# Opposition Brief — Four Star Corp. v. Bott

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1988
- **Citation:** 488 U.S. 968

## Text

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.

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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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27

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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28

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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30

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385002_0246%3A2. Public record. Not legal advice.