Petition for Writ of Certiorari — Diversey Corp. v. Charles Pfizer & Co.

Supreme Court of the United States.

v.

OcToBer Term, 1958,

nee

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THE DIV ERSEY ( ‘ORPOR ATION,

Petitioner,

"US.

CHARLES PIMAE R & CO.,, INC.

‘ Respondent.

tae

- iq, PETITION FOR] A WRIT OF CERTIORARI TO THE

“UNITED STATES COURT OF APPEALS FOR THE

SEVENTH CIRCUIT.

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VCrartes J; MeErRRIAM,

‘LY Samver B. Suiru, |

30 West Monroe Street,

Chicago 3, Illinois,

: * Counsel for Petitioner,

THE GUNTHORP. WARREN PRINTING COMPANY, CHICAGO

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erates SEP.

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7 PAGE

_—Ypinions-helow. 2.00... 6... ee 4

WI Gk acedcuancds sedans Fina vue ekaa 2

(Jnestions presented .. at Eee Cer ree Ter eee Peer 2

Statement of | a VITer eT cere rar 2

. Reasons for allowance of the writ... .. re eer Tre

Conclusion ...... rer Tr rere tee ase ee Pee ere 5

Appendix. ............ er sik aes

Opinion of the U.S. Court of Appeals for the Seventh

MEE UUs Sta uua enka uaane cn. eee ececaceceenes 7

‘Judgment of theU. S. Court of: Appeals for the Seventh

: Circuit tae sank -\: Sateen eens ooo SSeTr es cnc ene's << ae

Denial of Petition for Rehearing of the U. S. Court of

Appeals for the Seyenth Circuit... Tetrer Ter rtye 14

CITATIONS. a

Cases: ;

Diamond Rubber Co. v. Consolidated Rubber Co.,

2 5 = YS Ratiecnbacens 4

_ Metal Tool Service vy. National Tool (o.; 103 F.

Peg Oe Os Ba Baas ook wc ccceccencnaccace 3

National (9. y. Belcher, 71 Fed. 876, 879 (C. A.3) 4

Miscellaneous: 2° LO le rs

, Federal Rules of @ivil Procedure: +

PT ES oo nahn ca xq unandaccdauectskankes 2,3, 4

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IN THE

Sapreme Court of the United sate "

Oc TOBER Trem, 19% saa ;

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| .

; THE DIVERSEY CORPOR ATION, | :

‘ a ) | ; Petitioner,

Us.

Cc TAR ES PFIZE R « CO., re.

a . Re sponde wh.

PETITION FOR WRIT OF CERTIORARI. -

*

. To the Tlon, Chief Justice and Associate Suilices ” the

Supre me Court-of the United State S:

The Diversey Corporation’ prays thiat a Writ of Certi-

‘orari issue to review the judgment of the United States

Court of Appeals of the ‘Seventh Cireuit entered in the

above: ease on May 9, 1958.

OPINIONS BELOW.

“The District Court eave no opinion. The Pindities of

Fact and Conclusions of Law were not reported but are:

included in the reeord (Joint App. pp. 475- 484; 516-517).

The opinion of the C ourt of Appeals i is re ported 200 kK. 2d

60, . ;

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| JURISDICTION.

The judgment of the Court of Appeals. was entered May >

9, 1958. A. Petition for Rehearing was denied on June 10;

A998. Jurisdiction of this court: was invoked, under 28

U. 8. €. 1254(1).

QUEsTIoNs raametih 2”

(1) Is civ entrapment by which sedge of a patent

different than he would have done i ‘in any event, constitute

such unclean hands as to require fismiaéa} of an ‘infringes

ment action. ‘ _ 5 : oe

bd v

(2) Isa Court of Avucate reqttired to éofider the

Opinion of an expert witness as ‘fsubstantial ey idence’?

‘which bars it from Ger Ra a Conclusion of Law as to

validity of a patent. u der Rules of Ciyil Procedure D2(a).

‘STATEMENT OF THE CASE.

This is a suit for “patent infringement of patent . No,

‘2,615,846 owned: by ‘Petitioner, relating to the use of

chemical called sodium gluconate in hot caustic alkali (ly .

for boftle washing.

Petitioner had iinet’ indiegtion of while spread

infringement by Respondent...’ ¢utrapped Respondent

"into a particular infringement in jane The salesman

of Respondent who made the sale testified that he made

no statements different than he would have made to any-

one else, (Joint App. 295 .) The District ourt found that

this entrapment barred Petitioner from relief.

