Petition for Writ of Certiorari — Parks-Cramer Co. v. American Monorail Co. (No. 533)

: ‘Office - Supreme VQun, U.S.

PILeo. .

| In The JOHM T. FEY, Clerk =|

SUPREME COURT of the UNITED STATES :

; ~~ OCTOBER TERM 1957

eee, wo 3 3

. PARKS- CRAMER COMPANY, a Corporation of ad

Massachusetts: -

Petitioner -

> VS.

THE AMERICAN MONORAIL COMPANY, a

_ Corporation of Ohio,

Re spondent .

) - PETITION FOR A WRIT OF CERTIORARI TO

+ . THE UNITED STATES. COURT .

: OF APPEALS-FOR THE |

FOURTH CIRCUIT

. AND APPENDIX = y; |

oF es ene JosePH W. Grier, JR.,

400 Law Building

; . . ~ 4 +» * Charlotte 2, North Carolina

. eT. gies | _ Counsel for Petitioner -

_ Of. Counsel ° Nigar eee a hah . :

: angi O°

Cepric. W. PORTER,

41 Tremont Street ~

’ Boston 8, Massachusetts os

a sient PSON,

400 Law Building ; pre

Charlotte 2, Noftth Carolina .

-INDEX.

. Opinions Below hitcnnscinenebuonopesniehieaite nO

EO ELE

- Questions Presented oat Wn | 2

Statement of the Case. . 3

"Reasons tor Allowance of Writ:

Jebtrodeactboe cee everett Ne ae

I. The Court Of Appesia Erred In Holding That The

Patent: In.Suit Was Invalid For Lack Of Invention

- Despite The Fact That Many Others Skilled In The

Art ‘Had Made Numerous Attempts To Solve ‘The

Industry’s Problem Withou: Success And Tite. Peti-

tioner’s Device Has Enjoyéd Great. Commercial |

RE achat hal eT ae Bes CO we vo

_ II. “The Court Of Appeals Erred In Failing To Rec-

ognize Fhat Section 103 Of Title 35 Of The United

. States: Code Requires It. To Determine Existence Of,

alnvention By Reference To What Was Obvious To

A Person Having Ordinary Skill In The Art . cig

III. The Court Of Appeals Decision That The

Standard Of Invention Is A Legal Rather Than A-

Factual Question Is Contrary To The Decisions Of

This Court And In Direct Conflict With The De--

cisions Of The Great Majority Of The Other Courts ©

OE TEI ann citing ncn ae

- Conclusion .... sak eee an sacistigataanpeae’ Peters eae 23

MMII 8 tii ints diclinesibaewp end i 28

* AppendixA:> . | ,

_ Opinion of United: States Court of Appeal for the

eres econamaicapone 1

Appian: ie hee oh, ee

‘TABLE OF AUTHORITIES =

Cases

Becton Dickinson & Co. v. R. P. Scherer Corps, aut F. i

2d 835, 843 (CCA 6th 1954) ........ ic scocataeterias ae

Blish, Mize and Silliman Hardware Co. v. Time Saver

Tools, Inc., 236 F*2d 913, 916 (CCA 1Q@th 1956), . |

cert. denied 352 U.S. 1608 FF SS. CA SS 1c. ..... 23

Cuno Engineering Corp. v. Automatic Devices —_ Tl

314 U. S. 84, 62S. Ct. 37, (1941) ...... xhansi ine Rie oe

Fauikner v. Gibbs, 170 F. 2d 34, 37 (CCA 9th 1948), caper

"affirmed 338 U. S. 267,70 S. Ct. 25 (1949)' 23

Gentzell v. Manning, 230 F. 2d 341, 344 (CCA ‘2d |

1956), ceft. deni 352 U. S. 840, 77 S. Ct. ED ict 18, .

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

275, 64S. Ct.-593- (GAM Yep neennenenrcene a badass ‘11

Graver Tank & Manufacturing Co. ¢. ann Air Prod-

ucts Co., 336 U.S. 271,275, 69 S. Ct 535, 537

(1949) ; 339 U. S. 605, 609, 70S. Ct. 854, 857 (1950) 21

Great Atlantic and Pacific Tea Co. v. Supermarket

Corp., 340 U. S. 147, 71 S. Ct. 127 (1980) cro 19

Interstate Rubber Products*Corp. v. Radiator Specialty a

Co., 214 F. 2d 546, 548 (CCA 4th 1954) con ig

aes ; = Page -

Lincoln Stores v. Nashua Mfg. Co., 157 F. 2d 154, 163 |

(CCA Ist 1946); cert. denied 329 U. S/ 811, 67

S. Ct. 623 (1947) . jc eA Baa 23

L-O-F Glass Fibers v. Watson, 228 F. 24 40, 47 (ce, of

_ Custs. & Pat. App'ls 1955). , rae a = 8

ieee Bausch & Lomb Optical Co. 24K. 2d 530, 535

(CCA 2d 1955), cert. denied 350, U. S. 911, rehear-

ing denied 350 U.S. 955 (1956) . 3, 19

Mojonnier Bros. Co. v. Tolan Machinery C Co., 230 F. 2d

850, 851 (CCA teases se saieaiane 18.

Safety Car Nething ont Lighting Ca. v. General Elec-

tric Co.,.155 F. 2d 937 (CCA 2d 1946) eoeaks 12

Schering Corp. v. Gilbert et al., 153 F. 2d 428, 432

cog

(GEA 08 G9) a . 2

‘Sutherland Paper Co. v. Grant ‘Paper Box Co., 183 F.

2d 926, 935 (CCA 3r@1 90), cert. denied 340 U. >.

906, “dad ca Sacre TO LE REET 23

Sine Chi: i; Gata Oil & Refining Co., 225 F. 2d 725.

rae... oe

. Thomsox Spot Welder Co. v. Rord Motor Co: , 265 U. S.

445, 446, 44 S. Ct. 533, 834 (1924) on. S a

Wasserman v. Burgess & Blacker Co., 217 F. 2d 402, |

AU AR: WI I eas ieee iniiecrenictickcenaonnstnciie. 18

Willis v. Town, 182 F. 2d 892, 894 (CCA 8th. 1950) . 23.

Other A ogre ie

- 28-U:S.C. $1284 (1) Nee heiee one

Bee... ee

H. R. Rep. No. 1923, 82 Cong., 2a Sess. (2952) -. 16, 17 .

(a;

Ei

‘ -

, D aes -

e-. : | } Page

S. Rep. No. 1979, 82 Cong. 2d Sess. (1952) . ne 6,17

ee Hearings before Subcommittee No. 3 of eeu .

‘mittee on Judiciary, 82d'Cong. Ist Sess. 38 (1951)...

Frederico, ‘Commentary’ on the. New Patent Act”, 35 2

FORT ER Ain ic eee IC eee -16

Libert, “Section 103 of the Patent Act and the Standard

of Invention: Comments on Lyon v. a

- Optical Co. 38S. ‘Pat. Off. Soc’y. 304, 325 an

a)

Qt

oo The 7

SUPREME COURT of the UNITED. STATES

OCTOBER. TERM, 1987 |

No. .

