# Petition for Writ of Certiorari — Davies-Young Soap Co. v. Nu-Pro Manufacturing Co. (No. 780) > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386420_0271%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Petition for Writ of Certiorari - **Published:** January 1, 1959 ## Text 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 —[——— ; ; ; 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, —_ --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386420_0271%3A2. Public record. Not legal advice.