Petition — Swift Agricultural Chemicals Corp. v. Farmland Industries, Inc.

82•68 aun 23 1992

In the

Supreme Court of the United States

Ocroper Term, 1981

SWIFT AGRICULTURAL CHEMICALS

CORPORATION,

Petitioner,

v8.

FARMLAND INDUSTRIES, INC., ET AL.,

Respondents.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE TENTH CIRCUIT

Joun W. Horetor

Rol O. Sram

Haircut, Hormor, Davis & JamsBor

55 East Monroe St., Suite 3614

Chicago, Illinois 60603

(312) 263-2353

Attorneys for Petitioner

The Scheffer Press, Inc—(312) 263-6850

i

QUESTIONS PRESENTED

Given that a court in one eireuit is not bound by an

earlier decision of a court in another circuit, what, if

any, respect should be paid to that earlier decision?

Are the holdings of the Fifth Cireuit Court of Appeals

and the District Court for the Eastern District of

Louisiana as to the scope, validity and infringement of

U.S. Patent No. 3,464,808 correct or are the directly

conflicting holdings of the Tenth Circuit Court of Appeals

below correct?

Is it a denial of procedural due process for a Court to

adjudicate a claim that was not presented to it?

LIST OF PARTY TO THE PROCEEDINGS WHOSE

JUDGMEK * IS SOUGHT TO BE REVIEWED

Pursuant to Rules 21.1(b) and 28.1 of this Court, Peti-

tioner Swift Agricultural Chemicals Corporation states

that its name has been changed from Swift Agricultural

Chemicals Corporation to Estech, Inc., that the parent

of Estech, Inc. is ESMARK, Inc., and that Estech, Inc.

has three partially owned subsidiaries, viz. Consolidated

Fertilizers Limited (Australia), Montan Transport USA

(New York), and Yong Nam Chemical Company, Lid.

(Korea).

ii

TABLE OF CONTENTS

PAGE

QUESTIONS PRESENTED i

List Of Party To The Proceedings Whose 9

Is Sought To Be Reviewed... i

I RAS cccnedicenctisasttntinnensenintcnrsncsennenins 1

xxx —4 1

STATEMENT OF THE CASE ———.—.— 2

REASONS FOR GRANTING THE WRIT . 7

I. A Conflict Between The Cireuits 7

II. A Second Conflict Between The Cireuits 12

III. A Denial Of Due Process . 17

rr 5

TABLE OF AUTHORITIES

Cases

Aldens v. Miller, 610 F.2d 539 (8 Cir. 1979) ............ 10

The Barbed Wire Patent, 143 U.S. 275 (1892) 15

Blonder-Tongue Labs v. University of Illinois Founda-

tion, 402 U.S. 313 (1971 4, 19

Blumcraft of Pittsburgh v. Kawneer Company, Inc.,

482 F. 2d 542 (5 Cir. 1973)

Bros Incorporated v. W. E. Grace Manufacturing

Company, 351 F.2d 208 (5 Cir. 1965) 10

Erie R. Co. v. Tompkins, 304 U.S. 64 (1938) ............ 11,12

Felburn v. New York Central Railroad Co., 350 F.2d

416 (6 Cir. 1965) 18

Fidelity Union Trust Co. v. Field, 311 US. 169

(1940) ‘

Hanna v. Plumer, 380 U.S. 460 (1965) 11

Inwood Laboratories, Inc. v. Ives Laboratories, Inc.,

880 U.S. (Nos. 80-2182 and 81-11, decided

June 1, 1982 8,9

King v. Order of Travelers, 333 U.S. 153 (1948) — 11

Leeds d Catlin v. Victor Talking Machine Co., 218

U.S. 301 (1909) 18

Maloney-Crawford Tank Co. v. Sauder Tank Co., 465

F.2d 1356 (10 Cir. 1972) 6,18

Maple v. Citizens National Rank, 437 F.Supp. 66

(W.D. Okla. 1977)

Mulvey v. Samuel Goldwya Productions, 433 F.2d

1073 (9 Cir. 1970) 7

Six Companies v. Highway District, 311 U.S. 180

(1940) 11

Stoner v. New York Life Ins. Co., 311 U.S. 464 (1940) 11

Swift v. Tyson, 16 Pet. 1 (1942) 11

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

(2 Cir. 1975) 18

The Trustees of Dartmouth College v. Woodward,

4 Wheat. 518 (1819) 17

United States v. Booth, 399 F.Supp. 975 (C.D. S. C.