_ PARKS-CRAMER COMPANY, a Corporation er

. Massachusetts, x Re ee

Petitioner

— 1. a

——————

@

Vs.

THE AMERICAN MONORAIL COMPANY, a

Corporation of Ohio, =

&®

Respondent . .-— be - &§ @

a fee eee a cchtnieieiiticpaetenl —— -—-— - aa eae y

PETITION FOR A WRIT OF CERTIORARI TO ~A

_ THE. UNITED STATES COURT Soa ties

OF APPEALS FOR THE.

‘ \AOURTH CIRCUIT

s

To the Honorable, The Chief Justice of the.United '

; States and the Associate Justices of the Supreme

5 fe eae Court of the vanes States: 3

Petitioner respectfully prays that’ 2 a writ of certiorari

issue to review the judgment of the United States Court .

of Appeals for the Fourth Circuit reversing a final judg-

ment of the United States District Court far ‘the: Western

. " ree

; \

a

District of. North Carolian--Wuered originally the peti-_

tioner was as plaintiff and the respondent was ‘defendant.

OPINIONS BELOW

The o opinion of the United States Conit of. yo" for

_ the Fourth Circuit is reported at 245 F. 2d 739 and ‘appears

as Appendix A to this petition. The opinion of the United

States District Court ‘for the Western District of North _

Carolina is reported at 147 F. Supp. 218 and appears at -

— page 17 ta* of. the Record.

+ JURISDICTION

The opinion and judgment sought to be reviewed were

entered by the United States Court of Appeals.on.May 27,

1957, and _ _appear—as Appendix A and B of this ©

' petition. Petitionet’s timely petition for a rehearing was

denied on July 10, 1957. The jurisdiction of this Court to

review by writ of certiorari the judgment in question is

conferred by Title 28, United States Code, Section , 1

eS

i. QUESTIONS PRESENTED

(1) Did the Court of Appeals e err.in reversing the

trial court and holding that the patent in suit was invalid

er

_

7 ‘Cine shale ened dk scteieed Sor wee! ot-tes- Uttiad Swiie

"pf Appeals for the Fourth Circuit are filed herewith pursuant .

| SAppeedic Of Acpalh ‘containing p aA 8la and |

of ppellant” ia to 18la a gray

t labeled “Appendix for the ppellee” containing pages 1x _

- for lack of invention, rome the trial de s findings of

* fact that: ,

_ (a) the textile cleaning industry was tenths on

‘the look Sut for and in need of a means of solving

the problem which the patentee overcame; -. -.- v.

'(b) many men skilled in the-art of textile cleaning,

including defendant’s research men, were continuously _

es to devise some means - bed solving, the

problem ; ~,

* (c) the patentee’s uiaies of the problem met a — 3a

response from the textile nore: and has been. highly Anwar

_ successful commercially; - : —

"> (d) the defendant and other Seaman who had le:

-_ viously offered other solutions to the industry found —

that such products were not competitive and. turned

, to copying the — s device? : Souk

(2). Did die Court. of hiioiite err in applying an

¥ improper test of what constitutes patentable invention in

view of the enactment of Section 103 of Title: 35 of the

_ U.S. Code? . _ .

(3) Did the Court of Appeals err in holding that the

standard of what constitutes patentable invention, 4s a legal -

2: ne than a factual one? =

- STATEMENT OF THE CASE .

1 A as arothom in the manufacturing of bexiile yarns So

al fabrics made from cotton and other short staple fibers

is the collection of lint which i is shed during the manufactur-

ing — collects on the’ textile machines, forms :

ev

_ bunchés and frequently becomes caught in ne suet tees

-are drawn, spun, wound and woven, causing § slubs and other .

imperfections_in the-yarns -and fabric. The bunches often

___tause breaks which require piecings, resulting in further ©

imperfections. A major item, therefore, in the cost of textile”

‘manufactrre lies in keeping the textile machines, room sur-.

faces and material in process reasonably free from such .

* tint. This, fact is of particular importance oe reference

to the spinning « room. : : |

Prior to about 1926, cleaning of spinning frames was .

- done by hand (28a). ‘The spinning room operatives would

. wipe'or brush off-th¢ surfaces where lint had accumulated, ».

or would blow the lint off. by fanning» In some mills certain~

_ portions of spinning frames such as underframe and ring

_ Tail areas were cleaned periodically by compressed air (23a).

The’ air was piped into the.room and a long flexible ‘hose

“was attached. This-hose had a metal or other rigid nozzle

on the end; which the operative would direct.at surfaces

to be cleaned (24a). Since ahout 1926 traveling. blowers, »

'. Funning continuously on a track above rows of textile

machines, such. as ‘cotton ring spinning frames, winders,

__ twister's, spoolers, warpers and, more recently, looms have —

- been widely used. These “traveling cleaners” blow the lint

‘f off such machines at approximately five minute intervals. |

The air didectbvatingg outlets ‘fn ‘the ‘ale cleaners termi-

nated above the machines and above the heads of. the -

machine operators when standing. This is illustrated by a

photograph of one: of those early cleaners (the Hodge

cleaner), appropriately marked to identify various parts of

the spinning frame, reproduced on facing page. ( Plaintiff's

Exhibit 1.) The Hodge frame cleaner, riding on a track.

above the spinning frame, is the cleaner on the right of the

-

ai identifiable by. the presence ‘of air dain ex-

tending toward the- frame. This cleaner, along with the

‘Walker-Smith type ¢Plaintiff’s Exhibit 13, 61x) and

Lawrence type (Plaintiff's Exhibit 3, 56x) typify the early

. cleaners which were in yse, All of these were manufactured

| and sold by either plaintiff or defendant.

: Prior to the inventi we represented by the patent. in suit,

-/ No. map ate! in 1950, certain areas of spinning

frames.such a undersides of the top, middle an bottom

creel boards (C, M and D on Plaintiff’s Exhibit 1) were not _

cleaned by the overhead traveling blowers (5x, 9x, 37x).’

No Way had. been found:of delivering air from traveling

— blowers to these out-of-line areas. The lower outside sur-

faces of these machines, such as ring rail (RR), travelers

_(V), ete., also could not be cleanéd effectively since no way

had been found of reaching such surfaces with air .of |

sufficient. intensity to keep them clean without creating air.

currents togyetrong ‘for intermediate areas of the machine,

such as the ‘Pving: and drafting rolls (5x-6x,. 39x-40x))\

. Asa rule these lower ftame surfaces and underframe areas |

_ were cleaned during shut down periods by the use of com-

z pressed air (34x, 39x). \

; N umerous attempts were made to improve early types

of traveling. cleaners and to dévise special cleaners for

certain areas. These attempts were far from successful.

At best only slightly better cleaning resulted. A good deal

of hand cleanigg still had-to be done and. ‘machines had to

_ be stopped periodically: for more thorough blowing off. This _

‘ Tabor was expensive; some production time was lost; and the -

quality of the product suffered.

