# Appendix — Christianson v. Colt Industries Operating Corp. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385002_1569%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1989 - **Citation:** 493 U.S. 822 ## Text IN THE Supreme Court of the United States OCTOBER TERM, 1988 CHARLES R. CHRISTIANSON and INTERNATIONAL TRADE SERVICES, INC., Petitioners, VS. COLT INDUSTRIES OPERATING CORP., Respondent. APPENDIX TO THE PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT JOHN C. MCNETT Counsel of Record SPIRO BEREVESKOS WooparRD, EMHARDT, NAUGHTON, | MORIARTY & MCNETT One Indiana Square, Suite 2000 Indianapolis, Indiana 46204 (317) 634-3456 and | STUART R. LEFSTEIN | KATZ, MCANDREWS, BALCH, LEFSTEIN & FIEWEGER, P.C. 200 Plaza Office Building | 1705 Second Avenue | P.O. Box 3250 | Rock Island, Illinois 61204-3250 (309) 788-5661 Counsel for Petitioners Midwest Law Printing Co., Chicago 60611, (312) 321-0220 \ \ x ay we. ee whol ao _ es APPENDIX INDEX Decisions on the merits of courts having jurisdiction: A— Seventh Circuit Opinion on the merits, March OR Re ee ores oe Ee oe B— District Court Judgment on the merits, July RR eens eee ee ee ee C— District Court Opinion on the merits, May 24, walk sae hoe ae CAA le Cee Oe ns Decisions pertaining to jurisdiction: D— U.S. Supreme Court Opinion vacating Federal Circuit decision, June 17, 1988 ............ E— Federal Circuit Opinion responding to Seventh Circuit opinion, June 25, 1987 ............ F— Seventh Circuit Opinion declining jurisdiction, EE CB a a a oaks ae Se SEO G— Federal Circuit Opinion declining jurisdiction, RES Sioa a vedere wee a Judgment below: H—Judgment of the Seventh Circuit, March 22, a Lg Bae Rede dn Ree MaRS pe EE LG a Meg Sate ge Other appendix items: I— Colt memo re: captive market in the M-16 aS SERRE BRON ki oe eae aan PA PAGE 27 46 72 112 134 136 138 il J— Colt Letter, April 10, 1984 ............... K—Colt Letter, September 14, 1984 .......... L— Affidavit of Seth Bredbury ............... M—Affidavit of Radford W. Luther ........... Documents relating to one of Colt’s patents aS an example: N—Inventor’s description of invention referencing MIG parte ..6.ceccs seu eee eee O— Inventor’s January 31, 1964 summary of ac- complishments ... . «sie. >: kee eee P— Colt Engineering change order to insure inter- changeability .. 0... J0éssseaeeee ee Q— Colt’s Synopsis of M-16A1 Forward Assist Device ...kcees deena se nee ee Statutes: S— Statutes: 15 U.S.C. $1 Sherman Ac 72... 15 U.S.C. $2 Sherman Ace (. 5 U.S.C. $15 Antitrust Law 2 15 U.S.C. §26 Antitrust Law... 35 U.S.C. § 112 Patent Disclosure requirements. ....4:s..+s.08 45 eee 36 U.S.C. § 154 Patent Term specified 139 141 144 148 152 155 160 162 163 180 180 181 183 183 184 IN THE Supreme Court of the United States OCTOBER TERM, 1988 CHARLES R. CHRISTIANSON and INTERNATIONAL TRADE SERVICES, INC., Petitioners, V8. COLT INDUSTRIES OPERATING CORP., Respondent. APPENDIX TO THE PETITION FOR WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT PA-1 APPENDIX A IN THE UNITED STATES COURT OF APPEALS FOR THE SEVENTH CIRCUIT No. 88-2492 CHARLES R. CHRISTIANSON and INTERNATIONAL TRADE SERVICES INC., Plaintiffs-Appellees, v. Co_t INDUSTRIES OPERATING CorP., Defendant-Appellant. Appeal from the United States District Court for the Central District of Illinois, Rock Island Division. Nos. 83-4072 and 84-4056—Robert D. Morgan, Judge. ARGUED NOVEMBER 28, 1988—DEcIDED MARCH 22, 1989 Before CUMMINGS and FLAUM, Circuit Judges and FaIr- CHILD, Senior Circuit Judge. FLAUM, Circuit Judge. Charles Christianson and his company, International Trade Services (together herein- after referred to as “Christianson’’), filed a two-count com- plaint against Colt Industries Operating Corp. (“Colt”) al- leging, in Count I, that Colt had illegally monopolized the market in M-16 parts and had successfully organized a group boycott of Christianson, an M-16 parts supplier, in viola- tion of Sections 1 and 2 of the Sherman Act and Sections 4 and 16 of the Clayton Act. Count II alleged that Colt PA-2 had tortiously interfered, under Illinois law, with Chris- tianson’s business opportunities. Colt has defended the suit by claiming that any actions it took were justified by its interest in not divulging the information which would permit the parts to be used com- mercially in connection with the M-16, information which it claims was subject to state trade secret law protection. Colt also counterclaimed against Christianson, who was a former Colt employee, alleging breach of contract and a variety of other state and federal law trade violations based on Colt’s proprietary interests in the parts. Chris- tianson countered Colt’s defense, and its counterclaims, by alleging that Colt no longer had any proprietary in- terest in the parts at issue since the patents on the parts had expired and Colt had no protectible trade secrets in the parts. According to Christianson, Colt could not claim any trade secret protection relating to the parts because the information Colt claimed to be subject to trade secret protection should have been included in Colt’s patent dis- closures for the parts. Specifically, Christianson alleged that Colt should have included the specifications and tol- erances that would permit those parts to be interchange- able with all of the other M-16s ever produced.! Alter- natively, Christianson’s complaint alleges that Colt lost its proprietary interests in the parts when it granted Christianson permission to sell the parts in 1976. Both sides filed motions for partial summary judyment. Christianson moved for a declaration that Colt’s trade secrets were invalid because those secrets—the specifica- 1 Interchangeability refers to the ability to use a part in every M-16 currently in existence. Interchangeability is a requirement for all M-16 parts because it often becomes necessary on the bat- tlefield to use parts from one rifle to repair another rifle. To achieve interchangeability, the parts must all be manufactured with dimensions falling within specified tolerances. If the tolerances are exceeded, the part will not be interchangeable with M-16 rifles already in existence. Thus, to successfully manufacture a market- able replacement part for the M-16, it is crucial to know those specifications and tolerances which permit interchangeability. PA-3 tions and tolerances for interchangeability—should have been disclosed in the patent applications and also moved for judgment in its favor on the tortious interference count. Colt asked for a declaration that its patent dis- closures were adequate and also asked for dismissal of count II, the tortious interference count. The district court agreed that the patents were invalid for nondisclosure. The court then found, based solely on its finding of patent invalidity, that Colt had no protecti- ble trade secrets in the parts and granted Christianson’s motion for partial summary judgment and denied Colt’s motion. The district court also, swa sponte, entered sum- mary judgment for Christianson on both counts of the complaint. Colt appealed the district court’s decision to the Court of Appeals for the Federal Circuit, touching off a juris- dictional exchange between the Federal Circuit and the Seventh Circuit. The Supreme Court eventually settled the jurisdictional dispute by holding that the Seventh Cir- cuit is the proper forum for Colt’s appeal. Christianson v. Colt Industries Operating Corp., 108 S. Ct. 2166 (1988). Finally reaching the merits of this appeal, we reverse the district court’s grant of summary judgment, find that sum- mary judgment should be entered for Colt on the issue of the adequacy of Colt’s patent disclosures, and remand for further proceedings. I The basic patents which protect the M-16 were first issued to the Armalite Division of Fairchild Hiller Cor- poration for its “AR-10” and “AR-15” rifles. In 1959, Colt received a license from Fairchild to develop those patents and, by 1962, had successfully developed a mass-production rifle. Shortly thereafter, the United States Army adopted that rifle as its principal battlefield rifle and designated it the M-16. Over time, Colt made improvements to various parts of the rifle and patented those improvements, although it did not always use the improvements in actual produc- PA-4 tion of the rifle. Christianson contends that nine of those improvement patents,? five of which actually found their way into production, were invalid from conception because they failed to divulge the requisite information regarding their manufacture and use. Charles Christianson, a former Colt employee, formed International Trade Services (“ITS’’) and went into busi- ness selling replacement parts for the M-16. These parts were obtained from Colt’s suppliers, all of whom had pre- viously agreed with Colt not to supply anyone other than Colt or Colt’s licensees.* In 1976, Christianson received permission from Colt to sell replacement parts, but the parties strongly disagree about whether that permission was of a continuing or a limited nature. Springtield Armory (‘Springfield’), an Illinois corpora- tion, also entered into the business of selling M-16 replace- ment parts. Those replacement parts were manufactured within tolerances permitting interchangeability of the 2 The patents at issue are: (1) Firearm Having an Auxiliary Bolt Closure Mechanism, Patent No. 3,236,155 (issued 2/22/66); (2) Trig- ger Mechanism, Patent No. 3,292,492 (issued 12/20/56); (3) Mech- anism for Changing Rate of Automatic Fire, Patent No. 3,301,133 (issued 1/31/67); (4) Buffer Assembly Having a Plurality of Iner- tial Masses Acting in Delayed Sequence To Oppose Bolt Rebound, Patent No. 3,366,011 (issued 1/30/68); (5) Firearm Book Magazine with Straight End and Intermediate Arcuate Positions, Patent No. 3,440,751 (issued 4/29/69}; (6) Disposable Magazine Having a Pro- tective Cover and Follower Retaining Means, Patent No. 3,453,762 (issued 7/08/69); (7) Magazine with Anti-Double Feed Indentations in the Side Walls, Patent No. 3,619,929 (issued 11/16/71); (8) Blank Firing Adaptor for Gas Operated Firearm, Patent No. 3,766,822 (issued 10/23/73); Rifle Conversion Assembly, Patent No. 3,771,415 (issued 11/13/73). = 3 Colt licenses various manufacturers to produce replacement parts for the M-16. The licenses allow the manufacturers to sell the parts only to Colt or to a government which has contracted with Colt for supply of M-16 rifles. Colt places proprietary legends on all drawings given to the manufacturers and expressly prohibits the manufacturers from supplying information on the parts to third parties. PA-5 parts with existing M-16 rifles. Colt became aware of Springfield’s endeavors and, in August 1983, commenced an action based on misappropriation of trade secrets and patent infringement seeking to enjoin Springfield’s ac- tivities. Springfield denied that it had misappropriated Colt’s trade secrets in the specifications and tolerances necessary to make the replacement parts interchangeable with existing M-16 rifles claiming instead that it had “‘re- verse engineered’’4 the parts. Colt contended that to re- verse engineer the parts so as to make them interchange- able with every M-16 ever produced would be a “‘massive task”’ and thus the information had to have been taken from Colt’s proprietary drawings. The district court agreed with Colt and granted a preliminary injunction against Springfield. Colt sent letters to its suppliers informing them of the result and reminding them of their contrac- tual obligation to refrain from selling M-16 parts to anyone other than Colt or Colt’s licensees. In the course of discovery in the Springfield case, Colt learned that Christianson. had been among those who sup- plied Springfield with M-16 parts. Colt joined Christian- son and ITS as defendants in the case but, after failing to receive a preliminary injunction against them, volun- tarily dismissed them from the case. Shortly after that dismissal, on May 14, 1984, Christian- son filed the instant suit against Colt claiming that Colt’s actions in protecting its alleged trade secrets violated Sec- tions 1 and 2 of the Sherman Act and Sections 4 and 16 of the Clayton Act. Although the complaint was inartful- ly drawn, it apparently alleged that Colt—through its re- strictive agreements with suppliers, the bad faith joinder of Christianson in the Springfield case, the letters Colt subsequently sent to suppliers informing them of the out- come of the Springfield case, and other specified and 4 Reverse engineering is the process by which a completed prod- uct is systematically broken down to its component parts to dis- cover the properties of the product with the goal of gaining the expertise to reproduce the product. PA-6 unspecified conduct—had monopolized the market for M-16 replacement parts and had organized a group boycott against Christianson. Christianson later added a second count al- leging a state law claim of tortious interference with Christianson’s business opportunities. Colt answered the complaint by denying that the actions it took to protect its trade secrets violated either the antitrust laws or the state laws against tortious interference and also cross- claimed against Christianson alleging tortious interference with its own business opportunities as well as various other trade practice violations by Christianson. Christian- . son countered that defense by asserting that Colt had no valid trade secrets to defend because the information al- leged to be secret should have been disclosed in Colt’s patent disclosures for the improvement parts in question. Both sides filed motions for partial summary judgment. Christianson moved that Colt’s trade secrets be declared invalid and asked for summary judgment on its tortious interference claim and two of Colt’s counterclaims that were premised on the alleged trade secrets. Colt, in its cross-motion for summary judgment, asked the court to find that its patent disclosures were sufficient, and fur- ther asked that Christianson’s tortious interference claim be dismissed. The district court granted summary judgment for Chris- tianson, not only as to trade secret invalidity and tortious interference, but as to all counts of the complaint. The court found that Colt’s patents in the improvements at issue were invalid for failure to meet both the enablement and best mode requirements for patent validity found in 35 U.S.C. § 112.5 According to the district court, the pat- 5 35 U.S.C. § 112 states, in pertinent part, that: [A patent] specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and‘exact terms as to enable any person skilled in the art to, which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. PA-7 ents failed to meet the enablement requirement because, given the information contained in the patents, it would still be