Petition for Writ of Certiorari — Cambridge Wire Cloth Co. v. Laitram Corp.

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49) ? |) Supreme Court, U.S,

ye } k

—s “ ‘I LED

MAR ?7 19R9

No. JOSEPH F. seyu- OL mm |

CLERK i

;

IN THE *

Supreme Court of the Gnited States

OCTOBER TERM, 1988

THE CAMBRIDGE WIRE CLOTH COMPANY,

Pe tition -

THE LAITRAM CORPORATION and INTRALOX, INC.,

Respond nts.

ON PETITION FOR WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

PETITION FOR WRIT OF CERTIORARI

G. FRANKLIN ROTHWELL’

RAYMOND A. KURZ

MARY B. STOHLER

BERNARD, ROTHWELL & BROWN, P.C

1700 K Street, N.W.

Washington, D.C. 20006

(202) 8383-5740

Attorneys for Petitioner

*Counsel of Record

PRESS OF BYRON S. ADAMS, WASHINGTON, D.C. (202) 347-8203

QUESTION PRESENTED

Did the U.S. Court of Appeals for the

Federal Circuit exceed the bounds of its

authority under Fed. R. Civ. P. 52(a) by

disregarding the clearly erroneous

standard for review of the district

court’s factual determinations, failing

to give due regard to the trial court’s

opportunity to judge the credibility of

the witnesses, improperly engaging in de

novo fact finding and substituting its

own findings of fact for those found by

the district court?”

“This question should be considered in the

patent context of this case and is thus of

particular importance since the Federal Circuit

is the sole appellate interpreter of the entire

body of patent cases. The Federal Circuit’s

departure from the accepted standards of judicial

review could set a precedent effectively changing

the standard of review in patent cases.

TABLE OF CONTENTS

Question Presented .......+..e«.» i

Table Of Authorities ..+e¢s+#+ss s+

Casee . «+ s+ eee +e tte ee 6 ae

Statutes and Rules ........ V

Otner Aucnerities . « « i ss se ee

PETITION FOR WRIT OF CERTIORARI ....1

Opinion Beiow..+s+st#e*##8 8 6 6 @ 8

JUMLOGLCCION . «6 + » & os 3s eee

Statutes and Rules Involved... . 3

STATEMENT OF THE CASE ......e+ « « 4

IMNCSOGUCTION . « 6s «© « « ee eee

BAGRGTOUNG . « + + 0 8 es See eee

REASONS FOR GRANTING THE WRIT oe.

The Federal Circuit’s Findings

of Fact: The ‘341 Patent... .. 15

The Federal Circuit’s Findings

of Fact: The ‘'141 and

"96S Patente . : + + 4£°s. 3).

(continued)

The Court of Appeals’ Fact Finding

and Rejection of the Facts Found

by the Trial Court Is Far Beyond

the Accepted and Usual Course

of Judicial Proceedings ie 6 ele CUE

“ry ICI USION c*

ows ad LVN . . ‘ . ‘ . . . . ‘ . ‘ . J a

Opinion of the Court

for the Federal C

(Dated December 1

dgment Appealed fr

December 12, 1988, Issued as a

Mandate February

2° @

~ > -~- +

raer Denying Petition for

Tr + ml q 7 o = ai

Renearing (Fiied January <Zo5,

1000 —

L509 >3Ia~-I%a

rder Declining Suggestion for

Rehearing In Banc Filed

: 0 = .

February 9, 1989 55a

}

nion of the Trial C

Dated November 1

}

Fe)

on AT o he) “~ “~ s he) ~~

USE Yep N‘ J/—-5iz, J/TN CONG.,

; aan

lst Session 1981 92a-S8a

- iv -

Cases

Anderson v. City of Bessemer City,

North Carolina, 470 U.S. 564

(1965) . « «© © © © © © «© © «© Gy 23, 45

Dennison Mfg. Co. v. Panduit Corp.,

475 U.S. 809 (1986) ....24-+ + Vy 41

Fromson v. Advance Offset Plate, Inc.,

720 F.2d 1565 (Fed. Cir. 1983) . 2 ae

Fromson v. Western Litho Plate

and Supply Co., 853 F.2d 1568

(Fed. Cir. 1988) 49

Graver Tank & Mfg. Co. v. Linde Air

Products Co., 339 U.S. 605

(1950) ..+-«-e « 16, 38, 39, 45, 46

Medtronic, Inc. v. Daig Corp., 789 F.2d

903, (Fed. Cir. 1986) 41

Rolls-Royce Ltd. v. GTE Valeron Corp.,

800 F.2d 1101 (Fed. Cir. 1986) .. 47

SRI International v. Matsushita Electric

Corporation of America, 775 F.2d

1107, (Fed. Cir. 1985) eS eae |

United States v. United States

Gypsum Co., 333 U.S. 364 (1948) . . 45

Statutes and Rules

$6 0.8.0. & 290GtEi 8 8 ws eee Se

20 U.SeGC. §@ 442932 © © eo tc eo eo wm ow ee 5

ae Gites @ BEDS + s& se + 6 eo we Hee

Ce Me Aree Me «> ee eer mee eae

Fed. R iv. P. 52(a) 3, 4, 5, &

12, 14, 24, 34, 41, 43, 44, 51, 52

Other Authorities

House Rep. No. 97-312, 97th Cong.,

lst Session (1981) ...«.«.« « « BS, SO]

IN THE SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1988

THE CAMBRIDGE WIRE CLOTH COMPANY,

Petitioner,

V «

THE LAITRAM CORPORATION

and INTRALOX, INC.,

Respondents.

