Brief for the Respondent in Opposition — Bausch & Lomb Optical Co. v. Lyon

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IN THE

Supreme Court of the Anited States

OcroBER TERM, 1955

No. 379

Bauscu & Lomp Optica. Co., Petitioner,

Dean A. Lyon, Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO PETITION

FOR WRIT OF CERTIORARI

JOHN W. MALLEY,

C. WiLLarD HAYEs,

730 Fifteenth St., N.W.,

Washington 5, D. C.

Attorneys for Respondent.

Press or Byron S. Anas, Wasurincron, D. C.

SUBJECT INDEX

Brown & Sharp Mfg. Co. et al v. Kar Exgineering Co.,

Inc., 154 F. 2d 48, 52, (C.A. 1) 1946, (Cert. Den. 328

Page

ro cnetitcee gy Be EEE EEE TTR ECT POROT LE en 1

rece cutest a OES Ce PE PEELE ae RCS 4

Respondent’s Statement of the Case ................ 5

pmamniey Of Argoment ... oo ociicn cs Bo ckcocwc ce. 8

ee gag A Ee EE OTD EE CUT ate GE 9

Petitioner’s ‘‘Statement of the Case’? Is Inaccurate

RU IN ee ee eS ee 9

Petitioner’s ‘‘Questions’? Are Not Properly Pre-

sented by Plaintiff’s Patent and the True Find-

PE IE Retina Ce ee Ohh 21

NR A oll) cae iG ana eowise yo, eet 23

RI Be ork ae 24

NNN By ox sont conde bi eek: ec ieoe 26

ae vise se os beee Ee ETT EET RO ne 29

The Findings Below Establish That Plaintiff’s Dis-

covery Satisfied the Most Rigid Test of Invention.. 34

NE 055i xe nin cies wh baRE Beer eee eh cka 39

TABLE OF AUTHORITIES CITED

Adler Sign Letter Co. v. Wagner Sign Service, 112 F.

2d 264, 267 (C.A. 7), April 25, 1940, (Cert. Den. 311

MER 55 ok Cn bined Soda d ak eke Hos ek 38

Baker v. Schofield, 243 U.S. 114, 118, 61 L. Ed. 626, 630 22

B. G. Corporation v. Walter Kidde &: Co., Inc., 79 F. 2d

Wa Ces Dy OUND By PON ioe oe ev kek eee y 38

ii Subject Index Continued.

Page

Delta Mfg. Co. v. E. L. Essley Machinery Co., 153 F. 2d

905, 906 (C.A. 7), February 28, 1946, (Cert. Den. 328

Ts TOPE SE PUeS BOE I Goninie 5 ee ia ea ae 38

1936, (Cert. Den. 298 U.S. 690) .............0c000e. 39

Faulkner v. Gibbs, 338 U.S. 267, 268; 94 L. Ed. 62

WON Soo Sree UC ay acne ee iad oe ot 37

_ Florence-Mayo Nuway Co. v. Hardy, et al., 168 F. 2d

RO: a EE AOR ce klk wiv a ae ees gona 38

Forestek Plating € Mfg. Co. v. Knapp-Monarch Co.,

106 F’. 2d 554, 557, 558, (C.A. 6), Sept. 18, 1939 ..... 38

855; Rehearing Den. 333 U.S. 870) ................ 39

_ General Talking Pictures Corp. v. Western Electric

Co., 304 U.S. 175, 178; 82 L. Ed. 1273 .............. 22

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

275, 278, 279; 88 L. Ed. 721, 723, 724 (1944)........ 22, 35

_ Grant Paper Box Co. v. Russell Box Co., 154 F. 2d 729,

: (C.A. 1) 1946, (Cert. Den. 329 U.S. 741) .......... 37

RE Oh aka ci lee Cage Abid can GAS See sw 22, 23, 37

Great Atlantic & Pacific Tea Co. v. Supermarket

Equipment Corp., 340 U.S. 147 (1950) ............. 1

U.S. 886; Rehearing Den. 346 U.S. 917) ............ 38

Rehearing Den. 336 U.S. 929) .............cccc0s, 39

Hayes et al v. Surface Combustion Corporation, 96 F.

2d 61, 64, 65, (C.A. 2), April 4, 1988 .............. 38

Heitmuller v. Stokes, 256 U.S. 359, 362, 41 Sup. Ct. 522 21

ns ee re ee ae aoe 38

We oocyte 39

Subject Index Continued. iii

Page

Kelley-Koett Mfg. Co. v. McEuen, 130 F. 2d 488, 492

(C.A. 6) 1942, (Cert. Den. 318 U.S. 763) .......... 38

Landis Machine Co. v. Parker-Kalon Corp. et al., 190

eee Oe COA, Bh, TOE oe heels ey owe 36

Layne & Bowler Corp. v. Western Well Works, 261

re ee ey rs Baa 22

Levin v. Coe, 132 F. 2d 589, 596 (C.A.D.C.) Nov. 2, 1942 39

(C.A. 1), July 19, 1946, (Cert. Den. 329 U.S. S11)... 3

iv Subject Index Continued.

STATUTES Page

The 1952 Patent Act (Title 35 MUBARE sche tne 4, 8, 9, 21,

23, 24, 25, 26,

34, 35, 36, 40

ee ONC MN COD 6 5 vcs Dan dak vawenkeehe ben 2

PN MINS $56 84 Svs 6 6 Saks on ab deduce fc 23, 34

ER 66. is is niiicaes das ban coniaa lee, 26

chasse es cas ROR REE NHR te 25, 26

RULES

Rule 52 (a) of the Federal Rules of Civil Procedure. .22, 37

Rule 23-1 (e) of the Supreme Court of the United

ce SAREE RTA E eA Sele pe mia ts 5, 40

APPENDIX

Opinion (Decision) United States District Court, West-

ern District of New York ........................ la

IN THE

Supreme Court of the United States

Octoper TERM, 1955

No. 379

Bauscx & Los Oprticar Co., Petitioner,

Dean A. Lyon, Respondent.

BRIEF FOR RESPONDENT IN OPPOSITION TO PETITION

FOR WRIT OF CERTIORARI

INTRODUCTION

This litigation is between an individual inventor,

the plaintiff-respondent Lyon, and the defendant-

petitioner Bausch & Lomb Optical Co., one of the

largest optical corporations of the world.

This is not a “‘gadget’’ patent case as in A. & P. v.

Supermarket.* The invention is one of real dignity

*Great Atlantic & Pacific Tea Co. v. Supermarket Equipment

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

and importance; an improvement which m:

the successful application of a complex scientific and

chemical vacuum-evaporation process for depositing

: extremely thin light-transmitting films on optical

elements for use in military instruments, binoculars,

cameras, etc. It was of great and direct benefit to the

: public, contributing substantially to the success of our

Armed Forces in the last war. In the words of the

trial Court, it was an “outstanding”? discovery which

! ‘greatly benefited the United States N avy”’ and ‘‘the

industry in general’’ and was “‘overlooked by the most

. skilled scientists working in the art for long periods

of time on the problem of obtaining hard and durable

films though the solution was under their very eyes’’

(Find. of Fact 10, Vol. II, DA* 933a, Con. of Law 9,

Vol. II, DA 947a).

This suit does not involve an attempt by a strong

company to enforce a sweeping monopoly in patent

rights. It isa defensive suit by an individual inventor,

against this corporation which has asserted the right

to deliberately appropriate his property while being

: unwilling to pay a small royalty which the trial Court

found was reasonable (Find. of Fact 16, 17, Vol. IT,

DA 935a, 936a).

ie altel

* References to the record herein use “DA”’ with reference to

Volumes I and II of defendant-appellant’s appendix in the Court

of Appeals, and ‘‘PA’’ with reference to the single Volume of

plaintiff-appelleo s appendix in the Court of Appeals.

The decision and findings of the trial Court are for convenience

reprinted and bound in as the appendix to this brief, with the

appropriate page numbers 910a-947a inclusive as used in Volume

II of Defendant-Appellant’s appendix in the Court of Appeals,

being indicated. In referring to the decision (opinion) and find-

ings of the trial Court throughout this brief, the page numbers

of Volume II of Defendant-Appellant’s appendix below (pages

910a-947a) will be used, but quick reference can be made to the

designated page in the appendix bound in this brief.

