Petition for Writ of Certiorari — Davies-Young Soap Co. v. Nu-Pro Manufacturing Co. (No. 780)

in the Supreme Court of the United Sates be

OCTOBER TERM, 1959. .

: : | pate No, 780. oe 7 fis

- THE DAVIES-YOUNG SOAP:COMPANY,

7 Petitioner,

Lov. |

NU-PRO MANUFACTURING COMPANY,

PETITION FOR A WRIT OF CERTIORARI.

To the United States Court of Appeals

For the Eighth Circuit.

a .

a

. Harry.A. TouLMIn, Jr.,

) | 308 W. First Street,

) Dayton, Ohio, ,

— : Counsel for Petiti

“f+ Of Counsel: |

GeorceE W. STENGEL, :

‘ Toutmin & TouLMIN. in

’ : THE GATES LEGAL PUBLISHING CO., CLEVELAND, OHIO—MAIN 1-5647

°@

‘TABLE OF CONTENTS. ©

2 >

Citations to Opinions Below,

Jurisdiction :

J Question Presented

Statute Involved

The Public Interest

Statement of the Cane.

. Argument a . | g

1. The Decision by the Court of ‘Appeals for the’

Eighth Circuit is in Conflict’ With Decisions

of This Cofirt and Other Courts of. Appeals

-‘peals Opinion'Do Not Support Its Position

3. Importance of the Question

Conclusion /

APPENDIX: > oom : Pace

Decision: of the United States Court of Appeals

for the Eighth Circuit |

Opinion of. Roy W. Harper, District Judge

he — of the United States Court of _ Appeals

° for the Eighth Circuit

—[———<$————

—_————[—$_— er ‘|

2. Citations in the Eighth Circuit Court of Ap-.

“I wo wo WH NH KF &

TABLE OF AUTHORITIES. ”.

. Cases. pare es

Aero Spark Plug Co. v. BG Corp., 130 F. (2d) 290 oa

.. MOCA 2, 1942) : | i

_ Altoona Theatres v. Tri-Ergon Core. ‘294 U: S. ‘77 :

— (1935) _9

- Atmerican Fruit Growers, Inc. v. Brogdex Co: 283 U. — :

1 (1931). et re!

Brooks, E. J., Co. ve Klein, 14F. Qa) 955 (CCA 3. Al a

1940) 8.

Carnegie Steel Co. v. wn Iron Co., 185 U. S- 403

(1902) : RARE ; ; i

‘ Chicago Steel Foundry Co. v. ». Biirngide Steel 1 Foukdry .

Co., 132 F. (2d) '812*(CCA 7, 1943) ; <a

~ Comolite Corp. v. Davidovicz, 111 F. (Ray/i21 (CCA .

2, 1940) ae a

Curtis Cos. v. Master Metal Strip Service, 125 F. (2d) :

~ 690 (CCA 7 1942) et, -8

Decker v. Federal Trade Commission, 176 F. rs 461

(App. D. C., 1949) ;

| ae

. Dennis v. Pitner, 106 F. (2d) 142: (CCA 7, 1939) 9 -

Emery v. Schumann, 111 F, (2d) 209 (CCA‘7, 1940) 8

% Everest v. Dike, 139 F. (2d) 22. (CCA 7, 1943) 8 -

General Electric Co. v. Wabash Appliance wernt 304

U. S. 364 (1938), . ; a

Graver Mfg. Co. v. Linde Co., 336 U.S.271. 3, 4,8

Hawkinson, Paul E., Co. v: Wilcoxen, 149 F: (2d) 471

(CCA 6, 1945) 8

Highway Appliances Co; v. American Concrete -Ex-

pansion Joint Co.,93 F. (2d) 113 (CCA 7; 1937) 8

a

e 3 y

Himes v. Chadwick, 199 F. “(2d) 100 (CA 9, 1952)

Holtzer-Cabot Electric Co. v. Standard yi enaaaal

, Co., 111 F. (2d) 71 (CCA 1, 1940)

= (Hyde Press Mfg. Co. v. Williams, White & Co.,

165 F. (2d) 489 (CCA 7, 1947) ad

itasiobinin v. Sketchley; 133. F. (2d) 426. -— 9,

1943) :

Motion Picture Patents Co. v. ineray Film Co., 243 ©

U.S. 502 (1917) -

-:. National Development Co. v. Lawéon-Povter Shoe ie

)

chinery Corp., 129 FL (2dy 255 (CCA 1, 19

a -Payne Furnace & ‘Supply Co. v. Williams-Wallace Co.;

117 F. 2d 823 (CCA 9, 1941) .

‘Phillips Petroleum Co. v. Shell Oit nd 466 F. (24)

~ 384 (CA 5, 1948)

Schnitzer v. Calif. Corfugated Culvert Co., 140 F.

