# Reply Brief — Chas. S. Tanner Co. v. Air Products & Chemicals, Inc.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385010_3195%3A4

## Record

- **Collection:** Supreme Court brief
- **Document type:** Reply Brief
- **Published:** January 1, 1985
- **Citation:** 469 U.S. 1159

## Text

Porn.
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No. 84-652"

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JAN 4 1585

* cee,NDER L STEVAS,
4 ALEAANL soa

t ClLerd
In THE

+

Supreme Court of the United States

October Term, 1984

CHAS. S. TANNER CO. and
NATIONAL STARCH AND CHEMICAL
CORPORATION,

Petitioners,
Vv.
AIR PRODUCTS AND CHEMICALS, INC.,

Respondent.

ON WRIT OF CERTIORARI TO
fHE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

REPLY BRIEF IN SUPPORT
OF
PETITION FOR CERTIORARI

GEOFFREY C. HAZARD, JR.

HERBERT F. SCHWARTZ
New Haven, Connecticut

875 Third Avenue

New York, New York 10022
Tel.: (212) 715-0600

Attorneys for Petitioners
Of Counsel:

FisH & NEAVE
875 Third Avenue

New York, New York 10022
Tel.: (212) 715-0600

January 4, 1985

IV.

TABLE OF CONTENTS

INTRODUCTIC

PEO ace raag seed Uhedpalansesansaaseaocabasatiukvuscsatanhs

Ap’Ss BRIEF CONFIRMS THAT THIS COURT SHOULD

EXERCISE

Ce

Its SUPERVISORY POWER IN’ THIS

THE QUESTION PRESENTED For’ Review. Is

PROPERLY

CONCLUSION

oe eS 65 Ty eee

PAGE
|

TABLE OF AUTHORITIES

Cases
Burton v. G.A.C. Finance Co., 525 F.2d 961 (5 Cir.

Deere & Co. vy. International Harvester Co., 658 F.2d
I cas os phaueuseuanniccaeocssecces

Frederic P. Wiedersum Assoc. v. Nat. Homes Const., 540
ne caupenaccseechavunsacs

Freifield v. Hennessy, 353 F.2d 97 (3 Cir. 1965) .0.00000......
Glasser v. United States, 315 U.S. 60 (1942)...
Gomes v. Williams, 420 F.2d 1364 (10 Cir. 1970) ...........
Haller v. Robbins, 409 F.2d 857 (1 Cir. 1969) ..0.000000.0..
Los Angeles Brush Corp. v. James, 272 U.S. 701 (1927).
McCarthy v. United States, 394 U.S. 459 (1969) 0.00.00...
Morgan v. United States, 304 U.S. 1 (1938)...

Photovest Corp. v. Fotomat Corp., 606 F.2d 704 (7 Cir.
a a coe ichenteepiionnds Wnetereaesierenunne

Rinehart v. Brewer, 561 F.2d 126 (8 Cir. 1977) 0.0.00...

Sheppard Federal Credit Union vy. Palmer, 408 F.2d
os shunicens cand vaudhensneaneseoedbeseds

Thiel v. Southern Pacific Co., 328 U.S. 217 (1946) .........

TWM Manufacturing Co., Inc. v. Dura Corp., 213
USPQ 423 (E.D. Mich. 1981), affirmed in pertinent
OP ERE FACIE, FID DP iccccrscnccscnscesencncescncctenne

Uniied States Ex Rel. Ross v. Franzen, 668 F.2d 933 (7
eee To swanuinuperenanvakiceieccévensane

U.S. Lines v. Federal Maritime Commission, 584 F.2d
I I su niudvesaunusauayeasdvensanawenceanuve

Watkins v. Grover, 508 F.2d 920 (9 Cir. 1974) oo...
Other Authorities

United States Code
cok di scseacl<astesuccsesreasncesceuuaves

Federal Rules of Civil Procedure
Tee ucutunbacke
cca caaiowaccans sce Saaiunboniaaa auaus
Rule 46

PAG

E

.4n.1

No. 84-652

IN THE

Supreme Court of the United States

October Term, 1984

Cuas. S. TANNER Co. and
NATIONAL STARCH AND CHEMICAL

CORPORATION,
Petitioners,
Vv.
AIR PRODUCTS AND CHEMICALS, INC.,
Respondent.