Faced with the problem of devising better. means ‘of |

_ Plaintiff's Exhibit :

Early Hodge: Cleaner.

-

6

e! ..

cleaning out-of-line and otherwise hard-to-reach areas

effectively, plaintiff's Research Director, Grover B. Holtz-

claw, conceiveg the ‘novel idea of using extended air outlets

(cuffs, nozzles or sleeves) of appropriate sHape and size . *

‘to deliver air currents of the right volumes and velocities

‘at the right places and in the right directions, such outlets

being made of flexible material in. order to yield if they _.

should come :in contact’ with a. mache operator or other’

obstruction, as the cleaner traveled along at a speed of 100 -

feet or more perifginute. The invention had three important

“components, each’ of which was. novel in the traveling

- cleaner art:. (1) conveying air currents down below head

~ height into the-working area of the room close to surfaces

to be cleaned, (2) directing the issuing air currents ac-

curately at-controlled volumes and velocities and against

surfaces not. previously cleanable, and (3) employing flex-.

_ ible materials inamaking the extended sleeves to insure

safe operation without injury to operatives or equipment.

* Although the canbodlimnent of. the invention illustrated in

. the patent featured relatively short flexible cuffs or sleeves,

the inventor also contémplated-the use of longer and mul-

tiple sleeves if necessary,.to. a thorough cleaning of the

» machines {10a-1la, 26x). Numerous émbodiments. were

” developed by the.inventor over a period of years following

the issuance of his patent; to which the defendant ‘contri-

_ buted nothing. A photograptPof the plaintiff’s “elephant

trunk” Ymbodiment, the device copied by the defendant

in 1954 (43x-44x) appears on facing page, in.the process

of striking arid” passing over an employee (Plaintiff’s Ex-

hibit 16). It is to be noted that this elephant-type cleaner .

contained short sleeves: with curved end: fdrtions as illus-_

trated in the patent in suit and also longer sleeves featuring

a. variety of nearly horizontal inwardly directed air outlets

a

é

f

a eee

for cleaning many different frame. areas, including the un- |

derframe.

In December. of 1954, plaintifi learned that. defendant

had made and installed equipment which infringed its -

patent No. 2,524, 797 and shortly thereafter plaintiff in-

stituted this action under. Title 28, § 1338(a) of the United

States Code. The -trial court held the plaintiff's patent

valid 'and“infringed by the defendant (180a). On appeal

by, the defendant, the judgment of the trial court was re-

versed by the Court of Appeals or the- ground that the

". patent ‘in suit is invalid. for lack of inv ention. Plaintiff's

- petition for a rehearing was dered.

REASONS FOR ALLOWANCE OF WRIT

I ntroduction

os |

This is a case in which the United States Court of Ap-

peals. for the Fourth Circuit, ii? overthrowing the trial

court’s finding of. validity, improperly and contrary. to the

-Tequirements of. Séction 103 of Title 35: of the United

‘States Code and the decisions of this Court took no ac-

count of the fact that many persons skilled in the trade had

over a number of years sought unsuccessfully to solv e Whe

problem which this patentee. finallyeovercame. Despité the

trial court’s finding of fact, the Court of Appeals’ opinion

made no mention of such unsuccessful prior atterhpts, hold-

ing the patent invalid, for lack of invention on the Basis of >

some purely subjgtive and theoretical test unrelated to the

talents of a person having ordinary skill in the art. In so

doing, the United States Court of Appeals for the Fourth

Circuit (1) rendered a decision which conflicts with princi- -

ples of law enunciated in the decisions of other circuit

| Plaintiff's Exhibit 16.

"Elephant". Type. Holtzclaw Cleaner and Operator

oe my . o nds, ' >

a

courts ‘of appeals ; (2) decided an important question of.

federal law, to wit, that Section 103 of Title 35, of the

United States Code does not restrict the scope of an ap-

pellate court’s inquiry’to the issue of whether or not the

invention was obvious to a_pérson having ordinary skill ‘in

the art, which question has not been,. but should be, settled

by this’Court; and (3) so far depatted from the accepted

and usual course of judicial proceedings as to.call for an

exercise of this Court’s power of supervision.

I. The Court Of Appeals Bered In Holding That The :

Patent In Suit Was Invalid For Lack Of Invention Despite

The Fact That Many Others Skilled In The Art Had Made

Numerous Attempts Tg Solwe The Industry's Problem ~

Without Success And The. Petitioner's Device Has En-

joyed Great Commercial Success. ran

* That thete was a marked and long-felt need for a cleaner ©

which would perform the cleaning. job made possible by

_, the Holtzclaw invention has been demonstrated by the testi-

mony of plaintiff’s witnesses (7x, 37x). Two of plaintiff’s

witnesses were mill executives who have been confronted

with the problem from day to day. Additional eviderice of

. such fong-felt need is contained in prior art patents which

bear witness to the many other. attempts of men skilled in ©

& the art to solve this cleaning problem.

Plaintift’s testimony has also shown. the: marked com- .

-° merGial success which the Holtzclaw flexible sleeve cleaner

has.enjoyed. (22x). In the calendar year 1955 alone, plain- |

tiff sold to 155 mills 1,395 such cleaning units operating

over approximately three and one-third million spindles,

* | which is. equal to about one-seventh of the spindles in use ~

in the United States. The gross sales price of such cheaning i

o

S

_ tnits in . 1955 aggregated t three‘ and a half sidllion dollars

(Sta), poe ir

As was indicated .by the district judge’s finding of fact, |

“many men skilled in the art of textile cleaning were con-

tinuously undertaking to devise somé means: for cleaning @

the lint from the varioys surfaces of such machines not-

‘ cleaned by the machines (traveling cleaners) of the Walker

and Lytton types. . . Holtzclaw has evidently overcome the

problem which: confronted the industry for many years and

has devised by his invention a means and a method tc |

deliver air to out of-line surfaces and at:a prey velocity

and in such volume as is foun@, proper. * (173a, 176a).

. Prior to Holtzclaw’s invention the problem of cleaning tex-

tile machines was made more difficult by the fact that dif-.

ferent areas were found to require air streams of different

velocities,and directions in order to.provide effective clean-

ing without interfering -with “efficient machine operation —

‘and impairing yarn quality. For example, in the roving |

and drafting areas, not much air is permissible; velocities

here must. be restricted to only a few hundred feet per

minute in order to avoid impairing the quality of the yarn—-

Midway of the spinning frame, somewhat higher velocti€s

are required to reach under the draftipg rolls and-clean

_associated areas. Still farther away from the overhead

traveling unit, s still higher velocities are needed for clean-

ing the spindle areas. The most-remote areas to be cleaned,

‘namely, withjn the underframe, require air velocities many

times greate than are permissible up in the creel area.

‘he attempts to solve the problem included (1 ) divid- °

‘ing the air conduits of overhead traveling cleaners, making

them ‘wider so as to provide some adjustability in the- di-

rection of the issuing air currents, (2) adding adjustable

i wy

je ee

“air deflectors of various sorts, and (3) installing entirely

separate blower pet within the: undef frame.