(2d) 275:¢CCA 9, 1944) © he oP

Scott & Williams v. en 126 F. ~. 19 (CCA .

4, 1952) * ,

“Smith v. Carter Carbuyétor Colp, 130 F. (2a) 598

(CCA 3, 1942), as

g

Snbiedl vy. Kingsland/178 F. (2d) 26 (App. D. C. y. $49) 8

: Strong-Scott Mfg. Co. --v. Weller, 112 F. (2d) 389

(CCA 8y 1940)

Temco Electric Motor Co. v. Aspco Mfg. Co. 275 U.S. -

319 (1928)

a ; Tex, s Co. v. Anderson-Prichard 1 Refining Corp., 122

F. (2d) 829 (CCA 10, 1941)

Ds (Western States Mach. Co. v. SS Hepworth Co., 147 F.

(2d) 345 (CCA 2, 1945) -

Wheeling Stamping Co.°v. Standard Cap & Molding }

; Co., 155 F. es 6 (CCA, oe

&

-

f

/

é2

-

\

United Carbon Co. v. Binney & Smith Co., ad U. S.

228 (1942)

Vischer Products Co. v. National Pressure Cooker

Co., 178 F. (2d) 125 (CCA 7, 1949)

a . Statutes. ? a »

"28 U.S. C., Sev. 1254(1)

35 U.S. C., Sec. 112 __. - }

, ‘ _

&

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In the Suprenie Court of the United States

OCTOBER — 1959.

THE DAVIES-YOUNG SOAP COMPANY,

\ . Petitioner, 3

| w. ° .

NU-PRO MANUFACTURING COMPANY, |

| Respondent. “4

f° PETITION FOR A WRIT OF CERTIORARI

, - To the United States Court of Appeals -

For the Eighth ere

Petitioner prays that a writ of certiorari issue to re-"

view the judgment of the- United States Court of Appeals

for the Eighth Circuit, which was entered in the above.

entitled case on ——— 21, 1959.

CITATIONS TO OPINIONS BELOW. .

The opinion of the Court of Appeals for the Eighth

Circuit, printed in the appendix hereto at page 11, is re-

ported in 124 U. S. P. Q.°24. The opinion of the district

‘court (written in the form of a letter) is unreported and ».

"is printed in the appendix hereto. at page 16.

JURISDICTION. 2 a.

The J udgment of the Court of ‘Appeals was entered on

December 21, 1959, and is printed in the appendix at

page 19. The jurisdiction of this Court is invoked under

28'U. S. oak Section nese).

aA ae

| QUESTION PRESENTED. |

Whether a court may hold a patent invalid by reason

_ of indefiniteness of the chemical ¢laim when the terms of

the chemical claim are explained in the «pecifications? -

/ 2)... ° SpATUTEINVOLVED.. . ,_

“The statute involved in. this case is 535 U.S. C., § 112.

which provides: !

“The specification shall contain’ Py written deserip- .

tion of the invention, and of the manner and process .

of making and -using it, in such full, clear,- concise,

and exact terms as to enable any person skilled ‘in

the art to Which ‘it pertaitis, or with which it is most

- nearly connected, to make and use the same, and shall

set forth the best mode conte.nplated by the: inventor.

of carrying out -his invention. :

The’specification shall conclude with oné or more |

claims particularly pointing out and-distinctly claira ny y

ing the subject matter which ihe applicant regards

as his invention. —

| An element in a claim for a: icienliboatian may be

expressed as a means or step for performing a specifie

function without the recital of structure, material} or *

acts in support thereof, and such claim shall be con-

¢@ « strued to cover the corresponding structure, material,

or acts described in the specification and equivalents.

thereof.” July 19, 1952, c. 950, § 1, 66 Stat. 798.

THE PUBLIC INTEREST.

We desire to emphasize the public interest for the fol-—

lowing reason: The benefit of the specification in its more

_élaborate disclosure than in the claim'is for the public

benefit to clarify and define the language and the meaning

' of*the terms used in thé claim, while the claim is for the

. benefit of the monopdly .of the inventor and must be

| liniited and interpreted by the definition in the specifica-

tion. We resort to the specification to define. the terms

‘used in the claim if any question arises as to the same

“terms in the claim as in the specification which is the case

here.. If the specification explains, as here, the meaning’

of the words used in the claim, that limits the claim and

explains precisely what is meant. Graver Mfg. Co.v. Linde ©

Co., 336 U. S. 271, 276, 277.° A claim, therefore, that is

not intérpreted in the light of; the specification may do a °

grave. slisservice to the public because the limitations de-.