PETITION FOR WRIT OF CERTIORARI

Opinion Below

The opinion of the Court of Appeals

for the Federal Circuit (appendix, la-

S5la) is reported at 863 F.2d 855 (Fed.

Cir. 1988). The decision of the U.S.

Court of Appeals for the Federal Circuit

denying Petitioner’s petition for

rehearing (appendix, 53a-54a) is

unreported. The decision of the United

States Court of Appeals for the Federal

Circuit denying Petitioner’s suggestion

for a rehearing in banc (appendix, 55a)

is unreported. The District Court

opinion (appendix, 56a-87a) is reported

at 6 U.S.P.Q.2d 1778 (D. Md. 1987).

Jurisdiction

The opinion and judgment of the United

States Court of Appeals for the Federal

Circuit was entered on December 12, 1988

(issued as mandate, Fedruary 1, 1989).

The decision of the United States

Court of Appeals for the Federal Circuit

denying Petitioner’s request for

rehearing was filed on January 25, 1989.

The decision of the United States

Court of Appeals for the Federal Circuit

denying Petitioner’s suggestion for

rehearing in banc was filed on February

9, 1989.

This Petition is filed within 60 days

from the date that the decision denying

the petition for rehearing was entered.

The jurisdiction of this Court is

invoked under 28 U.S.C. § 1254(1).

t e volv

This Petition derives from the trial

court’s finding of non-infringement under

35 U.S.C. § 271 (appendix, 88a-89a) in

connection with Respondent’s suit for

patent infringement and charge of

contempt. The Court of Appeals for the

Federal Circuit reversed the finding of

non-infringement and remanded the case to

the District Court to determine the issue

of contempt. In so doing, the Court of

Appeals for the Federal Circuit did not

apply or follow the standards of Fed. R.

Civ. P. 52(a) (appendix, 90a-91la) which

require that the findings of fact of a

district court not be set aside unless

eS TT

they are found to be clearly erroneous

and that due regard shall be given to the

opportunity of the trial court to judge

the credibility of the witnesses.

STATEMENT OF THE CASE

Introduction

The distinct roles of the United

States courts of appeal and of the United

States district courts are fundamental

and important concepts in American

jurisprudence. Assuring the proper

bounds and responsibilities of the courts

is essential to the concept of fair play

and substantial justice for litigants.

Fed. R. Civ. P. 52(a) clearly delineates

the proper bounds of appellate review of

a district court decision, specifically

mentioning the deference which must be

paid to the finder of fact and stating

that the facts as found by a district

court should not be set aside unless

clearly erroneous. The consequence of

the Federal Circuit’s failure to follow

the standards of Fed. R. Civ. P. 52(a) is

of particular concern in view of the ,

Federal Circuit’s unique jurisdictional

role as the sole appellate interpreter of

all cases arising under the patent laws.

28 U.S.C. § 1295. If the Federal

Circuit’s decision is allowed to stand,

such will act as precedent for and

actually create a substantially different

standard of appellate review for cases

within the Federal Circuit’s jurisdiction

as distinguished from all other types of

cases. Such was not the intent of

Congress in creating the Court of Appeals

for the Federal Circuit. House Report

No. 97-312, 97th Cong., lst Session

(1981) (appendix, 92a-98a), states that

patent cases are to be reviewed in the

same manner as with other appeals. The

Fed. R. Civ. P. 52(a) standard of

appellate review explained by this Court

in Anderson v. City of Bessemer City,

North Carolina, 470 U.S. 564, 574 (1985),

have not been followed by the Federal

Circuit. In Dennison Mfg. Co. v. Panduit

Corp., 475 U.S. 809 (1986), this Court

reversed the Federal Circuit for its

failure to follow Fed. R. Civ. P. 52(a).

In the present case, the Federal Circuit

set aside the facts as found by the

United States District Court for the

District of Maryland, without application

of the clearly erroneous standard of Fed.

R. Civ. P. 52(a). The Court of Appeals

engaged in de novo fact finding, choosing

between conflicting facts, and making its

own credibility determinations. In so

doing, the Federal Circuit has not only

decided a federal question in conflict

with its own precedents and the decisions

of this Court, it has so departed from

the accepted and usual course of judicial

proceedings as to call for an exercise of

this Court’s power of supervision.

Background

An understanding of the background of

this matter is essential to an

understanding of the clear error

committed by the Federal Circuit. The

parties, Cambridge Wire Cloth Company

("cwc")' and The Laitram Corporation and

Intralox, Inc. (collectively "“Laitram"),

are competitors in the manufacture and

sale of conveyor belting. They have a

lengthy litigation history with which the

District Court for the District of

Maryland is intimately familiar.

In 1983, Laitram initiated a law suit

against CWC alleging infringement of four

‘cWC has no parent companies, subsidiaries

or affiliates.

U.S. patents, U.S. Patent Nos. 3,870,141

("the ‘141 patent"), 4,051,949 ("the ‘949

patent"), Re.30,341 ("the ‘341 patent"),

and 4,159,763 ("the ‘763 patent"). After

a nine-day trial ("the 1985 trial") Judge

Smalkin’? held that all four patents were

valid and infringed and awarded Laitram

damages and injunctive relief ("the 1985

decision"). The 1985 decision was based

on the opinions of experts, consideration

of conflicting evidence, and, most

importantly, the testimony of the

inventor as to what he considered to be

his inventions.