a massive undertaking-to construct the inventions so that they would be interchangeable in the M-16. Chris- tianson v. Colt Industries Operating Corp., 609 F. Supp. 1174, 1178-79 (C.D. Ill. 1985). Moreover, the court found no evidence demonstrating that the patent. disclosures were sufficient to permit one skilled in the art to make the inventions for use in any rifle. Id. at 1179. The district court also held that the patents failed to meet the best mode requirement of § 112. The court be- lieved that, given the standardization of the M-16 as the battlefieid rifle of this country’s armed forces and the need for perfect interchangeability among the parts of the rifle, the best mode of the improvement parts was for use in an M-16. However, because the patents failed to disclose the specifications and tolerances within which the parts would be interchangeable with other M-16s, the court found that best mode disclosure was not made. In addition, the court rejected any suggestion that, even assuming the best mode was for use in a rifle, Colt had disclosed its preferred method of carrying out the inventions. The district court next decided that Colt could not claim trade secret protection for the information that should have been disclosed. According to the court, the vindica- tion of the policies underlying federal patent law require that state trade secret law be preempted to the extent that state law would protect information that should have been the subject of patent disclosure. Christianson, 609 F. Supp. at 1183. The court stated that ‘{a] state may not apply its own laws in such a way as would extend the monopoly of an expired or invalid patent or afford any protection which is inconsistent with the objectives of the federal patent laws.” Jd. The district court did not stop at trade secret invalidation, however, but continued on to grant relief to Christianson which had neither been sought nor briefed in the motions for summary judgment. First, the district court ordered Colt to disgorge all of its trade secrets relating to the M-16, whether those trade PA-8 secrets were related to the patents at issue or not. Chris- tianson v. Colt Industries Operating Corp., 613 F. Supp. 330, 331 (C.D. Ill. 1985). Second, the court granted sum- mary judgment to Christianson on both count I, the anti- trust count, and count II, the tortious interference count. Christianson, 609 F. Supp. at 1185. Colt appealed the district court’s decision to the Court of Appeals for the Federal Circuit. Jurisdiction in that court was premised on the theory that this case turned almost completely on a matter of patent law. In an unpub- lished order, the Federal Circuit granted Christianson’s motion to transfer the case to the Seventh Circuit on the ground that the Federal Circuit lacked jurisdiction. The Seventh Circuit, sua sponte, transferred the appeal back to the Federal Circuit. A panel of this court held that the case arose under the patent laws of the United States, for which appellate jurisdiction was lodged exclusively in the Federal Circuit. Christianson v. Colt Industries Op- erating Corp., 798 F.2d 1051 (7th Cir. 1986). A panel of the Federal Circuit reaffirmed its original decision that only the Seventh Circuit had jurisdiction over the appeal. Nevertheless, Chief Judge Markey, the author of the Federal Circuit decision, recognized that without a decision on the merits, this appeal could volley back and forth between the circuits ad infinitum. Thus, “in the interests of justice,” the Federal Circuit reached the merits of the appeal and reversed. Christianson v. Colt Industries Operating Corp., 822 F.2d 1544 (Fed. Cir. 1987). The reasons relied upon by the Federal Circuit in reversing the judgment of the district court will be dis- cussed below. The Supreme Court, in order to settle the jurisdictional question in the case, granted certiorari and held that the Seventh Circuit has jurisdiction over this appeal. Chris- tianson v. Colt Industries Operating Corp., 108 S. Ct. 2166 (1988). According to the Court, the proper jurisdic- tional inquiry is whether patent law either creates the cause of action or is a necessary element to each of the PA-9 claims set out in the complaint, in which case the Federal Circuit would have exclusive jurisdiction, or whether some claim in the complaint relies on theories outside the pat- ent law, in which case the regional circuits would have jurisdiction. Jd. at 2174. In this case, the Court found that patent law was not a necessary component of some of the theories support- ing the claims arguably raised by the complaint: Examination of the complaint reveals that the monop- olization theory that Colt singles out (and on which the petitioners ultimately prevailed in the District Court) is only one of several, and the only one for which the patent law is even arguably essential. So far as appears from the complaint, for example, peti- tioners might have attempted to prove that Colt’s accusations of trade-secret infringement were false not because Colt had no trade secrets, but because Colt authorized petitioners to use them... . In fact, most of the conduct alleged in the complaint could be deemed wrongful quite apart from the truth or falsity of Colt’s accusations [against Christianson in the letters sent to suppliers]. According to the com- plaint, Colt’s letters also (1) contained “‘copies of in- applicable court orders” and “suggest{ed] that these court orders prohibited [the recipients] from doing business with” petitioners; and (2) “falsely stat[ed] that ‘Coit’s right” to proprietary data had been ‘con- sistently upheld in various courts.’”’ Similarly the complaint alleges that [Colt pursued the Springfield case against Christianson for] “ sasons completely un- i to the provisions and purposes” of federal pat- ent law. Id. at 2175. The Court went on to state that the same analysis could be applied to Christianson’s group boycott claim: Whether or not the patent-law issue was an “essen- tial’”’ element of th[e] group-boycott theory [that was actually litigated iin the motion for summary judgment], PA-10 however, petitioners could have supported their group- boycott claim with any of several theories having nothing to do with the validity of Colt’s patents. Equally prominent in the complaint, for example, is a theory that the alleged agreement was unreason- able not because Colt had no trade secrets to pro- tect, but because Colt authorized petitioners to use them. Id. at 2175-76 (emphasis in original). Thus, because the antitrust claims made in Christianson’s complaint could be supported with theories having nothing to do with pat- ent law, jurisdiction over the appeal should have been taken by the Seventh Circuit. The Court, without com- menting on the underlying reasoning of the Federal Cir- cuit, concluded that the court’s lack of jurisdiction com- pelled it ‘‘to disapprove of [the] decision to reach the merits anyway” and vacated the merits decision. Jd. at 2178. Secure in the knowledge that this court has jurisdiction, we finally reach the merits of Colt’s appeal and find that we must (1) reverse the district court’s judgment grant- ing summary judgment to Christianson, and (2) remand the case to the district court for (a) entry of summary judgment for Colt on the issue of the adequacy of its pat- ent disclosures, (b) disposition of the remaining summary judgment issues, and (c) proceedings on the non-patent based theories contained in Christianson’s complaint. II. Initially, we determine what weight, if any, to give to the merits decision of the Federal Circuit. As we dis- cussed above, the Supreme Court vacated the Federal Circuit’s decision on the ground that it was inappropriate for the Federal Circuit, in the interests of justice, to decide the merits of a case over which it did not have jurisdiction. Nevertheless, there is no indication that the Supreme Court found any error in the Federal Circuit’s decision. Thus, although vacated, the decision stands as al hl PA-11 the most comprehensive source of guidance available on the patent law questions at issue in this case. See Coun- ty of Los Angeles v. Davis, 440 U.S. 625, 646 n.10 (1979) (Powell, J., dissenting) (‘‘Although a decision vacating a judgment neccesarily prevents the opinion of the lower court from being the law of the case, the expression of the court below on the merits, if not reversed, will con- tinue to have precedential weight .. . .’’) (citations omit- ted); U.S. ex rel Espinoza v. Fairman, 813 F.2d 117, 125 (7th Cir.), cert. denied, 107 S. Ct. 3240 (1987) (decision vacated by Supreme Court remains persuasive precedent where Court did not reject the decision’s underlying reasoning). Although we recognize that the Federal Cir- cuit’s decision does not bind us, the comprehensive nature of the decision, along with the recognition that Congress created the Federal Circuit with the goal of achieving uniformity and coherence in the patent laws, see Chris- tianson v. Colt Industries Operating Corp., 822 F.2d 1544, 1551 (Fed. Cir. 1987), counsel us against straying far from the court’s thorough analysis of the difficult issues pre- sented by this case. With that in mind, the first substantive issues we must decide are whether the district court erred in finding that Colt failed to meet the enablement and best mode require- ments of § 112. We review de novo the district court’s determination of a summary judgment motion, Commer- cial Union Ins. v. Ramada Hotel Operating Co., 852 F.2d 298, 300 (7th Cir. 1988), and use the same standard of decisionmaking as that employed by the district court. Jd. Thus, we will affirm the grant of summary judgment only where there are no genuine issues of material fact and the moving party is entitled to judgment as a matter of law. Fed. R. Civ. P. 56(c). The burden is on the moving party to support the motion for summary judgment and, where that has been achieved, the adverse party must then ‘‘set forth specific facts showing that there is a gen- uine issue for trial.’”’ Fed. R. Civ. P. 56(e). If we deter- mine that the district court did err, under these stan- dards, with respect to the validity of Colt’s patents, we PA-12 must then determine if there is any reason to return this case to the district court for further proceedings. A. Enablement A patent is enabling when the disclosures made in the patent application are sufficient to allow a person skilled in the art to make and use the claimed invention. Spectra- Physics, Inc. v. Coherent, Inc., 827 F.2d 1524, 1532 (Fed. Cir.), cert. denied, 108 S. Ct. 346 (1987). The requirement is designed to ensure that the subject matter of the claimed invention is generally in the possession of the public and ready to be reproduced following the expiration of the pat- ent period. Jd. To determine whether the disclosure is enabling, a two-part analysis is employed. First, we must delimit the scope of the claimed invention. DeGeorge v. Bernier, 768 F.2d 1318, 1323-24 (Fed. Cir. 1985); Plastic Container Corp. v. Continental Plastics, 607 F.2d 885, 897 (10th Cir. 1979), cert. denied, 444 U.S. 1018 (1980). Second, we must look to the disclosures made in the pat- ent to ascertain whether, given that level of disclosure, a person skilled in the art could sucessfully reproduce the claimed invention in its entire scope. DeGeorge, 768 F.2d at 1324. Because only the claimed invention receives pat- ent law protection, the disclosures need generally be no greater than the claim. Technicon Instruments v. Alpkem Corp., 2 USPQ 2d 1729, 1742 (D. Or. 1986). If the inven- tion can be reproduced in its entire scope, then the pat- ent specifications are enabling. In this case, the parties hotly contest the issue of the scope of the inventions. Christianson alleges that the in- ventions are improvements to parts specifically made for an M-16 rifle. As such, Christianson believes that the scope of the inventions includes the ability to use the inventions with every M-16 in existence—i.e., to make the parts “‘in- terchangeable.”’ To make the parts in each patent inter- changeable, Colt would have had to have disclosed the specifications and tolerances which permit interchangeabil- ity. The district court, in granting summary judgment to Christianson, expressly adopted this analysis. PA-13 Colt, on the other hand, takes the position that the in- ventions have nothing to do with the M-16. Colt points out that the patent claims mention neither the M-16 nor interchangability as features of the inventions. Thus, Colt believes the claims are simply for rifle parts and would delimit the scope of the invention without regard to the ability of the invention to interact with the M-16. Christianson answers Colt’s argument by pointing out that the Federal Circuit has held that the scope of the invention can sometimes exceed the claim actually made in the patent. White Consolidated Industries, Inc. v. Vega Servo-Control, 713 F.2d 788 (Fed. Cir. 1983). In White, the invention at issue was for a system which controlled the operations performed by automated machinery through the use of a computer program. A key problem for the invention was to translate the language of the computer into a language that the machinery would understand and respond to. At the time the invention was patented, the only language translator available was a computer pro- gram called SPLIT, which was a trade secret of the Sund- strand Corporation, White’s predecessor in interest. The Federal Circuit, while recognizing that the language trans- lator was not claimed as part of the invention, neverthe- less held that the failure to disclose its identity violated the enablement requirement of § 112. According to the court, the translator should have been disclosed since ‘“‘it [was] an integral part of the disclosure necessary to enable those skilled in the art to ‘make and use the same.’ ”’ Jd. at 791 (emphasis added); compare International Telephone and Telegraph Corp. v. Raychem Corp., 538 F.2d 453, 460 (1st Cir. 1976), cert. denied, 429 U.S. 886 (1976) (no need to disclose compound which was not claimed to be part of the invention and was not “essential to the production of the patented” invention). We think that White is inapposite to the facts of this case. The disclosure of SPLIT was required because it was an “integral part’”’ of the invention—the invention would not work, even if all other information was disclosed, without disclosure of the program. In the instant case, PA-14 the specifications and tolerances are not an “integral part”’ of the inventions. The inventions will work in a rifle, as- suming all the other information about the inventions is disclosed, without any data regarding the specifications and tolerances required for commercial utilization of the inventions in the M-16. See DeGeorge, 768 F.2d at 1324 (claim as to circuitry to be interfaced with word processor was enabling where there was disclosure of “detailed, claimed circuitry without requiring detailed disclosure of all related, wnclaimed circuitry [in the word processor] with which TCCPI might be interfaced’’) (emphasis in orig- inal). Thus, the scope of Colt’s inventions cover only the claims actually made, claims involving rifle parts, and do not cover the specifications and tolerances required to in- terchange the inventions with M-16s already in existence. We now reach the second step of the enablement in- quiry, which requires us to determine, given the scope of the inventions, whether sufficient information has been disclosed to allow a person skilled in the art to make and utilize the inventions. Christianson claims, in regard to this part of the analysis, that there is no evidence that enough information was supplied to enable one skilled in the art to use the inventions in any weapon. Christian- son argues that the deposition testimony of Colt’s own witnesses support this contention. First, Christianson points to the testimony of Harold Waterman, Colt’s Manager of Product Engineering for the Firearms Division, to the ef- fect that at least one of the inventions, the bolt assist, could not have been used in any rifle given the informa- tion provided in the patent. Second, Christianson recites the testimony of Seth Bredbury, Colt’s expert witness, who testified in the context of the Springfield case that it would be a “massive task” to reverse engineer the inven- tions at issue to make them interchangeable with M-16s already in existence. Christianson admits that Bredbury later testified that the inventions could be incorporated into firearms without undue experimentation, but claims that that testimony has no factual support and is refuted by his earlier testimony. PA-15 The district court also pointed to this testimony from Waterman and Bredbury to support its conclusion that the patent disclosures were non-enabling. The district court found that Bredbury’s statement that “ ‘undue ex- perimentation’ would not be required is not substantiated by any statement of fact.” Christianson v. Colt Industries Operating Corp., 609 F. Supp. 1174, 1179 (C.D. Ill. 19865). The district court went on to find that “[t]here is no evi- dence that any weapon other than the Colt weapons could or do use any of the inventions.” Jd. (emphasis added). The federal circuit found, and we agree, that the district court’s finding in regard to use in weapons other than the M-16 was unsupported by the record. Christianson, 822 F.2d at 1561. First, and most important, Christian- son’s counsel acknowledged at oral argument that these inventions could be made for use in rifles; counsel’s only claim was that they could not be made for use in the M-16. Second, the plaintiff has misconstrued the testimony of Waterman. Waterman did not testify that the bolt as- sist could not be used in a weapon, given the informa- tion provided in the patent, but instead simply opined, that even one skilled in the art could not build an entire weapon given only the information about one part.® Third, 6 The complete exchange between Mr. Waterman and Christian- son’s attorney was as follows: Q: Let me ask, would it be possible to make an M16 by reference to this patent 3,236,155 [the bolt assist]? A: No. Q: Do you think you could make a weapon that would have incorporated the bolt assist simply by the use of these draw- ings and this text and the exercise of ordinary skill? A: By the use of this only? No. Q: Would your answer be the same to the question if you had tools that would be available to people of ordinary skill in this field, but if you didn’t have any of Colt’s proprietary, alleged proprietary tools or gauges? (Footnote continued on following page) PA-16 there is no inconsistency between Bredbury’s statements in the Springfield case and his deposition statement here. It is undisputed that it would be a massive task to re- verse engineer the parts so that they would be inter- changable with all other M-16s. But that is not inconsis- tent with Bredbury’s testimony that the patent disclosures enable one skilled in the art to put the inventions to use in some other rifle that does not require interchangeable parts. Thus, no evidence in the record supports the plain- tiffs assertion, accepted by the district court, that the information provided by Colt in the patents was non- enabling with respect to the claimed inventions. Instead, we agree with Colt that the unrebutted evidence shows that the patent disclosures for the claimed inventions were enabling. 6 continued A: Let me ask this. You’re going to use this document [the patent disclosures for the bolt assist]? Q: Yes. A: No other document? Q: No, but you will have available to you everything that a gun manufacturer of ordinary skill in the gun manufacturing business would have, but that wouldn’t include any secret, pro- prietary gauges that we have been talking about that Colt may have or drawings that Colt may have. It isn’t interchangeable? The question wouldn’t require interchangeability. It isn’t functional or it is functional? It would have to be a functional weapon. meee A: Well, for example, this document does not refer to caliber. This document does not refer to a cartridge. If one was to take this document and I have no idea that the document is to scale or what caliber or anything about it, I would have to say that the use of this document, no, you could not. You could get an idea of the mechanism, and that would just about be it. PA-17 B. Best Mode Section 112 requires that “the specifieation . . . set forth the best mode contemplated by the inventor of carrying out the invention.” Thus, if the applicant develops specific instrumentalities or techniques which are recognized as the best way to carry out the invention, then the best mode requirement obliges the applicant to disclose that information. Spectra-Physics, 827 F.2d at 1537. The re- quirement contains a subjective standard; we will find non- compliance only if the patentee has concealed, whether knowingly or unwittingly, his or her preferred embodi- ment of the claimed invention. DeGeorge, 768 F.2d at 1324; Spectra-Physics, 827 F.2d at 1535. Again, the focus of the best mode requirement, as it was with the enable- ment requirement, is on the claimed invention. Randomex Inc. v. Scopus Corp., 849 F.2d 585, 588 (Fed. Cir. 1988); Plastic Container Corp., 607 F.2d at 897.7 Thus, before determining whether there is evidence of concealment, the scope of the invention must be delimited. The district court in this case, again adopting the plain- tiff: analysis, determined that the scope of the claims in- volve inventions which are “fully interchangeable with the corresponding part in every M-16 ever produced.” Chris- 7 In Plastic Container Corp., the defendant in a patent infringe- ment action alleged that the plaintiff's disclosures in its patents for prescription drug containers were inadequate for failure to meet the best mode requirement. In a previous action involving the plaintiff, a court had determined that the plaintiff's disclosures did not satisfy the best mode requirement with respect to the con- tainer and the defendant claimed that that determination should be given collateral estoppel effect. Following the court’s oviginal deter- mination, the plaintiff reapplied for a patent for the container and a patent was issued. The Tenth Circuit refused to give collateral estoppel effect to the previous decision because the defendant over- looked the fact that in reapplying for a patent, the plaintiff changed the scope of the invention. Since the features the defen- dant claimed should have been disclosed were features only of the original claim, and not of the invention at issue in the case at bar, the court found that the best mode requirement was fulfilled. PA-18 tianson, 609 F. Supp. at 1181. The district court then went on to find that Colt failed to disclose the best mode of using those inventions because it omitted the specifica- tions and tolerances necessary to make the parts inter- changeable with M-16 rifles already in existence. However, as we discussed above in relation to the enablement re- quirement, the district court erred in its definition of the scope of the inventions. Nowhere in the claims is it stated that these inventions purport to be interchangeable with every M-16 ever produced or that the inventions have anything to do with the M-16 at all. The inventions are improvements to parts used in a rifle, any rifle, and we will look to those inventions to determine if the inventor has concealed his or her preferred embodiment. Given that the claimed inventions involve parts for rifles, without specifying any particular brand of rifle, the district court’s determination that Colt failed to disclose the best mode for using these inventions was unsupported by the record. The Federal Circuit succinctly outlined the district court’s error as follows: The best mode requirement assures that inventors do not conceal the best mode known to them when they file a patent application, but the ‘“‘best mode’”’ is that of practicing the claimed invention. Jt has nothing to do with mass production or sales to cus- tomers having particular requirements. (emphasis added) [See Indecor, Inc. v. Fox-Wells, Inc., 642 F. Supp. 1478, 1490 (S.D.N.Y. 1986)]. In this case, inter- changability with M-16 parts appears nowhere as a limitation in any claim, and as Christianson concedes, the patents make no reference whatever to the M-16 rifle. Thus the best mode for making and using and carrying out the claimed inventions does not entail or involve either the M-16 rifle or interchangeability. The ‘best mode” for making and using the claimed parts relates to their use in a rifle, any rifle. There is nothing anywhere in the present record indicating that any of the patents fail to meet that requirement. PA-19 Christianson, 822 F.2d at 1563 (emphasis in original ex- cept where otherwise noted). Thus, because this case is unlike cases where the best mode requirement has not been fulfilled because of some sort of concealment—e.g., Union Carbide Corp. v. Borg-Warner Corp., 550 F.2d 355 (6th Cir. 1977); Dana Corp. v. IPC Limited Partnership, 860 F.2d 415 (Fed. Cir. 1988) (disclosure in patent for valve stem seal inadequate where flouride surface treat- ment not disclosed; tests showed that the surface treat- ment was “necessary”’ to satisfactory performance of the seal)—we ‘find no evidence in the record to support the district court’s determination that Colt failed to disclose its preferred embodiment of these inventions.§ Again, the evidence of record shows that Colt did disclose the best mode of carrying out its inventions. ITI. The district court held that Colt could claim no protec- tion under state trade secret law for the specifications and tolerances necessary to make the improvement parts interchangeable with existing M-16 rifles. The only ground cited by the district court for the invalidation of the trade secrets was that Colt should have disclosed those specifica- tions and tolerances in its patent applications pursuant 8 Christianson objects, quite understandably, that if Colt can val- idly claim trade secret protection, it will be able to protect its commercial products from competition even after the expiration of its patents. Christianson points out, and we agree, that the best mode requirement is intended to allow the public to compete fair- ly with the patentee following the expiration of the patents. See Phillips Petroleum Co. v. Sid Richardson Carbon & oline Co., 293 F. Supp. 555, 558 n.2 (N.D. Tex. 1968) (‘{TJhe price an inventor must pay for his seventeen year patent monopoly is a disclosure of the invention which would enable persons skilled in the perti- nent art to practice it.’’). While we sympathize with Christianson’s frustration in being unable to compete with Colt, and Christian- son may yet prove that Colt has violated the antitrust laws, for the reasons discussed we cannot vindicate its attempt to rectify the situation through an attack on Colt’s patent disclosures. PA-20 to the enablement and best mode requirements. Yet, as we discussed above, the district court erred if finding that Colt failed to meet the enablement and best mode require- ments. Thus, the district court erred in granting summary judgment to Christianson on the issue of trade secret in- validity. Moreover, everything that followed from the dis- trict court’s trade secret decision, including the require- ment that Colt disgorge all of its trade secrets in the M-16 and the grant of summary judgment on the antitrust and tortious interference claims, must be vacated. The district court also erred in denying that part of Colt’s motion for summary judgment asking the court to declare that its patent disclosures were adequate. As discussed above, the non-moving party, to avoid summary judgment, must set forth specific facts to show that there is genuine dispute about a material fact. Anderson v. Liberty Lobby, 106 S. Ct. 2510, 2511 (1986). In this case, Christianson has set forth no facts to exhibit a dispute about whether the enablement and best mode requirements, properly understood, were fulfilled by Colt’s patents. Thus, because there are no genuine issues of material fact remaining on the issue of patent validity, summary judgment should be entered for Colt on that issue. The case does not end there, however, for the district court must still determine whether Colt, Christianson, or neither is entitled to summary judgment on count II of Christianson’s complaint. Christianson’s complaint states that even if the patents are valid, Colt still cammot claim trade secret protection because Colt gave Christianson permission to make the parts.