' scribed in the specification’ and its interpretation of the

invention are essential in interpreting, understanding and)

limiting the claim. -——,,

The complete divorce by the court balenid of thése two

essential parts of a patent opens the door for broadening

claims without the limjtations of the specification gn) which

the layman, reading the patent, usually rely primarily for

an understanding of the scope of the: invention. ;

The court below held contta that the claim does not

benefit from the specification and pete ere

_ STATEMENT OF THE CASE.

The petitioner sued the respondent in the ‘United

States District Court for the Eastern District of Missouri

for infringement of Trusler Patent No. 2, 729,576, entitled

“METHOD OF/DRY CLEANING FABRIC AND SIMUL-

TANEOUSLY. RENDERING THE SAME ANTISTATIC.”

The new- long term antistatic condition-prevents the fabric ©

from. attracting lint and dirt and: from adhering to the

bodies of the wearers, a new and long sought fesult. After

Trusler’s invention, the process was immediately adopted

-by thousands of dry cleaners. At the time this case was °

tried in the District Court, it, was being used by’ 3500 of .

petitioner’s dry cleaning customers.

?

@ - °

%.4 ce

ess sae & - ae

The patent involved in this action (U. S. Patent No.

2,729,576) contains a single claim with mathematical per-

centages covering: ie | a

: “The method of dry cleaning fabrics and clothing

» and simultaneously rendering’ the same anti-static,

which comprises washing the fabyg clothing with

dry. cleaning solvent having ¢ to 10‘, by

weight of a detergent dissolved ein, and then rins-

ing the fabric and clothing with a dry cleaning solvent

a having from 0.02‘; to 5.0‘; by weight’of an anti-static *

agent dissolved therein, the anti-static agent being ap- .

- plied to the fabric and clothing in the presence of de-

tergent carried Thereby from the washing.” Va

_ The District Court held“the patent was_invalid be-

-cause “it fails particularly to point out and distinctly to

claim the. subject: matter regarded as the invention,” as

. required by 35 U.S.C., $1112. That décision was affirmed

by the Court of Appeals on the pew-ground, “It is well

established that ‘the claim, and not the specification, is the

" neasure of the inventive monopoly, and deficiencies of the

former carinot’be. cured by any terms of the latter,” thus

‘ discarding the normal use of the specification to explain ,

the teri.” in the claim. In addition, the claim itself. is

mathematically expressed in precise percentages. ,

_ This cause states the rule we seck to have you enforce,

i.e. that to wesc, “8 from claiming the invention, you

use the Specification to restrict the claim to the true mean-™%

_ing set forth in the specification. In support of this posi-

e° tion, we quote from this‘couft in Graver Mfg. Co. v. Linde

Co., 366 U..S. 271, 276, 277, where the’ court held am-.

biguity in the claim could justify resort to the spécification.

a

The Court said: ; on

eto ste

or F

* * While the cases. more often have dealt

“with efforts to resort to specifications. to expand

‘- claims, it is. clear, that‘ the latter fail equally to per- .

+ *

° . * a

- ° . a9 ?

B)

‘form their function as a measure of the grant when

they overclaim the invention. When they do so to

- the point of ‘invalidity and are free from arhbiguity

'. which might justify resort to the specifications, we

agree with the District Court that they are not to be

‘ saved because the latter are less inclusive.” ;

‘this decision destroys the very heart of the patent

system of the United States, which constitutes the indus-

trial life blood of American industry depending upon pat- °

‘ents for protection of the great investments in ‘this age of |

research and our world competition. No claim without the

benefit of its specification could take on its full meaning,

and live without it, no more than you could have a mar;

‘ riage without a bride. The duality of the disclosure in the

specification and the claim is,obvious for no claim could be -

as explanatory .as ‘the specification, and no specification

could be as short as a claim, if it was to make a full and

workable — This decision destroys the very heart

of the patent system of the United States upon which our

. industrial organizations depend for temporary protection

-of our heavy investments’ in new. developments ‘until

launched for the public use. Nothing could do more de-

«-«struction to our continuing expansion of tremendous re-

search achievements thay to allow this decision to stand

that the specification has no relationship to the claim for

~ the limitations of the claim can only be expressed and de- .

scribed in full by the’specification, and the scope of the

. Claim only becomes understandable against the back-

ground of the specification. tiie

Counsel know full. well, frém arguing cases in this

court during the last 31 years, of the sound reluctance to

« add to your burdens by o¥dering up more cases, but the’

instant case is in a different category as the decision below

destroys one | of the foundations of our industrial pros-

perity.

