Petition for Writ of Certiorari — Gardner v. TEC Systems, Inc.

Office - Supreme Court, U.S.

a9 - 2023 ners

MAY is 1024

ALEXANDER | | STEVAS

Case No. aarti |

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1983

THOMAS A. GARDNER,

Petitioner,

Vs.

TEC SYSTEMS, INC., a corporation

of Wisconsin, and ROY E. DOWNHAM,

JACK ECKELAERT and JOHN W. FROST,

Res»ondents.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Henry C. Fuller

Fuller, House & Hohenfeldt, S.C.

633 Vest Wisconsin Avenue

Milwaukee, WI 53203

414-271-6555

Counsel for Petitioner,

THOMAS A. GARDNER

QUESTIONS PRESENTED

1. Where the best prior art was con-

sidered by the Patent Office, does the.

presumption of validity of 35 USC Sec.

282 and Rule 52 of the Federal Rules of

Civil Procedure require that the Trial

Court make findings pointing out where

the Patent Office committed error in

granting the patent?

2. Can the presumption of validity

be overcome where the scientific evi-

dence before the Trial Court corrobo-

rates the evidence before the Patent

Office and the Courts below misappre-

hended the significance of the evidence?

3. Where there was no evidence

established to be representative of the

prior art, is a holding of invalidity

based on non-representative prior art a

taking of property without due process

of law?

4. Can the presumption of validity

be overcome by test evidence of non-

prior art compared with test evidence of

the invention?

5. Can there be clear and convincing

evidence of invalidity to overcome the

presumption of validity where findings

are contrary to the only evidence pre-

sented?

PARTIES BELOW

All parties are named in the case

Caption.

ii

TABLE OF CONTENTS

PAGE

Questions Presented............2eee i

Parties BELOW cccccccccccscccccccsecs ii

Opinions Below... .cccccccccccccccces 2

Jurisdiction..... CR EE 2

Statutes Involved.........ce eee eeees 3

Statement of the Case......... eeevecece 4

Decision of the Court of Appeals

For the Federal Circuit........... 11

Reason for Granting the Writ........ 18

CONCLUSION. .ccccccccccccccsccesccces 35

TABLE OF CITATIONS

Cases:

Blonder-Tongue Lab., Inc. v. University

of Illinois Found. (1971) 402

U.S. 313, 334, 91 S.Ct. 1434,

LEGG. cccccsseces eee eeeeeeseeseeses 19

In re Chitayat (CCPA 1969),

' 408 F.2d 475, 161 USPQ 224, 226... 14

Graham v. Deere, 383 US 1 86,

Bete s See eseevcecvececeseioeseeseees 3, ake

25, 30, 32s

Morgan v. Daniels, 153 U.S. 120, :

32D CEBSS) 6d. cocccccseone rere rt 23

iii

Cases (cont.)

Palmer v. Orthokinetics, Inc.,

204 USPQ 893... ccc ecccecccccccees

Plastic Container Corp. v. Con-

tinental Plastics (CA-10, 1979)

606 F.2d 885, 203 USPC 27, 38...31,

Radio Corp. v. Radio Engineering

Laboratories, 293 U.S. 1 (1934)

SS S.Ct. 928... eee eww e cee eeceenes

Stratoflex Inc. v. Aeroquip Corp.,

(Fed.Cir. 1983) 713 F.2d

1530, |) eeeee eoeeeereeeeeeseseee

Thompson v. City of Louisville,

(1960), 362 U.S. 199, 80 S.Ct.

624...... ec eeseccccccccccccccccs

Statutes:

28 USC 1254 (Ll) ccc ccccccccccccccess

28 USC L29L. ccc cc creer cccccccccccces

28 USC 1295... ccc ccccecccccccccccces

28 USC 1338 (A). cece cecccccccececess

35 USCA cece eoeeeee#eeeeseneeieeeeeeeee8ee2 8 @

35 USC 103... ccc eeeee ec ccccccccce

35 USC L3l. ccc cccccccccccccccccccces

35 USC 282... ccccccccccccccvece ee

iv

Treatise: PAGE

Chisum on Patents

§5.06 Tee coececees eeeeeeeeeeeeeeene 26

Case No.

SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1983

THOMAS A. GARDNER,

Plaintiff,

~ Oe

TEC SYSTEMS, INC., a corporation

of Wisconsin, and ROY E. DOWNHAM,

JACK ECKELAERT and JOHN W. FROST,

Defendants.

PETITION FOR WRIT OF CERTIORARI TO

THE UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Petitioner, Thomas A. Gardner,

respectfully prays that a writ

of certiorari issue to review the

judgment entered on January 12,

1984, by the United States Court

of Appeals for the Federal Circuit.

OPINIONS BELOW

The District Court held the patent in

suit invalid and denied post-judgment

motions. Patentee and Plaintiff Gardner

appealed from the judgment and denial

of post-judgment motions.

The Court of Appeals for the Federal

Circuit sitting in banc for the first

time in a patent case affirmed the hold-

ing of invalidity and declined a request

for rehearing. Its decision is reported

at 725 F.2d 1338 and 220 USPQ 777.

JURISDICTION

The judgment of the Court of Appeals

is dated January 16, 1984. A request

for extension of time to file a peti-

tion for rehearing to Feb. 6, 1984, was

granted and a timely petition for re-

hearing was declined on March 22 and

this petition for writ of certiorari was

filed within 90 days of that date. The

a

jurisdiction of this Court is invoked

under 28 USC 1254 (1).

STATUTES INVOLVED

Questions 1, 2 and 4 involve 35 USC

282 which provides in its pertinent

portions:

"A patent shall be presumed valid.

Each claim of a patent (whether in

independent, dependent, or multi-

ple dependent form) shall be pre-

sumed valid independently of the

validity of other claims; dependent

or multiple dependent claims shall

be presumed valid even though de-

pendent upon an invalid claim.

The burden of establishing in-

validity of a patent or any claim

thereof shall rest on the party

asserting such invalidity."

STATEMENT OF THE CASE

Jurisdiction of the Courts below

rests on 28 USC 1338 (a) and 28 USC

1291 and 28 USC 1295.

The patent in suit revolutionized

the drying art in the process print-

ing business. Prior to the Gardner in-

vention, there was no commercially

available apparatus or technique to

support, stabilize and position a web

freshly printed on both sides and move

it through a high velocity air dryer.

Prior art attempts to dry webs

printed on both sides by means of high

velocity hot air impingement had found-

ered on the rock of inability to support

and transport such a web through a dryer

without contact of the web with parts of

the apparatus. This contact with web

surfaces caused smudging of the ink,

o 4-«

deposit of ink smears on the apparatus,

etc. This problem inhibited full utili-

zation of high speed printing presses,

for example, which would print on both

sides of the web at the same time.

The Gardner invention solved the

problem and brought into commercial use

an entirely new and commercially practi-

cal “high velocity dryer" in which the

web is positioned out of contact with

any physical structure and transported

through the dryer so that ink on both

sides of the web may be dried simul-

taneously. This created a completely

new industry and the invention was

licensed by Plaintiff Gardner to Overly,

Inc. and achieved great commercial suc-

cess. In the period from 1963 when the

invention was introduced into the market

until 1969 when the Defendants commenced

their infringing activities, the Gardner

floater dryer incorporating the web po-

= § «

sitioning air bars of the instant inven-

tion had captured the major share of the

market for dryers in the printing in-

dustry.

The web supporting and drying prob-

lems that were ultimately solved by the

patent in suit are best described in a

paper presented by Gardner announcing the

Gardner air bar achievement to an Inter-

national Symposium sponsored by the

Canadian Pulp and Paper Association in

1964, contained in file history of the

patent in suit (PX 43) Col. 1, page 3:

"The possibility of using high-

velocity air dryers with their

tremendous drying capacity on both

sides of a web had been an in-

triguing idea for several years,

but there were serious obstacles

to doing it. Although it was

possible to secure reasonably

balanced static pressures above

and below a web in opposed high

velocity dryers, the extreme tur-

bulence of the high energy air

jets caused the web to vibrate

wildly at random across its entire

expanse."

The prior art Vits patent 3,181,250

was the principal reference in the Patent

Office and also at the trial of this

action. A Vits dryer had not achieved

any commercial success or was not in use

in the United States at the time of the

trial. Vits taught use of low velocity

air to avoid turbulence and wide spacing

of the bars from the web to prevent the

bar's contact with the web which would

smear the ink.