ON WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

REPLY BRIEF IN SUPPORT
OF PETITION FOR CERTIORARI

I. INTRODUCTION

AP has failed to come to grips with the reasons for
granting certiorari in this case. All written submissions, 1.e.,
trial briefs and post-trial proposed findings of fact and con-
clusions of law were ex parte. AP does not dispute that
reception of ex parte submissions, by the District Court conflicts
with the practice in most other district courts, with the law of
federal procedure and with the letter of the Code of Judicial
Conduct. AP defends the procedure below as (a) sanctioned
by the Federal Rules of Civil Procedure and, (b) not an
infringement of National’s mght to adequate notice and

opportunity to be heard. AP cites no authority in point. Its
brief therefore only highlights the significance of the instant
petition for the integrity of federal civil justice.

AP asserts that the question presented is not properly
before this Court because National made no proper objection in
the trial Court, and was in any event not prejudiced by the trial
Court’s procedures. But the record shows that National’s trial
counsel sought exchange of trial and post-trial submissions and
was surprised by the local rule and practice which precluded
such exchanges (Petition 9-14). National therefore did not
surrender the right that is the subject of the writ sought in this
Court.

AP also argues that the demand for attorney fees in its
complaint gave National adequate notice of that claim’s being
at issue in the trial. It contends that the predicate for this claim
is found in Paragraph 9 of the complaint, which alleges that the
infringement was “deliberate and willful”. But the predicate
for an award of attorney fees is not “deliberate and willful”
conduct as such; it is an “exceptional case”, which may or may
not coincide with the infringement being “deliberate and
wiliful” (Petition 15). The “exceptional case” issue under
§ 285 was not identified as an issue to be tried in the bifurcated
liability trial. National never knew the issue was to be tried.
National’s introduction of some evidence on the issue of
“deliberate and willful” infringement therefore does not, as AP
argues, indicate that National understood that the attorney fees
issue was at stake. And even though some evidence was
admitted on “deliberate and willful” infringement, the District
Court’s extensive opinion does not contain a single finding on
this issue (A 7-84).

AP has also failed to come to grips with the injustice that is
likely to occur—-and which did occur here—when a party
asserting a patent or other property right is permitted to submit
ex parte arguments to the court. AP does not dispute that, in
order to avoid prior art introduced at trial that would invalidate
the claims of the °388 patent, it rewrote those patent claims in

its ex parte submissions by “reading” limitations into those
claims ( Petition 17-18). AP also does not dispute that National
never knew what AP’s rewritten claims were until the District
Court issued its opinion.

ill. AP’S BRIEF CONFIRMS THAT THIS COURT
SHOULD EXERCISE ITS SUPERVISORY POWER IN
THIS CASE

AP urges that the ex parte procedure below is sanctioned
by F.R.Civ.P. Rules 5(a) and 16(c)(5) (Opposition 10-12).
That erroneous reading of these two rules confirms the impor-
tance of granting certiorari in this case. As this Court has said
in McCarthy v. United States, 394 U.S. 459, 463 (1969):

“Because of the importance of the proper construction
of Rule 11 to the administration of criminal law in the
federal courts, and because of a conflict in the courts of
appeals over the effect of a district court’s failure to follow
the provisions of the Rule, we granted certiorari” ( foot-
notes omitted ).

Accord, e.g.. Thiel v. Southern Pacific Co., 328 U.S. 217, 225
(1946): Los Angeles Brush Corp. v. James, 272 U.S. 701.
706-07 (1927).

AP criticizes National for deliberately omitting “material
portions” of F.R.Civ.P. Rule 16(c)(5) (Opposition +1). AP
asserts that these portions leave it “to the consideration of the
parties and to the discretion of the trial court” whether briefs
submitted to the trial Court should be exchanged ( Opposition
11). This is simply not so. Rule 16(¢j)(5) makes it dis-
cretionary whether briefs are to be submitted at all. Once the
court decides to have trial briefs, the plain language and
purpose of the rule calls for “exchanging” them—not submit-
ting them ex parte ( Petition 13-14).

AP misreads Photovest Corp. vy. Fotomat Corp., 606 F.2d

704 (7 Cir. 1979), as supporting its interpretation of Rule 5(a).
Photovest held that delay in exchange of trial submissions was

4

not prejudicial in those circumstances because “| t}he procedure
in the present case clearly provided for service on all parties
since it always contemplated exchange at the close of trial.” 606
F.2d at 709 (emphasis supplied). Photovest ( Petition 12-13),
which struck down a local rule permitting delayed exchange of
trial briefs in favor of immediate exchange, plainly supports the
result National seeks here.'