Certainly Holtzclaw’s solution of the problem of inden

an entire textile machine from an overhead traveling

cleaner was not’ obyious to Hodge (plaintiff’s exhibits 24,

25, 28, and 30), nor to Smith (plairitiff’s exhibit 29), |

nor to Moore (plaintiff's exhibit 27), whose attempts -were

‘made over a considerable period of years. Nor was the

solution obvious to Holtzclaw himself. He.did not develop —

the cleaner in suit until some ten years after his Parks-

Cramer predecessor Hodge had obtained cleaner patents.

_despite the fact that he was constantly engaged in develop- *

ment and research work, .

And costal the solutioti was not obvious to the de-

fendant who, even after Holtzclaw’s, application had been.

filed, publicly admitted in another | patent application that _

the problem was insoluble (Miller and Becker patent No. ”

2,516, 475, plaintiff's exhibit 8, Col. 1, line 31}:

- “Ever Since ‘spinning frames were first used the

problem of removing lint from them’ or preventing its

accimulation on them has existed and many proposals —

have been made to solve this problem. .

Air streams could theoretically be used to effect the ,

desired cleaning but the problem of generating such

- streams and delivering them against all the parts in

the underframe to be cleaned has apparently been in-

soluble. . . A traveling air stream could not be a ee

| — from outside the frame. .

Lack of obviousness of the Holtzclaw ren is thus

especially demonstrated by the work of Miller and Becker,

|

_defendant’s inventors, who went. to great lengths to de-

velop for the defendant the special underframe cleaner dis-

closed in their patent. As shown by the record in the present

case,, the Miller and Becker cleaner proved to be practically

non-saleable in competition with the. improved cleaner of.

the Holtzclaw patent in suit..Defendant has virtually aban-

_ doned its. Miller and Becker underframe cleaner and has -

instead copied plaintiff’s Holtzclaw cleaner. We submit that

| -it is inconceivable that the defendant should have made the «

investment involved in dev eloping and selling its expensive

underframe cleaner of the Miller and. Becker patent. if,

as defendant now contends, it were -ebvious alt the —

~ that air for cleaning could be conveyed to the underframe

areas by an ov erhead cleaner employing Holtzclaw’ - flexible

_ ducts.

_ , Despite the significance of these many prior unsuccessful -

attempts, no reference whatever was made to them in the

opinion of the Court of Appeals. in which the decree of |

the trial court was rev ersed.

‘

- That such cidibiniies may be determinative was in- |

dicated by Justice Roberts when.writing fo- this Court in

Goodyear Tire & Rubber Co. x. Ray-O-Vac Co., 322°U. S.

275, 278, 64 S. Ct. 593, 594 (1944) a case in which the.

; validity of a patent relating to a leakproof dry ceH for a_

flashlight battery was sustained :

‘

“The District /Judge made findings, which have swp-

port in the evidence, to the following effect: That the

problem presented was old and no solution was attained

prior to Anthony’s invention; that the respondent he-

gan marketing the patented ‘cell in 1939 and was the

first to guarantee its product against sticking in the

2. Ear: oe

_ flashlight case; that the cell met with immediate cum-

amercial success due tothe adwantages of its construc-

' & tion and not to-extensive advertising . . . In his opinion

he examined the prior art and showed that none of

. the workers in the art had met the problems of leakage |

and swelling in. the way suggested by Anthony and

that most of the citied patents had not in fact been

addressed to Cee”

* * « pie ae

seem simple and such as should have been obviotis to’

those who worked in ‘the field, but this is not enough —

to negative invention. During a period of ‘half a cen-

tury, in which the use of flashlight batteries increased |

—

: Re “Viewed : after the event, the means Anthony adopted -

enormously, and the manufacturers of flashlight.cells —

were conscious of the defects in them, nc one devised -

a method of. curing such defects. Once the method

was discovered it commended: itself to the public

| evidenced by marked commercial success. Bg

were entitled to weight in determining whether the

improvement amounted to invention and should, in a

close case, tip the scales in favor of patentability. Ac:

. cepting, as we do, the findings below, ——— the patent

" valid and oes . °

As is indicated in Jats hanes ail S opinion in,

Safety Car Heating and Lighting Co. v. General Electric

Co., 155 F. 2d 937 (CCA 2nd 1946), the very best test

ae of what constitutes patentable invention -has always been

- the pragmatic one of considering the industry’s need for .

the invention, ‘the number of those who sought to meet:

that need, i eee and

: sa 13

4 Pe, | a

the reception which the invention received in the market.

Judge Hand more recently emphasized the same considera-

tions as determinative in Lyon v. Bausch & Lomb Op--

tical Co., 224 F. 2d 530, 535 (CCA 2nd 1955), cert. denied

350 U.S. 911, rehearing denied 350 U. S. 955 ¢ees).

There he stated:

_. “The most competent utah do. nk tnd ter

_ at least ten years been seeking a hardy, tenacious coat- |

“ing to prevent reflection; there had. been a number of _

attethpts, 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: no¥ 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 ater we”. Mee

_ Clearly the Court of Appeals for the Fourth Circuit vi-

‘ olated the fundamental principles of patent law by. disre-

garding these pragmatic tests of invention and indulging in

a theoretical subjectivity in which hindsight played the

_ role.

: U. The Court Of Appeals Erred. In Failing To Recagnise

That Section 103 Of Title 35 Of The United States Code

. Requires It To Determine Existence Of Invention By Ref-

erénce To What Was Obvious To A Person Having Ordi- ..

nary Skil In oad Art. ae. ; ae

We have ‘tiistta nitened out. that this Court and other —

~. federal courts have held that the most satisfactory means .

of determining the existence of invention is by euatining

« Be, :

44.

<r

~o

the extent to: eth the taidntuy sented the inneliiinn, the

number of unsuccessful attempts to satisfy-such need, and —

| “the aéceptance of the’ invention by the industry. That this

test was. applied by the Court of Appeals in the principal

. case is ated not only by the failure of that Court’s

‘- opinion, to mention the numerous prior unsuccessful at-

. tempts which have been made to solve the textile. cleaning |

* problem but also. by that Court's 7 of invalidity i in

es face of such attempts. é

. The appellate court’s error is | made jestinniaty apparent —

' by the fact that Section 103 of Title 35 of the United —

States Code was énacted ‘by Congress in 1952 in order to —

stabilize the pragmatic test as determinative, assuming, of -

course, that the invention also satisfies the other statutory .

tests laid down in S@ctions 101 and 102. Since there is no |

question but that the fequirements. of Sections. 101 and 102 —

’ were satisfied by. “the patent in suit, the holding of the Court

. of Appeals cannot: starid if that Court failed:to apply the’

‘mandate of Section 103 correctly. We oman | that its. fail-

ure to do so is evident. :

Section 103 provides as follows:

“A patent may not *be obtained though the invention |

is not identically disclosed or described as’ set -forth in

section 102 of this title, if the differences between

the subject matter sought to be patented and the prior _

art are such that the subject matter as.a whole would

7 have been obvious at the time the invention was made |

to a person having ordinary skill in thé art to which

said subject matter pertains. Patentability shall not be

negatived wd the manner in which the invention was

made.”

