Opposition Brief — Four Star Corp. v. Bott

No. 88-594

IN THE

SUPREME COURT

OF THE UNITED STATES

October Term, 1988

FOUR STAR CORPORATION,

Petitioner,

¥.

JOHN A. BOTT AND JAC PRODUCTS, INC.,

Respondents.

ON PETITION FOR A

WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF FOR RESPONDENT IN OPPOSITION

MICHAEL R. DINNIN,

Counsel] of Record

JEFFREY A. SADOWSKI

RICHARD P. VITEK

HARNESS, DICKEY & PIERCE

1500 North Woodward Avenue

Birmingham, Michigan 48009

(313) 642-7000

Attorneys fcr Respondents

|

I. QUESTION PRESENTED FOR REVIEW

i. Did the Appeals Court err in

affirming the District Court’s decision that

the limitations contained in and relating to

the patent reissue statutes should not be

overwritten upon the Congressional Statutes

relating to patent continuation practices?

Respondents answer "no" and therefore

respectfully submit that the questions

presented by the petition do not present any

matter that is properly the basis for a writ

of certiorari as discussed herein.

LIST OF ALL PARTIES

All parties appear in the caption of the

case in the Court.

The Petitioner Corporation, Four Star

Corporation, has no parent companies,

subsidiaries, or affiliates of the

corporation.

The respondent John Ak. Bott is an

individual.

The respondent Corporation, Jac Products,

Inc., has only one publicly held affiliate,

namely, Hoover Universal, Inc.

iii

TABLE OF CONTENTS

Page

QUESTION PRESENTED FOR REVIEW .......... i

LIST OF ALi, PARTIES .cccccccccceescseseceee ii

TABLE OF AUTHORITIES ..cccccccccccccccce Vv

CITATIONS OF OPINIONS BELOW ............ 1

JURISDICTIONAL STATEMENT ......ccccccccce 4

RELEVANT STATUTORY SECTIONS ............ 6

35 USC Section 1260 wicsidnsecssivve 6

3S USC Section JEL .ccvsistsctsiccus 7

35 USC SOGEiOn 252 csccaaseesavedveas 8

STATEMENT OF THE CASE .ccccccccccsccccecce 11

REASONS FOR DENYING ZmMe WRIT wcccccesecs 22

I. Petitioner’s Rationale for

a Writ of Certiorari Shows a

Misunderstanding of the

Appellate Decision ........... 22

It. The Appeals Court Has

Not Decided An Important

Question of Federal Law

Requiring Intervention

By THES GOMES 2k ce ckheueecess 25

iv

TABLE OF CONTENTS - (Continued)

Page

IIl. The Decision Sought To

Be Appealed Worked No

Change in Settled Law

With No Resultant Uncertainty

In The Patent System ......... 28

IV. Legislative, Not Judicial

Relief is Being Requested .... 30

CONCLUSION ccccccccccccccccccccccccccsece 33

TABLE OF AUTHORITIES

Cases Page

Bott v. Four Star,

675 F.Supp. 1069,

3 USPQ2d 1652

(D.C.E.D.Mich.,

Pas Bey Beer) BM SSS scccccssesece 12

Bott v. Four Star,

Appeal No. 88-1278,

Court of Appeals for the

Pees Gereene BD 276 coc cccccserves passim

Bott v. Four Star,

Appeal Nos. 88-1117, 1118,

Ct. of Appeals for the

Federal Circuit A 44-49 ..ccccccccs passim

In Re Hogan,

559 F.2G 595, 604, n. 13,

194 U.S.P.Q. 527, 536, n. 13

[GeGawums BOTT) shwseerensesesseore 19, 28

In Re Henriksen,

399 F.2d 253, 262,

158 U.8.P.Q. 224, 231

Pears Tre abeepeesnecseeoesve 19, 28

Layne & Bowler Corp. v.

Western Well Works, Inc.,

261 U.S. 387, 393,

43 S.Ct. 422,

GS? Memes Fas, Fae CI989) coccsavcus 27

South Corp. v. United States,

690 F.2d 1368 (Fed.Cir. 1982) ..... 19

| . | aE

vi

TABLE OF AUTHORITIES - (Continued)

Other

28 U.S.C. §1254(1)

28 U.S.C. §1295

28 U.S.C. §1338

35 U.S.C. §120

35 U.S.C. §251

35 U.S.C. §252

.