® If the district court should determine that Colt’s 1976 permission did not extend to 8 Christianson’s complaint states that: “In 1976, prior to the ex- piration of said patents, ITS [International Trade Services] ex- pended funds to have manufactured certain tooling to be used for the manufacture of M-16 parts and accessories . . . . Colt gave ITS permission to use the tooling for which it had expended funds in 1976 to the end that suppliers . . . could make M-16 parts to sell to customers... .” PA-21 Christianson’s actions at issue in this case, assuming that that issue is susceptible to determination on summary judgment, then the district court should enter summary judgment for Colt on Count IT. If the district court deter- mines that the permission does cover Christianson’s ac- tions, then the district court must decide if the other de- fenses Colt raises to the tortious interference claim, such as its good faith reliance on what it thought were valid trade secrets, have merit. It will be up to the district court to assess all of these issues, and any other issues properly raised in the summary judgment motions and not disposed of by this case, on remand. IV. For all the reasons discussed above, we REVERSE the decision of the district court and REMAND for further pro- ceedings not inconsistent with this opinion. A true Copy: Teste: Clerk of the United States Court of Appeals for the Seventh Circuit q PA-22 APPENDIX B —————— United States District Court Central District of Illinois ae CHARLES R. CHRISTIANSON AND ) INTERNATIONAL TRADE SERVICES, ) INC., ) ) Plaintiffs, ) ) v. ) Consolidated Civil ) Action Cot INDUSTRIES OPERATING CORP., ) Nos. 84-4056 and a Delaware corporation, ) and 83-4072 ) ) Defendant. FINAL JUDGMENT ON LIABILITY This case was before this court on the pleadings, including cross-motions for summary judgment. Plaintiffs, Charles R. Christianson and essentially his corporation, International Trade Services, Inc., led a complaint against Colt Industries Operating Corp. (Colt Industries) for damages, injunctive and equitable relief, for injuries resulting from Colt Industries violations of the antitrust laws (Count I) and amended it to include a count for intentional wrongful interference with busi- ness relations by Colt Industries and requesting actual and punitive damages (Count IT). Colt Industries denied violations and asserted numerous counterclaims and affirmative defenses. Plaintiffs denied Colt Industries counterclaims and asserted affirmative defenses. Patent infringement is not an issue in this case. This court has jurisdiction over the subject matter of this action and the parties before it under 28 U.S.C. PA-23 $1332 and 15 U.S.C. §§4, 15 and 26. Venue in this district is proper under 28 U.S.C. §1391(b) and (c) and 15 U.S.C. §15. Based on the motion papers and accompanying briefs and the representations of counsel at a hearing, all matters alleged in plaintiffs complaint and those matters in defendant’s coun- terclaims raised in the motion papers were considered by the court to be placed before it for ruling, and therefore the court has considered and has duly ruled upon the same as a matter of summary judgment upon undisputed material facts. This court’s decision is based upon the pleadings, the deposi- tions, answers to interrogatories and admissions on file, together with the affidavits and other evidence presented, the briefs, arguments, and this court's interrogation of counsel at a hearing. Among the material considered was live testiraony before this court in Colt Industries v. Springfield Armory, Inc., et al., Civil Docket No. 83-4072, with which this cause was heretofore consolidated. That testimony was identified by the transcript portions provided as exhibits to the instant motion. This court has determined that summary judgment is appro- priate as indicated in this court's Memorandum Decision and Order entered on May 24, 1985, which Memorandum is incorpo- rated herein. IT IS THEREFORE ORDERED AND ADJUDGED that: 1. There having been injury to plaintiffs’ business and prop- erty, a trial shall be held, as subsequently scheduled by this court, to determine the amount and types of damages to which plaintiffs may be entitled, and such other matters as may remain to be resolved by trial. 2. A hearing shall be held after such trial to determine the amount of attorneys fees and interest and costs to which plain- tiffs may be entitled. 3. The disclosures made in Colt’s M-16 patents are insuffi- cient to satisfy either the enablement or best mode require- ments of 35 U.S.C. $112. Accordingly, the following patents were invalid from their inception: PA-24 3,236, 155; 3,292,492; 3,301,133; 3,336,011, 3,440,751; 3,453,762; 3,619,929; 3,771,415; 3,977,296. 4. In view of Colt Industries wrongful retention as its trade secrets of information that it should have disclosed, under 35 U.S.C. §112, Ist paragraph, in its M-16 patents, so that others could have made and used the M- 16 inventions for use with the M-16 (all references herein to M-16 are intended to include its various versions such as the M-16A1 and the M-16A2, where the context permits), such information is hereby declared void and unenforceable as trade secrets. Colt Industries monopolization of the M-16 market and sub-mar- kets and agreements in restraint of trade in connection with its suppliers and distributors require injunctive relief for an ade- quate remedy. 5. Though some of the M-16 trade secrets did not directly have to be disclosed in the patents for various reasons of timing and subject matter, in order to best place the public in a position it would have been in but for the wrongful acts of Colt Industries, and provide for proper competition, it is hereby declared that all trade secrets in technical information relating to the M-16, which came into existence prior to the entry of this order, are hereby declared void and unenforceable. 6. To the extent that any of the counterclaims in the action remain unresolved, and in accordance with Rule 56(d) of the Federal Rules of Civil Procedure, it is determined that the invalidity and unenforceability of any and all of Colt Industries trade secrets in technical information relating to the M-16 which were in existence prior to the entry of this order, is taken as conclusively established with respect to all subsequent pro- ceedings in this case. 7. Colt Industries, its officers, agents, servants, employ- ees, attorneys, and those entities in active concert or participa- tion with them (who receive actual notice of the order by personal service or otherwise) are hereby enjoined from asserting or seeking to enforce, in any manner which would impede or interfere with plaintiffs in their businesses or PA-25 employment, any form of trade secret right in any technical information relating to the M-16 wherein such information was in existence prior to the entry of this order. 8. Colt Industries is directed to preserve until June 1, 1989, such technical information relating to the manufacture of the M-16 which was in existence prior to the entry of this order, and to provide it to either plaintiff upon request within 30 days of such request. Colt Industries may charge a reasonable and customary fee for copying charges for handling of any such request. 9. On documents or drawings which Colt Industries here- after distributes bearing technical information in existence prior to the date of this order and relating to the M-16, Colt Industries shall insure that no proprietary stickers and/or Colt Industries confidentiality designations shall be used in connec- tion with potential customers or suppliers of plaintiffs in a fashion which would indicate that any such technical informa- tion could be protectible as a trade secret. 10. Colt Industries shall serve a copy of this Order upon all potential customers or suppliers of plaintiffs which Colt Indus- tries has within the past four years: a. licensed M-16 trade secrets, b. threatened enforcement of M-16 trade secrets, or ce. sent letters claiming rights in M-16 trade secrets for the past four years. 11. Colt Industries’ Fifth and Sixth counterclaims are hereby dismissed with prejudice. Pursuant to Rule 54(b), this court determines there is no just reason for delay and directs the entry of final judgment in favor of Christianson and ITS art? against Colt Industries on said claims, and judgment is hereby entered accordingly. 12. Final judgment is hereby entered as to plaintiffs’ claims for liability on Counts I and II of plaintiffs’ complaint in favor of plaintiffs against defendant. PA-26 13. The court is of the opinion that this judgment involves a controlling question of law as to which there is substantial ground for difference of opinion, and that an immediate appeal from this entire judgment may materially advance the ultimate termination of the litigation. /s/ Robert D. Morgan United States District Judge Entered: July 19, 1985 ee 3 PA-27 APPENDIX C United States District Court Central District of Illinois CHARLES R. CHRISTIANSON, AND INTERNATIONAL TRADE SERVICES, INC., Plaintiffs, v. No. 84-4056 ) ) ) ) ) ) ) ) Cott INDUSTRIES OPERATING CorpP., ) ) ) Defendant. MEMORANDUM DECISION AND ORDER Plaintiffs, Charles R. Christianson and essentially his corpo- ration, filed this complaint against Colt for damages, injunctive and equitable relief, under §§4 and 16 of the Clayton act (15 U.S.C. §§15 and 26), upon their allegations that Colt has vio- lated Sections 1 and 2 of the Sherman Act (15 U.S.C. §8§1 and 2). Colt has answered denying violation and asserting numerous affirmative defenses and counterclaims. Venue exists in this district under 15 U.S.C. §15 and 28 U.S.C. §1391(b) and (c). The complaint is grounded on allegations that Colt achieved and now attempts to maintain an unlawful monopoly on the manufacture and sale of parts for the M-16 standard military rifle. In the 1950's Colt obtained a patent for a gas-operated, automatic rifle which was adopted in 1964 by the United States as its standard military firearm. The Government designated it as the M-16. In ensuing years, Colt obtained several other patents on improvements of parts for that weapon. With a few PA-28 exceptions, not critical to this decision, all such patents have now expired. Over the years, Colt entered into a licensing agreement with the Government for Government production of the M-16 for its use and for sale to foreign governments under the patents and drawings and technical data supplied by Colt. It also entered into agreements with the government of the Philippines, and with certain other foreign governments. authorizing the manufacture of the rifles to arm each such nation’s military forces. It further entered into contracts with various suppliers in the United States for the manufacture and sale of component parts for the rifle. Those licenses restricted the sale of such parts to Colt and the United States Govern- ment only. With each such agreement, defendant supplied drawings and technical data for use by the various licensees. All agreements contained restrictive clauses which prohibited the sale of parts to all except the authorized clients, and which prohibited the disclosure of defendant’s drawings and technical data to anyone not specifically authorized by the agreement to see them. As to domestic licenses, the proscription excluded only defendant and the Government. The proscription in the foreign licenses limited sale vo each nation’s own military force and disclosure only to appropriate government officials. The complaint alleges that Colt has employed those restrictive clauses in an attempt to deny to any others the right to man- ufacture such rifles and parts notwithstanding the fact that Colt’s patents have been expired for several years. It is alleged that Colt attempts, by such practices, to foster and maintain its monopoly position in the manufacture and merchandising of the products as if its patents still remained in force. In 1983, Colt filed in this court a suit against Springfield Armory, Inc., and others, under docket no. 83-4072, to enjoin the performance of a contract of those named defendants for the sale of M-16-type rifles to a Central American government. A preliminary injunction was issued following a hearing. These plaintiffs were ultimately joined, and that decision was affirmed by the Court of Appeals for the Federal Circuit. Further discussion of the latter decision appears in a later PA-29 context. The ground for complaint in-that case was that Colt would be irreparably damaged by the unauthorized use of Colt’s drawings and proprietary information which Colt claimed were trade secrets and its exclusive property. That case has heretofore been settled by the parties and closed. Plaintiffs filed the pending complaint against Colt in 1984. The cause was scheduled for trial late in that year. That sched- ule was cancelled on the representation by the parties that cross motions for summary judgment would be filed. Those motions are now before the court for decision. The thrust of plaintiffs’ motion is the position that Colt cannot assert its claims of trade secrecy against plaintiffs because it had, in its now-expired patents, failed to make the full disclosures of its claims of invention as required by 35 U.S.C. §112. Plaintiff Christianson has been marketing M-16 components for approximately eight years. Initially, Colt acquiesced to his use of drawings obtained from a Colt foreign licensee. It also appears that during that period other suppliers advertised for the sale of M-16 parts, as well as some M-16 drawings. It further appears that significant M-16 manufacturing not autho- rized by Colt licenses was conducted by Colt’s foreign licensees and domestic suppliers, all without serious objection from Colt. Plaintiffs argue, not implausibly, that Colt was not con- cerned with such activities so long as its U.S. position was protected by its basic patents. Plaintiffs assert that Colt resorted to legal action to try to restore its monopoly position only after its basic patents had expired. A critical factor here clearly is the unique character of the product involved. A key criterion of a military weapon is that there be complete interchangeability of parts between all weapons of the same general kind which have ever been pro- duced for use by a military force. Critical to that requirement is the ability to scavenge weapons from a battlefield for parts replacement in all other like weapons. That critical factor was emphasized by Colt before this court in the hearing for a preliminary injunction in the Springfield case. Colt took the re PA-30 position that the M-16 had an absolutely essential feature of parts interchangeability which was critical to the use of the rifle on the battlefield, and that that feature could be satisfied only by the use of Colt’s drawings and trade secrets. It asserted that the M-16 was not reverse enginerable. In that context plaintiffs assert: “Thus [Colt] avoided Syntex Ophthalmics, Inc. v. Novicky, 591 F.Supp. 28, 991 U.S.P.Q. 860 (N.D. Ill. 1983), aff d 28 Pat. Trademark and Copyright J. (BNA) 717 (Fed. Thus, to extend its exclusive position well beyond the expiration of its patents, Colt had to argue that the M-16 was not reverse enginerable.” To a degree, as plaintiffs argue, Section 112 places Colt on the horns of a dilemma. To sustain its claim for an injunction in case 93-4072, Colt had to take the position that interchangeability of parts was a must, and that such interchangeability could be fully obtained only by the use of Colt’s drawings and other claimed trade secrets. In that context, a Colt expert testified that it would be possible from the base patents for a person skilled in the art to make a rifle similar to that claimed by the patent and by use of