Opposition — Mollura v. Miller

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IN THE ; a

Supreme Court of the United State. ee.

October Term, 1979

No. 79-1368

CARLOS A. MOLLURA,

Petitioner,

VS.

CurTis G. MILLER, CRAIG S. MILLER, and AMERICAN

NATIONAL WATERMATTRESS CorpP., a California corpo-

ration,

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for

the Ninth Circuit

BRIEF OF RESPONDENTS IN OPPOSITION—

WITH OBJECTION TO JURISDICTION

STEPHEN W. BERGER

Attorney for Respondents

1501 Westcliff Drive, Suite 312

Newport Beach, Calif. 92660

Of Counsel

WARREN, BERGER. GRINFELD & HARGAN

RICHARD L. MYERS

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

SUBJECT INDEX

| Page

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SE EAI sis b44 6 4.0 6 |

EE IEE 2

EELS SIS 2

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EE OE OT ee 4

fk.

There Are No Special and Important Reasons Warrant-

ing the Grant of Certiorari ................... 4

II.

The Decisions Below Are Correct ............... 6

Ne ee wee cc vececesc 7

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Page

Rules of the Supreme Court of the United States, Rule

Bs oa Ree Dice ee eian'y oa he Do ee a a l

TABLE OF AUTHORITIES CITED

Cases Page

Aluminum Co. of America v. Amerola Products Corpo-

ration, 552 F.2d 1020 (3rd Cir. 1977) ........ 7 | EE ic eals 4s Con eS 4 Us ba CCA os 2

Anderson’s-Black Rock v. Pavement Co., 396 U.S. 57 Statutes

Ce Gah hs 6 o's bs Br nae eee es 4 —“S | United States Code, Title 28, Sec. 2101(c) ......... 1

Cathodic Protection Service v. American Smelting & | United States Code, Title 35, Sec. 103 (66 Stat. 798) 2, 4

RO 1s ORE Fe SFP CO Ce, FFE) 4s «AGS United States Code, Title 35, Sec. 282 (66 Stat. 812, as

Department of Banking v. Pink, 317 U.S. 264 (1942) 2 amended, 79 Stat. 261 and 89 Stat. 692) ......... 2

Frantz Manufacturing Co. v. Phenix Manufacturing Co..,

457: F.26 314 (ith Cir. 1972) oo cians ice. a; 3

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

Ce CT TL SEE ET TO OE eT eee 2,3, 4, 5, 6

Hewlett-Packard Co. v. Tel-Design, Inc., 460 F.2d 625

IE I er a a Ne oe aie, 7

Nickola v. Peterson, 580 F.2d 898 (6th Cir. 1978) cert.

Sem, CO TD. Sb CIPI. sie i aee ts gictectweees 4

Price v. Lake Sales Supply R.M., 510 F.2d 388 (10th

AO ne Mie ena ot OR OA Co eae 5

Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976)...... 4

Sidewinder Marine v. Starbuck Kustom Boats, 597 F.2d

pe a rn pray prerar mama 4, 5

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

461 F.2d 66 (G08 Cir. 1972) 0... ice e ceca 4, 5

Van Gorp Manufacturing v. Townley Industrial Plastics,

464 F.2d 16 (Sth Cir. 1972) ...... 2c cece eeees 6

Waldon inc. v. Alexander Manufacturing Co., 423 F.2d

OF See SO so Vi pans cae akc vasa eas »

Rules

Rules of the Supreme Court of the United States,Rule 19 4

IN THE

Supreme Court of the United States

October Term, 1979

No. 79-1368

CARLOS A. MOLLURA,

Petitioner,

vs.

CurTis G. MILLER, CRAIG S. MILLER, and AMERICAN

NATIONAL WATERMATTRESS CorpP., a California cor-

poration,

Respondents.

On Petition for a Writ of Certiorari to the

United States Court of Appeals for

the Ninth Circuit

BRIEF OF RESPONDENTS IN OPPOSITION—

WITH OBJECTION TO JURISDICTION

- ee

Opinion Below

The opinion of the Court of Appeals for the Ninth Circuit

is reported at 609 F.2d 381, and is reproduced as the first

appendix in the Petition.

| Jurisdiction

As stated in the Petition (pp. 1, 2), the judgment in issue

was entered on December 6, 1979. The Petition was required

to be filed with the Supreme Court within 90 days after

such entry. 28 U.S.C. §2101(c); Sup. Ct. R. 22(3).

ee Re

Defendants’ are advised by the Office of the Clerk of the

Supreme Court that the Petition was filed in the Clerk’s

Office on March 6, 1980, which is 91 days after the entry

of judgment, as computed in accordance with Sup. Ct. R.

34(1).

