Respondents Brief — Garlock Inc. v. W. L. Gore & Associates, Inc.
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No. 84-2 2)
IN THE
Supreme Court of the A eing we
October Term, 198 ee sn
—— VA ~
et
sme BB
GARLOCK INC.,
Petitioner,
v.
W. L. GORE & ASSOCIATES, INC.,
Respondent.
On Petition for a Writ of Certiorari to the
United States Court of Appeals for the Federal Circuit
BRIEF FOR RESPONDENT IN OPPOSITION
Davin H. Prerrer, Counsel of Record
J. Ropert Damrey
JANET Dore
Morean, Finnecan, Prvz, Fotry & Lez
Counsel For Respondent
345 Park Avenue
New York, New York 10154
(212) 758-4800
Of Counsel:
Joun 8S, CAMPBELL
W.L. Gort & Assoorates, Ivo.
555 Paper Mill Road
Newark, Delaware 19714
August 30, 1984
BEST AVAILABLE COPY
Statement of the Issues Actually Presented by
Garlock’s Petition for Certiorari
1. Should this Court grant certiorari to review the
voluminous record below to determine whether the Court
of Appeals was factually correct in stating that: (a) it did
not set aside as clearly erroneous any probative fact found
by the district court; (b) it did not engage in any inappro-
priate reweighing of evidence; and (c) the record contained
no legally relevant evidence that could have sustained Gar-
lock’s burden of proving patent invalidity?
2. Should this Court grant certiorari to review errors
of substantive patent law committed by the district court,
notwithstanding Garlock’s written concession that they do
not warrant review by this Court?
It
The Parties
Pursuant to Supreme Court Rule 28.1, Respondent,
W. L. Gore & Associates, Inc., identifies its parent com-
pany, subsidiaries (except wholly owned subsidiaries) and
affiliates as follows: Junkosha Ltd., Japan Gore-Tex Inc.,
and Garg Associates Ltd.
TABLE OF CONTENTS
STATEMENT OF THE ISSUES ACTUALLY PRE-
SENTED BY GARLOCK’S PETITION FOR
es skniayarrcssunensinnsascvaresaccensess.
a RR
7)
SUMMARY OF REASONS FOR DENYING THE
REASONS FOR DENYING THE WRIT ....................
I. GARLOCK HAS NOT RAISED ANY TRUE
EI PPM cscs cn ssvecasssnssicssscoseesserns-aeseeses
A. Garlock’s Treatment Of Stretch Rate At-
tempts To Perpetuate The District Court’s
ss cavuasesceass
B. In Challenging The Legal Conclusion That
The 390 Patent Claims Were Not Obvious,
Garlock Has Confused Questions Of Law
With Questions Of Fact .....................................
C. Garlock’s Misquotations From Both Opinions
Below Do Not Establish An Erroneous Ap-
plication Of Rule 52(a) .................... eee
D. The District Court’s Holding That The 390
Patent Was Invalid For Anticipation Was
Reversed On Legal, Not Factual Grounds ......
1. The District Court Erroneously Found
Anticipation Based On A Combination Of
rales ais crccarecsirsstpses ovssasnsenovons
PAGE
11
13
16
IV
2. The District Court’s Holding Of Inherency
Was Legally Improper .
E. Garlock’s Reference To The ‘‘ Budd Defense’?
Misstates The Reeord Ai.d Confuses Find-
ings Of Fact With Conclusions Of Law |
1. Garlock’s Argument Is Based On The
False Premise That Budd’s Work Met. The
Patent Claims... eel Sy
2. The Court Of Appeals Properly Decided
The Publie Use Issue .
II. GARLOCK HAS NOT SHOWN THAT THIS
CASE IS PART OF A PATTERN WHERE
THE COURT OF APPEALS HAS ALLEG-
EDLY FAILED TO APPLY RULE 52(a) .
CONCLUSION an LE rs Sea ead t
PAGE
17
19
19
21
26
Vv
TABLE OF AUTHORITIES
PAGE
Cases:
Ackermans v. General Motors Corp., 202 F.2d 642 (4th
Cir.), cert. denied, 345 U.S. 996 (1953) 18
Aro Mfg. Co. v. Convertible Top Replacement Co.,
365 U.S. 336 (1961) ee 14
Baginsky v. United States, 697 F.2d 1070 (Fed. Cir.),
cert, denied, 104 8. Ct. 423 (1983) . 24
Baumgartner v. United States, 322 U.S. 665 (1944) 19
Cantrell v. Wallick, 117 U.S. 689 (1886) | 18
Catalin Corp. of America v. Catalazuli Mfg. Co., 79
F.2d 5938 (2d Cir. 1935) 17
Cathbake Investment Co. v. Fisk Electric Co., Ine.
700 F.2d 654 (11th Cir. 1983) rae Me he rhea 13
Chicago Rawhide Mfg. Co. v. Crane Packing Co. 523
F.2d 452 (7th Cir. 1975), cert. denied, 423 US.
RNIN EAA se DER PENNE SS Sarl Fin ry ot Sa 11, 16
Continental Oil Co. v. Cole, 634 F. 2d 188 (5th Cir.),
cert. denied, 454 U.S. 830 (1891) ................ 21
Corex Corp. v. United States, 524 F.2d 1017 (9th Cir.
1975), cert. denied, 425 U.S. 912 (1976) .............. 13
D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d
Sah ted Cie, MON... 21
Diamond Rubber Co. v. Consolidated Rubber Tire Co.,
re I I 2 uae 15, 19
Dual Mfg. & Engineering, Inc. v. Burris Industries,
Inc., 619 F.2d 660 (7th Cir.), cert. denied, 449
Re a NS fini reset ee ee 11, 16
Ellipse Corp. v. Ford Motor Co., 452 F.2d 163 (7th
Cir. 1971), cert. denied, 406 U.S. 948 (1972) .... 10
Firestone v. Aluminum Co. of America, 285 F.2d 928
es Se ee er ean ene unket ea Stents eat 20
Fromberg, Inc. v. Thornhill, 315 F.2d 407 (5th Cir.
