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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition
- **Published:** January 1, 1979
- **Citation:** 440 U.S. 960

## Text

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A. The Limitation On Unpublished Foreign Pat-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Reading Of A Foreign Unpublished Patent. 10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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385005_2372%3A1. Public record. Not legal advice.