During 1962 Gardner experimented with

a large number of web supporting devices,

including a construction similar to the

Vits patent, and finally, in 1963, came

up with the web stabilizer air bar of

the patent in suit which enabled use of

high velocity air. The air bar formed

a uniform zone of superatmospheric pres-

sure spanning the web that positioned

and stabilized the web without contact

with the air bar.

The key to the invention was the lo-

TT

LE ar ae

Se ee ee

a oe

cation of the suppression plate as close

to the floating web as possible and

closer than the air nozzles to cause a

high rate of pressure drop of the out-

flowing air. The difference in rate of

pressure drop is inversely proportional

to the cube of the clearance between web

and air bar suppression plate. The dif-

ference in pressure drop between Gardner

and the prior art was a difference of

almost 140 times. It is the tremendous

increase in this friction on the out-

flowing air which maintains positive

pressure up to the web edge and elimi-

nates the negative pressure or suction

and web contact at the edge of the web

found in the prior art Vits patent.

The Gardner patent in Col. 2,

lines 5-22 (A 70) provides:

"In the desired practice of the

invention, the clearance between

the suppression plate and the wer

is so slight that the slight loss

of pressure resulting from flow

out of the ends of the space does

not usually detract measurably

from the result. In fact, parallel

flow from below and above the web

laterally over the free margins at

the sides of the web has very im-

portant advantages in smoothing

out wrinkles or ruffles in the

margin, the effect being so pro-

nounced that manual displacement

of the margines is followed by

restoration of the margin to its

initial position with a snap

action as if the margin were

subject to the action of a spring.

As will be explained, if the

suppression plate is far removed

from the web the effect will be

lost."

Claim 1 (A 72) of the Gardner patent

sets forth the parameters for position-

ing the suppression plate.

"1. Means for positioning a moving

web by subjecting a transverse zone

spanning the web to uniform static

pressure, said positioning means

comprising a suppression plate

extending transversely across

said web and spaced therefrom as

closely as is mechanically practi-

cable, nozzle means no closer to

the web than said plate and having

slots which extend substantially

continuously across said web and

are spaced at opposite sides of

said plate, the minimum spacing

between the web and said plate

being a distance at least approxi-

=i® «

mately twice as great as the

nozzle slot width, the maximum

spacing of the plate from the web

never being greater than the width

of the plate, the product of the

width of the plate and the spacing

of the plate from the web being

less than twenty times the nozzle

slot width, and means for dis-

charging gas under pressure through

the nozzle slots for defining a

zone of static pressure between

the plate and the web."

The Gardner patent (A 67) issued in

1969 and this suit was brought shortly

thereafter. Trial of the action was

held on various days in 1976 and 1977.

The trial was concluded on March 7,

1977, and a decision was rendered on

August 2, 1982.

The Trial Court relied principally

on the Vits patent in invalidating the

claims, notwithstanding its thorough

consideration by the Patent Office.

The Vits patent 3,181,250 was the

principal art considered by the Court in

holding the patent invalid. In Find-

ing 71 (A 50), that Court stated:

o 36. «

"By far the most pertinent prior

art which must be considered by

the Court is the Vits patent No.

3,181,250 (DX304)".

The Vits '250 patent was thoroughly

considered. in the Patent Office over a

period of six years and was relied upon

as the principal reference by Examiners

John Camby and Frederick L. Matteson, Jr.,

in at least five actions rejecting the

claims in the series of three applica-

tions which eventually resulted in the

patent in suit. The Vits '250 patent

was also the principal reference dis-

cussed in a fifteen page appeal brief.

Subsequent to the filing of the brief,

the claims in suit were allowed after a

conference between Examiner Matteson and

conferee examiners H. B. Ramey and James

W. Werthauer.

DECISION OF THE COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

The Court of Appeals affirmed the

a 9%

holding of invalidity based on the

Vits patent.

The Court of Appeals stated on page

14 (A 14):

"35 USC 103, as applied by the

Supreme Court in Graham v. John

Deere, makes the factual inquiry

into the scope and content of the

prior art the appropriate starting

point for consideration of ob-

viousness. Thus, we start with

the trial court's essentially un-

challenged finding that Vits is

unquestionably the most pertinent

prior art. After painstaking re-

view of the opinion of the trial

court and the briefs on appeal,

we have found neither a finding

nor a contention which suggests

that any of the remaining references

teach anything not found in Vits.