-6

%

‘ contra’ to the instant decision, but your decision$”and the

decisions in other circuits will not help this‘litigant unless

you consent to lift this case out of the Eighth Circuit and

see that justice is done in accordance with your own de-.

cisions and that of every other circuit.

The claim of the patent describes the. steps of the.

process and gives the precise percentages of chemicals to .

be used. The only terms of the claim involved are “‘de-

tergent” and “antistatic agent.”” Those well known terms,

iia Common use in many industries, are defined in the spec-

ifications of the patent. But the Court of Appeals re-

fused to consider the specifications in interpreting the

cl e: : : : :

The Court said: “It'is well established that the claim,’

and not the specifications, is the measure of the inventive

monopoly and deficiencies of the former cannot be- cured

by any terms of the latter.” But that is not the point.

The public interest is gravely injured by this de-

cision that the specification, the part that defines for the»

public what the, inventor has done for the art, is to be dis-

‘regarded; the specification is the public’s. reward for the

inventors disclosure of the invention; the claims are the

inventor's reward for discovering the invention. To deny

that a claim cannot be read in the light of the specification

gravely ‘affects the public interest which demands that

the claim must be limited and interpreted by the specifica-,

tion for the public interest and protection.

oa

TJ

This court and all of the courts of appeal have held

oy,

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ce 4 7

‘ ARGUMENT.

1. The Decision by the Court of Appeals For the Eighth

Circuit is in Conflict: With Decisions of This Court and

- Other Courts of Appeals. one oa

The claim’ of the patent involved in this case states

the precise mathematical percentages of the components

(“detergents”” and “antistatic agent”) which are to be

used in\the method of rendering fabrics antistatic as

‘ claimed by the patent. Boe |

The terms “detergent” and “antistatic agent” are ex--

plained in) the specifications of the patent. The Court of

Appeals erroneously refused to interpret the claim in the

light of the specifications, saying: “It is well established

‘that the claim, and not the specifications, is the measure of

the inventive monopoly and deficiencies of the former can- .

not be cured by any terms of the latter.”

Unless the specification is so used, it has no use.

- Although the scope of every patent. is limited to the ~

invention described in the claims, the claims must be read

in the light of the specifications, Motion Picture Patents

vCo. v. Universal F ilm ‘Co., 243 U. S. 502 (1917). This

Court has consistently held that the terms of a patent claim ©

are understood to refer to and be’ explained by the specifi-

_ cations.” Otherwise, the specification has no use.

All of the other courts of appeals have also held that

“the claims of a patent must be construed in the light of

- the specifications.’ }

' See page 4, supra.

2 American Fruit Growers, Inc. v, Brogdex Co., 283 U..S. 1,

6 (1931); Temco Electric.Motor Co. v. Apco Mfg. Co., 275 U. S.

_ 319, 330 (1928); Carnegie Steel Co. v. Cambria Iron Co., 185 U.S

* 403; 432 (1902).

‘ Holtzer-Cabot Electric Co. v. Standard Electric Time Co.,

lll F. (2d) 71 (CCA 1, 1940); National Development Co. v. Law-

(Continued on following page.)

8

In holding the petitioner’s patent invalid by reason of

indefiniteness, the Court of Appeals refused to consider the

specifications in construing the claim. Its decision. is,

therefore, in conflict with all of the above decisions.

2. Citations in the Eighth Circuit Court of Appeals’

Opinion do not Support its Position. :

The cases cited by the Court of Appeals do not sup-

’ port its decision. Those cases merely hold that the scope

of a patent is determined by the clatms. But the claims.

_ must be construed in the light of the specifications. That

rule was recognized in the cases cited by the Court of Ap-

peals. E.g., in Graver Mfg. Co. v. Linde, 336 U. S. 271, 277

* (1949) the Court recognized that ambiguity in a patent

on {Continued from preceding page.)

son-Porter Shoe Machinery Corp., 129 F. (2d) 255 (CCA 1, 1942): .

Comolite Corp. v. Davidovicz, 111 F. (2d) 121 (CCA 2, 1940):

Aero Spark Plug Co. v. BG Corp., 130 F. (2d) 290 (CCA 2,

1942); Western States Mach. Co. v. SS Hepworth Co., 147-F.

» (2d) 345 (CCA 2, 1945); E. J. Brooks Co. v. Klein, 114 F. (2d)

955 (CCA 3, 1940); Smith v. Carter Carburetor Corp., 130 F.

(2d) 555 (CCA 3, 1942); Scott & Williams v.. Whisnant, 126 F. .

