Petition — Steelcase, Inc. v. Delwood Furniture Co.

Supreme Court, U. S%

FILED

JAN 49 1979

MICHAEL RODAK, JR., CLERK

IN THE SUPREME COURT

OF THE UNITED STATES

OCTOBER TERM, 1978

8-114)

STEELCASE, INC.

Petitioner,

Vv.

Detwoop Furniture Company, INc..

Respondent,

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Price, HENEVELD, HuizENGA & Cooper

Lloyd A. Heneveld

P.O. Box 2567

Grand Rapids, Michigan 49501

Attorneys for Petitioner

AMERICAN BRIEF AND RECORD COMPANY, 125 WEALTHY STREET, S.E.,

GRAND RAPIDS, MICHIGAN 49503 — PHONE GL 8-5326

_-—

eee

INDEX

Page

TABLE OF CASES AND AUTHORITIES.......... iil

I nog a ola ev ilad wide aed Vow l

eg aca sks ys eid a bee ¢ b> onde oe 2

FEDERAL QUESTION PRESENTED FOR REVIEW 2

PE tee Ms TEED oa seek a sete ds scenes vres 2

Eee, GE BUTE, CAGE ow. cect cece veecveces 3

TS aie eae Vek ewkk bn ala Wak doen Pe eas 6

I. THE FIFTH CIRCUIT HAS UPSET SEV-

ENTY YEARS OF PRECEDENT AND

CREATED CONFLICT BETWEEN CIR-

CUITS AND WITH THE SUPREME COURT

WHERE NONE EXISTED BEFORE ........ 6

A. The Limitation On Unpublished Foreign Pat-

ents As References Is Imposed By Statute

B. Since 1909 Courts Have Held That That

Which Is *‘Patented’’ In A Foreign Patent Is

The Claimed Invention, So That Unpub-

lished Foreign Patents Can Be Prior Art Only

To The Extent Of The Invention Claimed In

a EIEN er gE a a Pe 8

C. Section 103 Does Not Permit An Expanded

Reading Of A Foreign Unpublished Patent. 10

ll. THE ISSUE OF INTERPRETING UNPUB-

LISHED FOREIGN PATENTS ARISES FRE-

QUENTLY AND HENCE IS OF SUBSTAN-

a eee 11

lil. PROPER APPLICATION OF LAW IN THIS

CASE WOULD LEAD TO REVERSAL OF

THE FIFTH CIRCUIT AND DISTRICT

TS Dale's 64 bS 4 oss Kh AKO 54D vos 606 13

ere Beas pas aed v tess bo anos ones 0 15

INDEX (CONT’D)

Page

Pe ETE. too a ed pace bach baths eae s te ekews Al

District Court Opinion Of July 2, 1974........... Al

District Court Opinion Of February 11, 1975 ..... A37

District Court Opinion Of July 2, 1976........... AS55

Fifth Circuit Opinion Of August 8, Rehearing Denied

CN Ay SINE Gh tia yanks Ke Re kd) eae eS A68

Translated Belgian Patent 724,771 ............... A75

Testimony of Edward Charles Levit ............. A84

Cover and Section 901.05 Of The Manual Of Patent

ee Cer re ae A85

Journal Of The Patent Office Society, February 1972,

ee ee ORO Sc brs dak kine CGN > Veen Da vnc A90

estoy OT Teer CHTIBOE oon koe eocc kk dacs A95

Testimony Of George E. Pickering .............. A98

Testimony Of Vincent M. Foote................. A100

United States Patent 2,967,565 to M. R. Schultz.. A105

Photograph Of Estaban Chair ................... All4

Testimony Of Joseph H. Appleton............... AlI5

Belgian Patent Law Case Reported In **L. Ingenieur

ee = SUNN Gs kc Sec aw Reb oeke ee cne thik A117

United States Patent 3,669,499: Patent In Issue ... A119

TABLE OF CASES AND AUTHORITIES

Cases Page

American Tri-Ergon Corp. v Paramont Publix Corp.