1975) a

United States v. Mitchell, 432 F.2d 354 (1 Cir. 1970) 10

United States v. Nickles, 502 F.2d 1173 (7 Cir. 1974) 10

West v. American TT Co., 311 U.S. 223 (1940) ... 11

iv

Statutes

PAGE

United States Code, Title 28, Section 1254(1) ....... 1

United States Code, Title 35, Section 102 3, 5, 15

United States Code, Title 35, Section 106 .................... 3

United States Code, Title 35, Section 282 ................... 4,5

Orner AUTHORITIES

Vestal, Relitigation By Federal Agencies: Conflict,

Concurrence and Synthesis of Judicial Policies, 55

0 10

IN THE

SUPREME COURT OF THE UNITED STATES

Ocroser Term, 1981

No.

SWik'T AGRICULTURAL CHEMICALS

CORPORATION,

Petitioner,

vs.

FARMLAND INDUSTRIES, INC., ET AL..

Respondents.

PETITION FOR A WRIT OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS

FOR THE TENTH CIRCUIT

Petitioner, Swift Agricultural Chemicals Corporation,

respectfully prays that a writ of certiorari issue to review

the judgment entered on March 25, 1982, by the United

States Court of Appeals for the Tenth Circuit.

OPINIONS BELOW

The opinion of the Court of Appeals for the Tenth

Cireuit is reported at 674 F.2d 1351 and is reproduced

in the Appendix.

JURISDICTION

The judgment of the Court of Appeals for the Tenth

Cireuit was entered on March 25, 1982. The jurisdiction

of this Court arises under 28 U.S.C. 4 1254(1).

STATEMENT OF THE CASE

This is one of three patent infringement suits brought

by the Petitioner, Swift Agricultural Chemicals Corpora-

tion, on its U.S. Patent No. 3,464,808 for an invention

of a process for making ammonium polyphosphate, a

liquid fertilizer. The first case, Swift v. Usamex, was

tried before the United States District Court for the

Eastern District of Louisiana in 1976. That Court held

the patent valid, enforceable and infringed, and enjoined

further infringement by Usamex. (App. C) Usamex filed

a Notice of Appeal but while it was pending, the parties

settled the case; Usamex paid $1,383,000.00 for past in-

fringement and attorney fees and took a license under

which it has additionally paid more than $480,000.

After conclusion of the Usamex litigation, Swift

brought two other suits on the same patent; the present

one against Farmland Industries, Inc. and Farmers

Chemical Company in the District of Kansas, and one

against Mississippi Chemical Company in the Southern

District of Mississippi. Extensive discovery was had in

each case and by early 1980 each case was awaiting a

trial setting.

In the meantime, Usamex sought relief from the judg-

ment against it under Rule 60(b). Usamex asked for the

return of the million dollars, on the grounds that it had

“newly discovered evidence,” establishing non-infringe-

ment. Usamex further prayed for a declaratory judgment

that it did not infringe Swift’s patent and, accordingly,

owed no royalties under the license. Usamex contended

that it had performed post-trial tests which established

that the time that the chemicals remained in the reactor

pipe was at least 3 seconds and, since the patent claims

called for a residence time of less than one second,

Usamex did not infringe with either its newly modified

process or the adjudicated process.

ae abate heh enn cols

new tests were irrelevant, that the patent claims had to

be interpreted in light of the patent specification and

the understanding that those skilled in the art would

have ascribed to it at the time of the application for

patent. The District Court agreed, interpreting the claims

as calling for a one second residence time to be deter-

in the reactor pipe. Both the Rule 60(b) Motion and the

declaratory judgment were, accordingly, dismissed.

