Opposition Brief — Christianson v. Colt Industries Operating Corp.

Supreme Court, U.S.

oa. 5, & D

1 1989

No. 88-2082 JUL 2

SPANIOL, JR.

IN THE ‘7 CLERK

Supreme Court of the United States

OcTOBER TERM, 1988

CHARLES R. CHRISTIANSON and

INTERNATIONAL TRADE SERVICES. INC..

Petitioners.

VS.

COLT INDUSTRIES OPERATING CORP.

Respondent.

ON PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

RESPONDENT'S BRIEF IN OPPOSITION

ANTHONY M. RapIce

Counsel of Record

JosepH C. MarkowI!tTz

MorRISON & FOERSTER

1290 Avenue of the Americas

New York, New York 10104

(212) 468-8000

— and —

RoBert L. HARMON

WILLIAN BRINKS OLDs

Horer GILSON & LIONE LTD.

NBC Tower

455 North Cityfront Plaza Drive

Suite 3600

Chicago, Illinois 60611

(312) 321-4200

July 21, 1989 Counsel for Respondent

QUESTIONS PRESENTED

1. Should this Court review the Seventh Circuit’s application

of the long-standing rule that 35 U.S.C. § 112 does not require

the disclosure of commercial manufacturing specifications that

are not part of the invention claimed in a patent?

2. Should this Court address the contention that inventions

and information protected by patent and trade secrecy laws can-

not co-exist in the same product, a contention not argued to or

addressed by the courts below?

TABLE OF CONTENTS

Page

ee i

Ee Vv

Sn er OO OO 8 ee eee 2

Reasons for Denying the Writ... .............. 4

A. Petitioner Has Demonstrated No “Special

and Important” Reasons Justifying the

Court’s Discretionary Review of This

A ONE SG to 4

B. The Court of Appeals Correctly Decided

the Section 112 Issue by Applying

Established Precedent ................. 5

C. Petitioner’s Contention that Information

Protected by Patents and Trade Secrets

Cannot Co-exist in the Same Product is

Without Merit and Was Not Argued to or

Addressed by the Courts Below ......... 8

ee wk haw de ews ll

—

TABLE OF AUTHORITIES

Cases

Adickes v. S. H. Kress & Co., 398 U.S. 144

[ERGO ssn ce oxeaa se SU eee eet

Atlas Powder Co. v. E.I. du Pont de Nemours &

Co., 588 F. Supp. 1455 (N.D. Tex. 1983),

aff'd, 750 F.2d 1569 (Fed. Cir. 1984).........

Bonito Boats, Inc. v. Thunder Craft Boats, Inc..,

U.S. , 109 S. Ct. 971 (1989) ..........

Christianson v. Colt Industries Operating Corp,

822 F.2d 1544 (Fed. Cir. 1987), vacated,

U.S. , 108 S. Ct. 2166 (1988) .........

CPG Products Corp. v. Mego Corp., 502 F.

Supp. 42 (3.D. Olio IOG0) ..... 5 osc. we cc kn

DeGeorge v. Bernier, 768 F.2d 1318 (Fed. Cir.

awa PaREane nmr ren aets oo ap oF. 144 a cat

Dekar Industries, Inc. v. Bissett-Berman Corp..,

434 F.2d 1304 (9th Cir. 1970), cert. denied,

2 U5 OR CID 5 es os ee ee

Delta Air Lines, Inc. v. August, 450 U.S. 346

CRUE ooocs Go cane oa SY veto awaits oS

Douglas v. United States, 510 F.2d 364 (Ct. Cl.)

(per curiam), cert. denied, 423 U.S. 825 (1975)

In re Gay, 309 F.2d 769 (C.C.P.A. 1962) .......

Page

10

6n

10

10

6n

6n

vi

Illinois Tool Works, Inc. v. Foster Grant Co., 547

F.2d 1300 (7th Cir. 1976), cert. denied, 431

U.S. 929 (1977) 0.0. c cece eee.

Illinois Tool Works Inc. v. Solo Cup Co., 179

U.S.5.Q. Sie (N.D. TR. Bie) oc ce eae

Indecor, Inc. v. Fox-Wells & Co., 642 F. Supp.

1473 (S.D.N.Y. 1986)....................02.

International Telephone & Telegraph Corp. v.

Raychem Corp., 538 F.2d 453 (1st Cir.), cert.

denied, 429 U.S. 886 (1976) .................

Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470

(VOTBY ooo sacgkceasasacioaanaa cee

Lundy Electronics & Systems, Inc. v. Optical

Recognition Systems, Inc., 362 F. Supp. 130

(E.D. Va. 1973), aff'd per curiam, 493 F.2d

1222 (4th Cir. 1974)...........0... 00. cece.

Randomex, Inc. v. Scopus Corp., 849 F.2d 585

(Fed. Cir. 1988),. 0.00.0... 0c c cece cece ee.

Reinforced Earth Co. v. Neumann, 201 U.S.P.Q.

905 (D. Md. 1978) ........... cece eee e eee.

Trio Process Corp. v. L. Goldstein’s Sons, Inc.,

461 F.2d 66 (3d Cir.), cert. denied, 409 U.S.

O07 (1078) .6 occa

Union Carbide Corp. v. Borg-Warner Corp., 550

F.2d 355 (6th Cir. 1977)....................

United States v. Mendenhall, 446 U.S. 544 (1980) .

Page

6n

10

6n

Vii

Page

Youakim v. Miller, 425 U.S. 231 (1976) (per

MIN oes ca ee RE RACER EN ORES oF 10

Statutes and Rules

Be. ee SE: A eee een ear a passim

Supreme Court Rule 17.1 ...............-...:. 4

Supreme Court Rule 28.1] ....................- ]

Other Authorities:

Resolution 605-1 of the Section of Patent,

Trademark and Copyright Law of the cm

American Bar Association, reprinted in PTC

Newsletter, Vol. 7, No. 2 (Fall 1988) ......... Tn

No. 88-2082

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.

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE SEVENTH CIRCUIT

RESPONDENT'S BRIEF IN OPPOSITION

Respondent Colt Industries Operating Corp (“Colt”)! respect-

fully requests that this Court deny the petition by Charles R.

Christianson and International Trade Services, Inc. (collectively

“Christianson”) for a writ of certiorari to review the opinion

and judgment of the Court of Appeals for the Seventh Circuit

entered on March 22, 1989. The opinion of the Court of Ap-

peals is reprinted in the petitioner’s Appendix to the Petition

for Writ of Certiorari (hereinafter “PA”) 1-21.

' Pursuant to Supreme Court Rule 28.1, respondent states that Colt Industries

Operating Corp has been merged into Colt industries Inc., which is wholly

owned by Colt Holdings, Inc.

STATEMENT OF THE CASE

Colt appealed to the United States Court of Appeals for the

Federal Circuit from the “Final Judgment on Liability” and in-

junction entered on July 19, 1985 by the United States District

Court for the Central District of Illinois. (PA-22-26) That judg-

ment, inter alia, declared nine Colt patents invalid as of the

time of issue as a matter of summary judgment, declared all

of Colt’s trade secrets relating to the “M16” rifle to be void, per-

manently enjoined Colt from enforcing any of those trade secrets,

and imposed, without discussion, antitrust and tort liability.

(PA-22-26) The Federal Circuit transferred Colt’s appeal to the

Seventh Circuit, which transferred the appeal back again,

whereupon the Federal Circuit decided the appeal in Colt’s

favor. On December 14, 1987 this Court granted certiorari, 484

US. , 108 S. Ct. 500, limited to the issue of appellate

jurisdiction. At that time, this Court declined to review the

Federal Circuit’s application of 35 U.S.C. § 112 to the merits

of this case. Upon remand by this Court to the Seventh Circuit

(PA-66), the Seventh Circuit reached the same result as had the

Federal Circuit, reversing the district court’s decision in its en-

tirety. (PA-21)

Both courts of appeals agreed that Christianson’s motion for

summary judgment and the district court’s decision depended

on the novel theory that Colt’s failure to disclose the manufac-

turing specifications for the “M16” rifle in nine patents for

various improvements and accessories developed for that rifle

invalidated those patents under 35 U.S.C. § 112. The district

coyrt’s remaining rulings—that all of Colt’s trade secrets

“relating to the M-16” rifle were invalid (PA-24), and that Colt

violated the antitrust laws (PA-25) — all proceeded from this § 112

analysis.

