Petition — Doolittle v. United States

Orne Fileg ff

October Term, 1976

RTS See

INTERNATIONAL RECTIFIER CORPORATION, ef al.,

Petitioners,

VS.

PFIZER, INC.,

Respondent.

VOLUME I

Petition for Writ of Certiorari to the United States

Court of Appeals for the Eighth Circuit.

( Appendix in Volume II)

PETER R. COHEN,

9601 Wilshire Boulevard, Suite 200,

Beverly Hills, Calif. 90210,

(213) 278-4011,

Attorney for Petitioner.

Parker & Son, Inc., Law Printers, Los Angeles. Phone 724-6622

SUBJECT INDEX

Volume I

Page

| Petition for Writ of Certiorari to the United States

| Court of Appeals for the Eighth Circuit .......... |

| I

SOON siineicsstinicbeiatitsiitenialilganatitasbvatbbidaliaalania l

| II

| i te 2

Ill

I a 2

IV

a 2

Vv

ny Gr eg 2

VI

Reasons for Granting the Writ ...................... 7

1. The Remedy of Summary Judgment

Should Be Available Where the Uncon-

troverted Facts Show That the Patent

Applicant Deliberately Withheld Facts

Presented to the Patent Office ................ 7

2. Where the Uncontroverted Facts Are

That the Patentee Deliberately Withheld

Material Facts From or Deliberately Mis-

represented Facts Presented to the Patent

Office, the Patentee Cannot Avoid Sum-

mary Judgment by Simply Asserting

That He Did Not Subjectively Intend to

Defraud the Patent Office .................. 8

ii.

Page

3. Summary Judgment Is Proper Where the

Court Can Readily Understand the Tech-

nology Involved Without Expert Testi-

DOTTED | wiccienesisieniinisistaisninaiitalatcbhiinciaitincdeiaphiatinasan 17

i Ye ore AE 19

INDEX TO APPENDIX

Volume II

Findings of Fact, Conclusions of Law and Order .. 1

Appeal From the United States District Court for

GO EIRMRTEES GE DEOBIED ...cccccesesnecccsscccnscscccccsssee 95

Paragraph 8 of Examiner Adams Affidavit (Feb-

SRE | Wik: WENDT citanussicaninasdenindunpsittaindsetinininiendias 129

Blackwood, et al. Affidavit (March 27. 1975) .. 129

Blackwood—Affidavit (April 9, 1975)

Paragraph 8 of Examiner Adams Affidavit (Feb-

ES es Pe teteniiiediniictidlliadeinitiatittedlipinaians 133

Paragraph 19 of Stephens Affidavit (March 27,

STIPE -Widiaeneiinitiiainlichaebtd iiancmaabiaiaiticeaatitleeieeidaiedaen 134

Last Paragraph of Pfizer Exhibit 35 M (December

es: SIE: eciestasdistestentusincicaiihce th cite cocietilibeaieth jimi 134

_—_—_—->-

iii.

TABLE OF AUTHORITIES CITED

Cases Page

A.R. Inc. v. Electro-Voice, Inc., 311 F.2d 508

mn Sn deeannaanaaiiiie oe

Alco Kar Kurb, Inc. v. Ager, 286 F.2d 931 (3rd

Rn ae 7

Ballantyne Instruments & Electronics v. Wagner,

£e fk Lo | | See 7

Beckman Instruments, Inc. v. Chemtronics, Inc.,

428 F.2d 555 (Sth Cir. 1970), cert. denied,

ee Se CID cecnesicncitindchesesenatncctittsiatdaiitae 10

Bobertz v. General Motors Corp., 228 F.2d 94

(6th Cir. 1955), cert. denied, 352 U.S. 824

UUIU nksccsissnsscnesniisebiabliblctiactudepinmsctaiinbtivediane basins 8

Charles Pfizer & Co. v. FTC, 401 F.2d 574 (6th

Cir. 1968), cert. denied, 394 U.S. 920 (1969)

cei ibid cinrpasioaalanetninbitnaladseniiitiaiioddlanantéadninebentaiees 9

Dresser Industries, Inc. v. Eltra Corp., 186

U.S.P.Q. 329 (N.D. Ohio 1975) .........00....... 10

Farmer Bros. Co. v. Coca Cola Co., 384 F.Supp.

is NEE, TEEEPEEED wicdisarecienntedecieninamccsuneens 8

Graham v. John Deere Co., 383 U.S. 1 (1966). 9

Hazel-Atlas Glass Co. v. Hartford-Empire Co., 322

Sp ff , | Re ee ee 7

Honeywell, Inc. v. Sperry Rand Corp., 180

SR Gee CEP. TE, COG R) cccccescscsscnccessnes 10

1.T.S. Rubber Co. v. Essex Rubber Co., 272 U.S.