We therefore premise our reason-

ing, as did the trial court in

essence, on Vits."

On page 16 (A 16):

"As for the standard of proof

TEC had to meet to prove it,

we note that the claims were allow-

ed over Vits, and that no reference

shows more than does Vits. It is

thus perfectly clear that TEC in

effect asked the trial court to

cover precisely the same ground as

that covered by the PTO in its

quasi-judicial determination of

patentability that it is authorized

and required by statute to render.

—) a

Therefore, TEC's burden on this

point was a heavy one."

The Trial Court's evidentary basis for

invalidating the Gardner patent was that

comparative tests of invention vs. prior

art did not demonstrate a difference in

kind or performance of the invention vs.

the prior art.

During prosecution of the patent ap-

plication in the Patent Office, Gardner

submitted comparative tests of a Gardner

air bar and a Vits air bar. Gardner at-

tempted to show the difference between

the close positioning of the suppression

plate in the Gardner air bar with the

wide spacing in Vits. The test curves

are reprinted on page 19 (A 19) of the

Court of Appeal's decision. The Trial

Court regarded these tests as non-proba-

tive (Finding 38, A 37) because the Vits

bar had a nozzle slot width approximat-

ing the dimension of the Gardner test

bar rather than being scaled from the

» 19 «

drawings of Vits patent. It was error

for the Court to rely on the scale of

patent drawings where the dimensions or

scale are not identified in the specifi-

cation. In re Chitayat (CCPA 1969),

408 F.2d 475, 161 USPQ 224, 226.

Moreover, TEC admitted that the Vits

patent drawings were not to scale.

Incredibly, the Court of Appeals in re-

ferring to the problem of scale of the

Vits test bars and ignoring the fact

that the Vits patent drawings were not

to scale and could not be relied upon,

stated (A 23):

"The fact is that Gardner changed

the Fig. 10 nozzle dimensions in

building his version of Vits bar

and it was for the Trial Court to

evaluate the probative weight to

assign to the tests which were

made with it. We cannot find

reversible error in the Trial

Court's evaluation of that test

evidence on a fact issue."

The Trial Court disregarded the

Patent Office tests but relied heavily

e 14 «

on the “wooden block tests" at the trial

as showing an absence of any difference

in characteristics between a Gardner air

bar and a Vits air bar. However, the

Trial Court misapprehended the Vits air

bar used in the wooden block tests and

was of the belief that it was scaled

from the patent drawings, when, in fact,

it was an air bar with the same dimen-

sions as the Vits bar tested by Gardner

before the Patent Office. Hence, on the

one hand the Court rejected Plaintiff's

file wrapper tests as not probative but

accepted Defendants’ tests with the same

equipment which also was not copied to

the scale of the patent drawings of Vits

under the misapprehension that the Vits

air bars used in the tests were scaled

from the drawings.

The Court of Appeals recognized that

the Trial Court misapprehended the

character of the Vits air bar used in the

» 18 6

wood block tests by its statement

referring to the wood block tests

(A 21):

"At trial, Gardner was also able

to elicit from Dr. Dane additional

testimony about the pressure at

the web edges, which confirmed

that a Gardner version of Vits

produces suction there."

(emphasis supplied)

Hence, the Court of Appeals recog-

nized that even with the wood block tests

there was negative pressure at the web

edges with the Vits air bar but neither

Court understood the significance of the

negative pressure in the prior art Vits

device.

Gardner characterized the negative

pressure of Vits in the file wrapper as

follows:

"Exhibit 4 shows that it is im-

possible in the use of the Vits

nozzle heads to achieve any uni-

formity or stability. A negative

pressure at the margin of a web

is a factor which leads to great

instability and may result in

frictional contact of the web

with the nozzle. The same re-

sult follows from the fact that

» 16 -

the pressure does not stay uni-

form across the width of the web,

since a point at which the

pressure is relatively high at one

face of the web may be opposite

to a lower pressure at the other

face of the web, thereby causing

flexing and bodily displacement

of the web, in some case con-

tacting the nozzle head."

Negative pressure or suction renders

an air bar inoperable because it causes

the web to hit the bar and smear the

ink. Suction at the web edge is a fatal

defect. Yet the Court of Appeals found

no error with the Trial Court's find-

ing 75 (A 53):

"The evidence at trial never

showed that the departing from

the dimensional limitations

would necessarily cause an air

bar to function or fail."