1963)
Vi
PAGE
Gillman v. Stern, 114 F.2d 28 (2d Cir. 1940), cert.
denied, 311 U.S. 718 (1941) 21, 22
Graham vy. John Deere Co., 383 U.S. 1 (1966) 12
In re Hughes, 345 F.2d 184 (C.C.P.A. 1965) 18
Hughes Aireraft Co. v. United States, 717 F.2d 1351
(Fed. Cir. 1983) | 25
Imhaeuser v. Buerk, 101 U.S. 647 (1880) 20
Inwood Laboratories, Ine. v. Ives Laboratories, Ine.,
456 U.S. 844 (1982 27
Jones v. Hardy, 727 F.2d 1524 (Fed. Cir. 1983) 25
In re Marshall, 578 F.2d 301 (C.C.P.A. 1978) 20
In re Moore, 489 F.2d 1282 (C.C.P.A. 1971) 9
In re Mott, 589 F.2d 1291 (C.C.P.A. 1976) iis )
Paeco, Inc. v. Applied Moldings, Inec., 562 F.2d 870
(3d Cir. 1977) ... ee
Pullman-Standard v. Swint, 456 US S. 973 (1982). 3, passim
RCA Corp. v. Applied Digital Data Systems, Inc., 730
F.2d 1440 (Fed. Cir. 1984) ..... ‘ 25
Rohm and Haas Co. v. Crystal Chemical Co., 729 F.2d
1556 (Fed. Cir. 1983) MeaDinN deieete x Peiteeeceaaks 24
Santa Fe-Pomeroy, Inc. v. P&Z Co., 569 F.2d 1084
(9th Cir. 1978) . EL A DRC NT OE Ne 17
Sarkisian v. Winn- Proof Corp., 688 F.2d 647 (9th Cir.
1982), cert. denied, 103 S. Ct. 1499 (1983) ..........11, 16
Simmons Fastner Corp. v. Illinois Tool Works, Ine,
No. 83-1084 (Fed. Cir. July 31, 1984) 200000... 12
Stamicarbon N.V. v. Chemical Construction Corp., 544
ee ee Ge CO, PD ood oo cane 17
Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed.
Cir. 1983) ......... Re RO ets i TAT lees 12
a: eee ee
Vit
PAGE
TP Laboratories, Ine. v. Professional Positioners,
Ine., 724 F.2d 965 (Fed. Cir, 1984) ; 24
Tee-Pak, Ine. v. St. Regis Paper Co., 491 F.2d 1193
NE MPs WIE scsi sicaseeecislis ccanean>rdicetons cy ce
Topliff v. Topliff, 145 U.S. 1 56 (1892) | 20
In re Turlay, 304 F.2d 893 (C.C.P.A. 1962) ........ 18
Union Carbide Corp. v. American Can Co., 724 F.2d
1567 (Fed. Cir. 1984) ............. iapheoeretey SS
United States v. Adams, 383 U.S. 39 (1966) caaeetty
United States v. Mississippi Valley Generating Co.,
MI SN nc ro chckzoerssravncdeensaesbasesseciavscsasen 13
Western State Machine Co. v. S.S. Hepworth Co., 147
F.2d 345 (2d Cir.), cert. denied, 325 U.S. 873
CD RIT oF a EC Dal RR en DP Lp pes Ie aD Oe 10
White v. Jeffre ey ; Mining Machinery Co., 723 F.2d 1553
(Fed. Cir. 19838) | Reet rn ae
White Consolidated Industries, Inc. v. , Vega Servo-
Control, Inc., 713 F.2d 788 (Fed. Cir. 1983) ........ i)
Statutes:
SL ener
I osc, cco ne- -oaveaneronbenys on trscmncsoconsieiee 3, passim
we Uden SEES ............0..: Sie taialeatateaei dae 3, passim
Ss kee dd ae sana oh ae
Rules and Regulations:
I, I I ons cscasesossusancepdenendasaboonsiucs re
Ne I I TI oo ccssdv an ssescecesnntnapanvenhiphononnsend 3, passim
Other Authorities:
a I cs. cndecsaishaacladscaledhessaieceains 18
Federal Judicial Workload Statistics (March 31,
1984)
No. 84-2
IN THE
Suprene Court of the United States
October Term, 1984
GarLock Inc.,
Petitioner,
v.
W. L. Gort & Assoctatess, Ine.,
Respondent.
On Petition for a Writ of Certiorari to the
United States Court of Appeals for the Federal Circuit
A fp em
BRIEF FOR RESPONDENT IN OPPOSITION
Statement of the Case
The two patents in suit relate to the processing of poly-
tetrafluoroethylene (‘‘PTFE’’), a known material which
DuPont seils under its trademark Terton. U.S. Patent
No. 3,953,566 (the ‘‘566 patent’’) is based on Dr. Robert
W. Gore’s discovery that by stretching highly crystalline
PTFE rapidly, at elevated temperatures, it can be stretched
to many times its original length to form porous, high
strength products, even though that same heated material
breaks after being stretched a short distance, when it is
stretched slowly. U.S. Patent No. 4,187,390 (the ‘390
2
patent’’) is directed to new PTFE products whieh are
highly porous but, nevertheless, have the strength required
to make them commercially useful. These products also
possess the conflicting properties of being both breathable
and waterproof. No other material ever had this combina
tion of properties.
Respondent, W. L. Gore & Associates, Ine. (‘*Gore*’),
makes and sells the patented breathable-waterproof fabric
under its trademark Gore-Tex for use in outerwear
such as shoes, boots, gloves, jackets and raincoats. The
patented Gore-Tex product has also been used exten
sively as a replacement artery in human legs. Prior to Dr.
Gore’s invention, the only alternative for many patients
suffering from advanced atherosclerosis was leg amputa
tion or slow death from gangrene. Since 1976 more than
300,000 persons have received Gore-Tex replacement ar
teries. The product of the invention has been ealled ‘*the
nost important synthetic material presently existing in
vascular surgery.’’ The product of Dr. Gore's invention
has also been used as a pateh for the human heart and to
make the space suits for the shuttle astronauts. Annual
sales of the patented products execed sixty million dollars.
The two major sources of PTFE raw material, DuPont
and ICI, both paid tribute to Dr. Gore’s invention. ICI
referred to the patented Gore-Tex product as ‘‘magical’’
and ‘‘bewitching’’ while DuPont called it a ‘‘remarkable
new material’* that ‘‘differs from other processed forms
’. , . **
of ‘ Tefion’.
Petitioner, Garlock Inc., began making its infringing
product, Piastotoy, after receiving a request from a cus-
a
tomer for a material which could be substituted for Gong
Tex film, and after studying the 566 patent in suit. Gar
sé
lock advertises its PLAsroLon as ‘fa new form’’ of PTFE
and as ‘fa versatile new material which provides new orders
of performance for consumer, industrial, medical and eclee
trical applications.’’ Garlock’s customer advertises its in
fringing outerwear fabric made with PLAsToLoN as ‘fa new
dimension in rainproof/breathable fabries’’?’ and as a
‘‘super fabric.’’
In its Memorandum of Opinion, following a non-jury
trial, the district court dismissed Garlock’s fraud charges
but held all claims of both patents invalid for anticipation
under 35 U.S.C. 6102, for obviousness under 35 U.S.C. ©1038,
and for indefiniteness under 35 U.S.C. 6112.