The Seventh Circuit, as the Federal Circuit had, concluded

that the district court had wrongly decided the § 112 issues

because it had “erred in its definition of the scope of the inven-

tions.” (PA-18) Colt had presented uncontradicted evidence to

the district court that its patents disclosed sufficient informa-

tion to enable persons skilled in the art to make and use the

claimed inventions, and to illustrate the best mode known to

the inventor of carrying out the claimed inventions (e.g.,

PA-144-47). The district court, however, erroneously focused on

whether the patents disclosed sufficient information to enable

the mass production of parts interchangeable with those used

in the “M16” rifle, Colt’s commercial product. (PA-38, 40-41)

The Seventh Circuit found that these commercial production

specifications were not necessary to the claimed inventions and

did not have to be disclosed in Colt’s patents:

In the instant case, the specifications and tolerances

are not an “integral part” of the inventions. The in-

ventions will work in a rifle, assuming 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 M16.

(PA-13-14) The Federal Circuit’s opinion had made clear that

this result follows from long-standing principles of patent law:

[T]he law has never required that a patentee who

elects to manufacture its claimed invention must

disclose in its patent the dimensions, tolerances, draw-

ings, and other parameters of mass production not

necessary to enable one skilled in the art to practice

(as distinguished from mass-produce) the invention.

Nor is it an objective of the patent system to supply,

free of charge, production data and production draw-

ings to competing manufacturers... .[T]he law re-

quires that patents disclose inventions, not mass-

production data, and that patents enable the prac-

tice of inventions, not the organization and operation

of factories. The requirement for disclosure of suffi-

cient information to enable one skilled in the art to

practice the best mode of the claimed invention is and

has been proven fully adequate for over 150 years.

(PA-103)(emphasis in original).

Because the Court of Appeals concluded that Colt had not

violated § 112, no basis remained for sustaining the district

court’s rulings invalidating Colt’s trade secrets or finding Colt

liable for antitrust violations. (PA-20, 106) The Seventh Circuit

therefore reversed the district court’s decision, and directed the

district court to enter “summary judgment for Colt on the issue

of the adequacy of its patent disclosures.” (PA-10)

REASONS FOR DENYING THE WRIT

A. Petitioner Has Demonstrated No “Special and

Important” Reasons Justifying the Court's

Discretionary Review of This Case.

Christianson, while questioning the correctness of the deci-

sion below, has demonstrated no reason, consistent with Supreme

Court Rule 17.1, why this case is worthy of review by this Court.

The decision of the Court of Appeals does not raise a novel and

important issue — it is clearly compelled by established law. The

decision of the Court of Appeals does not contradict any case

decided by this Court; petitioner concedes that the case involves

an issue “that this Court has never directly addressed.” Petition

for Writ of Certiorari of Charles R. Christianson and Interna-

tional Trade Services, Inc. (hereinafter “Pet. for Cert.”) at 14.

Finally, there is no division among the circuits. The Seventh and

Federal Circuits reached the same result in this case, a result

consistent with a long line of established authority.

Christianson’s sole basis for its claim that review is appropriate

is that the decision of the Court of Appeals conflicts with the

decision of the Sixth Circuit in Union Carbide Corp. v. Borg-

Warner Corp., 550 F.2d 355 (1977). Union Carbide, however,

does not stand for Christianson’s thesis that the manufacturing

detail for a commercial product is the standard for § 112

disclosure.? In Union Carbide, the patentholder had failed to

* In Union Carbide, the patentholder, before applying for a patent, had in-

stalled in his pilot manufacturing plant equipment which was more

(Footnote continued)

disclose, not one commercially feasible mode of carrying out

the patented process, but what he knew to be the best mode

of performing that process. The Sixth Circuit did not hold, as

Christianson contends, that “the ‘best mode’ can logically be

presumed to be the commercial embodiment.” (Pet. for Cert.

at 18) Commercial production specifications played no part in

the Sixth Circuit’s decision. Accordingly, Christianson’s asser-

tion that Union Carbide indicates the existence of a conflict

among the circuits is without merit.

Here, Colt’s patents did disclose the best mode of utilizing

the claimed inventions. Christianson asserts, however, that more

is required — that Colt was obliged to disclose in its patent ap-

plications not only information regarding the claimed inven-

tions, but the specifications and tolerances it used in manufac-

turing the “M16” rifle, a particular product incorporating those

inventions, or in manufacturing parts interchangeable with those

of the “M16” rifle. Christianson has utterly failed to demonstrate

a conflict among the circuits, or a conflict with any decision

of this Court, with respect to this issue. Certiorari should ac-

cordingly be denied.

B. The Court of Appeals Correctly

Decided the Section 112 Issue

By Applying Established Precedent.