AP attempts io distinguish Morgan v. United States, 304
U.S. 1 (1938) (Opposition 13). Morgan, as quoted on pages
11-12 of the petition, speaks for itself.

The evils of ex parte communications have been noted in
many other cases. See, e.g.. U.S. Lines v. Federal Maritime
Commission, 584 F.2d 519, 542 (D.C. Cir. 1978):

“Moreover, even if the detailed contents of the ex parte
contacts were revealed by the agency on judicial review,
we would still be deprived of the benefit of an adversarial
discussion among the parties. Our cases, discussed earlier
with respect to blind references, make clear the critical role
of adversarial comment in ensuring proper functioning of
agency decisionmaking and effective judicial review. Such
comment serves not only to clarify the issues and positions
being considered at the agency level, but also to ensure
that factual questions underlying the agency's decision are
not raised, by necessity, for the first time on judicial

”

review.
Rinehart v. Brewer, 561 F.2d 126, 132 (8 Cir. 1977):

“Judge Brannon’s undisclosed ex parte inquiry con-
stituted improper conduct which denied Rinehart his due
process right to a disinterested and impartial tribunal. See
ABA Standards Relating to The Function of the Trial
Judge § 1.6 (Approved Draft, 1972); Code of Juicial
Conduct, Canon 3A(4) ( Final Draft, 1972).”

’ See in this connection Burton v. G.A.C. Finance Co., $25 F.2d 961
(5 Cir. 1976), in which the court held that failure to serve a counsel's
letter to the court violated F.R.Civ.P. Rule S(a)

5

Haller v. Robbins, 409 F.2d 857, 861 & n.4 (1 Cir. 1969):

“This [ex parte communication] is not merely a matter of
ethics [see Canon 3, ABA Canons of Professional Ethics:
Canon 17, A.B.A. Canons of Judicial Ethics], it is part of a
defendant's right to due process and effective representa-
tion” ( brackets, second instance, n.4 in original ).

Il. THE QUESTION PRESENTED FOR REVIEW IS
PROPERLY BEFORE THIS COURT

AP says that National waived its objection because it
“assented to the local briefing practices” and “agreed to submit
proposed findings of fact and conclusions of law which were not
to be exchanged” ( Opposition 3). That is not true (see Petition
14).2

In the first place, the ex parte submissions were prescribed
by local rule and practice. Court and counsel fully recognized
the existence of that rule and practice. It therefore was
unnecessary and would have been inappropriate for National to
say more than ut did to the trial Court. F.R.Civ.P. Rule 46
states:

“(1 }t is sufficient that a party... makes known to the court

the action which he desires the court to take... .”

In the second place, as said in United States Ex Rel. Ross
v. Franzen, 668 F.2d 933, 941 (7 Cir. 1982):

“The waiver © a constitutional right must be ‘an
intentional relinquishment or abandonment of a known
right.” Johnson v. Zerbst, supra, 304 U.S. at 464, 58 S.Ct.
at 1023; see also Brookhart, supra, 384 US. at 4, 86 S.Ct. at
1247. The mere failure of counsel to object to a court
ruling, which follows on the heels of counsel's express
indication of an intent not to surrender the right in
question, clearly does not rise to this high standard,

2 The authontes which AP relies on (Opposition 6), relating to
arguments raised on appeal for the first ume, are simply inapplicable
here.

6

particularly since * “courts indulge every reasonable pre-
sumption against waiver” of fundamental constitutional
rights.” Johnson, supra, 304 US. at 464, 58 S.Ct. 1023
(citation omitted ).”

Accord Glasser v. United States, 315 U.S. 60, 71 (1942).

In any event, the issue raised by the present petition ts
sufficiently important to warrant review. Even if there is a
question whether a proper objection was made, the matter at
issue is fundamental error. As said in Freifield v. Hennessy, 353
F.2d 97, 99 (3 Cir. 1965):

“The defendant argues that since the plaintiff inter-
posed no objection to the court's instructions he may not
now complain of error therein. This argument ts in accord
with the general rule which ts subject to exception. Hormel!
v. Helvering, 312 U.S. 552, 557, 558, 61 S.Ct. 719, 85
L.Ed. 1037 (1941); Mazer v. Lipschutz, 327 F.2d 42, 52
(3rd Cir. 1964); McNello v. John B. Kelly, Inc., 283 F.2d
96, 101, 102 (3rd Cir. 1960); Callwood v. Callwood, 233
F.2d 784, 788 (3rd Cir. 1956). Where it is apparent on the
face of the record that counsel failed to object to a
fundamental and highly prejudicial error, and this failure
may have resulted in a miscarriage of justice, the error
must be noticed and rectified. Ibid. This exception to the
general rule is applicable to the instant case.”