The 1985 decision was upheld on appeal

to the Federal Circuit which found no

legal or factual error by the trial

"at the time of the 1985 trial, Judge

Smalkin was a Magistrate. He has heard all of

the parties’ several proceedings below and is,

therefore, uniquely familiar with the parties and

the facts in dispute.

court. CWC petitioned for certiorari and

such was denied.

After careful study of the 1985

decision and in reliance on the holdings

therein, CWC carefully undertook to

redesign the infringing device (known as

CAM-CLEAN I) and produced a new module

known as CAM-CLEAN II, which CWC believed

avoided Laitram’s patents as interpreted

in the 1985 decision. In early 1986, CWC

moved the trial court (Judge Smalkin) to

modify the injunction which resulted from

the 1985 decision so as to exclude CAM-

CLEAN II. Judge Smalkin denied the

motion and indicated that CWC was free to

bring a separate action for declaratory

judgment. In early November 1986, CWC

instituted a suit for declaratory

judgment that its CAM-CLEAN II did not

infringe. Laitram moved to dismiss on

the basis that it had not threatened CWC

with an infringement action on CAM-CLEAN

II and Judge Smalkin granted Laitram’s

motion.

After CWC began to manufacture CAM-

CLEAN II, Laitram filed a new lawsuit

alleging patent infringement and

requesting a preliminary injunction ("the

1987 lawsuit").* The case was tried

before Judge Smalkin who by then was

intimately familiar with the facts,

having been involved with the continuum

of the dealings between CWC and Laitram

from the first trial, through CWC’s

attempt to have the injunction modified,

to CWC’s attempt to obtain declaratory

relief, to the eventual charge of

infringement of CAM-CLEAN II. The

*The 1987 lawsuit involved three of the

four patents of the 1985 trial, namely, the '141

patent, the '949 patent and the '341 patent.

Federal jurisdiction was based on 28 U.S.C. §

1338.

essential question addressed by Judge

Smalkin was whether Laitram had proved

that CWC’s redesigned CAM-CLEAN II

infringed the three patents. After

hearing testimony from CWC’s and

Laitram’s expert witnesses, reviewing

critical evidence of test results,

studying numerous exhibits, considering

the inventor’s 1985 testimony” and his

own prior opinion in the 1985 decision,

Judge Smalkin held that Laitram failed to

carry its burden of proof.

Notwithstanding the trial court’s unique

familiarity with the facts of the case,

the trial court’s interpretation of and

reliance upon the inventor’s prior

“Laitram did not call the inventor as a

witness at the 1987 trial, since the position

that Laitram was taking was completely at odds

with the inventor’s previous testimony. Judge

Smalkin was so surprised by this that he openly

expressed his incredulity as to Laitram’s shift

in position.

testimony, its weighing of the experts’

evidence and credibility, its clear

understanding of the issues and facts

from prior testimony in the 1985 trial,

and notwithstanding the fact that it is a

well-established principle that

infringement is a question of fact, the

Court of Appeals for the Federal Circuit

reversed the findings of the trial court.

In so doing, the Federal Circuit

disregarded the trial court’s findings of

fact, disregarded the inventor’s prior

testimony, made its own findings of fact

and its own determinations of credibility

and probative value of evidence.

Nowhere in the Federal Circuit’s

decision is Fed. R. Civ. P. 52(a)

mentioned. While the Federal Circuit

held that the ultimate finding of non-

infringement (as to the ‘141 patent and

by implication the ‘949 patent) was

clearly erroneous, (appendix, 114), the

clearly erroneous standard was never

applied to the factual determinations of

the district court. Rather, the Federal

Circuit replaced the factual

determinations of the district court with

its own. Similarly, while the Federal

Circuit purports to rest its decision on

errors of law and purports to accept the

basic facts found by the district court,

(appendix, 8a, 14a, 46a), it is clear

that the Court did not base its decision

on errors of law and did not accept the

facts decided below. Rather, the Federal

Circuit sifted through the evidence,

decided between conflicting facts of

record, and improperly disregarded the

trial court’s opportunity to judge the

credibility of the witnesses and the

probative value of test results. Instead

of accepting the facts as determined

below, the Federal Circuit substituted

its own findings of facts for those of

the district court.

REASONS FOR GRANTING THE WRIT

This Petition involves issues of great

consequence to the proper administration

of justice by the courts of the United

States. In particular, the integrity of

the proper standard of review in patent

cases is at stake. These issues

transcend the particular commercial

controversies between the parties and

highlight the injustice which results

when an appellate court usurps the role

of a trial court. In this case, the

Federal Circuit disregarded the mandate

of Fed. R. Civ. P. 52(a), the clear

precedent of the Supreme Court, and its

own precedent. This Petition not only

raises the important issue of whether the

Federal Circuit failed to follow such

precedents, it raises a broader issue of

perhaps greater consequence, namely,

whether the standards of review of patent

cases (here, a finding of non-

infringement) should be different than

those applied in other types of cases.

It is submitted that the Federal Circuit

should be required to follow the

established standards of judicial review.

The Federal Circuit’s departure from the

accepted and usual course of judicial

proceedings is surprisingly clear, as

will be evident from the following

discussion.

The Federal Circuit’s Findings

of Fact: The ’341 Patent

The Court of Appeals’ error with

regard to the ‘341 patent is apparent.

The question before the trial court was

whether CWC’s sale of CAM-CLEAN II with a

circular shaft with keyways constituted

contributory infringement of claim 1 of

the ‘341 patent under the doctrine of

equivalents. The claim is reproduced in

the Federal Circuit opinion at appendix,

3la.

