Opposition — Singer Co. v. Perma Research & Development Co.

5 : ’ '

IN THE MOV 5

Supreme Court of the United Frtaten.

October Term, 1976

No. 76-509

THE SINGER COMPANY,

Petitioner,

against

PERMA RESEARCH & DEVELOPMENT COMPANY,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

Justin N. FewpMan

Po.etti Fremin PeasHKER

Fetpman & Gartner

1185 Avenue of the Americas

New York, New York 10036

Attorney for Respondent

Of Counsel :

Barsana A. Lee

TABLE OF CONTENTS

PAGE

SERENE ASR DOE RRC ar On aeN 1

I—Petitioner seeks review of an abstract question

not decided by the court belOW ................666..0066 2

II—This case presents no important question of

Se PO ie POE PIM ane 4

I1I—-There is no conflict with decisions in other Cir-

RRR Alley omar. Seca SaaS EN Meer te 9

Conclusion .................. a a a SEE etn 12

TABLE OF AUTHORITIES

Cases:

Moor v. Texas & New Orleans R.R., 297 U.S. 101

CRS 7

Pearl Brewing Co. v. , Jos. Schlitz ‘Brewing Co. “ No.

71-H-778A (S.D. Tex. filed May 3, 1976) ............. 8,9

Thorpe v. ve Authority of Durham, 393 U. S.

268 (1969) .. a 4

United States v. ‘DeGeorgia, 420 F. od 889 (9th Cir.

1969) . 10

United States v. . Dioguardi, 428 F. 2d 1033 (2d Cir. ),

cert. denied, 400 U.S. 825 (1970) ................ 8

United States v. Liebert, 519 F.2d 542 (3d Cir. . cert.

denied, 423 U.S. 985 (1975) o.oo... cccceeeeeeeen 9,11

United States v. Nobles, 422 U.S. 225 (1975) occ. 7

United States v. Russo, 480 F.2d 1228 (6th Cir. 1973),

cert. denied, 414 U.S. 1157 (1974) oon, 10

II

Statutes and Rules:

Fep. R. Civ. P. 26(b)(4)(B) ..

Supreme Court Rue 21(1) ...............

Other Authorities:

Brown, Electronic Brains and the Legal Mind: Com-

puting the Data Computer’s Collision with Law,

Bee I is GT IIIED ois onsesecsecsscosocosecessecesensess

Note, 40 Bruyn. L. Rev. 116 (1973) ..............

PAGE

oe 2)

~ >

IN THE

Supreme Court of the United States

October Term, 1976

No. 76-509

rr pe

Tue Srncer Company,

Petitioner,

against

Perma Resgearcn & DeveLopment ComMPANY,

Respondent.

On Petition for a Writ of Certiorari to the

United States Court of Appeals

for the Second Circuit

RE A A

RESPONDENT’S BRIEF IN OPPOSITION

Argument

In this diversity action for breach of contract, no

substantive question of federal law is presented. The only

issues on appeal to the United States Court of Appeals for

the Second Circuit were whether the trial court’s findings

were supported by substantial evidence, and whether Peti-

tioner was prejudiced by certain evidentiary rulings. The

judgment having been affirmed, Petitioner now seeks review

2

by this Court of the Court of Appeals’ holding (a) that the

trial court did not abuse its discretion in receiving certain

computer-generated evidence which formed one of the bases

for the opinion of one of plaintiff’s expert witnesses (Ap-

pendix J, p. 136a) and (b) that Petitioner did not show

‘*that it did not have an adequate basis on which to cross-

examine plaintiff’s experts’’ (/d., p. 137a). Although Peti-

tioner sought review of that decision by the entire bench of

the Second Circuit on the same grounds here relied on, no

judge of that Court thought that the decision in this case

created a ‘‘compelling need for proper standards’’ to be

established for admissibility of ‘‘computerized evidence’’

in that Circuit, as Petitioner now urges this Court to do for

all Circuits.’ In view of the questions presented to the

Second Circuit and its disposition of them, it is apparent

that none of the ‘‘special and important reasons’’ for this

Court te grant certiorari is present.

Petitioner seeks review of an abstract question not

decided by the court below.