EATER SSIES LR ge ON 13, 14

Interlego, A.G. v. F.A.O. Schwarz, Inc., et al.,

187 U.S.P.Q. 580 (N.D. Ga. 1975) 000.0000... 8

iv.

Page

Intermountain Research and Engineering Co. v.

Hercules, Inc., 171 U.S.P.Q. 577 (C.D. Cal.

IG TE ) cncrcwsiessiecsnsnecnsecsusunsiodddensiannnnsinnnnaaannnnn 10

Kaz Manufacturing Co. v. Chesebrough-Pond’s,

Inc., 317 F.2d 679 (2nd Cir. 1963) .............. 7

Lear Inc. v. Adkins, 395 U.S. 653 (1969) . 7

Marconi Wireless Telegraph v. United States, 320

UB. 1. CIDER) cccccoresssossensssvcenmuminnne 16

Methode Electronics, Inc. v. Eleo Corp., 385 F.2d

58 (Sa8 Cie. BRUT) scecccnscccceneee 7

Monolith Portland Midwest Co. v. Kaiser Alu-

minum & Chemical Corp., 407 F.2d 288 (9th

- >, | eee ee ss =e

Monsanto Co. v. Rohm & Haas Co., 312 F.Supp. ~

778 (E.D. Pa. 1970), aff'd 456 F.2d 592 (3rd

Cir. 1972), cert. denied, 407 U.S. 934 (1972)

senrecensesseussessinnieenanenemeanasnlansesiannanaa 9, 10, 12

Precision Instrument Mfg. Co. v. Automotive

Maintenance Machinery Co., 324 U.S. 806

4) eee veisoopeisoanesieusseresiitendisinessnninsnaiiiaianannnn 9, 13

Proler Steel Corp. v. Luria Bros. & Co., 417 F.2d

rey Be A | nen me 8

Research Corporation v. Nasco Industries, Inc.,

501 F.2d 358 (7th Cir. 1974), cert. denied, 95

Tom Fe. | ae » oF

Robbins Company v. Lawrence Manufacturing

Company, 482 F.2d 426 (9th Cir. 1973) ... 12

Ronel Corp. v. Anchor Lock of Florida, Inc.,

325 F.2d 889 (Sth Cir. 1963) ...........cccccccsees 8

v.

Page

SCM Corp. v. Radio Corp. of America, 318 F.

Same. 433 (S.DAN.Y. 1970) ...2.<..--ccccccceceeceseess 10

Smith v. General Foundry Machine Co., 174 F.2d

147 (4th Cir. 1949), cert. denied, 338 U.S. 869

Steigleder v. Eberhard Faber Pencil Co., 176 F.2d

604 (Ist Cir. 1949), cert. denied, 338 U.S. 893

Timely Products Corp. v. Arron, 523 F.2d 288

ER 10

United States Movidyn Corp. v. Hercules, Incor-

porated, 388 F.Supp. 1146 (D. Minn. 1975) .. 10

: Statutes

United States Code, Title 28, Sec. 1254(1) -.... 2

United States Code, Title 35, Sec. 102 .............. 2

United States Code, Title 35, Sec. 103 ~............ 2

United States Code, Title 35, Sec. 112 —............ 2

IN THE

Supreme Court of the United States

October Term, 1976

BN iii dents

INTERNATIONAL RECTIFIER CORPORATION, ef al.,

Petitioners,

VS.

PFIZER, INC.,

Respondent.

Petition for Writ of Certiorari to the United States

Court of Appeals for the Eighth Circuit.

International Rectifier Corporation (“IRC”)' (here-

inafter referred to as “Petitioner”) prays that a Writ

of Certiorari issue to review the judgment of the United

States Court of Appeals for the Eighth Circuit entered

in the above entitled case on June 16, 1976.

I

Opinions Below.

The Opinion of the United States Court of Appeals

for the Eighth Circuit (A. pp. 95-128) is reported

at 190 U.S.P.Q. 273. The Opinion of the United States

District Court, District of Minnesota, Fourth Division

(A. pp. 2-95) is reported at 186 U.S.P.Q. 511 (D.

Minn. 1975).

1International Rectifier Corporation and its four subsidiaries,

Rachelle Laboratories Italia S.p.A., Rachelle Laboratories, Inc.,

Rachelle Pharmaceuticals International, S.A., and Rachelle Lab-

oratories & Philippines), Inc., are hereinafter jointly referred

to as “IRC”.

Jurisdiction.

The undated Opinion of the United States Court of

Appeals for the Eighth Circuit was entered on June

16, 1976. A timely request for an extension of time

within which to file this petition was granted on August

27, 1976 extending petitioner’s time to and including

October 14, 1976. The jurisdiction of this Court is

invoked under 28 U.S.C. §1254(1).