(2d) 19 (CCA 4, 1952); Wheeling Stamping Co. v. Standard Cap

& Molding Co., 155.F. (2d) 6 (CCA 4, 1946); Phillips Petroleum

Co. v Shell Oil-Co., 166 F. (2d) 384 (CA 5, 1948); Paul E. Haw-

kinson Co. v. Wilcoxrén, 149 F. (2d) 471 (CCA 6, 1945); Highway

Applianees Co. v. American Concrete Expansion Joint Co., 93 F.

(2d) 113 (CCA 7, 1937); Emery v. Schwmann, 111 F. (2d) 209

(CCA 7, 1940); Curtis ‘Cos. v. Master Metal Strip Service, 125 F.

(2d) 690 (CCA 7, 1942); Everest ». Duke, 139 F. (2d) 22 (CCA

_ 1, 1943); Hydrqulic Press Mfg. Co. v. Williams, White & Co., 165

F. (2d) 489 (CCA 7, 1947); Vischer Products Co. v. National

- Pressure Cooker Co., 178 F.*(2d) 125 (CCA 7, 1949): Strang-

Scott Mfg. Co. v. Weller, 112 F. (2d) 389 (CCA 8, 1940): Payne

Furnace & Supply Co. v: Williams-Wallace Co., 117 F. 2d 823 -

(CCA 9,-1041); Kugelman v. Sketchley, 133 F. (2d) 426 (CCA

9, 1943); Schnitzer v. Calif. Corrugated Culvert Co., 140 Fy(2d)

“275 (CCA 9, 1944); Himes v. Chadwick, 199 F. (2d) 100 (CA 9,

1952); Texas Co. v. Anderson-Prichard ‘Refining Corp., 122 F.

(2d).829 (CCA 10,1941); Decker v. Federal Trade Commission,

176 F. ¢2d) 461 (App. D. C., 1949); Smith v. Kingsland, 178 F.

(2d) 26 (App. D. C., 1949). ee

\e 9 |

- claim’ would “justify resort to the specifications.” In

General Electric Co. v. Wabash Appliance, Corp’, 304 U.:S.

364 (1938), the Court assumed that “in a proper case a —

claim may be upheld by refgrence to the descriptive part of

“the specification in. order to give definite content to Ale-

- ments stated iti the claim in broad or fictional terms. ‘ In

Altoona Theatres v. Tri-Ergon Corp., 294 U. S. 477 (1935).

the patentee sought to compound a claim for a combination \.

which was not claimed in his patent. In the case at bar,

the claim covers all the elements of plaintiff’ S process.

In United Carbon Co. v. Binney & Smith Co.,.317 U. S.

228 (1942), the Court assumed “‘that the claims must be

read in the light of the patent specification,” but found the

description in the specification was “almost entirely in

terms’of function.”

We believe the claim of the patent in suit is sufficiently

definite on its face. If, however, the.terms “detergent”

and “‘antistatic agent’ (found in any dictionary) are re-

garded as indefinite, they are defined in the specifications

of the’patent. The c courts have always held that the claims

of a patent.must be interpreted in the light of the specifica-

tions. As has frequently beén said, “Every patentee may

’ be-his own lexicographer.”. Dennis v. Pitner, 106 F. (2d)

| 142 (CCA 7, 1939); Chicago Steel Foundry Co. v. Burn-

side Steel a Co., 132 F. (2d) 812. (CCA 7.1943).

3. Importance of the Question.

» The question presented | in this petition is obviously

‘of great importance in. the administration of the patent

laws. In ne infringement actions, it is necessary to con-

_strue. the cli f the patent. If the courts refuse to con:

strue patent claims in the light of the specifications (as

was done by the Court below). a large percentage of the

patents which have been issued will be invalid. Again we

f>

; ; ; 10. — }

say the specification limits and interprets as well as .de-

figes the invention claimed. The specification is the pub-

lic’s protection.

‘CONCLUSION.

As shown in the above argument, this petition for

certiorari should be granted because of the importance of

the question presented and the conflict of the decision be- ~

low with decisions by this Court and other Courts of Ap-

. peals. — 3 ?

+ ¢ Respectfully submitted,

ms Harry A. Toutmin, Jr,

Counsel for Petitioner.

Of Counsel Tt?

Georce W: STENGEL,.

” cee & TouLMIN.

ra ; foe i

5 ; . . a:

11

APPENDIX.

| DECISION OF THE UNITED STATES COURT OF APPEALS

Ss FOR THE EIGHTH CIRCUIT.

| “(December 21,, 1959.). Ny.

‘Before GARDNER and VOGEL, Circuit Judges, and MickeL-,

soy, District Judge. af /

VocEL, Circuit Judge.