——

, -bs patent does not restrict use of the inven-

tion by or for the government. The government

retained a royalty-free license for all work performed

for it, permitting its employee, the plaintiff, to retain

title to the patent as applied to commercial or non-

government use of the invention. It is only defend-

ant’s commercial operations, for profit, which are

involved.

For a period of almost ten years, i.e., for sub-

stantially two-thirds the life of plaintiff’s patent, the

greatest of the optical corporations have caused to be

withheld from plaintiff the modest commercial reward

granted to him by his government for his great

discovery. Plaintiff made his discovery in 1941, and

devoted all his efforts to developing the invention for

the Navy during the war and prior to the time of the

issuance of his patent in 1946.

The Eastman Kodak Co. immediately upon issuance

of plaintiff’s patent unjustly involved it in inter-

ference with an application which it filed in the name

of one Beggs, who had left the employ of the Eastman

company several years before this application was filed

in his name. The trial Court termed this Beggs

application a ‘‘device to exact a license from the

plaintiff’? (Find. of Fact 23, 25, Vol. II, DA 938a).

In the meantime, defendant had applied plaintiff’s

method to its commercial work and refused to take a

license. This suit was filed in 1949. Expensive pre-

trial and trial proceedings lasted until early in 1954,

when judgment was entered for plaintiff. Defendant

Bausch & Lomb was held to be a deliberate infringer,

and the patent was held valid. The appeal proceedings

from that judgment extended until the middle of 1955,

when the Court of Appeals affirmed the judgment in

favor of plaintiff.

Now, ten years after the issuance of plaintiff’s

patent, and almost fifteen years after he made his

invention, defendant seeks, under the guise of

“Questions’’ purporting to present the interests of the

public, to further delay plaintiff’s enjoyment of his

patent by requesting a new review of the facts in the

Supreme Court, rather than to pay plaintiff a modest

royalty.

JURISDICTION

While the jurisdiction of the Supreme Court to

review by granting certiorari is comprehensive, the

decisions and findings below do not support nor present

the questions posed in the petition.

The ‘‘Questions” of the petition are broad and

indefinite, and they only challenge certain general

obiter dicta expressions taken from context out of the

opinion of the Court of Appeals. The opinion of the

Court of Appeals must be read in the light of the

decision and findings of the trial Court, to which it

specifically refers, assumes familiarity with, and

adopts.*

Petitioner presents its questions as though a patent

held invalid for lack of invention before the 1952

Patent Act has been held valid after that Act, and

assumes findings of lack of invention, anticipation and

obviousness which never were made. On the contrary,

the claims of the patent now in issue were held valid

by both courts on strong findings of invention, novelty,

and lack of obviousness. The patent never was held

invalid for lack of invention.

* The decision and findings of the trial Court are for convenience

reprinted and bound in as the appendix to this brief.

—————

In short, this case and this patent do not properly

present to this Court the questions posed in the

petition, and if such questions require determination,

they must await a case which properly supports and

presents them.

RESPONDENT'S STATEMENT OF THE CASE

Respondent does not accept petitioner’s **Statement

of the Case.’ It does not present the material facts

as required by Rule 23-1 (e). It is so commingled

with inaccuracy and misstatements of the findings of

the Courts below as to be a sufficient reason for deny-

ing the petition under Rule 23-4.

The trial Court found that defendant Bausch &

Lomb deliberately appropriated plaintiff’s invention

for its own commercial profit, and even publicly

claimed credit for having originated the invention,

while knowing that it had been discovered by the

plaintiff (Find. of Fact 15, 16, Vol. II, DA 935a, 936a).

The trial Court’s findings were unaniriously affirmed

by the Court of Appeals (Appendix to Petition, page

17a).*

Contrary to the arguments in petitioner’s “State-

ment of the Case’’ the facts found by the trial Court

are that plaintiff’s invention solved a serious problem

which had existed for a long period of years in the

indusiry (Find. of Fact 3, Vol. II, DA 929a). The

great corporations and laboratories, such as Eastman

Kodak Company and General Electric Company, after

intensive efforts over a period of years, had failed to

solve the problem. Defendant Bausch & Lomb had

* The opinion of the Court of Appeals is printed in an appendix

bound in the Petition.

also worked intensively on the problem over a period

of years and had failed to solve it. Defendant’s efforts

were so unsuccessful that it had recommended to the

Navy Department that the whole evaporation process

be abandoned (Find. of Fact 6, Vol. II, DA 931a).

The most skilled scientists in the industry, including

Dr. Hewlett of General Electric, Dr. Turner of Bausch

& Lomb, Dr. Cartwright of the Research Corp. and

M.I.T., and Drs. McLeod and McRae of Eastman

Kodak Co. had the solution of the problem under their

very eyes but failed to perceive it (trial Court

Decision Vol. II, DA 915a, 920a, 921a, 922a, Find. of

Fact 31, 34, 35, 39, Vol. II, DA 940a, 948a). The prior

patents and publications of the art had failed to teach

these skilled scientists the plaintiff’s invention (Find.

of Fact 37, 38, 39, Vol. IT, DA 948a).

The country was at the verge of the late World War

when the industry was frustrated by these failures.

The Navy needed a solution to the problem but the

great corporations and laboratories had failed to

supply it. In 1941, the plaintiff, then a minor govern-

ment employee at the Naval Gun Factory, discovered

the method of the patent in suit, which proved to be

the solution to the problem (Find. of Fact 7-9, Vol. IT,

DA 931a-933a). The importance of plaintiff’s dis-

covery is indicated by such as this finding of fact of the

trial Court:

‘10. Following this successful work the plain-

tiff’s method was applied by the Navy to virtually

all important optical equipment, including binoc-

ulars, gun director telescopes, spyglasses and

range finders. The success of the process was so

outstanding that priorities were established for

coating the optical instruments of all war vessels,

particularly combatant ships, in accordance with

the plaintiff’s method, as soon as the availability

of the ships would permit, and the method was

applied to the optics of both new construction

ships, and ships in service. Numerous repair

ships and tenders of the Navy were especially

provided with equipment to apply the process at

points adjacent to combat areas. The plaintiff’s

mvention greatly benefited the United States Navy

and was regarded by the Navy as the most im-

portant development in submarine periscopes in

recent years.* Plaintiff received special citations

from the Chiefs of the Bureau of Ships and

Ordnance of the Navy Department, and later by

the Secretary of the Navy. The plaintiff’s inven-

tion was also adopted by the Army for its optical

equipment and later by the industry in general.”

(Vol. II, DA 933a).

The plaintiff’s method supplanted all other methods

previously used. Other methods such as Cartwright’s

post-baking were supplanted by plaintiff’s invention.

The program which the Research Corp. had set up

licensing Cartwright’s patents including his method

of post-baking was in the words of the trial Court

“paralyzed by the widespread adoption of plaintiff’s

invention.’’ (Vol. II, Find, of Fact 18, DA 936a).

After their own failures, certain of the optical cor-

porations of the industry refused to recognize the

plaintiff’s patent though they were fully aware that

it was plaintiff who had solved the problem. These

corporations even publicly claimed credit for having

originated the process while knowing it was the work

of the plaintiff (Find. of Fact 15, 21, 22, Vol. IT,

DA 935a, 937a).

* Emphasis in quotations throughout is ours.

It was found as a fact by the trial Court that when

defendant commenced its commercial work “it was

aware that it was producing the method covered by the

plaintiff’s patent” (Find. of Fact 16, Vol. IT,

DA 936a). Plaintiff had offered defendant Bausch &

Lomb a license on royalty which the trial Court found

to be reasonable (Find. of Fact 16, 17, Vol. II,

DA 935a, 936a). The royalty requested by plaintiff

would have amounted to about six cents on binoculars

which sold for two hundred and ten dollars ($210.00),

(PA* 155a).

SUMMARY OF ARGUMENT

Petitioner’s ‘Statement of the Case” is inaccurate

and misleading. Contrary to its representations, the

Courts below found that plaintiff’s discovery was a

novel solution of a long existing and serious problem

in the industry, that it was not obvious, and that

defendant’s infringement was deliberate. The facts as

found below establish invention under the severest

tests.