The Court of Appeals for the Federal Circuit affirmed
in part and reversed in part. Expressly applying the
clearly erroneous standard of Fed. R. Civ. P. 52(a), the
Court of Appeals affirmed those portions of the district
court’s judgment holding claims 1 and 17 of the 566 patent
invalid and dismissing Garlock’s charges of fraud (A-10,
A-15, A-29).* The Court of Appeals reversed as to other
claims of the patents in suit because ‘‘ dispositive legal error
occurred in the interpretation and application of the patent
statute’’ (A-7).
The Court of Appeals expressly recognized the applica-
bility of both Rule 52(a) and Pullman-Standard vy. Swint,
* See, eg., A-9: “Gore does not... point to any basis on which
the district court’s findings must be held to have been clearly errone-
ous... We are not at liberty, of course, to substitute our own for the
district court’s findings underlying its conclusion that claim 1 ts
invalid.”
4
456 U.S. 273 (1982) in the seetion of its opinion headed
‘Standard of Review'’ (A-7). It determined, however, that
the district court had committed numerous legal errors,
often compounding error upon error in reaching its conelu-
sions. Beeause of these errors, the distriet court made
many fact findings that were either legally irrelevant to the
ultimate issues being decided, or were based upon legally
irrelevant evidence. Consequently, although reversing, the
Court of Appeals ruled that it was unnecessary to set aside
as clearly erroneous any probative fact found by the district
court.*
The Court of Appeals did not set aside any findings of
fact which were based on legally relevant evidence and did
not engage in any reweighing of the evidence. The Court
of Appeals did, however, reverse erroneous legal conelu-
sions of the district court and highlighted the complete ab
sence from the record of legally relevant evidence capable
of overcoming the statutory presumption of patent validity.
° Ae? as amended by A-42. In the appendix to its petition
Garlock did not print the full text of this portion of the final opinion
of the Court of Appeals. We do so below:
Where, as here, dispositive legal error occurred in interpretation
and application of the patent statute, 35 U.S.C., the parties’
arguments relating to the salutory injunction of Fed. Rule Civ.
P. 32(a) cannot be controlling on ill issues. Findings that
“rest on an erroneous view of the law may be set aside on that
basis”, Pullman-Standard v. Swint, 456 U.S. 273 (1982). Thus
it is ummecessary here to set aside any probative fact found by
the district court on the basis of its being clearly erroneous or
¢ in what would be an inappropriate reweighing of the
aed
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Pw et ae
Summary of Reasons for Denying the Writ
In its petition, Garlock contends that the Court of Ap-
peals for the Federal Cireuit is a renegade court which re-
verses indiscriminately without regard to Fed. R. Civ. P.
52(a). In truth, Garlock seeks to overturn numerous set-
tled legal principles in the guise of a Rule 52(a) attack.
In this case the Court of Appeals applied Rule 52(a). It
set aside none of the district court’s findings as clearly
erroneous. It did not reweigh any conflicting evidence.
Thus, it affirmed the district court’s holding that claim 1 of
the 566 patent was invalid because anticipated and that
claim 17 was invalid because obvious (A-10, A-15). It re-
fused to set aside the district court’s factual findings, which
were not shown to be clearly erroneous, stating: ‘‘We are
not at liberty, of course, to substitute our own for the dis-
trict court’s finding underlying its conclusion that claim 1
is invalid’’ (A-9). Similarly, in affirming the district court’s
holding that no fraud had been committed, the Court of
Appeals determined that the correct legal standard had been
applied and invoked Rule 52(a) stating: ‘‘No basis exists
for our overturning that finding’’ (A-29).
When the Court of Appeals did reverse, it did so because
the district court had used the wrong legal standards and,
when the proper legal standards were app ed, only one
conclusion was possible, i.e. that Garlock had not sustained
its burden of proof. In reversing, the Court of Appeals
expressly relied on, cited to and quoted from Pullman-Stan-
dard v. Swint, 456 U.S. 273 (1982). That case holds that
where a district court’s findings rest on an erroneous view
6
of the law, they may be set aside on that basis. It further
holds that where the reeord permits only one resolution of
the issue, remand to the district court for new findings is
unnecessary,
Garlock says it seeks review because the Court of Ap
peals failed to apply Rule 52(a). In reality, Garlock is
asking this Court to sanction and reinstate the district
court’s numerous legal errors, errors which the Court of
Appeals properly corrected. And yet, Garlock’s petition
expressly acknowledges that the legal issues decided by the
Court of Appeals do not ‘present questions warranting
cortiorari®’ (p.4, n.1). A brief review of the five issues
raised by Garlock demonstrates that they do not involve any
violation of Rule 52(a).
(1) It is settled that the correct legal test under 35
C.S.C. $112 is whether a patent would have been understood
by a person skilled in the relevant art at the time the patent
was applied for. The district court held the patents in suit
invalid because it concluded that they would not have been
understood by the public at the time of trial. The Court of
Appeals reversed because there was no record evidence
which would support a holding of indefiniteness when the
proper legal test was applied.
(2) It is settled that whether a patented invention is or
is not obvious under 35 U.S.C. $103 is an issue of law freely
reviewable as such on appeal. In reviewing such an issue
of law an appellate court is not ‘‘second guessing’’ the dis-
rict court when it decides to give more weight than the
wnt
district court did to certain undisputed but legally relevant
OY SAPO dee.
Wa Ae ae mh ote Rah Wo se
.
7
(3) It is settled that in assessing the obviousness of a
patent claim, all requirements of the claim must be con-
sidered, i.e. the invention must be viewed ‘fas a whole.’’ 35
U.S.C. §103. The district court erroneously focused on only
one requirement, calling it the ‘‘thrust’’ of the invention,
while ignoring other requirements of the claims. The Court
of Appeals properly held this to be an error of law requiring
reversal,
(4) It is settled that to establish ‘‘anticipation’’ by
arlier literature, all features of the claimed invention must
be disclosed in a single patent or publication. It is equally
settled that if any claimed feature is not explicitly described
in an earlier patent or publication, its allegedly inherent
presence must be proved to a legal certainty. The district
court found ‘‘anticipation,”’
not in a single patent, but in
the combination of fwo patents. This was a clear error of
law. The district court compounded its error by miscon-
struing the quantum of proof legally required to prove
inherency.
(5) It is settled that to constitute an ‘‘anticipation,’’ a
prior public use must meet all requirements of the patent
claims. The district court improperly focused on only one
of many claim requirements, calling it the ‘‘@hrust’’ of the
invention, and found all claims of the 566 patent ‘‘antici-
pated’’ by work performed at the Budd Company. Since
there was a complete lack of proof that other claim require-
ments were met by the Budd work, the Court of Appeals
properly reversed. The reversal was entirely consistent
with Garlock’s admission in writing before the Court of
Appeals that the ‘‘Budd defense’’ did not apply to the only
claims at issue here.