Christianson asks this Court to grant certiorari in order to adopt

the novel theory that, regardless of the scope of Colt’s patent

claims, 35 U.S.C. § 112 requires the disclosure © detailed manu-

facturing specifications necessary to mass produce interchangeable

parts used in Colt’s commercial product, the “M16” rifle, a pro-

duct for which Colt has never claimed patent protection.’

sophisticated, and performed better, than that disclosed in his application for

a process patent. 550 F.2d at 360-61. The Sixth Circuit held the patentholder

had failed to disclose in his patent the “best mode” for carrying out the inven-

tion, as required by 35 U.S.C. § 112.

’ Christianson’s assertion that “(t]he missing disclosure was not the mass pro-

duction specifications for the M-16 rifle” but merely “a few critical dimensions

(Footnote continued)

It has, however, always been the law that § 112’s disclosure

requirements extend only as far as the scope of the claimed in-

vention. See Randomex, Inc. v. Scopus Corp., 849 F.2d 585, 588

(Fed. Cir. 1988); DeGeorge v. Bernier, 768 F.2d 1318, 1324 (Fed.

Cir. 1985); Illinois Tool Works, Inc. v. Foster Grant Co., 547

F.2d 1300, 1309 (7th Cir. 1976), cert. denied, 431 U.S. 929 (1977);

International Telephone & Telegraph Corp. v. Raychem Corp.,

538 F.2d 453, 460 (ist Cir.), cert. denied, 429 U.S. 886 (1976).

In this case, both the Seventh Circuit and the Federal Cir-

cuit correctly analyzed the issue of patent validity by determin-

ing whether Colt’s claimed inventions required that parts in-

corporating them be interchangeable with those of the “M16”

rifle. Finding that they did not, the Seventh Circuit went on

to hold that Colt’s patent disclosures satisfied the well-settled

rule that patent specifications need not be production specifica-

tions.* (PA-12, 19) The Federal Circuit reached the same con-

clusion, stating: “Patents are not production documents, and

nothing in the patent law requires that a patentee must disclose

data on how to mass-produce the invented product in patents

obtained on either individual parts of the product or on the en-

tire product.” (PA-103)§ This rule is well-grounded in policy, for

and tolerances needed to figure out how to make the patented part inter-

changeable in the M-16,” Pet. for Cert. at 6 (emphasis in original), is unsup-

ported both by the section of the district court’s opinion cited by Christian-

son and by the record as a whole.

* In re Gay, 309 F.2d 769, 774 (C.C.P.A. 1962); see also Douglas v. United

States, 510 F.2d 364, 366 (Ct. Cl.)(per curiam), cert. denied, 423 U.S. 825

(1975); Trio Process Corp. v. L. Goldstein’s Sons, Inc., 461 F.2d 66, 74 (3d

Cir.), cert. denied, 409 U.S. 997 (1972); Indecor, Inc. v. Fox-Wells ¢> Co., 642

F. Supp. 1473, 1490 (S.D.N.Y. 1986); Atlas Powder Co. v. E.I. du Pont de

Nemours & Co., 588 F. Supp. 1455, 1467 (N.D. Tex. 1983), affd, 750 F.2d

1569 (Fed. Cir. 1984).

* Even if there had been a legitimate question about the adequacy of Colt’s

patent disclosures, there was no precedent for the district court’s extraordinary

remedy. No court had ever before invalidated a party’s trade secrets solely by

reason of a finding of insufficient disclosure under § 112. The district court

did not even stop there, but also ordered Colt to disgorge all trade secrets in

(Footnote continued)

to require the disclosure of a mass of unclaimed manufactur-

ing detail would, rather than encouraging greater disclosure as

Christianson suggests, instead discourage inventors from seek-

ing patent protection at all.

Because neither the specifications for the “M16” rifle nor the

requirement of interchangeability with parts for the “M16” rifle

appeared in the patent claims, § 112 did not require Colt to

disclose manufacturing specifications for the “M16” rifle in its

patent applications. Christianson’s contention that Colt was re-

quired to make disclosure well beyond the scope of its patent

claims is directly contrary to well-settled patent law.*®

There is no conflict among the circuits on this issue. Indeed,

the Seventh Circuit and the Federal Circuit, confronted with

existence relating to “M16” rifles, whether or not related to interchangeabili-

ty or to the parts mentioned in the particular patents. The district court went

on to grant final judgment upholding Christianson’s antitrust claims without

Christianson even having asked for such a judgment, without any evidence

that Colt had defrauded the Patent Office, and without any evidence rele-

vant to such necessary antitrust inquiries as the definition of the relevant market

or Colt’s market power.