Ae oy Bae ge ee. | | Pr rrry eae e oe rey e 8

Bendix Corporation v. Balax, Inc., 421 F.2d 809, 812

(7th Cir. 1970) cert. den. 399 U.S. 911

PR ea ces Cuter Lie Lns cece ut woke, Pereckas 06

Carter Products vy. Colgate-Palmolive Company, 130

F.Supp. 557, .566 (D.Md. 1955), aff'd. 230 F.2d 855

(4th Cir. 1956), cert. den. 352 U.S 843

eis he eCC Laas eye W ROL SEERA EROS kb Rees Se Foe

EU, FCMND OE i oii ea enc cer eucewgions 4, 12

Fuse; Alicetiee OF oo sii ck de cee cence ow te Ke

General Electric Co. v. Alexander, 280 Fed. 852 (2d Cir.

1922), cert. dan. 260 U.S. 727 CIRZZ) oa iccsvcuns 8

Graham v. John Deere Co., 383 U.S. 1 at p. 151966) 10

Hamilton Laboratories, Inc. v. Massengill, 25 F.Supp.

464 (E.D. Tenn. 1938) 111 F.2d 584 (6th Cir. 1940),

art, om 355.0). Ge See 8 vse cee ci cancves.s 7

Leeds and Catlin Co. v. Victor Talking Machine Co.

DER el ey ET Ces a5 eae eee te chunks awe %s 8

Permutit Co. v. Wadham, 13 F.2d 454, 458 (6th Cir.

1926): rehearing denied 15 F.2d 20 (6th Cir. 1926) 5, 7, 8

Reeves Brothers, Inc. v. U.S. Laminating Corporation,

282 F.Supp. 118, 136 (E.D.N.Y. 1968), aff'd 417 F.2d

oe be Sa | RRR anger eee ener eae Pee F

Statutes

EE nas 0s obs eed bees 8054 Cres pens 2

BALSA. § 19558 2. cam eC Sere e her ea eee Tre ee 3

pS oe Neer: fe ee ree es cer ee 15

PRA oe ge er ree. re ee 8

ee eS hk g's oN Oe EHS Ani dle wR bie 4 2,8

LEED CoM S.A Per Terre ee eee eee ee et

Page

Miscellaneous Citations

Manual of Patent Examining Procedure, Section 901.05 11

Frederico, ‘Foreign Patent Manual”, 54 “‘Journal of

the Patent Office Society’’, pp. 102-125, 147-174, 360,

February, March and May (1972)................. 11

IN THE

SUPREME COURT OF THE

UNITED STATES

OCTOBER TERM, 1978

NO.

STEELCASE, INC.,

Petitioner,

Vv.

Detwoop FurnrrurE Company, INc.,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

Petitioner prays that a writ of certiorari issue to review

the judgment of the United States Court of Appeals for the

Fifth Circuit entered in the above case on August 8, 1978,

holding United States Patent 3,669,499 invalid.

OPINIONS BELOW

An unreported Memorandum Opinion holding United

States Patent 3,669,499 valid and infringed was entered July

2, 1974 by the United States District Court for the Northern

District of Alabama, Southern Divisicn (A 1).

A second unreported Memorandum Opinion holding said

patent not misused by Plaintiff was entered by the same

Court on February 11, 1975 (A 37).

A third unreported Memorandum Opinion holding the

same patent invalid over Belgian patent ‘771 was entered by

the same court on July 2, 1976 (A S55).

Z

The reported Affirming Opinion of the United States

Court of Appeals for the Fifth Circuit was printed on August

8, 1978 at 578 F.2d 74 (A 68).

JURISDICTION

Appellant seeks review of the Fifth Circuit Opinion dated

August 8, 1978, for which a Petition for Rehearing was

denied and entered on October 24, 1978. Jurisdiction: is

conferred on this Court by 28 U.S.C. 1254(1).

FEDERAL QUESTION PRESENTED FOR REVIEW

The question of law presented by this case has substan-

tial impact and far reaching effect on the United States

Patent Laws:

WHETHER THE TEACHINGS OF A FOREIGN PATENT

AS A WHOLE, WHICH DOES NOT CLAIM THE IN-

VENTION OF A UNITED STATES PATENT AND

WHICH DID NOT BECOME A PUBLICATION UNTIL

AFTER THE ISSUANCE OF THE U.S. PATENT, CAN

BE USED TO INVALIDATE THE U.S. PATENT?