Petitioner’s ‘‘Questions” 1 and 2 are objectionably

broad and indefinite, and are not supported by any

real conflict either with respect to the patent in suit

or important principles of federal law. Plaintiff’s

discovery has been held to be a patentable invention

by all Courts. Specifically, plaintiff’s patent was not

held invalid for lack of invention prior to the 1952

Patent Act, and it does not present a case for com-

paring the trend of decisional law in one period of

years with that in another.

* References to the record herein use ‘‘PA”? with reference to

the single Volume of plaintit-appellee’s appendix in the Court of

Appeals.

Petitioner’s ‘‘Questions’’ 3 and 4 misrepresent and

merely dispute the findings of fact of the Courts below.

The Supreme Court does not undertake to review

concurrent findings of Courts below, particularly

where the evidence was largely testimony of scientific

experts and where the findings were complete and

carefully prepared.

The applicable 1952 Patent Act states the test

of invention as whether or not the discovery or

improvement was obvious to a person skilled in

the art. This test is not new with the 1952 Patent

Act, but was used in many leading cases prior to that

Act by the Supreme Court and the various Courts of

Appeals. The Congress stated this test with the view

that the statute might have a stabilizing effect. Both

the trial Court and the Court of Appeals recognized

the unprecedented completeness of the evidence

establishing that plaintiff’s discovery had not been

obvious to the most skilled in the art, and they so found

in declaring the patent to be valid. The findings of the

Courts below establish that the discovery of the

patent in suit meets the test of invention under the

most rigid standard. Plaintiff’s patent therefore does

not present a case for comparing the trend of decisional

law in one era with that in another, in order to now

determine if the 1952 Patent Act has wrought a change.

ARGUMENT

PETITIONER'S “STATEMENT OF THE CASE” IS INACCURATE

AND MISLEADING

Contrary to the true findings, petitioner stubbornly

states the case as though the Courts below found that

no problem had existed in the art, as though it had been

found there was no novelty in plaintiff’s discovery

and that it was anticipated by prior patents and pub-

lications, as though plaintiff’s solution of the problem

had been found to be ‘‘obvious”’ to those skilled in the

art, and further as though defendant’s infringement

had been innocent rather than deliberate. These

representations are merely a reiteration of the same

arguments. which were unsuccessfully advanced by

petitioner in the Courts below.

It is not possible within desirable brevity of a

response, to point out all instances in petitioner’s

“Statement of the Case’? where the true facts and

findings are misstated or distorted by argument, but

the following instances demonstrate that petitioner’s

“Statement of the Case”’ is entirely unreliable.

In the first paragraph of the statement ( Petition,

page 8), after describing the evaporation process as

used before the plaintiff’s invention, petitioner states

it was then known (implying it was so found below)

that ‘ta more tenacious and hard film’’ was produced

by a method step known as ‘‘preheating.’’ In the same

sentence, it is stated with the same implication, that

a step known as ‘“‘post-baking’’ had ‘improved the

tenacity and ruggedness of the coating.”

The adroit wording of the same sentence also leaves

the impression that this ‘‘preheating”’ as known in the

art, was carried out in the vacuum chamber, rather

than in the outside air.

The stage of the process where the heat is applied

to the optical elements is of great significance because

plaintiff’s patented invention, which first obtained

these consistently hard and durable coatings, involves

heating the lenses in the vacuum and maintaining them

in heated condition in the vacuum while the film is

PR EE TOOT OC oon

being applied. Petitioner’s description of the known

‘“preheating’’ step, as involving ‘“‘heating the lens,

before being coated in the vacuum” appears to inten-

tionally suggest that the plaintiff’s method had been

known and practiced in the industry prior to his in-

vention, contrary to the positive and opposite findings

of the trial Court which were affirmed by the Court

of Appeals.

The trial Court, after weighing all of the evidence,

discussed these known ‘preheating’? and **nost-

baking”’ steps and found (Vol. II, DA 910a) that prior

to the invention ‘‘optical elements had been coated with

such materials but the coatings had not been con-

sistently rugged and durable’’ and that “The lack of

consistent ruggedness of the coatings had imposed

inherent limitations on their use in the industry.’’ The

trial Court after specifically discussing the known

‘preheating’? and ‘‘post-baking”’ steps (Vol. IT,

DA 911a) found that ‘All of such prior methods left

much to be desired with respect to the quality of

ruggedness and durability of the coated surfaces.”’

With respect to the implication of the petition that

the ‘‘preheating’’ step was performed in the vacuum,

the trial Court specifically and accurately defined the

‘preheating’? as known in the art, as a step which was

performed on the optical elements “before they were

placed in the vacuum chamber” (Vol. II, DA 911la,

lines 10 and 11), (Find. of Fact 4, Vol. II, DA 930a,

line 21).

With respect to the results of the **preheating”’’ and

‘“post-baking’’ steps, it is noteworthy that in the

paragraph of the ‘“‘Statement of the Case’’ referred to,

petitioner does not refer to findings below but merely

_ a

to the specification of plamiiff’s patent. Even in so

doing, the reference is either erroneous or inten-

tionally misleading. The page of the specification of

the patent referred to (Vol. II, DA 552a) after

describing the preheating and post-baking steps,

states that films so produced “‘are not sufficiently hard,

durable and tenacious to resist scratching and

abrasion, nor are they sufficiently hard, durable and

tenacious to resist the corrosive action of atmospheric

conditions.”’

The second paragraph of petitioner’s **Statement

of the Case’’ (Petition p. 8) again and more positively

misstates the true facts in the words “It was known

practice also in coating with such light-transmitting

(reflection-reducing films) . . . to heat the lens while

being coated in the vacuum, for the same purpose of

cleaning it, . . .”

The trial Court found on all the evidence that ‘*prior

methods had also been used to pre-heat the optical

elements before they were placed in the vacuum

chamber” (Vol. II, DA 911a). The trial Court also

found that ‘‘heating in the vacuum chamber, while a

coating is being evaporated onto the optical surface,

had not been disclosed in the art of applying inorganic

salts to an optical surface’? (Vol. II, DA 913a). The

trial Court found that the patent in suit “defines a

new and useful method or process residing in the

heating of the optical elements in the vacuum to an

elevated temperature and depositing the inorganic

salt coatings of the metallic fluorides, such as

magnesium fluorides, thereon while they are main-

tained at this elevated temperature in vacuum” (Find.

of Fact 43, Vol. II, DA 944a).

—

The trial Court found that “The persons most

skilled in the art had not discovered the invention of

the patent in suit and had not appreciated that un-

usual results could be obtained thereby in securing

harder films by practicing the method as defined in the

patent in suit.’”” (Find. of Fact 7, Vol. II, DA 932a).

The Court of Appeals specifically found that this

step of heating the lens while being coated in the

vacuum with the light transmitting films, was novel.

The Court of Appeals stated ‘‘although Lyon’s advance

lay only in keeping the ‘optical surface’ itself heated

while it was being coated, this did not appear in any

patent or printed publication on November 17, 1942”

(Appendix to Petition, pages 3a, 5a).

The third paragraph of petitioner’s ‘Statement of

the Case’”’ (Petition p. 8) states the history of plain-

tiff’s discovery and invention as though the plaintiff

had learned of the invention when he visited various

optical plants in 1941.

The trial Court specifically found that **plaintiff

made his discovery independently, and did not acquire

knowledge of the invention from the prior art or from

any of the facilities which he had visited” (Find. of

Fact 8, Vol. II, DA 932a).

This ‘‘Statement of the Case’’ (Petition p. 10)

refers to arguments of ‘“‘government solicitors” and an

‘interview’? with the Examiner, and states that the

Examiner ‘‘withdrew the rejection of the claims but

without any relevant or adequate explanation.’’ The

trial Court after weighing all of the evidence, found

that the Examiner did not act improperly, and that he

teres

did give an adequate reason for allowing the claims,

in the following language:

‘“‘He found that in the art of coating with in-

organic salts it had not been suggested to heat the

elements to an elevated temperature in vacuum

and to evaporate the films thereon while the

elevated temperature was maintained in the

vacuum. He found that this method was not

taught by the prior patents and publications, was

not obvious, and the record at the trial fully

supports the findings and decision of the

Examiner. (Find. of Fact 40, Vol. II, DA 948a,

9442)

‘The plaintiff did not misrepresent the state of

the art to the Patent Office—. The whole record

shows that the representations made by the

plaintiff were true. The Patent Office Examiner

was not improperly induced to allow the claims of

the patent in suit.’ *(Find. of Fact 42, Vol. IT,

DA 944a)

This misstatement in the petition is the final echo

of inflammatory and false charges of fraud and

collusion which defendant made below against plain-

tiff and unidentified officials of the Navy Department,

elleging that plaintiff obtained his patent by some im-

proper conduct on the part of these officials (Pars. XV

and XVI of the Answer, Vol. I, DA 14a, 15a). These

charges were abandoned when defendant’s officer

Carl Bausch, at the trial, was forced to admit that they

were completely without foundation (PA 82a, 83a).