* Christianson refers to this case as “widely referenced,” Pet. for Cert. at 14

n.10, 25, suggesting significant interest in the case by commentators and the

patent bar. What may have been noteworthy, however, was the district court’s

radical departure from established law. The Courts of Appeals’ decisions merely

restore patent and trade secret law to normal. See, e.g., Resolution 605-1 of

the Section of Patent, Trademark and Copyright Law of the American Bar

Association, which stated:

that 35 U.S.C. Section 112 does not and should not require patent

application disclosures to include mechanical tolerances of any

particular specimen or model embodying the invention beyond

that sufficient to enable a person of ordinary skill in the art to

which the invention pertains to make and use the invention utiliz-

ing the engineering of those of such ordinary skill; and Specifically,

the Section believes that the Federal Circuit opinion in Chris-

tiansen [sic] v. Colt Industries, F.2d 3 USPQ 2nd 1241

(Fed. Cir. 1987) is essentially correct insofar as it concerns the

disclosure requirements of 35 U.S.C. Section 112.

Resolution 605-1 of the Section of Patent, Trademark and Copyright Law of

the American Bar Association, reprinted in PTC Newsletter, Vol. 7, No. 2 (Fall -

1988) at 10-11.

the issues in the instant case, each decided them —

unanimously — the same way.’ For these reasons and the reasons

set forth in the opinions of the Federal and Seventh Circuits,

this Court should not reexamine these well-established principles

of patent law.

C. Petitioner’s Contention that Information Protected

by Patents and Trade Secrets Cannot Co-exist in the

Same Product is Without Merit and Was Not

Argued to or Addressed by the Courts Below.

Christianson’s contention that the Seventh Circuit’s decision

provides a novel mechanism for “extending patent monopolies

under state law” is simply wrong.

Colt could not have improperly extended its patent monopoly

on the “M16” rifle indefinitely because Colt never sought or ob-

tained a patent on the “M16” commercial product as a whole.

Colt’s patents were for inventions that could be used in a rifle.

Some such inventions Colt actually incorporated into the “M16”

rifle. During the lifetime of those patents other producers would

have been precluded from using those patented components to

produce any rifle, whether or not similar or even identical to

the “M16”. However, although Colt never claimed patent

protection for the “M16” rifle as a whole or for the dimensions

of its components, Christianson contends that because the “M16”

rifle incorporates components for which Colt at one time had

patent protection, Colt may not now claim trade secret protec-

tion as to any other element of that product. Put simply,

’ Christianson contends that the Seventh Circuit “in essence. . .adopted as

precedent,” Pet. for Cert. at 19, the opinion of the Federal Circuit in this case,

which was vacated by this Court’s ruling that the Federal Circuit lacked

jurisdiction over the appeal. US. , 108 S. Ct. 2166, 2179 (1988). (PA-66)

Christianson argues that this Court is now required to grant the petition for

certiorari to avoid rendering this Court’s prior jurisdictional ruling “a hollow

exercise.” Pet. for Cert. at 20 n.16. Christianson’s argument ignores the Seventh

Circuit’s clear acknowledgment that the Federal Circuit’s decision was not

binding on it (PA-11) and its statement that it simply found the reasoning of

that opinion, while not precedential, to be persuasive. See, e.g., PA-ll

(references to “the comprehensive nature of the [Federal Circuit's} decision,”

and “the [Federal Circuit] court’s thorough analysis”).

t

Christianson’s argument is that Colt is prohibited from com-

bining patented inventions and specifications subject to trade

secret protection in the same product — or that, by doing so, Colt

forfeits any trade secret rights in components of the “M16” after

its patents expire.

First, Christianson is wrong on the merits.* The courts have

acknowledged that it is “merely normal business practice” to

maintain the details of a commercial manufacturing process as

trade secrets, even when the product being manufactured is sub-

ject to some patent protection as well. Illinois Tool Works Inc.

v. Solo Cup Co., 179 U.S.P.Q. 322, 368 (N.D. Ill. 1973). A large

number of cases illustrate the common practice of protecting

different aspects of the same product under both the patent and

trade secret laws. See, e.g., Dekar Industries, Inc. v. Bissett-

Berman Corp., 434 F.2d 1304, 1305 (9th Cir. 1970), cert. denied,

402 U.S. 945 (1971); CPG Products Corp. v. Mego Corp., 502

F. Supp. 42, 43-44 (S.D. Ohio 1980); Reinforced Earth Co. v.

Neumann, 201 U.S.P.Q. 205, 207, 208, 211, 215-16 (D. Md. 1978);

Lundy Electronics & Systems, Inc. v. Optical Recognition

Systems, Inc., 362 F. Supp. 130, 156-58 (E.D. Va. 1973), affd

per curiam, 493 F.2d 1222 (4th Cir. 1974).

