Petition for Writ of Certiorari — Fraver v. Studebaker Corp.

Supreme Court brief1954

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Text

o Fi an

HAROLD B. WILLEY, Ch

IN THE

Supreme Court of the United States

Octoser Term, 1953

No. 672

IVAN N. FRAVER,

Petitioner,

THE STUDEBAKER CORPORATION .

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

WILLIAM J. RUANO,

Counsel for Petitioner,

1530 Park Building,

Pittsburgh 22, Pennsylvania.

SATAVIA TIMES LAW PRINTERS. BATAVIA. &. Y.

RAYMOND R. SMITH. PENNSYLVANIA REPRESENTATIVE.

4 SMITHFIELD ST.. PITTSBURGH 22. PA. CO-URT t-3595

INDEX.

PAGE

MN MONE: Sis ck ce dndebaebad caches tag ces 1

PRL: oO o6 bone 5iein a SUURERUL Ck Shao oes 2

eres Preieet ee Se cS 3

scerspamuing Bb sceicd cong, SEE ORR AANA ete 3

Statement of the Case ........ Se Mind Mie dcack Moa cima 3

Reasons Relied on for Allowance of the . ae 6

Dummy OF Weenie aaa oc ao sich vo cen. hk 6

a a TE RN are Cee er ee 10

1. The Court improperly set aside the jury’s ver-

dict only on questions of fact rather than on

questions of law thus violating Rule 50 (b)

F. R. C. P. and depriving petitioner of his Con-

stitutional right to trial by jury ............ 10

2. The District Court’s action is directly contrary

to the decisions of this Court ............... 13

2(a). This Court has consistently held that

validity and infringement are ques-

tions of fact for determination by the

POET bok vn esas obiatdlinak aes ae 14

2(b). Regardless whether validity and in-

fringement are questions of fact or

law, the particular findings of the jury

pertaining to these issues and which

were set aside by the Court have been

consistently held, by this Court, to be

qehntnns we Teen 16

3. Hopeless conflict exists among the various cir-

cuits concerning the respective functions of

court and jury on questions of validity and in-

fringement which should be resolved by this

CET * 6 vuinsird padawes odd SLAG OL aR es 22

4. Evidence strongly supports jury’s verdict of

validity and infringement .................. 27

ORION 66 ine ES dons Konak ak ee

LIST OF AUTHORITIES

Cases

PAGE

Bailey v. Central Vermont (1943), 319 U.S. 350....... 13

Battin v. Taggert (1854), 17 How. (58 U.S.) 77...... 14,19

Besser v. Ooms, 154 F. 2d 17 (App. D. C.-1946)........ 25

Bischoff v. Wethered (1870), 9 Wall. (76 U.S. 812)...14, 19

Cutter Laboratories v. Lyophile-Cryochem (C. A. 9,

PO CO civ ceed snceutieeeccds. iokecs

Esnault-Pelterie, 299 U. S. 201 Ss Ratainis Sm ean, 14

Expanded Metal Co. v. Bradford (1909), 214 U. S. 366 29

Falkenberg v. Bernard Edward Co., 175 F. (2) 427

Ce EE. Sih co 555 ok Sars oho oceanic UROL Eco 26

Faulkner v. Gibbs, 170 F. 2d 34 338 U. S. 267 ( C. A.

Pe) HO Ce BOD ois ona Sune dedcnccn 15, 18, 19

Goodyear Tire & Rubber Co. v. Ray-O-Vae Co. (1944),

65's hed eV id nuk CaN ba cbe Acids bce x 30

Graver Tank Mfg. v. Linde Air Products (1949), 336

ip MAIN ia i ain ttn dak oss Devine SWE wha ue caw 15, 20, 21

Great Atlantic & Pacific Tea v. Supermarket Equip-

ment (1950), 340 U. S. 147 ................. 8, 15, 25, 30

Gunning v. Cooley, 281 U. S. 90 (1930)............... 27

Haines v. McLaughlin, 135 U.S. 584................. 19

Hanovia Chemical & Mfg. Co. v. David Butterick Co.,

og Le | eee 26

“— & Reynolds v. Wilgus (C. C. A. 9, 1893), 56 Fed. -

ME Pata teb atl at Whee hnads Ria bu bacdine 6 040% ka wns

Heide v. Panoulias (C. C. A. 2, 1911}, 188 Fed. 914,

cert. den. (1911), 223 U. 8. 722 ...............25. 22

Herald v. Rice, 104 U. 8. 738, 749 ....... 0. cece cc cncs. 16

Holmes v. Truman (C. C. A. 9, 1895), 67 Fed. 542...... 22

Hotchkiss v. Greenwood, 11 How. 248 (U.S. 1850) .... 14

Jacob v. City of New York (1942), 315 U.S. 752 ...... 12

Keyes v. Grant (1886), 118 U. S. 25 ................ 14

Lavender v. Kurn (1946), 327 U. S. 645 ............ 13

Marsh v. Illinois Central (CA5—1949), 175 F. (2)

i EE PEE DNL See CAME AE SE

Mazer et al. v. Stein et al., 100 U. S. P. Q. 325........

McElrath v. Industrial Rayon, 123 F. 2d 627 (CA4-

EE ohn dineek eeu tonde adh Uieuoen akin: oss o

Mellvaine Patent v. Walgreen (C. C. A. 7, 1943), 138

EOE > Selkinatues bcc kwcdok cout a

National Slug Rejectors Inc. v. A. B. T. Mfg. Corp.,

ee He Be GUD in wick cctv ncné vas cvuccs

Oxnard Canners v. Bradley (C. A. 9, 1952), 194 F. (2d)

Ee Ce le SA I oS oviin Xenin cece unk ose

Packwood v. Briggs & Stratton (C. A. 3, 1952), 195 F.

_ ¢ Rket e made ted

Parsons v. Bedford (1830), 3 Pet. (28 U. S.) 438 ....

Pointer v. Six Wheel, 177 F. 2d 153 (C. A. 9-1949) ....

Refrigeration Patents Corp. v. Stewart-Warner (C. C.

Bia Gy Bey Ws COUR 6 ovcnecicccacscsicssse

Root v. Lake Shore & Michigan (1882), 15 Otto (105

Whe We GU Seda s Weng. chts su dau oka ccubbiag eeu

San Francisco Bridge v. Keating (C. C. A. 9, 1895), 68

ie SE dine Ns sthawngcwiiwkwedbiniers cea

Singer Mfg. Co. v. Brill (C. C. A. 9, 1892), 54 Fed. 380 .

Ginger v. Crnmer; 298 0. @. OB... .o55 5 5k dices cee

Stilz v. United States, 269 U. S. 144, 147 ............

Stubnitz-Greene v. Fort Pitt, 110 F. 2d 192 (C. A. 6-

EE MER OU EWG wicca Gaunbids Rodeuwca ute bs iéa

Sturtevant Co. v. Mass Hair & Felt Co., 122 F. 2d 900

et” aa wate blab nnn niaminsaion-ode

Tennant v. Peoria & Pekin Union Railway (1944), 321

ji (SSO tee Oh Gr lh epee

Thomson Spot Welder v. Ford Motor, (1924) 265 U. S.

SSP eeenseeSOev_eese 6666666 b 6 6 68 d's

PAGE

a Se PIE RE ASTIN Tae TA NCS AE A NES 14,17

PAGE

Turril et al. v. Railroad Co., (1863) 1 Wall (68 U.S.)

PE kuind was Gh ea dns hbesn aeolian asetaws 14,19

Watson v. Heil, 192 F. 2d 982 (CA4-1951) .......... 24

Willis v. Miller (C. C. A. 2, 1903) 121 Fed. 985 ...... 22

CoNSTITUTION.

rr RN ee ee 11

STaTUTEs.

TU, Bh a, Tree BO, OOO BITS ac inn vie cen vnncencs 11

U. S. Code, Title 35, Former Section 67 ............

REA Del cic it Ui Sage RD 4, 11, 39 Appendix A

U.S. Code, Title 35, Section 103 ....3, 7, 18,40 Appendix A

U.S. Code, Title 35, Section 281 ........ 11, 39 Appendix A

U.S. Code, Title 35, Section 284 ........ 11, 39 Appendix A

U.S. Code, Title 35, Section 4919 ..........ccccsecs 39

RULEs.

Federal Rules of Civil Procedure, Rule 50 (b) ..... 2, 6, 10

TExtTs.

Moores Federal Practice (2nd Ed.) ................ 10

Walker on Patents (Dellers ed.) ................5. 15

IN THE

Supreme Court of the United States

OctosEr Term, 1953

No.

IVAN N. FRAVER,

Petitioner,

THE STUDEBAKER CORPORATION,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

To the Honorable Chief Justice and Associate Justices of

the Supreme Court of the United States:

Your Petitioner, Ivan N. Fraver, respectfully prays that

a Writ of Certiorari issue to review the amended judgment

of the United States Court of Appeals for the Third Cir-

cuit, entered in the above entitled case on J anuary 11, 1954.

Opinions Below

The opinion of the District Court (W. D. Pa.) (R. 29a-

38a") is reported in 112 F. Supp. 209 and 97 U. S. P. Q. 291.

* References with suffix “a” are to Appellant's Appendix 1 in certified copy

of proceedings in Court of Appeals.

The Per Curiam Opinion of the Court of Appeals (R.

. . . . is reported in 208 F. (2d) 794 and 100 U.S. P. Q. 259.

Jurisdiction

The original judgment of the Cireuit Court of Appeals

was entered on December 11, 1953. Petition for rehearing |

was filed December 30, 1953. It was denied but the judg-

ment was amended as to costs, both on January 11, 1954.

The jurisdiction of this Court is invoked under 28 U.S. C.

1254 (1).

Questions Presented

1. Whether petitioner’s constitutional right to trial by

jury under the 7th Amendment was not clearly violated

by the District Court in setting aside the jury’s verdict

of validity and infringement, amply supported by evidence,

merely because the Court disagreed with certain disputed

findings of fact.

2. Whether ‘‘invention”’ and ‘‘infringement’’, in a pat-

ent infringement suit tried by a jury, are questions of

fact for the jury or matters of law solely for the Court.

3. Whether the District Court violated Rule 50 (b)

F. R. C. P. by re-examining the facts tried by the jury,

such as the factual determinations of ‘‘novelty’’, ‘‘obvious-

ness’’ of the patented combination to persons having ordi-

nary skill in the art, whether admitted ‘‘variations’’ be-

tween the novel patented combination and prior combina-

tions produced ‘‘unusual results’? and can be considered

‘*a contribution to the art’’ or merely an ‘‘aggregation’’,

whether ‘‘anticipated’’, and whether the accused device

had either the ‘‘same’’ or ‘‘equivalent’’ elements as re-

cited in claim 1 therefore constituting ‘‘infringement’’,

etalk acd —

although there is substantial evidence clearly supporting

the jury’s factual findings on all of these matters.

