the patented device. Petitioners

have advanced this argument throughout this case, and it

was denied by the trial court (R. 319, 322) and by the

Court of Appeals. (R. 382.)

On page 3 of the petition (paragraph 6), it is stated that

the specific combination claimed by Rogers and all of its

inherent advantages is fully disclosed in the prior patent

to Kawasaki No. 1,137,760 (R. 353), and reference is made

to a chart opposite page 14 of the petition. This chart was

before the trial court and the Court of Appeals (Exhibit 9)

and was not accepted at its face value by either of these

courts, the Court of Appeals saying:

‘“We have read the oral testimony, examined the

documentary evidence and physical exhibits, and we

are satisfied that the record supports the findings as

made.’’ (R. 382.)

Foreword.

A. brief analysis of the entire opinion of the Court of

Appeals and the fundamental facts of this litigation will

clearly show that the question presented by petitioners has

no sound basis and presents no special and important rea-

sons why review should be granted.

ARGUMENT.

Respondents contended at trial and upon appeal, and

the trial court found and the Court of Appeals affirmed

that:

(a) Claims 7 and 10 of the Rogers patent 2,108,727 in

suit define novelty and invention over the patent to Kaw-

asaki No. 1,137,760 (R. 329);

(b) The mop of the Rogers patent No. 2,108,727 in suit

possesses a number of advantages resulting from the com-

bination and arrangement of the parts thereof, including

the novel rigid frame unit with the fixed spacing of the

rollers (R. 327); and

(c) The prior art patents cited by petitioners reveal

that workers in the art had sought unsuccessfully for at

least fifty years to provide a commercially acceptable mop

having a wringing attachment provided with wringer

rollers. (R. 330.)

The Error of Petitioners’ Premise.

Petitioners’ question is based upon the false premise

that the Kawasaki patent defines every element of the

claims in suit of the Rogers patent. Further, petitioners’

argument contends erroneously, at page 10, that the evi-

dence in this case is uncontradicted that the Kawasaki

prior patent is more pertinent than any of the prior art

patents cited by the Examiner. Considering the latter

contention first, the fact is that respondents introduced

persuasive evidence that the Kawasaki patent does not

meet or anticipate the patented structure in suit, does not

possess the same combination and arrangement of parts,

“a

ee

4

and does not produce the same advantages. (R. 233, 234,

238, 239-241.)

The Kawasaki patent was considered by the Court of

Appeals in passing on this case. Thus, the Kawasaki

patent was mentioned specifically (R. 382), and the Court

then affirmed the findings of the trial court concerning it,

including the following:

‘*22. Kawasaki patent No. 1,137,760, dated May 4,

1915, was not shown ever to have been used for any

purpose. It discloses a string mop with levers pivoted

to a ring slidable upon a mop handle. The levers

mount wringer rollers which are swung toward or

away from each other by pivoting of the levers. A

spring is required to normally press the wringing

rollers toward each other, and therefore the wringing

rollers are not maintained in predetermined fixed space

relation. A wedge type lock is shown for holding the

levers in fixed relation as set, but this lock accommo-

dates change in the spacing of the rollers at the will

of the operator or according to variation of the mop

element.

‘‘The Kawasaki patent does not disclose a lever

to provide mechanical advantage during the wringing

operation. Separation of the rollers of the Kawasaki

device is required to enable them to move from re-

tracted position to wringing position and to return

from the end of their wringing stroke to retracted

position. The Kawasaki device does not possess the

advantages, nor the structure, nor the mode of opera-

tion of the mop of the patent in suit.

“23. Claims 7 and 10 of the Rogers patent No.

2,108,727 in suit define novelty and invention over the

patent to Kawasaki No. 1,137,760.’’ (R. 328.)

The trial court further referred to devices made in ac-

cordance with Kawasaki patent No. 1,137,760, as follows:

‘27. Devices made in accordance with the Kawas-

aki patent No. 1,137,760 and the Sanguinet patent No.

5

1,352,837 were introduced in evidence by the plaintiffs

and reveal that the constructions disclosed in those

patents are not operative as mops, at least as far as

their wringing attachments are concerned.’’ (R. 329.)

The deficiencies of the Kawasaki patent as an operative

device and as an anticipation of the patent in suit are

discussed in the memorandum of the trial court which

states:

‘Both patents disclose that the rollers are urged

toward each other by springs. The consequent resilient

action leads to the only conclusion that the spacing

between the rollers is not fixed, that neither patent

discloses a rigid frame unit. Without this element,

devices responding to the Kawasaki and the San-

guinet are unable to provide the practical advantages

of the patent in suit. These advantages, furthermore,

cannot be achieved, as the defendants contend, by sub-

stitution of a sponge mop in a Kawasaki or Sangui-

net device. As outlined previously, these advtantages

are due not to the sponge mop alone, but to the com-

bined operation of the elements. Defendants also in-

sist that Kawasaki and Sanguinet disclose fixed spac-

ing of the rollers. Neither the patents themselves nor

the testimony of the defendant’s expert witness sup-

port this contention.’’ (R. 322.)