A district court’s determination of

patent infringement is a question of

fact. Fromson v. Advance Offset Plate,

Inc., 720 F.2d 1565, 1569 (Fed. Cir.

1983). Determining infringement under

the doctrine of equivalents is also a

question of fact. Graver Tank & Mfg. Co.

v. Linde Air Products Co., 339 U.S. 605,

609 (1950).

Proof can be made in any

form: through testimony of

experts or others versed in

the technology; by documents,

including texts and

treatises; and, of course, by

the disclosures of the prior

art. Like any other issue of

fact, final determination

requires a balancing of

credibility, persuasiveness

and weight of evidence. It is

to be decided by the trial

court and that court’s

decision, under general

principles of appellate

review, should not be

disturbed unless clearly

erroneous. Particularly is

this so in a field where so

much depends upon familiarity

with specific scientific

problems and principles not

usually contained in the

general storehouse of

knowledge and experience.

339 U.S. at 609-610. Under the doctrine

of equivalents, a factual determination

is made as to whether a particular

device, while not encompassed by

literally on the patent claims, "performs

substantially the same function in

substantially the same way to obtain the

same result.” 339 U.S. at 608.

The critical claim language of the

‘341 patent concerned the claim to a

shaft which, inter alia, was

"substantially uniform in cross section

and non-circular." The question before

the trial court was where the circular

shaft with keyways of CAM-CLEAN II

infringed the claim of the ‘341 patent

under the doctrine of equivalents. The

trial court’s consideration of the proper

application of the doctrine of

equivalents, was facilitated by the

inventor’s own testimony in the 1985

trial as to what his invention was and

why such was patentable. In the 1985

trial, the trial court considered the

question of whether the ’341 patent was

valid in view of certain prior art. In

attempting to distinguish the prior art

and advise the trial court as to why his

invention was patentable, the inventor

distinguished his invention from the very

device which CWC used in its CAM-CLEAN

II, namely, a circular shaft with

keyways.° Notwithstanding the inventor’s

>cWC had been using a circular shaft with

keyways at the time of the 1985 trial and such

was not even accused of infringement at that

testimony to the contrary in the 1985

trial, in the 1987 lawsuit Laitram

attempted to assert that the ‘341 patent

did cover a circular shaft with keyways.

Judge Smalkin was so shocked at this

change in position that he commented at

trial, "didn’t he [the inventor, Mr.

Lapeyre] come in [to the 1985 trial] and

say that [the idea of the '341 patent was

to get away from keys] or was I

hallucinating ...." Judge Smalkin, who

had heard the inventor in the prior

trial, was not going to ignore such a

blatant change in position and such

formed the basis of his holding that CAM-

CLEAN II did not infringe. The trial

court could not have been more clear,

noting that its holding was

consistent with Mr. Lapeyre’s

testimony [in the 1985 trial]

time, obviously because Laitram and the inventor

did not believe that it infringed.

iain tai i

and I find that a round shaft

with keys is essentially a

circular shaft. It is not a

noncircular shaft, as that is

used in 341, as the inventor

himself views what is a

circular and non-circular

shaft; and I think that the

resolution of this is clear

and the inventiveness in 341

was putting together the

square shaft or other regular

polygonal shaft, which gives

you a very positive drive

mechanism....

Continuing, the court noted:

I think that it would be a

result that would be

inequitable and not in

conformity with the evidence

that has already been laid

before the Court and

therefore would not be a

sustainable result for me to

say now, that, oh, yes, well,

the circular shaft with keys

is the functional equivalent

of a square shaft and

therefore the circular shaft

with keys infringes. That

would be an inequitable

result and one that is not

allowed, given the fact that

I think it is fair to estop

the Plaintiff from adopting

that position in light of the

history of the 3126 [1985]

case, the testimony of Mr.

Lapeyre in that case, and my

findings with regard to this

issue.

In fact, the trial court pointed to a

particular page in the testimony in the

1985 trial as an example of estoppel

which limited the scope of application of

the doctrine of equivalents (citing page

59 of the transcript in the 1985 trial).

Notwithstanding the trial court’s

findings of fact based on its knowledge

and intimate familiarity with the

testimony and facts presented to it in

both the 1987 lawsuit and 1985 trial, the

Court of Appeals rejected the District

Court’s finding as to the meaning of the

inventor’s testimony. Clearly, there was

a difference between the Court of

Appeals’ interpretation as to what the

inventor was referring to in his

testimony and that of the trial court

which actually heard the testimony. The

trial court found that in his prior

testimony (at page 59 of the transcript)

the inventor had explained the nature of

his invention and why such was patentable

over the very device, i.e., a round shaft

with keys, which was accused in the 1987

lawsuit. The Court of Appeals, on the

other hand, found as a fact that the

inventor’s testimony dealt only with the

inventor’s reasons for selecting a square

shaft and square bore sprockets, as a

preferred, commercial embodiment rather

than dealing with defining his invention.

The difference in interpretation of the

inventor’s testimony was critical to the

different results reached by the trial

court and the Court of Appeals. The

trial court was in the best position to

know the proper interpretation as it had

heard the entire testimony and knew the

context of such testimony. Quite simply,

the Court of Appeals did not hear the

entire trial testimony of the inventor

and was therefore not in a position to

properly interpret the testimony

appearing on page 59. This is the

function of the trial court and the trial

court correctly carried out that

function. Even if one were to argue that

the testimony may subject to two

permissible interpretations, in such

instances the fact finder’s choice

between them cannot be clearly erroneous.