Finding 86 (A 59):

"The dimensional limitations of

Gardner's °477 are essentially

meaningless."

All tests of Vits bars before the

Court with the plate between the nozzles

widely spaced from the web, and outside

= £3 «=

of the claim dimensional limitations

whether they were file wrapper tests or

Defendants' wood block tests, showed

negative pressure or suction at the web

edge and hence failure. In the face of

all the evidence, the foregoing findings

of the Trial Court are unsupportable by

any quantum or quality of evidence.

Hence, not only were the Courts below

in error in rejecting Gardner's tests in

the Patent Office, the Trial Court based

its decision of "no difference between

invention and prior art" on tests of

non-prior art, i.e., a bar not scaled

from or otherwise established to be

representative of any prior art.

REASON FOR GRANTING THE WRIT

Plaintiff GArdner has not been accord-

ed the benefit of the presumption of

validity. In possibly the last refer-

ence to the presumption of validity by

= 10 «

this Court, this Court said in Blonder-

Tongue Lab., Inc. v. University of

Illinois Found. (1971) 402 U.S. 313,

334, 91 S.Ct. 1434, 1446:

" * * * patentees are heavily

favored as a class of litigants

by the patent statute. Section 282

of the Patent Code provides, in

pertinent part:

‘A patent shall be presumed

valid. The burden of es-

tablishing invalidity of a

patent shall rest on a party

asserting it.'

If a patentee's expense is high

though he enjoys the benefits

of the presumption of validity,

the defendant in an infringement

suit will have even higher costs

as he both introduces proof to

overcome the presumption and

attempts to rebut whatever proof

the patentee offers to bolster

the claims."

The Court of Appeals recognized that

the Trial Court did not structure its

analysis of validity around the pre-

sumption.

The Court of Appeals in referring to

the Trial Court's opinion and its only

» 16 =

reference to the presumption of validity

stated on page 18 (A 18):

"This last-quoted passage is

especially significant in that

it contains the trial court's

only mention of the presumption

of validity. Despite its aware-

ness of controversy concerning

the presumption, the trial court

never concluded: (1) whether

Carlisle had in fact been con-

sidered by the examiner; (2)

whether Carlisle shows anything

not shown in Vits, which was

exhaustively considered by the

examiner; (3) who had the burden

of proving facts concerning

validity or invalidity at trial;

and (4) by what standard of proof

those facts had to be shown."

The generalized statements in prior

decision of this Court relating to the

presumption of validity are of no aid

to the Trial Courts in applying the

presumption of validity. Specific

guidelines of this Court as to certain

mandatory fact findings should be re-

quired to implement the congressional

intent expressed in 35 USC 282.

In Graham v. Deere, 383 US1 86,

» 26 «

S.Ct. 684, this Court set up the guide-

lines for fact findings required to

analyse the obviousness vs. non-obvious-

ness issue of 35 USC 103.

This Court did not set forth any

guidelines to implement the presumption

of validity where the Patent Office con-

sidered the best prior art as in the

present case.

The presumption was, originally, the

creation of the Courts and was a part of

the judge-made body of patent law when

the Patent Act of 1952, Title 35, was

written. That act, for the first time,

made it statutory in §282, first para-

graph, which, before the amendments of

1965 and 1975, was the utmost simplicity.

It read:

"A patent shall be presumed

valid. The burden of es-

tablishing invalidity of a

patent shall rest on the party

asserting it."

The reviser's note to that section simply

e 22 «=

said:

"The first paragraph declares the

existing presumption of validity

of patents”

This was a modification of sorts, re-

placing the conflicting case law with

one simple statutory declaration. In

his Commentary on the New Patent Act by

P. J. Federico, principal author of the

act, published in 35 USCA, page 54, the

author expands somewhat on the reviser's

note, saying:

"The first paragraph of section

282 declares that a patent shall

be presumed valid and that the

burden of establishing invalidity

of a patent shall rest on a party

asserting it. That a patent is

presumed valid was the law prior

to the new statute, but it was

not expressed in the old statute.

The statement of the presumption

in the statute should give it

greater dignity and effectiveness."

