Petition — Kimberly-Clark Corp. v. Kalman

298 a2 Office - Supreme Court, U.S.

S35,' 0164 FILED

DEC 16 1983

In The

Supreme Court of the nike ats —

—fi>p

_—

October Term, 1983

KIMBERLY-CLARK CORPORATION,

Petitioner,

VS.

PETER GABOR KALMAN,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE UNITED

STATES COURT OF APPEALS FOR THE FEDERAL

CIRCUIT

LEONARD J. SANTISI

CURTIS, MORRIS & SAFFORD, P.C.

Attorneys for Petitioner

530 Fifth Avenue

New York, New York 10036

(212) 840-3333

*NJ (201) 257-6850°NY (212) 840-9494°PA (215) 563-5587

MA (617) 542-1114*DC (202) 783-7288°USA (800) 221-0008

QUESTION PRESENTED FOR REVIEW

Whether the Court of Appeals for the Federal Circuit, now

the sole court of appeals in patent infringement actions, correctly

followed the holding of this Court in Graham v. John Deere Co.,

383 U.S. 1 (1966) by now mandating that a determination of

unobviousness ufider 35 U.S.C. §103 must include, as a primary

factor, an evaluation of what this Court has termed ‘‘secondary

considerations’’ or ‘‘subtests’’ of unobviousness, even where the

claimed invention resides in a combination of steps or elements

which are otherwise admittedly obvious in view of the prior art.

PARTIES BELOW

Plaintiff-respondent in this case is Peter Gabor Kalman.

Defendant-petitioner is Kimberly-Clark Corporation.

Pursuant to Rule 28.1 of this Court, petitioner Kimberly-

Clark Corporation states that it has no parent companies, and

that it has the following subsidiaries and affiliates (other than

wholly owned subsidiaries):

Kimberly-Clark Corporation owns a majority interest in

Neenah and Menasha Water Power Company and owns an interest

in the following foreign affiliates: Kimberly-Clark de Centro

America, S.A.; Kimberly-Clark Far East Pte. Limited; Kimberly-

Clark International, S.A.; Kimberly-Clark Philippines, Inc.;

Kimberly-Clark Thailand Limited; L.T.R. Industries, S.A.; Spruce

Falls Power and Paper Company, Limited; YuHan-Kimberly,

Limited; Carlton Paper Corporation Limited; Colombiana

Kimberly S.A.; Colombiana Universal de Papeles S.A.; Jujo

Kimberly K.K.; K.C.S.A. Holdings (Proprietary) Limited;

Kimberly-Clark Australia Pty. Limited; Kimberly-Clark Malaysia;

Kimberly-Clark de Mexico S.A. de C.V.; and Suzano Kimberly

Industria e Comercio Ltda.

iii

TABLE OF CONTENTS

Page

Questions Presented for Review .................000055 i

Aids 5 sas etine hes ss405060ssan@eRbe sss ii

ek sw eaves de eueu ne 64d0an Retna es iii

SS 5a cris iva sieh sinus wae 000 RWasw ape bre's iv

EE ere I AVR a Ate a I Gd 2

cla the cit'e Gis ruc vabe shank heads hoe emcees 2

EE an es bawks saciek cab eh bbe eehaumaion’ 2

a. co 4 54 hv ckedettesnhoanbeghesce- 3

Davis SENG vac ening eA Capeeeehishsa ce nakeecemes 3

B. Facts Relevant To The Issues Presented For Review

LLEachch Gwe chibn sek caeebadatrekene ben aemue 3

1. The Technology Involved .................. 3

2. The Kalman Patent Disclosure.............. 4

3. The Prior Art Relied On To Show That The

Claimed Invention Was Obvious............ 5

Sf Serre rer F 5

iv

Contents

Page

‘Se: £’.. S.-i ier 8

4. The Device Found To Infringe ............. 9

5. The Obviousness Argument Advanced Below. 9

Reneons Par Graiiinn Tie Wie oi ccc cc taccccccsesetcs 15

I. The CAFC’s reliance on secondary considerations to

salvage an otherwise obvious invention is contrary to

clear holdings of this Court.................000- 15

II. The regional courts of appeals had uniformly properly

followed the decisions of this Court. ............ 19

Ill. The Need For Review By This Court............ 21

ro. clues oie daees Epa ane at ua eee Rivcawion 26

TABLE OF CITATIONS

Cases Cited:

Air Products and Chemicals, Inc. v. Chas. S. Tanner Co.,

—___. F. Supp. —___., 219 USPQ 223 (D.S.C. 1983) .. 21

Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp.,

re > Gee GEE 6c0cccbbntesestscess ean 16

American Seating Co. v. National Seating Co., 586 F.2d 611

(6th Cir.), cert. denied, 441 U.S. 907 (1978) ........ 20

Contents

Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396

Page

Shs Se Pac actcivtessbccuccnadventas 16, 19, 22, 23

Ashiand Oil, Inc. v. Delta Oil Products Corp., 685 F.2d 175

(7th Cir. 1982), cert. denied, ___ U.S. __, 103 S. Ct.