Second, and of significance to the Court’s consideration of

this petition, is the fact that this issue was never argued to, or

decided by, either the Court of Appeals or the district court.

Christianson’s argument to the courts below was entirely pre-

mised on the claim that Colt’s failure to disclose commercial

production specifications for the “M16” rifle violated § 112. Hav-

ing lost on that ground before two unanimous Courts of Appeals,

* Moreover, any attempt to apply Christianson’s argument to the instant case

indicates the unworkability of its position. The nine patents whose validity

was challenged here were not the original patents covering the rifle’s basic

design features, but were later patents Colt obtained on improvements. (PA

3, 113) Colt’s basic patents had already been obtained before Colt developed

the specifications and tolerances it now seeks to protect as trade secrets. Under

Christianson’s theory, Colt lost its right to protect those trade secrets before

it had even developed them.

10

Christianson’s somewhat murky petition now attempts to assert,

ostensibly as a possible alternative ground for the district court’s

ruling, that even though Colt did not violate § 112, it still may

not assert any trade secret protection with regard to any aspect

of the “M16” rifle. Pet. for Cert. at 11-12 (“[T]he Seventh Cir-

cuit only addressed the issue of the sufficiency of Colt’s patent

disclosures. It did not discuss the impropriety of extending Colt’s

patent monopoly regardless of compliance with § 112, which

could have provided a base for affirmance.”). Having failed to

raise this argument in the courts below, and the Court of Ap-

peals accordingly having failed to address it, Christianson seeks

to have this Court rule on the question in the first instance.

However, “[w]here issues are neither raised before nor considered

by the Court of Appeals, this Court will not ordinarily consider

them.” Adickes v. S.H. Kress ¢ Co., 398 U.S. 144, 147 n.2 (1970);

see also Delta Air Lines, Inc. v. August, 450 U.S. 346, 362 (1981);

United States v. Mendenhall, 446 U.S. 544, 551-52 n.5 (1980);

Youakim v. Miller, 425 U.S. 231, 234 (1976) (per curiam). Peti-

tioner offers no reason why the Court should, in this case, take

the extraordinary step of considering an issue neither raised nor

decided below.

Just last Term, this Court reaffirmed its established precedent

that “state protection of trade secrets did not operate to frustrate

the achievement of the congressional objectives served by the

patent laws.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

US. , 109 S. Ct. 971, 979-80 (1989) (citing Kewanee Oil

Co. v. Bicron Corp., 416 U.S. 470 (1974)). Nothing in Christian-

son’s petition suggests that this case involves any impermissible

extension of trade secrets into the patent law area.

Colt’s patent and trade secret rights are separate and

separable; Federal patent law does not prevent Colt from claim-

ing the benefits of state trade secret law to protect nonpublic

information in which no patent rights are asserted. Petitioner’s

novel claim, not raised in any court below, does not merit this

Court’s review.

ll

CONCLUSION

| This case presents no opportunity to clarify any unsettled

issues of patent or trade secret law. It merely presents a

| straightforward application of a principle that has stood the

United States patent system well throughout its long history:

a patent need not disclose manufacturing data unnecessary to

the claimed invention. No court has found any conflict between

patenting inventions and maintaining trade secret protection

in manufacturing details of products incorporating those inven-

tions. No court has discovered any principle of federal patent

law that demands that trade secret protection be denied to pro-

duction data of the type Colt has endeavored to protect. No con-

flict among the circuits exists on these well-settled issues. This

case presents no conflict with any decision of this Court. Peti-

tioners have therefore presented no reason for reexamining the

Seventh Circuit’s restatement of these long-standing principles.

For the foregoing reasons, the petition for certiorari should

be denied.

Respectfully submitted;

ANTHONY M. RADICE

Counsel of Record

JosEPpH C. MARKOWITZ

MorRISON & FOERSTER

1290 Avenue of the Americas

New York, New York 10104

(212) 468-8000

—and—

Rosert L. HARMON

WILLIAN BrINKs OLps HOFER

GILSON & LIONE Ltp.

NBC Tower

455 North Cityfront Plaza Drive

Suite 3600

Chicago, Illinois 60611

(312) 321-4200

Counsel for Respondent

Dated: July 21, 1989

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