The District Cohrt also found the patent invalid based.

upon the opinion testimony of Respondent’s expert, -Dr,

Martell who said at pages 316 and 321 of. the joint ap-.

pendix to the record that the’ prior art now taught him

_ Is procured But where the person entrapped does nothing :

’

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the substance of the invention? The District Court in

Finding 12 (Joint App. 478) specificaliy gave these cita-

tions as+the basis for his ruling that the prior art tanght

the gssentials of the patent.’ The Court of Appeals in its

opinion (appendix to this brief, p. 11) held that it could

not consider ov erturning the finding of fact as to what the

art taught or the. Conclusion of Law as to invalidity of

the patent heeause of Rule 52(a).

There Was much testimony in the case to the contrar ¥.

REASONS FOR ALLOWANCE OF THE WRIT.

Sapien realizes the reluctance of this Court to under:

take a reconsideration of a technical patent suit and is not

attempting to procure such a reconsideration in the ‘usual

* “sense.

'® ~=© The two questions presented do not require any considera-

tion of the technical subject matter of the patent but merely

present two questions of law upon which this Court should

é &

pass,

The first of these senate. that of civil entrapment,

is one upon which no court other than the courts below

have direg@tly passed upon. However, it was ‘indirectly

‘passed, upon in Metal Tool Service v. National Tool Co.

103 F.2d 581, af 584 (CAG) and the dudes of the courts

below is contrary to the dictum of the National Tool ease.

In view of the severe penalties inflicted ‘upon Petitioner

for which there was no previous indieation even. hinting

that. such conduct’ was wrong, a decision by this Court

is called for. It is not one which presents. technical prob-

lems or a consideration of technical questions,

The second question nicuchied is one relating to the

power of the Court of Appeals under Rules of Civil Pro-

cedure No. o2(a). .

The District Court had entered a finding No. 12 that the

: | a ‘

patent incsuit taught nothing essential over the prior art

(Joint App. 478) and a’ Conclusion of Law that it was

invalid (Joint App. 484). The Court of Appeals, in-its

Opinion (appendix to the petition, p. 11) said:

“There is testimony in the record that the prior art

teaches that- sodium gluconate in the presence of caustic

soda will prevent precipitation of hard Water constit- ‘

uents and that sodium gluconate is a vood sequester.

‘ing agent for a wide variety of metal compounds of

metal salts, including calcium, in’ the presence “of

Caustic soda. ° ee ; i

“We cannot hold that the findings of invalidity of

the patent in suit over the prior-art are clearly erro- ”

neous tnder Rule d2(a).*?

The only testimony in the reeard supporting this point

Is an opinion of defendant’s expert, Dr. Martell and the

District Court expressly referred only to it, — .

We are not asking. this Court to Pass upon Whether or

not, in-view of the weight of the evidence, the Court of

Appeals should have adopted Dr. Martell's opinion, but

we are asking that this Court indicate that the Court of

Nppeals did have power under Rule D2(a) to pass upon the.

Validity ofa patent and to send the case back for that:

consideration.. Me it ra

The decision of the Court. of Appeals on this point is

direetly contrary to the opinion of this Court in Diamond

Rubber Co, \. Consolidated Rubber Co,., 220 U.S. 428 "nt

434-5, and the decision’ of the. Third Cireuit Court of “Ap-

peals in National Co, y. Belcher, 71 Fed. 876.at 879, .

; We submit that in view of the indicated position of this

Court that it will not normally pass upen patent questions,

it is overwhelmingly important that the Courts of Appeals .

he* required fo consider the record where ‘it ig proper, as

in this ease, and not finally te accept aedecision of the ..°

* 7 7

District Court founded solely-apon the opinion of an cust

without being free to consider the matte? itself,

Both of the points urged here were covered in the Peti- -

tion for Re ‘hearing. The Court of Appeals denied the

Petition but did not in-any way deny that the only evidence

supporting. the finding. as to invalidity was. the opinion of

Dr. Martell. . ton

CONCLUSION. .

For the foregoing reasons, it is requested that tis peti-

tion for a writ of certiorari we granted.

. ae: 30 st Monroe Street,

Chicago, 3, Illinois,

Counsel for Petitioner.

a

APPENDIX.