ED: i 5% ob ancy cee babe 3. coe oles wae

Bristol Locknut Co. v. SPS Technologies, Inc., 677 F.2d 1277

Se CL) MERE, o.s'ncd baicn ulacumuioeiawralan sda ewenes

Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740

EE: ME dick 5 wig Nera-eins gulls Geeee meus eae

Cathodic Protection Service v. American Smelting Refining

Co., 594 F.2d 499 (Sth Cir.), cert. denied, 444 U.S. 965

RG hci on: Kis tan a. uen.o bio u a'o Oma e cous eee ae

Dann v. Johnston, 425 U.S. 219 (1976) ................

Deere & Co. v. Hesston Corp., 593 F.2d 956 (10th Cir.), cert.

ee. ere ee

Deere & Co. v. Sperry Rand Corporation, 513 F.2d 1131 (9th

Cir.), cert. denied, 423 U.S. 914 (1975) ............

Deforest Radio Co. v. General Electric Co., 283 U.S. 664

DE ick > 4 od unc ahdees sdb eeektatu ocean

Digitronics Corp. v. New York Racing Association, Inc., 553

F.2d 740 (2d Cir.), cert. denied, sub. nom., Amperex

Electronics Corp. v. New York Racing Association, Inc.,

ee: GD GE ER kn 0p i.s< cebaneae sc kcbuumaabuesne 19, 21

20

20

20 ,

16

20

20

16

vi

Contents

Page

Dow Chemical Co. v. Halliburton Oil Well Cementing Co.,

ED COMED obnvcts tuanebatesdcgeenspes ee 16

Eltra Corp. v. Basic, Inc., 599 F.2d 745 (6th Cir.), cert. denied,

9 | \ LR rn ore 20

Environmental Designs, Ltd. v. Union Oil Co. of California,

ge ke | rer ras oe 17

Exer-Genie, Inc. v. McDonald, 453 F.2d 132 (9th Cir. 1971),

core. Gomes, 405 U.S. 1075 (ISTE) occ ccnccevccssces 20

Frank B. Killian & Co. v. Latex Corp., 188 F.2d 940 (2d Cir.),

oust. Gamied, 342 U.S. 061, (1951)... cccccccsceces 24

Graham v. John Deere Co., 383 U.S. 1 (1966)..........

Aa aa wis, Gia Sue o- 0s w a'e i, 3, 10, 15, 16, 18, 19, 23, 24

Great Atlantic & Pacific Tea Co. v. Supermarket Equipment

en Sew Wee. O67 CIDSDD o. cchcctees wis 16, 18, 19, 23

Hotchkiss v. Greenwood, 11 How. 248 (1850)........... 15

In re Fielder, 471 F.2d 640 (CCPA 1973) ............. 19, 22

International Tel. & Tel. Corp. v. Raychem Corp., 538 F.2d

453 (ist Cir.), cert. denied, 429 U.S. 886 (1976)..... 19

Kansas Jack, Inc. v. Kuhn, ___ F.2d ___, 219 USPQ 857

i. ovccna eeeosakererasaabeedeanee 18

Karch v. United States, 568 F.2d 722 (Ct. Cl. 1977), cert.

tes: Se UB. DEG CITI on ccnans ncvectcedetea 19

vii

Contents

Page

Kemode Mfg. Co. v. United States, 347 F.2d 315 (Ct. Cl. 1965)

Lee Blacksmith, Inc. v. Lindsay Bros., Inc., 605 F.2d 341

Ch EE ngs din ku DECK Od ah bmakaD Na aew Rene 20

May v. American Southwest Waterbed Distributors, Inc., 715

Te Gs GGON. DODD osc cacti bvenndeteccsacuaes 20

Panduit Corporation v. Burndy Corporation, 517 F.2d 535

(7th Cir.), cert. denied, 423 U.S. 987 (1975) ........ 20

Paramount Publix Corp. v. American Tri-Ergon Corp., 294

ID ig 06 b 4.6 004 Sac nan dee eeens bebaeawn 16

Parker v. Motorola, Inc., 524 F.2d 518 (Sth Cir. 1975), cert.