In 1952 the case law was far from con-

sistent -- even contradictory -- about

the presumption and, absent statutory

restraint, judges were free to express

o 22 «

their individual views about it. The

foundation for the presumption of

course was the basic proposition that a

government agency such as the Patent

Office was presumed to do its job.

Morgan v. Daniels, 153 U.S. 120, 125

(1894). On the burden of persuasion in

the face of such a presumption, long be-

fore enactment of the present statute,

the Supreme Court reviewed the situation

in Radio Corp. v. Radio Laboratories,

293 U.S. 1 (1934), noting (p. 7) that

the force of the presumption “has found

varying expression in this and other

courts." Justice Cardozo, after review-

ing a variety of expressions of the

standard of proof required to overcome

the presumption of validity and while

noting that "“Gradations of difference so

subtle are not susceptible of pursuit

without leading us into a land of

shadows," concluded (p. 8):

= 23 -

"Through all the verbal variances,

however, there runs this common

core of thought and truth, that

one otherwise an infringer who

assails the validity of a patent

fair upon its face bears a heavy

burden of persuasion, and fails

unless his evidence has more than

a dubious preponderance."

When no prior art other than that

which was considered by the Patent

Office Examiner is relied on by the at-

tacker of validity, the attacker should

have the added burden of overcoming the

deference that is due to a qualified

government agency presumed to have

properly done its job. This deference

is required because the Examiners have

expertise in interpreting the references,

are specially trained in the technical

area in the art involved, and familiar

with the level of skill in the art.

Moreover, it is their duty to issue only

valid patents pursuant to 35 USC 131

which provides:

» 24 «

"The Commissioner shall cause an

examination to be made of the

application and the alleged new

invention; and if on such exami-

nation it appears that the appli-

cant is entitled to a patent under

the law, the Commission shall

issue a patent therefor."

In the manual of Patent Examining

Procedure, Sec. 706, the Examiners are

admonished:

"Patent examiners carry the

responsibility of making sure

that the standard of patentability

enunciated by the Supreme Court

and by the Congress is applied

in each and every case."

The manual then quotes from this Court's

decision in Graham v. Deere. Hence,

where the prior art is the same, the

same law and facts considered by the

Court are considered by the Examiners

in the Patent Office.

The 1952 Act and the new statute

35 USC 282 did nothing to eliminate the

confusion as to the burden of proof and

quantum of evidence necessary to over-

turn the Patent Office decision and the

» 28 «

proper technique to apply presumption

of validity. Where the best prior art

was cited and considered by the Patent

Office, the various Circuits consider

the presumption strengthened. Professor

Chisum, in his treatise on Patents,

page 5-272, Sec. 5.06 (2) cites and

footnotes the following cases for a

"strengthened presumption" in footnote

9:

"Milgo Elec. Corp. v. United

Business Communications, Inc.,

623 F.2d 645, 206 U.S.P.Q. 281

(10th Cir. 1980); Hanson v.

Alpine Valley Ski Area, Inc.,

611 F.2d 156, 159, 204 U.S.P.Q.

803 (6th Cir. 1979); Universal

Athletic Sales Co. v. American

Gym, Recreational & Athletic

Equip. Corp., 546 F.2d 530, 540

ns (28, (392-0.8.7 0. 193: (34-Cir.

1976); CMI Corp. v. Metropolitan

Enterprises, Ttunc., 534 F.2d 874,

880, 189 U.S.P.Q. 770 (10th Cir.

1976); Ortho Pharmaceutical Corp.

v. American Hosp. Supply Corp,

534 F.2d 89, 190 U.S.P.Q. 397

(7th Cir. 1976) (‘the usual pre-

sumption of validity under 35

U.S.C. § 282 is strengthened

when the Patent Office specifi-

cally considered the prior art

which is urged to invalidate the

by an accused infringer.');

—

LaSalle Street Press, Inc. v.