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‘ TILE. Si NITED NPATES Courr or Arrears

for the Seventh ireuit

. é

No, 12155. Sertemper Term 1957 - heal Session 1958

Tue Diversey CORPORATION, ) ) Appeal from the

Plaintiff- Appellant, United States Dis-

e “ *y trict Court for the

ack Bal fie ge vf Northern District

Cranes Prizer axp Co., Inc., of. Ilinois, Eastern

Defendant-A ppellee.d Vision.

May 9, 1958

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Before. Finsecax md Parkinson, “Circuit Judges, and

Mercer. District Judge. ;

PARKINSON, Circuit Juilqe. The plaintiff, an Illinois

- corporation, hereinafter referred .to as Diversey, insti-

tuted suit in the District Court for the Northern District

of ThHinois, . Kastern Division, against the defendants

Charles Pfizer and Co., Ine. a Delaware corporation, here-:

inafter referred to as Pfizer, and Dr. Pepper Bottling,

Ine., an Illinois corporation, hereinafter’ -referred to as

Pepper. ‘ | :

' The complaint chargedeboth, defendants with infringe-

f ment in the district: where” filed of plaintiff's patent No.

2,615,846 and ‘defendant. Piizet with additional infringe-

ment elsewhere. g 5

‘On ‘the day Diversey filed its complaint it also filed a

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motion, with supporting Movi of Clarence , B. Jones,

for leave to take the depositions of Carl KB. Lanning, Con-

nie MeGrath, Frafik AW. Wilson and George A. Veeder

Within twenty days after the commencement of the ‘action.

Twenty-two days- after Diversey filed its complaint. it

filed an amendment dismissing the defendant Pepper.

Pfizer filed its answer in admission and denial and aflir-

mative defenses of non-infringement, misuse and unclean

~ hands, Subsequently, by stipulation of the parties, Pfizer

Was permitted to file a counterclaim for a declaratory

judgment declaring Diversey’ s Patent No. 2% 1DS46 in-

valid, unenforceable and not infringed and secking to

enjoin Diversey from interfering with its sales of sodium

gluconate,

5

Trial was to the court. The Distayet Coutt entered its

findings of fact and conclusions of law. It found and con-

‘eluded that Diversey came. into eourt with unclean hands;

that the patent in suit wax invalid over the prior art; that

it Was invalid’ due to double« patenting; and that the

alleged patent’ had not been infringed by Pfizer but rather

had been misused by Diversey, Judgment Was entered

accordingly, Diversey 's complaint was dismissed and Di-

versey Was enjoined from - ‘suing or threatening to sue

Pfizer or any of. its customers or potential customers for

infringefhent, due to sale or tise of Pfizer's sodium gluco-

nate or gluconie acid, of Patent No. 2,615,846, the patent

“in. shit, and also Patent Nov 2,5% 017, the so called ‘parent

patent’’, This appeal followed, y , é

The District Court entered judgment, inter alia, dis-

Missing Diver rsey’s complaint beeause of unclean hands.

This*portion of the judgtent Was based on Conclusions

of law Nos. 2 and 3 which are. founded upon Findings of

Fact Nos. 14, 15, 16, 17 and | ae 7 s

The unlisputed eSdence Ts. that Diverseyy acting

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7 through its seeretary and general counsel, Clarence B.

Jones, and its vice-president in charge of sales, Bland B.

‘Button, Jt. purposely contacted George Veeder, owner of,

Pepper, to induce him to infringe, within the Northern

District of Illinois, the patent in suit with Pfizer as a

cvutributory infringer, At the solicitation of Jones and.

Button, Veeder agreed and mide contact by telephone with

Piizer and talked with a Mr. Hill Veeder told Hill he

would Ijke to get all the information he could on the uses

of sodium gluconate and that he probably would purchase.

some from Pfizer. Hill said he would send someone to call

on Veeder and, at Veeder’s request, sent Carl Laiming, a @&

Pfizer salestian who had solicited Veeder regularly and

frem whom Veeder had bought citrie acid. J

The testimony of Veeder and Lanning iS in conflict as

_ to yhether Pfizer was a contributory factor in the ine

fringement. ‘ However, the uneontradicte& evidence extab-

ae that Veeder infringed the patent in suit at the spe-

l¢ request and solicitation of Diversey with the under-

standing that his company “was to be joined as “a co-de-

fendant in the action to be subsequently instituted by Di-

versey; that he was to testify as a witness for Diversey;

that he was to request Pfizer to assume Pepper’s defense ;

' and that.if Pfizer refused Pepper was to be dismigsed* -

' from the. suit. : f- {>

The motion of Diversey, sapported by the affidavit of

Clarence B. Jones, to take the depositi f Veeder and

three. other witnesses alleged that the p iff had been

damaged by the activities of those four persons, one of

whom was Veeder, and unless the depositions of those

“persons coulbe taken at the earliest possible date, steps

. Would be taken by the defendants to prevent plaintiff f rom

setting information possessed by them.