Ill

Question Presented.

Whether in a patent case, where the issue is fraudulent

and inequitable conduct before the Patent Office, the

patent applicant’s subjective intent to commit a fraud

or engage in inequitable conduct is either an element

of proof or a defense.

IV

Statutes Involved.

This case involves 35 U.S.C. §§102, 103 and 112.

V

Statement of the Case.

On January 11, 1973, Pfizer, Inc. (“Pfizer”) fiied

suit against IRC and its customer, USV Pharmaceuti-

cal Corporation (“USV”) (hereinafter both referred

to as “defendants”) for alleged infringement of its

doxycycline patent, U.S. No. 3,200,149. Defendants’

answers allege, insofar as here material, that the doxy-

cycline patent was procured by fraudulent and inequi-

table conduct before the Patent Office and is therefore

invalid and unenforceable.

~

Pfizer filed the doxycycline patent application in

May, 1961, and after three Patent Office Rejections

and five Amendments by Pfizer, the patent finally

issued in August of 1965.

On February 11, 1975, defendants moved for partial

summary judgment seeking, among other things, to

establish that in prosecuting the patent application,

Pfizer had withheld certain facts and misrepresented

other facts relevant to a variety of different issues

of patentability, and that both individually and cumula-

tively, Pfizer’s conduct was fraudulent and inequitable,

and that hence its doxycycline patent was invalid and

unenforceable.

Defendants’ motion was based almost entirely upon

Pfizer’s contemporaneous documents and the affidavit

of one of the Patent Examiners. Pfizer’s opposition

(which did not deny the facts established by its contem-

poraneous documents and by the affidavit testimony

of the Patent Examiner) was based entirely on the

ultimate legal effect of its conduct before the Patent

Office and upon the affidavits of its scientists and

patent agents which sought to raise factual issues by

proclaiming their “good faith” and “good faith beliefs”

concerning their withholding of certain facts and their

misrepresentation of other facts, to the Patent Office.

On July 16, 1975, the District Court, in an 80

page Opinion, granted defendants’ motion for partial

summary judgment, finding that over 150 uncontrovert-

ed facts existed (A. p. 9). From these uncontroverted

facts, the District Court concluded that there was no

genuine issue of material fact as to five separate frauds

committed on the Patent Office. Of these five separate

frauds, the District Court found that four were material

—_

to an issue of patentability at some time during the

prosecution of the patent application and constituted

inequitable conduct, and that one was so material

throughout the prosecution of the patent application,

that “but for” this fraud, the patent would not have

issued with the broad claims which were in fact granted.

Finally, the District Court concluded that Pfizer’s cumu-

lative course of conduct before the Patent Office con-

stituted fraudulent conduct, or at the very least a calcu-

lated recklessness about the truth, for the purpose

of obtaining a patent containing the broadest possible

product and process claims, which conduct also barred

enforcement of the doxycycline patent.

In finding that Pfizer’s conduct was fraudulent and

inequitable, the District Court found only that Pfizer’s

withholding of certain facts and its misrepresentation

of other facts was “deliberate” in that Pfizer, with

knowledge of the existence of the true facts, had inten-

tionally withheld, or misrepresented, facts which were

material to different issues of patentability; and that

whether or not Pfizer also had the accompanying sub-

jective intent to defraud the Patent Office was irrele-

vant. Thus, the District Court expressly stated that:

“ . . Pfizer’s assertions of good faith belief,

based on its scientists’, patent agents’, and attor-

neys’ subjective state of mind, in misrepresenting

to and withholding relevant facts from the Patent

Office does not create any genuine issue of material

fact.” (A. p. 14) (Emphasis added).

The District Court’s conclusion that the “deliberate”

misrepresentation oY withholding of relevant facts with-

out inquiring into the subjective intent of the patentee

as to whether or not a fraud was intended is the

~

crux of the difference between the District Court’s

judgment that the patent is unenforceable and the

Eighth Circuit’s reversal thereof. In this regard, the

Eighth Circuit, in reversing the judgment, initially stated

that “[t]}he scientific issues at stake are of such moment

that all parties should be permitted to present their

evidence fully in a plenary trial not restricted to a

trial by affidavit” (A. p. 101); but then the Eighth

Circuit based its reversal as to each of the issues

relating to Pfizer’s conduct before the Patent Office

on the alleged existence of genuine issues of material

fact concerning “. . . intent, good faith and other

subjective feelings . . .” (A. p. 103), such as “.

the states of mind of Pfizer’s scientists and patent coun-

sel. . .” (A. p. 113), and Pfizer’s “willfulness” (A. p.

116) concerning its uncontroverted conduct before the

Patent Office.

