Petition — Control Data Corp. v. Potter Instrument Co.
Supreme Court brief1980
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Supreme Court, U. S.
80-561 FILED
OCT 8 1980
IN THE
Supreme Court of the United States
OctToBER TERM, 1980
_—_——
ControL Data CORPORATION,
Petitioner,
v.
Porter INSTRUMENT Co.,
Respondent.
————-
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
—_——————_
ALLEN Kirkpatrick III
Attorney for Petitioner
CusHMAN, DarBy & CUSHMAN
1801 K Street, N.W.
Washington, D.C. 20006
Of Counsel: Tel: (202) 861-3500
Larry S. Nixon
Micuaet A. LECHTER
Cuar.es E. B. GLENN
CusHMaN, Darsy & CUSHMAN
1801 K Street, N.W.
Washington, D.C. 20006
Tel: (202) 861-3000
JosEPH A. GENOVESE
Control Data Corporation
6003 Executive Boulevard
Rockville, Maryland 20852
Tel: (301) 468-8547
a
Press or Byron S. ADAMS PRINTING, INC., WASHINGTON, D. C.
1
QUESTIONS PRESENTED FOR REVIEW
1. Whether a U.S. Cireuit Court of Appeals should
take jurisdiction and consider the merits of an appeal
from a U.S. District Court where the appellant-re-
spondent failed to file a notice of appeal within the 30
days after final judgment allowed by 28 U.S.C. § 2107,
that period not being tolled due to a defect in a
motion for rehearing, the defect being the failure to
describe the grounds for the rehearing within the 10
days allowed by Fed. R. Civ. P. 59.
2. Is counsel to be a!.owed to file a ‘‘skeletal’’ post-
trial motion for rehearing lacking any statement in
particularity of grounds therefor and to later fill it
in after the inextensible ten-day limitation has lapsed
to thereby enlarge the time for appeal?
PARTIES TO THE PROCEEDING BELOW
Only the parties named in the caption are parties
to the suit in which this petition is filed. There are
four related suits in the Court below, having the same
plaintiff Potter Instrument Company as here against
other defendants Sperry Corporation, Telex Computer
Products, Incorporated and Storage Technology Cor-
poration. The Court of Appeals has consolidated all of
these cases under No. ?9-1428.
lii
TABLE OF CONTENTS
Page
Questions PResENTED ror REVIEW .................. i
PaRTIES TO THE PROCEEDING BELOW .................. i
AMES OP AUTIOMITINS .. os... ook ccc ccc ccccece iv
OrFiciaL AND UnorriciaL Reports or Opinions DELIv-
ERED IN THE Courts BELOw .................... 1
Grounps on Wuicu JurispicTion or THIS Court Is
a 1
Statute anp Rutes Wuicu Tus Case INvoLves ...... 3
Concise STATEMENT OF THE CASE .................... 5
AMPLIFICATION OF Reasons RELIED ON FOR THE ALLOW- ty
AMOR OF THB WRIT .........cccsccces nike keen a.)
icles a cs i bors s b's as Udo 6500 veesceccceccs 14
APPENDIX
Orver of Circuit Court of Appeals of August 12, 1980
(denying petitioner’s motion to dismiss appeal) .. la
Orver of District Court of March 12, 1980 (dismissing
respondent’s civil actions) ..................... 3a
Finpincs anp Concuusions of District Court of March
SN ir sin eng bcc v-uin.eccvdesso'cdedeceeonce 5a
Orver of District Court of May 23, 1980 (denying re-
spondent’s motion for rehearing) ............... 19a
Motion ror ReuHearine of respondent of March 19,
NMG nis Neos <b0's 06050 oe.nn00 vis decedeccers, 2la
Revisep Motion ror Renearina of April 4, 1980 of
POON ieee ccc cccccvccccccvuceucscese 23a
Joint Motion ro Strike Piatntirr’s Motion ror Re-
HEARING of petitioner of May 15, 1980 .......... 25a
_ PREVIOUS PAGE WAS BLANK
’
iv
Table of Contents Continued
Page
Notice or Appgat of respondent of June 19, 1980 .... 29a
APPELLEE'S Motion To Dismiss AppEaL of petitioner of
BL NO kk Katee aa ee chk de A 3la
TABLE OF AUTHORITIES
CaSEs:
Browder v. Director, Ill. Dept. of Corrections, 434 U.S.
257, 54 L.Kd.2d 521, 98 S.Ct. 556 (1978), reh. den.,
434 U.S. 1089, 55 L.Ed.2d 795, 98 S.Ct. 1286
RE iciodin ch did be eevee inna € tase ceenN 9, 10, 13
Coppedge v. United States, 369 U.S. 438, 8 L.Ed.2d 21,
ee a OEY RU OCU) vole upetwnnkewetes enn, 9
DaGraffenrcid v. General Motors Assembly Division,
OOS F280 S00 (Oh Ont, 2078) 2 oii ccc cetcesins 11
Edwards vy. Doctors Hospital, Inc., 242 F.2d 888 (2d
Cir. 1957), cert. den., 356 U.S. 930, 2 L.Ed.2d 761,
OO RRR Pee CME og Spe ek bev ins ug ens are tees 12
Fallen v. United States, 378 U.S. 139, 12 L.Ed.2d 760,
ee RPE ge ee 9
Fime v. Paramount Pictures, Inc., 181 F.2d 300 (7th
| RR GATS Pe ot Bee, Moers ing seen 11
George v. Victor Talking Mach. Co., 293 U.S. 377, 79
L.Ed. 439, 55 S.Ct. 229 (1934) 2... ccacccccccess 10
Johnson v. Manhattan Railway Co., 289 U.S. 479, 77
Sale Baas Oe OU ious a cee ee: 11
Jusino v. Morales & Tio, 139 F.2d 946 (1st Cir. 1944)... 11
Lapiczak v. Zaist, 451 F.2d 79 (2nd Cir. 1971) ........ 10
Martinez v. Trainor, 556 F.2d 818 (7th Cir. 1977) ...11,14
Marshall’s U.S. Auto Supply, Inc. v. Cashman, 111 F.2d
140 (10th Cir. 1940), cert. den., 311 U.S. 667, 85
L.Ed. 428, 61 S.Ct. 26 (1940)
Vv
Table of Authorities Continued
Page
In re Massachusetts Helicopter, 469 F.2d 439 (1st Cir.
Sane ean ree ee ee) To ee 11
Matton Steamboat Co. v. Murphy, 319 U.S. 412, 87 L.Ed.
SOY OS CUA AERO EOE) hoc vices crasvnbeuss se 9,10
Raughley v. Pennsylvania Railroad Company, 230 F.2d
Se Cee My ss beset chaise recearankhes ews 12
Safeway Stores Inc. v. Coe, 78 U.S. App. D.C. 19, 136
Pee C11, ROO Mba 108 (IDES)... vcicwerccesass 11
Tidewater Oil Co. v. United States, 409 U.S. 151, 34
L.Ed.2d 374, 93 S.Ct. 408 (1972) ..............-. 9
United States v. Robinson, 361 U.S. 220, 4 L.Ed.2d 259,
et . aerrreory een yeas Pea eet a ey ee 9
United States v. Schaefer Brewing Co., 356 U.S. 227, 2
L.Eid.2d 721, 78 S.Ct. 674 (1958) ............60.. 9
Virginia Land Co. v. Miami Shipbuilding Corp., 201
ae ee er eee 12
Waldron v. Cities Service, 361 F.2d 671 (2nd Cir. 1966),
aff'd 391 U.S. 253, 20 L.Ed.2d 569, 88 S.Ct. 1575
(1968), reh. den., 393 U.S. 901, 21 L.Ed.2d 188, 89
ae I ret euty cokbes cee dek abe sos 11
Witt v. Merrill, 208 F.2d 285 (4th Cir. 1953) ......... 12
Yanow v. Weyerhaeuser Steamship Co., 274 F.2d 274
(9th Cir. 1959), cert. den., 362 U.S. 919, 4 L.Ed.2d
FO Ie a OE A PUD bis seb e0g os bacvonssweces 12
STATUTES:
ee IY oc hs schreaoe hbo S OCS a deke ewes 2
ee I nad nn. os Bi oa SeGNeas hese beueekes 11
eS oki. ve se pnd a eh web ped ob vkeaA 4)
ee Ne I on sie CAS Aa Ks o God ules ad keene Rae 2
ee Vie Ck th edeweneectbs cuaedaacdabednacc 3,5
vi
Table of Authorities Continued
Page
RvuLEs:
PE I he CR EN ESS. aa vib hse end howe seamen 8
Or RE ok ono cho a wccederatn cueeee 3, 10
I bina ns ote canes dd seesndenkeuabenee 3, 10
eee: Orc. WOO i's >. swan cee Gab see wpeenenn 4,10
er oo ony eeu ebaadbbesswitecemel 4,10
PG I ods vs ced vsvudens sees seane 4, 6, 7,10
Pe. RIO, RATED Cee VOD 2x vnc kc acbBeesadcunc 4
No. 80-
IN THE
Supreme Court of the United States
OcToBER TERM, 1980
ConTROL Data CORPORATION,
Petitioner,
v.