Anderson v. City of Bessemer City, North

Carolina, 470 U.S. 564, 574 (1985). The

Court of Appeals’ departure from the

usual course of judicial conduct is made

clear in its holding,

If the inventor had led the

Court to sustain claim 1 of

the patent in the first trial

on the basis that claim l

must be limited to

noncircular shafts that are

square or otherwise polygonal

in cross section, a judicial

estoppel might have precluded

any change from that

position.... As above

indicated, however, we can

find no indication in the

record that that is what

happened, or could have

happened, here.

Appendix, 47a-48a (Emphasis original).

This holding by the Federal Circuit is

inconsistent with the facts found by

Judge Smalkin in which he clearly

articulated that the inventor did lead

him to believe that claim 1 did not

include circular shafts with keyways and

therefore did not infringe. His finding

was based on his interpretation and

weighing of the facts. The trial court’s

factual determination should have been,

but was not, judged against the clearly

erroneous standard of Fed. R. Civ. P.

52(a). The Court of Appeals committed

clear error in not following the proper

standard and has so far departed from the

accepted and usual course of judicial

proceedings as to call for an exercise of

this Court’s power of supervision.

The Federal Circuit's

As with the ‘341 patent, the trial

court was faced with a factual

determination as to whether CAM-CLEAN II

infringed the ‘141 patent under the

doctrine of equivalents, i.e., did it

perform substantially the same function

in substantially the same way to obtain

the same result. The claim at issue is

reproduced at appendix 8a-9a.

®rhe Federal Circuit’s findings and error

with respect to the '949 patent were dependent

upon its findings with respect to the ‘141 patent

and therefore only a discussion of the Federal

Circuit’s error with respect to the ‘141 patent

is required for purposes of this Petition

(appendix, 28a-3la).

The key issue in determining whether

there was infringement of the ‘141 patent

centered on whether the link ends of the

accused device were spaced apart "by a

distance slightly greater than the

width." The issue required a factual

determination of whether or not

interfitting link ends of a modular

conveyor in which the modules are held

together with a pivot rod were of a

thickness "slightly greater" than the

spacing between the link ends. The term

"slightly greater" was interpreted in

terms of its purpose, i.e., spacing that

would "minimize bending and maximize

shear" (appendix, 12a).

The trial court focused on the

question of whether CAM-CLEAN II

infringed under the doctrine of

equivalents. First, the trial court was

Clearly impressed with the differences

a ccecemeeeieilaiamaiaaaaa amanda

between the accused and patented devices

(the court found that the spacing of 135%

could not be considered to be "slightly

greater" as described in the patent )

(appendix, 78a-80a). These differences

formed a basis for a finding of non-

infringement under the doctrine of

equivalents (appendix, 83a). A factual

determination that the distance was more

than "slightly greater" was 4

determination that the accused device did

not operate "substantially in the same

way" as the device in the patent, i.e.,

its operation did not rely on a distance

which was "slightly greater." Secondly,

the trial court considered whether the

accused device performed substantially

the same function to obtain the same

result as that described in the patent.

In so doing, the trial court found as a

fact that the accused device did not

minimize bending and maximize shear which

was the intended function and result of

the patented device.

While the Court of Appeals infers that

the district court did not properly focus

on the issue of infringement under the

doctrine of equivalents, it is clear from

the trial court’s entire opinion that it

was primarily concerned with the doctrine

of equivalents (appendix, 77a).

There can be no doubt as to the trial

court’s inquiry. Referring to the

inventor’s testimony, the trial court

stated,

the more shear you have; and

the shear resistance is more

efficient than bending

resistance and is what you

want to maximize strength.

This is what he said at the

[1985] trial and this is what

I relied upon to say that

what he had was, A,

patentable over the prior art

and B, that the Cam-Clean [I]

product that was then extant

infringed the patent; and the

point there was to minimize

the bending forces, to

maximize the shear and to

have as little exposed rod as

possible. And this in my

judgment is what allowed

there to be infringement by

equivalence even though there

was not necessarily literal

infringement in the first

claim patent [in the 1985

trial].

Appendix, 74a-75a.

The trial court’s finding of fact is

clear as to whether the accused device

functioned in the same way to achieve the

same result as the device described in

the patent. The trial court heard

testimony from both Laitram’s and CWC’s

expert and other witnesses and, after

hearing such testimony and having an

opportunity to weigh the credibility of

the witnesses, the trial court properly

believed CWC’s witness that the tests

conducted on the devices were probative

to show that the accused device did not

minimize bending or maximize shear. This

was a finding of fact of the trial court

which led to its decision.

The trial court stated,

To me the telling proof is

made up in two ways. Number

one, the tests, in my opinion

~- although the difference is

admittedly small at working

loads, at the higher loads,

where you test to ascertain

true strength of the material

-- in my judgment, the tests

show that the Cam-Clean II is

less resistant to the bending

and elongation forces than

the original Cam-Clean; but

that is not really the most

important question.

The most important question

is, what is the spacing of

the redesign Cam-Clean

relative to the width of the

link ends? Therefore, I had

Dr. Butler measure or mike

[sic, mic] the link ends of

the Cam-Clean II; and he

ascertained that expressing

the spacing as percentage of

the link end width it came to

135.85 percent. That is,

there is a 35 percent greater

spacing than the width of the

link end.

Appendix, 78a-79a.