The issue of “deliberate” in the sense of intending

to do an act versus “deliberate” in the sense of in-

tending to do an act with the accompanying motive

of also intending to commit a fraud was the issue

before the Eighth Circuit.

However, the Eighth Circuit also based its reversal

upon the existence of “. . . additional issues of tech-

nical fact . . . [which] are unsuited for summary

resolution without the benefit of live expert testimony

and cross-examination in a plenary trial.” (A. p. 113)

and “the examiner’s understanding of technical facts

critical to evaluating Pfizer’s conduct” (A. p. 116). This

additional ground was not an issue on appeal.

In its Opinion, the District Court painstakingly set

forth the undisputed “Facts Respecting Technical Terms

and Concepts” (A. pp. 27-31), all of which were taken

—

from Pfizer’s affidavits. Likewise, in its Opinion, the

Eighth Circuit summarized with precise and com-

plete understanding its summary of the technical facts.

Thus, both the District Court and the Eighth Circuit

correctly understood and enunciated the technology

necessary to appreciate the factual issues. Neither Pfiz-

er, in its appeal from the District Court’s judgment,

nor petitioners, in the within petition, claim that the

technical facts are anything other than as set forth

by both lower lower courts. (See further discussion

in Point VI 3, infra).

ollne

VI

Reasons for Granting the Writ.

1. The Remedy of Summary Judgment Should Be Available

Where the Uncontroverted Facts Show That the Patent

Applicant Deliberately Withheld Facts From or Misrep-

resented Facts Presented to the Patent Office.

In Ballantyne Instruments & Electronics v. Wagner,

345 F.2d 671 (6th Cir. 1965), the court said that

“the public interest in every patent case requires that

suits involving the validity of patents should be speedily

determined [by motions for summary judgment if ap-

propriate].” This Court in Lear Inc. v. Adkins, 395

U.S. 653 (1969) also declared that “dilatory court

tactics”, particularly in patent cases, should be discour-

aged to protect the public against improvidently granted

patent monopolies.

See also Hazel-Atlas Glass Co. v. Hartford-Empire

Co., 322 U.S. 238 (1944), where this Court also

stated that where the uncontroverted evidence estab-

lishes fraud, “|n|othing in reason or precedent requires

such a cumbersome and dilatory procedure” as a plenary

trial.

In accordance with the policy of speedily terminating

unwarranted patent monopolies, the Courts of Appeal

have held that summary judgment is as appropriate

in patent cases as it is in any other case. Steigleder

v. Eberhard Faber Pencil Co., 176 F.2d 604 (lst

Cir. 1949), cert. denied, 338 U.S. 893; Kaz Manufac-

turing Co. v. Chesebrough-Pond'’s, Inc., 317 F.2d 679

(2nd Cir. 1963); Alco Kar Kurb, Inc. v. Ager, 286

F.2d 931 (3rd Cir. 1961); Methode Electronics, Inc.

v. Elco Corp., 385 F.2d 138 (3rd Cir. 1967); Smith

v. General Foundry Machine Co., 174 F.2d 147 (4th

a

Cir. 1949), cert. denied, 338 U.S. 869; Ronel Corp.

v. Anchor Lock of Florida, Inc., 325 F2d 889 (5th

Cir. 1963); Bobertz v. General Motors Corp., 228

F.2d 94 (6th Cir. 1955), cert. denied, 352 U.S. 824

(1956); A.R., Inc. v. Electro-Voice, Inc., 311 F.2d

508 (7th Cir. 1962); Research Corporation v. Nasco

Industries, Inc., 501 F.2d 358 (7th Cir. 1974); Proler

Steel Corp. v. Luria Bros. & Co., 417 F.2d 272,

273, 274 (9th Cir. 1969).

In following that policy, the District Courts have

recently granted summary judgment in patent cases

where the uncontroverted facts demonstrated that the

patentee procured its patent by fraudulent or inequitable

conduct. Farmer Bros. Co. v. Coca Cola Co., 384

F.Supp. 595 (D.C. Cal. 1974); Interlego, A.G. v.

F.A.O. Schwarz, Inc., et al., 187 U.S.P.Q. 580 (N.D.

Ga. 1975).

In the case at bar, the Eighth Circuit has now

made it impossible to obtain a summary judgment

in a patent case involving uncontroverted deliberate

fraudulent or inequitable conduct upon the Patent Of-

fice, by allowing the patentee to force a plenary trial

merely by asserting, “I didn’t mean it”.

2. Where the Uncontroverted Facts Are That the Patentee

Deliberately Withheld Material Facts From or Deliberately

Misrepresented Facts Presented to the Patent Office, the

Patentee Cannot Avoid Summary Judgment by Simply As-

serting That He Did Not Subjectively Intend to Defraud

the Patent Office.