reverse engineering of a Colt firearm, but that would be a “massive” task. Inthe context of these motions, that same expert has executed an affidavit which asserts that the making of an M-16, using the patents by a person skilled in the art, would not entail undue experimentation. A review of Colt Industries Operating Corp. v. Springfield Armory, Inc., et al., (Fed. Cir., April 19, 1984, unpublished), in which this court’s issuance of a preliminary injunction was affirmed, seems appropriate in this context. The single issue before that court was the appropriateness of the preliminary injunction upon the record made in that hearing. It did affirm the judgment of this court. Pertinent to these motions now, the there court said: PA-31 “Although Springfield’s 35 USC 112 arguments, particu- larly related to best mode, have an appearance of validity (See White Consolidated Industries, Inc. v. Vega Servo- Control, Inc., 713 F.2d 788, * * * (Fed. Cir. 1983), the evidence of record is totally lacking in specifics. * * *” Although obviously that statement cannot be read as a pre- determination by the Federal Circuit of the issues now before this court, it can and should be accepted as the statement of a recognition by that court that possibly serious issues of Coit’s compliance with Section 112 could exist, subject to substantia- tion by adequate evidence. To that extent, and to that extent only, that statement does have a bearing on the issues now before this court. The crux of the issues presented by these motions is the language of 35 U.S.C. §112, which provides that a patent to be valid must: “* * * contain a written description of the invention, and of the manner and process of making it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.” In re Gay, 309 F.2d 769 (CCPA 1962), said that Section 112 imposed both an enabling requirement and a best mode requirement to sustain the validity of a patent. The court there said that the enabling requirement was designed to ensure that the printed patent disclose an invention in sufficient detail to enable persons skilled in the art to make and utilize the invention, and that the best mode requirement was designed to preclude inventors from applying for patents while at the same time concealing from the public the preferred embodiment of the inventive concept. The “enablement” requirement of the statute is satisfied if a person of ordinary skill in the art is able to make and use, without undue experimentation, a function- ing version of the invention from the disclosures of the patent coupled with information which is already publicly known. White Consolidated Industries, Inc., v. Vega Servo-Control, Inc., 713 F.2d 788 (Fed. Cir. 1983). PA-32 Thus Section 112 provides the quid pro quo for the grant of a patent monopoly under the Act. The Patent Act was designed to foster and enhance the development and disclosure of new ideas and the technical advancement of knowledge. Upon a determination that a patent claim does contain the elements of inventive novelty, the claimant becomes entitled to a monopoly on the right to practice and exploit the patented invention fora substantial but limited period of time. At the same time, the issued patent becomes a part of the public domain, subject only to the patentee’s exclusive right to exploit the patented invention as defined by him during the limited monopoly period. Others are free during the period of that monopoly to devise improvements upon the patented concept, without redress to the patentee, so long as those improvements do advance the state of the art and public knowledge. Yet the patentee can assert his monopoly rights against those who adopt only superficial modifications which fall short of a true advancement of the art. In exchange for his limited monopoly position, the patentee must disclose in his patent sufficient information to enable others skilled in the art to employ and profit from the invention after the period of limited monopoly has expired. Section 112 simply delineates the scope of the disclosures which are necessary to accomplish and protect those public purposes by requiring that the patent applicant fully describe the subject matter as to which he is asserting a claim to a statutory right to a monopoly. CONCLUSION It is necessary here to conclude, from the voluminous exhib- its, pertinent patents, affidavits, depositions and other mate- rials submitted to the court, and in keeping with the patent concept, that plaintiffs are entitled to judgment in their favor. The disclosures made by Colt in obtaining its patents satisfied neither the enablement nor best mode requirements of 35 U.S.C. §112. ~ PA-53 DISCUSSION The enablement requirement is fulfilled if a person of ordinary skill in the art is able, without undue experimenta- tion, to make and use some mode of the invention from the disclosures of the patent and from what was previously publicly known. White, supra; Engelhard Industries, Inc. v. Sel-Rex Corp., 253 F.Supp. 832 (D.N.J.1966), aff'd 384 F.2d 877 (3d Cir. 1967). Engelhard points up the distinction between enable- ment and best mode by its holding that the enabling require- ment was satisfied, but that there had been‘a failure to disclose the best mode for carrying out the invention. To a large degree, Colt, in opposition to the plaintiffs’ motion, has attempted to create a question of fact from conflict- ing sworn statements of its own expert witnesses. It employed a Seth Bredbury who now states in his affidavit as to the bolt assist patent (No. 3,236,155) that a person of ordinary skill in the firearms art could design and produce a gas-operated fire- arm of the type shown, incorporating the invention defined in the patent, without undue experimentation. Yet, Mr. Bred- bury, in his prior testimony based upon his review of the Colt patents, stated that a person skilled in the art could design a rifle very much like the M-16, which could perhaps function as well, but that that would be a massive undertaking. While he did not define the word “massive,” it must be recognized that that term means unusually large, or, as defined in Webster's New Collegiate Dictionary, “large in comparison to what is typical.” The use of the word “massive” must imply the use of undue experimentation before any practical result could be achieved. Harold Waterman, the head of Colt’s firearm product engineering, testified, in reviewing the same bolt assist patent, that “you could not” make a weapon by the use of that patent. “You could get an idea of the mechanism, and that would just about be it.” The question presumed a person skilled in the field of manufacturing firearms who had available all tools and equipment for firearms manufacture, but not including any gauges in which Colt claims a proprietary interest as trade secrets. a eae ee PA-34 Mr. Bredbury’s current statement that no “undue experi- mentation” would be required is not substantiated by any statement of fact. There is no evidence that any weapon other than the Colt weapons could or do use any of the inventions. It seems both reasonable and unavoidable to presume that those skilled in the art would have devised a weapon to compete with the Colt product in the 20 years elapsed since the M-16 became the adopted weapon of the United States military, if a compara- ble weapon could be made without undue experimentation and without access to Colt drawings and technical information. The bare statement of the conclusion that it could, without any factual substantiation, cannot create an issue of fact. The ques- tion of enablement has been held to be a question of law. | Raytheon Co. v. Roper Corp., 724 F.2d 951, (Fed. Cir. 1983). An | issue of fact is not created by the statement of an unsubstanti- ated legal conclusion. £.9., Application of Brandstadter, 434 F.2d 1395 (CCPA 1973). Consideration of the best mode requirement of $112 should begin with the distinction between the two requirements of the statute. The enablement requirement is designed to allow the public to practice the invention in a generalized fashion. The concern of the best mode requirement is the prevention of abuse of the patent monopoly by its extension beyond the limited period which the statute permits. Jn re Gay, supra, failure of disclosure of the best mode for practicing the invention could have that effect when the patentee fails to disclose essential information. Upon expiration of the limited patent monopoly, the public is entitled to practice the invention without restriction, including the nght to produce and market the patentee’s commercial product without modification. The patent statute contemplates that, in exchange for the grant of a limited monopoly, the patentee will make a full disclosure of the patented idea to such extent that it may be fully utilized by those skilled in the art once the patent monopoly has expired. Whether or not the best mode contemplated by the inventor for carrying out his invention was disclosed, is a question of fact. McGill Incorporated v. John Zink Company, 221 U.S.P.Q. 944, 951 (Fed. Cir. 1984). | PA-35 The disclosures required by §112 can impose a burdensome task on both the patent applicant and the patent examiner, but that does not excuse, as Colt tends to argue, the necessity for disclosure of whatever information is required to satisfy the statutory command. A party is free to disclose whatever it wishes and in any suitable manner, provided that the dis- closures made are sufficient to satisfy the statutory require- ment. Weil v. Freitz, Evans and Cooke, 202 U.S.P.Q. 447, 450 (CCPA 1979). The courts must be vigilant, in consideration of $112 issues, against the, perhaps natural, desire of patentees to disclose as little as possible. Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351 F.2d 546, 550-51 (7th Cir. 1965), cert. denied, 383 U.S. 958. Satisfaction of §112 may require voluminous dis- closures as demonstrated in Honeywell, Inc. v. Sperry Rand Corp., 180 U.S.P.Q. 673 (D.Minn.1973), in which a computer patent contained 91 sheets of drawings and 232 columns of printed text. There is no objective standard by which to judge the ade- quacy of a best mode disclosure. Application of Sherwood, 613 F.2d 809 (CCPA 1980), cert. denied, 450 U.S. 994. The scope and magnitude of what must be disclosed is also influenced by the character of the particular art involved. The disclosures required in a patent related to an internal combustion engine, for example, are limited by the fact that such would deal with a standardized product which is well known to practitioners in the art. By contrast, there is no standardization of military weaponry since each weapon is unique unto itself. Though weapons are characterized by certain conventional details which are well known to those in the weapons art, there is much which is unique to every particular weapon. Bearing that dis- tinction in mind, it is plaintiffs’ position that it was incumbent on Colt to fully disclose the interchangeability specifications for the M-16 and its component parts to satisfy the best mode requirement of §112. Of the many reported cases, the following are deemed to articulate the application of the best mode requirement. In the absence of countervailing evidence, the best mode for carrying PA-36 out the claimed invention can be presumed to be the existing commercial embodiment. Union Carbide Corp. v. Borg- Warner Corp., 550 F.2d 355 (6th Cir. 1977). In Phillips Petroleum Co. v. R ichardson Carbon Co., 293 F.Supp. 555 (W.D. Tex. 1968), the best mode of practicing the claimed invention was embodied in Phillips’ commercial prod- uct which could not be produced from information disclosed in its patent. That finding was fortified by the existence of licens- ing agreements negotiated by Phillips, which required the licensees to keep the process for manufacturing its commercial product a closely guarded secret. To that degree, the factual background of Phillips closely parallels what the evidence in this cause reveals. A patent which only mentioned a critical material by com- mingling it with other materials failed, by that commingling, to disclose the best mode for practicing the invention. Dale Elec- tronics, Inc. v. R.C.L. Electronics, Inc., 488 F.2d 382 (st Cir. 1973). There is a failure of the best mode requirement if information which is essential to production of the product is not disclosed. Flick-Reedy Corp. v. Hydro-Line Mfg. Co., 351 F.2d 546, 550-51 (7th Cir. 1965), cert. denied, 383 U.S. 958 (1966). There was a failure to disclose the best mode when, even though, as the patentee argued, other programs were avail- able, it had retained as a trade secret that which it employed in its commercial product. White Consol idated Industries, Inc. v. Vega Servo-Control, Inc., 214 U.S.P.Q. (S.D. Mich. 1982), aff'd 713 F.2d 788 (Fed. Cir. 1983). The disclosure of the second best embodiment, where the patentee had a better embodiment, failed to disclose the best mode. Engelhard Industries, Inc. v. Sel-Rex Corp., 256 F.Supp. 832 (D.N.J. 1966), aff'd 384 F.2d 877 (3d Cir. 1967). ‘The cases principally relied on by Colt arose when $112 was pleaded as a defense to a suit for patent infringement by defendants who had copied and were competing in the sale of the patented product. The argument in In re Gay, supra, was PA-37 = __ that there was no best mode disclosure because the patent failed to specify the number, size and placement of perforations in a rice cooker. The court said that, despite that omission, any person skilled in the art would know that a number of perfora- tions were necessary, and that the patented product could be produced by following the patent without undue experimenta- tion, or perhaps with no experimentation. The court in Jn re Strahilevitz, 668 F.2d 1229 (CCPA 1982), found that the undisclosed information was already known in the prior art. The accused infringer in Trio Process Corp. v. L. Goldstein’s Sons, Inc., 461 F.2d 66 (3d Cir. 1972), cert. denied, 409 U.S. 997, had employed a metal worker to copy the patentee’s patented product. The court in Standard Oil Co. v. Montedison S.p.A., 494 F.Supp. 370(D. Del. 1980), aff'd 664 F.2d 356 (3d Cir. 1981), cert. denied, 456 U.S. 915, said that the best mode requirement is satisfied if the specification is sufficient to guide one skilled in the art to its successful application. The accused infringer argued in [nternational Telephone and Telegraph Corp. v. Raychem Corp., 538 F.2d 453 (1st Cir. 1976), cert. denied, 429 U.S. 886, that the best mode for production of an improved type of wire designed for use in the F-111 military fighter plane was not disclosed because the patentee had failed to disclose a secret compound employed in production of the patented wire. Apparently accepting the findings of the trial court in /nter- national