- ‘Fhis appeal arises out of a siuit brought by the appe ‘}-

lant, The Davies-Young Soap Company. ‘against the ap- .

fringement. The District Court. Judge-Harper presiding,

found it unnécessary to determine the question of ingringe-

, ment as it held appellant's patent invalid on the’ grounds ,

that it lacked novelty and invention and because “* * *

it fails particularly to point out and distinctly to claim the -

subject matter regarded as to the invention.” Judgment

. Was accordingly entered for the appellee, ‘from whith re-

sult appellant appeals.

_ Appellant is the assignee of United States tains Pat- -

: dis No. 2,729, 576, granted to Ralf B. Trusler on January

3 1956, entitled“: METHOD OF DRY CLEANING FAB-

RIC ‘AND SIMULTANEOUSLY RENDERING THE

- SAME ‘ANTISTATIC.” The object to be accomplished

by rendering clothes antistatic was to prevent them from

attracting lint and dirt and from adhering to the bodies of

their wearers. The patent contained a single claim. cov- -

ering, gt

“Phe method of dry cleaning fabrics sa clothing

and simultaneously rendering the same. antistatic,

which comprises washing the fabric and clothing with

dry cleaning solvent having from 0.2°, to 10°, by

YS weight of a detergent dissolved therein, .and then rins-

; ing the fabric and clothing with a ‘dry cleaning solvent

, 3

—r : t

pellee, Nu-Pro Manufacturing Company, for paten ine

12 ae eee

having from 0.02‘. to 5.0‘. by weight of an antistatic

agent dissolved therein, the antistatic agent being

applied to the fabric and clothing in the presence of

‘detergent carried thereby from the washing.”

Appellant profited from the patented process by manu- |

_ facturing and marketing a solution known as BUCKEYE |

- CLEAN-CHARGE, which, when used in accordance with

stated direcfions, contained amounts of detergent’ ‘and

anti-static agents falling within the patent percentages -

. and produced the desired anti- static condition.

. As early as May, 1952, appellee compounded and mar-

keted a dry cleaning detergent, known as CHARGIT.

which, according | to appellant's own testimony and ex-

hibil®, was also used in a manner so as to contai amourts

of detergent and anti-static agents coming within the per-

centage ranges specified in the patent claim. Appellant.

however, in order to avoid the defense that its patent has

been anticipated by: prior art, contends that this use of

CHARGIT is immaterial because, again according to its

own tests, the solution was nonetheless still nét used in

. amounts sufficient to render the garments cleaned with it

permanently anti-static. These facts alone compel a find-

-ing that. appellant’ s patenj was invalid. : aa

35 U.S.C. A. § 112 sets forth the requirements for a

patent application and concludes by stating:

“The specification shall conclude with one or more.

claims particularly pointing out and distinctly claim-

ing the subject matter which the applicant — as:

his invention.’

Appellee’s product, CHARGIT. clearly conformed to ‘the:

directions of thé patent claim, yet admittedly it failed to.

achieve the result of the alleged invention. Manifestly,

then, the claim does’ not meet the statutory requirement

of fully stating the process which appellant claims to: be

eo

. 13

its invention. United Carbon Co. v. Binney & Smith Co.,

1942, 317 U. S. 228; Standard Brands v. Yeast Corp., 1939,

. 308 U.S. 34; L. L. Antle & Co. v. Genovese, 8 Cir., 1957,

245 F. 2d 215; Standard Oil of California v. Tide Water

Associated Oit Co., 3 Cir.1945, 154 F. 2d 579.

Appellant seeks to avert this:conclusion of invalidity:

by contending that:

. an Trusler’ s contribution was net simply dump-

ing a quantity of an-antistatic agent in with the sol-

vent and detergent in the washer, but it involved ton- .

' sideration and reconcilation of a ‘number of require-

ments for the detergent and antistatic agent," * ***,”

which assertion is follow ed by a list of some five-additiona] °

elements of the patented process, all of which are allegedly

stated in detail in.the patent specifications. These include.

the cundition that the detergent be “compatible” with the

anti-static agent, that*both be'soluble in hy ‘drocarbon and

chlorinated solvents, that the anti-static agent be capable

of being absorbed by the fabric fibres~so that it will not

‘be rinsed off by the solvent and detergent, and that.the

anti-static agent not be adversely affected -by heat nor,

itself, have any adverse effect on the color or character. of

the fibres. However, even assuming ¢hat these. added re-

quirements, when considered along with the rest of the

- patent, do accurately and adequately describe alleged in-

ventive process, the patent must still fall short ‘of validity.