PorTeR INSTRUMENT Co.,
Respondent.
PETITION FOR A WRIT OF CERTIORARI TO THE
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
OFFICIAL AND UNOFFICIAL REPORTS OF
OPINIONS DELIVERED IN
THE COURTS BELOW
As of date, petitioner is unaware of publication of
any of the opinions delivered below in either official or
unofficial reports.
GROUNDS ON WHICH JURISDICTION
OF THIS COURT IS INVOKED
Date Of Decree Sought To Be
Reviewed And Time Of Its Entry
Petitioner prays that a writ of certiorari issue to
review the decree dated and entered on August 12,
1980 by the United States Court of Appeals for the
2
Fourth Circuit in civil case number 80-1428, denying
petitioner’s motion to dismiss respondent’s appeal on
grounds of untimeliness of appeal and lack of juris-
diction, the appeal having been originally taken from
a judgment of the United States District Court for
the Eastern District of Virginia (Alexandria Divi-
sion) dismissing respondent’s patent infringement ac-
tion for laches and estoppel. The judgment of the
District Court was rendered March 12, 1980 and en-
tered on March 25, 1980.
Date Of Any Order Respecting A Rehearing
In regard to the decree of the Court of Appeals
entered on August 12, 1980 denying petitioner’s mo-
tion to dismiss appeal, no order has issued concerning
a rehearing.
In regard to the judgment of the District Court
entered on March 25, 1980 dismissing respondent’s
patent infringement action below, the District Court,
after a hearing on May 16, 1980, entered an order on
May 23, 1980 denying the respondent’s motion for re-
hearing under Fed.R.Civ.P. 59.
Statutory Provision Believed To
Confer On This Court Jurisdiction
To Review The Decree In Question
This petition for a writ of certiorari was filed within
ninety days of the date of the order of the Court of
Appeals denying petitioner’s motion to dismiss appeal
in compliance with 28 U.S.C. § 2101(¢). The jurisdic-
tion of this Court to review the order is invoked under
28 U.S.C. § 1254(1).
3
STATUTES AND RULES WHICH THIS CASE INVOLVES
28 U.S.C. § 2107 (in pertinent part) :
Except as otherwise provided in this section, no
appeal shall bring any judgment, order or decree
in au action, suit or proceeding of a civil nature
before a court of appeals for review unless notice
of appeal is filed, within thirty days after the
entry of such judgment, order or decree.
Fed.R.App.P. 4(a) (4):
(4) Ifa timely motion under the Federal Rules
of Civil Procedure is filed in the district court by
any partv:... (ii) under Rule 52(b) to amend or
make additional findings of fact, whether or not
an alteration of the judgment would he required
if the motion is granted; (iii) under Rule 59 to
alter or amend the judgment; or (iv) under Rule
59 for a new trial, the time for appeal for all
parties shall run from the entry of the order deny-
ing a new trial or granting or denving any other
such motion. A notice of appeal filed before the
disposition of any of the above motions shall have
no effect. A new notice of appeal must be filed
within the prescribed time measured from the
entry of the order disposing of the motion as pro-
vided above. No additional fees shall be required
for such filing.
Fed.R.Civ.P. 6(b) :
When by these rules or by a notice given there-
under or by order of court an act is required or
allowed to be done at or within a specified time,
the court for cause shown may at any time in its
discretion ... permit the act to be done where the
failure to act was the result of excusable neglect;
but it may not extend the time for taking any
action under Rules 50(b), 52(b), 59(b), (d) and
(e), and 60(b), except to the extent and under the
conditions stated in them.
Fed.R.Civ.P. 7(b) (1):
(1) An application to the court for an order
shall be by motion which, unless made during a
hearing or trial, shall be made in writing, shall
state with particularity the grounds therefor, and
shall set forth the relief or order sought. The re-
quirement of writing is fulfilled if the motion is
stated in a written notice of the hearing of the
motion.
Fed.R.Civ. P. 52(b)( in pertinent part) :
Upon motion of a party made not later than 10
days after entry of judgment the court may amend
its findings or make additional findings and may
amend the judgment accordingly. The motion may
be made pursuant to Rule 59.
Fed.R.Civ.P. 59(e) :
(e) Motion to Alter or Amend a Judgment. A
motion to alter or amend the judgment shall be
served not later than 10 days after entry of the
judgment.
Fed. Local R. 11(f)(E.D.Va.) (in pertinent part):
Briefs Required. (1) All motions, unless other-
wise directed by the Court and except as noted
herein below in Subsection 11(f) (2), shall be ac-
companied by a written brief setting forth a con-
cise statement of facts and supporting reasons,
along with a citation of the authorities upon which
the movant relies. ... (2) Briefs need not accom-
pany motions (a) for a more definite statement,
(b) for an extension of time to respond to plead-
ings, unless the time has already expired and (d)
solely related to discovery matters, except as set
forth in Local Rule 11-1(E), (F) and (1).
5
CONCISE STATEMENT OF THE CASE
Respondent filed civil action against petitioner for
alleged infringement of U.S. letters patent in the
United States District Court for the Eastern District
of Virginia (Alexandria Division), the basis for fed-
eral jurisdiction being 28 U.S.C. 1338(a).
The District Court entered a judgment dismissing
the complaint on March 25, 1980,’ and the plaintiff
purported to move for a rehearing under Fed.R.Civ.P.
09 on the 10th day thereafter, April 4, 1980. However,
the motion that plaintiff had filed within the 10 days
allowed under Fed.R.Civ.P. 59 provided no particular
grounds for the motion. The motion is in the Appendix
hereto at page 24a. The grounds were filed in a sep-
arate paper filed on May 2, 1980, which was after the
allowed 10 days, and indeed was after the 30 days
allowed for an appeal under 28 U.S.C. 2107. After the
District Court denied the motion for rehearing, the
plaintiff (respondent here) filed its notice of appeal on
June 19, 1980, which was long after the 30 days from
entry of judgment allowed under 28 U.S.C. 2107.
Upon the notice of appeal being filed, petitioner
filed a motion to dismiss the appeal with the Court of
Appeals on July 1, 1980 on the ground of lack of
jurisdiction in the Court of Appeals due to the un-
timely filing of the notice of appeal, with an explana-
tion of the defect in the motion for rehearing. On
*This was the date when findings and conclusions were filed to
complete the judgment filed on March 12, 1980.
* Defendant (petitioner here) also had moved the District Court
for dismissal of the plaintiff’s motion for rehearing due to the
defect, but that motion was not acted upon inasmuch as the Court
denied the motion for rehearing on its merits.
6
August 12, 1980, the Court of Appeals denied the
motion to dismiss without giving any reasons for its
action. The order of denial appears on page la of the
Appendix hereto. The appeal remains pending as of
this date. This petition is for urgently soliciting this
Court to now review and reverse the dismissal of the
motion to dismiss the appeal so that the Court of
Appeals’ error in assuming jurisdiction can be timely
corrected.
The following chronology of procedural events be-
low is provided for the convenience of this Court.
On March 12, 1980 the U.S. District Court for the
Eastern District of Virginia (Alexandria Division)
entered an order dismissing respondents patent in-
fringement civil action against petitioner on grounds
of laches and equitable estoppel.’ The order did not
include Findings and Conclusions. A copy order ap-
pears at pages 3a-4a of the Appendix.
On March 19, 1980 respondent filed a ‘Motion for
Rehearing” under Fed.R.Civ.P. 59 alleging that “the
Court had committed manifest error of law and fact.”
No brief accompanied respondent’s motion. A copy
appears at page 22a of the Appendix.
On March 25, 1980 the U.S. District Court entered
Findings and Conclusions to its Dismissal Order of
March 12, 1980. A copy appears at pages 5a-18a of the
Appendix.