McCormick & Henderson, INc.,

445 F.2d 84, 93, 170 U.S.P.Q.

305 (7th Cir. 1971) (‘The pre-

sumption of validity is strengthened

where the prior art asserted against

validity is no better than that

considered and rejected by the

Patent Office.'); Stamicarbon, N.V.

v. Escambia Chem. Corp., 430 F.2d

920, 926, 166 U.S.P.Q. 362 (5th

Cir. 1970); Scaramucci v. Dresser

Indus., Inc., 427 F.2d 1309, 1313,

165 U.S.P.Q. 759 (10th Cir. 1970);

Nasco Inc. v. Vision-Wrap, Inc.,

352 F.2d 905, 908, 147 U.S.P.Q.

297 (7th Cir. 1965); Coal Processing

Equip., Inc. v. Campbell, 211

U.S.P.Q. 986 (S.D. Ohio 1981)

(‘In application this doctrine has

meant that prior patents that were

disclosed to the Patent Office

cannot serve as prior art sufficient

to support a finding of obvious-

ness.'); Gruendler Crusher &

Pulverizer Co. v. Williams Patent

Crusher & Pulverizer, 496 F.Supp.

1385, 210 U.S.P.Q. 89 (E.D. Mo.

1980); Bandag, Inc. v. Lewis

General Tires, Inc., 207 U.S.P.Q.

745, 755 (W.D.N.Y. 1980); Entec

Plastics Engineering Corp. v.

Gates Rubber Co., 206 U.S.P.Q.

524 (D. Colo. 1980); Landes Mfg.

Co. v. Chromodern Chair Co., 203

U.S.P.Q. 337 (C.b. Cal. 1978);

Dennison Mfg. Co. v. Ben Clements &

Sons, Inc., 467 F.Supp. 391, 407,

203 U.S.P.Q. 895 (S.D.N.Y¥. 1979);

Remington Arms Co. v. Funasaw Co.,

201 U.S.P.Q. 217 (N.D. Ill. 1978);

Deere & Co. v. International

Harvester Co., 460 F.Supp. 523,

« 27 =

200 U.S.P.Q. 150 (S.D. Ill. 1978)

reversed and remanded 618 F.2d

110 (7th Cir. 1980) (without

published opinion) on remand

496 F.Supp. 397, 208 U.S.P.Q.

158 (C.D. Ill. 1980) aff'd 658

F.2d 1137, 211 U.S.P.Q. 1l (7th

Cir. 1981) (‘presumption cannot

be overcome by reliance on prior

art .. . having no greater per-

tinency than that which the

Examiner rejected in his allow-

ance of the patent,'); Pate Co. v.

RPS Corp., 200 U.S.P.Q. 571

(N.D. Ill. 1978) rev'd 685 F.2d

1019 (7th Cir. 1982); Arco Indus.

Corp. v. Chemcast Corp., 200

U.S.P.Q. 491 (E. Mich. 1977);

Wilden Pump & Eng'r Co. v. Pressed

& Welded Prod. Co., 199 U.S.P.Q.

390 (ND. Cal. 1978) aff'd 655

F.2d 984, --U.S.P.Q. -- (9th Cir.

1981); Rohm & Haas Co. v. Owens-

Corning Fiberglass Corp., 196

U.S.P.Q. 726 (N.D. Ala. 1977);

Teledyne Indus., Inc. v. Windmere

Prods., Inc., 433 F.Supp. 710,

195 U.S.P.Q. 354 (S.D. Fla. 1977)

('This fact that the prior art

cited was before the Patent Office

for consideration strengthens the

presumption of validity accorded

this second patent.')"

The Court of Appeals for the Federal

Circuit has taken the position that the

presumption of validity is a procedural

device not substantive law. In

Stratoflex Inc. v. Aeroquip Corp.,

2D «

a

(Fed. Cir. 1983) 713 F.2d 1530-1534,

the Court stated:

"The presumption, like all legal

presumptions, is a procedural

device, not substantive law. It

does require the decisionmaker

to employ a decisional approach

that starts with acceptance of

the patent claims as valid and

that looks to the challenger for

proof of the contrary. Thus the

party asserting invalidity not

only has the procedural burden

of proceeding first and establish-

ing a prima-facie case, but the

burden of persuasion on the

merits remains with that party

until final decision. The party

supporting validity has no initial

burden to prove validity, having

been given a procedural advantage

requiring that he come forward

only after a prima-facie case of

invalidity has been made. With

all the evidence in, the trial

court must determine whether the

party on which the statute imposes

the burden of persuasion has

carried that burden.”

In the instant case the Court stated

as noted above that Defendants’ burden

was a heavy one. Phrases such as a

"heavy burden" are of no aid to a Trial

Court in approaching the obviousness -

non-obviousness issue where the best

» 29 «=

prior art was considered by the Patent

Office.