Another exaggeration of petitioners is the statement that

Rogers contributed nothing over the aggregate of the total

of the old elements called for by the two claims in issue.

This clearly disregards the specific findings in this case

that the patent in suit covers a true and inventive combina-

tion and arrangement of parts. The Court of Appeals said:

‘“‘The combination and arrangement of the parts

causes them to maintain their proper relation when

used for cleaning purposes even though no latches and

springs are employed; permits a progressive compres-

sive wringing of the flared part of the sponge between

fixed spaced rollers, with the expansion of the sponge

6

assisting return of the rollers and the operating lever

to an inoperative position and also serving to hold the

same in inoperative position after release of the lever;

and the fixed spacing of the rollers by the rigid frame

unit assures a uniform and regulated action over an

extended period of time. |

‘‘The findings further relate that the patented mop |

possesses a number of advantages resulting from the

combination and arrangement of its parts, and from

its novel rigid frame unit providing fixed spacing of

the rollers.’’ (R. 381.)

The Court of Appeals also said:

‘*In any event, both Kawasaki (issued in 1915) and

Sanguinet (issued in 1920) have long since expired

and, so far as this record discloses, neither during

their lifetime nor since their demise have they been

used for any purpose until they were brought forth

in an effort to invalidate the patent in suit. It is un-

realistic to reason that Rogers did nothing more than

might be expected of the skilled mechanic, when neither

of the owners of such prior art patents nor any mem-

ber of the public after their expiration discovered that

their teachings were worth reducing to practice.

Especially is this true in view of the fact that the

field was wide open and that Rogers was the first to

disclose a sponge rubber mop with a wringing attach-

ment, which was placed in manufacture and on the

market. The wide acclaim with which it was received

by housewives is proof of its utility and is at least

some indication of its novelty. While those of the prior

art disclosed without result, Rogers reduced his dis-

closure to practice, and with success.’’ (R. 382.)

In his memorandum opinion the trial Judge discussed at

length the advantages possessed by the device of the Rogers

patent. (R. 319, 320.) The findings of fact of the trial court

contained the following statement of the advantages of

the Rogers device:

‘*14. Among the advantages possessed by the mop

7

of Rogers patent No. 2,108,727 in suit are the main-

tenance of a uniform and regulated wringing action

over an extended period of time without need for ad-

justment or supplemental manual pressure upon the

rollers; a self-retracting action in which the mopping

sponge serves to assist the return of the wringing

member to its retracted position after the wringing

is completed; a self-positioning action in which the

mopping sponge serves to position the rollers and to

hold the elements in firm relation to avoid chattering

during use of the mop; a self-protecting relationship

of the parts against cutting or shearing of the mopping

element resulting from the engagement of the mopping

member against the rollers and not against the edges

of the metal channel during use; ease of operation due

to the mechanical advantage provided by the wringing

mechanism; avoidance of wetting of the hands of the

user while wringing the mop; and a self-locating action

in which the mopping member cannot force itself

through the rollers and in which the rollers cannot

spread to an extent that necessitates application of

supplemental pressure thereto for wringing purposes. ”’

(R. 327.)

The Decisions in This Case Applied the Proper Legal Tests.

It is clear that the test from Great Atlantic & Pacific Tea

Co. v. Supermarket, 340 U. S. 147, which the petitioners

seek to apply is not proper in the present case because

the parts of the Rogers patented device in suit do co-

operate to produce results not produced in or taught or

suggested by the prior patents, including the Kawasaki

patent, and because many advantages are produced by the

Rogers patented device as compared to the Kawasaki con-

struction as a result of the particular combination and ar-

rangement of the parts defined in the claims of the Rogers

patent.

In deciding this case, the trial court made specific ref-

erence to both Cuno Engineering Corp. v Automatic De-

vices Corp., 314 U. S. 84, and the A ¢ P case, supra, in its

memorandum decision. The trial Judge differentiated

those decisions because of the nature of the facts of the

present case, and because of the novelty of the combination

and arrangement of the parts of the Rogers patented de-

vice and the advantages and new and unobvious results

which that new combination and arrangement of parts pro-

duced. (R. 319.) The Court of Appeals and the trial court

properly applied in this case the rule of this court in many

previous cases, including Graver Tank & Mfg. Co., Inc. v.

Linde Air Products Co., 336 U. S. 271, to the effect that a

new combination of elements producing new and unobvious

results evidences the existence of invention.

The Court of Appeals also followed the provisions of

Rule 52a of the Federal Rules of Civil Procedure in re-

fusing to set aside the decision of the trial court in the

absence of clear error.

There Is No Conflict of Decisions.