4. Whether the District Court, merely by hindsight,

may hold a new combination of elements, which the Court

admits is different from the prior art, as ‘‘obvious’’ to per-

sons having ordinary skill in the art, contrary to the find-

ings of the jury, when there is no supporting testimony

whatsoever as to obviousness, but abundant testimony

showing non-obviousness, including that of petitioner’s

three expert witnesses, the Patent Office and respondent’s

own prior admission that the combination is the ‘‘world’s

most advanced’’ system. Also whether the Court made a

fatal error in determining obviousness as of the date the

patent issued instead of at the time the invention ‘‘was

made,’’ in violation of the Statute (35 U. S. C. 103).

5. Whether the District Court may ignore claims as the

measure of the invention and set aside a finding of infringe-

ment, even though the accused device falls clearly within

the wording of claim 1, by importing unexpressed limita-

tions in the claim and treating ‘‘equivalance’’ as a question

of law contrary to this Court’s recent decision Graver v.

Linde (1950) 339 U. S. 605.

Statutes Involved

This action was based on 35 U. S. C. former 67 (now 35

U.S. C. 281, 284), Appendix A, infra, which creates, for the

patent owner, an ‘‘action on the case’’ to recover ‘‘dam-

ages’’ for patent infringement.

Statement of the Case

Petitioner, Ivan N. Fraver, brought suit on May 6, 1949,

against respondent, The Studebaker Corporation, for in-

fringement of his patent No. 1,903,037, issued March 28,

1933, on a car heating, cooling and ventilating means.

¢Plaintiff’s Exhibit 1, R. 41*, Appendix 2.) Petitioner al-

leged that the Studebaker ‘‘Climatizer’’, Plaintiff’s Exhibit

2 (R. 42, 273), a physical exhibit produced by respondent

of the accused structure, infringed claims 1, 2 and 3 of his

patent. The accused device is also shown in Plaintiff’s

Exhibits 14 and 15 (R. 258, 259) and photos of Plaintiff’s

Exhibit 2 in Defendant’s Exhibits L to S inclusive. (Part-

ly in Appellant’s Appendix 2*.) The case was tried before

a jury under the provision of 35 U. S. C. former 67 (Ap-

pendix A). The trial lasted almost two weeks and in-

cluded the testimony of six expert witnesses, three on each

side, whose testimony was in sharp conflict on many issues

such as that pertaining to the operation of the accused

device, equivalance of operation between petitioner’s and

respondent’s devices, definition and application of scientific

terms to the accused device, differences between petition-

er’s structure and prior patents, whether the patented

combination would have been ‘‘obvious’’ to persons hav-

ing ordinary skill in the art, whether the patented com-

bination produced ‘‘unusual results’’ and could be con-

sidered as a ‘‘contribution to the art’’ etc., which factual

issues were decisive on the questions of ‘‘validity’’ and

‘‘infringement.’’ The trial involved also tests in open

court and demonstrations of working models, Plaintiff’s

Exhibits 2 and 13. (R. 42, 273, 242.)

After almost two weeks of trial and after being charged

by the court concerning validity and infringement (R.

496-520), the jury, in answer to interrogatories prepared

by the court, found that claims 1, 2 and 3 were valid and

that claim 1 (R. 31la*) was infringed and returned a gen-

eral verdict in the sum of $79,250, with costs, in favor of

= References R are to record in District Court; Appendix 2 is Petitioner’s

(Appellant’s) Appendix in Court of Appeals.

petitioner, and judgment was entered on this verdict on

October 30, 1952.

A motion by respondent, at the close of the trial, for a

directed verdict was refused (R. 487-488) and the Court,

as stated above, referred the questions of ‘‘validity’’ and

‘‘infringement’’ to the jury for determination. Respond-

ent, subsequent to the verdict, filed a motion to set aside

the verdict and to enter judgment n. o. v. in its favor.

The District Court, months after the verdict and judg-

ment, granted this motion and, by its Order and Opinion

of May 1, 1953, (R. 29a-38a) set aside the judgment in

favor of petitioner and directed entry, instead of a judg-

ment in favor of respondent. Petitioner appealed from

this action of the District Court. The Court of Appeals for

the Third Circuit, by a short Per Curiam opinion of Decem-

ber 16, 1953, merely affirmed the District Court without fur-

ther opinion. Petitioner filed a timely petition for rehear-

ing on December 30, 1953, which was denied on J anuary 11,

1954.

Petitioner asks this Court to grant certiorari to review

the propriety of the District Court in setting aside the

jury’s verdict and granting judgment notwithstanding the

verdict. |

It is clear from the Opinion of the District Court, that

it set aside the jury’s verdict merely because it reweighed

the evidence and drew different inferences and conclusions

of fact.

Reasons Relied on for Allowance of the Writ

Summary of Argument

1. The decision of the lower Court is directly in conflict

with the decisions of this Court. The District Court re-

examined the facts tried by the jury, ignored the evidence

strongly supporting the jury’s verdict of validity and

infringement, drew contrary inferences and conclusions

than the jury on disputed factual issues pertaining to

validity and infringement, thereupon set aside the verdict

and granted judgment n. 0. v. Such usurpation of the jury’s

function as the finder of facts is in direct conflict with the

consistent decisions of this Court for more than the past

150 years.

Furthermore, the Court’s usurpation of the jury’s func-

tion of finding facts clearly deprives petitioner of his right

to trial by jury under the 7th Amendment of the Constitu-

tion.

Moreover, the granting of judgment n. o. v. by the Court

was improper and a clear violation of Rule 50 (b) FRCP

since, as stated by the rule, a motion for judgment n. o. v.

raises only ‘‘legal questions’’, whereas the judge granted

this motion to re-examine questions of fact.

2. This Court has consistently held, for more than 150

years, that disputed facts concerning ‘‘validity’’ and ‘‘in-

fringement’’, in actions at law, are questions of fact for

determination by the jury, and not questions of law for

determination solely by the Court. But in spite of this

long line of decisions by this Court, the Court below treated

these questions as questions of law solely for the Court.

But the crucial point in this case is that regardless

whether validity and infringement are questions of law or

fact, it is nevertheless very clear from the Opinion of the

District Court (R. 29a-38a) that it set aside the jury’s ver-

dict of validity and infringement merely because it came

to different conclusions on factual issues, such as the issue

of ‘‘obviousness’’ of the patented combination to persons

having ordinary skill in the art, whether admitted ‘“varia-

tions’’ between the novel patented combination and prior

combinations produced ‘‘unusual results’? and can be con-

sidered ‘‘a contribution to the art’’ or merely an ‘‘aggrega-

tion’’, whether ‘‘anticipated’’, and whether the accused

device had either the ‘‘same”’ or ‘fequivalent’’ elements as

recited in claim 1 therefore constituting ‘‘infringement’’.

This Court has consistently held each and every one of these

issues to be a question of fact but the lower Court com-

pletely disregarded this Court’s decisions and acted direct-

ly contrary thereto.

Another fatal error of the Court is that it considered the

question of obviousness of the invention as of **1933”’, the

date of issuance of the patent, whereas it is fundamental in

patent law, and even provided by Statute (35 U.S. C. 103)

(Appendix A), that obviousness should be determined ‘‘at

the time the invention was made,’’ namely in 1931. And

to make matters even worse there is no testimony in sup-

port of the Court’s finding of obviousness at either date.

3. A sharp conflict exists among the various Circuit

Courts of Appeal also between certain of them and this

Court, concerning the respective functions of Court and

jury on questions of validity and infringement. While

most circuits have followed the consistent holdings of this

Court to the effect that validity and infringement are ques-

tions of ‘‘fact’’ for determination by the jury, the Third

Circuit recently, step-by-step, has been giving less and less

attention to jury verdicts in patent cases. Finally, in the

instant case, it has gone ail the way and completely disre-

garded altogether the jury’s findings of fact and verdict

and treated validity and infringement as questions of

‘‘law’’ solely for the Court.

Therefore, unless corrective action is taken by this Court,

the Constitutional right to trial by jury will become a mock-

ery rather than a fundamental guaranteed right. Presently

an utter state of confusion exists among the various cir-

cuits, who are torn between the long line of decisions of

this Court holding validity and infringement as questions

of fact for the jury, and recent cases ignoring this pre-

cedent and treating them as questions of law. Much con-

fusion in the law started with the recent A & P case (34

O. U.S. 147) wherein, while the majority opinion held inven-

tion to be a question of fact, the concurring opinion of Mr.

Justices Douglas and Black held that ‘‘the question of

validity of a patent is a question of law.’’ Below are cited

hopelessly conflicting decisions among the various circuits

on this question. This Court, in face of the utter confusion

that exists should resolve doubts and conflicts and take a

clear stand on this vital question so as to guide lower Courts

as to the respective functions of Court and jury on ques-

tions of validity and infringement, and thus enable justice

to be properly and uniformly administered in the many

existing and future patent jury cases that surely will be

plagued by this same question.

And equally, if not more important than a ruling on the

above is a ruling to the effect that regardless of whether

these questions are of law or fact, the District Court should

not have vacated the Jury’s verdict merely because the

Court drew different inferences and conclusions from con-

flicting evidence on purely factual issues, such as whether

the patented combination would have been ‘‘obvious”’ to

persons having ordinary skill in the art, whether it pro-

duced ‘‘unusual results’’, whether it constituted a ‘‘con-

tribution to the art”’ ete.

4. The evidence, including testimony of three outstand-

ing expert witnesses of petitioner and ruling of the Patent

Office on exactly the same issue, strongly supports the jury’s

verdict of validity and infringement since it shows that

petitioner invented a novel combination and arrangement

of elements mutually cooperating to provide new and un-

usual results as a consequence of the unification or com-

bination, constituting a distinct and very outstanding con-

tribution to the art of ventilating a motor vehicle, and which

completely replaced all existing prior ventilating devices

used by respondent in automobiles and made obsolete all

existing devices. Evidence of Petitioner’s significant con-

tribution to the art includes respondent’s own prior admis-

sion in its advertising literature (Pl. Ex. 15, Petitioner’s

Appendix 2) that the infringing combination constitutes

*‘the world’s most advanced fresh air’? ventilating system.