Petitioner’s ‘‘Statement of the Case’? makes the

utterly erroneous statement that defendant’s com-

mercial operations which were held to infringe the

patent were carried out ‘“‘without knowledge of any

claim to patent rights’’ by plaintiff (Petition p. 10).

The trial Court found exactly the opposite, as

follows: ‘‘At the time defendant commenced this com-

mercial work, it was aware that it was producing the

method covered by plaintiff’s patent”? (Find. of Fact

16, Vol. II, DA 936a).

In petitioner’s ‘Statement of the Case,” it is

further stated that the trial Court in upholding the

patent had found ‘‘it required invention to see that

the glass could be heated and cleaned in the same way

and for the same purpose when depositing metal salts”’

(Petition p. 11, first paragraph). This misstatement

has for its purpose to argue that all the plaintiff’s

method was intended to do was to ‘‘clean the glass,”’

whereas the true facts, and as found by both courts

below, are that the plaintiff’s method was not merely

for cleaning, but that it produced hard and durable

light-transmitting coatings on the glass. The page of

the record (Vol. II, DA 914a) referred to in this

paragraph of the ‘Statement of the Case,’’ has no

reference at all to cleaning of the glass and the trial

Court made no such finding as is represented.

Throughout the trial Court’s decision, the plaintiff’s

invention is referred to as a method which hardens the

coatings (Find. of Fact 8, Vol. II, DA 932a).

Petitioner’s ‘“‘Statement of the Case’’ further makes

the erroneous statement that a 1931 publication of

Dr. Cartwright described the identical process of

plaintiff’s patent, in the following language (Petition

p. 11, par. 2):

“The District Court found this publication

described the identical process . . .”’

The exact words of the trial Court are just the

opposite from what is asserted, being as follows:

eG at iter Pesta hel

RA NET ba BOG Le AL? il nid Tite Tee

ft Ss ABS Cham iD

“This article does not disclose any heating in

the vacuum as a part of a method to secure films of

inorganic salts . . . if this article can be said to

suggest the advantages of heating in the vacuum

in applying coating of inorganic salts to optical

elements, it seems strange that Cartwright him-

self did not use it.”? (Vol. II, DA 915a)

In the same paragraph of the ‘‘Statement of the

Case,’’ (page 11) petitioner states that the Court of

Appeals “‘avoided any reference to this publication.”

The Court of Appeals specifically stated at the

beginning of its opinion (Appendix to Petition, page

2a) that familiarity with the trial Court’s opinion,

which it adopted, is assmaed. The Court of Appeals

did refer to the publications as follows:

“Thus, although Lyon’s advance lay only in

keeping the ‘optical surface’ itself heated while it

was being coated, this had not appeared in any

patent or printed publication on November 17,

1942”’ (Appendix to Petition, page 5a).

The paragraph of petitioner’s ‘“‘Statement of the

Case”’ beginning at the bottom of page 11 particularly

demonstrates the adroitly misleading nature of the

statement. The paragraph starts off with the words

‘‘Both Courts found’’ and then continues with a single

sentence extending for seventeen lines which weaves

in a great variety of argumentative matters which the

Court did not find. For example, the Court did not

find that Cartwright carried on a commercial business

in which he employed the ‘‘identical process claimed

in plaintiff’s patent.”’ The trial Court found ‘‘the

testimony of Cartwright and his wife regarding the

use of heating in the vacuum for hardening in his

commercial work at Corning prior to Lyon’s claimed

PENT ERAT PR MEM EMER TLE PRR AN EN RR MERON, SUF gs LER BEL TITY PEP RP BEARIS ———

invention is vague, uncertain and unsupported by any

documentary evidence . . . and unpersuasive’’ (Vol.

II, DA 91i8a). The trial Court further found:

‘‘Whatever experimental work and commercial

work Cartwright may have performed at M.I.T.

involving eating in the vacuum in filming with

inorganic salts and later at Corning, New York,

was sporadic and inconclusive and not of such

nature as to invalidate the patent in suit. The

evidence with respect to his work both at M.I.T.

and Corning, both experimental and in his limited

commercial work is uncertain and inconsistent.

He did not realize any exceptional advantages

which wouid accrue from using heat in the vacuum

because he never did isolate the step of heating

in the vacuum from other steps which he employed.

He did some coating with these films of inorganic

salts on a limited basis in his home but the evidence

shows that he used his post-baking process

mainly.’ (Find. of Fact 31, Vol. II, DA 940a).

The trial Court did not find that Cartwright followed

a practice of ‘‘unrestricted disclosure to others’’ as

represented in this paragraph of the ‘‘Statement of

the Case,’’ but found as follows:

‘“Whenever Cartwright had opportunity to

demonstrate his method, he used post-baking. He

enjoined his ussociates at M.1.T. to secrecy with

respect to any benefits which might result from

the method of heating in the vacuum and Clark

maintained any knowledge he had on this subject

in secrecy, and withheld it . . . from the United

States Navy when he was sent to Pearl Harbor

in 1942 to assist in coating the optics of submarines

which were coming in from combat. As a result,

the optics of these periscopes were soft and un-

suitable.’’ (Find. of Fact 32, Vol. II, DA 941a)

t a

_—_ a Vigk Saat eee _ .

— meeienieteeie INL EERE EIS LIDS OLE PERO CRE eos meena

transmitting films.

2. The greatest companies and laboratories

working intensively on the problem, such as

defendant Bausch & Lomb, Eastman Kodak Co.,

‘The suppression of whatever Cartwright had

discovered re ayy the use of heating in the

vacuum was due to his own efforts to withhold it

from public knowledge and to his own failure to

disclose it in his work at Naval Research

Laboratory when he was under contract for com-

nsation to give the United States Navy the

benefit of whatever knowledge he had |. .”

(Vol. II, DA 919a)

On the last page of petitioner’s “Statement of the

Case’’ (Petition p. 13), it is stated that the Court of

Appeals “brushed aside or ignored the proofs of lack

of novelty and invention . . .”

The Court of Appeals specifically pointed to the

novelty of the invention, and in respect to the accepted

test of obviousness stated:

‘*We do not see how any combination of evidence

could more completely demonstrate that, simple

as it was, the change had not been obvious to a

person having ordinary skill in the art.” ( Appen-

dix to Petition, pages 10a, lla)

Contrary to the representations of the petition, the

true facts material to this Court’s consideration of the

case, as found by the trial Court, are summarized :

1. There was a_ serious problem existing in

this industry over a long period of years, same

being the soft and fragile nature of the light

General Electric Co., and others, had failed to

solve the problem.

3. The most skilled scientists working in the

industry over a period of years, such as Dr. Turner

of defendant Bausch & Lomb, Dr. Hewlett of

General Electric Co., Dr. Cartwright of M.I.T.

- and Corning, and Drs. McLeod and McRae of

Eastman Kodak Co. had worked intensively on the

problem but had failed to find the solution.

4. The plaintiff in 1941, while a minor govern-

ment employee, succeeded by his discovery after

these great corporations and laboratories had

failed.

d. The plaintiff's solution was novel and was

not anticipated by prior patents, publications, nor

by the experiments of the leading scientists

working in the art.

6. The plaintiff’s discovery was not obvious but

was outstandingly inventive in character.

7. The plaintiff’s invention was applied with

great success by the Navy and Army during the

war, contributed substantially to the winning of

the war, and supplanted all other methods and has

been adopted by the entire industry.

8. The greatest optical companies, including

defendant Bausch & Lomb and Eastman Kodak

Co. by their actions recognized the importance of

the invention and even unjustly claimed credit for

having originated it.

9. Both of these companies derived the inven-

tion directly from the plaintiff and not from the

prior art nor from their own intensive efforts to

solve the same problem.