On April 4, 1980 respondent filed a ‘‘Revised Mo-
tion for Rehearing and to Vacate Summary Judg-
*The order also dismissed four other cases that had been con-
solidated with the petitioner’s case because they all involved the
same patents.
7
ment’’ under FRCP 59(e), the paper providing only
general averments as to the nature of the grounds for
the Motion. Again, no brief accompanied respondent’s
revised motion. A copy appears at page 24a of the
Appendix. April 4 was the 10th day after March 25.
On April 11, 1980 a thirty-day period expired from
the date when the District Court dismissed the action.
On April 24, 1980 a thirty-day period expired from
the date when the District Court entered its findings
and conclusions.
On May 2, 1980 respondent filed a ‘“‘Brief in Sup-
port of Motion for Rehearing” setting forth the par-
ticular grounds for the Motion for Rehearing.
On May 9, 1980 the District Court set May 16, 1980
as date for hearing on respondent’s motion.
On May 15, 1980 petitioner, with co-defendants, filed
and served a ‘Joint Motion to Strike Plaintiff’s Mo-
tion for Rehearing” and ‘‘Memorandum of Points and
Autborities’’, on the ground that the motion filed
April 4, 1980 was defective in lacking recital of the
grounds for the motion.
On May 16, 1980 the District Court heard argument
by counsel on repondent’s motion.
On May 23, 1980 the District Court entered an order
denying respondent’s motion. A copy appears at pages
19a-20a of the Appendix.
On June 19, 1980 respondent filed and served a no-
tice of appeal of the dismissal of its patent infringe-
ment action.
On July 1, 1980 petitioner filed and served an “Ap-
pellee’s Motion to Dismiss Appeal’’ and ‘‘ Appellee’s
8
Memorandum in Support of Motion to Dismiss Ap-
peal.’’ A copy of the motions appears at pages 31-32a
of the Appendix. (No copy of the Memorandum in
Support is included here because it was essentially the
same as the argument presented hereinbelow.)
On July 9, 1980 respondent filed and served a ‘‘ Brief
Opposing Motion to Dismiss.”’
On August 12, 1980 the Court of Appeals for the
Fourth Circuit entered an Order denying various mo-
tions to dismiss appeals including petitioner’s. A copy
appears at page la of the Appendix.
AMPLIFICATION OF REASONS RELIED ON FOR THE
ALLOWANCE OF THE WRIT
The Decision Is Of Imperative Public Importance
Justifying Immediate Settlement By The Court
Petitioner is well aware of the provisions of Rule
18 of this Court that certiorari will not be granted
before final judgment of the Court of Appeals unless
the case is ‘‘of such imperative public importance as
to justify the deviation from normal appellate prac-
tice and to require immediate settlement in this
Court.’’ We submit that just that sort of case is pre-
sented. Given the enormous overloading of the Fed-
eral Courts, it is imperative to the publie good that
our system of justice not be bogged down with cases
pending because statutes and rules on timely taking
of steps in the courts are ignored.
The questions presented touch upon important as-
pects of federal jurisdiction, procedure and practice
which, if not resolved at this time, will only invite
reoccurrence. The central aspect of the question is
9
whether the filing of skeletal post-trial motions in
clear noncompliance with the Federal Rules of Civil
Procedure is to be condoned as an effective means for
extending the period for filing notices of appeal and
for obviating the strict ten-day limitation for filing
post-trial motions. The Circuits have split on the issue.
Moreover, if the rulings below were allowed to stand
the doctrine of finality of judgment and the interests
it serves would be adversely affected, as further ex-
plained below.
The Court has often exercised its power of super-
vision over the administration of justice in the Fed-
eral Courts, especially where, as here, the issues pre-
sented raise important questions of federal appellate
jurisdiction, conflict among the Circuits and standards
of federal practice. Tidewater Oil Co. v. United States,
409 U.S. 151, 153, 34 L.Ed.2d 375 (1972), 93 S.Ct. 408
(1972).
Prior Decisions Of This Court
On many occasions heretofore this Court has made
clear that time limitations for filing a notice of appeal
are mandatory, jurisdictional and to be strictly applied,
e.g. Browder v. Director, Ill. Dept. of Corrections, 434
U.S. 257 at 264, 54 L.Ed.2d 521, 98 S.Ct. 556 (1978) ;
United States v. Robinson, 361 U.S, 220, 229, 4 L.Ed.2d
259, 80 S.Ct. 282 (1960). See also Fallen v. United
States, 378 U.S. 139, 12 L.Ed.2d 760, 84 S.Ct. 1689
(1964) ; Coppedge v. United States, 369 U.S. 438, 442,
8 L.Ed.2d 21, 82 S.Ct. 917 (1962); United States v.
Schaefer Brewing Co., 356 U.S. 227, 2 L.Ed.2d 721, 78
S.Ct. 674 (1958) ; Matton Steamboat Co. v. Murphy,
10
319 U.S. 412, 415, 87 L.Ed. 1483, 68 S.Ct. 1126 (1943) ;
George v. Victor Talking Mach. Co., 293 U.S. 377,
379, 79 L.Ed. 439, 55 S.Ct. 229 (1934), 73 ALR2d 235
(1958). This Court has also continued to recognize
that any other approach would defeat the time limita-
tion’s central purpose of providing finality to judg-
ment. Browder, supra av 264; Matton Steamboat, su-
pra, at 415.
Fed. Rule App. Proce. 4(a) (4) allows for the running
of the time limitations to be tolled by a timely motion
filed in the district court pursuant to Fed.R.Civ.P. 52
(b) or Rule 59. Browder, supra at 264. Under those
rules a ten-day limitation is allowed for filing the re-
spective motions, the District Court being prohibited
from enlarging same under Fed.R.Civ.P. 6(b). Lapic-
zak v. Zaist, 451 F.2d 79 (2nd Cir. 1971).
Insofar as these provisions touch upon the jurisdic-
tional matter of timeliness of appeal, they too should
properly be accorded strict interpretation and appli-
cation by the lower courts and parties to suit. Browder,
supra.
However, the case presented here is one where the
respondent managed to perpetuate its case and take
an untimely appeal by a procedural mechanism which
is in clear .and substantial non-compliance with the
federal rules of procedure. The procedural] mechanism
it used was a simple one: it merely filed a purported
post-trial motion stylized under Fed.R.Civ.P. 59(e)
within the inextendible ten-day limitation allowed un-
der the rule, but without setting forth in particularity
any ground therefor as required by Fed.R.Civ.P. 7(b).
(hence the name ‘‘skeletal” motion for its lack of sub-
stance). The offending counsel then took as long as he
11 é
desired to file his papers or briefs setting forth
grounds. In the case presented, this act was done long
after the lapse of the ten-day limitation on the motion
and after the lapse the 30-day limitation allowed for
an appeal from entry of judgment.‘
A Conflict Among The Circuits Exists
In the First, Second, Third, Fifth, Seventh and
District of Columbia Circuits, such irregularity in a
post-trial motion would not toll the running of the
period for filing notice of appeal. Thus, an appeal
such as the one here would have been dismissed as
untimely. See e.g., Martinez v. Trainor, 556 F.2d 818
(7th Cir. 1977). The rule in these Cireuits is one of
“strict”? application, that neither a belated motion
nor a motion without reasons can give the trial court
the jurisdiction necessary to hear and act on such
motion, thereby enlarging the time for appeal. Mar-
tinez v. Trainor, supra at 821, citing Fine v. Para-
mount Pictures, Inc., 181 F.2d 300, 304 (7th Cir.
1950), accord, Safeway Stores, Inc. v. Coe, 78 U.S.
App. D.C. 19, 136 F.2d 771, 773 (1943); Jusino v.
Morales & Tio, 139 F.2d 946 (1st Cir. 1944) ; Virginia
Land Co. v. Miami Shipbuilding Corp., 201 F.2d 506
*The civil action against petitioner was final and appealable
under 28 USC § 1291 as of March 25, 1980, no counterclaims being
presented. The fact that the District Court had consolidated the
five cases for discovery did not extend the date for appeal of the
petitioner’s case, see Johnson v. Manhattan R. Co., 289 U.S. 479-
496-97, 77 L.Ed. 1331, 53 S.Ct. 721 (1933), in which the Court held
that consolidation does not merge cases. See also Waldron v, Cities
Service, 361 F.2d 671, 672 (2nd Cir. 1966), aff’d 391 U.S. 253,
20 L.Ed.2d 569, 88 S.Ct. 1575 (1968) ; Massachusetts Helicopter,
Petitioner, 469 F.2d 439 (1st Cir. 1972). The non-merger of con-
solidated cases also is recognized in DeGreffenreid v. General Motors
Assembly Division, 558 F.2d 480 (8th Cir. 1977).