TR ee ee a ee eo eee ee Se

CITATIONS TO OPINIONS BELOW

Bott v. Four Star, 675 F.Supp. 1069,

3 USPQ2d 1652 (D.C.E.D.Mich., Feb. 23, 1987)

denying petitioner/defendant’s Motion for

Summary Judgment on equitable estoppel

*

defense. A 5-22.

Unpublished Memorandum Opinion of the

Trial Court dated September 2, 1987, granting

plaintiffs/respondents’ motion for Summary

Judgment on remaining liability issues

regarding patent infringement by petitioner

(Bott Vv. Four Star, Civil Action No.

86-CV-70176). A 23-26.

Unpublished liability decision of the

Trial Court dated September 16, 1987 (Bott v.

*

All references to Appendix are _ to

Petitioner’s printed appendix, and designated

mA [page]".

Four Star, Civil Action No. 86-CV-70176. A

af?3Z«

Unpublished Trial Court decision dated

November 13, 1987 adjudging

petitioner/defendant liable for patent

infringement and awarding injunctive relief to

plaintiffs/respondents (Bott v. Four Star,

Civil Action No. 86-CV-70176-DT, Eastern Dist.

of Mich., Southern Division). A 33-35.

Unpublished decision by the Trial Court

dated December 9, 1987 awarding damages to

plaintiffs/respondents (Bott v. Four Star,

Civil Action No. 86-CV-70176, Eastern Dist. of

Mich., Southern Division). A 36-43.

Unpublished Appellate decision dated

May 26, 1988 affirming both of the above

decisions of the trial court (Bott v. Four

Star, Appeal Nos. 88-1117, 1118, ct. of

Appeals for the Federal Circuit). A 44-49.

Unpublished Appellate decision dated

August 26, 1988 affirming the damage award

(Bott v. Four Star, Appeal No. 88-1278, Court

of Appeals for the Federal Circuit). A 1-4.

JURISDICTIONAL STATEMENT

Petitioner seeks a writ of certiorari for

this Court to review the judgment of the

United States Court of Appeals for the Federal

Circuit dated August 26, 1988 (Appeal No.

88-1278). The Court of Appeals affirmed the

decision of the trial court below awarding

monetary damages to respondents/plaintiffs.

The case had original jurisdiction in the

Federal District for the Eastern District of

Michigan under 28 U.S.C. § 1338(a) as it arose

under an Act of Congress relating to patents,

namely the patent infringement statutes.

Jurisdiction for the appeal was in the

United States Court of Appeals for the Federal

Circuit pursuant to 28 U.S.C. Section 1295.

Jurisdiction to review judgments of the

United States Court of Appeals for the Federal

Circuit by writ of certiorari is conferred

upon this Court by 28 U.S.C. Section 1254 (1).

As grounds for the issuance of the writ,

petitioner claims that the Appellate Court

decision "decided an important question of

federal law which has not been, but should be,

settled by this Court".

No important question of federal law is

at issue that requires resolution by this

Court. Although this Court certainly has the

power to issue a writ of certiorari to review

the above-cited decision, Respondent

respectfully disagrees with Petitioner as to

the appropriateness of a writ for this case.

RELEVANT STATUTORY SECTIONS

35 U.S.C. §120 - Benefit of Earlier Filing

Date in the United States

An application for patent for’ an

invention disclosed in the manner provided by

the first paragraph of section 112 of this

title in an application previously filed in

the United States, or as provided by section

363 of this title, by the same inventor shall

have the same effect, as to such invention, as

though filed on the date of the prior

application, if filed before the patenting or

abandonment of or termination of proceedings

on the first application or on an application

Similarly entitled to the benefit of the

filing date of the first application and if it

contains or is amended to contain a specific

reference to the earlier filed application.

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35 U.S.C. §251 - Reissue of Defective Patents

Whenever any patent is, through error

without any deceptive intention, deemed wholly

or partly inoperative or invalid, by reason of

a defective specification or drawing, or by

reason of the patentee claiming more or less

than he had a right to claim in the patent,

the Commissioner shall, on the surrender of

such patent and the payment of the _ fee

required by law, reissue the patent for the

invention disclosed in the original patent,

and in accordance with a new and amended

application, for the unexpired part of tne

term of the original patent. No new matter

shall be introduced into the application for

reissue.