- Diversey attempts to justify its conduct as heing an

innocent mistake and argues that the use of the plural,

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“defendants, in the motion was simply a typographical

* error, aaere ee ay

The fallacy of this excuse is immediately exposed by

the language of the very sentence of which the. word

‘‘defendants’’ is a part. JPhat sentence clearly discloses

that when Diversey uy the word ‘‘defendants”’ that is

exactly what it inteyfled to say. The allegation ‘is that

Diversey had been amaged by the activities of the four

persons named therein—Lanning, McGrath, Wilson and

Veeder—and it believed that unless the depositions of

those four persons ‘cauld be taken at the carliest possible

date, steps would be taken by the defendants to inhibit

the plaintiff. That allegation was absolutely false.- There -

are only two defendants, Pfizer and Pepper. _The plaintiff '

had not been damaged by Pepper. The uncontradicted evi-

dence was unequivocally to the contrary, Pepper inf ringed

at the solicitation and request of Diversey... Pepper did

what it did working hand in hand with Diversey. It was

té. be distnissed as a defendant, if Pfizer weuld not assume

its defense, and was to receive free engineering advice.

from Diversey with the further expectation of a gratuitous

year’s supply of Diversey ’s washing materials.

A court of equity will not entertain the suit of one who

by de@eit or any unfair means has gained an ‘advantage

as plaintiff has here. To aid this plaintiff would make the

court. an abettor of inpquity. Bein v.-Heath, 1848, 47'U. 8. :

241, 261; Precision Instruments Mfg. Co. v, Automotive

Maintenance Machinery Co., 1945, 324 U. S. 806, 814-815.

® It is obvious from this record that.the conduct of Diver-

sey was wilful and morally reprehensible. ° The District

Court was fustified in finding, as it did; that Diversey was

guilty of unelean hands ‘and in dismissing \he complaint

for that reason. ; oe . ;

The contention of Diversey that Pfizer should , have

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“pleaded lack of venue and not counterclaimed if Pepper

had not inffinged is without ‘mer't., If the patent in suit

was valid Pepper had infringed within the district. in

which the action was instituted. Pepper did so at the be-

‘hest of Diversey and: the ‘failure of’ Pfizer to plead lack

of yenue could, under no cireumstances, cleanse the"hands:

of Diversey. |

The trial eourt concluded that the patent in suit was in-

valid and” entered a declar: itory judgmeht accordingly.

This conclusion of law correctly followed from Finding No.

12 that prior art patents and publications therein enumer-

ated taught those skilled ‘in the art all essential features

of the patent in suit.

4

These patents and publications ¥ were in evidence. , They.

were explained by expert witnesses and evidence was in: .

troduced by both parties on the subject of prior art’ The

expert testimony was in conflict. There is, however, ample

evidence from which the trial court could find that the

patent in suit was invalid over the prior art.

The patent. in suit teaches that’ sodium gluconate. pre-

vents ealcium precipitation from hard water in the pres-

ence of caustic alkali. There is testimony in the record

that the prior art teaches that sodium gluconate in the

presence of caustie soda will prevent precipitation of hard

water constituents and that sodium gluconate is a geod

sequestering agent for a wide variety of metal compounds |

or metal salts, ineluding caleium, i in the presence of caustic

soda, -

We cannot hold that the findings of invalidity of the

_ patent in suit over the prior art are clearly erroneous

under Rule 52(a) of the Federal Rules of Civil Procedure,

28 U.S.C. A. Graver Tank € Mfg. Co., Inc. v. Linde Air

Products Co.,.1949, 336 U.S. 271, 274-275.