8
To summarize, the Court of Appeals did not reweigh
conflicting evidence or ‘second guess”’ fact findings made
by the district court. The Court of Appeals reversed be-
eause the district court made numerous legally erroneous
rulings. Since Garlock admits that the legal tssues decided
by the Court of Appeals do not warrant review by this
Court, this petition presents no basis for a writ of certiorari
and should be denied.
Reasons for Denying the Writ
I. GARLOCK HAS NOT RAISED ANY TRUE
RULE 52(a) ISSUES
In its petition Garlock sharply attacks the Court of
Appeals and its Chief Judge, the author of the opinion
below, accusing them of a pattern of wholesale judicial mis-
conduct in allegedly violating Fed. R. Civ. P. 52(a). When
stripped of acid remarks, seattershot generalizations and
complaints about other cases, Garlock’s petition identifies
only five specific points of contention. But, as we now show,
no violation of Rule 52(a) is involved in any of the five
points raised by Garlock.
A. Garlock’s Treatment Of Stretch Rate Attempts
To Perpetuate The District Court’s Errors Of Law
At pages 9-10 of its petition, Garlock criticizes the Court
of Appeals’ treatment of the term ‘‘stretch rate.’’ The
district court found that term indefinite, thereby invalidat-
ing the claims of the 566 patent under 35 U.S.C. $112. Gar-
lock incorrectly accuses the Court of Appeals of reweighing
the evidence and of making findings of fact contrary to
those of the district court.
9
In reaching its legal conélusion that the patent claims
were invalid for indefiniteness, the distriet court relied en
an erroneous legal interpretation of 35 U.S.C. §112. As a
result, its fact findings were based on evidence that was
legally irrelevant. The Court of Appeals so held.
The [district court’s] findings rest on a misinterpreta-
tion of §112, its funetion and purpose. The district
court considered whether certain terms would have been
enabling to the public and looked to formula develop-
ments and publications oceurring well after Dr. Gore’s
filing date in reaching its conclusions under 4112.
Patents, however, are written to enable those skilled in
the art to practice the invention, not the public, ...
and §112 speaks as of the application filing date, not as
of the time of trial. (A-25)
At page 10 of its petition Garlock refers to various
‘*‘mathematical formulae’’ relied on by the district court as
a basis for invalidation. But each of those formulae was
promulgated after May 21, 1970, when Dr. Gore filed his
patent application. The Court of Appeals held that, under
the established law, the patentee’s ‘‘disclosure must be
examined for §112 compliance in light of knowledge extant
on his application filing date’’ and, therefore, ‘‘subsequently
developed and therefore irrelevant formulae cannot be
used’’ (A-26).*
* See, e.g., White Consolidated Industries, Inc. v. Vega Servo-
Control, Inc., 713 F.2d 788, 791 (Fed. Cir. 1983) ; In re Mott, 539
F.2d 1291, 1296 (C.C.P.A. 1976); In re Moore, 439 F.2d 1232,
1235 (C.C.P.A. 1971). Although the critical date was May 21,
1970, the district court relied on DX 1098, a handwritten document
authored by Gore statistician Mehta in 1972 (A-85); a Gore 1981
Japanese patent (A-86; DX 1096) and a 1972 Schlemmer patent
(A-86; DX 1103). Gore had seasonably objected at trial to use
of this evidence and had briefed the issue extensively on appeal.
10
After disposing of this legally irrelevant evidence, and
after a ‘‘careful time-consuming study of all exhibits and
each page of the reeord’’ (A-6), the Court of Appeals con-
cluded that the reeord contained *‘no evidence’’ which would
support a holding that the patents violated 35 U.S.C. $112:
There was no evidenee and no finding that those skilled
in the art would have found the specification non-enabl-
ing or the claim language indefinite on May 21, 1970,
when the application whieh resulted in issuance of Dr.
Gore’s patent was filed. (A-26)*
Because the record contained no legally relevant evi-
dence that could support a finding of indefiniteness, a re-
mand to the district court for new findings was neither
necessary nor proper. Pullman-Standard vy. Swint, 456 U.S.
273, 292 (1982) (A remand is unnecessary where ‘‘the
record permits only one resolution of the factual issue’’).**
* Garlock’s references to Dr. Armstrong’s testimony are unavail-
ing. His testimony was legally irrelevant and therefore was properly
disregarded. He testified that the patent language was indefinite
to him in 1982, based at least in part on his consideration of the
patent in 1982 in light of post-1970 documents. The fact that Arm-
strong was still in school in 1970 confirmed his lack of knowledge of
how the patents in suit would have been interpreted by those skilled
in this art in 1970. The references in Garlock’s petition to polymer
rheologists are likewise irrelevant. There was never a finding or
evidence that the patents in suit are addressed to polymer rheologists.
** The Court of Appeals did discuss the testimony adduced by
Gore, which conformed to the correct legal standard, and contrasted
that with the lack of any contrary legally relevant evidence from
Garlock. But because the patents are presumed valid under 35 U.S.C.
§282, the burden of proving invalidity due to indefiniteness rested
on Garlock. Ellipse Corp. v. Ford Motor Co., 452 F.2d 163, 170
(7th Cir. 1971), cert. denied, 406 U.S. 948 (1972); Western State
Machine Co. v. S.S. Hepworth Co., 147 F.2d 345, 350 (2d Cir.),
cert. denied, 325 U.S. 873 (1945). Garlock’s failure to adduce any
legally relevant evidence of indefiniteness by itself required reversal.
ee ed
11
B. In Challenging The Legal Conclusion That
The 390 Patent Claims Were Not Obvious,
Garlock Has Confused Questions Of Law
With Questions Of Fact
At page 13 of its petition, Garlock criticizes the Court
of Appeals for reversing the district court’s holding that
the 3590 patent claims were obvious under 35 U.S.C.
§105. Garlock accuses the Court of giving too much weight
to evidence of ‘‘commercial suecess,’’ and for stating that
‘it as reasonable to conclude that the claimed products
would not have been obvious to persons of ordinary skill in
the art at the time the claimed inventions were made’’
(A-24; emphasis Garlock’s).
Garlock’s petition displays a fundamental misunder-
standing of basic patent law. Obviousness under 35 U.S.C.
§103 is not a question of fact subject to the clearly erroneous
rule. It is a question of law freely reviewable as such on
appeal.
[T]he issue of obviousness raises a question of law and,
therefore, we are free to disagree with the district court
even if we cannot brand his conclusion as clearly erro-
neous. Chicago Rawhide Mfg. Co. v. Crane Packing
Co., 523 F.2d 452, 460 (7th Cir. 1975), cert. denied, 423
U.S. 1091 (1976).
* * *
{T]his court reviews the issue of obviousness as one of
law on which it must exercise independent judgment.