Telephone and Telegraph Corp. v. Raychem Corp., 183 U.S.P.Q. (D. Mass. 1975), that the accused infringer had obtained a sample of the patentee’s wire through which, after an analysis of its structure, it had been able to produce the patented product with “no difficulty,” the court held that §112 disclosures were sufficient. Illinois Tool Works, Inc. v. Solo Cup Co., 179 U.S.P.Q. 322(N.D. Ill. 1973), presents a situation comparable to that in Raychem. Similarly, the court in Atlas Powder Co. v. E.I. Du Pont de Nemours & Co., 588 F.Supp. 1455, (N.D. Tex. 1983), said that the ease with which the infringer had formulated the patented product was an indica- tion that the patent disclosures were sufficient. PA-38 None of those cases derogates at all from the determinative inquiries of, what did the inventor know? what did he consider the preferred embodiment for using his invention? and did he withhold information known to him which would enable the public to reap the full benefits of competition upon the expira- tion of the patent? The preferred embodiment of the invention in each of Colt’s patents was the improvement of the M-16 military weapon, with the essential requirement that each of the parts modifica- tions be fully interchangeable with the corresponding part in every M-16 ever produced. Plaintiffs assert the position that the mandate of $112 could be satisfied only by the disclosure of the critical interchangeability specifications. This court has expressly recognized the criticality of interchangeability in its preliminary injunction issued in the Springfield case, when it said: “2 The evidence-is clear and convincing that the use of the designation ‘M-16’ in Springfield’s contract with the government of E] Salvadore amounts to a representation that the Springfield XM-15 rifle is in all respects the equivalent and fully interchangeable with the U.S. Army M-16, with full parts interchangeability, when none of such is now shown by the evidence to be the case in any important respect.” There appears a sharp contrast between Colt’s position, taken in pursuit of the Springfield preliminary injunction, that complete interchangeability was the one factor of extreme importance, and that failure of full interchangeability could be fatal to the combat infantryman, and its present position that parts interchangeability is a common feature of all mass pro- duced products. Of Colt’s present position, plaintiffs observe that, “What Colt Industries assiduously avoids is the fact that interchangeability is not a means for maintaining a monopoly in those other industries as it is for the standard U.S. military rifles.” Colt’s present position ignores the fact that the firearms industry is not standardized, as, for example, the automobile industry. Mr. Waterman recognized that distinction when he testified: PA-39 “I think one of the things that has happened over a period of time in the firearms business is you normally try and utilize, if possible, standard parts, and almost 100 percent of the time it’s not possible.” Thus Colt’s present position that M-16 parts can be produced without undue experimentation is rejected by statements by its own experts in Springfield and in the posture of the present case. M-16 parts might be produced through reverse engineer- ing, but, if so, that would entail a massive undertaking. Use of reverse engineering is also hindered by provisions in Colt’s contracts with the Government, that no scrap parts be sold to unauthorized persons unless such parts are damaged and unre- pairable. The situation in Wilden Pump & E ngineering v. Pressed & Welded Products, 199 U.S.P.Q. (N.D.Cal.1978), aff'd 213 U.S.P.Q. 282 (9th Cir. 1981), is interesting. The patent involved had omitted disclosure of dimensions and tolerances for an activator valve employed in the patentee’s pump. The court rejected a §112 defense upon its findings that the accused infringers had been able to mass produce that valve by using ordinary engineering practices to supply that information and permit the mass production of the part. That accused infringer had no substantial difficulty in duplicating the patented item by reverse engineering. That same consideration is doubtless pre- sent in almost all situations which deal with standardized prod- ucts. Standardization tends to produce a field of prior knowl- edge essential to permit the copying of the patentee’s commercial product with little effort by the application of reverse engineering. The totality of the undisputed evidence indicates that that is not true in the art of military weaponry. As plaintiffs argue, this is a unique situation which must be resolved independently by this court, guided, however. by the precedent of decided and controlling decisions. Plaintiffs’ statement is deemed to fully and clearly present the issue of “best mole” involved here, and the conclusion. Framed in their language, it is: ee PA-40 To consider the issue [of best mode] in proper perspective, we must look to the facts to clearly sort out the unique fact situation we have here: 1. First, we have here the uncommon situation where the critical dimensions and tolerances cannot be reverse engineered; 2. Second, we also have here the uncommon situation where interchangeability is an absolutely essential require- ment of the customers, amounting to a situation of life and death on occasion; 3. Third, we have the uncommon situation that this abso- lutely essential requirement must be maintained for produc- tion extending of (sic) a period of very many years, 4. Fourth, we also have here the situation where the dimension and tolerances necessary for interchangeability were known by the inventor to be important at the time of filing the patent applications; and 5. Fifth, we have the situation where the patent applica- tions are on an improved component which is interchangeable with and serves as a replacement for a corresponding compo- nent of a much larger standard U.S. product, which even more uniquely has the U.S. standards privately and secretly owned by the patent applicant. Applying the above facts under the standard of Section 112 must [lead to] the conclusion that at least the crucial inter- changeability specifications should have been in the patent. There can be no question that the preferred embodiment of each of the patents is the incorporation of the patented struc- ture into the standard M-16 military rifle. That is the only mode for practicing the invention since it seems clear that the parts could not be employed in any other existing weapon. That finding and conclusion merely fortifies the uniqueness of this situation, which was previously noted. As also previously noted, a Colt expert said that the arms manufacturer seeks a standardized embodiment for general use which is unattaina- ble almost 100 percent of the time. PA-41 Plaintiffs careful analysis of Colt’s receiver and bolt assist patent (No. 3,236,155), trigger mechanism patent (No. 3,292,492), and magazine patent (No. 3,619,929) is seen to apply to all of the patents in issue. Each describes the claimed ~ invention in a generalized way, without disclosing the critical details of construction and, most importantly, the elements of structural detail and tolerances required to achieve the para- mount requirement of full interchangeability of parts among all M-16 weapons produced over more than 20 years. That informa- tion was essential if the patent disclosures were to satisfy the §112 requirement that the best mode for practicing the invention be disclosed. There can be no doubt that all of this critical information was known to Colt’s patent applicants when the patent applications were processed. A consistent pattern emerges when the several patents are compared. In each, Colt failed to disclose that information which was essential to disclosure of the best mode then known to the patentee for practicing the claimed invention. Colt obviously sought to insulate its position by the provisions in its licensing agreements which were designed to forestall dis- closure of such concealed information which Colt claimed as its proprietary property under the laws related to trade secrecy. To that end, it has transmitted threatening correspondence to some of its licensees to further insulate that information from disclosure to other persons. It seems obvious that such actions were designed to perpetuate Colt’s monopoly on the production of the M-16 rifle and its component replacement parts. The picture which emerges is that Colt reaped the benefits of its limited monopoly under the patents and seeks to extend it by means of planned subterfuge and a near total failure of com- pliance with the requirements imposed by §112. Plaintiffs rely on both equity and the doctrine of federal supremacy as supporting their position that the claimed trade secrets are invalid and unsupportable. Colt’s response to that argument is its assertion, in effect, that if there was non- compliance with §112, the only available remedy is the invalida- tion of its patents, most of which have already expired. Its OE PA-42 corollary argument is that its misuse of the patent laws cannot affect its proprietary interest in its claimed trade secrets under state law. That argument is unsound. Under the doctrine of federal supremacy, the patent laws do preempt application of state trade secrecy laws whenever enforcement of the state law would conflict with the accom- plishment and execution of the full purpose and objectives of the patent laws as enacted by Congress. Hines v. Davidowntz, 312 U.S. 52, 67, (1941). The patent laws enacted under the Constitution are the supreme law of the land which cannot be set at naught and the benefits thereof denied by the application of state law. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229, (1964). A state may not apply its own laws in such a way as would extend the monopoly of an expired or invalid patent or afford any protection which is inconsistent with the objectives of the federal patent laws. /bid. at 231. The nature and extent of the legal consequences of the expiration or invalidation of a patent are federal questions which must be answered by the application of the patent laws and the policy which they adopt. Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 259-256, (1945). “Hence any attempted reservation or continuation in the patentee * * * of the patent monopoly, after the patent expires, whatever the legal device employed, runs counter to the policy and purpose of the patent law.” Both Aronson v. Quick Point Pencil Co., 440 U.S. 257 (1979), and Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470 (1974), upon which Colt relies, are inapposite. In Aronson, no patent had been issued although a patent application had been filed. while in Kewanee there had been no application for a patent. Thus, the court was not dealing with any potential conflict between the patent laws and the state laws of trade secrecy. ! | In this context, plaintiffs assert that the opinion in Colt /ndustnes v. Springfield Armory, supra, should be accepted as the law of the case, citing Gindes v. United States, 740 F.2d 947 (Fed. Cir. 1984). The reference is to language in that opinion that courts generally refuse to reopen what has already been decided. See Messenger v. Anderson, 225 U.S. 436, 444 (1912). Previous discussion of Springfield herein delimints this court’s interpretation of that opinion, which clearly indicated that it will not be presumed that the Federal Circuit did decide an issue which was not before it. Plaintiffs’ reliance on the doctrine of the law of the case is this misplaced. PA-43 As stated above, the court finds that the disclosures made in Colt’s several M-16 parts patents are insufficient to satisfy either the enablement or best mode requirements of §112. It follows that each of those patents was invalid from its inception and that any claim of trade secrecy as to the nondisclosed information is likewise invalid. REMEDY The remaining issues devolve into a determination as to the appropriate remedy. Plaintiffs assert that Colt should be required to disgorge its claimed trade secrets. Its argument is not limited to those items which were required to be disclosed. It also argues that Colt should disgorge all material which it claims as its trade secrets, because of its misuse of the patent system and because of its unjust enrichment by use of the invalid patents for which it had wholly failed to provide the consideration which the patent laws require. Reiterating, that consideration is full and complete disclosure which would enable the public to freely practice the invention once a patent has expired. That position is supported by Dow Chemical Co. v. Ameri- can Bromine Co., 210 Mich. 262, 177 N.W. 996 (1920), which held that a patentee cannot, in equity, claim trade secrecy for conventional information which could readily have been dis- covered had the required disclosures been made in its patent. The trade secrecy laws cannot be invoked to protect production specifications which could have been reverse engineered had the critical interchangeability specifications been properly dis- closed. See Rototron Corp. v. Lake Shore Burial Vault Co., Inc., 712 F.2d 1214 (7th Cir. 1983); /LG Industries, Inc. v. Scott, 49 Ill.2d 88, 273 N.E.2d 393 (1971). Moreover, the period for the enforcement of the claimed trade secrets, which could have been discovered by reverse engineering, would doubtless have ended years ago had the essential specifications been disclosed. See Syntex Ophthalmics, Inc. v. Novicky, 591 F.Supp. 28 (N.D. Ill. 1983), aff'd 28 Patent, Trademark & Copyright J. (BNA) 717 (Fed. Cir. 1984). PA-44 The clean hands doctrine also bears upon this phase of the case. As stated by the Court in Precision Instrument Man- ufacturing Co. v. Automotive Machinery Co., 324 U.S. 806, 814, 815 (1945): “Thus while equity does not demand that its suitors shall have led blameless lives, as to other matters, it does require that they shall have acted fairly and without fraud or deceit as to the controversy in issue.” Colt must bear the consequences of its flagrant abuse of the patent laws. Colt’s assertion that Christianson is guilty of having induced the breach of its licensing agreements, both as a defense to plaintiffs’ motion and as the basis for its counterclaims, is not sustained. Although Christianson is a former Colt employee, it is not alleged that he has been guilty of corporate espionage, theft, bribery, or deception in his obtaining the Colt specifica- tions which he has used. They were supplied to him by the governments of the Philippines and Singapore. Moreover, the license agreements themselves are tainted by Colt’s misuse and evasion of the patent laws. As plaintiffs suggest, had the required disclosures been made in