(App. D)

The present case was tried but not decided before this

second decision in Usamex. With full awareness of both

the second and the prior Usamex decisions, the Kansas

District Court held to the contrary, ic., that the Swift

patent was invalid and not infringed. (App. B) As

grounds for its holding of invalidity, the Kansas Court

held that there was nothing new or novel in the patented

invention (35 U.S.C. 102) and, further, even if there were,

the invention would have been obvious (35 U.S.C. 103).

trict when it held the patent valid,

art had been considered by the United States Patent

pa en

Office. when it granted the patent.“ One of the grounds

for non-infringement was that the chemical reactants re-

mained in the reactor for more than one second.

The Court also held all of the seven claims of the

patent invalid, even though Swift had asserted only

claims 1, 2 and 4, and the defendant had acknowledged

that those were the only claims in issue.

Following the Kansas Court’s holding of invalidity,

Mississippi Chemical moved for summary judgment in

the Mississippi Court, contending that Swift was collat-

erally estopped from asserting the patent once the pat-

ent had been held invalid by one court, even though an-

other court had held the patent valid, citing Blonder-Ton

gue Labs v. University of Illinois Foundation, 402 US.

313 (1971) and Blumcraft of Pittsburgh v. Kawneer Com-

pany, Inc., 482 F.2d 542 (5 Cir. 1973). The parties then

stipulated to stay that case pending the outcome of this

one.

In the meantime, Usamex appealed the dismissal of the

declaratory judgment action and Rule 60(b) Motion, con-

tending that the District Court had not correctly constru-

ed the patent in holding that the time that the chemicals

were in the reactor was immaterial to infringement. The

Fifth Cireuit Court of Appeals disagreed. It affirmed on

the basis of the Opinion of the District Court in Louisi-

ane. (App. E)

After the Fifth Circuit decision, the Tenth Circuit

District Court. (App. A) As did the lower court, the

* Pursuant to 35 U.S.C. 4 282, “A patent shall be

sumed valid.”, — —

To ise

plication was not before Judge Sear.’’ Unmentioned at

The Bookey patent was before and considered by the Lou-

On the infringement issue, the Court below adopted

the District Court’s reliance on tests which were found

to show that the chemicals remained in the reactor for

Regarding the patent claims that were not in issue but

were nevertheless adjudicated as invalid, the Court said

they were in issue because “‘Farmland’s answer brought

up the defense of the patent’s invalidity.““ No recog-

nition was given by the Court to the fact that Swift had

asserted only claims 1, 2 and 4, that no evidence or argu-

ments were presented by either party pertaining to the

remaining claims of the patent, and that defendants, in

their post trial brief, stated “The claims at issue read as

follows . . .,”” quoting claims 1, 2 and 4.

A Conflict Between The Circuits

The decision of the Court below is in diréct conflict

with the decision of the Fifth Cireuit in the Usamer case,

and is also in direct conflict with the earlier decision on

patent validity and infringement of the Louisiana Dis-

trict Court in the Usamez case. That these conflicts should

be resolved by this Court is the subject of the next sec-

tion. The more crucial question, however, arises not from

the conflict itself but rather from the manner in which

the second court, the Court below, treated — or as it were,

did not treat — the decision of the first court.

The issue is: given that a court of one circuit is not

bound by an earlier decision of a court of another circuit,

what, if any, respect should be paid to that earlier

decision?

There is a direct conflict amongst the cirevits. It ranges

from the approach in Maple v. Citizens National Bank, 437

F.Supp. 66, 68 (W.D. Okla. 1977) that:

„. . .this Court must consider the (other) Circuit

ruling as substantially binding and should whenever

possible follow the decision of a court of uppeals of

a sister circuit.” ;

to the approach in Mulvey v. Samuel Goldwyn Produc-

tions, 433 F.2d 1073, 1076 (9 Cir. 1 where che Court

said nothing more than:

“We daagon with the contrary consaion on the

standing issue reached by the Second Cireuit.“;

to the approach in United States v. Booth, 399 F.Supp.

975 (C.D. S.C. 1975) where the Court said:

*. . this court need not attempt to justify deviation

from the rule announced by the Fifth Cireuit.“; and

to the approach of the Tenth Circuit below of not even

mentioning that there was a conflicting decision of the

Fifth Cireuit.“

The conflict is important and calls for the guidance

of this Court.