Contrary to the Fifth Circuit holding, Petitioner contends

the teachings of an unpublished foreign patent as a whole

cannot be used and that only the claimed invention consti-

tutes prior art.

STATUTES: INVOLVED

35 U.S.C.A. 102(b), at page 445:

§ 102. Conditions for patentability; novelty and loss

of right to patent

A person shall be entitled to a patent unless

(b) the invention was patented or described in a

printed publication in this or a foreign country or in

public use or on sale in this country, more than one year

prior to the date of the application for patent in the

United States, or..... ni

35 U.S.C.A. 103, at page 715:

§ 103. Conditions for patentability; non-obvious sub-

ject matter

A patent may not be obtained though the invention is

not identically disclosed or described as set forth in

section 102 of this title, if the differences between the

subject matter sought to be patented and the prior art are

such that the subject matter as a whole would have been

obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject

matter pertains. Patentability shall not be negatived by

the manner in which the invention was made.”

STATEMENT OF THE CASE

This cause was originally tried under 28 U.S.C. 1338

from June 24 to July 2, 1974, on Petitioner Steelcase’s

complaint that Respondent Delwood, through its United

Chair Division, had flagrantly infringed its United States

Patent 3,669,499 (A 119) by copying Plaintiff's highly suc-

cessful ‘451 Series “‘chair within a chair’ shell chair. The

'499 patent covering that chair was originally heid valid and

infringed (A 1).

Following a later patent misuse trial on which defendant

was unsuccessful (A 37), Defendant appealed. During the

course of that appeal, another attorney brought Belgian

patent 724,771 (A 75) to Defendant's attention and Defendant

obtained permission from the Fifth Circuit Court of Appeals

to move for a rehearing. The rehearing, which was limited to

a consideration of the Belgian patent, was granted and held

on June 30 through July 2 of 1976. On the basis of this newly

discovered Belgian patent, the Court reversed its earlier

4

validity finding (A 55), and the Fifth Circuit Court of Appeals

affirmed (A 68).

Of utmost importance in this case is the following com-

parison of the chronological history of the patent in suit with

that of the Belgian patent relied upon by the lower courts:

CHRONOLOGY

*499 Patented Belgian

Invention Patent

January 1968: invention con-

ceived

Feb. 14, 1969: Patent granted

kept secret — not yet prior

art in the U. S. Application

of Ekenstam, 256 F.2d 321,

322 (CCPA 1958).

April 1969: invention re-

duced to Practice

May 16, 1969: Patent open

for inspection — in U.S. be-

comes prior art limited to

what it claimed since it was

still not a printed publica-

tion.

June 1970: Patented chairs

sold publicly

Dec. 30, 1970: °499 patent

application filed

June 13, 1972: °499 patent is--

sued

August 2, 1972: Belgian Pat-

ent made a printed publica-

tion making it prior art as to

what it claimed and dis-

closed, but not as to °499 pat-

ent which was filed and is-

sued prior to this date.

5

This chronology establishes that at the time of filing of

the °499 patent, the Belgian patent papers submitted by the

‘Belgian patentee were only available in the Belgian Patent

Office for copying. They did not constitute a printed publica-

tion until long after the '499 patented chair was invented and

patented. Therefore under long established law the courts

should have considered the Belgian patent as prior art only

as to what it claimed, not for what the disclosure may have

taught. Carter Products v Colgate-Palmolive Company, 130

F.Supp. 557, 566 (D.Md. 1955), aff'd. 230 F.2d 855 (4th Cir.

1956), cert. den. 352 U.S. 843 (1956); Permutit Co. v

Wadham, 13 F.2d 454, 458 (6th Cir. 1926); rehearing denied

15 F.2d 20 (6th Cir. 1926); Application of Fuge, 272 F.2d

954, 956 (CCPA 1959); Reeves Brothers, Inc. v U.S.