The Commissioner may issue several

reissued patents for distinct and separate

parts of the thing patented, upon demand of

the applicant, and upon payment of the

required fee for a reissue for each of such

reissued patents.

The provisions of this title relating to

applications for patent shall be applicable to

applications for reissue of a patent, except

that application for reissue may be made and

sworn to by the assignee of the entire

interest if the application does not seek to

enlarge the scope of the claims of the

original patent.

No reissued patent shall be granted

enlarging the scope of the claims of the

original patent unless applied for within two

years from the grant of the original patent.

35 U.S.C. §252 - Effect of Reissue

The surrender of the original patent

shall take effect upon the issue of the

reissued patent, and every reissued patent

shall have the same effect and operation in

law, on the trial of actions for causes

thereafter arising, as if the same had been

originally granted in such amended form, but

in so far as the claims of the original and

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reissued patents are identical, such surrender

shall not affect any action then pending nor

abate any cause of action then existing, and

the reissued patent, to the extent that its

claims are identical with the original patent,

shall constitute a continuation thereof and

have effect continuously from the date of the

original patent.

No reissued patent shall abridge or

affect the right of any person or his

successors in business who made, purchased or

used prior to the grant of a reissue anything

patented by the reissued patent, to continue

the use of, or to sell to others to be used or

sold, the specific thing so made, purchased or

used, unless the making, using or selling of

such thing infringes a valid claim of the

reissued patent which was in the original

patent. The court before which such matter is

in question may provide for the continued

manufacture, use or sale of the thing made,

purchased or used as specified, or for the

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manufacture, use or sale of which substantial

preparation was made before the grant of the

reissue, and it may also provide for the

continued practice of any process patented by

the reissue, practiced, or for the practice of

which substantial preparation was made, prior

to the grant of the reissue, to the extent and

under such terms as the court deems equitable

for the protection of investments made or

business commenced before the grant of the

reissue.

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STATEMENT OF THE CASE

Respondent/plaintiff John A. Bott

(hereinafter "Bott") is an inventor of

automotive products and holds several patents

including the one petitioner/defendant Four

Star Corporation (hereinafter "Four Star") has

been found to infringe. Respondent/plaintiff

Jac Products is the exclusive licensee of

Bott’s patents and as liosnes manufactures

luggage racks for the automobile industry such

as those described in the patent in suit.

Petitioner/defendant Four Star

manufactures and sells automobile parts

including the luggage rack that has been held

to infringe the Bott patent in issue in this

case. Four Star has previously been found to

infringe other Bott patents’ relating to

luggage racks.

As stated by the petitioner, a detailed

rendition of the pre-appellate factual

background to this litigation is set forth in

the trial court’s decision on the equitable

12

estoppel issue, Bott v. Four Star, 675 F.Supp.

1069, 3 U.S.P.Q.2d (E.D.Mich. 1987).

(A 5-22). A concise history is set forth in

the initial paragraphs of the opinion of the

Court of Appeals for the Federal Circuit

(hereinafter "CAFC" or “Federal Circuit") in

Bott v. Fo ar C -, Appeals Nos. 88-1117,

1118, Court of Appeals for the Federal Circuit

(A 39-44).

Respondents cannot do better in summation

of the background than the Court of Appeals

| did itself and hence quotes the relevant

portion from the decision below.

"This appeal is another episode,

in the long history of litigation

between the same parties and the

same court over patents involving

luggage racks for automobiles. Many

of the pertinent facts are set forth

in this court’s recent decision in

Bott v. Four Star Corp., Nos.

88-1117 and 88-1118 (Fed.Cir. May

26, 1988) (unpublished). As the

court there found, judgment’ was

entered in favor of Bott against

Four Star for the infringement of

Bott’s patents "658 and "471

covering removable automobile

luggage racks. In 1983, Four Star

altered the design of its luggage

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13

rack to avoid infringement of the

‘658 and ’471 patents by developing

a nonremovable rack which Four Star

began selling in June 1984.

The patent involved in this

appeal is U.S. Patent No. 4,516,710

(°710). In May 1985, Bott’s ‘710

patent issued and contained claims

that were broad enough to encompass

Four Star’s redesigned racks. The

’710 patent resulted from an

application filed in November 1983.

It was the seventh in a series of

continuation applications, all of

which were based on the identical

disclosure and relied for priority

on an application filed in 1974.

The applications on which the ’658

and ’471 patents issued were part of

the string of continuations.