ee. tae OS, Ee CROMER . sc ce es ceborcteecdaunes 20

Philips Industries, Inc. v. State Stone & Mfg. Co., Inc.,

Re Bee gg | Be Ae -. | ee eeere nn 20

Plantronics, Inc. v. Roanwell Corp., 403 F. Supp. 138, aff’d

per curiam, 535 F.2d 1397 (2d Cir. 1976), cert. denied,

ee SH SP MED FID ven nivccicwasacee sosehewacen 20, 21

Reed Tool Co. v. Dresser Industries, Inc., 672 F.2d 523 (Sth

is MN LIN teria u t.a'o a awa nweiils tate baa ka ena ee 20

Republic Industries, Inc. v. Schlage Lock Co., 592 F.2d 963

SOU Es STE s-« 0 c0vonss sunsdstandcshaneeels 20

Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573 (Fed. Cir.

SUNT 4 6-00 4.0. p 0-8 6 000 0's hors bd oe 0400 hoe ee 17

viii

Contents

Page

Roanwell Corp. v. Plantronics, Inc., 429 U.S. 1004 (1977)

C hieaid anigs Coes ak bx A epee Rak Wee Galata 17

Sakraida v. Ag Pro, Inc., 425 U.S. 273 (i976)......... 16, 23

a Fae Ee ee Fe ee 24

Solder Removal v. ITC, 582 F.2d 628 (CCPA 1978)....18, 19

South Corporation v. United States, 690 F.2d 1368 (Fed. Cir.

SE Ss cane Wade ka bee’ SN vaaddna detest aenee eae 18

Stevenson v. ITC, 612 F.2d 546 (CCPA 1979) .......... 18

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir.

SE «5.5. daly o choad bie 0 sdeuputiesthviewta tees 18

Systematic Tool & Machine Co. v. Walter Kidde & Co., Inc.,

555 F.2d 342 (3rd Cir.), cert. denied, 434 U.S. 857 (1977)

Textile Machine Works v. Louis Hirsch Textile Machines, 302

EEF an Oe RE eae BY coh Peat RE et 16

Timely Products Corp. v. Arron, 523 F. 2d 288 (2d Cir. 1975)

Toledo Pressed Steel Co. v. Standard Parts, Inc., 307 U.S.

COE Mis a 0.c dc vicie Ce a Ch One dad ans cee 16

White v. Dunbar, 119 U.S. 47 (1886) ................. 9

ix

Contents

Page

Statutes Cited

BP USGL oo neces ccacccesduus saumeune ane 21

BO USC. GURSAE) 2.0.0 ows vcdccccesuussubeneuaen ae 2

28 U.S.C. GEZOSIRA) .... vcnnsssnduesaeseesnenneseueee 21

2B U.S. GESSRIAD . . «5 ic cios dec cncuaseueeeuseeneeee 3

29 U.S.C. SIGE 0 vc cicsssccnnsuwtusp oun es 13, 15

36 UBC. $008 «oo oie vincsvees ancuneeeee Lz @ 25

Federal Courts Improvement Act of 1982, §402 ........... 21

Rule Cited:

Rule 17, Supreme Court Ruts ....: siccstecaveeeeueauee 25

No.

In The

Supreme Court of the United States

October Term, 1983

KIMBERLY-CLARK CORPORATION,

Petitioner,

vs.

PETER GABOR KALMAN,

Respondent.

PETITION FOR WRIT OF CERTIORARI TO THE UNITED

STATES COURT OF APPEALS FOR THE FEDERAL

CIRCUIT

Petitioner, Kimberly-Clark Corporation, respectfully prays

that a writ of certiorari issue to review the judgment and opinion

of the United States Court of Appeals for the Federal Circuit

entered in this proceeding on July 19, 1983.

OPINIONS BELOW

The District Court opinion is reported at 561 F. Supp. 628

(E.D. Wis. 1982) and appears at A28 in the Appendix.' A prior

opinion of the District Court is reported at 215 USPQ 158 (E.D.

Wis. 1981) and appears at A46. The Court of Appeals opinion

is reported at 713 F.2d 760 (Fed. Cir. 1983) and appears at Al.

The Judgment of the Court of Appeals appears at A56 and the

Order of the Court of Appeals denying rehearing and rehearing

en banc appears at AS57.

JURISDICTION

The Judgment of the Court of Appeals for the Federal Circuit

was entered on July 19, 1983. A timely petition for rehearing and

rehearing en banc was denied on September 20, 1983, and this

petition for certiorari is being filed within 90 days of that date.