Laminating Corporation, 282 F.Supp. 118, 136 (E.D.N.Y.

1968), aff'd 417 F.2d 869 (2d Cir. 1969); Bendix Corporation

v Balax, Inc., 421 F.2d 809, 812 (7th Cir. 1970) cert. den. 399

U.S. 911 (1970).

The Fifth Circuit however did not look solely to the

claimed invention of the Belgian Patent and what it might

have taught to one skilled in the art at the time the °499

patented invention was made. Rather, it stated at page 79 of

the Decision (A 73):

‘In finding that the teachings of the Belgian patent as

well as its explicit claims should have been available

to a person of ordinary skill in the art, the trial court

was not clearly in error.’’ [emphasis added]

Appellant contends this use of the Belgian patent to be

clearly erroneous as a matter of law and petitions for writ of

certiorari. If this erroneous decision is left to stand, the

question of how a foreign patent, which is not a publication,

can be used as prior art will be put in turmoil.

6

ARGUMENT

I. THE FIFTH CIRCUIT HAS UPSET SEVENTY

YEARS OF PRECEDENT AND CREATED

CONFLICT BETWEEN CIRCUITS AND WITH THE

SUPREME COURT WHERE NONE EXISTED

BEFORE.

A. The Limitation On Unpublished Foreign Patents As

References Is Imposed By Statute.

The Fifth Circuit misunderstood Plaintiff's argument

relative to the Belgian patent. The decision states that

Plaintiff was calling for a ‘“‘provincial view’ of foreign

patents which view would subject them to a restrictive

interpretation simply because they are foreign. This is not at

all the case. Rather, the Belgian patent is a special type of

patent, which for the purposes of this suit is not a

publication, and therefore is limited in scope as a prior art

reference BY STATUTE.

Sections 102 and 103 of the United States Patent Laws

expressly treat foreign unpublished knowledge, such as

unpublished patents, differently from unpublished knowledge

within the United States and differently from printed

publications. Whereas the statute establishes three

categories of United States prior art, only two categories of

foreign prior art are established. Any invention which is (1)

known, (2) patented or (3) described in printed publications

in the United States prior to the date of an invention or more

than one year prior to the filing date of a U.S. patent

constitutes effective prior art against such invention and any

patent filed therein. However with respect to foreign prior

art, only that which is (1) patented or (2) described in a

printed publication abroad constitutes a prior art reference.

In ciher words, that which is unpublished knowledge in a

foreign country, but which is not patented or described in a

printed publication, does not constitute prior art. 35 U.S.C.

102 (a) and (b); Carter Products v. Colgate-Palmolive

Company, 130 F.Supp. 557, 566 (D.Md. 1955), aff'd. 230

F.2d 855 (4th Cir. 1956), cert. den. 352 U.S. 843 (1956).

—=

—_ —_—_——"

8

recognizing such patents as prior art for only what is

patented therein, Thus, 35 U.S.C. Section 102 (a) and (b)

both refer to ‘patents’ or ‘‘printed publications” as being

prior art.

B. Since 1909 Courts Have Held That That Which Is

‘*Patented”’ In A Foreign Patent Is The Claimed

Invention, So That Unpublished Foreign Patents

Can Be Prior Art Only To The Extent Of The

Invention Claimed In The Patent

It was not Congress’ intention to elevate unpublished

foreign patents to equality with printed publications or to

equality with public knowledge in the United States. since it

is and always has been well settled law that nothing is to be

treated as ‘‘patented’’ by a foreign unpublished patent

except that which is actually claimed therein. Carter v.

Colgate-Palmolive Company, supra; Permutit Co. v.

Wadham, supra; Application of Fuge, supra; Reeves

Brothers, Inc. v. U.S. Laminating C orporation, supra;

Bendix Corporation v. Balax, Inc., supra,

As far back as 1909, the Supreme Court has ruled that

that which is patented in a foreign patent is the claimed

invention, not everything disclosed in the patent document.

Leeds and Catlin Co. v. Victor Talking Machine Co., 213

U.S. 301, (1909). See also American Tri-Ergon Corp. v.