The only issue on this appeal

is raised by Four Star’s contention

that equity requires that’ the

doctrine of intervening rights,

invoked by the courts prior to

enactment of 35 U.S.C. §252 (1982)

and thereafter codified in that

statute, should be applied in this

case to protect the intervening

rights of Four Star against

liability for the infringement of

Bott’s ‘710 patent." A 3.

Simply put, the Court of Appeals did not find

petitioner’s argument, paraphrased above,

sufficiently distinct from, or any more

persuasive than, the related argument

presented to that same court three months

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earlier. The CAFC once again affirmed the

lower court based upon the law of the case

doctrine and the current petition for a writ

of certiorari resulted.

Petitioner is calling for this Court’s

review of two decisions in fact. The CAFC

decided Appeal No. 1278 (for which the writ of

certiorari is sought) on the law of the case

doctrine based upon the decision of Appeals

No. 88-1117, 1118. Petitioner alleges error

in both.

In the first appeal, Bott v. Four Star,

Appeals No. 88-1117, 1118 (decision found at

A 39-44) petitioner challenged the

enforceability of respondent’s ‘’710 patent

based upon equitable arguments structured upon

considerations found in the patent reissue

statute, 35 U.S.C. Section 251 (1982).

Petitioner would have had the CAFC read the

reissue statutes into the statutes relating to

continuation patents such as the patent in

suit. Petitioner was forced to cast its

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argument in terms of equitable considerations

stemming from the reissue statute because the

reissue statute itself is simply not

applicable. The patent sought to be enforced

was not a reissue patent. The patent in suit

was the result of what is known as a

continuation application governed by 35 U.S.C.

Section 120 (Supp.III 1985). The Appeals

Court properly found that patent continuation

practice was a part of a separate statutory

scheme from patent reissue practice. The

trial court was therefore affirmed in all

aspects and the case remanded to the trial

court for an accounting.

The second appeal in this case resulted

from the accounting proceedings with

petitioner Four Star now making the argument

that the doctrine of intervening rights, 35

U.S.C. Section 252 (1982) (also part of patent

reissue law) should be read into continuation

practice.

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The Court of Appeals applied the law of

the case doctrine relying upon its decision in

the previous appeal, Appeals No. 88-1117, 1118

(discussed immediately supra). The Court of

Appeals again refused Four Star’s invitation

to overlay Congress’ statutory scheme for

reissue patents upon patents resulting from

continuation practice. The Appeals Court in

applying the law of the case doctrine quoted

the applicable holding from the previous

decision:

"We are not persuaded by Four

Star’s position because these

Supreme Court cases preceded the

enactment of the Patent Act of 1952

(Title 35 of the United States

Code). Continuation applications

are authorized by 35 U.S.C. §120

(Supp. III 1985). Section 120 does

not contain any time limit on

broadened claims similar to the

two-year time limit applicable to

reissue proceedings under 35 U.S.C.

§251 (1982). The latter section

expressly provides that a reissued

patent shall not be granted

enlarging the scope of the claims of

a patent unless it is applied for

within two years of the grant of the

original patent. Had the

legislature intended any such time

limit to apply to- continuation

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applications it could have included

a similar provision in section 120.

Moreover, we have not been directed

to anything in the _ legislative

history of the 1952 Act’ that

supports Four Star’s contention that

the equitable considerations

discussed in the Supreme Court cases

relied on by Four Star should have

continued viability." (A 4).

Thus, Petitioner/defendant Four Star’s

argument upon the second appeal was not

distinguishable from the argument presented

in the first appeal. Both appeals were based

on Petitioner/defendant’s attempts to rewrite

one of the patent statutes.

Called upon to interpret one facet of the

patent code in light of a separate section of

the patent code, the Court of Appeals, in the

first appeal, properly engaged in statutory

interpretation. Comparing the two distinct

sections of the patent statutes, the Court of

Appeals clearly recognized that the _ two

sections are not properly compared.

"Section 120 does not contain any

time limit on broadened claims

similar to the two-year time limit

| applicable to reissue proceedings

18

under 35 U.S.C. Section 251 (1982)."

Bott, 88-1117, 1118 (A 46).

The CAFC drew the inescapable conclusion:

"Had the legislature intended any

such time limit to apply to

continuation applications it could

have included a similar provision in

section 120." Ibid.