The trial court went on to indicate

that the inventor himself stated in the

first trial that the lack of spacing was

what made his invention patentable and

what made the CAM-CLEAN product infringe.

The trial court stated:

Mr. Lapeyre [the inventor] made

a lot of that [the spacing] at

the [1985] trial and said, that

is the thing that makes his

invention patentable and it is

the thing that makes the Cam-

Clean invention infringe, the

original Cam-Clean infringe on

his, because when you look at

the shear inventing [sic,

bending] forces were actually

transmitted to the rod, you

would find that the spacing was

not significantly greater than

the width of the link end

itself.

Appendix, 82a.

What the trial court was saying 1s

that in addition to the tests showing

that the accused device did not operate

in substantially the same way to achieve

the same result as the patented

invention, i.e., to minimize bending and

maximize shear, it also did not perform

substantially the same function. The

invention in the ‘141 patent performed

the function of minimizing bending and

maximizing shear through a spacing which

was only "slightly greater." Even

assuming arguendo that the CAM-CLEAN II

device performed the same function, i.e.,

minimized bending and maximized shear, it

could not have performed it the same way

(through spacing which was slightly

greater) since spacing was more than

slightly greater. Such were the findings

of fact of the trial court based on the

inventor’s prior testimony and based on

the tests and expert testimony which it

heard.

The Federal Circuit’s error is

manifested in the inconsistency of its

decision. On the one hand, the Federal

Circuit stated that the district court

did not apply its criterion of whether

the accused device "minimized

bending/maximized shear." After so

stating, however, the Court of Appeals

went on to criticize the very evidence

which the district court did consider in

determining whether the accused device

minimized bending and maximized shear.

As discussed above, the district court

relied on tests which showed that the

accused device did not minimize bending

and maximize shear. After listening to

testimony of witnesses on both sides,

Judge Smalkin made a factual

determination that the tests were

probative in showing that the accused

device did not minimize bending and

maximize shear. The Court of Appeals,

without the benefit of actually hearing

the expert witnesses, found that the

tests were "non-probative." (appendix,

15a). Such a finding clearly should be

based on evaluation of witness testimony

and other evidence at trial.

A review of its reasons for rejecting

the probative value of the tests starkly

reveals the Federal Circuit’s fact

finding and its failure to apply the

clearly erroneous standard of Fed. R.

Civ. P. 52(a).

The first reason the Court of Appeals

held the tests were non-probative was

that they subjected CAM-CLEAN II to a

force more than three times the 1500

pounds rated load for which they are

warranted (appendix, 15a). This testing

methodology was adequately explained in

the trial court decision but such

explanation was disregarded by the Court

of Appeals. It was shown at trial that

Laitram also tested the modules well

above the rated load. The trial court

determined that the tests used higher

loads to “ascertain the true strength of

the material." This determination was

made and credibility given the tests

after the trial court had heard evidence

(including expert testimony) about the

types of tests conducted on the modules

in issue. Two of CWC’s witnesses

explained in detail at the trial that it

was absolutely necessary to test at

higher loads and that they never tested

at working loads because such tests would

be meaningless. The tests are made at

higher load for a number of reasons, not

the least of which is to simulate "creep"

of the plastic material. This was

testified to at length by the engineer

who assisted in designing CAM-CLEAN II

and by an expert witness at the trial,

Dr. Butler.

iii ee

Because the Court of Appeals did not

hear the testimony at either of the

trials, it misinterpreted the test

results presented at each and denigrated

the reliability and usefulness of the

tests. The trial court was well aware of

the significance of the tests after it

heard testimony in the second trial and

had the tests explained by the expert.

The trial judge heard the testimony,

weighed the evidence and decided that the

tests conducted for the second trial were

supportive of a conclusion of

noninfringement. The Court of Appeals

simply dismissed this factual

determination and substituted its own.

The second reason the Court of Appeals

found the tests "non-probative" was that

the difference in elongation was quoted

as being “admittedly small" (appendix,

16a). This quote is not complete. In

fact, the evidence showed that the

difference was “admittedly small at

working loads" (appendix, 78a). CWC’s

witnesses testified that the working load

is not relevant in connection with the

tests.

The Court of Appeals’ third objection

to the tests was that there is nothing in

the "slightly greater" limitation dealing

with any "strength of the material"

criterion (appendix, 16a). However, the

whole purpose of “maximized

shear/minimized bending" is to control

the strength of the modules, a fact of

record which the trial court clearly

understood. This fact determination is

crucial to a conclusion of whether or not

the two devices “function in

substantially the same way to achieve the

same result." The nonachievement of

"maximized shear/minimized bending" by

CAM-CLEAN II was a fact determined by the

trial court on the basis of conflicting

evidence.

The Court of Appeals’ fourth reason

for finding the tests non-probative was

its assertion that it was irrelevant

whether CAM-CLEAN II is less resistant if

equivalency is met (appendix, 16a). MThis

objection to the tests begs the issue and

illustrates the Court of Appeals’ total

disregard for the findings of the

district court. Clearly, the trial court

was led to the determination that there

was no infringement by the doctrine of

equivalents due to the factual finding

that CAM-CLEAN II was less resistant. To

say that the product’s lesser resistance

is irrelevant overlooks the importance of

factual issues in a doctrine of

equivalents evaluation as set forth in

Graver Tank.

The fifth assertion made by the Court

of Appeals was that the tests did not

show that the CAM-CLEAN II redesign

sufficiently escaped the equivalency

formulation set out in Graver Tank.