Paramont Publix Corp., 71 F.2d 153 (2d Cir. 1934),

reversed on other grounds, 294 U.S. 464, (.935): and

General Electric Co. v. Alexander, 280 Fed. 852 (2d Cir.

1922), cert. den. 260 U.S. 727 (1922), Although the question

arose in a different context in ‘these cases, the courts still had

to determine what was “patented” in a foreign patent. The

Supreme Court and the Second Circuit looked to the claimed

invention to answer that question. This precedent has been

followed in later cases in the same context as the case at bar,

i.e. Carter, Permutit, Fuge, Reeves and Bendix, supra, Thus,

it has been clearly established that by statute special types of

patents such as the Belgian patent, which was special

9

because it was not a printed publication before the ‘499

patent was filed, cannot be used in the same way as an

ordinary published and printed foreign patent.

It is error as a matter of statutory law for the Fifth

Circuit Court to have held that knowledge contained in the

disclosure but not in the claims of an unpublished foreign

patent is prior art that can be used to invalidate a U.S.

patent. In reaching this holding, the Court erroneously

stated:

“The state of the art does not depend on the

provincial view that the available knowledge is only

that published in one locality or contained only in

domestic patents. The prior art is all of that

knowledge that would have been available to any

person having ordinary skill in the art. This

hypothetical person of ordinary skill is not deemed to

be omniscient, but he must be assumed to share the

knowledge available in his art (to persons of ordinary

skill) wherever it may originate.’ [emphasis added]

(A 73).

Contrary to this decision as a matter of statutory law, the

hypothetical person of ordinary skill should not be assumed

to share in foreign public knowledge wherever it may

originate, Foreign knowledge can be prior art only if it is

described in a printed publication or explicitly claimed in an

unpublished foreign patent. Therefore, it is also error as a

matter of statutory law for the Fifth Circuit to conclude:

“In finding that the teachings of the Belgian patent as

well as its explicit claims should have been available

to a person of ordinary skill in the art, the trial Court

was not clearly in error.’’ (A 73)

The above statements by the Fifth Circuit Court in effect

equate unpublished knowledge abroad with a printed publi-

cation or with public knowledge in the United States. This is

a clear contravention of the United States Patent Statutes

10

and of seventy years of precedent and should be reviewed

and reversed,

C. Section 103 Does Not Permit An Expanded Reading

Of A Foreign Unpublished Patent

Section 103 of Title 35 allows a court to invalidate a

patent even if it is not identically disclosed as set forth in

Section 102, if the differences between the subject matter

patented and the prior art are such that the patented subject

matter as a Whole would have been obvious to one skilled in

the art at the time the invention was made. The Fifth Circuit

stated in distinguishing Section 103 from Section 102 that:

“Obviousness, on the other hand, may be found from

the teachings of the whole of the prior art and the

improvements on those teachings that would be obvi-

ous to the hypothetical person of ordinary skill in that

art. (A 73) [emphasis added].

Based on the Court's later statement that ‘the teachings of

the Belgian Patent as well as its explicit claims should have

been available’’ as prior art, it appears that the Fifth Circuit

erroneously interpreted Section 103 as permitting it to ex-

pand its reading of the Belgian Patent beyond the limitations

of Section 102. This is clearly erroneous.

The words “prior art’’ used in Section 103 refer to that

which is legally “prior art’’ as defined by Section 102.

Graham v John Deere Co., 383 U.S. 1, at p. 15 (1966). One

would not be allowed to use foreign public knowledge as

prior art under Section 103 when it is definitely not prior art

under Section 102 (a) or (b),

So too, in determining whether the differences between

the prior art and the ‘499 patent would have rendered the

‘499 patent obvious in 1969, the Fifth Circuit should have

looked no further than the Belgian claimed invention and

what it taught in the context of the state of the art and level

of skill. It should not have looked to the Belgian Patent

teachings as a whole,

Il. THE ISSUE OF INTERPRETING UNPUBLISHED

FOREIGN PATENTS ARISES FREQUENTLY AND

HENCE IS OF SUBSTANTIAL PUBLIC IMPOR-

TANCE.

