Petition for a Writ of Certiorari — Farr Co. v. Gratiot (No. 711)

JAN 25 1957

IN THE

JOHN T. FEY, Clerk

- Supreme Court of the United States

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Farr Company, a corporation,

Petitioner,

vs.

Jures D. Gratiot and A1r-Maze Corporation,

Respondents.

Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit.

Lronarp S. Lyon,

RicHarp E. Lyon,

811 West Seventh Street,

Los Angeles 17, California,

Attorneys for Petitioner.

SUBJECT INDEX

PAGE

Citations to opinions below 1

Jurisdiction 1

Question presented 2

Statutes and rules involved 2

Statement 2

Reasons for granting the writ 8

Conclusion 11

Appendices :

Appendix A. Statutes involved 13

Appendix B. Opinion of the United States Court of Ap-

peals for the Ninth Circuit 15

Judgment 19

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TABLE OF AUTHORITIES CITED

CASES PAGE

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

147 2, 6, 7, 8, 9, 10

Blish, Mize and Silliman Hardware Company v. Time Saver

Tools, 236 F. 2d 913 10

Glitsch & Sons v. Wyatt Metal, 224 F. 2d 331.0... eee 10

Graver Tank & Mfg. Co. v. Linde Air Prod. Co., 336 U. S.

271 9, 11

Helms Products v. Lake Shore Mfg. Co., 227 F. 2d 677............ 10

Steffan & Weber Heating and Sheet Metal Company, 237 F.

2d 601 10

RULES

Federal Rules of Civil Procedure, Rule 52(a)................ 2, 9, 10, 11

STATUTES

SO Tn I I, arash eas sasennecdincarintnraeaienensanideinemepeorendat 2

Patent Act of 1952, Sec. 103 2

United States Code, Title 28, Sec. 1254(1). ‘ 2

Re | aT 2

United States Code, Title 35, Sec. 103 2

IN THE

Supreme Court of the United States

October Term, 1956

No....

Farr Company, a corporation,

Petitioner,

US.

JuLes D. Gratiot and Arr-Maze CORPORATION,

Respondents.

Petition for a Writ of Certiorari to the United States

Court of Appeals for the Ninth Circuit.

Petitioner prays that a Writ of Certiorari issue to re-

view the judgment of the United States Court of Appeals

for the Ninth Circuit, entered in the above-entitled case

on October 19, 1956.

Citations to Opinions Below.

The opinion of the Court of Appeals, printed in Appen-

dix B hereto, infra, pages 15-18, is reported in 111 U. S.

P. Q. 170. The opinion of the District Court is un-

reported and is found in the record at page 819.

Jurisdiction.

1. The judgment of the Court of Appeals for the Ninth

Circuit was entered on October 19, 1956 [R. 1479]. Re-

hearing was denied December 4, 1956 [R. 1480].

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2. The jurisdiction of this Court is invoked under 28

U. S. C., Section 1254(1) to review the aforesaid judg-

ment which reversed a judgment [R. 67, 1182] of the

United States District Court for the Southern District

of California, Central Division, holding Petitioner’s patent

valid and infringed by Respondents.

Question Presented.

The single question presented in this petition is whether

this Court’s decision in A. & P. Tea Co. v. Supermarket

Corp., 340 U. S. 147, renders inapplicable Rule 52(a) of

the Federal Rules of Civil Procedure on the question of

invention in patent cases with the result that the Court

of Appeals may reverse a judgment of validity on the

ground hat the patent does not amount to invention by

simply ignoring the extensive and detailed findings of

fact which fully satisfy the legal standard of invention

prescribed by this Court.

Statutes and Rules Involved.

The statutory provisions involved are Sections 101 and

103 of the Patent Act of 1952; 35 U. S. C. §§ 101, 103

and Rule 52(a) of the Federal Rules of Civil Procedure.

They are printed in Appendix A, infra, pp. 13-14.

Statement.

Petitioner, Farr Company, is the owner of United States

Letters Patent No. 2,286,479 [R. 839], which issued on

June 16, 1942, for an Air Filter Panel of the type com-

monly employed for removing dirt particles in air venti-

lating systems or in the intake systems to engines such

as diesel railroad engines. Respondents are manufactur-

ing and selling air filter panels which Petitioner has

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charged infringe its patent, its complaint having been filed

on May 27, 1949 under the patent laws of the United

States.