10. The defendant Bausch & Lomb deliberately

appropriated the plaintiff’s invention while

knowing that it was a development made by the

laintiff and the subject of patent rights which it

eliberately violated.

“pth cabin Acadia ici tia tte

The Court of Appeals unanimously adopted these

findings and in deciding the only real issue before it,

stated:

‘“‘The most coinpetent workers in the field had

for at least ten years been seeking a hardy,

tenacious coating to prevent reflection; there had

been a number of attempts, none satisfactory ;

meanwhile nothing in the implementary arts had

been lacking to put the advance into operation;

when it appeared, it supplanted the existing

practice and occupied substantially the whole

field. We do not see how any combination of

evidence could more completely demonstrate that

simple as it was, the change had not been ‘obvious

. . . toa person having ordinary skill in the art.’ ”’

(Appendix to Petition, page 10a)

It is evident from the trial Court’s opinion and

Findings that the plaintiff’s patent satisfied the

strictest test of invention. The only question before

the Court of Appeals was the validity of the patent,

and whether or not the trial Court’s findings were

supported by substantial evidence. The Court of

Appeals unanimously adopted the findings of the trial

Court, while specifically recognizing the unprecedented

completeness of the evidence demonstrating that

plaintiff’s discovery was not obvious.

Petitioner’s principal ground for certiorari is that

there is conflict with decisions of this Court and other

Courts of Appeals because they require ‘‘a more strict

determination of what would have been obvious to one

of ordinary skill in the art’’ (Petition, page 14, last

par.). It is submitted that no such conflict exists when

the true facts and findings on invention in this ease

are considered. The facts as found satisfy invention

under the severest test, whether it be that of the

applicable 1952 Patent Act, or the case law of the last

20 or 25 years, or the case law of the past 100 years.

PETITIONER'S “QUESTIONS” ARE NOT PROPERLY PRESENTED

BY PLAINTIFF'S PATENT AND THE TRUE FINDINGS BELOW

Petitioner’s ‘‘Questions’’ 1 and 2 are not supported

by any real conflict either with respect to the particular

patent in suit or important principles of federal law.

Aside from their objectionably broad and indefinite

nature, such questions can only be properly presented

to this Court in a situation where a patent has been

held invalid for lack of invention prior to the 1952

Patent Act and valid after the date of that Act.

The claims of the Lyon patent whose validity the

petitioner seeks redetermination of, have never been

held invalid by any Court. They were considered by

both the trial Court and the Court of Appeals after the

date of the 1952 Patent Act. They were held valid by

all the judges of both Courts on findings which

establish invention under the strictest test.

The Supreme Court has stated that judicial tribunals

should not give opinions on abstract or hypothetical

propositions. Heitmuller v. Stokes, 256 U.S. 359, 362,

41 Sup. Ct. 522, Pelham v. Rose, 76 U.S. (9 Wall) 103.

These questions rely on general obiter dicta observa-

tions of the Court of Appeals, on the trend of patent

ease law over an indefinite period of years preceding

the 1952 Patent Act, which were not a part of and not

necessary to the holding of validity which was made.

The only question which was before the Court of

Appeals was the validity of the claims of the patent

under the now applicable law. Their unanimous

decision was that the claims were valid and met the

test of invention. The general observations of the

opinion on what the fate of this patent might have

22;

been if it had reached the Courts in some earlier

period of years are speculative, were not necessary

for the determination of the case, and did not establish

that type of ‘‘real’’ conflict for a review on certiorari.

This Court has not deemed a ‘‘conflict”? in the gen-

eral statements in opinions of different Courts to be

such a “‘conflict of decision”’ as to warrant the grant

_ of certiorari, and many petitions for certiorari that

have relied upon verbal differences in the standards

of patentability in the opinions of the Courts of

Appeals have been denied. There must be a “‘real and

embarrassing conflict’? as to the validity of particular

claims. Layne & Bowler Corp. v. Western Well

Works, 261 U.S. 387, 388, 67 L. Ed. 712; Keller v.

: Adams-Campbell Corp., 264 U.S. 314, 319, 68 L. Ed.

: 705.

i Petitioner’s Questions 3 and 4 merely dispute the

findings of fact of the courts below. The petitioner does

not even attempt to point out why it feels the true

findings below are not supported by the evidence, but

seizes upon a few words out of context in the opinion

below, and uses them to argue that the findings were

to an effect opposite to what they really were. The

Supreme Court is not a court for correction of errors

in fact finding, and does not undertake to review con-

current findings of fact by two courts below in the

absence of a very obvious and exceptional showing of

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

Co., 336 U.S. 271, 93 L. Ed. 672, 678; Goodyear

Tire & Rubber Co. v. Ray-O-Vac, 321 U.S. 275, 88 L.

Ed. 721; District of Columbia v. Pace, 320 U.S. 698,

88 L. Ed. 408; Williams Mfg. Co. v. United Shoe

Corp., 316 U.S. 364, 86 L. Ed. 1537; Baker v. Schofield,

243 U.S. 114, 118, 61 L. Ed. 626, 630; General Talking

Pictures Corp. v. Western Electric Co., 304 U.S. 175,

state iene Renee gery

- seen

178; 82 L. Ed. 1273. Rule 52 (a) of the Federal Rules

of Civil Procedure is particularly applicable to this

case where the evidence is largely the testimony of

experts and where the trial Court wrote a careful

opinion and made findings covering all the factual

issues, Graver v. Linde, supra.

Question No. 1

In addition to being objectionably broad and indefi-

nite, this question is based on an assumption supported

only by the erroneous representations of petitioner’s

“Statement of the Case,” that plaintiff’s discovery

was found to be lacking in novelty and obvious.

In a petition for rehearing to the Court of Appeals,

defendant stated the same question in the words—

“Did the New Code Sections 101-103*—reduce the

standard of patentable novelty and invention to such

lowly and vanishing level as to confer patentability

upon the specifically old, analogous and obvious step

of heating the optical surface to clean it while being

coated in the vacuum with any ‘“‘suitable coating

material—.”’

There were no findings by any Court or judge that

plaintiff’s discovery was not novel or that it was

obvious. No judge or Court has held plaintiff’s pat-

ented method to be invalid for lack of invention... All

judges who have passed on this discovery have held

the method to be a patentable invention.

The Court of Appeals properly weighed plaintiff’s

discovery by the test of invention of the 1952 Patent

Act (See. 103). The parties are in agreement that the

1952 Patent Act is applicable. The Court of Appeals

found plaintiff’s discovery met the test of that Act

* 35 U.S.C. See. 101-103.

to a striking degree, and that it did not “‘see how any

combination of evidence could more completely demon-

strate that—the change had not been ‘obvious’ ” and

_ stated its agreement with the trial Court’s *‘searching

___ and comprehensive analysis’? which found facts estab-

____ lishing invention under the strictest test.

The general observations of Judge Hand about the

trend of unidentified cases on the law of patentable

invertion over a period of one hundred years, were not

necessary to the Court’s unanimous decision affirming

the findings of the trial Court. The only question

before the Court of Appeals was the validity of the

claims under the 1952 Patent Act, and whether the

findings establishing invention were based on substan-

tial evidence. The general observations and specula-

tions in the opinion about the trend of unidentified

cases on other patents in twenty-five years preceding

the Act, as compared with the trend in a seventy-five

_ year earlier period, are mere obiter dicta.

SR RARER ca met, A tT Lt id Ls RENNIN Lar Sa hla OE et

The plaintiff’s patent does not present a case for

| comparing the trend of case law in one period of years

_ with that in another, in order to now determine and at

this early date if the 1952 Patent Act has wrought a

change.

Question No. 2

This question in effect asserts that past decisions of

the Supreme Court on invention gave the defendant

Bausch & Lomb as a matter of “‘right’’, the license to

infringe plaintiff’s lawfully issued patent and to

appropriate his property without compensation.

As the evidence and findings below show, defendant

Bausch & Lomb is a leading company in the optical

industry. In contrast, plaintiff Lyon is an individual

- —

inventor who made his discovery as a government em-

ployee at the Naval Gun Factory.

Defendant Bausch & Lomb gained knowledge of

plaintiff’s invention under confidential circumstances

and for the limited purpose to use same in work for

the government (Find. of Fact 45, Vol. II, DA 945a).