Having concluded that we must accept and are bound °

12 ,

hy the findings of the District Court that the patent in

suit is invalid, in view of the prior art-the infringement

issue. Peauites noe determinatiow here, An invalid patent

cannot be infringed, Cummings vy, Moore, 10 Cir, 1953,

202 BY. 2d 145, 147; Simmons’ C gmpany Vv. A, Brandwein &

Co., 7 Cir, 1957, 250 F.2d 440, 447.

The Judgment from which. this appeal was taken in-

cluded an injunction permanently restraining Diversey

from ‘suing or threatening to sue Pfizer or any of its

customers or potential customers for infringement of Pat-

ent No. 2,615,846, the patent in suit, and also Patent ‘No.

2,084,017, the parent patent. ek a

The patent in suit, being invalid no hecessity exists for

- an injunetion restraining Diversey from suing or threat- .

ening to sue for its infringement,

Patent No, 2 2,084,017 was not in issne

in this case, ‘Although we realize that we ¢

the pleadings amended under some cireumst nees, we de.

cline to do so on the record here, Accordingly paragraph ~~

¢ of the judgment was erroneously entered.

Therefore, as to’ paragraph 7 the judgment is reversed,

In all other particulars the induct is affirmed,

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JUDGMENT.

* . Ustrep States Cover or Appears

‘For the Sevent he ‘ircuit,

Chieago, 10, dinois.

» May. 9, 1958,

Before: — “J

/Hon. Philip J. Finnegan, Cireuit Judge.

dion. Lynn Parkinson, Cirenit Judge.

Hon. yederick O. Mereer, District Judge.

The Diversey Corporation, —) 4 ppeal ‘from the

Plaintiff-Appellant, United States Dis-

No. 121557” oes. > trict Court for the

‘Charles Pfizer & Co., Ine., District of Eastern

: Defendant-Appellee, 7 Division.

This cause came on to be heard on the transcript of the

record from the United States District,

Northern District. of Illinois, Eastert Di Ksion, and was

. ee liy counsel, \

On isideration whereof, it is ordered and adjudged

"hy thin cofirt that the judgment of the said District (‘ourt

in this cause appealed from be, and the same is hereby,

reversed as to paragraph 7 tliereof, and in all other par-—

. ticulars, the said judgment of the said Distriet Court is

hereby affirmed with costs,

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6

Usirep States Court. or APPEALS

For the Seventh Circuit,

Chicago 10, Illinois.

- June 10,, 1958.

Before: ra ‘ ;

qlon. Philip J. Finnegan, Circuit: Judge. ‘

Hon. W. Lynn Parkinson, Cireuit Judge... ~

Hon. Frederick O. Mercer, Distriet Judge.

~The Diversey Corporation, 7

Plaintiff-Appellant, | di

. " 08, ; pe. 12155.

Charles Pfizer &Co., Ine.,

| Defendant-A ppellee. J

On consideration of the petition of pJaintiff-appellant

for rehearing, together with six page brief of defendant. .

appellee in opposition thereto concluding that ‘ [plaintiff

hax shown no ground for rehearing. Its petition is with-

“out merit and should be denied.’’, and ‘ “a

~ On consideration of the petition of defendant-appellee

for rehearing together with nine ‘page answer of -plaintiff-

appellant in opposition thereto with prayer that the peti-

tion ‘*be denied as having no sound basis in law.”’,

It Is Ordered that rehearing be and is hereby denied.’

*

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; FILE COPY , | o —_s

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ire as ) _ ft: FIL EO

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| Ns ie | JAMES R. BRO! “NING, -Clerk

‘Supreme Court of the United States

| October Term, 1958.

No. 340.

- THE DIVERSEY CORPORATION,

ae - ; Petitioner,

%.

CHAS. PFIZER & CO., INC. -

: : Respondent,

Brief in Response to Petition.

7,

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oo J ARTHUR G. Con xouy,

Beneficial Building,

Wilmington 99, Delaware,

Attorney for Respondent,

A Wenxer H, Hutz, oe oa

Of Counsel for Respondent.

‘October 6, 1958,

International, 711 So. 50th St., Phila. 43, Pa. .

Pw ee Armee .

t*

IN THE

- Supreme Court’ of “the United States.

Ocroser Term, 1958

q

No. 340

THE DIVERSEY CORPORATION,

. Petitioner,

t . v.

CHAS. PFIZER & CO. INC,"

‘ a Respondent.*

BRIEF IN RESPONSE TO PETITION.