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' As part of the Court of Appeals continuing

analysis of the statutory sections, the court

_ turned to the legislative history:

"Moreover, we have not been directed

to anything in the _ legislative

history of the 1952 Act’ that

supports Four Star’s contention that

the equitable considerations

discussed in the Supreme Court cases

relied on by Four Star should have

continued viability." (A 47).

The Court of Appeals concluded its statutory

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interpretation with:

"Accordingly, we are not persuaded

by Four Star’s argument that this

court should adopt equitable

safeguards to limit continuation

applications when the Congress gave

no indication that it intended to do

gso.* Ibid.

The Court of Appeals found this’ holding

consistent with previous holdings of one of

its predecessor courts, the Court of Customs

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19

and Patent Appeals, - wherein no temporal

limits upon continuation applications were

found. In Re Hogan, 559 F.2d 595, 604, n. 13,

194 U.S.P.Q. 527, 536, n. 13 (C.C.P.A. 1977);

n R enriksen, 399 F.2d 253, 262, 158

U.S.P.Q. 224, 231 (C.C.P.A. 1968). The Court

in In Re Hogan specifically states that a

limit upon continuation applications is a

matter of policy for the Congress.

It was this same analysis that was called

into play when petitioner/defendant Four Star

appealed the case in Appeal No. 1278 (from

which the current petition arose). Again Four

Star requested reading limitations of the

reissue statutes onto the sections of the

patent act dealing with continuation practice.

The Court of Appeals felt no need to repeat

*

In South Corp. v. United States, 690

F.2d 1368 (Fed.Cir. 1982), the newly created

CAFC adopted as precedent the holdings of its

predecessor courts, both the Court of Claims

and the Court of Customs and Patent Appeals.

ROE Ee a a en

20

the very analysis it had gone through for the

parties three months” earlier. The CAFC

merely invoked the law of the case doctrine

and quoted a portion of its previous opinion

without new or continued analysis.

Petitioner/defendant seeks to have the

later CAFC decision reviewed via the petition

for a eowrit oof certiorari. Necessarily

implicated is the prior appeals court decision

of Bott Appeals No. 88-1117, 1118 decided

May 26, 1988, wherein the holding was made

that became law of the case. From

Petitioner’s petition:

"Tt is petitioner’s position that

both appellate decisions are

erroneous in a number of respects".

The writ of certiorari is requested due to

what petitioner alleges is an _ important

question of federal law which has not been,

but should be, settled by this Court.

In the three questions presented by

petitioner for review, petitioner/defendant

yet again seeks to have the limitations of

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patent reissue statutes read into the patent

continuation statutes despite two hearings in

the District Court and two decisions in the

Court of Appeals for the Federal Circuit, all

of which found petitioner/defendant’s

arguments meritless. The requested writ

should be denied because the appellate court

decisions are based upon sound interpretation

of the controlling statutes and are fully

consonant with prior appellate decisions. As

conceded by petitioner/respondent and stated

by the appeals court, the only proper avenue

of relief open is via Congress and

legislation, not this Court and a writ of

certiorari.

Ps Oe Lats Re bate

22

REASONS FOR DENYING THE WRIT

I. Petitioner’s Rationale for a

Writ of Certiorari Shows a

Misunderstanding of the

Appellate Decision

As Rule 17 of the rules of this Court

state, a writ of certiorari "is not a matter

of right, but oof judicial discretion."

Petitioner/defendant has apparently relied

upon Supreme Court Rule 17.1(c) stating that

the Court of Appeals for the Federal Circuit

"has decided an important question of federal

law which has not been, but should be, settled

by this Court." Petitioner/defendant has not,

and under the facts of the litigation so far

could not, invoke any other consideration of

Rule 17.

Petitioner’s three questions presented

for review can be reduced to one underlying

question: Did the CAFC err by not rewriting

the patent continuation statute to include

limitations found in a different section of

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the patent statute. Petitioner’s first

question presented for review, dealing with

application of law of the case doctrine, shows

petitioner’s inability to grasp the thrust of

the CAFC’s opinions. Petitioner argues at

page 9 of its printed petition:

"It was error for the Appellate

Court to invoke the law of the case

doctrine in the second decision

since the issues involved in the two

appeals were clearly different: the

first. appeal involved putting a

two-year limit on patents containing

broadened claims which result from

continuation practice; the second

appeal concerning the applicability

of the doctrine of intervening

rights in a continuation situation

when fashioning a remedy for patent

infringement."