Defendant Bausch & Lomb not only knowingly appro-

priated the commercial fruits of plaintiff’s invention,

but publicly claimed credit for its development while

knowing it belonged to plaintiff (Find. of Fact 15,

Vol. II, DA 935a). Defendant assumed the “*right”’

to appropriate the invention without compensation,

and refused to take a license and to pay even a nominal

royalty for its use of the invention, and by this posi-

tion which it took, caused other optical companies to

refuse to take such a license (Find. of Fact 16, 17, 19,

Vol. II, DA 936a, 937a).

The petition presents this and the other **Ques-

tions’ as matters of public interest. If the public

needs protection against lone inventors, it would be

better that its interests should be presented by other

than a great corporation found guilty of the kind of

arrogant greed which is established by the undisputed

findings referred to above.

It is presumptuous for defendant to argue that the

past decisions of this Court on invention should be

construed to encourage such disregard of the property

of others, and to assert that this Court’s decisions

established a ‘‘right”’ in defendant to commit and com-

pound the tort of infringement.

There was no ‘‘period of invalidity” of the Lyon

patent prior to the 1952 Act as assumed by Question

No. 2 of the petition. The patent was prima facie

valid by reason of its grant; the burden of establishing

invalidity is one which the infringer must assume (35

U.S.C. Sec. 282). Whoever uses a patented invention

during the term thereof and without authority in-

fringes the patent (35 U.S.C. See. 271).

There is no “right” to infringe recognized in any

statute nor in any decision of this Court or of the

Courts of Appeals.

This defendant boldly asserts by its petition that the

decisions of this Court condone and authorize willful

appropriation without compensation of property

rights recognized by the Constitution and laws of the

United States. The defendant would misconstrue and

misuse the decisions of this Court to escape accounta-

bility for its caleulated appropriation of plaintiff’s

property without compensation.

Question No. 2 is not a proper question for determi-

nation by this Court, because of its objectionable

generality and indefiniteness as argued above with

respect to Question No. 1, because of its contingent

nature (as based on Question No. 1) White v. Johnson,

282 U. S. 367; 75 L. Ed. 388, and because of its erro-

neous assumption that there are findings establishing

that plaintiff’s , atent was invalid at some period prior

to the 1952 Patent Act.

Question No. 3

This question is confected by stating as facts things

which were not found by the Courts below, as pre-

viously discussed. It erroneously alleges that the

method of plaintiff’s patent was merely for *‘cleaning

the glass’”’ to produce ‘‘a known coated product’’, i.e.,

that it was the same as methods used for this purpose

in forming prior art reflecting coatings of metals. The

question erroneously states the facts as though the

Sas * RIS we os. la SESS

method was found to be old, but that it had been held

to be patentable only as a new use under Section

100 (b) of the 1952 Patent Act (35 U.S.C., See. 100(b) ).

The Courts below did not find that plaintiff’s

method is for ‘‘cleaning”’ the glass, but found that it

accomplished a hardening of the light-transmitting

coatings as had never been known before in the art,

and that the claims define a new method.

The trial Court found that ‘“‘plaintiff’s method of

hardening the coated optical surface provided an

improved, durable and tenacious coating such as had

never been obtained by prior patentees.’”? (Vol. IT,

DA 913a). The trial Court referred to plaintiff’s

process as ‘‘a distinct advance in the art’’ and stated:

‘‘Plaintiff’s disclosure was addressed to the problem

of soft coatings, coatings too fragile to permit their

use in general application and in the optical industry

because of the risk of damage to the coatings from

ordinary usage and handling and atmospheric condi-

tions. Plaintiff’s method of hardening was a success-

ful solution of the problem.’’ (Vol. II, DA 914a)

The trial Court found that the problem of the prior

art was “lack of hardness’? of the coatings, that

persons most skilled in the art had not discovered that

unusual results could be obtained in securing the

harder films by practicing the method of the patent in

suit (Find. of Fact 7, Vol. II, DA 932a), and that plain-

tiff’s discovery was the providing of “coatings of

much greater hardness and durability’ than had been

obtained in prior practices (Find. of Fact 8, Vol. II,

DA 932a).

The trial Court found that plaintiff’s discovery was

a method which was ‘‘the first to produce transmission

_ — Ne NRY

type inorganic salt coatings of such consistent hard-

ness and durability as to permit mass production—

although the need for such hard and durable coatings

had been apparent for many years” (Find. of Fact.

11, Vol. II, DA 934a), and that the patent in suit ‘‘de-

fines a new and useful method or process’’ (Find. of

Fact 43, Vol. II, DA 944a).

The Court of Appeals found the plaintiff’s method

to be novel and not found in the prior art (Appendix

to Petition, pages 3a-5a). With respect to the novelty

of the result and product, the Court of Appeals noted

the prior art coatings were not hard, but that they

“could be readily scratched or even rubbed off” (Ap-

pendix to Petition, page 6a).

Question No. 3 states that the Courts below held

plaintiff’s method was the same as the old processes

‘“‘with known and analogous materials.”’ The trial

Court specifically held exactly the opposite, stating,

‘There is no general equivalence between salts and

metals”’ (Find. of Fact 38, Vol. II, DA 943a). This

finding was based on the examination of defendant’s

expert Dr. Cartwright, who testified that the salts and

metals “‘are sufficiently tricky”’ so that it is not abso-

lutely predictable how one will act as compared with

another, that even all metals did not act alike as far

as reaction to distillation is concerned, and that in the

use of heat, one could not predict from one metal to

another, and that there would be a similar uncertainty

between metals and inorganic salts (Vol. I, DA 177a,

178a). The plaintiff also testified that metals and

inorganic salts are not analogous (Vol. I, DA 68a).

Thus, the allegations in Question No. 3 of peti-

tioner’s ‘‘Statement of the Case’, are based upon

assumptions and inaccurate statements which are dia-

metrically opposed to what was found by the Courts

below. The allegations in Question No. 3 that there

was no problem, that plaintiff’s method was not novel,

and did not solve a problem and did not produce a

new result, are entirely inaccurate and misleading.

Because Question No. 3 is not based on the real

facts, but on an assumed and erroneous statement of

the facts, it does not properly present a question for

decision by this Court. The Supreme Court does not

undertake to redetermine technical questions which

have been already decided by concurrent findings of

the Courts below.

Question No, 4

This question, like Question No. 3, merely presents

petitioner’s argument and disagreement with the facts

as actually found by the Courts below.

The question erroneously assumes findings that Dr.

Cartwright had carried out a “successful and com-

mercial practice’’ of the plaintiff’s method prior to

the latter’s discovery, and asserts that the Courts

below disregarded his work merely because he had not

brought the invention ‘to light in the art”? nor “urged

its adoption,”’ by widespread publication, or becavse

his use was only in ‘‘small volume.”

| These assumptions and arguments are not supported

by the findings of the trial Court, nor by the opinion

| of the Court of Appeals. The true findings were based

on all the evidence including the open court testimony

of Dr. Cartwright who was examined for two full days

| at the trial, the testimony of his wife, the records of

————— :

his commercial activities which disclosed only the use

of his post-baking method, the testimony of his asso-

ciate Clark and others, and his published articles and

patents.

: These findings establish that Dr. Cartwright did not

possess the knowledge that plaintiff’s method would

produce the sought for harder coatings of the light

transmitting type. They establish that he did not

complete the invention prior to plaintiff’s discovery.

The trial Court found:

‘“‘The testimony of Cartwright and his wife re-

garding the use of heating in the vacuum for

hardening in his commercial work at Corning

prior to Lyon’s claimed invention is vague, un-

certain, unsupported by any documentary evi-

dence (although there is documentary evidence

of post-baking), and unpersuasive. This proof

of anticipation does not measure up to the

quality of proof required to defeat a patent.—

On all the evidence regarding Cartwright’s ex-

; periments, and his work with heating in the

vacuum for hardening evaporated coatings, I con-

; clude that Cartwright did not appreciate the ben-

efits of heating in the vacuum, and that any such

use by him was sporadic and inconclusive as to

any definite advantages obtainable.”’ (Vol. II, DA

918, 919a)

It is noteworthy that the trial Court in particular

was not persuaded by the evidence of Dr. Cartwright’s

activities prior to plaintiff Lyon’s invention.