Of course, after respondent was charged with infringement

it made an about face and argued that the combination pro-

duced no unusual results. The Court accepted this and

held that Fraver’s patent disclosed ‘‘unimportant changes’’

(R. 35a). How much can respondent get away with? Peti-

tioner’s novel combination and arrangement of elements

not only met but exceeded the present requirements, or so

called standards, of invention set forth in the Constitution,

Statutes and decisions of this Court. Certainly the Con-

stitutional intent of ‘“‘encouraging’’ invention was not

carried out in this case wherein the Court usurped the

jury’s function and made its own findings of fact, resolv-

ing every doubt against, instead of for, petitioner. The

District Court’s hostile attitude towards trial by jury was

best expressed by its statement in open Court that it was

‘‘against’”’ trying this case before a jury. (R. 264-27a.)

__ ARGUMENT

1. The Court Improperly Set Aside the Jury’s Verdict

Only on Questions of Fact Rather than on Questions of

Law thus Violating Rule 50(b) F.R.C.P. and Depriving

Petitioner of His Constitutional Right to Trial by Jury.

The District Court re-examined the facts tried by the

jury, ignored the evidence strongly supporting the jury’s

verdict of validity and infringement, and because it drew

contrary inferences and conclusions than the jury on factual

issues pertaining to validity and infringement, set aside

the verdict and granted judgment n. o. v.

Thus, the Court violated Rule 50 (b) F. R. C. P. under

which respondent’s motion for judgment mn. 0. v. was

brought, since it raises only questions of law. Rule 50(b)

is quoted in part as follows:

‘*Whenever a motion for a directed verdict is made

at the close of all the evidence is denied or for any

reason is not granted, the court is deemed to have sub-

mitted the action to the jury subject to a later deter-

mination of the legal questions raised by the motion.’’

Moore’s Federal Practice (2nd Ed.), page 2342 approv-

ingly quotes Marsh v. Illinois Central (C. A. 5—1949) 175

F, (2) 498 in which the Court of Appeals stated:

‘“‘A motion for a directed verdict, or for a judgment

~ notwithstanding the verdict under Rule of Civil Pro-

cedure 50, raises a question of law only. Whether there

is any evidence which, if believed, would authorize a

verdict against movant.’’

However, the Court’s grounds for granting this motion

are all directed to questions of fact, and not of law.

The decision of the District Court also violates the 7th

Amendment to the Constitution, whieh provides :

‘*In Suits at common law * * * the right of trial by

jury shall be preserved, and no fact tried by a jury,

shall be otherwise re-examined in any Court of the

United States, than according to the rules of the com-

mon law.”’

This provision of the Constitution positively precludes

re-examination of facts tried by the jury as done by the

Court.

U. S. Code, Title 28, Section 2072, which grants this

Court the lower to prescribe rules of civil procedure for

District Courts, specifically provides:

‘Such rules shall not abridge, enlarge or modify any

substantive right and shall preserve the right of trial

by jury as at common law and as declared by the

Seventh Amendment to the Constitution.”’

This Court preserved ‘‘inviolate’”’ this right to a jury

trial under the Constitution or statute of the United States

in Rule 38 F. R. C. P.

As evidence of the District Court’s disregard of peti-

tioner’s constitutional rights and prejudicial attitude mere-

ly because petitioner sought a jury trial, is its declaration

in open Court that it is “‘against’’ trying the instant case

by a jury (R. 264—R. 27a). But Congress, on the contrary,

saw fit, in the New Patent Act of 1952, to emphatically re-

affirm a patentees’ Statutory and Constitutional right to

trial by jury on questions of validity and infringement (for-

mer 35 U. S. C. 67 restated as 35 U. S. C. 281, 284—see

Appendix A hereto).

In the apt words of Mr. Justice Douglas (Cardozo lec-

ture: in 49 Col. Law Rev. 735, 752) the Court adopted ‘‘a

philosophy hostile to that reflected in the legislation’’ (also

to the decisions of this Court).

This Court has always jealously protected a litigant’s

right to a jury trial in applicable cases and has consistently

given the party who prevailed before a jury the benefit of

every doubt in all cases of review.

In Parsons v. Bedford et al. (1830) 3 Pet. (28 U. 8.) 433,

Justice Story stated:

‘‘The trial by jury is justly dear to the American

people. It has always been an object of deep interest

and solicitude, and every encroachment upon it has

been watched with great jealousy. * * *’’

In Root v. Lake Shore and Michigan Southern Railway

Company (1882) 15 Otto (105 U. S.) 189, 206 this Court

said:

««* * * the 7th Amendment forbids any infringement

of the right of trial by jury, as fixed by the common

law. And the doctrine applies in patent cases as well

as others.’’

Later, in Jacob vy. City of New York (1942) 315 U. S.

752, this Court said:

‘“The right of jury trial in civil cases at common law

is a basic and fundamental feature of our system of

federal jurisprudence which is protected by the Seventh

Amendment. A right so fundamental and sacred to the

citizen, whether guaranteed by the Constitution or

provided by statute, should be jealously guarded by

the courts.’’

2. The District Court’s Action is Directly Contrary to

the Decisions of this Court.

This Court has consistently held that lower courts are

not permitted to ignore evidence supporting a jury’s ver-

dict, reweigh the evidence and set aside a jury’s verdict

merely because the jury could have drawn different infer-

ences or conclusions, or even because judges feel that other

results are more reasonable. In Bailey v. Central Ver-

mont Railway, Ine. (1943) 319 U. 8. 350, 353 this Court held:

‘** * * The debatable quality of that issue, the fact

that fair-minded men might reach different conclusions,

emphasizes the appropriateness of leaving the question

to the jury. The jury is the tribunal under our legal

system to decide that type of issue. (Citations omit-

ted). To withdraw such a question from the jury is

to usurp its functions.’’

And in Tennant v. Peoria & Pekin Union Railway Com-

pany (1944) 321 U.S. 29, 35 this Court said:

““* * * Courts are not free to reweigh the evidence

and set aside the jury verdict merely because the jury

could have drawn different inferences or conclusions

or because judges feel that other results are more rea-

sonable.’’

And in Lavender v. Kurn ( 1946) 327 U. S. 645, 653 this

Court stated:

‘** * * But where, is here, there is an evidentiary

basis for the jury’s verdict, the jury is free to discard

or disbelieve whatever facts are inconsistent with its

conclusion. And the appellate court’s function is

exhausted when that evidentiary basis becomes appar-

ent, it being immaterial that the court might draw a

contrary inference or feel that another conclusion is

more reasonable.’’

- 2(a). This Court has Consistently Held that Validity

and Infringement are Questions of Fact for Determina-

tion by the Jury.

This Court has consistently held, for more than 150

years, that in an action at law for patent infringement the

questions of ‘‘invention’’ and ‘‘infringement’’ are ques-

tions of fact for determination by the jury, rather than

questions of law for determination by the Court.

In Hotchkiss v. Greenwood, 11 How. 248 (U. S. 1850)

this Court decided that whether an improvement is merely

the work of a skilled mechanic or required invention, was

a question of fact which was properly submitted to the

jury.

Other earlier decisions holding ‘‘novelty,’’ ‘‘validity’’

and ‘‘infringement’’ as questions of fact and not of law are

Battin v. Taggert, 17 How. 74; 84 (U. S. 1855) ; Bischoff v.

Wethered, 9 Wall. 812, 815-6 (U. S. 1870); Turril et al. v.

Railroad Co. (1863) 1 Wall. (68 U. S.) 491; Keyes v. Grant,

118 U.S. 25 (1886); and

In Thomson Co. v. Ford Motor Co., 265 U. S. 445 (1924)

at page 446 this Court stated:

‘‘The question whether an improvement requires

mere mechanical skill or the exercise of the faculty of

invention, is one of fact; and in an action at law for

infringement is to be left to the determination of the

jury.’’ Keyes v. Grant, 118 U. S. 25, 36, 37.

In Stilz v. United States, 269 U. S. 144, 147 this Court

said

‘‘Infringement is a question of fact.’’

This Court, in United States v. Esnault-Pelterie, 299 U.S.

201 (1936) at 295 held:

‘‘Validity and infringement are ultimate facts on

which depends the question of liability. In actions of

law they are to be decided by the jury.’’ (Citing many

Supreme Court cases.)

This Court recently, in 1948, affirmed in 338 U. S. 267

the decision of the 9th Circuit Court of Appeals of Faulkner

v. Gibbs, 170 F. 2d 34 where the Court of Appeals held at

37:

‘Questions of invention and patent validity are

questions of fact * * *””

‘‘The issue of infringement presents a question of

fact.’’

This Court in the recent A & P v. Supermarket case, 340

U.S. 147 (1950) ; 87 U.S. P. Q., at 306, held ‘‘invention”’’ as

a finding of fact, saying in the majority opinion:

‘We set aside no finding of fact as to invention for

none has been made * * *”?

Walker on Patents (Dellers Ed.) page 115 states:

‘*The question of invention is a question of fact and

not of law.’’ (Citing many cases.)

And on page 1210 Walker states:

‘The question of infringement is one of fact for the

jury. (Winans v. Denmead, 15 How. (56 U. S.) 330,

344; Coupe v. Royer, 155 U. S. 565, 575.) ”’

That infringement is a question of fact and not of law

was recently reiterated in Graver Tank Mfg. v. Linde Air

Products Co., 339 U. S. 605, 609 (1950).

Thus, in decision after decision this Court has consistent-

ly held that ‘‘invention’’ and ‘‘infringement’’ are questions

of fact for the jury and not questions of law for the court.

No authoritative judicial holding of this Court can be

found holding conflicting evidence as to either invention

or infringement as being questions of law for the Court

rather than questions of fact for the jury. Nevertheless

the lower Court ignored the decisions of this Court and

treated ‘‘validity’’ and infringement as questions of law.

The present case is distinguishable from such cases as

Heraiu v. Rice, 104 U. S. 773, 749 (also Singer v. Cramer,

192 U. S. 265) wherein there was no conflicting evidence or

testimony presented. The only question in the Herald

case was for the Court to compare the contents of an orig-

inal and a reissue patent to see whether or not they were

identical,—a matter obvious from the face of the patents.

This was considered a matter of law since no extrinsic evi-

dence whatsoever was presented, or needed, such as evidence

to explain terms of art, or to apply terms to subject matter

as in the present case.

There was considerable dispute of fact in the instant case

concerning the operation of the Climatizer, such as the

direction of flow of air when discharged into the chamber

(R. 16a, R. 376-377), whether such air in the chamber was

stagnant (R. 378) or swirled (R. 130), the air confining

effect of the seat support and panels (R. 27a), the heating

or cooling effect of the air in the chamber (R. 16a), and

other matters pertaining to identity or equivalency of the

Climatizer and Fraver chambers, which involved the eredi-

bility of various witnesses, and were resolved by the jury

in favor of petitioner. The evidence clearly shows that the

Climatizer has a ‘‘chamber’’ as in claim 1. (R. 7a, 11a,

16a, R. 331-336.)