Petitioner practices a sleight of hand by

its presentation of the issues involved. Put

in more complete and parallel form:

The first appeal involved putting

the two-year limit taken from the

patent reissue sections of the code

on patents which result from

continuation practice;

the second appeal involved putting

the doctrine of intervening rights

taken from the patent reissue

sections of the code on patents

24

which result from a_ continuation

practice.

Once those elements, omitted by petitioner,

are added to make the comparison parallel, the

applicability of the law of the case is

apparent: both appeals involved attempts to

read Congress’ patent reissue scheme on

Congress’ patent continuation scheme. Finding

no basis for such judicial legislation, the

CAFC affirmed the trial court on both

occasions.

This one issue of rewriting the patent

statutes is not an important question of

federal law meriting a writ of certiorari.

Even a cursory review of the two appellate

decisions below reveals that not only do the

two decisions not involve an = important

question of federal law but that petitioner is

in fact seeking a change that can only be made

by the Congress and should not be made by this

Court.

25

II. The Appeals Court Has Not Decided

An Important Question of Federal

Law Requiring Intervention By

This Court

This case is not worthy of this Court’s

attention. Petitioner now seeks to extend its

delaying tactics by seeking a review of its

theory in this Court alleging the issue be one

of an "important" question of federal law. The

Court of Appeals found nothing new in the

second appeal and decided it upon law of the

case doctrine. Petitioner/defendant, having

been found guilty yet again of infringing upon

respondent’s patent rights, has already had

two bites at the apple of appealing on its

arguments directed to the ncn-applicable

reissue law.

The CAFC did not consider its decisions

as deciding an important question of federal

law.

26

The patent appeals court, the CAFC,

prefaced both of the underlying decisions

with:

"Note: This opinion has not been

prepared for publication in a

printed volume because it does not

add significantly to the body of law

and is not of widespread legal

interest. It is a public record.

It is not citable as precedent. The

decision will appear in tables

published periodically."

While this notation is not dispositive, it is

certainly indicative of the lack of importance

of the decision petitioner wishes this Court

to review. A case so insignificant does not

involve an important question of federal law.

It is submitted that if the appeals court

charged with promoting uniformity and clarity

in the United States patent law feels its

. “petitioner inaccurately reproduces both

| Court of Appeals decisions by putting this

note as a footnote. The Court of Appeals

prominently places the Note before even the

title of the Court itself. An accurate

reproduction of the Court’s opinion would have

the note placed at the top of A 2 and A 45.

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decision ". . . does not add significantly to

the body of law and is not of widespread legal

interest", it does not rise to the level of

concern meriting a writ of certiorari.

Indeed, the lack of precedential weight

for the decisions indicate they are of

importance only to the parties involved. The

lack of precedent on point also indicates the

specific issue is only of importance to the

parties of this case. The decision being of

importance only to the parties, and not the

public, a writ is unwarranted. As stated by

this Court in dismissing an _ improvidently

granted writ of certiorari:

", . . [I]t is very important that

we be consistent in not granting the

writ of certiorari except in cases

involving principles the settlement

of which is of importance to the

public as distinguished from that of

the parties..." Layne & Bowler

Corp. v. Western Well Works, Inc.,

261 US 387, 393, 43 S.Ct. 422, 67

L.Ed. 712 (1923).

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The decision does not rise to the level of

importance meriting review via a writ of

certiorari.

III. The Decision Sought To Be Appealed

Worked No Change in Settled Law

With No Resultant Uncertainty in

The Patent System

Petitioner/defendant twice failed to

persuade the appellate court to rewrite the

patent laws. In so doing, the appeals court

specifically avoided working any change in

existing law. In fact, the court cited two

earlier decisions of its predecessor court to

illustrate of the harmony of its decisions

with existing precedent. As long as

procedures for continuation practice were

followed any issuing patents were valid and

enforceable. In Re Hogan, 559 F.2d at 604,

and In Re Henrickson, 399 F.2d at 262 (cited

by the CAFC in the May 26, 1988 opinion). The

patent continuation practice contains its own

safeguards, both legislative and judicial

29

(which have been complied with in the case) to

protect accused infringers. The existence of

these precedents for 11 and 20 years

respectively reflects a well settled question

in a working patent’ system. The CAFC

decisions do not introduce any uncertainty

into the law but rather Mids dune measure of

judicial certainty by applying decisions of

its predecessor courts to an isolated fact

situation. Therefore, Petitioner’s strident

claims of a system needing urgent relief ring

hollow.