15~

——

Sy 5 die een pbbiblenbe of Section 103 requires that a

_ patent which satisfies the requirements of that Section and

Sections 101 and 102 must be sustained. While the wording

.of Section 103 is somewhat ambiguous. in this respect, the

“intent of the legislators, as derived frog, Reviser’ s: ‘Notes,

the committee reports and the background of its enactment, .

was to stabilize: the test of invention by pin-pointing the

standard by. which igyention should be judged, thus fore-

_ stalling great departures of the kind which appear in.

‘some recent cases and restoring public confidence.in patents: 3

- ‘The Reviser’ s Note reads as iefiee:-

| “There is no provision servenbiailing to the first:

sentence. explicitly stated in the present. statutes. but

' the refusal of patents by the Patent Office, and the

_ holding of patents invalid by the courts, on the ground

. of lack of invention or lack of patentable novelty. has -

- been follewed since at least'as early as 1850. This par-

agraph is added with the view that an explicit state-

‘ ment in the statute may have some stabilizing effect, |

and also to serve as a basis for the addition at a later

time of some criteria which may be worked out.

The second sentence states that patentability. as to

this requirement. is not to be negatived by the manner

in which the invention was made, that is, it is imma-

' terial whether it resulted from long toil and. experi-

mentation or from a flash of genius.” (Emphasis

, adted) .. | |

“he will be noted that the. ential een e the Note in-.

dicates that Section. 103 is intended to have a “stabilizing

effect”. If the courts remain free to apply a stricter test of

iv

invention than that set ae in Section 103, it is difficult to

understand wherein that Section could have any stabilizing” .

- effect. Mereover, the fact that the second sentence of Sec-

‘tion 103 expressly repudiates the “flash of genius” test re-

ferred to in Cuno Engineering | Corp. v, Automatic Devices.

— Corp., 314 U. S. 84, 62 S. Ct. 37 (1941), lends further

-. support to the view that at least some anes change i in

: the law was intended. canis .

\

Both the House and Senate Reports. contain the following

ee:

“That. provision. paraphrases bssieinass which | hes 3

often been uséd in decisions of the courts, and the-+sec-

tion is added to the statute for uniformity and definite- |

-; ness. This section should havé a ‘stabilizing effect and

minimise great departures which have appeared im

some cases.” | (Rnghede aaeet), 7

The shai stelengenk | is an almost: verbatim quotation

from the testimony of P. J. Frederico, then Examiner i in

- Chief of the Patent Office, given at the hearings of the

- House stibcommittee.? In his “Commentary:on the New

a

‘Patent Act,” 35.U.S.C.A. 1 at 22, Mr. Frederico confirms :

that the “great departures” to which he referred were in the

direction of aitigesss strictness. tae

The House and Senate Repawts also contain the follow- -

ing statetnent, @#dicative-of an intention on the part of the

legislators to breathe substantive life into Section 103:

, 2H. R. Rep. No. 1923, 82d 1 2d Seas. 7 (1982); S. Rep.

~ No. 1979, 82d Cong., 2d Sess. 6 (1 2).

*H - before Subcommittee No. 3 of House Committee on

Judiciary, 82d Cong. Ist Sess. 3 eee

av.

‘Although the whaiia purpose of the bill is: the

codification. of title 35, United States Code; and in-

volves simplification and clarification of language and

arrangement and elimination of obsolete and redun-

dant provisions there are.a number of changes i in sub- ©

stantive statutory law. These will be explained in some

detail in’ the revision notes keyed to: each section

which appear in the appendix of this report. The major '

_ changes or innovations in the. title consist of incor-

porating a requirement for invention in § 103 and the

judicial doctrine of ‘contributory infringement in: |

s 271. * (emphasis added ) :

i the heals of such evden as that outlined above, one

commentator has drawn the following conclusion :

“Tf any firm conchision can be drawn with respect

to the intent of Congress, it is that Congress intended

section 103 to’ be the sole and exclusive test applicable

_when the question of invention was in doubt. As has

been pointed out above, one may not ‘deduce this propo- -

- sition simply from the language of the statute itself,

- but it is believed that one cannot absorb the atmosphere

of the hearings and the reports without attaining moral

certainty that Congress intended that henceforth the

courts should find noninvention only where the sub-

ject matter ‘would have been obvious’ to one skilled in

the art. ‘In what other way could it reasonably be sup-

posed that the law would achieve ‘uniformity and defi-

niteness’? Unless all other tests of invention were-elim-

inated ey ee * ie ae ee ee ee

4 e

+H. R. Rep. No. 1923, 82d | 24 Seas. $ (1952); S Rep

"1979, 824 Cong. 2d Sess. 4 (1! i).

No.

»)

i ane creel beara

CT Hodge type tray eling

cleaner |

I) -Beottem creel board, -roller

beam ereenboard, deck

Cunderframe area 1s

beloay this) |

I Flat clearer (revolving.

clearer is used on some

frames ) — |

J Samson

a”

Me Middle ee board

QO Rigid air outlets

P Weight

R Roving bobbins

RR Ring rail

S_ Koll stands

‘| . Top tapers

LY Rocker’

\ Travelers

XN Spindle rail

I inished y yarn on spindle.

s Guard rail

See Sei eae

eee meas ;

havea ‘stabilizing effect or serve as the basis for some

additional criteria ‘which may be worked out’ at a

: G later time? It seems inescapable that the ‘obviousness’

test was established as the sole means of invalidating

or refusing: a patent for lack of. invention. While this

' proposition appears elementary on its face, and prob- .

ably few would quarrel with it, its full significance has —

not. been realized. e

~< |

A somewhat similar dnnaleaion was reached by Judge

Learned Hand in Lyon v. Bausch & Lomb, Optical Co., -

224 F. 2d 530, 535 (CCAS2d,1955), cert. den. 350 U. $:

911, rehearing den. 350 U. S. 955 (1956). There Judge

Hand held that, since the patentge in that case had solved

a problem on which the most competent workers in the in-

dustry _ had -béen working for at least ten years, the patent

satisfied the test of Section 103 and was consequently en-

titled to be sustained. In so holding, Judge Hand conceded

that thé patent would not have met 'the-strict test of inven-

tion imposed by certain pronouncements of this Court in the

. _ sextet prior to the enactment of Section 103. In support

"of this‘analysis of Section 103, see also L- O-F Glass Fibers .

v. Watson, 228 F. 24.40, 47 (Ct. of Custs. & Pat. App'ls. |

1955) and Gentsell v. Manning; 230° F. 2d 341, 344 (CCA

2d 1956), cert. denied 352 U.S. 840,77. S. Ct. 63.