Union Carbide Corp. v. American Can Co., 724 F.2d
1567, 1573 (Fed. Cir. 1984).*
In deciding whether an invention is or is not obvious
under 35 U.S.C. §103, a district court is required to make
* Accord, Sarkisian v. Winn-Proof Corp., 688 F.2d 647, 650-51
(9th Cir. 1982) (en banc), cert. denied, 103 S. Ct. 1499 (1983) ;
Dual Mfg. & Engineering, Inc. v. Burris Industries, Inc., 619 F.2d
660, 663 (7th Cir.) (en banc), cert. denied, 449 U.S. 870 (1980).
12
certain underlying findings of fact as to the scope and con-
tent of the prior art, the level of ordinary skill in the art,
the differences between the prior art and the claimed inven-
tion and such ‘‘secondary considerations’’ as commercial
success, satisfaction of a long-felt need, ete. Graham v.
John Deere Co., 383 U.S. 1, 17 (1966).* Those findings are
reviewable under the clearly erroneous standard. There-
after, a legal conclusion must be reached on the issue of
obviousness. Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d
1530, 1535 (Fed. Cir. 1983).
In reaching its legal conclusion that the 390 patent was
invalid for obviousness, the district court failed to take into
account the ‘‘strong showing of objective evidence of non-
obviousness here present’’ (A-23). This, the Court of
Appeals held, was legal error:
That approach was error. All evidence bearing on
the issue of obviousness, as with any other issue raised
in the conduct of the judicial process, must be consid-
ered and evaluated before the required legal conclusion
is reached (emphasis in original). (Jd.)
Had there been a factual dispute as to the ‘‘objective
evidence of non-obviousness,’’ ie. whether the invention
satisfied a long-felt need, was commercially successful, pro-
ceeded contrary to the conventional wisdom and was greeted
with initial skepticism by experts in the art, a remand to the
district court to resolve disputed factual issues might have
* See Simmons Fastner Corp. v. Illinois Tool Works, Inc., No. 83-
1084, slip op. at 5 (Fed. Cir. July 31, 1984) :
The section 103 test of nonobviousness set forth in Graham
is a four part inquiry comprising, not only the three familiar
elements (scope and content of the prior art, differences between
the prior art and the claims at issue, and level of ordinary skill in
the pertinent art), but also evidence of secondary considerations
when such evidence is, of course, present.
sia:
cee ree eee WSS te neers) ree See emg
ae ee eee
13
been considered. Here there was no dispute. The Court of
Appeals expressly noted, based on its study of the entire
record, that each of these points was ‘‘undisputed’’ (A-3).
Under these circumstances, once it reversed the district
court’s legal conclusion of obviousness, the Court of Ap-
peals was entirely free to substitute its own legal conclu-
sion giving the undisputed facts such weight as it deemed
necessary. United States v. Mississippi Valley Generating
Co., 346 U.S. 520, 526 (1961); Cathbake Investment Co.
v. Fisk Electric Co., Inc., 700 F.2d 654, 656 (11th Cir.
1983) ; Corex Corp. v. United States, 524 F.2d 1017, 1019-20
(9th Cir. 1975), cert. denied, 425 U.S. 912 (1976). And in
doing so, the Court of Appeals was not ‘‘second guessing”’
the district court.
C. Garlock’s Misquotations From Both Opinions
Below Do Not Establish An _ Erroneous
Application Of Rule 52(a)
At page 14 of its petition, Garlock has juxtaposed trun-
cated phrases, taken out of context from the opinions below,
and has interspersed its own editorial comments. In doing
so, Garlock has effectively misrepresented the relevant por-
tions of both opinions. Garlock has also mischaracterized
the reason for the Court of Appeals’ reversal of the district
court’s legal conclusion that claims 3 and 19 of the 566
patent were obvious under 35 U.S.C. §103.
Contrary to what Garlock says, the Court of Appeals
did not hold that stretching rapidly was, or was not, the
accepted wisdom of the prior art. Nor did the district court
hold, as Garlock says, that stretching rapidly, i.e. above 10
percent per second, was the accepted wisdom of the prior
art. Moreover, Garlock is incorrect when it asserts that
this alleged factual dispute was the reason for the reversal.
14
The district court concluded that stretching at a rate
above 10 percent per second was within the ability of one of
ordinary skill in the art (A-78, A-79). The Court of Ap-
peals did not comment on that conclusion. Rather, in dis-
cussing Dr. Gore’s invention, the Court of Appeals recog-
nized that Dr. Gore had combined three normally antitheti-
cal conditions to create a process that, in its totality, pro-
ceeded contrary to the conventional wisdom:
On the entire record and in view of all the references,
each in its entirety, it is clear that a person of ordinary
skill confronted with a PTFE tape breakage problem
would have either slowed the rate of stretching or in-
creased the temperature to decrease the crystallinity.
Dr. Gore did neither. He proceeded contrary to the
accepted wisdom of the prior art by dramatically in-
creasing the rate and length of stretch and retaining
crystallinity (emphasis in original). (A-17)
The issue addressed by the Ceurt of Appeals was not
whether one could stretch rapidly, which is what the district
court referred to as the ‘‘thrust’’ of the invention (A-53).*
Instead, the Court of Appeals considered the claimed inven-
tion ‘‘as a whole.’’ 35 U.S.C. §103. It determined the legal
import of the undisputed evidence that the prior art taught:
(1) that there was a limit on the amount of stretch; (2) that
crystallinity had to be reduced or eliminated before stretch-
ing rapidly; and (3) that to stretch further, one had to de-
crease, rather than increase, the rate of stretch. That Dr.
Gore’s process invention in its totality proceeded contrary
to this conventional wisdom was correctly held by the Court
of Appeals to be ‘‘strong evidence of non-obviousness,”’
citing United States v. Adams, 383 U.S. 39 (1966) (A-17).
* This was directly contrary to Aro Mfg. Co. v. Convertible Top
Replacement Co., 365 U.S. 336, 345 (1961), holding that there is
“no legally recognizable or protected ‘essential’ element, ‘gist’ or
‘heart’ of the invention.”
ee
15
This, though, was only one basis for partially reversing
the district court’s judgment holding the claims of the 566
patent invalid for obviousness. The Court of Appeals
pointed to a series of legal errors in the district court’s
opinion, any one of which would have justified a reversal.
These errors of law included: (1) the failure to take into
account the undisputed evidence that PTFE was considered
unique, unpredictable, ‘‘swi generis’’ and not responsive to
conventional plastics processing techniques (A-13 to A-15) ;
(2) the failure to consider the prior art references in their
entireties, ‘‘i.e. in disregarding disclosures in the references
that diverge from and teach away from the invention at
hand’’ (A-13); (38) ‘‘considering claims in less than their
entireties’’ (A-13); (4) ignoring the legal requirement that
before the teachings of references may be combined, ‘‘there
must have been something present in those teachings to
suggest’”’ the combination (A-15, A-18); (5) ‘‘error in vis-
ualizing the burden of proof on obviousness’’ (.A-19); (6)
error in falling ‘‘victim to the insidious effect of a hindsight
syndrome wherein that which only the inventor taught is
used against its teacher’’ (A-18) ;* and (7) ‘‘error in spe-
cifically declining to consider the objective evidence of non-
obviousness’’ (A-19).