. STATEMENT BY RESPONDENT. ,

‘This petition should be considered in connection with,

Pfizer’s own, petition, No. 344 October Term, 19582 If

that petition is granted, Pfizer does not oppose the granting

of Diversey ’s petition, provided the questions presented by

it are restated as hereinafter set forth to conform to the

record ofthis case, Otherwise, Pfizer opposes the granting

‘ . . . é

o® Diversey’ s. petition because the questions as stated by

Diversey are not Taised by this case -and their determina-

tion would be of no help t to the parties’ or the public,

“This is Pfizer's correct corporate name, rather than as shown

in the Diversey petition.

2. To avoid confusion, in view of the cross-petilions, the parties

will be referred to herein. as “Pfizer” and ° "Diversey".

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Brief in Response tu Petition

OPINIONS BELOW.

The district court filed no opinion as such.. The find-

ings of fact and conclusions of law of the district court

(J. A* 475; Appendix B to Pfizer ‘petition, page 2a) are *

unreported. The opinion of the court of appeals’( Appendix

to Diversey petition, page 7) is reported in 255 F. 2d 60,

. JURISDICTION.

The judgment of the court of appeals was entered on

May 9, 1958, . Timely .petitions for rehearing were filed by

both parties on May 24/1958, each of which was denied on

June 10, 1958. Jurisdiction of this Court is properly in-

voked under 28 U.S. C. § 1254(1). |

_ COUNTER-STATEMENT OF THE QUESTIONS

PRESENTED. ;

. 1. Is it unelean hands, requiring dismissal of a patent’

infringement action, for the patent owner—

2 = (a) To attempt to establish contributory infringe.

ment, or active inducement of infringement, of its

so-calleck ‘‘use patent’? within.the jurisdiction of the -

district court,-by arranging secretly for a friendly third

party to purchase the staple comnicdity. involved from —

a-competitor of the patent ownér and use it in the

manner ealied for by the patent;

(b) To join the friendly third party as a sham

— defendant and instigate a request by it to the real

‘defendant to assume its defense, with the understand-

ing that if the real defendant refused to do so the

« sham defendant would be dropped from the action;and 4

:

¢ 3. Refers to Joint Appendix. before the court of appeals. |

. a — ’ _

- 4

7. aed = %

a)

Brief in Response to Petition _ 3

me

(ec) To intentionally mislead the court by filme

with the complaint a motion and supporting affidavit

knowingly making false representations that the sham

defendant was hostJe to. the patent owner and would

destroy or conceaf the evidence of the purported

inf ringement ?

2. What quantum of evidence is required undér F. R.

P. 52(a) to support ndings of fact by a disfict judze

sitting without a jury that the supposed invention of a

jatent is fully taught by the prior art and that any differ-

ences are’so slight that they are without patentable signifi-

cance, ie., that they were merely obvious?

COUNTER-STATEMENT OF THE CASE. :

Diversey does not contend in its petition that any of

. the findings of facet made by the district court and affirmed

hy the court of appeals are clearly erroneous. Indeed, it

specifically states that it does not ask this Court to pass

on the weight of the evidence, and it emphasizes that its two

questions ‘merely present two questions of law upon which

this Court should pass’’ (Diversey petition, pages 3, 4).

The two questions posed by Diversey are not based

upon the record of this case, and they were not before either

of the courts below. This is apparent from a consideration

of the findings of fact upon which both of the éourts below

bottomed their holdings of unclean hands and invalidity.

~ On the issue of unclean hands, the district court found

the following facts (J. A. 479-81; Appendix B to Pfizer

_ petition, pages 5a-8a) :

**14. In an effort to establish infringement of the

patent in suit within the jurisdiction of this court,

plaintiff through its secretary and general counsel, one

5 | Jones, and its sales manager, one Button, induced om

) | Veeder, ownet of the Dr. Pepper Bottling, Ine. of

‘Wankegan, Hlinois, to purchase sodium gluconate from

/ 7 | : : -

; 7<¢

Brief in Response to Petition

defendant and to use this product in his bottle Washing ~

operations in‘the manner ealled for by the patent in

suit (R. 692-702). Veeder also consented to plaintiff's

proposal to join him as a co-defendant in this suit, and. |

agreed to give his. depdsition for the purpose of estab...

lishing jurisdiction of this court’ and infringement of |

the paterit in suit. Plaintiff was to bear any expense

Veeder incurred in this ease if Pfizerdid not assume his

defensé (R. 700-2).. In return for this cooperation,

Veeder expected to receive a year’s supply of washing

materials free of charge from plaintiff (R. 716-18).