On the other harid, the principal case is not the first in

which the Court of Appeals for the Fourth Circuit has re- —

fused to recognize the substantive effect of Section 103. ° .

. See Interstate Rubber Rroducts Cc i Vv. Radiator Ss pecialty

® Libert, * Section 103 of the Patent. Act and the Stendard of In-

<) vention: Comments on Lyon v. Bausch & Lomb — Co.,” 38 J.

Pat. Off. Soc’. 304, 325 _—

Q 3 j a O

. . \ Ps

19

Co., 214 F. 2d 546, 548 (CCA 4th 1954). And some other

circuits have aligned themselves with the Fourth Circuit on

this: question. See, e.g, Mojonmer Bros. Coa. v. Tolan Ma-

chinery Co., 230 F. 2d 850, 851 (CCA 3rd 1956) ; Wasser-

_ man v. Burgess & Blacher C€v., 217 F. 2d 402, 404 (CCA

Ist 1954). For at least two years this conflict ‘between the —

circuits has beétt crying out for resolution by. an authorita-

‘tive decision, of this Court. | a

» Finally: in this connection we would -reiterate that the

principal case is an appropriate vehicle by which this Court

may resolve the conflict. The trial court held the plaintiff's

- patent valid. The Court of Appeals reversed the trial court,

holding the patent invalid for lack of invention: The stand-

ard of invention applied by the Court of Appeals was not

consistent with the requirements of Section 103 in that,

relying upon the strict test of Great Atlantic and Pacific —

Tea Co. v. Supermarket Corp., 340 U. S. 147, 71 S. Ct.

127 (1950), that Court ignored the many unsuccessful at- -

tempts of those skilled in the art to solve the same problem

(the test established by Section 103) and invalidated the ‘

patent on the basis of some a priori postulate of its own.

manufacture. In so doing, it reaffirmed its holding in /nter-

state Rubber Products Corp. v. Radiator _ ae

supra, that Section 103 was not intended to temper the strict

test laid down in the decisions of this Court which immedi- '

ately preceded its enactment. In. so doing, it also refused to

recognize that Section 103 is'the sole and exclusive test by

which patentable invention must be determined. .

~ As was written by the same commentator whose in-

Cisive paper has already been referred to above:

°

“tahaine the ‘obviousness’ test to specific cases, it

must be observed that the cases where it is most diffi-

cult to say that the invention would have been obvious

‘to those skilled in the art, are those cases, in whiclr the a

evidence clearly. shows that those most skilled in the

art have sought a solution to a: particular and, perplex- -

ing problem. for many years, but have’ been without.

success until the discovery of the patentee. In the

Bausch & Lomb case, the court found. that such a long,

conceitrated, and unsuccessful search was present. It

is only natural that the court should find that it could

not invalidate the patent without disregarding the test

established by Congress i in section:103.

It is submitted that. the decision in the’ Bausch &

Lomb. case is: correct on the facts as found by the

court, and that its analysis of the effect of séction 103,

: correctly understood, -is more in accord with the intent

of Congress than any of. the other cases which have

considered the question. wie

.

dou...

The same type of “long, concentrated, and“unsuccessful

search” which was referred to above with reference to the

Bausch & Lomb case was present in the principal case..

- Consequently the Court of Appeals for the Fourth Circuit .

- “could not invalidate the patent without. disregarding the

test established by Congress in’ Section 103.”

® Libert, ° “Section 103 ot the Patent Act soi the Standard of In--

vention: Comments on Lyon v. Bausch & Lomb Optical .Co.,” 38 J.

Pat. Off. Soc’y. 304, 328 — :

° 21

III. The Court Of Appeals Decision That The Standard

Of Invention Is A Legal Rather Than A Factual Question |

Is Contrary To The Decisions Of This Court And In Direct

Conflict With The Decisions Of The Great Majority Of |

The Other Courts Of Appeal. -

In holding ‘the: plaintiff’s patent invalid for lack of ine

vention, the Court of Appeals said, “the appropriate stand-

ard of invention is a legal, rather than a factual, question.”

This is directly contrary to. the holding of this Court in

Graver Tank & Manufacturing Co. v. Linde Air Products -

Co., 336 U. S. 271, 274, 69 S. Ct.. 535, 537 (1949), where

_ this Court said esiaiat Mr. Justice —

eee We are now asked to hold that there has

been no such invention. .' .

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

provides in part: ‘Findings of fact shall ‘not be set

aside unless clea ily erroneous and due regard shall be

given to the-oj rtunity of the trial court t6 judge of

the credibility of \the witnesses.’ To no type of case is

this last clause more appropriately applicable than to

the one before ‘us, where the evidence is largely. the

testimony of experts as to which a trial court may be

- enlightened by scientific demonstrations. ” (p. 274)

See also later chien in oes Tank case, 339 U. S. 605,

609, 70'S. Ct. 854, 857 (1950) ; Thomson Spot Welder Co.

v. Ford Motor Co., 265 U. S. 445, 446, 44S. Ct. 533, 534

(1924).

The principal case is one in which the chief witness for

<

22

each party was an expert Witness. The same principles ap- .

_. plicable to the Graver Tank case are applicable here. The

trial judge not only enjoyed the advantage’ of having con-

sidered all of the evidence at first hand but he had the

- «added advantage of having lived for many years inthe

- center of the textile industry and become acquainted with |

the processes’ of textile manufacture. Moreover, he had the

: _ gase under-Consideration- for a’period in excess of twenty

months, from ‘the time when the defendant’s motion for

summary judgment was heard and denied in April, 1955

until the announcement of the final decision in January

1957.

It cannot be gainsaid that the Court of Appeals found

. Clearly bad a patent which the trial judge had found clearly ;

- good. The trial judge’s opinion states, “A careful study of ~

_ the record in this case unalterably leads one to the conclu-

‘ sion’ that the patent in suit is good and valid in law and

. Tepresents patentable invention.” We submit that an ap-

| pellate court, whose only familiarity with the art in a par- .

ticular field is derived from a brief encounter | with the -

background of the invention, is of necessity a poor second-

- guesser on the question of whether or not a given jump

from the old to the new required invention. In this case the

complete substitution of the appellate court’s judgment for

that of the trial court has resulted in.a further costly set-

back for patentability in any context. _

The decisions of the great majority of the United States

Courts of Appeals demonstrate a conflict with the Fourth

Circuit on this question. See, e.9. |

23

?

Lincoln Stores v. Nashua Mfg. Co., 157 F. 24 154,

163 (CCA Ist 1946), cert. denied 329 U. S. 811, 67

S. Ct. 623 (1947) ; . :

i”

Schering Corp. v. Gilbert et 2 153 F. 2d 428, 432 :

(CCA 2nd. 1946) ;

. ¥.2d 926, 935 (CCA 3rd =~ cert. denied 340 U. .