2(b). Regardless Whether Validity and Infringement

are Questions of Fact or Law, the Particular Findings of

the Jury Pertaining to These Issues and which were Set

Aside by the Court have been Consistently held by this

Court to be Questions of Fact.

But, regardless whether validity and infringement are

questions of fact or of law, the more important and crucial

point in this case is that the specific reasons given by the

Court for setting aside the verdict, as clearly apparent

from the District Court’s Opinion (R. 29a-38a), are that

it arrived at different conclusions and obtained different

inferences than the jury from the conflicting testimony

given on factual issues.

More specifically, the District Court arrived at different

factual inferences and conclusions than the jury as to

whether the invention, in the words of the Court, was ‘‘ob-

vious”’ to those skilled in the art’ (R. 33a); whether the

patent claimed a novel combination or an ‘‘aggregation”’ of

elements (R. 31a, 35a) involving the consideration of

whether the admitted ‘‘variation”’ (R. 32a) between the

novel patented combination and the prior art provided

*“‘unusual results’’ and constituted a distinct ‘*contribution

to the art’’ (R. 35a); and whether the accused device had

either the same or ‘‘equivalent’’ elements (R. 37a) as the

claimed combination so as to constitute an ‘‘infringement.’’

This Court has consistently held that each and every one of

these issues to be a question of fact for the jury and not of

law for the Court.

The Court, after frankly admitting ‘‘variations’’ be-

tween petitioner’s patented combination and the prior art,

stated (R. 32a, 33a) that the invention ‘‘in 1933, was ob-

vious to those skilled in the art’’. However, the question

of whether or not an improvement is ‘‘obvious to those

skilled in the art’’ has been consistently held by this Court

to be a question of fact for the jury since it involves many

factual circumstances surrounding each particular case.

In Thomson Co. v. Ford Motor Co., supra, at p. 446 this

Court held:

‘‘The question whether an improvement requires

mere mechanical skill or the exercise of the faculty

of invention is one of fact; and, in an action at law

for infringement is to be left to the determination of

the jury.’’ (Citing many cases.)

In Faulkner v. Gibbs, supra, recently affirmed by this

Court (338 U. S. 267), the Court of Appeals held (p. 137):

‘‘The question of whether or not a new and useful

combination is the result of mere mechanical skill, or

of inventive faculty, is one of fact.’’

The District Court, in vacuo and only with the benefit of

hindsight, incorrectly made its own appraisal as to what

would have been obvious to persons having ordinary skill

in the art in 1933.

The Court admitted there are diiferences or ‘‘varia-

tions’? (R. 32a, 33a) between the patented combination

and the most pertinent prior art, but made its own factual

appraisals that they did not constitute a ‘‘contribution to

the art’’ (32a) or produce ‘‘new or unusual results.’’ (R.

35a.) This is directly contrary to the evidence including

the position of the Patent Office on the same issue, and

even to respondent’s own admissions, as will be specifically

set forth under title 4, infra. These issues are clearly

factual issues for the jury.

Not only did the Court err by usurping the jury’s func-

tion of determining the factual question of ‘‘obviousness,’’

but made the further fatal error of making this deter-

mination at the wrong time, namely ‘‘in 1933’’ (R. 32a,

33a), the issue date of the patent, instead of 1931, the date

the invention ‘‘was made”’ as provided by statute 35 U.S. C.

103, which summarizes existing patent law on the subject

of what constitutes invention. (Appendix A.) It will also

be seen from this provision of the statute that the question

of invention turns largely on whether or not ‘‘the subject

matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in

the art to which said subject matter pertains.’’ Therefore

the Court’s determination of obviousness ‘‘in 1933”? is

directly contrary to the statute.

The District Court stated that another issue was ‘‘to

determine whether it (the patented invention) is a com-

bination which produces a new and unusual result or is

simply an ‘aggregation.’ ’’ (R. 31a.)

But this Court has consistently held that the question of

invention as distinguished from mere aggregation and the

question of whether prior patents or publications antici-

pate a patent as being questions of fact. More specifically,

this Court affirmed Faulkner vy. Gibbs, C. A. 9, 1948, supra,

wherein the Court of Appeals stated at 37:

‘*What constitutes inventién as distinguished from

mere aggregation, is a question of fact * * *,

‘‘Whether prior art patents or publications disclose

or anticipate the subject matter of a patent in issue is

deemed as a question of fact.”

This Court in affirming (338 U. S. 267) said:

‘“‘the patent was sustained because of the fact of

combination rather than the novelty of any particular

element.”’

That ‘‘anticipation’”’ is a question of fact was also held

in Haines v. McLaughlin, 135 U. S. 584; Battin v. Taggert

and Bischoff v. Wethered, and Turril v. Railroad, of this

Court, swpra. And in Tucker v. Spalding, 13 Wall (80

U.S.) 453 this Court, reversing the lower Court for making

its own comparison of the patent and prior art said, in

reversing (p. 456):

‘*This court has no more right than the court below

to decide that the one patent covered the invention of

the other, or that it did not; and it is obvious that

extended argument here, to prove such general resem-

blance as would require the submission of both patents

to the jury, might prejudice the plaintiff’s case on the

new trial which must be granted.’’

The Court usurped the jury’s function in determining

‘‘infringement’’ which, as shown by the above quoted deci-

sions, under title 2(a), has been consistently held by this

Court to be a question.of fact for determination by the

jury. The Court made the further error of incorrectly

determining infringement by disregarding the claims as

the measure of the invention and by artificially importing

unexpressed limitations in the claims, such as the limita-

tion that the chamber is ‘‘relatively air tight’. (R. 34a.)

This language does not even appear in the specification.

Actually claim 1 is clearly readable on the aceused device

therefore infringed since each element therein finds its

exact counter-part in the Climatizer as testified by three

expert witnesses of petitioner. The' proper test of infringe-

ment was recently stated by this Court in Graver v. Linde,

339 U. S. 605 (1950) on page 607:°

‘‘TIn determining whether an accused device or com-

position infringes a valid patent, resort must be had

in the first instance to the words of the claim. If the

accused matter falls clearly within the claim, infringe-

ment is made out and that is the end of it.’’

By this test the Climatizer clearly infringes,—but the

District Court ignored this Court’s decision.

The Court then went on to say ‘‘since no substantially

airtight chamber or its equivalent is embodied in the ac-

cused structure, there is no infringement.”’ (R. 37a). Thus

the Court not only rewrote the claim by importing un-

expressed limitation ‘<substantially airtight’? but made its

own decision as to the factual determination of equival-

ency. But ‘‘equivalence”’ is clearly a question of fact for

determination by the jury as this Court very recently re-

iterated in Graver v. Linde, supra, by stating:

‘A finding of equivalence is a determination of fact.

Proof can be made in any form: through testimony of

experts or others versed in the technology: by docu-

ments including texts and treatises; and, of course

by the disclosures of the prior art. Like any other

issue of fact, final determination requires a balancing

of credibility, persuasiveness and weight of evidence.’’

And on page 608 this Court continued:

‘‘The doctrine (of equivalents) operates not only in

favor of the patentee in a pioneer or primary invention,

but also for the patentee of a secondary invention.’?

And on page 609:

‘<* * * Equivalency, in the patent law, is not the

prisoner of a formula and is not an absolute to be con-

sidered in a vacuum. It does not require complete

identity for every purpose and in every respect. In

determining equivalents, things equal to the same

thing may not be equal to each other and, by the same

token, things for the most purposes different may some-

times be equivalents * * *.”’

The District Court ignored the above decision of this

Court and made its own finding of equivalents as a deter-

mination of law instead of fact and in denying petitioner

any right to equivalents.

3. The Courts of Appeals Are Hopelessly in Conflict on

the Effect of a Jury Verdict and the Conflict Should be

Resolved by this Court.

There is a hopeless conflict among the several Courts of

Appeals as to the effect of a jury verdict upon the factual

questions of invention and infringement in a patent in-

fringement action. For many years, the Courts of Appeals

gave jury verdicts the respect accorded to jury verdicts

by the Constitution and by this Court. However, particu-

larly of late, there is a growing tendency to disregard the

jury verdict almost completely in patent infringement

cases. There is no sound reason for this apparent trend

because this Court’s decisions, the statutes, and the Seventh

Amendment to the Constitution remain unchanged. This

Court should, in the exercise of its discretion, put an end

to this unauthorized drift towards judicial abolition of the

jury system in patent infringement actions.

Examples of cases supporting the sanctity of the jury

verdict on questions of invention and infringement, treat-

ing them as questions of fact, include the following:

Singer Mfg. Co. v. Brill (C. C. A. 9, 1892) 54 Fed.

380, cert. den. (1893) 154 U. S. 517;

Harper & Reynolds v. Wilgus (C. C. A. 9, 1893)

56 Fed. 587;

Holmes v. Truman (C. C. A. 9, 1895) 67 Fed. 542,

approved on this point in Thomson Spot Welder

Co. v. Ford Motor Co. (1924) 265 U. 8. 445, 446;

San Francisco Bridge Co. v. Keating (C. C. A. 9,

1895) 68 Fed. 351;

Willis v. Miller ef al. (C. C. A. 2, 1903) 121 Fed.

985 ;

Heide v. Panoulias (C. C. A. 2, 1911) 188 Fed. 914,

cert. den, (1911) 223 U. S. 722;

Transit Development Co. v. Cheatham Electric

Switching Device Co. (C. C. A. 2, 1912) 194

Fed. 963;

Trustees of Masonic Hall ete. v. Electrical Floor

Box Corp. (C. C. A. 2, 1914) 218 Fed. 642;

Cutter Laboratories Ine. vy. Lyophile-Cryochem

Corp. et al. (C. A. 9, 1949) 179 F. (2d) 80; and

Oxnard Canners Ine. e¢ al. v. Bradley (C. A. 9,

1952) 194 F. (2d) 655, cert. den. (1952) 343

U. S. 978 wherein the Court of Appeals stated

(p. 656) :

‘‘Appellants’ first specification of error lies in the

contention that there was no evidence to support the

verdict of the jury on the issues of validity and in-

fringement. In testing the sufficiency of evidence to

sustain a verdict in favor of plaintiff, the evidence and

all reasonable inferences deductible therefrom must

be considered in the light most favorable to plaintiff

and any conflict in the evidence must be resolved in

favor of the jury’s findings. Where a jury under in-

structions against which no complaint is made, finds

for the plaintiff, plaintiff is entitled on appeal to have

considered as true all evidence which was offered upon

controlling issues and were entitled to all inferences

reasonably to be drawn therefrom.’’