Again, the appellate opinion on this

point evaluates testimony, weighs

evidence and clearly makes an

impermissible de novo finding of the

facts of the case.

Testimony at the trial showed that

CAM-CLEAN II was molded with a spacing

substantially greater than the functional

spacing of the patented devices so that

shear would not be maximized and bending

would not be minimized. In the 1985

trial Laitram did not assert its

“slightly greater" claims against CWC’s

modules having Delta clearances of

70/1000 or 112/1000 of an inch. The

Delta clearance of CAM-CLEAN II is

80/1000 inches. Discounting all of these

facts, the Court of Appeals credited the

argument of Laitram’s counsel and

incorrectly stated that CWC does not

dispute “Laitram’s assertion that CWC

shaved only 11/1000 of an inch off its

link ends" (appendix, 19a). CWC did

dispute Laitram’s and the Federal

Circuit’s characterization of the

significant increase in the Delta

clearance of the CAM-CLEAN II as a mere

shaving. The trial court found that CAM-

CLEAN II is less resistant to the bending

and elongation forces because of the

increase in spacing. The fact that CAM-

CLEAN II is significantly weaker and pays

other penalties for not infringing is

found in the testimony, e.g., CAM-CLEAN

II was 10% weaker. Whether or not this

is “significantly weaker," i.e., such

that bending would not be minimized, is a

matter for determination by the trier of

fact.

The Court of Appeals does not discuss

these facts nor explain how these

findings of fact by the lower court are

clearly erroneous, as required by Fed. R.

Civ. P. 52(a) and Dennison Manufacturing

Co. v. Panduit Corp. Rather, after

engaging in its own fact finding, the

Court of Appeals simply stated that CWC

has not shown that CAM-CLEAN II does not

perform substantially the same function

in substantially the same way to obtain

the same result.’

’the Federal Circuit opinion seems to

indicate that it is Cambridge’s burden to show

that CAM-CLEAN II does not perform in

"substantially the same way." This miscasts the

burden of proving infringement, since the burden

of showing that the trial court’s findings were

clearly erroneous was on Laitram, not Cambridge.

Medtronic, Inc. v. Daig Corp., 789 F.2d 903 (Fed.

Cir. 1986).

The Court of Appeals’ fact finding is

obvious in the following statement:

It is clear that a module in

which the spacing was so

great as to have no or very

little effect in minimizing

bending and maximizing shear

would not accomplish the

purpose attributed to the

"slightly greater”

limitation, but that is not

this case. Nor did the

district court find, as it

could not on this record,

that CAM-CLEAN II’s spacing

had a minimize bending/

maximize shear effect

substantially different from

that intended by the

limitation, or from that of

CAM-CLEAN I, or from that of

Laitram’s product.

Appendix, 22a-23a.

In fact, the district court did find

that the spacing had an effect

substantially different from that claimed

in Laitram’s patent. The basis for the

trial court’s finding of noninfringement

was that the spacing was too great to

fall within the limits of equivalency.

From the above, it is abundantly clear

that the Court of Appeals engaged in its

own fact finding and usurped the proper

role of the trial court. The fact that

the Court of Appeals would incorrectly

interpret the facts is understandable

since it did not have the vantage point

of the trial court in viewing the

evidence and observing the demeanor of

the witnesses. This is precisely why it

is universally held that the function of

the Court of Appeals is quite different

than that of a trial court.

The impropriety of such fact finding

is well established. Fed. R. Civ. P.

52(a) states in pertinent part:

Findings of fact, whether

based on oral or documentary

evidence, shall not be set

aside unless clearly

erroneous, and due regard

shall be given to the

opportunity of the trial

court to judge the

credibility of the witnesses.

The Court of Appeals not only disregarded

and failed to mention Fed. R. Civ. P.

52(a) in its analysis, its decision is

clearly in contravention of that rule.

The Supreme Court has had opportunity to

define the boundaries of the clearly

erroneous standard of Fed. R. Civ. P.

52(a), stating:

This standard plainly does

not entitle a reviewing court

to reverse the finding of

the trier of fact simply because it

is convinced that it would have

decided the case differently. The

reviewing court oversteps the

bounds of its duty under-Rule 52(a)

if it undertakes to duplicate the

role of the lower court. "In

applying the clearly erroneous

standard to the findings of a

district court sitting without a

jury, appellate courts must

constantly have in mind that the

function is not to decide factual

issues de novo."

Anderson v. City of Bessemer City, North

Carolina, 470 U.S. at 573.

The clearly erroneous standard is to

be applied to findings of infringement

under the doctrine of equivalents since a

finding of equivalents is a determination

of fact. Graver Tank, 339 U.S. at 609 -

610.

Even where there are two permissible

views of the evidence, the fact finder’s

choice between them cannot be clearly

erroneous. Anderson at 470 U.S. at 574,

quoting United States v. United States

Gypsum Co., 333 U.S. 364, 395 (1948).

Further, as with any issues of fact,

final determination on equivalents

requires a balancing of credibility,

persuasiveness and weight of evidence.

339 U.S. at 609-610. The trial sourt

determined that CWC’s CAM-CLEAN II did

not infringe Laitram’s ‘141 and ‘949

patents under the doctrine of

equivalents. This determination was

based on facts found by the trial court

which showed that since CAM-CLEAN II does

not maximize shear and minimize bending,

it does not "function in the same way" to

meet the requirements of the claims of

the patents at issue.