Probably the single most pressing problem facing the

bench and the bar today is the proliferating amount

of litigation. Solutions have been suggested from many

quarters, new judges have been added, portions of the

bar have been rebuked for litigiousness, yet the problem

remains, indeed, it worsens.

One cause of the problem is unpredictability. In recent

years, little if any regard has been given to stare decisis,

comity, and the whole notion of uniformity and pre-

dictability of the law. A lawyer cannot counsel his client

with much assurance as to the likely outcome of possible

or pending litigation; even that involving issues ulready

litigated. Courts all too often will ignore or circumvent

precedents, rules or statutes in order to arrive at a deci-

sion in favor of the “felt” victor. The “law” becomes

ad hoc, i.e., the absence of law.

The recently decided case of Inwood Laboratories, Inc.

v. Ives Laboratories, Inc. U.S. (Nos. 80.2182

and 81-11, decided June 1, 1982) provides a striking

example. There, this Court reversed the Second Cireuit's

* One wonders how often opi simply fail to men-

reversal of the district court on the sole ground that

the Second Circuit vad not accorded the required weight to

the District Court “act findings. Yet, that fundamental

rule — a touchstone of appellate authority — was not

raised by any of the six petitioners or five Amici Curiae

supporting the petitioners. Nor was that issue raised

by petitioners in their earlier petition for rehearing to

the Second Circuit Court of Appeals.“

Inwood issued a clear admonition regarding the defer-

ence to be accorded to factual determinations of trial

courts by courts of appeal. That admonition, when fol-

lowed, will promote greater uniformity and predictability

in the law and eventually will be reflected by lawyers

counseling their clients to forego appeals where the trial

courts’ decision rests on fact determinations which are

not clearly erroneous.**

The present case provides this Court with another

opportunity to foster the objective of uniformity and

predictability. The cases quoted above demonstrate that

the courts are in conflict and are in need of guidelines

as to what respect, if any, to give to precedents of

„The point referred to in Justice White’s concurring

opinion (footnote 1) pertaining to Darby’s raising the

issue of function ability and Rule 52(a) was also raised

in the petitions for rehearing in the Second Circuit.

A graphic illustration of this is found in the *

= practice in the state courts in Chicago. The

ows that the appellate court consistently adheres to

the rule that a jury verdict will be overturned only

where the verdict is “against the manifest a of the

evidence.” Appeals are rarely taken.

nin uss

courts in other circuits.“ This Court should speak to

Without such guidance, the court below felt no neces-

sity even to advance reasons why its legal construction

of the patent in suit was preferred to the earlier con-

struction of the Fifth Circuit Court of Appeals. Indeed,

it felt no compulsion to even discuss the Fifth Cireuit

decision which was in direct conflict with its own. To

countenance a court’s ignoring a precedent of another

circuit that is directly on point, is to further advance

the notion that each court has free rein to rule as it will,

unbridled by the law and prior holdings on identical

issues.

This case also raises the same question as to the effect

of the precedents of district courts. Thus: what respect,

if any, should be accorded by a cireuit court or by a

district court to a precedent rendered by a district court

in another circuit? The Court of Appeals below ackowl-

edged the Louisiana District Court decision holding the

patent valid but failed to acknowledge that the validity

holding was made with respect to the same prior art as

that on which the Court below held the patent invalid.

In short, the earlier opinion was totally ignored and no

reasons were offered by the Court below as to why it

* Additional examples of the conflicting treatment

Wenn

e. g., Bros v. W. FE. acturing

Company, 351 F. 2d 208, 210 (5 Cir. 1965); United States

v. Viokles, 502 F. 2d 1173, 1176-1177 ( 7 Cir. 1974); United

States v. Mitchell, 432 F.2d 354, 356 (1 Cir. 1974); Aldens

v. Miller, 610 F.2d 539, 541 (8 Cir. 1979); and see Vestal,

Relitigation By Federal ies: Conflict, Concurrence

Arn — of Judicial Policies, 55 N.C. L. Rev. 127

a

arrived at a contrary holding. Similarly, with regard to

the District Court below, it also gave scant consideration

to the opinion of validity and did not even mention

the Louisiana Court’s second opinion construing the

patent.