the pat- ents, the supplementary information would probably have been discovered by others long before the now-elapsed time of about twenty years. Secrecy would thus have evaporated with the issuance of the patents. Forest Laboratories v. Pillsbury Co., 452 F.2d 621, 624 (7th Cir. 1971). Colt’s failure to make the required disclosures not only invalidates its patents but alsoits present claims of trade secrecy. The licensing agreements themselves can stand in no better stead without undermining the purposes of the patent laws. The cases cited by Colt are deemed inapposite. &.g., Amen- can Can Co. v. Mansukhani, 728 F.2d 818 (7th Cir. 1984); Syntex Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677 (7th Cir. 1983): E.1.M. Co. v. Philadelphia Gear Works, Inc., 102 F.Supp. 14 (S.D. Tex. 1951), affd 205 F.2d 28 (5th Cir. 1953). None of those cases involved a situation such as this in which PA-45 the claimed trade secrecy information had been withheld from disclosure by the patentee in violation of $112. Little need be said about Colt’s cross-motion for summary judgment. As the court said in First National Bank v. Insur- ance Company of North America, 606 F.2d 760, 766 (7th Cir. 1979), the moving party must present admissible evidence showing its entitlement to judgment, not just contentions, assertions of counsel, or hearsay. It cannot be found that Colt has met that burden. Plaintiffs’ motion for summary judgment must be allowed as to liability on Counts I and II, and Colt’s cross-motion for summary judgment must be denied. IT ISORDERED, therefore, that plaintiffs’ motion for sum- mary judgment is ALLOWED as to liability on Counts I and II of the Complaint, and defendant's motion for summary judg- ment is DENIED. IT IS FURTHER ORDERED that plaintiffs shall submit to the court and serve on defendant, within 30 days hereafter, its proposed final judgment order on liability, which shall be con- sistent with this opinion, on which the defendant shall file and serve any comments as to form within 10 days after service. /s/ Robert D. Morgan United States District Judge Entered: May 24, 1985 PA-46 APPENDIX D NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued. The syllabus constitutes no part of the opinion of the Court but has been pre- pared by the Reporter of Decisions for the convenience of the reader. See United States v. Detrout Lumber Co., 200 U. S. 321, 337. SUPREME COURT OF THE UNITED STATES Syllabus CHRISTIANSON ET AL. v. COLT INDUSTRIES OPERATING CORP. CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT No. 87-499. Argued April 18, 1988— Decided June 17, 1988 The principal statutes involved in this case, which arises from a jurisdic- tional dispute between Courts of Appeals, are 28 U. S. C. § 1295(a)(1)— granting the Federal Circuit exclusive jurisdiction over an appeal from a final decision of a federal district court “if the jurisdiction of that court was based, in whole or in part, on” 28 U. S. C. §1338—and § 1338(a), which grants the district courts original jurisdiction of any civil action “arising under” any federal statute relating to patents. Respondent (Colt), which is the leading manufacturer, seller, and marketer of “M16" rifles and their parts and accessories, held and developed patents relat- ing to the rifle, and has maintained the secrecy as to specifications essen- tial to the mass production of interchangeable M16 parts. Petitioner Christianson, a former Colt employee, established a corporation (also a petitioner), and began selling M16 parts. Colt joined petitioners with: other defendants in a patent-infringement lawsuit, but ultimately volun- tarily dismissed its claims against petitioners. In the meantime, Coit notified several of petitioners’ current and potential customers that peti- tioners were illegally misappropriating Colt’s trade secrets, and urged them to refrain from doing business with petitioners. Petitioners then brought this antitrust action against Colt in Federal District Court for violations of §§ 1 and 2 of the Sherman Act. The complaint alleged, :”- ter alia, that Colt’s letters, litigation tactics, and other conduct drove petitioners out of business. Petitioners later amended the complaint to assert a second cause of action under state law for tortious interference with their business relationships. Colt asserted a defense that its con- duct was justified by a need to protect its trade secrets and countersued on a variety of claims arising out of petitioners’ alleged misappropriation of M16 patent specifications. - Petitioners filed a motion for summary PA-47 Syllabus judgment raising a patent-law issue—related to the validity of Colt’s pat- ents —to which the complaint only obliquely hinted. The District Court awarded petitioners summary judgment as to liability on both the anti- trust and the tortious-interference claims. On Colt’s appeal, the Court of Appeals for the Federal Circuit held that it lacked jurisdiction and -~ transferred the appeai to the Court of Appeals for the Seventh Circuit. The Seventh Circuit, however, raising the jurisdictional issue sua sponte, concluded that the Federal Circuit was “clearly wrong” and transferred the case back. The Federal Circuit, although concluding that the Seventh Circuit’s jurisdictional decision was “clearly wrong,” addressed the merits in the “interest of justice,” and reversed the Dis- trict Court. Held: l. The Court of Appeais for the Federal Circuit would not have juris- diction of the appeal of a final judgment in this case under 28 U. S. C. § 1295(a)(1), since the action is not one “arising under” the patent stat- utes for purposes of § 1338(a). Pp. 4-10. (a) In order to demonstrate that a case is one “arising under” fed- eral patent law the plaintiff must set up some right, title, or interest under the patent laws, or at least make it appear that some right or priv- ilege will be defeated by one construction, or sustained by the opposite construction, of those laws. Section 1338 jurisdiction extends only to those cases in which a well-pleaded complaint establishes either: that fed- eral patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of fed- eral patent law, in that patent law is a necessary element of one of the well-pleaded claims. A case raising a federal patent-law defense does not, for that reason alone, “arise under” patent law, even if the defense is anticipated in the complaint, and even if both parties admit that the defense is the only question truly at issue in the case. Nor is it neces- sarily sufficient that a well-pleaded claim alleges a single theory under which resolution of a patent-law question is essential. If on the face ofa well-pleaded complaint there are reasons completely unrelated to the provisions and purposes of the patent laws why the plaintiff may or may not be entitled to the relief it seeks, then the claim does not “arise under” those laws. Pp. 5-7. (b) Petitioners’ antitrust count can readily be understood to encom- pass both a monopolization claim under §2 of the Sherman Act and a group-boycott claim under §1. The patent-law issue, while arguably necessary to at least one theory under each claim, is not necessary to the overall success of either claim. Even assuming, without deciding, that the validity of Colt’s patents is an essential element of petitioners’ monopolization theory rather than merely an argument in anticipation of PA-48 Syllabus a defense, the weill-pleaded complaint rule focuses on claims, not theo- ries, and just because an element that is essential to a particular theory might be governed by federal patent law does not mean that the entire monopolization claim “arises under” patent law. Examination of the complaint reveals that the monopolization theory (on which petitioners ultimately prevailed in the District Court) is only one of several in- volved, and the only one for which the patent law issue is even arguably essential. Since there are reasons completely unrelated to the provi- sions and purposes of federal patent law why petitioners may or may not be entitled to the relief sought under their monopolization claim, the claim does not “arise under” federal patent law. The same analysis ob- tains as to petitioners’ group-boycott claim under § 1 of the Sherman Act. Pp. 7-10. 2. Nor does reference to congressional policy compel a finding of Fed- eral Circuit jurisdiction. One of Congress’ objectives in creating the Federal Circuit was to reduce the lack of uniformity and uncertainty of legal doctrine in the administration of patent law. Although arguably Congress’ goals might be better served if the Federal Circuit’s juris- diction were to be fixed by reference to the case actually litigated, never- theless, Congress determined the relevant focus when it granted Fed- eral Circuit jurisdiction on the basis of the district courts’ jurisdiction. Since the latter courts’ jurisdiction is determined by reference to the well-pleaded complaint, not the well-tried case, the referent for the Fed- eral Circuit’s jurisdiction must be the same. The legislative history of the Federal Circuit’s jurisdictional provisions confirms that focus. Pr. ae 3. Federal Circuit jurisdiction here cannot be based on Federal Rule of Civil Procedure 15(b) by deeming the complaint amended to encom- pass a new and independent cause of action—an implied cause of action under the patent laws. Even assuming that a court of appeals could fur- nish itseif a jurisdictional basis under such theory, there is simply no evidence of any “express or implied consent” among the parties, as re- quired by the Rule, to litigate a new patent-law claim. Although the summary judgment papers focused almost entirely on patent-law issues that petitioners deemed fundamental to the lawsuit, those issues fell squarely within the purview of the theories of recovery, defenses, and counterciaims that the pleadings already encompassed. Pp. 11-13. 4. There is no merit to the contention that the Federal Circuit was obliged to adopt the Seventh Circuit’s analysis of the jurisdictional issue as the law of the case. The law-of-the-case doctrine applies as much to the decisions of a coordinate court in the same case as to a court's own decisions, and the policies supporting the doctrine apply with even greater force to transfer decisions than to decisions of substantive law. PA-49 Syllabus However, the Federal Circuit, in transferring the case to the Seventh Circuit, was the first to decide the jurisdictional issue. That the Fed- eral Circuit did not explain its rationale is irrelevant. Thus, the law of the case was that the Seventh Circuit had jurisdiction, and it was the Seventh Circuit that departed from the law of the case. Moreover, the doctrine merely expresses the practice of courts generally to refuse to reopen what has been decided, not a limit on their power. Thus, even if the Seventh Circuit’s decision was law of the case, the Federal Circuit did not exceed its power in revisiting the jurisdictional issue, and once it concluded that the prior decision was “clearly wrong” it was obliged to decline jurisdiction. Most importantly, law of the case cannot bind this Court in reviewing decisions below. Pp. 13-15. 5. The Federal Circuit, after concluding that it lacked jurisdiction, erred in deciding to reach the merits anyway “in the interest of justice.” Courts created by statute only have such jurisdiction as the statute con- fers. Upon concluding that it lacked jurisdiction, the Federal Circuit had authority, under 28 U. S. C. § 1631, to make a single decision— whether to dismiss the case or, “in the interest of justice,” to transfer it to a court of appeals that has jurisdiction. The rule that a court niay not in any case, even in the interest of justice, extend its jurisdiction where none exists has always worked injustice in particular cases —espe- cially in the situation where, as here, the litigants are bandied back and forth between two courts, each of which insists that the other has juris- diction. Such situations inhere in the very nature of jurisdictional lines. for few jurisdictional lines can. be so finely drawn as to leave no room for disagreement on close cases. However, the courts of appeals should achieve the end of quick settlement of questions of transfer by adhering strictly to principles of law of the case. Under those principles, if the transferee court can find the transfer decision plausible, its jurisdictional inquiry is at anend. Pp. 15-17. 822 F. 2d 1544, vacated and remanded. BRENNAN, .J., delivered the opinion for a unanimous Court. STEVENS, J., filed a concurring opinion, in which BLACKMUN, J., joined. PA-50 NOTICE: This opinion is subject to formal revision before publication in the preliminary print of the United States Reports. Readers are requested to notify the Reporter of Decisions, Supreme Court of the United States, Wash- ington, D. C. 20543, of any typographical or other formal errors, in order that corrections may be made before the preliminary print goes to press. SUPREME COURT OF THE UNITED STATES No. 87-499 CHARLES R. CHRISTIANSON, ET AL., PETITIONERS v. COLT INDUSTRIES OPERATING CORP. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT (June 17, 1988] JUSTICE BRENNAN delivered the opinion of the Court. This case requires that we decide a peculiar jurisdictional battle between the Court of Appeals for the Federal Circuit and the Court of Appeals for the Seventh Circuit. Each court has adamantly disavowed jurisdiction over this case. Each has transferred the case to the other. And each insists that the other’s jurisdictional decision is “clearly wrong.” 