Air filter panels of the type here involved operate on

the impingement principle. That is, as the air passes

through the filter the dust particles strike upon and adhere

to collecting surfaces provided by the filter media which

are oiled to cause the dust to adhere thereto. The dust is

retained in the air filter panel as an accumulating dust

load until the air filter panels are removed, cleaned, re-

oiled and again inserted for use. Two factors of primary

importance in such filters are the efficiency of the filter

in removing dust from the air and the pressure drop

through the filter, that is the resistance which the filter

provides to the passage of air. It is, of course, desirable

that the efficiency, which determines the ability of the

filter to clean the air, be high. It is also desirable that

the pressure drop be low, so that the filter does not unduly

restrict the flow of air through the system [R. 116]. In

earlier filters of this type (for example Respondents’ type

B which was manufactured prior to the infringing type

P-5) these factors, particularly the pressure drop, change

as more and more dust is actumulated in the filter, the

pressure drop increasing as the dust load grows [R. 284].

Such increase in pressure drop is undesirable in that it

unbalances the system which is normally constructed to

deliver a certain amount of air [R. 285]. Further, the

increased resistance of the filter can result in an insuffi-

cient amount of air being supplied in the particular sys-

tem after the filter has been in use for a period of time

[R. 284-286].

The patented filter utilizes for filter media corrugated

sheets of wire screens which are set parallel to the gen-

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eral direction of air flow through the filter. The cor-

rugations (or crimps) in these sheets form valleys which

provide air passages extending through the filter inde-

pendently of the openings of the screen mesh. The cor-

rugated wire screen sheets are stacked one above the other

to divide the filter panel both in the horizontal and vertical

dimensions into a multiplicity of small passages. More-

over, the corrugations are formed in a herringbone pat-

tern, that is, with a sharp bend to provide an abrupt

change in the direction of the corrugation and, accord-

ingly, in the air passages through the filter formed by the

valley of the corrugation [R. 110-112, 1372-1374].

The trial court found, as will be further considered

herein, that cris arrangement constituted a new com- )

bination of elements which for the first time provided a

_ filter having a high efficiency and a low pressure drop

which did not rise appreciably as dust collected upon the

filter.

After twelve days of trial, in an oral opinion [R. 819]

the trial court held each of the claims sued upon valid

and infringed, and judgment was entered for Petitioner on

February 26, 1952 [R. 67]. Appellants appealed from

this judgment but, prior to the date set for hearing such

appeal, filed a Motion to Reopen and Remand based upon

purportedly newly discovered evidence. The Court of

Appeals remanded the case [R. 1472] to the trial court

to receive evidence relating to an earlier filter, upon which

Respondents’ Motion to Remand had been based. After

two additional days of trial the trial court entered a new

judgment [R. 1177] which provided that the new evidence

presented required no modification of the original judg-

ment except that Petitioner was entitled to additional

costs. Thereafter, Respondents appealed from the new

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judgment and reappealed from the original judgment [R.

1183].

This extensive trial was required by the subject involved,

the factual issues presented invelving matters such as

paths of air flow and the collecting action of the various

filter media upon the impingement of tiny particles of

dust, matters which cannot be determined by mere visual

observation. Consequently, the bulk of the testimony was

by expert witnesses, the operation and performance of the

various filters involved and the effect of structural dif-

ferences between them being determined and demonstrated

by the results of carefully controlled comparative tests.

To this end, each of the parties introduced in evidence

the results of a large number of such tests. [For example,

Exs. HH [R. 1075], VV [R. 1084], 11 [R. 956], 13

[R. 956A], 29 [R. 977], 30 [R. 984], 31 [R. 985], 54B1

[R. 1455 and 54B2 R. 1456].

After fully considering the extensive technical testi-

mony, including the numerous comparative test results in-

troduced, the trial court held Petitioner’s patent valid and

infringed. In support of its decision, the court entered

34 detailed Findings of Fact [R. 59-65, 1178-1181].

Those Findings which bear directly on the issue of in-

vention may be summarized as follows:

(a) The claims in suit are directed to a new combina-

tion of elements which cooperate together to provide not

only advantages in the cleaning of the air but benefits

in the cost of manufacture, maintenance and upkeep

[Find. 9, 29, R. 61, 1179].