The Court of Appeals, in the Oxnard case, then pro-

ceeded to review the evidence and found evidence in the

record upon which the finding of the jury verdict could

be sustained. Thus the Court followed the rule it had laid

down in Cutter Laboratories v. Lyophile-Cryochem Corp.,

179 F. 2d 80, 84 (9 Cir. 1949) that the rules governing the

review of jury verdicts are the same in patent cases as

those applicable to other tort verdicts and that the jury’s

verdict must stand where credibility of witnesses is to be

weighed.

The decision in the instant case is also in conflict with

Watson v. Heil, 192 F. 2d 982 (C. A. 4, 1951) in which the

District Court, as in the instant case, made its own decision

that the patent to a combination of elements was invalid in

view of the A & P case, and excluded evidence to prove ‘‘in-

vention’’ since it was impressed, in vacuo,—that the pat-

ent did not involve invention. The Appellate Court re-

versed stating (p. 984):

‘‘Without attempting to assess the value of the prof-

fered evidence, indeed we are in no position to do so

since the defendant was not called upon to controvert

or explain it, we think that it is at least entitled to

consideration; for it bears on the question whether

in fact the disclosures of the patent involved invention.

When it is shown that a mechanical problem has per-

sisted for some time, and men of ordinary skill in the

art have failed to meet it when it is to their interest

to do so, there is at least some ground for the con-

clusion that it was beyond their capacity. Such a cir-

cumstance has not infrequently been held sufficient to

carry a discovery across the inventive line.’’

‘We think that the validity of the patent must be

considered anew in the light of any competent evidence

that may be offered along the lines above deseribed,

and that the judgment should therefore be reversed and

the case remanded for a new trial, * * *’’.

The Court of Appeals thus recognized that evidence bear-

ing on the issue of ‘‘invention’’ should be weighed as ques-

tions of fact decisive of this issue instead of treating ‘‘in-

vention’’ as a question of law solely for the Court.

25 ¥

Other recent decisions holding invention as a question of

fact are: B. F. Sturtevant Co. v. Mass Hair & Felt Co., 122

F. 2d 900 (C. A. 1, 1941) ; McElrath v. Industrial Rayon, 123

F. 2d 627 (C. A. 4, 1941); Stubnitz-Greene v. Fort Pitt, 110

F. 2d 192 (C. A. 6, 1940) ; Pointer v. Six Wheel, 177 F. 2d

153 (C. A. 9, 1949); App. D. C.: Besser v. Ooms, 154 F. 2d

17 (1946).

The action of the lower Courts in the case at bar is

clearly in conflict with the above decisions.

Examples of recent cases, on the other hand, which have

ignored jury verdicts and treated the issues of validity and

infringement as questions of law solely for the Court are:

Refrigeration Patents Corp. v. Stewart-Warner

Corp., (C. C. A. 7, 1947) 159 F. (2d) 972, cert.

den. (1947) 331 U. S. 834, 91 L. Ed. 1847, rehear-

ing den. (1947) 332 U. §. 803,

Packwood v. Briggs & Stratton Corp. et al., (C. A.

3, 1952) 195 F. (2d) 971, cert. den. (1952) 344

U. S. 844 97 L. Ed. *44, rehearing den. (1952) 344

U. S. 882, 97 L. Ed. *62, and

McIlvaine Patent Corp. v. Walgreen Co. (C. C. A.

7, 1943) 138 F. (2d) 177.

As pointed out under title 2 above this Court has con-

sistently, for over 150 years, held that validity and in-

fringement are questions of fact for the jury. However,

much confusion in the law exists, particularly since the re-

cent A & P case (340. U.S. 147) wherein, while the major-

ity opinion held invention to be a question of fact, the con-

curring opinion of Mr. Justices Douglas and Black held

that ‘‘the question of validity of a patent is a question of

law.’’

An indication of the state of confusion that exists igs

found in the following quotations:

Falkenberg v. Bernard Edward Co., 175 F. (2) 427 (C. A.

7, 19495: at 430:

‘*A long line of cases could be cited holding that the

determination of patentable invention is a question of

fact; however, other courts have dealt with the issue

as though it were a question of law. A citation of such

authorities would not be helpful in view of the recent

decision of the United States Supreme Court in Graver

Tank Mfg. Co. Inc. et al. v. Linde Air Products Co.,

336 U. S. 271, 69 S. Ct. 535. In that case Justices Black

and Douglas, in a concurring opinion, stated that it is

their view that the ultimate question of patentability is

a question of law. However the majority opinion

specifically applies Rule 52 (a) Federal Rules of Civil

Procedure, 28 U. S. C. A.

Hanovia Chemical & Mfg. Co. v. David Butterick Co.,

127 Fed. 2d 888 (C. A. 1, 1942) at p. 889 the Court referred

to:

‘<* * * the conflict between the frequently reiterated

eategorical statement that the question of invention is

one of fact and the almost innumerable instances in

which the courts have dealt with it as though it were

one of law * *.*.’’

National Slug Rejectors Inc. v. A. B. T. Mfg. Corp., 164

F. (2) 333 (C. A. 7, 1947) at 336:

“This century-old question is always perplexing.

We cannot avoid or evade it. We must meet it. Pa-

tentable invention is a question of law.’’

Recently a number of patent litigants have asked this

Court to grant certiorari to define the rights of a Circuit

Court of Appeals with respect to the issues here presented.

Compared to the number of jury cases, the petitions are

numerous. They demonstrate that the question is one of

real public interest and the time is ‘‘over-ripe’’ for its

consideration. This Court has not yet spoken on the sub-

ject but should do so in view of the large number of patent

jury cases pending and which are being filed.

Petitioner submits that the hopeless conflict can be clari-

fied only by the grant of certiorari. Justice may be best

served by the grant in this case since the Court has gone

farther towards ignoring the jury’s verdict supported by

evidence than any other court before in any other case,

therefore would serve as a bad precedent for future cases if

certiorari were denied.

4. Evidence Strongly Supports Jury’s Verdict of Validi-

ty and Infringement.

As stated by this Court in Gunning v. Cooley, 281 U. S.

90 (1930) at 94:

“Issues that depend on the credibility of witnesses,

and the effect or weight of evidence are to be decided by

the jury, and in determining a motion of either party

for a peremptory instruction, the court assumes that

the evidence for the opposing party proves all that it

reasonably may be found sufficient to establish and that

from such facts there should be drawn in favor of the

latter all the inferences that fairly are deducible from

them * @ m9?

Applying the above as the proper test in deciding re-

spondent’s motion for judgment n. o. v., the evidence clear-

ly and strongly supports the jury’s verdict of validity and

infringement of claim 1.

After petitioner, Fraver received his patent in 1933 when

in poor financial cireumstance (R. 27a) he disclosed it to

respondent and respondent wrote him (Pl. Ex. 4) (App. 2)

saying that their engineers ‘‘reviewed the merits’’ of his

invention. Petitioner in 1933 demonstrated a car embody-

ing certain features of his invention to respondent at the

latter’s factory. (R. 173-174, 181.) Respondent wrote in

1934 and acknowledged petitioner’s visit to its factory (R.

226-227) (Pl. Ex. 3) (App. 2), bet stated:

‘After your visit to our plant sometime ago this

matter was discussed with our engineers and it was

decided not to take any definite action at the present

time.”’

During this time and for many years later, respondent

as well as other auto manufacturers and dealers continued

to sell only the old-fashioned type of heaters mounted under

the dashboard, both hot air and hot water types. In 1939,

six years after Fraver disclosed his patent to respondent,

respondent admits was the earliest it ‘‘conceived’’ or start-

ed development of a ventilating system introducing fresh

outside air through vanes by momentum of the car (R. 259-

260) (Pl. Ex. 16) (R. 282, 284). Therefore, by respondent’s

own admission, their development of the Climatizer was

not an independent one but one appropriated from Fraver.

Respondent in 1940 admittedly was the first in the field to

use such air conditioning system in automobiles (R. 154-

155) while others continued to use dashboard heaters.

Respondent’s own advertising, in announcing the Cli-

matizer (Pl. Ex. 15) (Appendix 2), acclaimed it as the

‘‘world’s most advanced fresh air heating, ventilating and

defrosting system’’ and correctly listed many outstand-

ing and novel and unusual features of Fraver’s system.

Of course, now that respondent is accused of infringement

it makes an ‘‘about face’’ and says there was nothing to

Fraver’s new combination and it was a matter obvious

eee

to anyone skilled in the art, though no one thought of it for

more than 40 years during which a crying need existed.

Respondent’s expert witness D. L. Davis admits that the

Climatizer ‘‘was generally accepted by the motoring pub-

lic with enthusiasm, and encouraged us to further improve

it.”” (R. 285). Respondent’s sales were substantial, ad-

mittedly running over $8,300,000 in a period of three years.

(R. 40-41.) The Climatizer, admittedly, completely re-

placed dashboard heaters in respondent’s automobiles (R.

284-285) which are practically no longer in use in automo-

biles of any kind. This public acceptance, and displace-

ment of prior devices, has been held by this Court to clearly

indicate invention rather than mechanical skill.

The prior art urged by respondent shows that attempts

have been made to improve ventilating systems for rail-

way cars and the like since 1888. (Lyon patent 387, 173).

But in spite of the many types of systems patented, over

30 of which were urged by respondent, extending over a

period of 43 years before Fraver filed, none were found

sufficiently practical for adoption in automobiles, (R. 155.)

(R. 26a, 27a). The automobile industry is one of the most

competitive industries and their engineers have been con-

stantly striving for improvements in ventilating systems

over many years prior to the Fraver patent. These facts

clearly refute the conclusion that respondent’s invention

was ‘‘obvious’’ to those skilled in the art. If it was ob-

vious why wasn’t it adopted sooner, particularly in view

of the urgent demand and the substantial success it im-

mediately enjoyed?

This Court said in Expanded Metal Co. v. Bradford, 214

U. S. 366, at 381:

“It may be safely said that if those skilled in the

mechanical arts are working in a given field, and have

failed after repeated efforts, to discover a certain new

and useful improvement, that he who first makes the

discovery has done more than make the obvious im-

provement which would suggest itself to a mechanic

skilled in the art, and is entitled to protection as an

inventor.’’

This ‘‘viewing after the event’? was condemned by this

Court in Goodyear Tire and Rubber Inc., e¢ al. v. Ray O

Vac Co., 321 U. S. 275, 60 U. S. P. Q. 386.