This case is of substantial public importance on two

levels. First, it is of public concern that the ‘499 patent,

which covers the most commercially successful invention

ever brought to the office furniture industry, (Levit, A 84),

has been invalidated through improper use of an unpublished

foreign patent. Invention in the office furniture industry and

the dissemination of informiation concerning the same

through patents should not be discouraged through improper

use of unpublished foreign patents as prior art references.

Secondly, the issue of unpublished foreign patents as

prior art arises frequently, both in the United States Patent

Office and in the Courts. Section 901.05 of the Manual of

Patent Examining Procedure used by all United States Patent

Office Examiners relates exclusively to foreign patents. The

fact that some foreign patents are not available as printed

publications is also specifically discussed (A 85).

The Manual also refers to and incorporates an article by

Pasquale J. Federico entitled ‘‘Foreign Patent Material’ and

published in the “Journal of the Patent Office Society”

Volume 54, pp. 102-125, 147-174, 360, February, March and

May of 1972 (pp. 110 to 113 included in App. at A 90). This

article, specifically discusses on pages 110 and 111 two

possible different effective dates for use of foreign patents as

references:

“The published specifications of foreign patents with

which we are concerned have a dual aspect; they are

printed publications and at the same time they repre-

sent foreign patents. There may be, and usually are,

two different effective dates for reference purposes,

one the effective dates when used as a printed publi-

cation, and the other the effective date when used as

a foreign patent. (The term ‘‘effective date’ is here

12

used to indicate the date we consider the document

effective for the purpose we intend to use it; the same

date may have little or no significance in the country

of origin.) When used as printed publications every-

thing disclosed in the specification is available for

use, and the laws under which they were issued are

irrelevant. When used as foreign patents some mat-

ters disclosed in the specification might not be availa-

ble for use (see below), and complexities of foreign

laws may arise in interpretation and in determining

the effective date.”

In the present case an understanding of the complexities

of the foreign law is necessary for interpretation of the

Belgian Patent. Plaintiff-Petitioner showed by preponderance

of unrebutted evidence that under the Belgian Laws the

invention as claimed in the Belgian patent was not the

invention of the U. S. patent in suit. However, the Fifth

Circuit Court of Appeals completely ignored the Belgian law

by its holding that ‘‘the teachings of the Belgian patent as

well as its explicit claims’’ should be considered as having

been available as prior art in determining the obviousness

issue.

This holding is completely opposite to the Patent Office

practice as expressed above in the Federico article and

adopted by the Patent Office in its Manual of Patent Examin-

ing Procedure and is completely opposite to law as hereto-

fore established by the courts. Fuge, supra; Bendix, supra;

Reeves, supra; and Eckenstam, supra. Therefore, to let this

decision stand would set a completely new precedent that an

unpublished foreign patent can be used for all purposes, i.e.

as a printed publication or as a patent, as of the date it was

granted. Inventors filing U.S. patent applications well prior

to the publication of foreign patents would be robbed of their

property rights through such an expanded interpretation of

unpublished foreign patents. Such a result is clearly contrary

to statute and should be reversed.

13

This is an issue of pressing importance to the promotion

of progress of science and the useful arts, and should be

reviewed by this Court.

III, PROPER APPLICATION OF LAW IN THIS CASE

WOULD LEAD TO REVERSAL OF THE FIFTH

CIRCUIT AND DISTRICT COURT.

If one makes a statutorily proper interpretation of the

Belgian patent, looking to the claimed invention rather than

to extraneous teachings of the patent, it is impossible to find

that the Belgian patent in. any way suggests, either alone or

in combination with other prior art, the patented *‘chair

within a chair’’ invention of the °499 patent. The District

Court originally found that in contrast to prior art single shell

chairs, or prior double shell chairs where both shells are

structural and are unitized to act as a single shell, the °499

patented chair comprises a ‘‘chair within a chair’’ in which

the “‘inner chair’ is a structurally complete shell chair,

comprising an upholstered, load bearing structural inner

shell, having sufficient thickness and rigidity that it alone

provides an integral seat and back capable of carrying the

loads imposed on a chair in normal usage. The inner chair is

positioned within an ‘outer appearance chair’> comprising a

decorative non-load bearing outer shell having a decorative

exterior appearance and having sufficient thickness and rigid-

ity only to hold a desired design configuration. (A 21) The

chair within a chair concept makes it possible to design

comfort and strength into the chair independently of orna-

mental limitations, and visa versa (A 29, A 30).