12
(5th Cir. 1953); Raughley v. Pennsylvania R.R., 230
F.2d 387 (ed Cir. 1956); Edwards v. Doctors Hos-
pital, Inc., 242 F.2d 888 (2d Cir. 1957); see also,
Marshall’s U.S. Auto Supply, Inc. v. Cashman, 111
F.2d 140, at 141-42 (10th Cir. 1940); cert. den., 311
U.S. 667, 85 L.Ed. 428, 61 S.Ct. 26 (1940), wherein
the court ruled that a plaintiff’s motion for new trial
which merely recited genera] averments as grounds
therefor did not provide the lower court proper basis
to act on the motion.
However, the Fourth and Ninth Circuits have taken
the conflicting stance. In these Circuits irregular post-
trial motions filed without statements of grounds there-
for are nonetheless allowed to toll the period for
filing notice of appeal in order to allow otherwise
untimely appeals to be taken. See, Witt v. Merrill,
208 F.2d 285 (4th Cir. 1953); Yanow v. Weyerhauser
Steamship Co., 274 F.2d 274 (9th Cir. 1959).
In Witt v. Merrill, the Fourth Circuit explained its
reasons for taking this stance, the first being that
since the Rules of Civil Procedure are to be liberally
construed, to deny appellate review because grounds
were not stated in a post-trial motion would be en-
forcement of a technicality in contravention of the
spirit of the rules; and second, that the mere filing of
a post-trial motion, albeit irregular or otherwise in
non-compliance with the rules, is sufficient notice to
the opposing party that the moving party intends to
appeal.
As to the latter point, it would seem strange indeed
that liberal interpretation of the Federal Rules of
Civil Procedure would be allowed to go so far as to
make an irregular post-trial motion a surrogate notice
13
of appeal. Likewise, it does not seem realistic to insist
that a post-trial motion lacking any statement of
grounds therefor informs the recipient counsel at time
of receipt that the moving party intends to appeal.
Of more importance, however, is the Fourth Cir-
cuits’ misplaced adherence to the position that liberal
interpretation of the federal rules is appropriate here.
As stated above, this Court has time and again insisted
that federal statutes and rules touching upon timeliness
of appeal are to be strictly applied because of the
manadatory jurisdictional nature of same.’ As this
Court has explained:
‘‘the purpose of the rule is clear: it is ‘to set a
definite point of time when litigation shall be at
an end, unless within that time the prescribed
application has been made; and if it has not, to
advise prospective appellees that they are freed
of the appellant’s demands. Any other construc-
tion of the statute would defeat its purpose.’
Browder, supra. at 264.”
In this vein, it can be seen that the liberal approach
of the Fourth and Ninth Circuits frustrates the above
stated purpose by allowing untimely filed appeals to
be entertained. Moreover, this approach unfairly fa-
vors the non-complying party by allowing his interest
in taking an untimely appeal to prevail over the other
party’s competing interest in finality of judgement. If
any party is to be caused inconvenience or loss as a
result of one purty’s failure to comply with the rules,
it should be the non-complying party, not the other.
Thus, the Fourth and Ninth Cireuits’ stance on the
issue perpetuates an unnecessary split in the Circuits,
violates principles of fairness, and runs contrary to
previous directives from this Court.
14
Moreover, to allow the reasoning of the Fourth and
Ninth Circuits to stand,will act only to allow a barrage
of late filed appeals to be taken. In these days of highly
loaded appellate dockets, such practice should not be
allowed to stand. As the court observed in Martinez,
supra, at 820:
‘*,.. if a party could file a skeleton motion and
later fill it in, the purpose of the time limitation
would be defeated. ‘Casting this substantial doubt
on the finality of judgment would increase the
burdens of an already overloaded federal judici-
ary.’ 9 Moore’s Federal Practice § 204.13[2], at
978.”’
CONCLUSION
For the reasons stated above, petitioner respectfully
urges that a writ of certiorari be issued.
ALLEN KiIRKPATRICK IIT
Attorney for Petitioner
CusHMAN, Darsy & CUSHMAN
1801 K Street, N.W.
Washington, D.C. 20006
Tel: (202) 861-3500
Of Counsel:
Larry 8S. Nrxon
Micuaet A. LECHTER
CuHar.es E. B. GLENN
CusHMAN, Darsy & CUSHMAN
1801 K Street, N.W.
Washington, D.C. 20006
Tel: (202) 861-3000
JOsEPH A. GENOVESE
Control Data Corporation
6003 Executive Boulevard
Rockville, Maryland 20852
Tel: (301) 468-8547
APPENDIX
la
APPENDIX
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 80-1428
Porrer Instrument Company, Inc.,
Appellant,
versus
StoraGE TECHNOLOGY CorPORATION, ET AL,
Appellees.
ORDER
(Filed Aug. 12, 1980)
Upon consideration of the motions to dismiss appeal
and the responses to the motions, by counsel,
Ir Is Orperep that the motions to dismiss the above
appeal are denied.
Entered at the direction of Judge Phillips, with the
concurrence of Judge Sprouse and Judge Ervin.
For the Court,
7 /8/ Witu1am K. Sxarte, II
_ Clerk
3a
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Potter Instrument Company, Inc., Plaintiff,
v.
Storace TecHNnoLocy Corporation, Defendant.
Civil Action No. 79-626-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Tevex Computer Propucts, Inc., Defendant.
Civil Action No. 79-993-A
Porter Instrument Company, Inc., Plaintiff,
v.
TeLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-994-A
Porter Instrument Company, Inc., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Portrer Instrument Company, Inc., Plaintiff,
v.
Controt Data Corporation, Defendant.
ORDER
(Filed March 12, 1980)
' PREVIOUS PAGE WAS BLANK |
4a
Upon examination of the voluminous documents filed
herein and after careful consideration of the evidence sub-
mitted by the parties in support of their respective posi-
tions, and upon argument of counsel—the Court is of the
opinion that the defendants’ joint and several motions
to dismiss these consolidated infringement suits on the
grounds of laches and equitable estoppel ought to be
GRANTED, and
It Is So Ordered.’
This without prejudice to Potter’s right to pursue its
currently pending parallel infringement suits against the
United States and these defendants* in the United States
Court of Claims, if it be so advised.
The Clerk is directed to send a copy of this Order to
the Honorable Francis C. Browne of the United States
Court of Claims, and to all counsel of record.
United States Senior District Judge
/s/ Oren R. Lewis
March 12, 1980
All pretrial discovery has been completed—this contro-
versy is now overripe for settlement* and/or trial on the
merits in the Court of Claims as soon as that Court’s
docket permits.
A True Copy, Teste:
W. Farley Powers, Jr., Clerk
By /s/ Dorgen JONES
Deputy Clerk
*The Court will file its findings and conclusions in the next
week or so.
* They were made third-party defendants in the Court of Claims
suit in 1978.
* Hearing on the several pending motions for sanctions will be
deferred until this case is settled and/or set for trial in the Court
of Claims.
5a
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porter Instrument Company, Inc., Plaintiff,
. :
Storace TecHNoLocy Corporation, Defendant,
Civil Action No, 79-626-A
Porter Instrument Company, Inc., Plaintiff,
v. |
Trex Computer Propucts, Inc., Defendant.
Civil Action No, 79-993-A
Potter InstRuMENT Company, Inc., Plaintiff,
v.
TeLex CoMPuTER Propucrs, Ino., Defendant.
Civil Action No. 79-994-A
Potrer InstRUMENT Company, Inc., Plaintiff,
:
SPERRY Corporation, Defendant.
Civil Action No. 79-995-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Controt Data Corporation, Defendant.
FINDINGS AND CONCLUSIONS
(Filed March 25, 1980)
6a
These suits were brought by the Potter Instrument
Company, Inc. (Potter) against Storage Technology Cor-
poration (STC),' Telex Computer Products, Inc. (Telex),’
Sperry Corporation (Sperry),* and Control Data Corpora-
tion (CDC)* charging the defendants with infringement of
United States Letters Patent No. 3,176,894 (“the ’894 pat-
ent”) by making, using and selling magnetic tape drives
employing an “industry standard Z buffer” and United
States Letters Patent No. 3,226,685 (“the ’685 patent”)
by making, using and selling magnetic tape recording sys-
tems employing Group Coded Record (GCR) adopted as
an industry-wide standard by the American National
Standards Instituie (ANSI).