A patent applicant is a fiduciary, and as such has

an uncompromising duty of candor which requires the

disclosure to the Patent Office of all facts which may

—

be relevant to an issue of patentability. Precision Instru-

ment Mfg. Co. v. Automotive Maintenance Machinery

Co., 324 U.S. 806, 814-18 (1945); Charles Pfizer

& Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968),

cert. denied, 394 U.S. 920 (1969); Monsanto Co.

v. Rohm & Haas Co., 312 F.Supp. 778, 798-800

(E.D. Pa. 1970), aff'd 456 F.2d 592, 597-99 (3rd

Cir. 1972), cert. denied, 407 U.S. 934 (1972); Mono-

lith Portland Midwest Co. v. Kaiser Aluminum &

Chemical Corp., 407 F.2d 288, 294 (9th Cir. 1969).

This obligation of absolute candor is based upon

the fact that the Patent Office has no testing facilities,

and must necessarily rely on the applicant for relevant

information, Charles Pfizer & Co. v. FTC, supra, and

the public policy which abhors unwarranted patent

monopolies as an illegal burden on free competition,

Precision Instrument Mfg. Co. v. Automotive Mainte-

nance Machinery Co., supra; Graham v. John Deere

Co., 383 U.S. 1, 9 (1966). Hence, given the realities

of Patent Office prosecution, the only way to assure

that the standards of patentability are properly applied,

is to hold the applicant to the highest standards of

disclosure and candor, and fashion rules which are

designed to assure that those standards are fully and

faithfully met.

In fashioning such rules, the Courts of Appeal have,

over the years, appeared to create more than one

rule. The more recent and increasingly applied rule

does not require a party attacking the validity of a

patent to prove that the patent would not have issued

as a matter of law “but for” the misrepresentation

or concealment. Rather, that rule requires only that

the misrepresentation or concealment be material, i.e.,

relevant to an issue of patentability. Monsanto v. Rohm

=

& Haas Co., 312 F.Supp. 778, 798-800 (E.D. Pa.

1970), aff'd 456 F.2d 592, 597-99 (3rd Cir. 1972),

cert. denied, 407 U.S. 934 (1972); Beckman Instru-

ments, Inc. v. Chemtronics, Inc., 428 F.2d 555, 556

(Sth Cir. 1970), cert. denied, 400 U.S. 956 (1970);

Monolith Portland Midwest Co. v. Kaiser Aluminum

& Chemical Corp., 407 F.2d 288, 294 (9th Cir. 1969);

SCM Corp. v. Radio Corp. of America, 318 F.Supp.

433 (S.D.N.Y. 1970); United States Movidyn Corp.

v. Hercules, Incorporated, 388 F.Supp. 1146 (D. Minn.

1975); Timely Products Corp. v. Arron, 523 F.2d

288, 298 (2nd Cir. 1975); Honeywell, Inc. v. Sperry

Rand Corp., 180 U.S.P.Q. 673, 711 (D. Minn. 1973).

As stated above, the District Court here found that

of the five separate frauds committed on the Patent

Office, four met the newer “materiality” standard and

one satisfied the older “but for” standard. In addition,

as also explained, supra, the District Court also cumu-

lated the five different frauds as a sixth and separate

ground of unenforceability, Monolith Portland Midwest

Co. v. Kaiser Aluminum & Chemical Corp., supra;

Intermountain Research and Engineering Co. v. Her-

cules, Inc., 171 U.S.P.Q. 577, 631 (C.D. Cal. 1971);

Dresser Industries, Inc. v. Eltra Corp., 186 U.S.P.Q.

329, 357 (N.D. Ohio 1975).

In reversing the District Court’s judgment, the Eighth

Circuit did not adopt or apply either the older “but

for” rule or the newer “materiality” or “cumulative

materiality” rules. To the contrary, the Eighth Circuit

said only that “[w]|e express no opinion as to Pfizer’s

conduct before the Patent Office nor on the merits

of the legal and factual issues of patent validity” (A.

p. 101), except to say that “. . . the District Court

=,

adopted a far reaching interpretation .. . [which] .. .

imposes an unworkable standard of conduct upon the

patent applicant and expands the inequitable conduct

defense beyond legitimate limits.” (A. p. 105). In so

stating, the Eighth Circuit engrafted upon the legal

standard, whatever it may be, the further requirement

that the subjective intent of the patentee to commit or

not to commit a fraud must be determined, and which,

according to the Eighth Circuit, can only be resolved

by a plenary trial.

