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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Brief for the Respondent in Opposition
- **Published:** January 1, 1955
- **Citation:** 350 U.S. 911

## Text

IN THE

Supreme Court of the Anited States
OcroBER TERM, 1955

No. 379

Bauscu & Lomp Optica. Co., Petitioner,
v.

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,
v.
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).

a

2

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.

——

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j

3

, -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,

4

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.

—————

3)

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.

6

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,

7

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.

|

8

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.

9

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

=

10

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

11

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

12

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).

—

13

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

14

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).

15

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:

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ft Ss ABS Cham iD

16

“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 ———

17

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)

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transmitting films.

2. The greatest companies and laboratories
working intensively on the problem, such as
defendant Bausch & Lomb, Eastman Kodak Co.,

18

‘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

19

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

20

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

21

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

23

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.

24

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.

i
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

- —

25
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

a

26

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

27

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

28

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

29

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

————— :

30

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

31

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.”’

33

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

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-

34

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.

35

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

..

36

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.

37

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).

38

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).

39

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

40

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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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386418_0263%3A2. Public record. Not legal advice.