—-906,.71 S. Ct. 281; :

Sutherland Paper Co. v. Grant bits Box Co., 183

Becton Dickinson & Co. v. R: P.. Scherer Conp., 211—

F. 2d 835, 843 (CCA 6th 1954) ;.

Texas Co. v. Globe Ol & Refining Co., 225 F. 24

725,738 (CCA 7th 1955);

Willis v. Town, 182 Fe2d 892, 894 (CCA 8th 1950) ; |

Faulkner v. Gibbs, 170 F. 2d 34, 37 (CCA 9th 1948),

affirmed 338 U. S.. 267, sind S: Ct. = cat

One other circuit court has ‘sided with the Howth Circuit

in holding’ that the standard of invention is a question of

law. Blish, Mize and S illiman Hardware C 0. v. Time Saver

Tools, Inc.; 236 F. 2d 913, 916 (CCA 10th 1956), cert

den. 352.U. S. 1004, 77 S. Ct. 565. The conflict.which has -

arisen between the circuit courts on this question should. be

resolved in ‘this case. The time is ripe for this Court to con-:

_. firm that the principles of appellate review apply to patent

cases for the same reasons and with the same effect as théy

: apply to cases involving — subject matters.

S

é

¥* <

CONCLUSION S

|

..

*

a

For the reasons set:forth in this Petition we respectfully

24

submit that certiorari-should be granted.

‘ es 3 .

Oe ate a! Josern W. Grizr, Jr.,

at ee Counsel for Petitioner

400 Law Building :

Charlotte 2, North Carolina

- Of Counsel

: _ Capac W. Porter,

41 Tremont Street

- Boston 8, Massachusetts

‘Svaeee Tissavees; ae Ne en

400 Law Building | ak 7 ses

Charlotte 2, eee, Carolina os |

- DATED STATES COORT OF APPEALS.

FOR THE FOURTH. ser ideal

No. ‘7398.

ee -The American MonoRail Company,

; “.. Appellant,

og versus

* Pedtin Crema ‘Company, ‘

Appellee.

APPEAL FROM THE UNsTED STATES Disvaict Court FOR

THE WESTERN District or NortH CAROLINA, AT

CHARLOTTE. a

* (Argued Avril 10, 1957. Decided ~ 27, 1957.)

; teat SoPER and SoBELOFF, iri Judges, and 1 Pavt,

District Juage. _ ees 3

a

> ; : ~ | 2 Pa i : =

ee

4

oe

B. D. Watts (Craighill, eaten & Kennety, j. B. }

Craighill, Richey, Watts, Edgerton & McNenny, and ©

F. O. Richey on brief) for Appellant, and Joseph W. |

Grier, Jr. (Taliaferro, Grier, Parker & Poe, Sydnor

Thompson, Porter, Chittick and Russell, and Cedric W.

Porter onteuty for ae.

SoBELOFF, Circuit Judge:

2 ~ suit here is a pateie sang to-en improvement in -

traveling’ fans. or cleaners installed principally in textile

factories to blow lint frem spinning and weaving machines

and from yarns and fabrics during the manufacturing

process. The plaintiff, Parks-Cramer Company, is the owner .

of patent: No.°2,524,797, issued to it on October. 10, 1950,

as assignee of the inventor, Grover B. Holtzclaw, its re-

search director." The District Court having upheld the

plaintiff's contentions on validity and infringement (147 .

‘F. Supp. 218), the defendant, The American MonoRail

east —_ the case here on —

'The ‘ios of the patent with which we are re ae concernall is No.

_ 6, .as fofiows: “The combination with a traveling cleaner, for blowing lint,

dust, and other foreign particles from longitudinally alined machines having a

trackway dispased above and longitudinally cenérally of said machines, said -

cleaner ‘having a.motor driven carriage and fan with means operable by said

motor for propelling the carriage along the trackway and for rotating said

fan, and a fan casing enclosing the fan having an inlet and oppositely posi-

tioned ‘outlet conduits, of the construction in which the said conduits present

a rigid section terminatirig above the heads of the machine operators when

standiag,.and in which the said conduits at each side are provided with a

cuf of highty- flexible material extending therefrom toward the machines to

‘enable currents of air produced by the fan and discharged through the cuffs

* to be directed against the machines and the cuffs to yield upon impingement

with an ae ak or other. obstruction in their path of travel.”

: A long-standing pre in the textile industry was thes

in spinning yarn and weaving it into fabric, minute par-

ticles of fibre, called lint, would accumulate on the machines -

/_ atid ’on the material being processed. This interfered with

_ the proper operation of the machines and caused defects in

the product. Various means were employed at different

times to remove-lint. Before 1925, it was done largely by

hand: operators of the spinning or weaving machines would

pick ‘off the lint or wipe or brush off the surfaces where it

had. accumulated: Another but still comparatively primitive

method was to pipe compressed air.into the spinning’ room.

_ Attached to the pipe was a jong, flexible hose with a nozzle

on the end, which the spinning machine operator directed as

-Ttequired. Like the original hand method, this consumed

‘much of the operator’s time and was not satisfactory. Later

came mechanical cleaners—fans or blowers propelled along

tracks suspended from the ceiling or otherwise fixed above

the spinning machines. The fan is enclosed in a casing or

housing with outlets for the air current. ‘Tier ate sew ge

established feature of cotton mills. :

A shia cenctinin ccndiens wh 6 eng, Ssh enlig

the floor and extending the length of the spinning room.

_ Above are three interspaced boards or shelves, running the

- length of the base. These are known as cree! boards, and

“they support, the bobbins of roving or raw fibre, and the.

‘spindles. The boards, together with the’ equipment they

hold, are referred to as the creel, when it is desired to dis-

ang Gih.gan 6 Ge cones teen Ge eww pant,

which is often called the underframe. |

| Spinning machines are usually arranged in.a series of

- rows, with aisles between the rows. In the aisles, operators

pass frequently in attending the. machines. The blower

eo

APPENDIX -

| mechanism on the overhead sesitasias wayele the length of

the machine slowly and continously to blow away the lint.

t even after the introduction of this overhead apparatus, .

it\remained a problem to/get the air in proper volume and

intensity between the creel boards, to clean their, under-

‘surfaces; and especially the underframe areas were’ not: |

satisfactorily cleaned by such mechanisms. It still remained |

~ necessary to do. considerable cleaning by hand. ’

: anaes of various design, attached to the on housing,

were in use from time to time to direct air currents in the

removal of lint from the’ machines. Holtzclaw’s patent ap-

plication explains that “in usual traveling cleaners, the end

of each air conduit extending from the fan casing is pro-

vided with two preferably adjustable sleeves or nozzles, one

of which directs the blast of air downwardly by‘ the side

of the machine therebeneath and the other of which directs _

the air transversely across the machine.” In describing the

7 problem to which he addressed himself, Holtzclaw says:

“Each of the sleeves or nozzles usually terminates above the

top of the machine and is ineffective in satisfactorily pre-

venting deposition or accumulation of lint and the like upon —

rigid parts of: the machines not located in the direct paths

of the blasts of air, or upon mechanism for the. material 7

being treated located closely therebeneath. For example, in

the use of the traveling cleaner for cleaning’ a spinning ;

frame, blasts of air are not fully effective in preventing ac-

cumulation of lint and the like upon the lower-face of .the

creel board and.upon the spools of roving located closely

therebeneath and the deposition or accumulation of bunches —

of lint upon the roving running from said spools.”

| See qpeitatty | lared aim was to provide the well known

overhead blower type of cleaner, with a noazle, eeve, oF

if

\

\

.