The Belgian invention, i.e. its claimed concept, is the

pushing of one plastic shell over the other and fastening them

to each other and to a foot (Grisar, A 95). Such concept

teaches one skilled in the art at the time the present inven-

tion was made that the Belgian Patented chair is a unitized

composite shell in which the two shells are both load bearing

and structural in function (Pickering, A 99).

14

There is nothing in the Belgian claimed invention that

would lead one to believe the Belgian chair is any different

from the Hawley chair over which the District Court held the

present patent to be valid. In Hawley, two shells are secured

to each other and to a foot with the assistance of a press

(Foote, A 103). Both shells are structural and act together to

create a composite shell (Foote A 100). Similarly, other prior

art chairs utilize two shells in which both are load bearing

structural members which act together to create a composite

shell (District Court holding at A 27 and A 28, referring to

the Estaban chair A 114, and the Schultz chair A 105).

There is no contrary testimony as to what one would

have learned from the Belgian claimed invention.

Defendant's witnesses Foote and Appleton never testified as

to what one skilled in the art would have inferred from the

claimed invention of the Belgian patent at the time the °499

patented invention was made. Both Foote and Appleton

admitted that they had no idea as to what was even patented

(claimed) in the Belgian patent (Foote, A 103, Appleton, A

115).

Defendant attempted to overcome these deficiencies in

its case by arguing that the so-called omnibus claim, claim 22

of the Belgian patent, means that everything shown or

described is “‘patented’’ in the Belgian patent. Defendant's

contention is in error since the courts should have looked to

Belgian Law to determine what is patented in a Belgian

patent, just as the Seventh Circuit Court looked to German

Law to determine what was patented in a German

Gebrauchsmuster, Bendix v Balax, supra.

In Belgium, an omnibus claim only covers that which the

inventor expressly states in his patent he intends to protect

as his invention (Grisar, A 95). In the Belgian case discussed

in “'L ‘Ingenieur Conseil’ 1919 (PX 266, A 117). An omnibus

claim was held to be of no effect because there was no

statement in the specification of what the inventor intended

to protect as his invention (ibid.). Even if the Belgian patent

15

did clearly and concisely describe the ‘chair within a chair™’

concept, it would not be claimed in the Belgian patent

without a clear statement of the inventor's intent to cover

that concept (Grisar A 95). Therefore, had the Fifth Circuit

Court of Appeals applied as prior art only the invention

which was claimed by the Belgian patent, the patent in suit

would have been held valid.

CONCLUSION

The Fifth Circuit Court of Appeals, by affirming the

District Court’s reliance on the teachings of the unpublished

Belgian patent as a whole, has upset seventy years of

precedent and has created a conflict between the circuits and

with prior decisions of the United States Supreme Court.

Under 35 U.S.C. Section 102 and 103, unpublished foreign

patents are available as references only to the extent of the

invention claimed therein. The teachings of such unpublished

patents as a whole are not available as prior art references.

Because this issue arises frequently, both in the United

States Patent and Trademark Office and in the courts, its

review by the United States Supreme Court is imperative.

Such review will lead to a reversal of the Fifth Circuit Court

of Appeals in the present case, since reference to the

claimed invention of the Belgian patent teaches one skilled in

the art no more than that which is taught by other prior art

considered by the United States District Court for the

Northern District of Alabama in originally holding United

States patent 3,669,499 valid. Writ of certiorari to the Fifth

Circuit Court of Appeals is respectfully solicited.

Respectfully submitted,

By: Lloyd A. Heneveld

Price, Heneveld, Huizenga and Cooper

P.O. 2567 Grand Rapids, Michigan 49501

616-949-9610

Attorneys for Petitioner