The holding of the Court of Appeals on the issue now

presented for this Court’s review was carefully limited to

the facts of this case. Mr. Justice Clark, writing for the

majority, expressed it as follows:

‘*While it might have been better practice for op-

posing counsel to arrange for the delivery of all details

of the underlying data and theorems employed in these

simulations in advance of trial in order to avoid un-

1. Petition for Certiorari (hereinafter “Pet.”), p. 6.

3

necessarily belabored discussion of highly technical,

tangential issues at trial, Fed. R. Civ. P. 26(b)(4)(A),

the trial judge did not abuse his discretion in allowing

the experts to testify as to this particular basis for their

ultimate conclusion that the Perma device was indeed

perfectible. While delivery of the actual computer pro-

grams would not appear to serve much purpose apart

from delivery of the data and scientific formulae em-

ployed, the production of such programs in advance of

trial with suitable protective orders to protect truly

proprietary aspects of the programs also would have

been better practice. On the record before us, how-

ever, we hold that Singer has not shown that it did

not have an adequate basis on which to cross-examine

plaintiff’s experts.’’

(Appendix J, pp. 136a-137a, emphasis added.) The quoted

passage is the entire text of the Court of Appeals’ ruling

‘on the issue this Court is now asked to review. Nowhere

did it hold, as Petitioner contends

‘*(a) that disclosure of computer programs, admit-

tedly containing the ‘data and scientific formulae em-

ployed’, is not a required foundation for admission of

the results of computer simulations; and (b) that dis-

closure of computer programs is not necessary to effec-

tive cross-examination of witnesses stating the results

of computer simulations’’.

(Pet. 5). In the absence of any such broad holding, Peti-

tioner’s suggestion that this Court use this case as a vehicle

for setting ‘‘ Basic Standards’’ for the ‘‘Proper Adminis-

tration of Justice’’ with respect to the admissibility of

computer-generated evidence (Pet. 6) is, then, nothing more

than a request for this Court to decide an ‘‘abstract, hypo-

thetical or contingent question,’’ which we respectfully sub-

mit that the Court should decline to entertain for the rea-

4

sons set forth in Thorpe v. Housing Authority of Durham,

393 U.S. 268, 283-84 (1969).

Even if the abstract question this Court is asked to re-

view had been decided by the court below, it would still be

inappropriate for review on certiorari, for neither of Peti-

tioner’s two ‘‘Reasons for Granting the Writ’’ survive

analysis.

, This case presents no important question of federal

aw.

Although the Petition is replete with references to ‘‘the

magic world of computerization’’ (Pet. 5) and to all the

many kinds of errors which may theoretically appear in

computer-generated evidence (Pet. 6), there is no ‘‘magic”’

here involved. A computer program, as Petitioner itself

acknowledges, is nothing more than the set of step-by-step

directions which triggers the mechanical operations a com-

puter performs on the data fed into it.? Here, Petitioner

was furnished with all of the substantive information from

which the mechanical operations performed by the com-

puter could readily have been reconstructed; its complaint

that those operations should also have been embodied in

and formally produced in the form of a single convenient

document or thing is thus nothing more than a formal ob-

jection, altogether without substance. All of the informa-

tion Petitioner needed to attack the reliability of the com-

2. See Pet. 8, quoting Brown, Elect, onic Brains and the Legal

Mind; Computing the Data Computer's Collision with Law, 71

(i973 L.J. 239, 243 (1961) and Note, 40 Bxtyn. L. Rev. 116, 117

).

5

puter simulations was furnished. All of tre computer

input—the data and scientific formulas employed in the

simulations—was in evidence, and the expert witness who

was the author of the program testified in open court as to

the assumptions and decisions reflected in the program, and

the reasons for them. Petitioner’s experts thus had all

the information necessary to write their own program; ~

their results—computer output—had then differed from

those offered in evidence by Respondent, no further ‘‘foun-

dation’’ would have been necessary to attack the reliability

of Respondent’s computer-generated evidence.* Mr. Jus-

tice Clark’s observation that ‘‘delivery’’ of the program

would have served little additional purpose although pre-

trial ‘‘production . . . would have been better practice’’

(Appendix J, p. 137a), is, therefore, hardly as ‘‘astonish-

ing ’’ as it seems to Petitioner (Pet. 11), but simply a fur-

ther indication that the decision in this case was limited to

its own facts.