Accordingly, the Petition was untimely filed, and the

Petition must be denied for want of jurisdiction. Department

of Banking v. Pink, 317 U.S. 264, 268 (1942).

* * *

Defendants respectfully submit that the foregoing juris-

dictional objection disposes of the Petition. Should the Court

determine otherwise, defendants respectfully request that

the Court deny certiorari for the other following reasons.

Question Presented

Did the Court of Appeals erroneously apply the Graham

standards, as those standards have consistently and uni-

formly been applied by the Courts, in upholding the inva-

lidity of plaintiff's patent for obviousness?

The Court of Appeals did not err.

Statutes Involved

The applicable statutes, 35 U.S.C. §103 (66 Stat. 798),

and 35 U.S.C. §282 (66 Stat. 812, as amended, 79 Stat.

261 and 89 Stat. 692), are set forth in the Petition at page

4.

Statement of the Case

Plaintiff sued in the District Court claiming infringement

of his patent for a certain water bag adapted to be used as

*For ease of reference, the parties are referred to in this brief ac-

cording to their designations in the District Court, i.e., Petitioner is

**plaintiff’’, and Respondents are ‘‘defendants’’.

ales.

a waterbed mattress. Among other things, plaintiff expressly

requested judgment as to the patent’s validity. (R. 4).

The subject of plaintiff's patent was the structure of the

bag. At trial, the evidence showed that plaintiff's invention,

if any, was his method of making the bag, not the structure.”

In short, plaintiff's patent did not cover his purported in-

vention, i.e., the method of manufacture; rather, it covered

something plaintiff did not invent, i.e., the structure of the

bag.

The District Court understood this, and under the Graham

standards, correctly concluded that the patent was invalid

for obviousness. (Tr. 136-37). The Court of Appeals also

understood this in affirming the District Court, stating (609

F. 2d at 383; Pet., Ist App., at 4):

**Although the district court judge refused to admit

much of the plaintiff's evidence on the prior state of

the art of manufacture, he admitted what little evidence

was offered on the prior state of the art of the product,

plastic bags. From this evidence, he concluded:

‘But that you take a tube and you put two pieces on

the end to contain water is no invention. And the

fact that you do it by lap welds is no invention.’ .

We agree with this conclusion. There is no inventive

genius in putting water into a container that does not

leak.’’ (Emphasis in original.)

‘

*»

*References ‘‘(R. ....)’’ are to the Record on Appeal in the Court

of Appeals.

**Plaintiff conceded at trial that he had no process patent infringe-

ment claim. (Tr. 9). References *‘(Tr. ....)’’ are to the Reporter’s

Transcript of the trial in the District Court, held November 8, 1977.

— Se

ARGUMENT

I.

There Are No Special and Important Reasons

Warranting the Grant of Certiorari

Petitioner has not shown any special and important rea-

sons warranting the grant of certiorari, and there are no such

reasons. Sup. Ct. R. 19.

When stripped of plaintiff's exaggerations, this case is

a simple one, as the Court of Appeals stated. 609 F.2d at

383 (Pet., Ist App., at 3).

This case is but one of many in which the federal courts

have consistently and uniformly applied the. standards of 35

U.S.C. §103, as interpreted by the Supreme court in Gra-

ham v. John Deere Co., 383 U.S. 1, 17 (1966 and sub-

sequently ruled upon by this Court in Anderson’ s-Black

Rock v. Pavement Co., 396 U.S. 57, 61-62 (1969) and

Sakraida v. Ag Pro, Inc., 425 U.S 273, 279-81 (1976). In

accordance with the Graham mandate, the Courts of Ap-

peals are scrutinizing the record in patent cases to assure

that the District Courts are making the Graham inquiries

and applying Graham standards. See e.g., Sidewinder Ma-

rine v. Starbuck Kustom Boats, 597 F.2d 201. 209 (10th

Cir. 1979); Cathodic Protection Service v. American Smelt-

ing & Refining Co., 594 F.2d 499, 507 (Sth Cir. 1979):

Nickola v. Peterson, 580 F.2d 898, 912 (6th Cir. 1978)

cert. den. 440 U.S. 961 (1979): Trio Process Corporation

v. L. Goldstein's Sons, Inc., 461 F.2d 66, 71 (3rd Cir.

1972); Frantz Manufacturing Co. v. Phenix Manufacturing

Co., 457 F.2d 314, 322-23 (7th Cir. 1972).

At bar, the Court of Appeals did likewise. 609 F.2d at

383 (Pet., Ist App., at 3-4).

The foregoing indicates that there is universal compliance

with this Court’s mandate for ‘strict observance’’ of the

cassalp lini

Graham requirements, Graham, supra (383 U.S. at 18);

Anderson’ s-Black Rock, supra (396 U.S. at 62), and adding

the further requirement of explicit findings would not serve

any useful purpose. Plaintiff’s contention that some sort of

ritualistic or formalistic Graham findings are required in

these cases is simply wrong.