Given these numerous legal errors, which are here un-
challenged by Garlock, reversal of the district court’s hold-
* Cf. Diamond Rubber Co. v. Consolidated Rubber Tire Ce., 220
U.S. 428, 435 (1911):
Knowledge after the event is always easy, and problems once
solved present no difficulties, indeed, may be represented as
never having had any, and expert witnesses may be brought
forward to show that the new thing which seemed to have eluded
the search of the world was always ready at hand and easy to
be en by a merely skillful attention. But the law has other
tests of the invention than subtle conjectures of what might have
been seen and yet was not.
16
ing of obviousness was not only justified, it was required.
Since obviousness is a legal conclusion, no remand was
necessary. The Court of Appeals was free to substitute its
own legal conclusion of non-obviousness, as it did.*
D. The District Court’s Holding That The 390
Patent Was Invalid For Anticipation Was
Reversed On Legal, Not Factual Grounds
1. The District Court Erroneously Found Anticipation
Based On A Combination of References
At page 11 of its petition, Garlock assumes that the
district court held the claims of the 390 patent anticipated
by cach of the earlier Smith and Sumitomo patents. A
plain reading of the district court’s opinion does not sup-
port Garlock’s view.
The claims of the 390 patent contain several require-
ments describing the products of that invention. The claims
require both that the products have a microstructure of
‘‘nodes interconnected by fibrils’’ and that the products
have high strength. In holding the 390 patent claims
invalid for anticipation, the district court combined the
teachings of the Smith and Sumitomo patents to form a
composite anticipation. As stated by the district court:
|[Tljhe court finds the invention claimed in the 390
patent anticipated ... because (1) the ‘‘nodes inter-
* Sec, eg. Umion Carbide Corp. v. American Can Co., 724
F.2d 1567, 1573 (Fed. Cir. 1984); Sarkisian v. WWinn-Proof Corp.,
O88 F.2d 647, 650-51 (9th Cir. 1982) (en banc), cert. denied, 103
S. Ct. 1499 (1983): Dual Mig. & Engineering, Inc. v. Burris In-
dustries, Inc., 619 F.2d 660, 663 (7th Cir.) (en banc). cert. denicd,
449 U.S. 870 (1980); Chicago Rawhide Mfg. Co. v. Crane Packing
Co., 523 F.2d 452, 460 (7th Cir. 1975 ), cert. denied, 423 U.S. 1091
17
99
connected by fibrils’’ microstructure is an inherent
characteristic ... as taught by the Smith patent; and
(2) the high strength PTFE products... are inherent
in the examples taught by the Sumitomo patent... .
Therefore, the Court holds the 39U patent invalid.
(A-69)
The Court of Appeals reversed, holding that as a matter
of law anticipation does not exist unless all of the claim
requirements are found in a single prior art reference:
Anticipation requires the disclosure in a single prior
art reference of each element of the claim under con-
sideration. (A-20)
In reversing, the Court of Appeals applied established
legal principles.*
2. The District Court’s Holding Of Inherency
Was Legally Improper
The Court of Appeals also noted the legal errors com-
mitted by the district court in finding the strength and
structure claimed in the 390 patent ‘‘inherent’’ in the
Sumitomo and Smith patents respectively.** It is settled
that to establish ‘‘inherency’’ more is rceyuired than proof
that something is possible or even probable. Inherency
requires proof that ‘‘it must invariably happen.’’t
* See, e.g., Santa Fe-Pomeroy, Inc. v. P&Z Co., 569 F.2d 1084,
1094 (9th Cir. 1978); Paeco, Inc. v. Applied Moldings, Inc., 562
F.2d 870, 875 (3d Cir. 1977); Tee-Pak, Inc. v. St. Regis Paper
Co., 491 F.2d 1193, 1198 (6th Cir. 1974).
** ‘Among the legal errors extant in the record. ..are... an
inherency theory under §102 and 103 [that] was inappropriately
applied...” (A-/).
+ Stamicarbon N.V. v. Chemical Construction Corp., 544 F.2d
645, 652 (3d Cir. 1976). See also Catalin Corp. of America v.
Catalazuli Mfg. Co., 79 F.2d 593, 596 (2d Cir. 1935) (“an anticipa-
tion must speak affirmatively and with certainty; must disclose the
invention without debate”) (L. Hand, J.).
18
With respect to the ‘‘inherent’’ strength of Sumitomo’s
products, the Court of Appeals noted that there was a
conflict in the expert opinion testimony and that no one
had actually duplicated the Sumitomo process. The evi-
dence was, therefore, insufficient as a matter of law to
support a holding that the strength claimed in the 390
patent was ‘‘inherent’’ in the Sumitomo patent. Contested
opinion testimony is simply inadequate to establish the
‘‘invariability’’ and ‘‘certainty’’ legally required to prove
inherency.*
With respect to the ‘‘inherent’’ structure of Smith’s
products, the Court of Appeals held, after studying the
entire record (A-6), that ‘‘there is no present record basis
for finding that the Smith process in itself necessarily and
inherently results in the products, each considered in its
entirety, in the claims of the 390 patent’’ (A-22).
Garlock argues in its petition that inherency was proved
by testimony that Garlock’s infringing product was pro-
duced by following the general guidelines of the Smith
patent (p.11, n.6). The Court of Appeals rejected that
argument as a matter of law. Even assuming Smith to be
a dominating patent as Garlock contends, ‘‘the rule of law
is clear that an accused infringer’s employment of a dom-
inating patent does not render that employment an antici-
pation of an invention described and claimed in an improve-
ment patent’’ (A-21, A-22).**
* See, eg., In re Hughes, 345 F.2d 184, 188 (C.C.P.A. 1965) ;
In re Turlay, 304 F.2d 893, 899 (C.C.P.A. 1962).
** Sec, e.g., Cantrell vy. Wallick, 117 U.S. 689, 694 (1886) ; From-
berg, Inc. v. Thornhill, 315 F.2d 407, 415 (5th Cir. 1963); Acker-
mans Vv. General Motors Corp., 202 F.2d 642, 646 (4th Cir.), cert.
denied, 345 U.S. 996 (1953); 69 CJS. Patents $295 (“a third
person who is infringing both the patent for the original invention
and the patent for an improvement cannot set up the existence of
the first patent as an excuse for infringing the second patent”).