It is well established that the claims, and not the speéci-

‘fications, is the measure of the inventive.mgnopoly and de-

ficiencies of the former cannot be cured by any terms of

the latter. Altoona Theatres v. Tri-Ergon Corp., 1935, 294

U.S. 477; Freedman v. Friedman, 4 Cir., 1957, 242 F. 2d

364; Aluminum Co. of America v. Thompson Products, 6

~ Cir.. 1941, 122 F. 2d 796; In re Cresswell, C. C. P. A., Pat-

ents, 1951, 187 F. 2d 632; Application of Custer,C. CP. A., .

14 :

Patents, 1949, 173 F. 2d 226; In re Gillis, C. C. P. A., Pat-

ents, 1939, 102 F. 2d 902; Belden v. Air Control Products,

D. C. W. D. Mich., 1956, 144 F. Supp. 248; Flakice Corp. v.

Liquid Freeze Corp., D. C. N. D..Cal.,. 1955, 130 F. Supp.

‘471. Thus, in Graver Mfg. Co. v. Linde Co., 1949, 336

U.S. 271, 276-277, the Supreme Court ofsthe United States

stated:

“The: dMerence denen the District Court and

the Court’ of Appeals as to these findings comes to

this: The trial@burt looked at claims 24 and 26 alone: ~

_and declined. to interpret the terms ‘silicates’: and

‘metallic silicates’ therein as being limited or qualified

by specifications to mean only the nine metallic sili-

cates which had been proved operative. The District

Court considered the claims therefore were too broad

and comprehended more than the invention. The

Court of Appeals considered that because there was:

nothing in the record to show that the applicants for

the patent intended by these-claims to assert a mo-

nopoly broader than nine. metallic silicates named in

the specifications, the ‘court should have construed .

- the claims as thus narrowed and limited by the speci-

fications.

- The statute makes provision for epeuifiiintien

separately from the clayms and requires that .the

latter ‘shall particularly point out and distinctly

claim the part, improvement, or combination which

_he claims as his invention or discovery.’ It would ac-

complish little to require that claims be separately

-vain repetition is no more to be encouraged in patents

than in any other documents, and claims like other

‘oon aes may incorporate other matter by, refer-

ence, their text must be sufficient. to ‘particularly

point out and distinctly claim’ an identifiable inven-

tion or discovery. We have frequently held that it

is the claim which measures the grant to the patentee.

See, for example, Milcer Steel Co. v. Fuller Co., 316

”

x

written if they are not to be separately read. While .

15 -

U. S. 143, 145; General Electric Co. v. Wabash Co.,

‘304 U. S. 364, 369; Altoona Theatres v. Tri-Ergon

_Corp., 294 U. S. 477, 487.) While the cases more often _

have dealt with efforts to resort to specifications to

.expand claims, it is clear that the latter fail equally to

- perform their function as a measure of the grant when

they overclaim the invention.. When they do so to the

point of invalidity and are free from ambiguity

which might justify resort to the specifications, we

agree with the District Court that they are not to be

saved because the latter are less inclusive.”

Similarly, in General Electric Co. v, Wabash Appliance

Corp., 1938, 304 U. S. 364, 374-375, the court held a patent

invalid on its face, after first observing that:

“Finally, the product claims may not be saved by

.a limitation to products produced in accordance with

the process set out in the specification. * * * unless

the claim uses language e licitly referring to -the

method of preparation, or p rae the product in

phrases suggestive of that process, to save the product

claim in this fashion would constitute. an improper

importation into the claim of a factor nowhere de-

scribed there. The claims in suit seek to monopolize

the product however created, and may not be re-

worded, in an effort to establish their validity, to

cover only the products of the process described in

the specification, or its equivalent.”

The trial court having corretl; found appellant's.

' patent invalid by reason of the indefjniteness of its claim,

_it is unnecessary’ for this court to consider whether or not

appellant’s claimed invention was anticipated by prior art

_ or publication. ~ judgment of the court below is, there-

fore, affirmed.

A true copy. |

Attest:

Clerk, U. S. Court of —— —— Circuit.

16. | |

- OPINION OF ROY W. HARPER, DISTRICT JUDGE.

’ UNITED STATES DISTRICT COURT,

* Eastern District of Missouri,

St. Louis 1..

October 3, 1958. #8 *

Bryan, Cave, McPheeters & McRoberts, %

Attorneys:at Law, .

Boatmen’s Bank Building,

St. Louis-2, Missouri. of,

Attn.: Mr. ‘Marion S. Francis

Toulmin & Toulmin, : ,

Attorneys at Law,

308 West First Street, ek he .

Dayton, Ohio.: 5 is set

. aos ; Attn.: Mr. H. A. Toulmin gy.

Cohn, Powell & Cassidy, . ‘

- Attorneys at Law,

220 North Fourth Street,

. St. Louis 2, Missouri.