The trial Court also found that while Cartwright

had experimented with the step of heating in the

vacuum in conjunction with other steps, he had never

isolated it from the other steps such as his post-baking

EMEA LTE ONT RS Pe TS ip Ee OT EK EO SESE * LST VSO PA OE Re erg ae

method which he had concluded was the solution to the

problem. The trial Court found:

‘The evidence with respect to his work both at

M.I.T. and Corning, both experimental and in his

limited commercial work is uncertain and incon-

sistent. He did not realize any exceptional ad-

vantages which would accrue from using heat in

the vacuum because he never did isolate the step—

from other steps which he employed—.”’ (Find. of

Fact 31, Vol. II, DA 940a)

‘* — Dr. Coolidge (one of Hewlett’s associates

at General Electric) had written to Cartwright’s

reprsentatives to find out the details of Cart-

wrigat’s procedure —. The reply — was a short

communication stating the essential points to be

(1) pre-heating; (2) post-baking; (3) cooling the

glass and the immediate application of a water-

proofing agent. No reference was made to the use

of heat in the vacuum. This was immediately

prior to Cartwright’s employment at the Naval

Research Laboratory. Cartwright had previously

used heating in the vacuum along with his posi-

baking and had so informed Hewlett in Novem-

ber, 1939. Cartwright’s reply referred to in

Hewlett’s diary lends support to the conclusion

that Cartwright did not properly evaluate the

advantages of heating in the vacuum and that by

July of 1940, he also had abandoned its usc.*’

(Vol. Il, DA 921a)

‘‘T am not persuaded by the evidence that Cart-

wright concealed or withheld the idea and use of

heating in the vacuum for hardening with knowl-

edge that that was the best method for obtaining

hard and rugged coatings. I think rather that

whatever experiments he had conducted along

that line and whatever occasional use he had made

of it in his commercial work had convinced him

that it was inferior in results to his own patented

post-baking method —. His testimony at the trial

— a ree ee ee SOAR MCR a RES

z a

leaves no doubt about the fact that he is still un-

certain whether one ‘could not get as hard a film

if you left out the actual heating in the vacuum.’

And he admitted in his testimony at the trial that

that was the way he felt about it in 1940 and 1941.”’

(Vol. II, DA 919a, 920a)

The Court of Appeals observed that Cartwright had

‘‘abandoned his discovery as soon as it emerged from

the stage of experiment’’ and specifically stated its

agreement with the findings of the trial Court in re-

spect to Cartwright’s work, making reference to Cart-

wright’s testimony at the trial (Appendix to Petition,

page 9a). The Court of Appeals stated:

‘‘He did indeed test it out to his satisfaction;

and when he had done so, he concluded it would

not do what he was after. It did not produce a

more ‘rugged’ film and he gave it up. It was in

effect an abandonment; it did more than fail to

advance the art; it put the process among those

efforts that are proved useless. All the reasons

that have made the courts refuse to treat experi-

mental users as anticipations, apply even more

convincingly; it is not alone that such activities

are not evidence of anticipation, they are evidence

against. — We conclude therefore with Judge

Burke that Cartwright neither put the process to

‘public use,” nor was he its prior inventor.’

Appendix to Petition, page 10a)

The last paragraph on page 22 of the petition is

characteristic of the whol2 petition in its misstatement

of the findings below. This paragraph states as a

finding of the trial Court, that Cartwright reduced the

invention to practice successfully, and used and dis-

closed it to others ‘‘without secrecy.”’

The trial Court actually found with respect to

Cartwright’s work:

‘‘Olark complied with Cartwright’s request, and

although employed at National Research Co

ration until October, 1942, he never used nor dis-

closed any method for hardening except post-

baking. His calculated suppression of the idea

and of the use of heating in the vacuum was

directly attributable to Cartwright’s request to

Clark not to divulge the idea because Cartwright

did not want it to be known publicly.’’ (Vol. IT,

DA 917a)

‘¢ __ the suppression of whatever Cartwright

had discovered regarding the use of heating in the

vacuum was due to his own efforts to withhold tt

from public knowledge —.”’ (Vol. II, DA 919a)

‘‘He enjoined his associates at M.I.T. to

secrecy—and Clark maintained any knowledge he

had on this subject in secrecy —.”’ (Find. of Fact

32, Vol. II, DA 41a).

‘‘Whatever knowledge he may have had from

heating in the vacuum he maintained in secrecy,”

(Find. of Fact &, Vol. II, DA 941a)

‘‘Whatever he did discover —- the use

of heating in the vacuum was wit held from pub-

lic knowledge through the affirmative steps taken

by Cartwright. These affirmative steps were

taken by Cartwright because he had failed to

appreciate the advantages obtainable by heatin

=. “1 vacuum.’’ (Find. of Fact 34, Vol. II, DA

A further example of stubborn misstatement of the

findings below appears in the second paragraph, page

23 of the petition. It is there stated with respect to

Cartwright’s work that the Court of Appeals ‘‘con-

cluded that this was a public use of the claimed inven-

tion from 1939 on.”’

The Court of Appeals stated its affirmane: «f the

District Court’s findings as follows:

‘*“We conclude therefore with Judge Burke that

Cartwright neither put the process to ‘public use,’

nor was he its prior inventor.’? (Appendix to

Petition, page 10a)

In Summary, Question No. 4 merely presents peti-

tioner’s disagreement with the facts as found by the

Courts below, and misrepresents these findings. The

Supreme Court does not grant certiorari to redeter-

mine involved questions of fact which have been

weighed and determined by concurring findings of the

Courts below.

THE FINDINGS BELOW ESTABLISH THAT PLAINTIFF'S

DISCOVERY SATISFIED THE MOST RIGID TEST OF

INVENTION

The invention of the patent in suit was weighed

by the trial Court under the law which governed at

the time of its decision, the 1952 Patent Act. That

Act (See. 103) states the test of invention to be whether

‘the subject-matter as a whole would have been ob-

vious at the time the invention was made to a person

having ordinary skill in the art ....” This test of

invention was not new with the 1952 Patent Act, but

was incorporated therein, in the language of the re-

port of the House ‘‘with the view that an explicit

statement in the statute may have some stabilizing

effect,* ....’’ This test of invention was applied in

many leading cases prior to the 1952 Patent Act by

* Discussed in Channel Master Corp. v. Video Television, Inc.,

117 F. S. 812, 815, D.C.N.Y. 1953.

the Supreme Court and the various Courts of Ap-

peals, over a long period of years, and including the

twenty or twenty-five year period prior to the 1952

Patent Act.

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

321 U.S. 278, 279; 88 L. Ed. 721, 723, 724, decided in

1944, this Court upheld the validity of a patent on

findings of the trial Court which had been affirmed by

the Court of Appeals. The Supreme Court made ref-

erence to the trial Court’s findings ‘‘that the prob-

lem presented was old and no solution was attained

prior to Anthony’s invention . . . that the cell met with

immediate commercial success due to the advantages

of its construction . . .,’? and ‘‘that its advantages were

recognized by the Army and other governmental agen-

cies.’ The Court then said:

‘‘Viewed after the event, the means Anthony

adopted seemed simple and such as should have

been obvious to those that worked in the field,

but this is not enough to negative invention. * * *

the manufacturers of flashlight cells were consci-

ous of the defects in them, no one devised a method

of curing such defects. Once the method was dis-

covered it commended itself to the public. * * *

Accepting as we do, the findings below, we hold the

patent valid and infringed.”’

Application of this accepted test of invention in-

volves consideration of what actually happened in the

art or industry, to ascertain if a problem existed which

defied solution over a substantial period of time and

if the patentee solved the problem where others had

failed, in order to determine whether or not his

solution was an ‘‘obvious’’ one.

That the test was applied in the Second Circuit

before the 1952 Act is evident from the language from

Landis Machine Co. v. Parker-Kalon Corp. et al., 190

F. 2d 543, 545 (C.A. 2 1951) where the Court said:

“* * * if Lloyd’s combination of these disclos-

ures resolved a want which had been felt all along:

that is, if it swept the board; there would be rea-

son to conclude that his discovery was beyond the

— of ordinary qualified members of the

craft.

That the test was applied in the Second Circuit

after the 1952 Act, is apparent from the following

language from Channel Master Corp. v. Video Tele-

vision, 117 F. 8. 812, 815 (D.C. E.D. New York, 1953) :

“‘This is not a situation where the alleged im-

provement was seriously needed in the industry,

and although desparately sought after, remained

undiscovered for a long period of time.”’