SE ee
19
Contrary to Garlock’s allegations, the Court of Appeals
neither substituted its own findings of fact for those of
the district court nor resolved any conflicts in expert
testimony. The Court of Appeals held that the district
court applied an improper legal standard, but also held
that it was ‘‘unnecessary ... to resolve apparent conflicts
in the divergent [expert] testimony’’ because, as a matter
of law, a finding of inherent anticipation ‘‘cannot be predi-
cated on mere conjecture respecting the characteristics of
products that might result from the practice of processes
disclosed in references’’ (A-21).* Beeause the record
contained no evidence of actual duplications of the earlier
patents and because those earlier patents were themselves
‘‘unaeceptably vague’’ (A-21), the Court of Appeals cor-
rectly held as a matter of law that the district court’s
conclusion of inherency was in error.
E. Garlock’s Reference To The “Budd Defense”
Misstates The Record And Confuses Findings
Of Fact With Conclusions Of Law
1. Garlock’s Argument Is Based On The
False Premise That Budd’s Work Met
The Patent Claims
At page 15 of its petition, Garlock argues that the
process claimed in the 566 patent was ‘‘anticipated,’’ i.e.
previously carried out, by the Budd Company. Garlock
states that ‘‘it was undisputed that a third party, Budd
Company, had used the process that is the subject of the
* See Diamond Rubber Co. vy. Consolidated Rubber Tire Co.,
220 U.S. 428, 435 (1911), rejecting “subtle conjectures” as a basis
for invalidating a patent. The Court of Appeals properly considered
whether the evidence met the exacting standard of proof on the issue
of inherency. Baumgartner v. United States, 322 U.S. 665, 671
(1944).
20
That statement
is untrue. Garlock itself admitted in its brief to the Court
566 patent before the filing of the patent.
of Appeals that claims 3 and 19 of the 566 patent, the only
claims of that patent here at issue, were nof met by the
Budd work.* The Court of Appeals agreed, holding that
there was ‘‘a failure of proof that the claimed inventions
as a whole were practiced by Budd’’ (A-12).**
It is settled that an earlier device or process must meet
all claim requirements before it can invalidate the claim
as an ‘‘anticipation.’*+ As a matter of law, therefore, the
Budd work could not anticipate the claims here at issue.
* Garlock told the Court of Appeals that “a fair reading of the
| district] court’s opinion reveals that only claim 1 of the 560 patent
was held invalid as being anticipated by the early Budd . . . activities”
(Garlock appellate bret at p.30). Claim 1 of the 566 patent is not
here at issue since the Court of Appeals affirmed the district court's
holding that claim 1 was invalid on other grounds.
** The Court of Appeals was here referring to the absence of
evidence in the record that all the requirements of the claimed inven-
hon had been met by the earlier Budd work. For example, claim 19
of the 506 patent requires the use of “highly crystalline” PTFE, and
further requires the final length of the product to be greater than
five times its $ original length. The district court itself found that the
machine used by Budd to stretch tape only stretched it by 20 percent,
ie. to only 1.2 times its original length. which is far less than the
required five times (A-62). And Garlock’s own witness testified
that he didn’t know what the cry stallinity was of Budd's PTFE.
Comparable failures of proof occurred in the case of claim 3, the only
other claim of the 566 patent here at issue.
+ See, eg.. Topliff v. Toplif, 145 U.S. 156, 161 (1892): Im-
hacuser Vv. Buerk, 101 U.S. 647, 660 (1880): Firestone v. Aluminum
Co. of America, 285 F.2d 928, 929-30 (6th Cir. 1960): In re Mar-
shall, 578 F.2d 301, 304 (C.C.P._A. 1978).
21
2. The Court Of Appeals Properly
Decided The Public Use Issue
Because there was both a failure of proof on the ‘‘ Budd
defense’’ and a concession by Garlock that this defense
did not apply to claims 3 and 19 of the 566 patent, the
Court of Appeals need not have proceeded any further in
reversing the district court’s holding of anticipation.
Nevertheless, because the Federal Circuit is now charged
with bringing uniformity and certainty to the patent law,
it correeted another of the district court’s legal errors con-
cerning the ‘‘ Budd defense.’
+]
It is the correction of that
legal error which Garlock complains about at page 15 of
its petition.
A third party’s prior use of an invention, even where
all claim requirements are met, does not necessarily con-
stitute an ‘‘anticipation’’ that invalidates a patent claim.
To invalidate, the prior use must have been accessible to
the public.* Here, the district court found as fact that
Budd acquired its machine pursuant to a written secrecy
agreement that obligated Budd to maintain the machine
as a trade secret (A-64). No effort was made to keep
Budd’s employees away from the machine. It was not
shronded behind a curtain and, at some (unspecified) time,
several DuPont employees were shown the machine so
they could help increase its speed (A-65). None of these
findings was set aside by the Court of Appeals. It was
also undisputed that Budd’s employees were required to
and did sign confidentiality agreements (A-11).
*D.L. Auld Co. v. Chroma Graphics Corp., 714 F.2d 1144, 1147
(Fed. Cir. 1983) : Continental Oil Co. v. Cole, 634 F.2d 188, 195-96
(5th Cir.). cert. denied, 454 U.S. 830 (1981) ; Gillman v. Stern, 114
F.2d 28, 31 (2d Cir. 1940), cert. denied, 311 U.S. 718 (1941).
22
The 566 patent claims describe a process, not a machine.
The undisputed testimony was that by merely looking at
Budd's machine in operation it was not possible to ascer-
tain what process was being carried out. For example,
from a visual inspection it was not possible to ascertain
whether or not the machine was stretching or, if it was
stretching, at what rate. Nor was it possible to determine
the crystallinity of the PTFE resin being used, or the
temperatures being employed (A-11, A-12).
The Court of Appeals held that as a matter of law,
Budd’s use of the machine was not a public use of the
patented process. There was ‘tno evidence,"* the Court
said, that knowledge of the process was ‘‘accessible to the
publie’’ (A-12). Access by employees under a secrecy
obligation does not convert an otherwise secret use into
a public use.* Therefore, in concluding that the Budd
“ork was prior art, ‘‘[t]he district court ... erred as a
matter of law in applying the statute’’ (A-13).
Contrary to Garlock’s assertion, the Court of Appeals
did not substitute its own findings of fact for those of
the district court. The Court of Appeals accepted the
finding of access to the machine by Budd’s employees, the
only legally relevant finding, but held that as a matter of
law it did not create a ‘‘public use”’ within the meaning
of 35 U.S.C. £102.
* This is settled law. Sec, eg.. Gillman v. Stern, 114 F.2d 28,
30-31 (2d Cir. 1940), cert. denied, 311 U.S. 718 (1941). The
display of Budd's machine to several DuPont emplovees was legally
irrelevant on the issue of “public” versus “secret” use because there
was no evidence in the record as to when that display occurred, i.e.
before or after the critical date (A-1"
23
Il. GARLOCK HAS NOT SHOWN THAT THIS
CASE IS PART OF A PATTERN WHERE
THE COURT OF APPEALS HAS ALLEGEDLY
FAILED TO APPLY RULE 52(a)
As demonstrated in detail supra, the Court of Appeals
in fact applied Rule 52(a) in this case, precisely in ac-
cordance with Pullman-Standard v. Swint, 456 U.S. 273
(1982). While Garlock attempts to paint a picture of a
court run amok, the facts shew that the Court of Appeals
for the Federal Cireuit operates well within the norm.