Stated differently, since the uncontroverted facts

prove “but for” and “materiality” and “cumulative ma-

teriality”, it appears that the Eighth Circuit is requiring

the patentee’s subjective intent and good faith to be

resolved in any event. Thus, the precise issue raised

by the Eighth Circuit is not whether the substantive

rule should be “but for” or “materiality” or “cumula-

tive materiality” but whether subjective intent to deceive

or subjective lack of intent to deceive is a necessary

element of proof or a defense.

We now direct ourselves to this isolated issue—an

issue which this Court has not yet decided, and which

has been decided in one way by the Third and Ninth

Circuits and in another way by the Eighth Circuit

in this case.

In Monolith Portland Midwest Co. v. Kaiser Alumi-

num & Chemical Corp., supra, the Ninth Circuit held

that where a patent applicant fails to meet his uncom-

promising duty of candor, it is not necessary to show

a specific intent to deceive the Patent Office in order

to render the patent unenforceable. The Court there

ruled that the patentee’s assertion that “. . . it believed

in good faith” that the prior art which it withheld

aniiinn

from the Patent Office did not anticipate the issued

claims was inadequate to excuse the patentee’s failure

to “disclose openly and fully the underlying facts”

since, “[a]t the least, Monolith knew that those facts

might affect the patentability of the invention.” (407

F.2d at 295; emphasis added).

Similarly, in Monsanto Co. v. Rohm & Haas Co.,

supra, the Third Circuit approved the District Court’s

statement that “. . . even if the decision not to disclose

was motivated by nothing more than bad judgment as

to the materiality of the information, the patent must

still be rejected. We hold that a specific intent to deceive

is not necessary to bar a patent when there is evidence

of a deliberate withholding of material information.”

(456 F.2d at 601 n. 14).

Likewise, in Robbins Company v. Lawrence Manu-

facturing Company, 482 F.2d 426 (9th Cir. 1973)

the Ninth Circuit reversed the trial court’s denial of

a motion for summary judgment precisely because the

trial court relied on the inventors’ affidavits concerning

their “subjective intent”. The Ninth Circuit held, at

page 431:

“An inventor's testimony of his subjective intent

has no probative force against overwhelming evi-

dence to the contrary. . . . Such testimony is

insufficient to raise a genuine issue of material

fact to defeat an adverse summary judgment.”

The rationale of Monolith, Monsanto and Robbins

is clear. In a fiduciary relationship requiring complete

disclosure to the Patent Office of all facts which may

be relevant to an issue of patentability, the patentee

cannot be permitted to say, after procuring the patent,

that he, exercising his good faith subjective judgment,

independently determined that the withheld or mis-

onttan

represented facts were neither material nor relevant.

It is not for the patent applicant to decide “in good

faith” what is or is not material or relevant to a

statutory criterion of patentability. All facts which may

be relevant to an issue of patentability must be sub-

mitted to the Patent Office to enable it to independently

make the decisions with which it is charged under

the law. The strong public policy against im-

providently granted patent monopolies cannot tolerate

any lesser standard which permits the patent applicant

to substitute his decision for that of the Patent Office.

Precision Instrument Mfg. Co. v. Automotive Main-

tenance Machinery Co., 324 U.S. 806 (1945). Thus,

in Precision, the court said:

“This duty [of candor] is not excused by rea-

sonable doubts as to the sufficiency of the proof

of the inequitable conduct nor by resort to in-

dependent legal advice. Public interest demands

that all facts relevant to such matters be submitted

formally or informally to the Patent Office, which

can then pass upon the sufficiency of the evidence.

Only in this way can that agency act to safeguard

the public in the first instance against fraudulent

patent monopolies. Only in this way can the Patent

Office and the public escape from being classed

among the ‘mute and helpless victims of deception

and fraud’ ” (324 U.S. at 818).

Once having submitted all of the facts which are

relevant to an issue of patentability to the Patent

Office, the patent applicant has two choices—he can

either persuade the Patent Examiner that his position

is correct, or he can appeal. /.7.8. Rubber Co. v.

Essex Rubber Co., 272 U.S. 429, 433 (1926). The

patent applicant does not, of course, have the third

coffin

option of himself deciding which facts are truly relevant

to an issue of patentability and then either withholding

those facts or misrepresenting them.

If the Eighth Circuit's holding in this case—that

the patentee’s subjective intent to commit a fraud is

an issue—is allowed to stand, then the function of

the Patent Office and the policy against improvidently

granted patents would indeed be subverted. For ex-

ample, if the trier of fact determined that the patentee

in “good faith” believed that certain withheld facts,

or prior art, were immaterial to patentability, the patent

could be held valid even though the court might find

that the withheld facts, or prior art, were material

to an issue of patentability as a matter of law. The

Eighth Circuit’s opinion therefore creates the third op-

tion which this Court’s opinion in /.7.S. Rubber Co. v.