Ironically, this Court in Erie R. Co. v. Tompkins, 304

U.S. 64 (1938) and its progeny, has provided instructions

as to how federal courts are to treat the precedents of

the various levels of state courts in diversity cases, but

has not provided similar instruction as to a federal

court’s treatment of precedents of other federal courts.*

The twin objectives of Erie R. Co. of promoting uni-

formity — “The Erie rule is rooted in part in a realiza-

tion that it would be unfair for the character or result

of a litigation materially to differ becanse the suit had

been brought in a federal court”** and avoiding “forum

* After Erie R. Co. overruled Swift v. Tyson, 16 Pet.

1 (1842) and held that federal courts 212

cases are bound by the decisions of the hi court

of the 8 state, the question arose as to what

respect, if any, should be given to the precedents of the

lower state courts. This Court responded by holding

in three cases that federal courts are bound by decisions

of a state’s intermediate appellate courts “unless there is

persuasive evidence that the highest state court would

rule otherwise” King v. Order of Travelers, 333 U.S. 153,

158 (1948); Six Companies v. Highway District, 311 U.S.

180 (1940); West v. American T&T Co., 311 U.S. 223

4340 Stoner v. New York Life Ins. Co., 311 U.S. 464

1940) and later in two other cases that the respect

that should be given to state trial court decisions was

commensurate with that given such decisions by the state’r

courts Fidelity Union Trust Co. v. Field, 311 U.S. 169

(1940); King v. Order of Travelers, supra at 158.

Hanna v. Plumer, 380 U.S. 460, 467 (1965).

eer ee

shopping” — are equally applicable here and afford an

additional reason for granting the writ.

The conflict should be resolved.

II.

A Second Conflict Between The Circuits

Certiorari should also be granted to resolve the conflict

between the decision below and that of the Fifth Circuit

Court of Appeals in the Usamex case. The decision below

is also in direct conflict with the earlier unappealed

decision of the Louisiana District Court.

The patented invention is for a process for making

liquid ammonium polyphosphate. As the District Court

below found: prior to the invention, “those skilled in

the art were aware of a problem urgently in need of

resolution” (App. B at 1301). That awareness and the

urgency are reflected by the research and development

efforts conducted in the nine years before the invention

at TVA’s National Fertilizer Development Center; at

Dorr-Oliver, Inc.; at Union Oil Company of California;

and at Usamex Fertilizers, Inc. The net result was failure.

None developed a process for commercially producing

ammonium polyphosphate.

Swift’s inventor, Tommy Carter Kearns, found the

way. Others soon followed. TVA, “the dominant force

in liquid fertilizer research” (App. C at 25), on learning

of Kearns’ invention, redirected its efforts and quickly

had the solution that had so long eluded it. In turn, TVA

was a guide to others: U: mex, Mississippi Chemical

and Farmland. The solution to the problem that had

been so “urgently in need of resolution” quickly paid

dividends in the marketplace. In the past 12 years,

Usamex alone has sold over 100 million dollars of am-

monium polyphosphate made by the patented process.

8

At the time that the Court below was considering the

validity and infringement of the Kearns patent, it was

not writing on a clean slate. The United States Patent

Office had determined that Kearns’ invention was entitled

to a patent. The Louisiana District Court, in a thorough

opinion, held the patent valid and infringed by Usamex.“

In Usamez II, the Fifth Cireuit Court of Appeals affirmed

the construction of the patent placed on it by the Louisiana

Court — the same construction on which the patent had

earlier been held valid.

With this background, one would think that the Kansas

District Court and the Tenth Cireuit Court of Appeals

would have began the inquiry by asking Farmland:

“What new evidence do you have? Why are the Patent

Office, a District Court and a Court of Appeals all

wrong?” These questions were not asked and no answers

were given.