Petitioner/defendant cannot deny that the

system is functioning smoothly with respect to

patent continuation practice. Thus, Congress’

policy decision of adopting certain safeguards

for continuation practice and other safeguards

for reissue practice was a wise one. The

"uncertainty" mentioned by petitioner on page

9 of its petition is not uncertainty in the

legal system, for indeed all four decisions

below in this case were uniform. There is no

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uncertainty in the system, much less any

caused by the CAFC’s decisions. Rather, any

uncertainty is one that is always present in

business, i.e., will a patent that covers the

product issue to a competitor. That

uncertainty will remain even if petitioner

were to have the relief requested.

Petitioner’s argument that this issue is of

widespread concern to and effect on both the

patent system and the public is erroneous.

The case at bar is truly one solely involving

the parties.

IV. Legislative, Not Judicial, Relief Is

Being Requested

Petitioner is requesting via a writ of

certiorari a judicial rewriting of

congressional statutes covering patent

continuation practice so as to include limits

from a different statutory scheme. In two

appeals involving this very issue, the Court

of Appeals for the Federal Circuit, the court

31

steeped in experience with patent law, found

such a reading of the statute clearly

unwarranted and without any basis in

legislative intent. Petitioner requests

nothing less than judicially established

patent policy by judicial rewriting of the

patent statutes.

When petitioner, in closing its brief

(page 58 of photocopy brief, page 27, printed

brief) states: "The C.A.F.C. refused two

opportunities to take action on the grounds

that the matter was really best left to

Congress," it reveals why certiorari is

inappropriate. Petitioner/defendant has had

four judicial testings of its theory (two at

district court level, two at the CAFC). Both

the district court and the CAFC decisions show

that an act of Congress is necessary to

rewrite the statute to reflect petitioner’s

view.

Petitioner on that same page first

attempts to taunt this Court to action by

32

talking of issues "ducked". Failing that,

petitioner laments of Congress’ supposed

sluggishness. Either exortation illustrates

the lack of a basis for a writ of certiorari,

namely, that the analysis of the statutes

relating to continuation procedure was correct

and any change can be fashioned only by

Congressional action not judicial review.

33

CONCLUSION

No federal question of great importance

requiring intervention by this Court is

involved here. It is merely a dispute between

the two parties. Petitioner has had more than

one day in court and been found to infringe

respondent’s patent. The Court of Appeals has

twice heard the appeal here at issue and found

it to be without merit. Petitioner claims the

decision to be one of great import, and goes

so far as to predict dire consequences for the

patent system and even the Republic. Yet the

decisions complained of were found by the

C.A.F.C. to not add significantly to the body

of law, not be of widespread legal interest,

and, in fact, not be citable as precedent.

Such unpublished, nonprecedential decisions

are not the “important questions of federal

law" meriting a writ of certiorari.

Petitioner’s complaint is not about a flawed

legal decision but about what it perceives as

a flawed legislative decision. As reflected

34

by petitioner’s closing words in its petition,

it is a change in the statute and the policy

that is sought via a writ of certiorari. The

separation of powers written into’ our

constitutional system leaves that decision to

Congress alone.

The petition should be summarily denied.

Respectfully submitted,

HARNESS, DICKEY & PIERCE

pK Du RP yarn

Michael R. Dinnin,

Counsel of Record

Jeffrey A. Sadowski

Richard P. Vitek

1500 North Woodward Ave.

Birmingham, Michigan 48009

(313) 642-7000

Attorneys for Respondents

Date: October 31 , 1988

IN THE UNITED STATES SUPREME COURT

No. 88-594

FOUR STAR CORPORATION,

Petitioner,

JOHN A. BOTT AND JAC PRODUCTS, INC.,

Respondents.

CERTIFICATE OF SERVICE

It is hereby certified that the

following:

BRIEF FOR RESPONDENT IN OPPOSITION

TO PETITION FOR A WRIT OF CERTIORARI

has been served upon Petitioner this 31st day

of October, 1988, by causing three copies of

said foregoing material to be mailed, first

class, postage prepaid to:

ALLEN M. KRASS, ESQ.

MARSHALL G. MACFARLANE, ESQ.

Krass and Young

2855 Coolidge, Suite 210

Troy, ra Oa) 48084

Nalin Ao he