Petitioner’s argument that this case presents an impor-

tant question of law (nowhere precisely defined in the Peti-

3. Petitioner did not elect to certify any portion of the record

pursuant to this Court’s Rule 21(1) prior to filing herein. Respond-

ent has accordingly, pursuant to that Rule, requested the Clerk of

the Court of Appeals for the Second Circuit to certify and transmit to

this Court the portions of the record cited in this Brief. The relevant

portion of the cross-examination of Petitioner's expert DeVilliers,

the author of the program, appears at Tr. 3067-86 and 3712-3891.

The input information, from which Petitioner’s experts could have

duplicated the simulation had they elected to do. so appears in Plain-

tift’s Exhibits 23, 132, 133, 133A, 134, 135, 142 and 143 and Tr. 2964-

70, 2984-88, 3014, 3926-27. Petitioner in fact retained an expert for

this purpose (Tr. 7932) during a three-week recess that interrupted

the cross-examination of DeVilliers (Tr. 3091, 3712). Thereafter it

abandoned this strategy, for reasons never explained on the record

(Tr. 7932), giving rise to the inescapable inference that the results

obtained by Petitioner’s expert did nothing to contradict those offered

in evidence by Respondent.

6

tion) relies heavily on a statement in the dissenting opinion

below which is itself factually inaccurate :

‘

‘*Because the record in this case contains no informa-

tion about the programming relied upon by plaintiff’s

experts, neither we nor defense counsel have any way

of knowing whether it was complete or accurate.’’

(Appendix J, p. 16la, quoted in Pet. 10). The record

abounds, however, in such information. . Petitioner had the

opportunity to cross-examine the expert who did the actual

programming, and questioned him in exhaustive detail

about the logical and analytical assumptions underlying the

computer program, the reasons for them, and the extent to

which the program simulated particular features of the

anti-skid device.* The computer input was not only in evi-

dence but some of it was derived from and published in

standard university textbooks.’ The record in this case

thus clearly supports the Court of Appeals’ holding that

Petitioner has not shown that it did not have an adequate

basis on which to cross-examine Respondent’s experts (Ap-

pendix J, p. 137a).

Petitioner’s reliance on the dissenting judge’s view that

**(Respondent’s] entire case rests upon the accuracy of its

computerized calculations’’ (Pet. 3, quoting Appendix J, p.

162a) is equally misplaced. The majority of the Court of

Appeals understood and said that the simulation was but

one basis for the opinion of Respondent’s experts; as Mr.

Justice Clark put it:

‘‘the trial judge did not abuse his discretion in allowing

the experts to testify as to this particular basis for their

4. Tr. 3067-86, 3712-3875.

5. Tr. 2967, 2906.

——_

7

ultimate conclusion that the Perma device was indeed

perfectible.’’

(Appendix J, pp. 136a-37a, emphasis added.) Respondent’s

principal expert witness based his opinion upon, among

other things, the patents relating to the anti-skid device;

diagrams, schematic drawings and models of the device and

its various components, including proposed ‘‘fail-safe’’

modifications; documents relating to Petitioner’s specific

criticisms of the device,* and reports relating to empirical

tests of the device,’ as well as on the simulations which were

separately authenticated by the programmer. The trial

court’s finding that the Perma anti-skid device was perfect-

ible was expressly based upon ‘‘all of the evidence’’ (Ap-

pendix G, p. 83a).

Respondent’s ‘‘important question of law’’ is, then,

nothing more than the difference between the dissenting

judge’s view of the record below and that of the majority,

expressed in the language of Mr. Justice Clark which we

have quoted above, pp. 2-3. The very nature of this differ-

ence clearly demonstrates the factual nature of the contro-

versy this Court is now asked to review. All that was de-

cided here was an issue committed to the trial court’s dis-

cretion, of the type which this Court has consistently de-

clined to review, e.g., United States v. Nobles, 422 U.S. 225,

242 (1975); Moor v. Texas & New Orleans R.R., 297 US.