(b) The filter of the patent in suit has a new mode

of operation whereby at the outset portions of the air flow

through the mesh of the screen members into adjoining

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passages, but as che filter panels become loaded with dust

the flow of air becomes more and more confined to flow

through the passages, the dust accumulating progressively

along the walls of the passages formed by the corruga-

tions, permitting turbulent flow of air through the pas-

sages and through the mesh of the screen despite increas-

ing dust load [Find. 4, 30, R. 59, 1179].

(c) The filter of the patent in suit achieves new and

surprising results by combining high efficiency in remov-

ing dust from the air with a low pressure drop which

does not increase rapidly and by providing a filter of

low manufacturing and maintenance cost as well as ease

of cleaning [Find. 6, 31, R. 60, 1180].

(d) The prior art relied upon by Respondents did not

contain either the elements, mode of operation, or the

new and surprising results of the filter of the Farr patent

in suit nor would such filter have been obvious to one

skilled in the art [Find. 32, R. 1180].

(e) The patent in suit has had a wide commercial

success and was responsible for the development of Peti-

tioner’s rapidly expanding business [Find. 7, R. 60].

(f) Prior to the invention of the patent in suit, the

art had expended great effort and money in the scientific

study and testing of different air filter panels without the

air filter panel of Petitioner’s patent being suggested _

thereby [Find. 14, R. 63].

Despite these findings, the Court of Appeals reversed

the trial court, holding the patent invalid as anticipated

by a prior French patent to Niestle, No. 739,956 [R.

1062], under the authority this Court’s decision in A. &

P. Tea Co. v. Supermarket Corp., 340 U. S. 147. In its

very brief opinion, the court takes no issue with any of

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the above noted Findings which relate to the issue of in-

vention. Indeed the only one mentioned is Finding of

Fact 4 of which the court appears to approve. Instead,

the court singles out Finding of Fact 13 [R. 62] and

states simply thar it does not “agree” with it. This

Finding which is directed to the French Niestle patent,

enumerates two structural differences between the struc-

ture of this patent and that of the patent in suit. The

court not only fails to state the basis for its failure to

“agree” with the finding, but recognizes such structural

differences in its opinion. The first of these relates to

the orientation of the filter members and, according to

uncontradicted testimony renders the filter of the French

patent impractical to manufacture [R. 772] as to which

the trial court had found that among the advantages of

the filter of the Farr patent were benefits in cost of manu-

facture [Find. of Fact 9, R. 61]. The Court of Appeals,

without references to any testimony whatever or to this

Finding states simply that the difference is “irrelevant’’,

since “the same mechanism to collect the dust” results.

The second structural difference recognized by the Court

of Appeals relates to the use of filter media having im-

pervious walls in the French patent whereas the patent in

suit requires that such walls be of open mesh to permit

the passage of air. As to this difference the court, with-

out reference to any evidence whatever, merely states

that it presents none of the “unusual or surprising conse-

quences” of the A. & P. Tea Co. case. In this the court

simply ignores the explicit findings of the trial court to

the contrary [Find. of Fact 6, 31; R. 60, 1180].

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Reasons for Granting the Writ.

1. The decision of the Court below construes this

Court’s decision in the A. & P. Tea Co. case so as to

effect a fundamental change in the law, a change which

was clearly not intended by this Court.

Petitioner is not here seeking merely a review of the

factual issues concerning the validity of its patent. To

the contrary, Petitioner is seeking to have resolved a

fundamental question as to the proper application of this

Court’s recent decision in A. & P. Tea Co. v. Super-

market Corp., 340 U. S. 147.

In the A. & P. Tea Co. case the trial court had found

only that one element of a combination was “novel” and

that the combination was “new and useful.” This Court

held that such findings did not satisfy the standard of

invention which, as a matter of law, must be satisfied

if a patent to a combination of old elements is to be sus-

tained. The Court thereafter set forth the proper stan-

dard of invention in such cases.

There is no parallel in the instant case. Here the tria!

court made detailed and explicit findings of fact which

fully meet the legal standard of invention enunciated by

this Court in the A. & P. Tea Co. case. Thus, the trial

court found that the patent in suit describes and claims

combination of elements [described in Find. of Fact 3]

which is a new combination [Find. of Fact 9 and 29;

R. 61 and 1179]. The mode of operation of this com-

bination [described in Find. of Fact 4 and 30; R. 59,

1179], is new [Find. of Fact 10, 11, 12, 13, 30 and 32;

R. 61-63, 1179 and 1180]. The results achieved [de-

scribed in Find. of Fact 6 and 31; R. 60 and 1180] are

new and surprising [Find. of Fact 31 and 32; R. 1180].