The only element of invention was the addition, to the

conventional dry cell, of an outer metallic casing to make

it leakproof. This idea seemed so simple that Justice Black

in his dissenting opinion stated:

‘‘ Antiquarians tell us that the use of solid contain-

ers to hold liquids predate the dawn of written his-

tory.’’

But this Court realizing that even a short step from the

impractical to the practical is invention, held otherwise in

its majority opinion.

Justice Roberts speaking for the Court said p. 388:

‘*Viewed after the event the means * * * seem

simple and such as should have been obvious to those

who worked in the field, but this is not enough to nega-

tive invention * * *. Accepting as we do the findings

below we hold the patent valid and infringed.’’

The holding in the Ray O Vac case that apparent sim-

plicity, in retrospect, does not negative invention was af-

firmed in the recent A. & P. vs. Supermarket Equipment

case, 340 U. S. 147 wherein this Court in commenting on

alleged invention in making a merchant’s counter long,

carefully cautioned (p. 305):

‘‘We need not go so far as to say that invention

never can reside in mere change of dimensions of an

old device.’’

In the A & P case it was attempted to repatent the

familiar or old combination of a pool ball type rack slidable

on a table merely on the basis of new use, (sliding groceries

instead of pool balls) but the results of the old combina-

tion were exactly the same as before, without improvement.

Therefore, Fraver’s invention greatly exceeds the stand-

ard of invention set forth by this Court in the above cases.

That Fraver’s claimed novel combination and arrange-

ment of elements is not old and is not shown in the prior

art is admitted by the Court (R. 32a, 33a) and by respond-

ent’s patent expert McNulty (R. 443). The Court cited,

as the most pertinent prior art, the obviously far fetched

patents to Cook, Cooke and Crowther (showing streetcar

systems) and the Pickwick Bus publication (R. 32a) (Ap-

pendix 2), all of which fail to show Fraver’s combination,

and illustrate combinations never found practical for auto-

mobiles. The Court acknowledged that none of these show.

ed petitioner’s specific combination since, in the words of

the Court, they discharged air ‘‘into an unenclosed space

underneath the seats’’ and admitted that there was a ‘‘no-

ticeable variation’’ between the patented combination and

those in the above prior art in that ‘‘the space under Frav-

er’s seats is enclosed by the floor, seat cushion and seat

supporting means etce.’’ (R. 32a.) The Court then made

its own factual appraisal that ‘‘this variation in the under-

seat construction could scarcely be considered as a con-

tribution to the art’’, (R. 32a) and then concluded that “in

the light of the prior disclosures, that the standards of in-

vention were not met and that his (Fraver’s) patent was

anticipated, lacks novelty, and in 1933, was obvious to

those skilled in the art.’’ (R. 33a.) The Court stated that

the patent disclosed ‘‘unimportant changes’’ (R. 35a).

This conclusion was directly contrary to that of the Patent

Office which had cited this same Cooke patent (typical of

the remaining three references in presenting the same issue

of discharging air into the car instead of a chamber) and

discarded it as a reference in favor of patentability. The

Examiner of the Patent Office, who is an expert on this

matter, concluded that the above mentioned ‘‘variation’’

over the prior art was indeed a patentable contribution to

the art. There were other ‘‘variations’’ over Cooke, such

as the lack of a ‘‘cowl’’ or conducting pipe leading ‘‘un-

der’’ the floor of the car as recited in claim 1. All three

of petitioner’s witnesses also testified that Fraver’s novel

combination was a significant contribution to the art. Cer-

tainly the jury was entitled to believe the Patent Office

and these three eminently qualified witnesses on the factual

issues of whether ‘‘unusual results’? were produced and

whether the invention was a ‘‘distinct contribution to the

art’? (R. 35a). These are clearly factual issues.

That Fraver’s novel combination produced new, im-

proved and unusual results is admitted even by respondent

in its own advertising (Pl. Ex. 15) (Appendix 2) wherein

respondent claimed the Climatizer combination as ‘*the

world’s most advanced fresh air’’ heating and ventilation

system and correctly summarized many new and ususual

results (attributable to Fraver’s infringed novel eombina-

tion). Respondent’s advertising, above, states:

“The Climatizer, when installed, becomes a built-in

integrated part of the car—there are no unsightly

protuberances, parts or gadgets to bark shins, skuff

knees or detract from the luxurious interior appoint-

ments of your new Studebaker.’’

These novel and unusual features come from using peti-

tioner’s novel combination including the cowl ventilator

for admitting outside air coupled with the use of the front

seat and seat supporting means for enclosing, concealing

and protecting the outlet of the ventilating unit and avoid

unsightly protuberances which detract from appearance,

as did the old dashboard mounted ventilating units, as well

as to protect the passengers against possible injury. Re-

spondent, as did petitioner, avoided the use of known pro-

jecting vanes on the sides of the car behind the door which

comprise dangerous obstructions, and avoided the neces-

sity of making slots or holes in the sides of the seats, or

otherwise altering ‘‘conventional’’ seats and supporting

means. As in petitioner’s combination, only standard auto

parts are employed and no changes in body design are re-

quired for installing the Climatizer.

Respondent continues in its advertising (Pl. Ex. 15)

(Appellant’s Appendix 2) :

‘A Climatizer-equipped car has no cold spots and

is free from hot blasts and drafts. Heat is distributed

evenly throughout the car. Comfortable, healthful liv-

ing room temperature is maintained even in subzero

weather. ”’

These novel and unusual fea‘ures are clearly obtained

from respondent’s complete appropriation of petitioner’s

novel combination, including the definitely novel feature of

a seat and seat supporting means for providing an en-

trance chamber for receiving either hot or cold air and for

distributing the air throughout the entire width of the car

so that it will emerge through the chamber walls as a

plurality of low velocity streams of air, as distinguished

from a hot blast or cold draft, and which, for the first

time in the art provided the novel result of uniform tem-

perature distribution in a car. (R. 8a, 9a, 13a, 14a-21a.)

Because of the diffusion of the air by the seat and seat

supporting means, uniform distribution and novel com-

fort is obtained in spite of the very high volume and veloc-

ity of air intake. (R. 20a, 21a.) To show the completeness

of respondent’s appropriation of the Fraver combination,

respondent also uses a baffle or deflecting plate under the

front seat (Pl. Ex. 14) to laterally deflect and distribute

air underneath the seat as does Fraver’s deflecting plate 29.

As stated further in respondent’s advertising (Pl. Ex.

15):

‘‘Only outside air is used for heating and ventilat-

ing. Over 250 cubic feet of fresh air per minute is

forced into the car—sufficient to replace all air in car

interior—every 30 seconds—no stale, used air is re-

circulated.’’

Thus by using petitioner’s novel combination of a cowl

ventilating inlet, for insuring maximum velocity and vol-

ume of inflow of fresh outside air, and the seat and seat

supporting means as a diffusing and distributing means to

eliminate blasts defendant was enabled to provide this

novel resu!t of very frequent complete change of air with-

out the accompaniment of blasts or drafts, such as cold

drafts. Fraver’s novel combination also inherently pro-

vided the additional novel result of keeping the windows

free of frost, mist and other condensation, since an enor-

mous amount of air is introduced into the front seat cham-

ber and distributed along the width of the car. In the

words of respondent in its advertising,

“Through continual ventilation, the Climatizer

keeps windows free of frost, mist and other condensa-

tion.’’

Thus, by respondent’s own admissions, the novel com-

bination of elements used by respondent and claimed by

petitioner, provides improved, novel, highly useful, and

unusual results which urged respondent to refer to the

Climatizer combination (Pl. Ex. 15) as ‘‘the world’s most

advanced fresh air heating, ventilating and defrosting sys-

tem.’’ Petitioner fully agrees with these conclusions, and

so did the Patent Office Examiner in allowing the Fraver

claims over prior art of substantially the same scope as

urged by respondent and the Court.

Petitioner’s expert witness, Dr. Forstall, Professor at

Carnegie Tech, one of this country’s leading engineering

universities, and an outstanding expert in heating and

ventilating (R. 4a-6a), testified that in his opinion the

F'raver combination provided various of the above new and

useful results (R. 8a). He testified:

‘‘So that I think that these advantages, as disclosed

in the patent seem to be a method of bringing the air

in, distributing it evenly, slowing it down, before it

enters the body proper, keeping it confined to the floor,

or at least introducing it near the floor. That seems

to be an element of novelty here, that the air enters

in a diffused fashion with a lower velocity, perhaps

than has been customary earlier.’’

Mr. Matulatias, petitioner’s expert witness is probably the

most qualified expert witness in the automobile heating and

ventilating art (R. 11a-13a), formerly Chief Engineer of

the Eton Manufacturing Company of Cleveland, one of the

largest manufacturers of auto heaters, and who holds 20

to 25 patents as an inventor of automotive devices, particu-

larly heating and ventilating systems. (R. 12a.) Perhaps

\% of all outstanding automobile heating and ventilating

systems embody his inventions. (R. 102) (R. 12a.) Mr.

Matulatias also testified that in his opinion Fraver made

an outstanding contribution to the art and that his com-

bination provided many new and useful results. (R. 12a,

13a, 16a.)

Dr. Forstall testified that each of the elements in claim 1

of the Fraver patent could be found in the accused Clima-

tizer. (R. 53-56, R. 9a.) Likewise Mr. Matulaitas testi-

fied that every element of claim 1 could be found in the

Climatizer (R. 15a, 16a, 17a, 111, 119) and that the pat-

ented device and Climatizer were ‘‘identical technically.’’

(R. 17a, 119.)

Petitioner’s expert witness, Mr. Klemplay, was formerly

a Patent Examiner for seven years, and subsequently, a

Patent Attorney for 15 years, as well as a professional

engineer, and was thoroughly familiar with respondent’s

Climatizer since he drove a Studebaker equipped with one

for more than a year. (R. 17a.) He also became very

familiar with the cited art in the file wrapper and history

of the Fraver patent. (R. 139, 18a.) He testified that in

his opinion the Fraver patent was clearly valid and in-

fringed by the accused Climatizer. (R. 18a.)

The above evidence clearly shows that claim 1 recites a

novel and patentable combination of both new and old ele-

ments, and in the language of the recent A & P case, ‘‘the

conjunction or concert’’ of elements does ‘‘contribute some-

thing’’, so that ‘‘the whole in some way exceeds the sum

of its parts’’, therefore is patentable, and there are ‘‘un-

usual consequences from the unification of the elements’’,

therefore invention.