15, Pursuant to his agreement. with ‘plaintiff,

Veeder had a meeting on August ¥ 1955, with Car!

Lanning, one of defendant’s salesmen. . At this meetine

Veeder ordered 100 pounds of Pfize¥’s sodiam gluco.

—hate (R. 671). He also questioned Lanning about the

uses of the materials and the strength of plaintiff's

patents in an endeavor to obtain information which

might be of value to plaintiff in this suit. Upon receipt

of the sodium gluconate, Veeder caused it to be ‘used in

the manner. called -for by. the patent in suit (R. 702).

Veeder fully informed plaintiff's secretary and general

counsel and ifs patent counsel of. his meeting with

Lanning and the manner in which he had employed

defendant’s sodium eluconate to infringe the patent in

suit (R. 714-15, 724-26). a

‘16. On the basis of the information supplied by

Veeder, plaintiff's general counsel and its patent coun-

sel caused the present action to be filed on September 6,

1959, joining Veeder’s colnpany as a co-defendant witli

Pfizer, Before this suit was begun plaintiff forwarded

to Veeder a copy of the complaint and of the motion and

affidavit which was’‘to be filed with it (R. 724,731). The

complaint charged that Veeder’s company Was an in

fringer of the patent in suit, although plaintiff knew

that Veeder had never used sodium gluconate for bottle

Brief in Reeponse to Petition )

washing until plaintiff arranged with him to infringe

its patent (R. 680, 706); Veeder was an agént of plain-

tiff when he purchased sodium gluconate from Pfizer

and used it to infringe plaintiff’s patent...

17. At the same time as the complaint in this suit

wis filed, plaintiff filed a motion for leave to*take forth-

with the depositions of Veeder and certain other indi- |

viduals (Def, Ex. 11). This, motion was supported by

an affidavit of said Jones, plaintiff’s seererary and

veneral counsel. The motion and affidavit represented

to this court that Veeder’s company.had infringed the

patent in suit, that Veeder was hostile to plaintiff, and

that he would destroy the evidence of infringement

unless plaintiff was permitted to take hjs deposition

ummediately. These allegations were false and were |

known by plaintiff and its attorneys to be false at the

time the motion and affidavit were filed, but neverthe- —

less they were made intentionally for the purpose of

-misleading this court (R. 834-38, 842-45). At the time

these representations were made to this cqurt’ Veeder

hed supplied plaintiff with the evidence referred to in

the motion and affidavit (R. 714, 737-44). In reliance

upon the foregoing false representations this court

entered an order the day this action Was commenced

permitting plaintiff to proceed forthwith to take the

depositions of said Veeder and certain other specified

indiv iduals, and said: depositions were taken-there: ifter

pursuant to said order.

“18. After this action was commenced, Veeder re-

quested Pfizer to asstme his defense in this case, and

when Pfizer refused to do so he informed plaintiff of

this fact. Thereafter, plaintiff amended the complaint

to dismiss Veeder as a co-defendant, in accordance with

the understanding between them ( R. 697, (27- Os),

Plaintitt sought to conceal from Pfizer and this court

.

SO SUPRIYO ao

Z, \ Brief in Response to Petition

S

the arrangement which it had entered into with Vows

and the relationship which existed between them."’

Based on these findings of fact, the district court mad

the following conclusions of law (J. A, 483; Appendix [}

to Pfizer petition, page 10a): irae

“82. Plaintiff's arrangement with one Veeder, fe:

the purpose of infringing the patent in suit and vivi;:

this court jurisdiction-éver the action, constitutes un

clean hands which require a dismissal of the complain:

“3. The false representations Which plaintiff mad.

to this court on its motion and affidavit, filed with <}:

complaint herein, constitute unclean hands whieh +.

quire a dismissal of the complaint.’’

These findings of fact and conelusions of law wo:

reviewed and affirmed by the court of appeals (Appendix i

Diversey petition, pages 12, 13), which added its Opinion

(.\ppendix to Diversey petition, page 10): .

‘It is obvious from this record that the condue

of Diversey was wilful and morally reprehensible... The

District Court was justified in finding, as it did, that

Diversey was guilty of unclean hands. and in dismissiy-

the complaint for that reason.”’