The defendants claimed these patents were invalid and
denied the claimed infringement.
A parallel proceeding is currently pending in the United
States Court of Claims. The Court of Claims proceeding
was instituted on March 24, 1978 when Potter filed suit
against the United States Government alleging infringe-
ment of the ’894 and ’685 patents in connection with the
United States Government’s use of computer equipment
and tape drives supplied by STC, Telex, Sperry and CDC.
The defendants were made third-party defendants.
These consolidated cases came on for hearing on the
joint and/or individual motions of the defendants for
summary judgment on the basis of, inter alia, file wrapper
estoppel, laches, and equitable estoppel.
The Court declared the file wrapper estoppel claim pre-
mature and scheduled the laches and estoppel issues for
further hearing.
* Civil Action No. 79-579-A (filed July 6, 1979).
* Civil Action Nos. 79-626-A and 79-993-A (filed July 24, 1979
and November 21, 1979, respectively).
* Civil Action No, 79-994-A (filed November 21, 1979).
* Civil Action No, 79-995-A (filed November 21, 1979).
7a
Detailed memoranda of points and authorities, together
with voluminous exhibits and live testimony, were sub-
mitted by each of the parties in support of their respective
positions.
From the record thus made, the Court finds that the
’894 patent was issued to Robert E. Schoeneman as in-
ventor on April 6, 1965. This patent, allegedly covering
“industry standard Z buffer” magnetic tape drives, was
owned by Potter during the time period relevant to this
consolidated action.
The ’685 patent, allegedly covering the industry stand-
ard “GCR” recording and information storage technique,
was also owned by Potter during the relevant time period.
Although the record is silent as to when, if ever, Potter
began manufacturing and marketing its Z buffer tape
drive and GCR recording equipment, it had bulk paid-up
licensing agreements with IBM and other manufacturers
covering both the ’894 and ’685 patents as early as 1971.
In early 1970, Potter had actual and/or constructive
notice that each of the defendants had developed and were
selling tape drives utilizing the accused industry standard
Z buffer and, later, the GCR technique.
STC introduced its first magnetic tape drive employing
an industry standard Z buffer at the Atlantic City Na-
tional Computer Conference in the spring of 1970—this
conference was attended by Potter representatives. STC
sold its first Z buffer tape drive in late 1970.
Beginning in 1970, STC undertook a marketing program
for its tape equipment which included low profit sales to
original equipment manufacturers (OEMs).
On December 1, 1971, Potter wrote to STC concerning
possible infringement of the ’894 patent. Subsequent cor-
responding relating to the ’894 patent between Potter’s
patent counsel and STC’s patent counsel followed during
8a
1972. This correspondence terminated with a letter dated
January 17, 1973—nothing more was heard from Potter
regarding the ’894 patent until this suit was filed in 1979.
On March 8, 1973, STC publicly announced its GCR
tape recording system—-a copy of which announcement
was received by Potter. On May 17, 1973, George W. May,
then president of Potter, wrote to STC stating that the
’685 patent covered the fundamental concept of GCR and
offered STC a license under the ’685 patent.
STC began selling its tape drives employing GCR tech-
nology after the March 8, 1973 announcement, for delivery
in the fourth quarter of 1973. In March 1974, John T.
Potter reported to the Potter Board of Directors that
STC was infringing its 685 patent—no legal action was
undertaken by Potter against STC for patent infringement
until the filing of this suit in 1979.
Telex publicly announced its Z buffer tape drive in May
1970 and subsequently made shipments to customers in the
latter part of 1970.
Potter first contacted Telex regarding the ’894 patent in
a letter dated November 10, 1971, in which Potter directed
Telex’s attention to the ’894 patent. An exchange of corre-
spondence followed which included a letter from Telex’s
patent counsel denying infringement of the ’894 patent and
a letter dated October 25, 1972 from Potter threatening
immediate legal action if Telex did not take a license under
the ’895 patent. Nothing further was said or done regard-
ing the ’894 patent until this suit was filed in 1979,
In May 1975, Telex negotiated for and purchased Pot-
ter’s United Kingdom assets for approximately $500,000.00.
Potter neither claimed nor mentioned infringement of its
"894 patent during these negotiations.
The record is devoid of evidence concerning precisely
when Telex introduced and began marketing its GCR tape
9a
equipment. However, the undisputed evidence discloses that
Potter became aware of Telex’s GCR equipment and the
possibility that Telex might be infringing on its 685 pat-
ent in 1976—as evidenced by the exchange of correspon-
dence between Potter and Telex with regard to the ’685
patent initiated by Potter’s letter of February 13, 1976 and
terminated by Telex’s letter of February 3, 1977.
On November 10, 1970, Sperry Univac issued a press re-
lease to approximately 75 magazines and trade journals
announcing the introduction of the accused Sperry Univac
Uniservo-20 tape drive. This tape drive, which employs
the accused Z buffer, was given wide publicity at trade
shows following the November announcement.
On December 31, 1971, the Sperry Univac Division of
Sperry acquired the computer business and operations of
the RCA Corporation in a widely publicized transaction.
RCA had earlier acquired a paid-up license under numer-
ous Potter patents, including the ’894 patent.
CDC issued press releases to the computer industry re-
garding its own Z buffer tape drive no later than August
22, 1973. On or before September 27, 1973, CDC had begun
leasing the accused Z buffer tape drive. As of the time of
the press releases, Potter knew or should have known that
CDC was marketing the accused Z buffer tape drives.
Potter never asserted any infringement claim under the
"894 patent against CDC until the filing of this suit in
1979.
With respect to the GCR patent, in November 1973, the
ANSI Subcommittee X3B1 received a proposal from IBM
—which was licensed by Potter under the ’685 patent—-for
adoption of GCR recording as an industry-wide standard.
GCR is allegedly an infringement of the 685 patent in
suit. Representatives of Potter attended the November
1973 ANSI subcommittee meeting but did not disclose
10a
Potter’s ownership of the ’685 patent or any other patents
relating to the proposed GCR standard.
ANSI Subcommittee X3B1 formulates industry-wide
standards for magnetic tape information interchange sys-
tems. The Subcommittee had a written policy, of which all
members were aware, stating that when any one or more
patents are to be included within a proposed industry
standard, the owner of such patent[s] must bring to the
attention of the Subcommittee the existence of such pat-
ents and agree to offer licenses to members of the affected
industry on reasonable and nondiscriminatory terms as a
prerequisite to the adoption of the industry-wide standard.
This policy was adopted to allow all industry members an
equal opportunity to utilize any industry-wide standard
adopted.
The GCR recording was adopted as the industry-wide
standard in June of 1976.
During the time periods relevant to this suit, Potter was
fully cognizant of the methods used to protect one’s pat-
ents and patent rights. On January 2, 1970, it instituted a
suit against Bucode, Inc. for infringement of, inter alia, its
894 patent (184 U.S.P.Q. 662 [1975]). After protracted
litigation, the ’894 patent was held valid by the District
Court—this suit was compromised and settled pending
appeal.
Potter took no action against any of the alleged in-
fringers, either during or after the conclusion of the
Bucode suit, prior to filing the Court of Claims’ suit against
the United States.
Potter’s economic survival reached the acute stage in
late 73 or early '74~-many of its patents, including the
’894 and ’685 patents, were assigned to the Midland Bank
of New York as security for bank loans—Alexander was
employed as its financiai consultant in late 1974, and the
Jompany filed its petition for a Chapter XI Bankruptcy in
lla
April 1975. Potter remained as debtor in possession with
Alexander as its new president.
None of these infringement claims were listed as assets
or choses in action in Potter’s Chapter XI Bankruptcy
petition.
Alexander neither petitioned the Bankruptey Court nor
took any action as debtor in possession against any of these
defendants in re their right to continue using the ’894 or
the 685 patents, even though the Potter Board of Directors
had been advised by one of its patent advisors that failure
to so do might give rise to the defense~-of-laches. "
Instead, Potter sought and obtained permission from the
Bankruptcy Court to employ counsel on a contingent basis
to bring suit against the United States in the Court of
Claims for infringement of its ’894 and ’685 patents—in
the hopes that the Government would bring in the defen-
dants as third-party defendants and force a settlement—
which was done in a similar suit filed against the United
States in the Court of Claims.