Contrary to the contentions of the petitioners, there is

nothing in the decisions of the trial court or the Court of

Appeals in this case which evidences that either of these

courts observed a different criterion for invention than is

observed by other Courts of Appeals. No reference was

made by the Court of Appeals in this case to any of the

authorities to which the petitioners refer on pages 11 to

13. Therefore, reference to those decisions goes entirely

outside of the record in this case and constitutes an effort

by petitioners to set up a straw man.

Petitioners’ arguments that a different rule of law or a

different criterion for invention exists in the Seventh

Cireuit than in other Circuits is devious and untenable.

The particular statement quoted by petitioners on page

9

11, taken from the case of National Slug Rejectors, Inc. v.

A.B.T. Mfg. Corp., 164 F. 2d 812, was a part of a discussion

by the court in that case preliminary to a consideration of

the issues in that case. In considering the issues, the court

disposed of the case on the ruling that prior patents cited

against the patent in suit did not anticipate the patent in

suit and that the patent in suit involved invention over the

prior patents. Thus any language of the court mentioning

a difference in measuring standards is mere dicta, not

establishing any rule of law and not controlling in any

subsequent suit. Cohens v. Virginia, 6 Wheat. 264, 399; 5

L. Ed. 257, 290.

Petitioners next refer to the case of Royal Patent Tool

Corp. v. Monarch Tool & Mfg. Co., 203 F. 2d 299, in which

the Court of Appeals for the Sixth Circuit affirmed the

proposition that the presumption of validity attending

the grant of a patent does not exist where prior patents, not

cited by the Patent Office, embody substantially the same

idea as the patent in suit. This rule of law is not peculiar

to the Sixth Circuit, although usually it is stated differently.

Thus it is usual to refer to proof ‘‘overcoming’’ the pre-

sumption of validity, and the rule was stated in Radio Corp.

v. Radio Engineering Laboratories, 293 U. 8. 1, as follows:

‘*A patent regularly issued, and even more obviously

a patent issued after a hearing of all the rival claim-

ants, is presumed to be valid until the presumption

has been overcome by convincing evidence of error.”’

The fallacy in attempting to apply the exception of that

principle here is that the Kawasaki patent is not pertinent,

as previously shown.

Petitioners close their specious argument by mentioning

a reference in Barie v. Superior Tanning Co., 182 F. 2d 727,

to the so-called ‘‘flash of creative genius’’ test stated in

Cuno Engineering Corp. v. Automatic Devices Corp., 314

10

U.S. 84. It is interesting to observe that in the Barve case

the Court of Appeals for the Seventh Circuit denied the

existence of patentable invention because the patents there

considered did not involve more than the skill or ingenuity

that would be shown by a workman skilled in his line of

work. Furthermore, insofar as the doctrine of the Cuno

case is concerned, it was considered and mentioned in this

case, the trial court commenting about it:

‘The difficulty with this position lies in the fact that

it is not applicable (o the case before the bar.” (R.

319.)

The affirmance of the decision of the trial court by the

Court of Appeals contains no statement in any way de-

tracting from the above quoted statement of the trial

court.

In the case at bar, the Court of Appeals considered the

novelty of the combination defined by the claims of the

patent in suit, the novel and unobvious advantages and

results secured by and flowing from that novel combina-

tion, and considered the failure of the cited prior art to

meet the structure, the mode of operation and the benefi-

cial results and advantages which the device of the patent

in suit produced. In applying this test, it followed the

rules earlier laid down by this court in Graver Tank &

Mfg. Co. v. Linde Air Products Co., 336 U.S. 271, Goodyear

Tire & Rubber Co. vy. Ray-O-Vac Co., 321 U. 8. 275, and

many other cases.

There is nothing erroneous about the decisions of the

Court of Appeals and the trial court in this case. There is

nothing about this ease which indicates that, had any

court in a different circuit passed upon it, a different ruling

would have applied. It is clear that the Court of Appeals

properly ruled that the finding of the trial court that the

patent was valid was sustained by the novelty of strue-

11

ture, the novelty of cooperative relation of parts, and the

novelty of results and advantages which the record re-

veals is possessed by the device of the patent in suit, so

that it could not but say

‘*We discern no reason to ignore the findings thus

made, and certainly we cannot hold that they are

clearly erroneous.’’ (R. 382.)

CONCLUSION,

The question raised by the petition involves no substan-

tial question of law, no matter of great or any public im-

portance, no conflict of decisions, no unsettled questions

of law, and no departure by the Court of Appeals from

the accepted and usual course of judicial proceedings.

The questions raised by the petition further are based

upon premises which are totally erroneous and unsupport-

able in point of fact.

The petition is wholly without merit and should be denied.

Respectfully submitted,

Kucene C. Kxosvock,

711-718 J. M.S. Bldg.,

South Bend, Indiana,

Attorney for Respondents.