_ cuff that would reach down lower than a man’ s height, and

thereby more « fectively: prevent the accumulation of lint

on the underside of the creel board and on the spools. ‘He

undertook to do so with P“highly flexible” cuff which would —

_ yield on contact with an action. Previously, such.ex-—

* tensions of the conduit or v= were not allowed to.go be-

_ low the normal height of a person standing in the aisle,

for although the fan usually traveled at a speed of only»

‘one @undred feet per minute, it was deemed unsafe or |

. otherwise undesirable for a part made of rigid material t to .

| extend low enough to strike an: operator.

The issue is whether, according to applicable _ stand- |

ards, this:is a patentable invention. _ conchude that itis |

not. 7

, The base thea eh elas soft sleeve or pipe to convey air, |

fluids, or other materials is very old and has been applied

many times. Repeatedly it has been held that the: use of _

known devices in.an analogous field is not invention. In a

not too dissimilar context, the Supreme * Court said that

‘ such adaptations are “but the display of the expected skill

_of the calling and inyolve only the exercise of the ordinary

faculties of reasoning. . . .” Concrete Appliances: Coa. vs.

Gomery, 269 U.S. 177. The patent which was thete held

invalid was for an apparatus to raise wet concrete at one

place in a building under construction and distribute it ~

through spouts to other parts of the building. The Court

pointed to the familiar use of similar methods and ap-

pliances to distribute water and other mobile substances,

such as grain and coal. The arrangement provided by

Holtzclaw, which adapts to a particular use the well known

~ flexible pipe, is no.mofe novel than the adaptation effected

in the Gomery case. The use of flexible pipes is a familiar

2

cutiansiaginee, anid oea-ealp 16 eoahinns Indeed, li ta

man who has ever lifted the hood of his automobile will .

not have failed to notice the use of flexible pipes or tubes —

connected with rigid conveyors of fluids and gases. Holtz-

claw himself testified that he was familiar with the use of _

a flexible hose attached to a rigid pipe through which ‘fluids _

, or air or sand was passed. As he said, “You can see that

ee AEE eee

Without minimizing the ‘ailiaias of Holtzclaw’s de:

vice, it is still true that not every idea that may be interest-

ing and useful rises to the level of invention. /mgersoll-

’ Rand Co. vs. Black and Decker Mfg. Co., 4 Cir,, 192 F.

2d 270. Many progressive ideas in business anid industry are

~ not patentable.Great A & P Tea Cov. vs. — |

a Corp., 3 340-U-S- 147° (1953).

tack of invention...

| The ouimesielah success of the plaintifi’s ‘aati has

| been heavily stressed, but we do! not think that it can aid

the patent in this case. es

- Commercial success is not a substitute for i invention. It

may be invoked: to aid a patent only if the question of in-

vention i is doubtful. In the Great A & P case; above cited,

‘the alleged invention consisted of a three-sided frame, with .

no top or bottom, which, when. pushed or pulled across a:

store anter, ‘moved the articles deposited within | it by a

e -k to repeat the operation. The device worked

as claimed, speeded the customer ,and saved checking costs

for the merchant. Indisputably, it had a quick and wide-

spread ae success, but’ it was held unpatentable for

ae ULS

a

a

+

_ Each patent case’in which the issue of invention is raised

_ présents a separate problem, /and it is difficult to find a sure

guide in any prior decision. Nevertheless, we must endeavor

_ as best we may to derive f | the adjudicated cases a gen-

eral principle with r to the question of invention. In |

| our view, prior decision: idcarasive of the general prin-

ciple indicate the absence of invention here. In Atlantu —

- Works vs. Brady, 107 U.S. 192, for example, the patentee —

devised a. complicated piece of machinery, consisting of a

specially designed propeller-like means ‘for dredging rivers,

and devices for flooding compartments of a boat, at will for

the purpose of sinking it! to the desired draught of water,

and: with pumps to remove the mud dislodged from the

river bottom. In phe eae the Court, at page

199, said:

“The process of Pear sity in Shines creates

~ a constant demand for’ néw appliances, which the skill

of ordinary head-workmen and engineers is generally

adequate to devise, and which, indeed, are the natural.

_ * and proper. outgrowth | of such development. Each step

| forward prepares the way for the next, and each is

usually taken by spontaneous trials and attempts in a

hundred different places. To grant to a single party a

_ monopoly of every slight advance made, except where

the exercise of. invention, somewhat above ordinary

mechanical or engineering skill, is distinctly shown, -.

_is unjust in principle and injurious in its consequences.

“The design of the patent laws is to reward those who

make some. substantial discovery or invention, which

_adds to our knowledge and makes a step in advance in’ |

the useful arts. Such inventors are worthy of all favor:

| It was never the object of those laws to grant a mo-

a SS, en

shade of an idea, which would naturally and spontane-

ously occur to any. skilled mechanic or operator in the

ordinany progress of manufactures. Such an indiscrim-

inate creation of exclusive privileges tends rather to.

obstruct than to stimulate invention.” of

r the dredge:boat in that case was invalid,

ine how the flexible cuff here can

velty and invention. | z

Hf the patent

it is difficult to

survive the test of

. Not unmindful of the rule which requires us not to die-

'. turb the District Judge’s findings of fact unless they are

clearly erroncou$, we have given his findings deferential

consideration. Rule 52a, Federal. Rules of Civil Procedure.

We must, however, conclude that he fell into error in at-. }

tributing decisive weight to commercial success. Moreover,

the appropriate standard. of invention is a tegal, rather than

_a factual, question. We think that, for the lacl®ef inventign,

.' the patent should not have been granted in the Patent Office |

si

: or sustained i in ' the District Court. Digits om

Decree reversed with costs.

APPENDIX B

_ °. UNITED STATES COURT OF APPEALS .

FOR THE FOURTH CIRCUIT

oF ote ——~

S. . eeee

The nastaiin MonoRail Company,

Appellant

.versus

_ Parks-Cramer Company,

. Appellee

8. Appeal from the United “States District Court for the:

ad estern District of North Carolina. |

This cause came on to be heard on the er from the

: United States District Court for the Western District of

~ North C arolina, and was argued se counsel.

~ On saath whereof, It is now here ordered, ad-

_ judged and decreed by this Court that the decree of the

said District Court appealed from, in this cause, be, and .

~the same is hereby, reversed with costs; and that this cause “

bevand the same is heréby, remanded to the United States

District Court for the Western District of North Carolina, ~.

at Charlotte, for further proceedings in accordance with

€ opinion of this Court.

: May 27, 1957.

United: States Circuit Judge.

SIMON E. SOBELOFF |