- On the issue of Validity, the trial court heard a erent

deal of both faetual and ‘opinion testimony, The factual

_ testimony concerned such matters as errors and ineonsist ”

eneies in Diversey 's representations to the Patent Office dur

ins the proseeution of its patent, experiments conducted te

duplicate. the prior art, the meaning and significanes. «|

technical terma, ete. Thus, the finding of invalidity wa-

_ based on much more than ‘*the opinion. of an expert wit

ness”*) as stated in Diversey 's question, “4

Based on the evidence referred to above, the district

court found the following facts (JPA. 478: Appendix: Bt.

Pfizer petition, page 5a): , a

~

Brief in Response to Petition 7

“12. Prior to the invention of the patent in suit, it

_ Was well known in the art that sodium ghiconate was a

P revered sequestering agent in alkalifie solution for a laree

number of metal salts, including copper, iron, ake

minum, chromium, caleium, magnesium, zine and ead,

mium. This is tanght by the following prior art patent~

wn publications (Def. Ex. 2 and 1s, Tabs 4-8) :

Chester U.S. Pate yt 2,145,827, issueLJanuary 31,

1939 ;

ludustrial & Rngineering ( ‘hemistry, August, 1940

+4 Def! Ex. 2); se .

The Condensed Chemical Dictionary, Sra Ealitieni,

1942;

. ‘French Patent SSO021, issned May 31, 143: and.

McDonald U.S. Patent 2.3 2.284, issued November |.

7, 1944.

These prior art patents and publieations teach those |

skilled in the art all essential features of the patent in

suit (R. 1356-57, 1368).°"

Based on this finding,.the dist rict conrt oii the con-

ohnstan of law that the patent in suit ix invalid (J. A. 484:

Appendix B to Pfizer petition, page 10a).

The court of appeals affirmed asx to these matters (.Ap-

pendix to Diversey petition, page 13) and stated in its

opinion (Appe ndix to Diversey -petition, page Hl):

The trial court concluded that the patent in‘ suit

Was invalid and entered a declaratory judgment aceord. ’

ingly. ‘This conclusion of law correctly followed from

Finding No. 12 that prior art patents and publications

therein enumerated taught those skilled in the art all

vssential features of the patent in suit.

**These patents and publications were in evidenes.

They were éxplained by expert witnesses and ey idener

Was Introduced by both parties on the subject-of prior

y .

8 ; Brief in Response to Petition

art. The expert testimony was in conflict. There js,

however, ample evidence from which the trial cour

could find that ‘the patent in suit was invalid over 1;

prior art. — ; 3 <, eae

“The patent in suit teaches that sodium gluconat-

prevents caleium precipitation from hard water in the

presence of caustic alkali. There is testimony in the

record that the prior art teaches that sodium, gluconat«

in the presenee of caustic soda will prevent: precipita

- tion of hard water ‘constituents and that sodium el:

conate ix a good sequestering agent for a wide varicty

of metal.compounds or metal salts, including caleium.-

in the presence of caustic soda. . |

_ ‘We cannot hold that the findings of invalidity of |

the patent in suit over the prior art are clearly. errone 1

ous under Rule 02(a) of the Federal Rules of Civil ~

Procedure, 28 U.S. (. A: Graver Tank & Mfa. Co..

_ dnc, v. Linde Air Products Co., 1949, 336.47. S. 271,

274-275."” | |

&

ARGUMENT. f

While we agree that Diversey's question “as restated

hy us should be considered by this Court, we/lo so only on

the assumption that this Court also will/grant Pfizer's

' petition and consider at the same time the qhestions therein

presented—which are of great interest tothe publie as wel

as the parties. | ; ;

If Pfizer's. petition is to he denied, then we oppose th:

granting of Diversey’s petition because the questions pre

sented are strangers to this record—and their determination

“would be of academic interest only. - ie

o ’ od

3

Brief in Response to Petition 9

CONCLUSION.

For the foregoing reasons, both Diversey ’s petition and

Pfizer's petition should be granted, with the questions

presented by Diversey restated in the manner previously

‘mentioned to conform to the reeérd.

Respectfully submitted,

Artuur G. Connouvy,

Attorney for Respondent.

Werner H. Hua,

~(CuarLes F, Hagan, © ah s ¢

Wuuiam J. MARSHALL, JR.,

Of Counsel for Respondent.

4 ae

October 6, 1958.