' Attn.: Mr. Lawrence 6 Cohn

Re: Davies-Young v. Nu-Pro Mfg. Co.—No. 10622(2)

Gentlemen: "

I had hoped to write a ‘memorandum opinion in the .

~ above styled case, but court commitments have interfered

to the extent that I have-not able to do so, and it ap-

: pearing that I am going:into a heavy trial schedule in the

immediate future I Wo not want to hold this matter under

submission any longer. For that reason I am going to, dis-

pose of it by writin this letter rather than a memorandum

opinion. :

First, I shall eal with plaintiff's motion to strike cer-

tain proof fromAhe record regarding prior users. ‘When

the defendant gave formal notice as to the patents and —

publicatians-it4intended to use, the plaintiff filed a motion

Sa - 7 /?

cerns

to require the defendant to elect a reasonable number,

but after the defendant's counsel reduced the number

plaintiff's motion was withdrawn.

| At the trial the defendant did not neni all of the

patents ‘of ‘which it hati givén plaintiff notice, but did v

_. stress prior invention and prior use as to which no statu-

tory notice had been given. ‘From the written records,

depositions, written memoranda and other documents and *

| letters in the file, plaintiff was well aware -that proof of

; i, prior uses would. be made at the trial. The chief complaint

’ which plaintiff ‘really has is that it received too much notice

rather than not enough. The court is. of the opinion that *. ae

the defendant gave plaintiff proper notice as required by

‘law and, that. the plaintiff'« ‘Ss motion to strike should be

overruled, ° :

| With respects to the atatie of the case, the first ques- .

tion for the court to determine is*whether or not the plain- -

tiff’s patent is valid. Your familiarity with the patent in

question makes it needless to repeat it here, but anti-static

agents have been standard constituents of dry cleaning

detergents’ for many years. In fact, the plaintiff. states

that the defendant’s product when, used in less than a 3‘;

concentration does not infringe: This, then, would require

outside experiment in order to determine whether or not

~ the patent was infringed, and under Standard Brands, Inc.

v. National’ Grain Yeast Corp., 308 U. Ss. 34, and’ United

Carbon Co. v. Binney and Smith Co., 317 U, S. 228, the

patent isyrendered void. ° .

Furtkér, plaintiff claims that it has the sole right to

use any ingredie?yt that is the slightest anti-static. This

is too broad a cl4im and is much broader than any in-

ventive concept or contribution to the art of dry cleaning.

The patent itself i is for a process in which an unpatentable

mixture is used, and: in such instances it is vitally im-

: ; |

ww

tn 18 “ia

portant to specify the mixture with some certainty. As

’ was stated in Antle v. Genovese, 245 F. 2d 215, the pur-

_ ported patent does not describe or define the process so

that others will be enabled to ascertain its-limits. As set -

out by the court in the Antle case, |. c. 222: ‘More“tspe-

cially, reasonable certainty was, required to inform the

_ public of the limits of the monopoly asserted.”

The patent in question, in the‘court’s opinion, does

not inform the public of the limits, the limits set out be-

ing entirely too indefinite, and even if not taught by the

prior art, it would fail,as being too-broad, for among other

things it fails to inform the public what to do so as not to

infringe. A number of publications were introduced, such

as a publication of the Atlas Powder Company, bulletins

* _ of Armour Chemical Division and DuPont. Chemical Com-

pany, an article in Industrial and Engineering Chemistry,

and an article in Chemical Week, all of which indicate to

the court the lack of novelty in the invention, it being

taught by the prior art.

Further, the testimony disclosed that the defendant’s

product CHARGIT had been on'sale and in use in this

country since May of 1952, and a number of dry cleaning

establishments were‘ operating and using CHARGIT in

1952. Since CHARGIT’ had been in use in the cleaning

trade before the plaintiff applied for its patent, this pro-

vides are added reason for the patent being invalid.

The court is accordingly ‘holding that the patent is

invalid, and ir view of that fact ‘it is not necessary to pass - ° 7

‘on the question, of infringement. Attorneys for the de-

fendant will prepare the findings of fact, conclusions of

law and. judgment to he entered by the court and submit

copies thereof to the ment ¢ for the plaintiff.

Very truly yours,

Row. “HARPER.

-

?

* the United States District Court: for the Eastern District ae

19 °

JUDGMENT OF THE UNITED STATES couRT OF APPEALS

FOR THE EIGHTH ‘CIRCUIT. »

This cause came on to be heard on the-recerd_ from

of Missouri, and was argued by counsel.

On Consideration Whereof, it is now here endoved

and adjudged by this Court, that the judgment of the said

‘District Court, in this cause, be, and the same is nereby,

affirmed.

December 2ist, 1959,

—_