This is manifest from the Federal Judicial Workload
Statisiics for the period ending March 31, 1984, which
reveals that the Federal Circuit reversed only 9.9% of the
time (15.5% in appeals from district courts) (page 1),
whereas the average reversal rate in civil cases for all
circuit courts of appeals was 18.2% (Jd. at page A-2).
At page 15 of its petition Garlock attempts to bolster
its contention that the Court of Appeals for the Federal
Circuit routinely disregards Rule 52(a) by pointing to
dissents in other cases decided by that Court. Garlock’s
simplistic rationale appears to be that:
(1) In other decisions the dissent allegedly criticized
the majority for failing to follow Rule 52(a).
(2) Judge Davis dissented in part in this case.
(3) THEREFORE, in the instant case the majority did not
follow Rule 52(a).
The fallacy, of course, is that in his partial dissent in
this case Judge Davis made - reference whatsoever to
24
Rule 52(a). See A-36 to A-41. Rather, Judge Davis dis-
sented in part because he disagreed with the majority’s
legal conclusion concerning the non-obviousness of claims
3 and 19 of the 566 patent.
The majority sustains the validity of claims 3 and 19
of the ’566 patent (the claims also involved in appel-
lant’s suit for infringement) which are dependent on
invalid claim 1. Because of the invalidity of claim 1
the only possible novelty in claim 3 would be the
requirement that the rate of stretch would be about
100% per second, and the possible novelty of claim 19
would be that the final length would be greater than
about five times the original length. My position is
that both of these added elements, if novel, would have
been obvious to persons of ordinary skill in the art.
(A-40)
Finally, Garlock seeks to shore up its argument by
pointing to five Court of Appeals decisions in which peti-
tions for certiorari have been or are being filed, and which
allegedly raise ‘‘questions substantially the same as those
presented here’’ (p.6, n.3). As we now show, those cases
bear no relationship to this one.
In two of the five cases, TP Laboratories, Inc. v. Profes-
sional Positioners, Inc., 724 F.2d 965 (Fed. Cir. 1984) and
White v. Jeffrey Miming Machinery Co., 723 F.2d 1553
(Fed. Cir. 1983), questions of jury practice are involved, not
the application of Rule 52(a). In one of the five cases,
Bagmsky v. United States, 697 F.2d 1070 (Fed. Cir. 1983),
certiorari has already been denied. 1048. Ct. 423 (1983).
In Rohm and Haas Co. v. Crystal Chemical Co., 722 F.2d
1556 (Fed. Cir. 1983), the Court of Appeals invalidated a
25
patent for fraud on the Patent and Trademark Office
(‘‘PTO’’) and, in a later decision denying attorneys’ fees,
stated that its opinion ‘‘breaks new ground on the subject
of fraud in the PTO and sets new standards in this area of
the law.’’ In its petition for certiorari, Rohm and Haas
argued that this novel rule of law should not have been
applied retroactively. In the instant case, the Court of
Appeals did not break any new legal ground. Rather, it
reversed in part because the district court repeatedly failed
to apply well established principles of patent law.
In the fifth case, RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440 (Fed. Cir. 1984), the dissent
disagreed with the majority’s holding that as a matter of
law, anticipation of a means-plus-function claim element
cannot be based upon an element in a reference that per-
forms a different but allegedly equivalent function. In
light of the disagreement, the dissent would have applied
Rule 52(a)’s clearly erroneous test to affirm the district
court. As brought out supra, the partial dissent in the
instant case never even mentions Rule 52(a). See A-36 to
A-41. Rather, Judge Davis dissented because he disagreed
with the majority’s legal conclusion of non-obviousness
(A-40).*
* In Jones v. Hardy, 727 F.2d 1524 (Fed. Cir. 1983), there was
no dispute over the applicability of Rule 52(a). Instead, the dis-
sent questioned whether the majority was correct in holding that
certain facts were uncontradicted in the record. No such question
appears in the dissent in the instant case. In the other dissent cited
by Garlock (p. 20, n.15), the dissenting opinion made no reference to
Rule 52(a). See Hughes Aircraft Co. v. United States, 717 F.2d
1351 (Fed. Cir. 1983).
Conclusion
In this case the Court of Appeals applied Rule 52(a),
and did so in accordance with Pullman-Standard v. Swint,
456 U.S. 273 (1982). It set aside none of the district court’s
findings as clearly erroneous. It affirmed the district court’s
holding that claims 1 and 17 of the 566 patent were invalid.
It affirmed the district court’s holding that Gore had not
committed fraud on the Patent Office.
The Court of Appeals reversed the district court’s hold-
ing that certain patent claims were invalid because the dis-
trict court had committed numerous legal errors. Under
Puliman-Standard v. Swint, 456 U.S. 273, 287 (1982), where
‘‘a District Court’s findings rest on an erroneous view of
the law, they may be set aside on that basis.’’ Remand to
the district court was unnecessary here because, when the
proper legal standards were applied, the record permitted
only one conclusion, i.e. that Garlock had failed to sustain its
burden of proving the patents invalid. This, too, was
strictly in accord with Pullman-Standard v. Swint, Id. at
292.
Garlock’s petition raises no issue which warrants grant-
ing certiorari. Nor has Garlock shown that this case is part
of a pattern where the Court of Appeals has allegedly failed
to apply Rule 52(a). What Garlock really seeks is to have
this Court sanction and reinstate the numerous errors of
law cammitted by the district court and corrected by the
Court of Appeals. That is not a basis for granting certior-
ari in this or in any other case.
27
Directly in point is Mr. Justice White’s concurring
opinion in Inwood Laboratories, Inc. v. Ives Laboratories,
Inc., 456 U.S. 844 (1982) :
Furthermore, if the issue presented in the petition for
certiorari had been whether the clearly erroneous
standard, although properly invoked, was erroneously
applied, it is doubtful in my mind that this fact-bound
issue would have warranted certiorari.
It is respectfully urged that Garlock’s petition be denied.
Respectfully submitted,
Davin H. Prerrer, Counsel of Record
J. Ropert DatLey
JANET Dore
Moreoan, Finnecan, Prive, Fotry & Lee
Counsel For Respondent
345 Park Avenue
New York, New York 10154
(212) 758-4800
Of Counsel:
JoHN 8S, CAMPBELL
W.L. Gore & AssociatEs, Inc.
. 95 Paper Mill Road
Newark, Delaware 19714
August 30, 1984
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.