Accord, e.g., Frederic P. Wiedersum Assoc. v. Nat. Homes
Const., 540 F.2d 62, 66 (2 Cir. 1976): Watkins v. Grover, 5O8
F.2d 920, 921 (9 Cir. 1974): Gomes v. Williams, 420 F.2d 1364,
1367 (10 Cir. 1970); Sheppard Federal Credit Union v. Palmer,
408 F.2d 1369, 1371 (5C, 1969).

AP’s final argument is that National “specifically offered
evidence on the very issue it now says it did not know was being
tried” (Opposition 5). Even assuming arguendo that “deliber-
ate and willful” infringement was at issue in the liability trial, as
AP urges, that did not put attorney fees into issue. The
standard for “deliberate and willful” infringement is different

from that of “exceptional case” for attorney fees. TWM
Manufacturing Co., Inc. v. Dura Corp., 213 USPQ 423, 428
(E.D.Mich. 1981), affirmed in pertinent part 722 F.2d 1261 (6
Cir. 1983), cited in National’s petition ( Petition 15) states this
point clearly:

“In this case I have found willful infringement. I have
certainly found misconduct as a matter of fact and law by
Dura Corporation and its agents. However, | am not
prepared to say that I can go as far to say that there has
been bad faith action, that the Dura Corporation has acted
in such bad faith as to authorize attorneys’ fees, so I do not
think the standard of 35 USC 284 [sic] as set forth in
Deyerle v. Wright Manufacturing Company has been met.
This does not mean, however, that I cannot consider
enhanced damages because as | read the law, the standard
for enhanced damages up to treble damages is not as
stringent a standard as the standard which is set forth for
the granting of the actual attorney fees” (emphasis supp-
lied ).

Deere & Co. vy. International Harvester Co., 658 F.2d 1137,
1147-48 (7 Cir. 1981) (Petition 16), explicates the point:

“Section 285 provides that an award of attorney’s fees may
be made in exceptional cases. The purpose of the award is
to prevent the gross injustice of having a prevailing party
bear the cost of litigation in a suit where the conduct of the
losing party is clearly inequitable. Stanford Research Co.
v. Eberhard Faber Pen and Pencil Co., 379 F.2d 512 (7th
Cir. 1967). This court has interpreted the statutory
language to require ‘an unambiguous showing of extraor-
dinary misconduct.” Airtex Corp. v. Shelley Radiant Ceiling
Co., 536 F.2d 145, 155 (7th Cir. 1976). Examples of
conduct held to be extraordinary include repeated failure
to respond to discovery requests, L. F. Strassheim Co. v.
Gold Medal Folding Furniture Co., 477 F.2d 818 (7th Cir.
1973), fraud on the patent office, Shelco, Inc. v. Dow

Chemical Co., 466 F.2d 613 (7th Cir.), cert. denied, 409
U.S. 876, 93 S.Ct. 125, 34 L.Ed.2d 129 (1972), and
unclean hands in obtaining the patent, Timely Products
Corp. v. Arron, 523 F.2d 288 (2d Cir. 1975)” (footnote
omitted ).

National still does not know what arguments were pre-
sented to the trial Court to persuade it to award AP attorney
fees which may amount to more than $1 million. Together with
the fact that the trial Court found against National on the issues
of patentability, enforceability, and infringement on arguments
that National never had the opportunity to meet, it is manifest
that National suffered from the ex parte communications of
which it complains.

IV. CONCLUSION

AP’s brief confirms that a writ of certiorari should issue.
Respectfully submitted,

GEOFFREY C. HAZARD, JR. HERBERT F. SCHWARTZ

New Haven, Connecticut 875 Third Avenue
New York, New York 10022
Tel.: (212) 715-9600

Attorneys for Petitioners
Of Counsel:

FisH & NEAVE

875 Third Avenue

New York, New York 10022
Tel.: (212) 715-0600

January 4, 1985

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385010_3195%3A4. Public record. Not legal advice.