The trial Court’s findings in this suit establish that

this test of invention was satisfied to a striking de-

gree. The formidable array of witnesses brought for-

ward by defendant Bausch & Lomb in its efforts to de-

feat plaintiff’s patent told the whole history of this

art and industry. The trial Court heard the testi-

mony of scientists which both parties admit were the

most active and most skilled in the art. The trial

Court found there was a problem which resisted in-

tensive efforts of the most skilled to solve it, includ-

ing the efforts of the greatest laboratories in the coun-

try.

It is significant that an individual inventor solved

the problem after the failures of the great vorpora-

tions and laboratories, and that his discovery was

found by the Courts below to satisfy the exacting test

of invention.

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

Co., 336 U.S. 271, 274, 275; 93 L. Ed. 672, 676, 677,

decided in 1949, this Court upheld the validity of

claims of a patent based on findings of the trial Court

in the seventh circuit, noting the provisions of Rule

52a of the Federal Rules of Civil Procedure that

such findings should not be set aside unless clearly

erroneous, and that due regard shall be given to

the opportunity of the trial Court to judge the

credibility of the witnesses. The Supreme Court

stated that this rule is particularly applicable where

the testimony below was largely that of experts, and

where the trial Court had written ‘‘a careful and

succinct opinion and made findings covering all the

factual issues.”’

In Faulkner v. Gibbs, 338 U.S. 267, 268; 94 L. Ed.

62, decided in 1949, the Supreme Court upheld the

validity of a patent, based upon concurrent findings

of invention by the two Courts of the ninth circuit

below.

Petitioner has failed to even argue that the true

findings of the trial Court, in the present case, are

not supported by substantial evidence, but has based

its petition on assumed and erroneous findings.

The test of ‘obviousness’? to determine the pres-

ence of invention has been applied in the various

circuits over a long period of years and including the

past twenty or twenty-five years, as indicated by the

following cases:

Lincoln Stores v. Nashua Mfg. Co., 157 F. 2d 154,

163 (C.A. 1), July 19, 1946, (Cert. Den. 329

U.S. 811). .

Grant Paper Box Co. v. Russell Box Co., 154 F.

2d 729, (C.A. 1) 1946 (Cert. Den. 329 U.S. 741).

Brown & Sharp Mfg. Co. et al v. Kar Engineer-

ing Co., Inc., 154 F. 2d 48, 52, (C.A. 1) 1946,

(Cert. Den. 328 U.S. 869).

United Chromium, Inc. v. International Silver

Co., 60 F. 2d 913, 916 (C.A. 2), July 29, 1932

(Cert. Den. 288 U.S. 600).

B. G. Corporation v. Walter Kidde & Co., Inc.,

79 F. 2d 20, 22, (C.A. 2) July 1, 1935.

Hayes et al v. Surface Combustion Corporation,

96 F. 2d 61, 64, 65, (C.A. 2), April 4, 1938.

Union Carbide & Carbon Corp. v. Stuart Labora-

tortes, 194 F. 2d 823, 824, 825, (C.A. 3), 1952

(Cert. Den. 343 U.S. 967).

Procter & Gamble Mfg. Co. v. Refining Inc., 135

F. 2d 900, 908 (C.A. 4) 1943.

Fiorence-Mayo Nuway Co. v. Hardy et al., 168 F.

2d 778, 780-782 (C.A. 4) 1948.

O. K. Jelks & Son et al v. Tom Huston Peanut

Co., 52 F. 2d 4, 7, 8 (C.A. 5), August 24, 1931,

(Cert. Den. 284 U.S. 686).

Jeoffroy Mfg. Co. v. Graham, 206 F. 2d 772, 774,

776 (C.A. 5) 1953 (Cert. Den. 347 U.S. 920;

Rehearing Den. 347 U.S. 940).

Guiberson Corp. v. Garrett Oil Tools, Ine., 205

F. 2d 660, 663, 665 (C.A. 5), 1953 (Cert. Den.

346 U.S. 886; Rehearing Den. 346 U.S. 917).

Forestek Plating & Mfg. Co. v. Knapp-Monarch

Co., 106 F. 2d 554, 557, 558, (C.A. 6), Sept. 18,

1939.

Kelley-Koett Mfg. Co. v. McEuen, 130 F. 2d 488,

492 (C.A. 6) 1942, (Cert. Den. 318 U.S. 763).

‘Adler Sign Letter Co. v. Wagner Sign Service,

112 F. 2d 264, 267 (C.A. 7), 1940 (Cert. Den.

311 U.S. 692).

Delta Mfg. Co. v. E. L. Essley Machinery Co.,

153 F. 2d 905, 906, (C.A. 7), February 28, 1946

(Cert. Den. 328 U.S. 867).

National Slug Rejectors v. A.B.T. Mfg. Corpora-

tion, 164 F. 2d 333, 335 (C.A. 7), Oct. 17, 1947

(Cert Den. 333 U.S. 832; Rehearing Den. 333

U.S. 850).

Ric-Wil Co. v. E. B. Kaiser Co., 179 F. 2d 401,

404 (C.A. 7), January 5, 1950, (Cert. Den. 339

U.S. 958).

Sbicca-Del Mac, Inc., et al v. Milius Shoe Co.,

145 F. 2d 389, 394, 395 (C.A. 8), Nov. 18, 1944.

General Motors Corporation v. Kesling, 164 F.

2d 824, 827, 829 (C.A. 8), Dec. 17, 1947 (Cert.

a0) 333 U.S. 855; Rehearing Den. 333 U.S.

Willis v. Town et al., 182 F. 2d 892, 895 (C.A. 8),

June 27, 1950.

Johnson Co. v. Philad Co., et al., 96 F. 2d 442,

444 (C.a. 9), May 4, 1938.

Patterson-Ballagh Corp v. Moss, 201 F. 2d 403,

406 (C.A. 9), January 27, 1953.

Skinner Brothers Belting Co. v. Oil Well Im-

ogre Co., 54 F. 2d 896, 898, (C.A. 10),

1931.

Dow Chemical Co. v. Williams Bros. Well Treat-

ing Corporation, 81 F. 2d 495, 496 (C.A. 10),

Jan. 10, 1936, (Cert. Den. 298 U.S. 690).

Williams Iron Works Co. v. Hughes Tool Co.,

109 F. 2d 500, 510, (C.A. 10), Jan. 13, 1940.

Harris v. National Machine Works, 171 F. 2d 85,

88 (C.A. 10), Nov. 18, 1948 (Cert. Den. 336

U.S. 905; Rehearing Den. 336 U.S. 929).

Oliver United Filters v. Silver, 206 F. 2d 658, 664,

(C.A. 10), July 23, 1953, (Cert. Den. 346 U.S.

923).

Levin v. Coe, 132 F. 2d 589, 596 (C.A.D.C.) Nov.

2, 1942.

CONCLUSION

It is respectfully submitted that the petition should

be denied for the following reasons:

(a) The discovery of plaintiff’s patent was

held to be a patentable invention by strong find-

ings of the trial Court which were affirmed by the

Court of Appeals. The petition makes no effort

RAMEE EE OEE OST

ap RL ek MORAN NTIS TE RE at POTEET OPES SOS RAT RECREIE

to show that these findings were not supported by

substantial evidence,

(b) No conflict of decisions is presented, for

plaintiff’s patent has never been held invalid for

lack of invention by any Court.

(e) No conflict on important questions of fed-

eral law is presented, for the affirmed findings

established invention under the test applied by the

Courts for many years, as well as satisfying the

now applicable test of invention of the 1952 Pat-

ent Act.

(d) Plaintiff’s discovery was an _ invention

which greatly and directly benefitted the public

by contributing substantially to the suecess of

our Armed Forees in the last war.

(e) The ‘‘Statement of the Case’’ of the peti-

tion does not present the material facts as required

by Rule 23-1 (e). It so inaccurately misstates the

findings of the Courts below as to justify denying

the petition under Rule 23-4 of this Court.

Respectfully submitted,

JoHN W. MALLEY,

C. Wiitarp Hayes,

730 Fifteenth St., N.W.,

Washington 5, D. C.

Attorneys for Respondent.

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