Suit was filed against the United States in the Court
of Claims on March 24, 1978, and the Government gave
notice of the suit to these defendants in September 1978.
Potter changed counsel in the Court of Claims’ suit—
and he recommended that individual infringement suits
be brought in this Court against these defendants, on a
contingent basis—three were filed in July 1979; three were
filed in November 1979; two have been settled, and four
remain to be settled and/or tried.
Although an unusually large amount of pretrial discov-
ery has been had both in the Court of Claims and in this
Court, many of the pertinent documents have disappeared
and many of the material witnesses, including the inven-
tors of the patents in suit, have suffered lapses of memory
or otherwise have become unavailable.
12a
While the causes are myriad, much of the blame is at-
tributable to Potter’s delay in filing these suits.
Potter’s unsupported contention that laches is not appli-
cable to suits at law’ is inapposite to all the relevant
authorities.
It is clear in the Fourth Circuit that the equitable doc-
trine of laches is applicable to suits brought solely at law.
See Giddens v. Isbrandtsen Co., 355 F.2d 125 (4th Cir.
1966). Similarly, laches has expressly been held applicable
to patent infringement actions. 7WM Manufacturing Co.,
Inc. v. Dura Corporation, 592 F.2d 346 (6th Cir. 1979);
Baker Manufacturmg Co. v. Whitewater Manufacturing
Co., 480 F.2d 1008 (7th Cir. 1970), cert. denied, 401 US.
956 (1971); Union Shipbuilding Co. v. Boston Iron &
Metal Co., 93 F.2d 781 (4th Cir. 1938); Wolf Mineral
Process Corp. v. Minerals Separation N.A. Corp., 18 F.2d
483 (4th Cir. 1927).
Laches may be invoked when the prejudice to the defen-
dant caused by the plaintiff’s unexcused delay in institut-
ing suit outweighs the harm to the plaintiff caused by the
acts of the defendant upon which the suit is predicated. It
is sustainable upon proof of two elements: (1) lack of
diligence by the party against whom the defense is as-
serted, and (2) prejudice to the party asserting the de-
fense. See Costello v. United States, 365 U.S. 265 (1961).
In construing this two-pronged standard, Judge Albert
V. Bryan, Sr., speaking for the Fourth Circuit, stated in
Giddens, supra, that:
... the presence of laches is ascertained by a balanc-
ing of the claimant’s delay with the proferred excuse,
if any, against the defendant’s consequent detriment.
° The plaintiff asserts that this consolidated action is an action
at law rather than an action in equity because Potter seeks only
monetary damages and no injunctive relief.
13a
The determination demands a weighing of equities.
These in turn depend upon an assay of the circum-
stances. 355 F.2d 125, 127.
The length of delay constituting laches is generally anal-
ogized to a corresponding statute of limitations—but the
laches period may be longer or shorter than the analogous
statutory period, depending on the individual facts and
circumstances of each case. Giddens, supra, at 127; Gil-
lons v. Shell Co. of California, 86 F.2d 600 (9th Cir. 1936),
cert. denied, 302 U.S. 689 (1937).
Although there is no express statute of limitations for
patent infringement suits, 35 U.S.C. § 286 limits a pat-
entee’s recovery in a patent infringement action to the six-
year period immediately preceding the filing of the suit.
I'WM Manufacturing Co., supra, at 348.
The time when the patentee gains knowledge—either
actual or constructive—of the alleged infringement trig-
gers the running of the laches period. TWM Manufactur-
ing Co., supra, at 348; Dymo Industries v. Monarch Mark-
ing Systems, 474 F.Supp. 412, 414 (N.D. Tex. 1979)—the
period stops when the patentee files suit against the al-
leged infringer.
Potter filed suit in this Court against these defendants
for their alleged commercial infringement of the ’894 and
685 patents in 1979, Its 1978 suit against the United States
in the Court of Claims alleging that the defendants’ prod-
ucts infringed its 894 and ’685 patents was for governmen-
tal infringement only. The Court of Claims’ suit did not toll
the running of the laches period against these defendants
for commercial infringement. See TWM Manufacturing,
supra, at 349.
Where there has been an unreasonable delay by a pat-
entee in bringing suit for infringement of his patent, there
is a presumption that the alleged infringer has been pre-
l4a
judiced by the delay. The weight of authority indicates that
delays in excess of six years in bringing such suits are
presumptively unreasonable—and shifts the burden of
proof to the patentee plaintiff to show a legally cognizable
excuse for the delay.
This rule has been in existence at least since its promul-
gation by the Ninth Circuit in Gillons v, Shell Co. of Cali-
fornia, 86 F.2d 600 (9th Cir. 1936), cert. denied, 302 U.S.
689 (1937). In 1970, the Seventh Circuit in applying laches
to bar a patent infringement suit delayed for seven years
after notice of infringement, cited Gillons with approval.
Baker Manufacturing Co. v. Whitewater Manufacturing
Co., 430 F.2d 1008 (7th Cir. 1970), cert. denied, 401 U.S.
956 (1971).
While the Fourth Circuit has not specifically addressed
the six-year rule, this presumption has been adopted by the
Second,° Sixth,’ and Tenth * Circuits by the district court in
the Fifth’ and District of Columbia Circuits *°—and by this
Court, and counsel has been so advised.
The plaintiff was given every opportunity to justify its
long delay in bringing these infringement suits and they
failed to so do.
The undisputed evidence clearly shows that Potter de-
layed bringing suit against these defendants for infringe-
ment of the ’894 patent for more than six years after it
® Jones v. Ceramco, Inc., 387 F.Supp. 940 (E.D.N.Y. 1975), aff’d
526 F.2d 585 (2nd Cir. 1975).
*TWM Manufacturing Co., Inc. v. Dura Corporation, 592 F.2d
346 (6th Cir. 1979).
* Maloncy-Crawford Tank Corp. v. Rocky Mountain Natural Gas
Co., 494 F.2d 401 (10th Cir. 1974).
° Dymo Industries, Inc. v. Monarch Marking Systems, 474 F.
Supp. 412 (N.D. Tex. 1979).
‘°Van’t Veld v. Honeywell, 440 F.Supp. 1020 (D.D.C. 1979).
15a
had knowledge of the alleged infringement by these de-
fendants.
Potter’s attempt to excuse this delay on the grounds they
were negotiating with the defendants in re-licensing and
were in the process of suing another company (Bucode)
for infringement of the ’894 patent—and their precarious
financial condition—are simply not supported by the evi-
dence.
Potter failed to call any of its corporate officers, many
of whom were available, except its present president, to
explain why their so-called licensing offers were rejected
or why they delayed filing infringement suits against these
defendants. None of Potter’s office memoranda or copies
of its correspondence in re these negotiations were offered
in evidence. The correspondence in evidence came from the
defendants’ files. All the defendants denied they were in-
fringing the ’894 patent. That must have ended the matter
as far as Potter was concerned because they did nothing
to stop any of the defendants from continuing to manu-
facture and sell their machines. Although Potter’s present
president was not with the Company until late 1974, he
offered no explanation as to why these suits were not filed
until late 1979—except that he was too engrossed in keep-
ing the Company financially afloat to look into the matter
before then.
However one characterizes these licensing negotiations,
they terminated more than six years before these infringe-
ments suits were filed.
Similarly, Potter’s maintenance of the Bucode litigation
does not constitute a legally cognizable excuse for Potter’s
delay in suing these defendants for infringement of its
’894 and ’685 patents. Other patent infringement litigation
brought by a patentee does not excuse a delay in suing
other defendants for infringing the same patent. Advanced
Hydraulics, Inc. v. Otis Elevator Company, 525 F.2d 477
(7th Cir. 1975), cert. denied, 423 U.S. 869 (1975).
l6a
The bald knowledge that a patentee has sued other com-
panies for patent infringement does not impute knowledge
of the patentee’s intention to sue all infringers for patent
infringement—even if the patents in suit are identical. At
the very least, at some time during the course of the
Bucode litigation, Potter should have notified the defen-
dants of its intention to sue them for infringing its ’894
patent upon obtaining a favorable resolution of the Bucode
case. American Home Products Corp. v. Lockwood Manu-
facturing Co., 483 F.2d 1120 (6th Cir. 1973), cert. denied,
414 U.S. 1158 (1974).
For the period from 1975 up until these suits were filed
in 1979, Potter cites its financial difficulties as its primary
reason for failing to sue. However, except in unusual cir-
cumstances, poverty is ordinarily no excuse for delay in
filing suit. A party’s poverty or pecuniary embarrassment
is not a sufficient excuse for unreasonably postponing the
assertion of its legal rights. Hayward v. National Bank,
96 U.S. 611 (1877); Leggett v. Standard Oil Co., 149 US.
600 (9th Cir. 1936), cert. denied, 302 U.S. 689 (1937).