Essex Rubber Co., supra, forbids.

The facts of this case on but a single issue perfectly

illustrate the unworkability of the new requirement

added by the Eighth Circuit to the legal standards and

the anomaly thereby created. Here the District Court

found that prior to issuance of the patent all of Pfizer’s

experiments failed to make ruthenium work as a claimed

“preferred” catalyst (A. p. 78, Findings 1-4). The Dis-

trict Court further found that Pfizer did not disclose its

failures to the Patent Office (A. p. 78, Finding 5).

Finally, the District Court found, relying on the affidavit

testimony of the Examiner “that he would have rejected

at least the principal process claim (claim 1) of the

Doxycycline application under 35 U.S.C. §112” had

he known of Pfizer’s experimental failures’ (A. p.

78, Finding 6).

2As the Examiner testified: “At all times during the prosecu-

tion of the application, I would have been interested in and

—15—

From these facts the District Court concluded that

Pfizer’s unsuccessful experimental efforts were material

to the issue of whether or not broad process claim

1 was patentable, that Pfizer deliberately withheld its

unsuccessful experiments from the Patent Office in

violation of its duty of disclosure, and that “[b|ut

for Pfizer’s deliberate withholding of its unsuccessful

efforts . . . the Doxycycline patent with at least broad

process claim 1 would not have issued” (A. pp. 80-81,

Conclusions 1-5; emphasis added).

Pfizer’s “defense”, both in the District Court and

on appeal to the Eighth Circuit, was that its scientists

believed in “good faith” that ruthenium would work

as a catalyst.®

considered material, any scientific evidence that Pfizer had been

unable to successfully employ ruthenium. . . . Had I been

informed that such was the fact, I would have rejected at

least claim 1 .. . as failing to comply with 35 U.S.C. 112

.” (A. p. 130).

“In an attempt to escape the devastating effect of this testimony,

Pfizer secured another affidavit from the Examiner in which he

stated that by use of the words “scientific”, he meant “reliable”

or “conclusive”; and that the failure of “some experiments” would

not preclude claims encompassing such experiments if “investiga-

tion” revealed the reasons for the unsuccessful experiments.

(A. p. 134). These obvious hypotheses were, of course, inap-

plicable, as the Examiner was not addressing himself to the

fact that all of Pfizer’s experiments were unsuccessful. Further-

more, there is nothing whatsoever in the record which shows

that Pfizer’s unsuccessful experiments were unreliable. Moreover,

there is also nothing in the record which shows at any time any

“investigation” which —s why all of Pfizer’s experiments

were unsuccessful. The best that Pfizer could do was have its

scientists speculate, ten years after the fact, that many different

things could have gone wrong with all of its failed experiments

(A. p. 135). Thus the fact remains that the Examiner would

have rejected at least claim 1 had he but known that all of

Pfizer’s experiments had failed, and that there was no investiga-

tion which explained those failures.

’Pfizer’s scientist Blackwood, a named alleged co-inventor,

filed two affidavits (A. pp. 130-132). The first stated that he

. believed during prosecution of the application, and be-

(This footnote is continued on next page)

ooltinn

Consequently, if the Eighth Circuit’s opinion is upheld

and if the trier of fact determines that Pfizer’s scientists

truly entertained the belief “in good faith” that ruthen-

ium would work as a catalyst, the patent (at least

on this issue) may be valid“ even though the Patent

Office would not have granted the patent had it known

the true facts. Thus, despite the fact that the Patent

Office is charged with the duty of determining the

scope of the claims, and in this case would not have

issued the broad claim actually granted, the abhorrent

lieve{[s] now, that ruthenium is operative . . .” as a catalyst. The

second stated that he “. . . believed at the time the application

was filed that ruthenium was operable as a catalyst . . .”

In the second affidavit, Blackwood also characterized Pfizer’s

totally unsuccessful experiments as “unconclusive preliminary

experiments” and declared, without saying when, that “I have

made doxycycline using ruthenium as a catalyst.” These addi-

tional conclusions and undated and unsupported pronouncements

were properly disregarded by the District Court as insufficient

generalizations (A. pp. 6-7 citing cases).

In an attempt to inject further confusion Pfizer’s brief on

appeal also cited three documents which it claimed “report

the successful use of ruthenium” as a catalyst. These documents

were not part of the record before the District Court or the

Eighth Circuit and irrespective of what they really show must

therefore be disregarded.