No court has ever held that explicit findings in precise

Graham language is a requirement in determining patent

validity. Indeed, in cases where that specific issue has

arisen, plaintiff's contention has been rejected, and the

Courts have uniformly ruled that no such explicit findings

are necessary as long as Graham inquiries are made. eé.g.,

Sidewinder Marine v. Starbuck Kustom Boats, supra (597

F.2d at 209); Trio Process Corporation v. L. Goldstein’ s

Sons, Inc., supra (461 F.2d at 71); Frantz Manufacturing

Co. v. Phenix Manufacturing Co. supra (457 F.2d at 322-

23). |

One case, Price v. Lake Sales Supply R.M., 510 F.2d

388, 391 (10th Cir. 1974) erroneously states that Frantz,

supra (457 F.2d 314) did not discuss Graham—this is

clearly wrong. (See 457 F.2d at 322-23).

Price also erroneously implies (see 510 F.2d at 391) that

two Fifth Circuit cases, Van Gorp Manufacturing v. Town-

ley Industrial Plastics, 464 F.2d 16, 19 (Sth Cir. 1972) and

Waldon, Inc. v. Alexander Manufacturing Co., 423 F.2d

91, 92 (Sth Cir. 1970) require explicit Graham findings—

this too is clearly wrong. Van Gorj) and Waldon merely

condemn a broad, conclusory analysis without supporting

Graham inquires; those cases do not require explicit findings

where appropriate Graham inquiries are made and properly

utilized. The District Courts there had given conclusive

weight to the statutory presumption of validity without con-

sidering the Graham factors (Waldon, 423 F.2d at 93) or

ew

oo ome

made incorrect conclusions based on Graham inquiries (Van

Gorp, 464 F.2d at 20, 21). Significantly, in a subsequent

Fifth Circuit case, Cathodic Protection Service v. American

Smelting & Refining Co., supra (594 F.2d 499), the Fifth

Circuit specifically found certain of the District Court’s

comments to be equivalent to a Graham finding without

any explicit verbalization of same (594 F.2d at 507).

As this Court noted in Graham, at 383 U.S. 17 (albeit

perhaps in a different context):

é

.. . the $103 additional condition, when followed

realistically, will permit a more practical test of pat-

entability. The emphasis on nonobviousness is one of

inquiry, not quality. . . .”” (Emphasis supplied. )

il.

The Decisions Below Are Correct

Plaintiff's purported criticism of the decisions below is

without merit.

At bar, the record is replete with evidence of sufficient

Graham inquiries, e.g., Tr. 33-34; 115-16; 118-19; 127-28;

Plaintiff's Exs. 23 and 24; Defendants’ Ex. D.

Moreover, the primary reason there are not more Graham

inquiries is that plaintiff's own witness, under examination

by the District Court, conceded that plaintiff's bag was

similar to a structure in a prior patent, and that the only

difference was plaintiff's method of manufacture. (Tr. 126-

27). This crucial concession in and of itself virtually deci-

mated plaintiff’s patent; it was not necessary for defendants

to nresent their case-in-chief.

In short, as the Court of Appeals found, the District

Court’s consideration of the Graham factors and its ultimate

conclusion based thereon are amply supported by the record.

ee Pee

Plaintiff’s contention that the presumption of patent va-

lidity was somehow abused here is likewise without merit.

It is well-settled, and plaintiff apparently concedes (Pet. at

9), that the presumption is not conclusive. Further, where

relevant prior art is not submitted to the Patent Office, the

presumption is weakened and possibly even destroyed. E.g.,

Aluminum Co. of America v. Amerola Products Corpora-

tion, 552 F.2d 1020, 1024 (3rd Cir. 1977); Hewlett-Packard

Co. v. Tel-Design, Inc., 460 F.2d 625, 628 (9th Cir. 1972);

Waldon, Inc. v. Alexander Manufacturing Co., supra (423

F.2d at 93).

At bar, defendants showed in the District Court that a

relevant patent (Defendants’ Ex. D) had not been submitted

to the Patent Office. (Compare R. 6 and Tr. 118-19). Any

presumption of validity was therefore properly discounted.

Conclusion.

Plaintiff's Petition for a Writ of Certiorari was not timely

filed and should be denied for want of jurisdiction.

If the Court should determine that jurisdiction is present,

then the Petition should be denied for the other reasons

stated hereinabove.

Dated: April 4, 1980

Respectfully submitted,

STEPHEN W. BERGER

Attorney for Respondents

Of Counsel

WARREN, BERGER, GRINFELD & HARGAN

RICHARD L. MYERS