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The filter was not obvious to one skilled in the art [ Find.

of Fact 32; R. 1180}.

Without regard to these various findings nor to any

testimony in the record, the Court of Appeals simply se-

lected one prior art patent (Niestle No. 739,956), noted

two structural differences between such patent and the

patent in suit, and concluded that one of these differences

was “irrelevant” and that the other did not create patent-

able novelty under the 4. & P. Tea Co. case.

The import of this decision is simply that the Court

of Appeals has interpreted the A. & P. Tea Co. case as

rendering inapplicable Rule 52(a) of the Federal Rules

of Civil Procedure to the question of invention in patent

cases. The findiags of the trial court fully satisfy every

factual requirement prescribed by this Court as neces-

sary to meet the legal standard of invention. The appel-

late Court did not set such findings aside as clearly er-

roneous, to the contrary, it simply ignored them, relying

solely upon the A. & P. Tea Co. case as authority for

this approach.

Such a construction of the 4. & P. Tea Co. case estab-

lishes a fundamental change as to the scope of appellate

review in patent cases. Not only is such change contrary

to the prior law as unequivocally established by this Court

in Graver Tank & Mfg. Co. v. Linde Air Prod. Co.

(1948), 336 V. S. 271, 274, but is wholly unsupported by

the A. & P. Tea Co. case.

2. The question of the effect to be accorded to findings

of fact on the issue of invention in patent cases is of

paramount importance to the patent bar and to the Fed-

eral Courts which appear to be in hopeless conflict and

confusion. Thus, among the most recent decisions of

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the Courts of Appeal, some’ have taken the position

that the question of invention in its entirety is one of

law and that findings are at most merely persuasive on

the question. Other Courts,’ while recognizing that the

standard of invention to be applied is a matter of law,

attach to the supporting findings of fact the full import

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

The confusion appears to have arisen from the differ-

ences in the majority and concurring opinions of this

Court in A. & P. Tea Co. v. Supermarket, 340 U. S. 197.

In the majority opinion Mr. Justice Jackson carefully

points out that no findings are being set aside, that the

findings below were inadequate to sustain the invention

and that the basis of the decision was the failure of the

lower Courts to apply the proper standard of invention.

The concurring opinion of Mr. Justice Douglas, however,

makes no reference to the findings of fact below but to

the contrary states simply, “the question of validity of a

patent is a question of law” 340 U. S. at 155. No later

decision by this Court deals with the matter since despite

numerous petitions for certiorari which have been filed,

this Court has not reviewed a case involving the validity

of a patent since its decision in the 4. & P. Tea Co. case

in 1950.

It is Petitioner’s contention that those courts are in

error which have construed the A. & P Tea Co. case as

emasculating Rule 52(a) on the question of validity in

1Blish, Mize and Silliman Hardware Company v. Time Saver

Tools (C. A. 10 1956), 236 F. 2d 913; Glitsch & Sons v. Wyatt

Metal (C. A. 5, 1955), 224 F. 2d 331.

2Helms Products v. Lake Shore Mfg. Co. (C. A. 7 1955), 227

F. 2d 677; Steffan & Weber Heating and Sheet Metal Company

(C. A. 8 1956), 237 F. 2d 601.

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patent cases. Such construction is wholly unsupported

by the majority opinion, moreover, as recognized by

this court in Graver Tank & Mfg. Co. v. Linde Air Prod-

ucts Co., 336 U. S. 271, 274, in patent cases more than

any other Rule 52(a) must be vigorously applied if the

proper result is to be reached by the courts. Thus, the

difficulty of presenting the highly technical factual issues

to the trial court in patent cases is well recognized and, as

in the instant case, frequently necessitates protracted and

expensive trials involving extensive expert testimony

coupled with actual demonstrations of the operation and

characteristics of the devices involved. The nature of

the appellate proceeding precludes more than the most

cursory explanation of the frequently complex technical

aspects of the several defenses with which a patentee is

normally confronted. Consequently, the findings of the

trial court should weigh most heavily and Rule 52(a) of

the Federal Rules of Civil Procedure should be most

scrupulously followed.

Conclusion.

For the foregoing reasons, this petition for a writ of

certiorari should be granted.

Respectfully submitted,

Leonarp S. Lyon,

Ricwarp E, Lyon,

Attorneys for Petitioner.

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