Rather, the Court below, as did the District Court he-

fore it, approached the issues as if they were fresh

new issues, as if nothing had gone on before. It found

the patent invalid on the grounds that the invention had

already been made by Getsinger (of TVA); by Lutz and

Rubio (of Dorr-Oliver); and by Young (of Union Oil

Company of California). The very failures that had

weighed in favor of patentability in the analysis of the

Louisiana Court were elevated to the status of prior

invention by the Tenth Circuit.**

*In an affidavit later filed in the Mississippi Chemical

ease, Usamex’s attorney stated that Usamex had paid

over $600,000 in attorney and expert fees in its preparing

its defenses to the case.

It is curious that while the Tenth Cireuit and the

Kansas District Court held that the Kearns invention

was earlier made by Getsinger, Young and Lutz/Rubio,

aw $6 ou

The crucial divergence between the Courts below and

the Fifth Circuit Courts is the residence time element

of the Kearns’ process. The Fifth Circuit recognized

that Kearns had discovered that in order to succeed in

producing ammonium polyphosphate, the process had to

take place very rapidly, i.e., in less than one second.“

No one had previously recognized this. Getsinger, of TVA,

stirred the reactants in consecutive tanks and taught

in his patent employing a residence time of 1 to 180

minutes. Young, of Union Oil, taught in his patent the

use of a three-step process using a complex tubular

structure depicted in Figure 8 of his patent. No residence

time was specified and he admitted that he had never

constructed the device.*** The Lutz/Rubio patent applica-

tion was rejected by the Patent Office in an interference

proceeding with Bookey. Bookey teaches a reaction time

of one hour.****

** (Continued)

the Patent Office issued patents to Getsinger and Young

and would have issued one to Lutz/Rubio had it not

determined that Bookey had made the Lutz/Rubio inven-

tions earlier, and then, while knowing all this, the Patent

Examiner issued a patent to Swift’s Kearns.

*** Notwithstanding this admission, the opinion of the

Court below states that the 5 omen “was in fact built

and operated” (App. A at

**** When two copending patent applications are deemed

by the Patent Office to claim the same invention, it de-

clares an interference to deterimne which applicant made

the invention first. In this instance, the Patent Examiner

declared the interference between the Lutz/Rubio lica-

tion and the Bookey application and ruled that

pr alr ae fon hay ora 12

r declaring interference, the same Examiner grant-

ed the patent in suit to Kearns,

* *

Yet, the two courts below found that each of Getsinger,

Young and Lutz/Bookey taught residence times of less

than one second and therefore each of their process was

the same as, i.e., anticipated (35 U.S.C. 102), the Kearns

patent in suit. This striking conclusion was not drawn

from the various patents — as it obviously could not

have been — but from testimony of the three workers

given during this litigation almost 20 years after the fact.

Ignored by the Court below were the law, the facts and

the decision in the Fifth Cireuit and the Patent Office.

The Court ignored the law laid down by this Court

nearly a century ago in The Barbed Wire Patent, 143

U.S. 275 (1892) :

“Witnesses whose memories are prodded by the

eagerness of interested parties to elicit testimony

favorable to themselves are not usually to be de-

pended upon for accurate information. The very

fact, which courts as well as the public have not failed

to recognize, that almost every important patent,

from the cotton gin of Whitney to the one under

consideration, has been attacked by the testimony

of witnesses who imagined they had made similar

discoveries long before the patentee had claimed to

have invented his device, has tended to throw a cer-

tain amount of discredit upon all that class of evi-

dence, and to demand that it be subjected to the

closest scrutiny. Indeed, the frequency with which

testimony is tortured, or fabricated outright, to build

up the defense of a prior use of the thing patented,

goes far to justify the popular impression that the

inventor may be treated as the lawful prey of the

infringer. .. .”

3

The Court below further ignored the teachings of the

prior art patent documents which clearly show that none

of the inventors recognized that the key was a short

residence time; that each of these workers failed to

achieve a commereially workable solution to the problem;

and that the Patent Office deemed each of these approach-

es as patentably distinct, granting patents to Getsinger,

Young and Bookey and then, with knowledge of the

three, granting the patent in suit to Kearns.

Also ignored were the decisions in the Fifth Cireuit

in which the criticality of the short residence time was

recognized, and in which the patent was held valid over

the very same art that was before the Tenth Cireuit.