101, 105 (1936). The precise question on which that discre-

tion was exercised—admission of expert testimony based in

part on computer-generated evidence without ordering pro-

6. Tr. 2451-55.

7. Tr. 2467, 2478; PX 19, 21; DX 12; Tr. 354. See also Ap-

pendix G, p. 124a.

8

duction of the computer program—is hardly of sufficiently

far-reaching importance to warrant consideration by this

Court, much less the broad prospective rule-making in which

Petitioner asks the Court to indulge.

Only one case appears to have presented the precise

question here involved, admissibility of evidence produced

by ‘‘a computer... programmed to produce evidence specif-

ically for trial’? (Pet. 8). In United States v. Dioguardi,

428 F. 2d 1033 (2d Cir.), cert. denied, 400 U.S. 825 (1970),

the Second Circuit severely criticized the prosecution’s use

of computer-generated evidence without having furnished

the program to the defense, but held, as it did here, that,

on the record before it there was no prejudice, because the

defense had ample other means for attacking the computer-

generated evidence.* Thus the rarity with which the precise

question presented in this case and the Dioguardi case has

arisen further refutes Petitioner’s claim that an important

question of law is somewhere lurking in those two discre-

tionary rulings. This obvious lack of urgency is not over-

come by Petitioner’s prediction that ‘‘computers will be

increasingly used to provide evidence in trials.’’ (Pet. 6).

There is nothing in this case, or in the Petition, to suggest

that existing evidentiary and procedural rules are not suffi-

ciently flexible to respond to such a situation.

8. The unreported ruling of a District Court on pre-trial dis-

covery motions in Pearl Brewing Co. v. Jos. Schlitz Brewing Co.,

No. 71-H-778A (S.D. Tex. filed May 3, 1976), also cited by Peti-

tioner, is irrelevant. The program relating to the computer-generated

evidence in that case had already been produced voluntarily (in con-

trast to the present case, no issue as to its proprietary character ap-

pears to have been involved), and the District Court’s opinion dealt

with the extent to which defendant would be permitted to depose

plaintiff's non-trial experts pursuant to Fep. R. Civ. P. 26(b) (4) (B).

lil

There is no conflict with decisions in other Circuits.

Petitioner next argues that the decision below ‘‘conflicts

with decisions of other courts of appeal’’ which it charac-

terizes as holding that disclosure of the computer program

is necessary (1) ‘‘as a proper foundation for computer-

generated evidence’’ and (2) ‘‘for meaningful cross-exam-

ination’’ (Pet. 10). In fact, no case in any Circuit has

required productien of a computer program for either pur-

pose.

Three Courts of Appeals cases are cited in support of

Petitioner’s ‘‘foundation’’ argument.® United States v.

Liebert, 519 F.2d 542, 547 (3d Cir.), cert. denied, 423 U.S.

985 (1975), dealt only with pre-trial discovery, in connec-

tion with which the Court of Appeals observed by way of

dictum that

‘‘The introduction of a computer printout is admissible

in a criminal trial provided that the party offering the

computer information lays a foundation sufficient to

warrant a finding that such information is trustworthy

and the opposing party is given the same opportunity

to inquire into the accuracy of the computer and its

9. Pearl Brewing Co. v. Jos. Schlitz Brewing Co., discussed

above, p. 8, is also cited for this proposition (Pet. 11). Since the

motions before the District Court in that case dealt with the scope

of pre-trial discovery of adverse experts, the foundation to be re-

quired for their evidence if the case ever came to trial was not in

issue. Even if it were, that would hardly be a “special and impor-

tant reason” for this Court to review the decision of the Second Cir-

cuit in this case. It is not the pu of certiorari to afford an

opportunity to reconcile appellate decisions with those of every court

of inferior jurisdiction in the federal system.

10

input procedures as he has to inquire into the accuracy

of written business records.’’

Neither the nature of the foundation required nor the rele-

vance of the computer program thereto is discussed. In

both United States v. Russo, 480 F.2d 1228 (6th Cir. 1973),

cert. denied, 414 U.S. 1157 (1974), and United States v.