Thus the only evidence before the District Court or properly

before the Eighth Circuit were Pfizer’s contemporaneous reports

which uncontrovertedly proved that all of Pfizer’s experiments

prior to issuance of the patent failed to successfully use rutheni-

um as a catalyst. (A. p. 78, findings 3-4, citing Exhibits 60,

62, 63 and 64 which state e.g., “catalysts such as ruthenium

. . . have failed to give the desired reaction.”; “with ruthenium

no conversion to [doxycycline] was observed.” (On appeal,

Pfizer also relied on one report stating that “. . . ruthenium

[was] also tried as catalysts but effected little hydrogenation”

(A. p. 135). Little hydrogenation cannot, of course, be expanded

into saying that a little doxycycline was produced—and nothing

in the record says that it can.)

%*Fraud or inequitable conduct in obtaining a single claim of

a patent renders the entire patent invalid and unenforceable.

Marconi Wireless Telegraph v. United States, 320 US. 1,

57-58 (1943).

=, =

result will be that Pfizer will be allowed to keep

and assert that broad claim in spite of its deliberate

breach of its fiduciary duty simply because its breach

of that duty was “in good faith” and lacking in intent

to commit a fraud.

It is therefore the Eighth Circuit and not the District

Court that has created an “unworkable standard”—a

standard which subverts the function of the Patent

Office and thwarts the public policy of freeing competi-

tion from unwarranted patent monopolies.

3. Summary Judgment Is Proper Where the Court Can

Readily Understand the Technology Involved Without

Expert Testimony.

The great weight of authority permits summary judg-

ment where the court can readily comprehend the tech-

nology without the aid of expert testimony and where

summary judgment is otherwise proper. Research Cor-

poration v. Nasco Industries, Inc., 501 F.2d 358 (7th

Cir. 1974), cert. denied, 95 S.Ct. 689 (1974); Bobertz

v. General Motors Corp., 228 F.2d 94 (6th Cir. 1955),

cert. denied, 352 U.S. 824 (1956). In Research Cor-

poration the court said at page 362:

“. . . Rule 56 applies to patent cases...

[where the technical issues} may be readily com-

prehended by the court . . . without need of

technical explanation by expert witnesses.”

In this case, the District Court, in setting forth

the necessary technical facts, said that “. . . the tech-

nology necessary for a complete understanding of the

uncontroverted facts is not overly difficult”. (A. p.

9). In fact, the District Court drew its recitation of

“The Facts Respecting Technical Terms and Concepts”

anfifijun

(A. pp. 27-32) from Pfizer’s affidavits setting forth

those facts. On appeal, neither party disputed the ac-

curacy of those facts, and the Eighth Circuit apparently

had no difficulty in either comprehending or reciting

those technical facts. Indeed, in its Opinion, before

correctly summarizing the relevant technology as “ter-

minology and background”, the Eighth Circuit char-

acterized the pertinent technology as “undisputed back-

ground” (A. p. 107). Consequently, for the Eighth Cir-

cuit to ultimately conclude, in reversing the judgment,

that unspecified “additional issues of technical fact are

present that are unsuited for summary resolution with-

out the benefit of live expert testimony and cross-

examination in a plenary trial” is purely gratuitous and

serves only to inject a phantom issue.

Equally gratuitous is the Eighth Circuit’s comment

that “genuine issues of material fact are present, con-

cerning . . . the examiner’s understanding of technical

facts . . .” (A. p. 116). The Examiner submitted

three affidavits, the first and third at the request of

Pfizer, and the second at the request of the defendants.

In those affidavits, he set forth in painstaking detail

his “understanding of the technical facts” among other

things. Neither party sought his live testimony; and

the Eighth Circuit does not explain what, if anything,

the Examiner’s live testimony at trial (if available)

could possibly add or subtract. Moreover, on appeal

Pfizer did not contend that the Examiner’s affidavit

testimony was in any way obscure, or that his credibility

was in issue. To the contrary, as shown in detail

in footnote 1, supra, Pfizer's efforts were directed to

semantic exercises employing the Examiner’s inappli-

cable hypotheticals in an attempt to avoid the Examiner's

unqualified testimony that had he but known certain

= S

withheld facts, he would not have granted at least

broad claim 1.

In short, the issues in this ©ase are neither technol-

ogy nor the Examiner’s understanding or application

thereof, but rather whether subjective intent to commit

a fraud, is or is not a necessary element of proving

or disproving fraudulent or inequitable conduct in pro-

curing a patent.

VII

Conclusion.

It is therefore respectfully submitted that this Petition

for a Writ of Certiorari should be granted to resolve

the conflict between the Circuits as to whether subjective

intent to commit a fraud on the Patent Office in

prosecuting a patent application, is either an element

of proof or a defense where the undisputed facts show

that the patentee deliberately withheld and deliberately

misrepresented facts which were material to patentability

in the “but for” sense, the “materiality” sense, and also

the “cumulative materiality” sense.

DATED: October 12, 1976.

Respectfully submitted,

PETER R. COHEN,

Attorney for Petitioner.