Therefore the jury’s conclusion of validity and infringe-

ment was certainly that of ‘‘reasonable’? men and not

capricious, since it is hardly fair to say that the Patent

Office Examiners are not reasonable men, that all plaintiff’s

highly qualified experts are not reasonable men, and that

the 12 jurors are not reasonable men. On the contrary,

the facts of the present case show invention of the highest

order, therefore the presumption of validity which attaches

to an issued patent should not be disturbed. For the above

reasons, the jury’s verdict of validity and infringement is

strongly supported by the evidence.

Article 1 See. 8 of the Constitution was intended to

‘‘encourage”’ inventions and “‘promote progress’’ by grant-

ing patent rights as incentives to the great number of in-

ventors who are needed for this purpose, not merely to

one or two super-geniuses. How can invention be ‘*en-

couraged’’ if Courts are permitted to exercise inventive

effort to find ways of ‘‘reneging’’ on the solemn obliga-

tions of the patent grant?

As ably stated by this Court, speaking through Mr. Jus-

tice Reed very recently (March 1954) in Mazer et al. v.

Stein et al., 100 U.S. P. Q. 325, at 333:

‘‘The economic philosophy behind the clause empow-

ering Congress to grant patents and copyrights is the

conviction that encouragement of individual effort by

personal gain is the best way to advance public wel-

fare through the talents of authors and inventors in

‘Science and useful Arts.’ Sacrificial days devoted

to such creative activities deserve rewards commensu-

rate with the services rendered.”’

Petitioner spent many ‘‘sacrificial”’ years to develop and

patent his invention while in poor financial circumstances.

Added to this were recent ‘‘sacrificial’’ years paying for

the present litigation, which he could ill-afford, because of

a steadfast belief that the government gave him something

of value and enforceable in issuing his patent. After a

long and hard fought battle he obtained a well deserved

favorable jury verdict. Then suddenly victory was turned

into defeat merely because the judge drew different factual

inferences than the Patent Office, 12 jurors and 3 out-

standing expert witnesses. Is this carrying out the Con-

stitutional guaranty of a jury trial and its intent of

‘‘encouraging’’ invention?

Conclusion

The District Court’s Order of May 1, 1953, setting aside

the jury’s verdict and judgment for petitioner, is clearly

erroneous and stands as a very bad precedent which will

materially and adversely affect the rights of the public

and litigants of all pending and future patent jury cases.

It is therefore respectfully submitted that this petition for

certiorari to review and correct that judgment should be

granted.

Respectfully submitted,

WILLIAM J. RUANO,

, 1530 Park Building,

Pittsburgh 22, Pennsylvania,

Counsel for Petitioner.

Appendix A

35 U. S. C. 67; R. S. 4919. Infringement of patent;

damages for

‘‘Damages for the infringement of any patent may

be recovered by action on the case, in the name of the

party interested, either as patentee, assignee, or

grantee. And whenever in any such action a verdict is

rendered for the plaintiff, the court may enter judg-

ment thereon for any sum above the amount found by

the verdict as the actual damages sustained, according

to the circumstances of the case, not exceeding three

times the amount of such verdict, together with the

costs. (R.S. see. 4919.)”’

35 U.S. C. 281 Remedy for infringement of patent

‘‘A patentee shall have remedy by civil action for

infringement of his patent. (R. S. 4919, 4921; 35

U.S. C. 1946 ed., 67, 70.)”

35 U. S. C. 284 Damages

‘*Upon finding for the claimant the court shall award

the claimant damages adequate to compensate for the

infringement but in no event less than a reasonable

royalty for the use made of the invention by the in-

fringer, together with interest and costs as fixed by

the court.

‘“When the damages are not found by a jury, the

court shall assess them. In either event the court may

increase the damages up to three times the amount

found or assessed.

‘‘The court may receive expert testimony as an aid

to the determination of damages or of what royalty

would be reasonable under the circumstances. (R. S.

4919, 4921; 35 U. S. C. 1946 ed., 67, 70.)”’

35 U. S. C. 103 Conditions for patentability ; non-obvious

subject matter

‘*A patent may not be obtained though the inven-

tion is not identically disclosed or described as set forth

in section 102 of this title, if the differences between

the subject matter sought to be patented and the prior

art are such that the subject matter as a whole would

have been obvious at the time the invention was made

to a person having ordinary skill in the art to which

said subject matter pertains. Patentability shall not

be negatived by the manner in which the invention was

made,”’

—_—— PAGE

I NN oh tirade day onde hice occu tie oe 1

DD hseswh.dncdicin ob ils beech Lace, 1

The Questions Presented ....................... 1

wembememt OF the Cae6... o.oo. i. sce ccne boas eels 2

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TABLE OF CASES

Black Diamond Coal Mining Company v. Excelsior

Coal Company, (1895) 156 U.S. 611...........

Brady v. Southern Railway Co., (1943) 320U.S.476 4

Capital Traction Company v. Hof, (1899) 174U.S.1 4

Connors et al. v. Ormsby, (1 Cir., 1906) 148 Fed.13.. 7

Cutter Laboratories, Inc. v. Lyophile-Cryochem

Corp., (9 Cir., 1949) 179 F. 2d 80............. 7

E.D. Pa., 1952) 107 F. Supp. 1010............. 7

Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., (1950) 340 U.S. 147........ 6

Himes v. Chadwick, (9 Cir., 1952) 199 F. 24100.... 6,9

Hurin v. Electric Vacuum Cleaner Co., Inc. (6 Cir.,

AD Es bc have ekeb te ce cosas ux 9

Mahn v. Harwood et al., (1884) 112 U.S. 354........ 5

Mcllvaine Patent Corporation v. Walgreen Co., et al.,

(7 Cir., 1943) 138 F. 2d 177; 44 F. Supp. 530.... 7,9

McRoskey v. Braun Mattress Co., (9 Cir., 1939) 107

tt en ee TT Cpe reer re ere cere 9

Packwood v. Briggs & Stratton Corp., et al., (3 Cir.,

er eer? Pee naga 7

Table of Cases.

PAGE

Patent Scaffolding Co., Inc. v. Upright Inc. et al., (9

Cg Bie) Be Bh. Be GG. on ccc ccwcseveces 7,9

Pennsylvania R. Co. v. Martin, (3 Cir., 1901) 111

ih dikes db ns knee 6hdle nd awed 4

Pennsylvania Railroad Co. v. Chamberlain, (1933)

EE See cela vecehbee se naan Waewpe os 4

Ryan Distributing Corporation v. Caley, (3 Cir.,

abo tsa on aeawed> xesoa oe 7,9

Singer Manufacturing Company v. Cramer, (1904)

Sk eS 0 ieee s One Lakes orbs meen 9

Western Electric Co. v. Robertson et al., (2 Cir.,

SD ME OR oe boc veda ess swodcnivecice a

Supreme Court of the United States

OCTOBER TERM, 1953

NO. 672

IVAN N. FRAVER, Petitioner,

Vv.

THE STUDEBAKER CORPORATION, Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO

PETITION FOR A WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE THIRD CIRCUIT

Opinions Below

The opinion of the District Court for the Western

District of Pennsylvania is reported at 112 F. Supp. 209.

The opinion of the Court of Appeals for the Third Circuit

is reported at 208 F. 2d 794.

Jurisdiction

Respondent admits the jurisdiction of this Court

under 28 U.S.C., Section 1254 (1).

The Questions Presented

Petitioner’s statement of questions allegedly pre-

sented by the record is grossly misleading, particularly

as regards the action taken by the District Court and the

bases or reasons for that action. The only question

Brief for Respondent in Opposition to Petition.

stated by petitioner not subject to this criticism is No.

2; but that question is purely academic in this record. In

reality, petitioner is merely seeking review by this Court

of adverse decisions by a Master, the District Court and

the Court of Appeals in an ordinary patent infringement

action in which his patent was held invalid and not in-

fringed by respondent.

The only question presented is whether the Court of

Appeals erred in sustaining the action of the District

Court in granting respondent’s motion under Rule 50(b)

of the Federal Rules of Civil Procedure for judgment not-

withstanding the verdict where the Court was of the opin-

ion that, as a matter of law, petitioner’s patent was in-

valid and, even if valid, not infringed.

The decision of the Court of Appeals is not in conflict

with any decision of any other Court of Appeals. It is

in full accord with and not in conflict with the applicable

decisions of this Court. It does not involve a question of

Federal law which has not been settled by this Court, and

it does not so depart from the accepted and usual course

of judicial proceedings as to call for an exercise of this

Court’s power of supervision.

Statement of the Case

Petitioner’s “Statement of the Case” incorrectly and

incompletely states the proceedings below.

Petitioner filed an action against respondent for in-

fringement of patent No. 1,903,037, which issued March

28, 1933 and which had expired before trial. The patent

relates to a car heating, cooling and ventilating apparatus

which had not been adopted or used by anyone during

Brief for Respondent in Opposition to Petition.

the entire life of the patent. Petitioner asked for a jury

trial. On the ground that the action was complicated, the

District Court referred the matter to a Special Master,

an eminent member of the patent bar upon whom the

parties agreed for the purpose. After a full hearing, the

Special Master reported that petitioner’s patent was in-

valid and not infringed by respondent and recommended

that the action be dismissed. The action later came on

for trial before a jury and the Special Master’s report

was read to the jury. Both parties adduced additional

evidence and, at the conclusion of ali of the evidence,

respondent moved that a verdict be directed in its favor

on the grounds that the patent was invalid and that re-

spondent had not infringed. That motion was denied and

the case was submitted to the jury. The jury found that

Claim 1 of petitioner’s patent was valid and had been

infringed. Respondent seasonably moved that the ver-

dict and judgment thereon be set aside and that judgment

be entered for respondent in accordance with its motion

for a directed verdict. After oral argument and exhaus-

tive briefs, respondent’s motion for judgment n.o.v. was

granted on May 1, 1953, pursuant to an opinion filed simul-

taneously by the Honorable Rabe F. Marsh, in which he

held, as a matter of law, that Claim 1 of petitioner’s

patent was invalid and not infringed.

Contrary to petitioner’s assertions, the District Court

did not have to weigh the credibility of witnesses or any

dispute as to the meaning of scientific terms. The issue

of validity required nothing but the comparison of writ-

ten documents, namely, the plaintiff’s patent with prior

patents and trade publications, the authenticity of all of

which was admitted. The evidence on infringement, con-

Brief for Respondent in Opposition to Petition.

sisting of plaintiff’s patent and the defendant’s admitted

structure, was not confliciing, except, as the District

Court stated, in an interpretive sense and there was but

one reasonable conclusion as to the proper verdict.

Petitioner appealed to the Court of Appeals for the

Third Circuit, which affirmed the District Court’s action

in granting the motion for judgment n.o.v.

Argument.