The plaintiff offers no excuse for its failure to timely
sue the defendants under the ’685 patent—its position with
respect to this patent is that there was no presumptive un-
reasonable delay, with the possible exception of STC—the
period of delay being less than six years.
Nevertheless, laches should be applied where the delay
has been less than six years if the facts and circumstances
so warrant—if the defendants have suffered enough pre-
judice from the delay. This policy was enunciated by the
Fourth Circuit in Fretwell v. Gillette Safety Razor Co.,
106 F.2d 728 (4th Cir. 1939), recognized in Giddens vy.
Isbrandtsen Co., 355 F.2d 125 (4th Cir. 1966), and exempli-
fied in Advanced Hydraulics, Inc. v. Otis Elevator Co.,
025 F.2d 477 (7th Cir. 1975), cert. denied, 423 U.S. 869
(1975).
17a
The Court finds from the evidence that the defendants
have been seriously and irreparably prejudiced by the
plaintiff’s delay in filing this consolidated patent infringe-
ment suit. Prejudice “contemplates the dispersal and in-
accessibility of witnesses, the dimming of recollections and
other disadvantages incident to the lapse of time.” Giddens
v. Isbrandtsen, 355 F.2d 125, 127 (4th Cir. 1966). The facts
are clear that, as a result of the long delay in the filing of
these suits, many crucial documents, including the inven-
tor’s files, have become lost or been destroyed, and several
crucial witnesses, including the inventors of the patents in
suit, have either died or suffered lapses of memory. In
addition, many of Potter’s corporate records which are
relevant to the defendants’ case have been destroyed due
to the ravages of time. This type of prejudice—the loss of
relevant evidence—is clearly of the type upon which laches
can be supported. See Dymo Industries, Inc. v. Monarch
Marking Systems, 474 F.Supp. 412, 416 (N.D. Tex. 1979).
None of the defendants have included any possible roy-
alty costs in the sale or lease of their machines. All claimed
they were lulled into believing, by Potter’s inaction, that
their products were not infringing upon any of Potter’s
patents.
All testified they could and would have circumvented
Potter’s patent claims, had they been timely sued for in-
fringement. The costs to so do now on the machines in
place would be both prohibitive and impractical.
Further, the Court is of the opinion that Potter ought
to be estopped from bringing an infringement action
against these defendants under the ’685 patent.
Kstoppel is proper where “one has... acted to mislead
another and the one thus misled had relied upon the action
of the inducing party to his prejudice.” Advanced Hy-
draulics, supra, at 479. Potter actively participated with the
ANSI Subcommittee in developing GCR as the industry
standard—it intentionally failed to bring its ownership of
18a
the 685 patent to the committee’s attention notwithstanding
he committee’s policy to the contrary. By so doing, Potter
has gained a monopoly on the GOR industry standard
without any obligation to make its use available on reason-
able terms to competitors in the industry,
Equity will rarely, if ever, permit one to waive by acqui-
escence its alleged patent rights, for a long period of time ™
and attempt to assert them after they have been adopted
as the industry standard.”
Whatever right the plaintiff has to enforce its delayed
infringement claims against these defendants will not be
impaired by the dismissal of this consolidated suit—the
defendants are the real parties-in-interest in the plaintiff’s
pending suit in the United States Court of Claims—all
available discovery has been completed and the Court of
Claims’ action is now ready for hearing on the merits as
soon as that Court’s docket permits.
Surely the defendants ought not to be put to the extra
expense of defending the same claims in two federal courts.
The Order dismissing the above-styled suits was entered
herein on March 12, 1980, with the Court’s findings and
conclusions to follow.
The Clerk will send a copy of these findings and conclu-
sions to the Honorable Francis C. Browne of the United
States Court of Claims, and to all counsel of record.
/8/ Oren R, Lewis
United States Senior District Judge
March 25, 1980
A True Copy, Teste:
W. Farley Powers, Jr., Clerk
By /s/ Maria Heverr
Deputy Clerk
** ANSI Subcommittee X3B1—November 1973.
** The GCR recording was adopted as the industry-wide standard
in June 1976.
19a
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porrer Instrument Company, Inc., Plaintiff,
Vv.
SroraGe TEcHNOLoGy Corporation, Defendant.
Civil Action No, 79-626-A
Porrer Instrument Company, Inc., Plaintiff,
Vv.
TreLex Computer Propucts, Ino., Defendant.
Civil Action No. 79-993-A
Porrer Instrument Company, Inc., Plaintiff,
Vv.
TreLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-994-A
Porrer Instrument Company, Ino., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Potter Instrument Company, Inc., Plaintiff,
v.
Controt Data Corporation, Defendant.
ORDER
(Filed May 23, 1980)
20a
Tus Cause came on to be heard on the 16th day of May
1980 and was argued by counsel.
1. Upon hearing plaintiff's Motion for Rehearing and
considering the arguments of counsel, the Motion is de-
nied;
2. Upon plaintiff’s motion that an appeal bond be set, it
is ordered that the »ppeal bond for a consolidated appeal
is three thousand five hundred dollars ($3,500.00) ;
3. Upon consideration of defendants’ Storage Technol-
ogy Corporation, Sperry Corporation and Telex Computer
Products, Inc., Motion for Voluntary Dismissal of their
Counterclaims without prejudice to reinstate the counter-
claims in the events these actions are remanded to this
Court for a trial on the merits;
4. Orprrep, that Defendants’ Joint Motion for Voluntary
Dismissal without prejudice should be and hereby is
granted;
9. This order is without prejudice to any of the rights
of the parties in the Court of Claims Docket No. 111-78;
Enterep at Alexandria, Virginia, this 23rd day of May
1980,
/s/ Oren R, Lewis
Oren R. Lewis
District Court Judge
A True Copy, Teste:
W. Farley Powers, Jr., Clerk
By /s/ Ruta WarpmMan
Deputy Clerk
SEEN AND AGREED
Wituiam O. Birrman, Esquire
Attorney for Defendant
Storage Technology Corporation
2la
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porter Instrument Company, Inc., Plaintiff,
v.
Storace TecHno.ocy Corporation, Defendant.
Civil Action No. 79-626-A
Porrer Instrument Company, Inc., Platntiff,
v.
TrLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-993-A
Portree Instrument Company, Inc., Plaintiff,
v.
Tecex Computer Propucts, Inc., Defendant.
Civil Action No. 79-994-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Potter InstRuMENT Company, Inc., Plaintiff,
Vv.
Controt Data Corporation, Defendant.
22a
MOTION FOR REHEARING
Now Comes the plaintiff, Potter Instrument Co., Inc.,
(PICO), and respectfully moves this Honroable Court for
a rehearing pursuant to FRCP Rule 59 with respect to the
matters set forth in the Order dated March 12, 1980. dis-
missing the above-identified cases on the grounds of laches
and equitable estoppel.
This rehearing is requested on the ground that the Court
has committed a manifest error of fact and law. However,
since the undersigned has not received findings of fact and
conclusions of law (see Footnote No. 1 to the Order), PICO
is unable to fully state its grounds at this time. For the
same reason, PICO is unable to file its brief at this time.
Likewise, no specific date is requested for a hearing on this
matter.
In summary, PICO respectfully requests rehearing and
gives notice that it will set this down for oral argument
after filing and service of its brief.
Respectfully submitted,
/s8/ Davin R. Murpuy
David R. Murphy
Attorney for Plaintiff PICO
Suite 307; File 5363.124
2001 Jefferson Davis Highway
Arlington, Virginia 22202
Telephone (703) 521-2400
Date: 3-19-80
23a
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porter Instrument Company, Inc., Plaintiff,
v.
Strorace TecHNnoLocy Corporation, Defendant,
Civil Action No. 79-626-A
Porter Instrument Company, Inc., Plaintiff,
v.
TeLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-993-A
Porrer Instrument Company, Inc., Plaintiff,
v.