DeGeorgia, 420 F.2d 889 (9th Cir. 1969), computer evidence

was in fact received without production of the program,

and, as in the present case, the weight of the computer

evidence was explored by cross-examination of live expert

witnesses about the procedures employed. In Russo, the

Court of Appeals for the Sixth Circuit held that an ade-

quate foundation was laid for the admissibility of summa-

ries of computer printouts where qualified experts testified

—exactly as the programmer did here—as to the accuracy

of the input and ‘‘the nature of the information which went

into the machine and upon which its printout was based,’’

480 F.2d at 1241. In DeGeorgia, although the Government

‘*presented foundation evidence as to input procedures

used,’’ the Court of Appeals expressly declined to pass

upon the adequacy of the foundation, 420 F.2d at 893, note

>

Petitioner’s ‘‘foundation’’ argument, then, is based ex-

clusively on cases in which computer-generated evidence

was received without production of the program; far from

demonstrating a conflict in the Circuits, these cases are

entirely consistent with the ruling below.

10. The concurring opinion of Judge Ely, which Petitioner cites

separately as in “conflict” with the decision herein, discusses founda-

tion requirements in some detail, yet nowhere says that laying a

foundation requires production of a program.

11

Petitioner’s ‘‘meaningful cross-examination’’ argument

is equally fanciful. In the face of Mr. Justice Clark’s un-

ambiguous finding that petitioner ‘‘has not shown that it

did not have an adequate basis on which to cross-examine

plaintiff’s experts,’? (which Petitioner characterizes as

‘*sophistry’’ (Pet. 12)), Petitioner asks this Court to im-

pose an inflexible black-letter rule that delivery or produc-

tion of a computer program should be an absolute prerequi-

site to the admissibility of computer-generated evidence. In

support of this argument, it makes the bald statement that

the Second Circuit’s decision herein ‘‘is in conflict with

other Federal Courts which have found that disclosure of

the information contained in computer programs is neces-

sary to cross-examination’’ (Pet. 14). No case has in fact

so held.

Petitioner’s only authority for this proposition is a par-

tial quotation from United States v. Liebert, 519 F.2d 542,

550 (3d Cir.), cert. denied, 423 U.S. 985 (1975) (Pet. 14),

which not only is not in point, but when read in context

lends considerable support to the opposite conclusion. In

that case, defendant was accused of failure to file income

tax returns, and the Government intended to rely at trial

primarily on evidence that its computer contained no record

of such filings. Defendant sought production of the Inter-

nal Revenue Service’s ‘‘nonfiling lists’’—computer output

—which he hoped to show included taxpayers who had in

fact filed, as he contended he had done. The Court of Ap-

peals upheld the Government’s refusal to produce the lists

on the ground that there was no need to invade the privacy

of third persons as long as there were reasonable alter-

native means of challenging the Government’s computer

evidence. The five alternative means that the Government

12

offered are described at length in the Court of Appeals

opinion, 519 F.2d at 550, and did not include production of

a computer program. ‘‘Such alternatives,’’ the Court ob-

served in the sentence which Petitioner quotes only in part,

‘*should provide Liebert with the information necessary to

cross-examine the computer testimony confronting him by

analyzing the reliability of the computer system in theory

and checking the accuracy of the system in fact.’’

This is a far cry from holding expert testimony inadmis-

sible at trial because the proprietary program is not pro-

duced. Mr. Justice Clark’s finding that Petitioner was not

prejudiced here is amply supported by the record showing

full cross-examination of the programmer. It is the logic

by which Petitioner now suggests that it should also have

been allowed to cross-examine ‘‘the computer and its pro-

gram’’ (Pet. 13) which is ‘‘sophistry,’’ not the finding of

Mr. Justice Clark.

Conclusion

The decision below was correct and is based upon its

own special facts. It presents a very narrow question, and

there is no reason for review by this Court. Certiorari

should be denied.

Respectfully submitted,

Justin N, FetpMan

Po.terti Fremin PrasHKEeR

FeLpMAN & GARTNER

1185 Avenue of the Americas

New York, New York 10036

Attorney for Respondent

Of Counsel:

Barsara A. Lee

Dated: November 5, 1976