Contrary to petitioner’s contentions, the action of

the Courts below in this case is in direct accord with

applicable decisions of this Court and various Courts

of Appeals. It is well established that, in the Federal

Courts, the trial judge should direct the jury’s verdict

whenever the evidence is such that, without weighing

the credibility of witnesses, there can be but one rea-

sonable conclusion as to the verdict, or, as it is some-

times stated, that the trial judge should direct the ver-

dict whenever the evidence preponderates so strongly

in favor of one side that a verdict for the other, in the

exercise of sound judicial discretion, would be set aside

as against the manifest weight of the evidence: Brady

v. Southern Railway Co., (1943) 320 U.S. 476, 479-480;

Pennsylvania Railroad Co. v. Chamberlain, (1933) 288

U.S. 333, 343; Pennsylvania R. Co. v. Martin, (3 Cir.,

1901) 111 Fed. 586, 589.

On the issue of validity, it was the duty of the Dis-

trict Court to keep the jury’s findings within reasoned

rules and standards: Capital Traction Company v. Hof,

(1899) 174 U.S. 1, 13-16. It was the duty of the District

Court to see that the proper standard of invention was

applied, as a matter of law, and this is exactly what the

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Brief for Respondent in Opposition to Petition.

District Court did. In its opinion, the District Court

stated (p. 211):

“Therefore, when we scrutinize the patent

broadly as plaintiff would have it done, it is evi-

dent in the light of the prior disclosures, that the

standards of invention were not met and that his

patent was anticipated, lacks novelty, and, in 1933,

was obvious to those skilled in the art.”

With reference to the other possible construction, the

District Court stated (p. 212) :

“Thus when plaintiff’s combination patent is

scrutinized under the strict construction, it con-

tinues to appear that no distinct contribution has

been made in the art of car ventilating and that no

new or unusual result or invention has been shown.

Therefore, as a matter of law, the verdict based on

that construction should be set aside.”

As early as 1884, this Court, in Mahn v. Harwood

et al., 112 U.S. 354, held the question of validity or “pat-

entable invention” to be a matter of law for the Court.

In that case, the Court stated (pp. 358-59) :

“In cases of patents for inventions, a valid de-

fence not given by the statute often arises where

the question is, whether the thing patented amounts

to a patentable invention. This being a question

of law, the courts are not bound by the decision of

the commissioner, although he must necessarily

pass upon it. See Brown v. Piper, 91 U.S. 37; Glue

Co. v. Upton, 97 U.S. 3; Dunbar v. Myers, 94 U.S.

187, 197-199; Atlantic Works v. Brady, 107 U.S. 192,.

199; Slawson v. Grand St. Railroad Co., 107 U.S.

649, 652; King v. Gallun, 109 U.S. 99, 101.”

HEE NRTA ROL SY RTE CR MRIS IN RG RIE BA EES OR GN EI

x 2

Brief for Respondent in Opposition to Petition.

The latest pronouncement on this subject by this

Court is in Great Atlantic & Pacific Tea Co. v. Supermar- ,

ket Equipment Corporation, (1950) 340 U.S. 147, in

which this Court reversed concurrent holdings of the

Courts below on the question of patentable invention,

holding that the lower Courts’ decisions on the issue

“cannot stand as a matter of law.” This Court held ,

that the lower Courts had failed to apply the proper

“standard of invention.” In the concurring opinion of

Mr. Justice Douglas and Mr. Justice Black, it was

pointed out that this standard of patentability is a con-

stitutional standard and, hence, a question which must

be decided by the Court. In this connection, the concur-

ring opinion states (pp. 155-56) :

“The standard of patentability is a constitu-

tional standard; and the question of validity of a

patent is a question of law. Mahn v. Harwood, 112

U.S. 354, 358. * * * The Court now recognizes what

has long been apparent in our cases: that it is the

‘standard of invention’ that controls. That is pres-

ent in every case where the validity of a patent is

in issue. It is that question which the Court must

decide. No ‘finding of fact’ can be a substitute for

it in any case. The question of invention goes back

to the constitutional standard in every case. We

speak with final authority on that constitutional

issue as we do on many others.”

The decisions of the lower Courts in the case at

bar are not in conflict with pertinent decisions of other

Courts of Appeals. This is shown by:

Himes v. Chadwick, (9 Cir., 1952) 199 F. 2d

100;

FREON G BEP INE NS ELE RENN REIS 1h PISO OAD SRNR FELT S AMT TE aaNTS a i a Oe

Brief for Respondent in Opposition to Petition.

Cutter Laboratories, Inc. v. Lyophile-Cryochem

Corp., (9 Cir., 1949) 179 F. 2d 80;

Fischer & Porter Co. v. Brooks Rotameter Co.,

(D.C. E.D. Pa., 1952) 107 F. Supp. 1010;

Packwood v. Briggs & Stratton Corp. et al., (3

Cir., 1952) 195 F. 2d 971;

Patent Scaffolding Co., Inc. v. Upright Inc. et al.,

(9 Cir., 1952) 194 F. 2d 457;

Ryan Distributing Corp. v. Caley, (3 Cir., 1945)

147 F. 2d 138;

Mcllvaine Patent Corp. v. Walgreen Co. et al.,

(7 Cir., 1943) 138 F.2d 177, 44 F. Supp. 530;

Connors et al. v. Ormsby, (1 Cir., 1906) 148

Fed. 13.

The action of the lower Courts in entering judgment

mn. 0. v. on the issue of infringement is likewise in accord

with the applicable decisions of this Court. On this issue,

the District Court stated ( pp. 212-13) :

“But assuming, as the jury found, that the pat-

ent as strictly construed by the court was valid, we

believe it would still be necessary to enter judgment

n. Oo. v. for the defendant for the reason that the evi-

dence does not warrant a verdict of infringement.

See Black Diamond Coal Mining Co. v. Excelsior Coal

Co., 1895, 156 U.S. 611, 15 S. Ct. 482, 39 L. Ed. 553;

Singer Mfg. Co. v. Cramer, 1904, 192 U.S. 265, 24 S.

Ct. 291, 48 L. Ed. 437; Ryan Distributing Corp. v.

Caley, 147 F. 2d 138, supra; Western Electric Co. v.

Robertson, 2 Cir., 1905, 142 F. 471; Hurin v. Electric

Vacuum Cleaner Co., 6 Cir., 1924, 298 F. 76; McRos-

Rar a

: -

Brief for Respondent in Opposition to Petition.

key v. Braun Mattress Co., 9 Cir. 1939, 107 F. 2d 143;

Fischer & Porter Co. v. Brooks Rotameter Co., 107 F. ,

Supp. 1010, supra. The principle to be gathered from

these cases is that where the credibility of witnesses

is not involved, the meaning of scientific terms is

not in substantial dispute, and the evidence on in-

fringement is not conflicting, except in the interpre- ?

tive sense, the question of infringement, even though

one of fact, is for the court and not for the jury. We

think such a case is presented here.”

As is apparent from the above quotation, the District '

Court predicated its action on this Court’s decision in

Black Diamond Coal Mining Company v. Excelsior Coal

Co., (1895) 156 U.S. 611, in which this Court held (p. 618) :

“For the reasons given above, we think the court erred

in its interpretation of the patent. If there was any

invention at all disclosed, it was in the use of the re-

servoir and the screening device, and without ex-

presssing an opinion upon this point of patentability,

it is clear that no infringement was involved in the

use of defendant’s hopper and chute, with or without

a solid bottom, if for no other reason, because it

lacked the reservoir of the plaintiff’s patent.

“There was no question to go to the jury in the

case, and the court should have directed a verdict

for the defendant.”

Thus it is clear that this Court, as early as 1895,

held that, where the evidence does not warrant a verdict

of infringement, it is within the power of the Court to

direct a verdict for the defendant.

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Brief for Respondent in Opposition to Petition.

The District Court also relied upon this Court’s deci-

sion in Singer Manufacturing Company v. Cramer,

(1904) 192 U.S. 265, wherein the Court stated (p. 275) :

“As in each of the patents in question it is apparent

from the face of the instrument that extrinsic evi-

dence is not needed to explain terms of art therein, or

to apply the descriptions to the subject matter, and

as we are able from mere comparison to comprehend

what are the inventions described in each patent and

from such comparison to determine whether or not

the Diehl device is an infringement upon that of

Cramer, the question of infringement or no infringe-

ment is one of law and susceptible of determination

on this writ of error. Heald v. Rice, 104 U.S. 737;

Market Street Cable Ry. Co. v. Rowely, 155 U.S. 621,

625.”

That the District Court’s action is in accord with

applicable decisions of the various Courts of Appeals is

apparent from the following cases:

Himes v. Chadwick, (9 Cir., 1952) 199 F. 2d 100;

Patent Scaffolding Co., Inc. v. Upright, Inc. et al.,

(9 Cir., 1952) 194 F. 2d 457;

Ryan Distributing Corp. v. Caley, (3 Cir., 1945)

147 F. 2d 138;

McIlvaine Patent Corp. v. Walgreen Co. et al.,

(7 Cir., 1943) 138 F. 24177; 44 F. Supp. 530;

McRoskey v. Braun Mattress Co., (9 Cir., 1939)

107 F. 2d 143, 147;

Western Electric Co. v. Robertson et al., (2 Cir.,

1905) 142 Fed. 471;

Hurin v. Electric Vacuum Cleaner Co., Inc., (6

Cir., 1924) 298 Fed. 76.

Brief for Respondent in Opposition to Petition.

In his brief, petitioner has devoted many pages to

an argument to the effect that the evidence supports the

jury’s verdict on the issues of validity and infringement.

We shall not trouble the Court to reply to petitioner’s

arguments in this regard, since it is clear that the action

of the District Court and the Court of Appeals is in accord

with the applicable law as enunciated by this Court and ,

that no real ground for review exists.

Conclusion

We submit that the petition for a writ of certiorari

should be denied.

Respectfully submitted,

WILLIAM H. ECKERT

WILLIAM H. WEBB

Attorneys for Respondent.

JOHN A. DIENNER

EDWARD C. GRELLE,

Of Counsel.

Office - Supreme

Bi i.

MAY 6

| HAROLD B. WIL

In THE

Supreme Court of the United States

OCTOBER TERM, 1953

NO. 672

IVAN N. FRAVER,

Petitioner,

THE STUDEBAKER CORPORATION,

- Respondent.

REPLY BRIEF FOR PETITIONER

WILLiAM J. RUANO,

Counsel for Petitioner.

_ 1530 Park Building,

Pittsburgh 22, Pennsylvania.

—————————————————————

SMITH BROS. CO. INC., LAW PRINTERS, 434-436 BLYD. OF ALLIES, PITTSBURGH 1, PA,

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