TELeEx Computer Propucts, Inc., Defendant.
Civil Action No. 79-994-A
Porter Instrument Company, Inc., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Controu Data Corporation, Defendant.
24a
REVISED MOTION FOR REHEARING
AND TO VACATE SUMMARY JUDGMENT
Now Comes the plaintiff, Potter Instrument Co., Inc.,
(PICO) and submits its revised Motion for Rehearing and
to Vacate Summary Judgment under Rule 59(e) of the
Federal Rules of Civil Procedure.
Since the plaintiff has now had the opportunity to study
the Court’s Findings of Fact and Conclusions of Law, filed
March 25, 1980, it is now in a position to state more fully
the grounds on which it moves the Court for a rehearing
and to vacate summary judgment: —
(a) There are genuine disputes as to material facts and
factual inferences rendering summary judgment inappro-
priate (FRCP 56(c)) ;
(b) The Court has misapprehended the significance of
certain evidence;
(c) There is insufficient evidence to support the Court’s
conclusions of fact;
(d) The Court has made manifest errors of fact;
(e) The Court has made manifest errors of law.
A Brief in Support of Plaintiff's Motion for a Rehearing
and to Vacate Summary Judgment will be filed shortly.
Respectfully submitted,
/s/ Davipv R. Murpuy
David R. Murphy
Attorney for Plaintiff PICO
Suite 307; File 5363.124
2001 Jefferson Davis Highway
Arlington, Virginia 22202
Telephone (703) 521-2400
Date: 4-4-80
25a
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porter Instrument Company, Inc., Plaintiff,
We
Storace TecHnoLocy Corporation, Defendant.
Civil Action No. 79-626-A
Porrer Instrument Company, Inc., Plaintiff,
v.
TreLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-993-A
Porrer InstruMENT Company, Inc., Plaintiff,
vV.
TeLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-994-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Porrer Instrument Company, Inc., Plaintiff,
Ws
Controt Data Corporation, Defendant.
JOINT MOTION TO STRIKE PLAINTIFF'S
MOTION FOR REHEARING
Come now the Defendants in the above-styled actions
and move this Court to strike Plaintiff’s Motion for Re-
hearing on the grounds that it was filed out of time.
26a
As set forth more fully in Defendants’ accompanying
Memorandum of Points and Authorities, Rule 59(e), Fed.
R. Civ. P. under which Plaintiff seeks to alter or amend
the judgment of this Court requires that it have served its
request for rehearing not later than ten days after entry of
judgment. However, Plaintiff, in what has become a con-
tinuing pattern of dilatoriness, did not file a perfected mo-
tion for rehearing until over a month after the 10 days
provided for in Rule 59(e).
Because Rule 6(b)(2) of the Fed. R. Civ. P. does not
permit any extension of time for filing a motion under
Rule 59(e) it is respectfully submitted that Plaintiff’s
motion must be striken.
Respectfully submitted,
/s/ Ricuarp KE. Kurrz
Richard Kurtz
Ausert W. Preston, JR.
Woopcock, WasHBuRN, Kurtz,
Mackiewiecz & Norris
1800 United Engineers Building
30 South 17th Street
Philadelphia, PA 19103
(215) 586-3100
Counsel for Defendant
Storage Technology Corporation
/s/ Bensamin F. P. Ivins
Wiiuiam QO, Birrman
Grorce R, Ciark
Bengamin F, P. Ivins
Pierson, Batt & Down
1200-18th Street, N.W.
Washington, D.C. 20036
(202) 331-8566
Counsel for Defendant
Storage Technology Corporation
27a
/8/ Harrison McCanp.isu
Harrison McCandlish
LeBianc, Notan, Suur & Nies
1911 Jefferson Davis Highway
Arlington, VA 22202
(703) 521-6590
Counsel for Defendant
Telex Computer Products, Inc.
/s/ H. Warren Burnum, JR.
ALAN BRANIGAN
Warren Burnum
Grirrin, BranicaAn & BuTLER
775 8. 23rd Street
Arlington, VA
(703) 979-5700
Counsel for Defendant
Sperry Corporation
/s/ ALLEN KiRKPATRICK
Allen Kirkpatrick
Larry S. Nixon
MicuareL LecntTer
CusHMAN, Darsy & CusHMAN
1801 K Street, N.W., Eighth Floor
Washington, D.C. 20006
(202) 861-3000
Counsel for Defendant
Control Data Corporation
29a
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF VIRGINIA
ALEXANDRIA DIVISION
Civil Action No. 79-579-A
Porter Instrument Company, Inc., Plaintiff,
v.
SroraGe TecHNoLocy Corporation, Defendant.
Civil Action No. 79-626-A
Porter Instrument Company, Inc., Plaintiff,
Vv.
TreLex Computer Propucts, Inc., Defendant.
Civil Action No. 79-993-A
Porter Instrument Company, Inc., Plaintiff,
v.
TeLex Computer Propucrts, Inc., Defendant.
Civil Action No. 79-994-A
Porrer Instrument Company, Inc., Plaintiff,
v.
Sperry Corporation, Defendant.
Civil Action No. 79-995-A
Potrer InstRuMENT Company, Inc., Plaintiff,
v.
Controt Data Corporation, Defendant.
| PREVIOUS PAGE WAS BLANK |
30a
NOTICE OF APPEAL
Notice is hereby given that the plaintiff, Potter Instru-
ment Co., Inc. (PICO) hereby appeals to the United States
Court of Appeals for the Fourth Circuit from:
(a) the Orver entered March 12, 1980 in the above-iden-
tified consolidated cases; and
(b) the Finpines anp Conciusions entered March 25,
1980 in the above-identified consolidated cases; and
(c) for the Orper entered May 23, 1980 in the above-
identified consolidated cases, which order denied the relief
requested in PICO’s motion for a rehearing based on the
Order of March 12, 1980, and the Findings and Conclu-
sions of March 25, 1980.
This appeal is taken pursuant to 28 USC 1291 since the
dismissal in the May 23, 1980 Order is a final order.
This appeal is taken pursuant to the Federal Rules of
Appellate Procedure in general and Rules 3 and 4 in
particular.
Check number 10872 in the amount of $70.00 is attached
to this Notice of Appeal and is being tendered to the Clerk
of the District Court concurrently with this Notice of
Appeal.
Respectfully submitted,
/s/ Davw R. Murpuy
David R. Murphy
Attorney for Plaintiff PICO
Suite 307; File 5363.124
2001 Jefferson Davis Highway
Arlington, Virginia 22202 .
Telephone (703) 521-2400
Date: 6-19-80
i
3la
UNITED STATES COURT OF APPEALS
FOR THE FOURTH CIRCUIT
No. 80-1419
Potter Instrument Company, Inc.,
Appellant,
- against -
Controt Data Corporation,
A ppellee.
Appeal from the United States District Court
for the Eastern District of Virginia,
Alexandria Division
APPELLEE'S MOTION TO DISMISS APPEAL
Now comes appellee and moves ihe Court to dismiss the
appeal in Civil Action No. 79-995-A Potter Instrument
Co., Inc. v. Control Data Corporation, U.S. District Court
for the Eastern District of Virginia, Alexandria Division,
on the ground that the appellant did not file a notice of
appeal within the time required under Federal Rule of
Appellate Procedure 4(a) and 28 USC 2107, This Court
therefore lacks jurisdiction to entertain the appeal.
As set forth more fully in Appellee’s attached memo-
randum in support of this motion, appellant did not file a
perfected motion for rehearing in compliance with Federal
Rule of Civil Procedure 7(b) until over a month after the
10 days provided for in Federal Rule of Civil Procedure
59(e).
Since appellant had not taken its appeal within thirty
days from the entry of judgment, nor served a proper and
32a
timely motion for a new trial, its right to appeal is lost.
/8/ ALLEN KirkKPaTRICK
Allen Kirkpatrick
Attorney for Control Data Corporation
Highth Floor, 1801 K Street, N.W.
Washington, D.C. 20006
Tel: (202) 861-3500
Of Counsel:
Larry 8S. Nixon
Micuar. A. LECHTER
Cuaries E. B. Gienn
Cusuman, Darsy & CusHMAN
1801 K Street, N.W.
Washington, D.C. 20006
Tel. (202) 861-3000
JosepH A. GENOVESE
Contrrot Data CorporaTION
6003 Executive Boulevard
Rockville, Maryland 20852
Tel. (301) 468-8547
July 1, 1980
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.