Notwithstanding this direct conilict, the Court below

makes no real attempt to justify its contrary conclusion.”

Finally, having construed the patent in suit one way

to hold the patent invalid, the Court below construed it

another way to find no infringement. It held (App. A

Cireuit Court of Appeals decision that the time that the

reactants remain in the reactor is immaterial to the issue

Ss

III.

A Denial Of Due Process

In arguing the Dartmouth College case before this

Court, Daniel Webster declared that by due process

of law is meant a law which hears before it condemns;

which proceeds upon inquiry, and renders judgment only

after trial.” The Trustees of Dartmouth College v.

Woodward, 17 U.S. 518, 581.

In the present case, valuable patent property rights

were condemned as worthless, even though the Teuth

Cireuit Court of Appeals and the trial court below beard

nothing, made no inquiry, and provided no trial as to

those property rights.

The facts, as shown, are straightforward. Swift

charged defendants with infringing claims 1, 2 and 4 of

the patent in suit. (Swift’s Pre Trial Proposed Findings

of Fact No. 60) The case went to trial on those three

claims, no evidence was proffered as to the remaining

four claims of the patent (claims 3, 5, 6 and 7) and no

arguments were advanced as to them. In short, no issue,

evidence or argument was presented as to claims 3, 5, 6

and 7.

The Tenth Circuit below offered two reasons in support

of its affirmance, holding these claims imvalid. Neither

is sound.

The Court stated that since the four claims were

dependent upon claims 1 and 2, they “could not stand

alone as patentable inventions.” That is not the law:

it is settled in the Patent law that “each claim of a patent

must be considered separately and each must stand or

*

fall alone.” Maloney-Crawford Tank Corp. v. Sauder Tank

Co., 465 F.2d 1356, 1365 (10 Cir. 1972); Leeds & Catlin

v. Victor Talking Machine Co., 213 U.S. 301, 319 (1909);

Timely Products Corporation v. Arron, 523 F.2d 288, 296

(2 Cir. 1975). Moreover, and obviously more crucial, that

is not the point: the question is whether the issue was

before the Court—whether due process was accorded

— not whether the Court may or may not have correctly

decided the matter not before it.

As to that question, i.c., whether the issue was before

the Court, the only basis offered by the Tenth Circuit

in support of its holding that the issue was presented

was that (p. 19) »Farmland's answer brought up the

defense of the patent’s invalidity.” An Answer to a Com-

plaint, however, cannot raise an issue as to patent claims

not asserted to infringe by the patent owner. “A court

may not pass upon the validity of claims which were

not put in issue, either by a claim of infringement or

by a counterclaim for declaration of invalidity.” Timely

Products Corporation v. Arron, 523 F.2d 288, 296 (2 Cir.

1975); Felburn v. New York Central Railroad Co., 350

F.2d 416, 420 (6 Cir. 1965).

Further, it is clear that the parties knew, and the trial

court should have known, that only claims 1, 2 and 4

were in issue. No evidence or arguments were presented

as to the remaining claims and, if any doubt remained,

each of the parties explicitly pointed out in its post trial

submissions that only claims 1, 2 and 4 were involved.

Defendants spelled out in their Post-Trial Brief: “The

claims at issue read as follows: . . and claims 1, 2 and

4 were then quoted.

The deprivation of property by a United States Court

of Appeals is such a fundamental violation of the Con-

a

stitutional right to procedural due process that it presents

one of those rare cases in which the lower court (Supreme

Court Rule 17):

“. .. has so far departed from the accepted and

usual course of judicial proceedings, or so far sanc-

tioned such a departure by a lower court, as to call

for an exercise of this Court’s power of supervision.”*

The writ should issue.

CONCLUSION

The two conflicts between the circuits and the denial

of due process present issues to which this Court should

speak.

A writ of certiorari to the Tenth Circuit Court of

Appeals is respectfully sought.

Respectfully submitted,

Joun W. Hormor

Rol O. Sranmmm

55 East Monroe St., Suite 3614

Chi Illinois 60603

(312) 263-2353 *