An interpretation of a term such as

"slightly greater than" which formed the

basis of the inquiry in connection with

the ‘141 and ‘949 patents is particularly

well suited to a trial court’s judgment.

As stated in SRI International v.

Matsushita Electric Corporation of

America, 775 F.2d 1107, 1124 (Fed. Cir.

1985),

The test mandated in Graver

Tank leaves room for the fact

finder’s application to

varying circumstances. Words

like "so far," "principle,"

and "substantially" are not

subject to rigid pre-

definition; nor will the

"principle" of a structural

invention be always and

immediately apparent. It is

precisely the role of a trial

to apply the test in light of

all the live testimony and

physical evidence adduced.

(Emphasis added).

The trial court further found the ’341

patent not infringed because the

testimony of the inventor and the

position taken by Laitram at an earlier

trial before the same court, clearly

showed that CWC’s round bore shaft with

keyway did not infringe under the

doctrine of equivalents.

The Federal Circuit’s decision in this

case was at odds not only with the clear

dictates of the Supreme Court but with

its own precedent as well. As stated by

the Court of Appeals for the Federal

Circuit in Rolls-Royce Ltd. v. GTE

Valeron Corp., 800 F.2d 1101 (Fed. Cir.

1986):

[An appellate] court does not

sit to reweigh the evidence

presented to the district

court, nor will it draw its

own inferences, nor make its

own fact findings. It will

not reverse unless the

inferences drawn and facts

found by the trial court are

on the full record so

unsupported as to have been

the result of clear error.

Rolls-Royce, 800 F.2d at 1110.

The Federal Circuit’s rejection of the

findings of the trial court were clearly

not based on legal issues. Rather, its

rejection was based on fact finding.

Recently, the Court of Appeals for the

Federal Circuit had occasion to comment

on this very issue, stating

This is the eighty-fourth

case in which the court has

been forced, ad nauseam, to

remind counsel that it is a

court of review, i.e., that

it will not find the facts de

novo, that it is not a place

for counsel to retry their

cases, that its judges do not

participate as advocates to

fill gaps left by counsel at

trial, and that the function

of appellant’s counsel in

relation to the district

court’s findings is to- show

that those findings are

clearly erroneous or, if

correct, cannot support the

district court’s legal

conclusion.

Fromson v. Western Litho Piate and Supply

Co., 853 F.2d 1568, 1570 (Fed. Cir.

1938). The Court of Appeals for the

Federal Circuit continued, noting:

Western, in addition, seeks

its fresh set of findings of

fact and conclusions in

frequent disregard not only

of the district court’s

findings and conclusions, but

of the underlying evidentiary

support cited by the court.

853 F.2d. at 1570.

In creating the Federal Circuit,

Congress focused on the proper role of

the Court as a court of appeals as

distinguished from a trier of fact. The

intentions of Congress in creating the

Court of Appeals for the Federal Circuit

are clear from the House Report. That

report includes a discussion on the use

of technical advisers by the old Court of

Customs and Patent Appeals for appeals

from the Patent Office, as compared to

appeals in infringement cases in the new

Federal Court of Appeals for the Federal

Circuit. The report states,

[T]o use these [technical]

advisers in adversary patent

infringement cases and have

them review and assess the

technical aspects of the

evidence, as developed by the

sworn testimony of witnesses

and as covered by the

findings of fact entered by

the trial judge, is quite a

different matter. It is well

established that factual

issues in a patent case must

be tried and decided by the

trial judge or a jury in

precisely the same manner as

such issues are tried in any

other kind of a lawsuit. The

technical aspects of a patent

case are factual issues, and

patent cases are reviewed in

the circuit courts of appeals

in the same manner as with

other appeals.

Thus, it is the settled

practice of the circuit

courts of appeals in patent

cases to honor and respect

Rule 52(a) F. R. Civ. P.,

which provides that findings

of fact may not be set aside

unless clearly erroneous,

giving due regard to the

opportunity of the trial

court to judge the

credibility of witnesses.

The circuit courts have

repeatedly held that it is

not their function to pass

upon or consider de novo the

evidence received at the

trial or to weigh

controverted evidence.

H.R. 97-312, 97th Cong., 1st Sess.

(1981), pp. 37-38 (appendix, 94a-96a).

Not only has the Federal Circuit

departed from the clear dictates of Fed.

R. Civ. P. 52(a), its own precedent, and

from the precedent of the Supreme Court,

it has also departed from the express

intentions of Congress in creating the

Federal Circuit. If the Federal

Circuit’s decision is permitted to stand,

such will establish a new precedent for

the standards of judicial review of

patent cases.

N ION

This Court should review this case

because of the importance of the issue

presented in reaffirming the Federal

Circuit’s proper role as a court of

review, not a fact finding body. Given

the unique role of the Federal Circuit as

sole appellate decision maker for cases

arising under the patent laws, a failure

of the Federal Circuit to adhere to the

proper standards of appellate review

could effectively establish a different

standard of review for patent cases as

distinguished from all other cases. The

result of this case has been substantial

injustice, as might be expected when a

court of appeals engages in fact finding

(especially where, as here, the district

court had a unique position from which to

ascertain the facts). For these reasons,

it is respectfully requested that this

Petition for Writ of Certiorari be

granted.

Respectfully submitted,

this 27th day of March, 1989.

G. Franklin Rothwell

Raymond A. Kurz

Mary B. Stohler

BERNARD, ROTHWELL & BROWN

1700 K Street, N.W.

Washington, D.C. 20006

Phone: (202) 833-5740

Attorneys for Petitioner.

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