It is apparent from the decision of

the Court below that the Trial Court

after briefly mentioning the presumption ©

of validity proceeded to analyze patenta-

bility (Findings 62-65) (A 46-48) and

determine de novo whether the Gardner

patent met the requirements or charac-

teristics for patentability of synergism

and non-obviousness rather.than deter-

mine where the Patent Office committed

error in granting the patent.

In Pinding 87 (A 59), the Court con-

cludéd after having proceeded through the

analysis required under Graham v. Deere,

the claims would have been obvious.

This is contrary to 35 USC 282. The

statute requires that the court begin by

presuming that the invention has charac-

teristics of patentability. To do

otherwise is to ignore the statute and

oe 36 «

to place on the patentee a non-

statutory burden of proving validity

and proving that the Patent Office de-

cision was correct.

The absence of any guidelines on

applying the presumption of validity has

resulted in the Court's struggle with

the technical issues and the gross mis-

apprehension as to the character of the

Vits wood block test model and the judg-

ment based thereon on “"non-prior art".

The judgment of invalidity is so devoid

of evidentary support as to be an uncon-

stitutional deprivation of property.

Thompson v. City of Louisville, (1960)

362 U.S. 199, 80 S.Ct. 624.

Where “fraud on the Patent

Office" is alleged, detailed findings

are required to sustain the defense and

a finding on "materiality" of the repre-

sentations are required. Plastic Con-

tainer Corp. v. Continental Plastics

me

(CA-10, 1979) 606 F.2d 885, 203 USPQ

27, 38.

The jurisprudence regarding the tests

for patentability and "fraud on the

kFatent Office" is more fully developed

than that for applying the presumption

of validity. A Trial Court is required

to make Graham findings as enunciated by

this Court in Graham v. Deere on the

obviousness - non-obviousness issue or

be subject to reversal and remand for

such findings. Palmer v. Orthokinetics,

Inc. (CA-9, 1980) 611 F.2d 316, 204 USPQ

893. This Court could and should pro-

mulgate fact finding requirements which

would aid the Trial Courts in applying

the presumption, particularly where the

Patent Office had the best prior art be-

fore it. For example, the Trial Courts,

once they make a finding that the prior

art befure the Court is no more perti-

= ee we

nent than that before the Patent Office,

should be required to make the follow-

ing findings where appropriate before

overturning the Patent Office, pointing

out:

(1) where the Patent Examiner went

wrong and misinterpreted the prior art,

(2) where the Patent Examiner went

wrong in misunderstanding the technology

in the patent application,

(3) where the Patent Examiner went

wrona in misunderstanding the claims and

allowing claims which fail to distin-

guish from the prior art,

(4) where the Patent Examiner went

wrong in allowing claims which do not

distinctly point out the invention,

(5) where the Patent Office went

wrong in relying on certain facts sub-

mitted by applicant to support allow-

ance,

(6) why the errors of the Examiner

» 33 «

were material to allowance of the

patent and justify a holding of in-

validity.

While the Court of Appeals for the

Federal Circuit will create uniformity

in the patent law, it is up to this

Court to improve administration of the

patent laws by the Lower Courts.

In the absence of any guidelines re-

garding fact finding requirements,

patents in highly technical areas could

be invalidated by the Courts on the same

evidence, which was fully understood by

the Patent Examiners. Under these cir-

cumstances, Congress has endeavored to

carry out the public interest by enact-.

ing 35 USC 282. The aim of the patent

system of enforcibility of meritorious

patents should not be frustrated by the

inability of the judiciary to apprehend

the scientific principals involved.

~» 24 @

CONCLUSION

For the foregoing reasons, the

Petition for Writ of Certiorari should

be granted and the judgment of the

Court of Appeals should be reversed.

The administration of our patent laws

requires a definitive pronouncement by

this Court on the application of the

presumption of validity. This is neces-

sary to maintain the confidence of

businessmen in the patent system, the

main objective of the sponsors of the

bill which created the Court of Appeals

for the Federal Circuit.

Respectfully submitted,

Henry C. Fuller

633 West Wisconsin Ave.

Milwaukee, WI 53203

(414) 271-6555

Attorney for Petitioner

= 38 «