798 F. 2d 1051, 1056-1057 (CAT 1986); 822 F. 2d 1544, 1551, n. 7(CA Fed. 1987). The parties therefore have been forced to shuttle their_appeal back and forth between Chicago and the District of Columbia in search of a hospitable forum, ulti- mately to have the merits decided, after two years, by a Court of Appeals that still insists it lacks jurisdiction to do so. I Respondent Colt Industries Operating Corp. is the leading manufacturer, seller, and marketer of “M16” rifles and their parts and accessories. Colt’s dominant market position dates back to 1959, when it acquired a license for 16 patents to manufacture the M16’s precursor. Colt continued to de- velop the rifle, which the United States Army adopted as its standard assault rifle, and patented additional improve- ments. Through various devices, Colt has also maintained a shroud of secrecy around certain specifications essential to the mass production of interchangeable M16 parts. For ex- PA-51 ample, Colt’s paterits conceal many of the manufacturing specifications_that might otherwise be revealed by its engi- neering drawings, and when Colt licenses others to manufac- ture M16 parts or hires employees with access to proprietary information, it contractually obligates them not to disclose specifications. Petitioner Christianson is a former Colt employee who acceded to such a nondisclosure agreement. Upon leaving respondent’s employ in 1975, Christianson established peti- tioner International Trade Services, Inc. (ITS), and began selling M16 parts to various customers domestically and abroad. Petitioners’ business depended on information that Colt considers proprietary. Colt expressly waived its pro- prietary rights at least as to some of petitioners’ early trans- actions. The precise scope of Colt’s waiver is a matter of considerable dispute. In 1983, however, Colt joined peti- tioners as defendants in a patent-infringement lawsuit against two companies that had arranged a sale of M1é6s to El Salvador. Evidence suggested that petitioners supplied the companies with certain M16 specifications, and Colt sought a court order enjoining petitioners from any further disclo- sures. When the District Court declined the motion, Colt voluntarily dismissed its claims against petitioners. In the meantime, Colt notified several of petitioners’ current and potential customers that petitioners were illegally misappro- priating Colt’s trade secrets, and urged them to refrain from doing business with petitioners. Three days after their dismissal from the lawsuit, petition- ers brought this lawsuit in the District Court against Colt “pursuant to Section 4... (15 U. S. C. $15) and Section 16 of the Clayton Act (15 U. S. C. §26) for damages, injunctive and equitable relief by reason of its violations of Sections 1 and 2 of the Sherman Act (15 U. S. C. §§1&2)....” App. 7. The complaint alleged that Colt’s letters, litigation tac- tics, and “fo]the{r]. . . conduct” drove petitioners out of busi- PA-52 ness. In that context, petitioners included the following ob- scure passage: “18. The validity of the Colt patents had been assumed throughout the life of the Colt patents through 1980. Unless such patents were invalid through the wrongful retention of proprietary information in contravention of United States Patent Law (35 U. S. C. $112), in 1980, when such patents expired, anyone ‘who has ordinary skill in the rifle-making art’ is able to use the technology of such expired patents for which Colt earlier had a mo- nopely position for 17 years. “19, ITS and anyone else has the right to manufacture, contract for the manufacture, supply, market and sell the M-16 and M-16 parts and accessories thereof at the present time.” App. 9. Petitioners later amended their complaint to assert a second cause of action under state law for tortious interference with their business relationships. Colt interposed a defense that its conduct was justified by a need to protect its trade secrets and countersued on a variety of claims arising out of petition- ers’ alleged misappropriation of M16 specifications. Petitioners’ motion for summary judgment raised only a patent-law issue obliquely hinted at in the above-o joted paragraphs —that Colt’s patents were invalid from their in- ception for failure to disclose sufficient information to “enable any person skilled in the art . . . to make and use the same” as well as a description of “the best mode contemplated by the inventor of carrying out his invention.” 35 U.S. C. §112. Since Colt benefited from the protection of the invalid patents, the argument continues, the “trade secrets” that the patents should have disclosed lost any state-law protection. Petitioners therefore argued that the District Court should hold that “Colt’s trade secrets are invalid and that [their] claim of invalidity shall be taken as established with respect to all claims and counterclaims to which said issue is mate- rial.” App. 58. The District Court awarded petitioners summary judg- ment as to liability on both the antitrust and the tortious- interference claims, essentially relying on the §112 theory articulated above. In the process, the District Court invali- dated nine of Colt’s already-expired patents, declared all trade secrets relating to the M16 unenforceable, enjoined Colt from enforcing “any form of trade secret right in any technical information relating to the M16,” and ordered Colt to disgorge to petitioners all such information. 613 F. Supp. 330, 332 (CD Il. 1985). Respondent appealed to the Court of Appeals for the Fed- eral Circuit, which, after full briefing and argument, con- cluded that it lacked jurisdiction and issued an unpublished order transferring the appeal to the Court of Appeals for the Seventh Circuit. See 28 U. S. C. §1631. The Seventh Cir- cult, however, raising the jurisdictional issue sua sponte, concluded that the Federal Circuit was “clearly wrong” and transferred the case back. 798 F. 2d, at 1056-1057, 1062. The Federal Circuit, for its part, adhered to its prior jurisdic- tional ruling, concluding that the Seventh Circuit exhibited “a monumental misunderstanding of the patent jurisdiction granted this court,” 822 F. 2d, at 1547, and was “clearly wrong,” id., at 1551, n. 7. Nevertheless, the Federal Cir- cuit proceeded to address the merits in the “interest of jus- tice,” id., at 1559-1560, and reversed the District Court. We granted certiorari, 484 U. S. —— (1987), and now vacate the judgment of the Federal Circuit. II As relevant here, 28 U. S. C. § 1295(a)(1) grants the Court of Appeals for the Federal Circuit exclusive jurisdiction over “an appeal from a final decision of a district court of the United States . . . if the jurisdiction of that court was based. in whole or in part, on (28 U. S. C.] section 1338 ....”! ‘Colt’s appeal to the Federal Circuit actually invoked 28 U.S. C. 3§ 1292(a)(1) and (¢)(1), which together grant the Federal Circuit exclusive PA-54 Section 1338(a), in turn, provides in relevant part that “{t]he district courts shall have original jurisdiction of any civil ac- tion arising under any Act of Congress relating to patents _...” Thus, the jurisdictional issue before us turns on whether this is a case “arising under” a federal patent stat- ute, for if it is then the jurisdiction of the District Court was based at least “in part” on section 13288. A In interpreting § 1338’s precursor, we held long ago that in order to demonstrate that a case is one “arising under” fed- eral patent law “the plaintiff must set up some right, title or interest under the patent laws, or at least make it appear that some right or privilege will be defeated by one construc- tion, or sustained by the opposite construction of these laws.” Pratt v. Paris Gas Light & Coke Co., 168 U.S. 255, 259 (1897). See Henry v. A.B. Dick Co., 224 U.S. 1, 16 (1912). Our cases interpreting identical language in other jurisdic- tional provisions, particularly the general federal-question provision, 28 U. S. C. $1831 (“The district courts shall have original jurisdiction of all civil actions arising under the Con- stitution, laws, or treaties of the United States”), have quite naturally applied the same test.* See Gully v. First Na- jurisdiction over appeals from interlocutory orders “granting, continuing, modifying, refusing or dissolving [an] injunctio(n],” § 1292(a(1), “in any case over which the court would have jurisdiction over an appeal under sec- tion 1295,” § 1292(c)(1). *Colt correctly points out that in this case our interpretation of $ 1338's “arising under” language will merely determine which of two federal appel- late courts will decide the appeal, and suggests that our “arising under” jurisprudence might therefore be inapposite. Since, however, § 1338 de- lineates the jurisdiction of the federal and state courts over cases involving patent issues, the phrase (like the identical phrase in § 1331) “masks a wel- ter of issues regarding the interrelation of federal and state authority and the proper management of the federal judicial system.” See Franchise Tax Board of California v. Construction Laborers Vacation Trust, 463 U. S. 1, 8 (1983) (footnote omitted). See also Merretl Dov Pharmaceuti- cals Inc. v. Thompson, 478 U. S. 804, 810 (1986) (“{D]Jeterminations about PA-55 tional Bank in Meridian, 299 U. S. 109, 112 (1936) (the claim alleged in the complaint “must be such that it will be sup- ported if the Constitution or laws of the United States are given one construction or effect, and defeated if they receive another”) (citations omitted). A district court’s federal- question jurisdiction, we recently explained, extends over “only those cases in which a well-pleaded complaint estab- lishes either that federal law creates the cause of action or that the plaintiff’s right to relief necessarily depends on reso- lution of a substantial question of federal law,” Franchise Tax Board of California v. Construction Laborers Vacation Trust, 463 U. S. 1, 27-28 (1988), in that “federal law is a nec- essary element of one of the well-pleaded . . . claims,” id., at 13. Linguistic consistency, to which we have historically ad- hered, demands that § 1338 jurisdiction likewise extend only to those cases in which a well-pleaded complaint establishes either that federal patent law creates the cause of action or that the plaintiff’s right to relief necessarily depends on resolution of a substantial question of federal patent law, in that patent law is a necessary element of one of the well- pleaded claims. See 822 F. 2d, at 1553-1556; 798 F. 2d, at 1059-1061. The most superficial perusal of petitioners’ complaint es- tablishes, and no one disputes, that patent law did not in any sense create petitioners’ antitrust or intentional-interference claims. Since no one asserts that federal jurisdiction rests on petitioners’ state-law claims, the dispute centers around whether patent law “is a necessary element of one of the well- pleaded [antitrust] claims.” See Merrell Dow Pharmaceuti- cals Inc. v. Thompson, 478 U.S. 804, 813 (1986). Our cases, again mostly in the § 1331 context, establish principles for both defining the “well-pleaded . . . claims” and discern- ing which elements are “necessary” or “essential” to them. Under the well-pleaded complaint rule, as appropriately federal jurisdiction require sensitive judgments about congressional intent, judicial power, and the federal system”). PA-56 adapted to § 1338, whether a claim “arises under” patent law “must be determined from what necessarily appears in the plaintiff’s statement of his own claim in the bill or declaration, unaided by anything alleged in anticipation or avoidance of defenses which it is thought the defendant may interpose.’” Franchise Tax Board, supra, at 10 (quoting Taylor v. An- derson, 234 U. S. 74, 75-76 (1914)). See Louisville & Nash- ville R. Co. v. Mottley, 211 U. S. 149 (1908). Thus, a case raising a federal patent-law defense does not, for that reason alone, “arise under” patent law, “even if the defense is antici- pated in the plaintiff’s complaint, and even if both parties admit that the defense is the only question truly at issue in the case.” Franchise Tax Board, supra, at 14.° See also Merrell Dow, supra, at 808. Nor is it necessarily sufficient that a well-pleaded claim al- leges a single theory under which resolution of a patent-law question is essential. If “on the face of a well-pleaded com- plaint there are . . . reasons completely unrelated to the pro- visions and purposes of [the patent laws] why the [plaintiff] may or may not be entitled to the relief it seeks,” Franchise Tax Board, 463 U.S., at 26 (footnote omitted), then the claim does not “arise under” those laws. See id., at 26, n. 29. Thus, a claim supported by alternative theories in the complaint may not form the basis for § 1338 jurisdiction un- less patent law is essential to each of those theories. B Framed in these terms, our resolution of the jurisdictional issue in this case is straightforward. Petitioners’ antitrust On the other hand, merely because a claim makes no reference to fed- eral patent law does not necessarily mean the claim does not “arise under” patent law. Just as “a plaintiff may not defeat removal by omitting to plead necessary federal questions in a complaint,” Franchise Tax Board, supra, at 22 (citations omitted); see Federated Department Stores, Inc. v. Moitie, 452 U. S. 394, 397, n. 2 (1981); id., at 408, n. 3 (BRENNAN, J., dis- senting), so a plaintiff may not defeat § 1338 jurisdiction by omitting to plead necessary federal patent law questions. PA-57 count can readily be understood to encompass both a monop- olization claim under §2 of the Sherman Act and a group- boycott claim under §1. The patent-law issue, while argu- ably necessary to at least one theory under each claim, is not necessary to the overall success of either claim. Section 2 of the Sherman Act condemns “{e]very person who shall monopolize, or attempt to monopolize ....” 15 U.S. C. $2. The thrust of petitioners’ monopolization claim is that Colt has “embarked on a course of conduct to illegally extend its monopoly position with respect to the described patents and to prevent ITS from engaging in any business with respect to parts and accessories of the M-6.” App. 10. The complaint specifies several acts, most of which relate either to Colt’s prosecution of the lawsuit against petitioners or to letters Colt sent to petitioners’ potential and existing customers. To make out a §2 claim, petitioners would have to present a theory under which the identified conduct amounted to a “willful acquisition or maintenance of [monop- oly] power as distinguished from growth or development as a consequence of a superior product, business acumen, or his- toric accident.” United States v. Grinnell Corp., 384 U. S. 063, 570-571 (1966). Both the Seventh Circuit and Colt focus entirely on what they perceive to be “the only basis Christianson asserted in the complaint for the alleged anti- trust violation,” 798 F’. 2d, at 1061; see Brief for Respondent 32—namely that Colt made false assertions in its letters and pleadings that petitioners were violating its trade secrets, when those trade secrets were not protected under state law because Colt’s patents were invalid under §112. Thus, Colt concludes, the validity of the patents is an essential element of petitioners’ prima facie monopolization theory and the case “arises under” patent law. We can assume without deciding that the invalidity of Colt’s patents is an essential element of the foregoing monop- olization theory rather than merely an argument in anticipa- tion of a defense. But see 822 F. 2d, at 1547. The well- PA-58 pleaded complaint rule, however, focuses on claims, not theories, see Franchise Tax Board, 463 U.S., at 26, and n. 29; Gully, 299 U. S., at 117, and just because an element that is essential to a particular theory might be governed by federal patent law does not mean that the entire mon [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385002_1569%3A2. Public record. Not legal advice.