This Court’s jurisdiction is invoked under 28 U.S.C. §1254(1).

STATUTE INVOLVED

35 U.S.C. §103:

“Conditions for patentability; non-obvious subject

matter

A patent may not be obtained though the invention

is not identically disclosed or described as set forth

in section 102 of this title, if the differences between

the subject matter sought to be patented and the

1. The abbreviation ‘‘A’’ herein and throughout this petition refers to the

Appendix submitted separately herewith, the number following 1s the page of

the Appendix.

prior art are such that the subject matter as a whole

would have been obvious at the time the invention

was made to a person having ordinary skill in the

art to which said subject matter pertains.

Patentability shall not be negatived by the manner

in which the invention was made.’’

STATEMENT OF THE CASE

A. The Nature Of The Case And The Disposition Below

This is a patent infringement case initiated by respondent,

Peter Gabor Kalman (‘‘Kalman’’), against petitioner, Kimberly-

Clark Corporation (‘‘K-C’’). Kalman’s complaint charged K-C

with infringement of certain claims of his U.S. Patent No.

3,471,017 (hereinafter ‘‘the Kalman patent’’). Jurisdiction of the

District Court was invoked under 28 U.S.C. §1338(a).

After a bench trial, the District Court issued a Decision and

Order (A28) finding that all of the asserted claims of the Kalman

patent were valid and had been infringed by K-C. The Court of

Appeals for the Federal Circuit (‘““CAFC’’) affirmed.’

B. Facts Relevant To The Issues Presented For Review

1. The Technology Involved

The Kalman patent (A59) relates to a process and apparatus

2. The sole ground for affigmance challenged here was the CAFC's reliance

on evidence of such secondary considerations as commercial success and long-

fet need, in the face of testimonial admission of obviousness, to find the invention

unobvious and the patent valid in direct contradiction of this Court’s mandate

in Graham v. John Deere Co., 383 U.S. | (1966).

4

for filtering a heat-softened substance, such as a thermoplastic.’

In processing such plastic material the plastic is heated to a

flowable state in an extruder which forces the softened plastic

under pressure through a restricted opening or die where it may

be molded into a usable shape or formed into a film. Sometimes

it is desirable to interpose some type of filtering device in the

stream of heated plastic to remove undesired contaminents. These

filters typically include some type of mesh screen through which

the molten plastic is forced so that the screen catches and traps

contaminents. The Kalman patent discloses such a method and

apparatus for filtering thermoplastic material without requiring

an interruption in the extrusion process.

2. The Kalman Patent Disclosure

According to the Kalman patent, his invention is said to be

a filtering device having a main passage through which the heated

plastic material is forced to flow. A filter screen in the form of

a band or ribbon extends across the plastic flow passage. The

screen also passes through transverse slotted inlet and outlet ports

on each side of, and flanking, the main flow passage. The device

includes heaters to keep the plastic at an elevated temperature

(to melt or soften the plastic to a flowable state) but the

temperature at the outer portions of the filter inlet and outlet

ports is kept at a lower and cooler temperature so that the plastic

in these ports becomes more rigid. This rigid plastic within the

inlet and outlet ports, in essence a solidified plastic plug, acts

as self-replacing sealing plugs at the entry and exit points for the

filter ribbon.

During a filtering operation the heaters maintain the plastic

in the flow or main passage at high enough temperature so that

3. A “‘thermoplastic”’ is simply a material which becomes soft and flowable

on heating and solid when cooled.

the plastic material is in a soft and flowable state. However, the

inlet and outlet ports on each side of the main flow passage are

kept at about room temperature by flowing suitable coolant (such

as water) through channels next to these side ports. Because of

this cooling effect solid plugs of the plastic are formed near the

ends of the inlet and outlet side ports. These plastic plugs seal

in the filter screen at both sides and prevent its movement.

When a filter change is necessary, usually because

contaminents, such as bits of dirt, have clogged the screen, the

filter ribbon is moved through the filtering enclosure in steps by

periodically shutting off the cooling water and raising the

temperature of the sealing plugs in the ports. As the outer surface

of the substantially solid plastic plugs within the inlet and outlet

side ports gradually soften, the filter ribbon becomes free to move.

When the filter band moves, a clean portion of the filter screen

is placed across the flow passage. After the clean filter screen

is in place in the main flow passage, heating of the inlet and outlet

ports is discontinued and the cooling water supply is reestablished

to solidify the plugs within the inlet and outlet side ports and

stop further movement of the filter ribbon.

3. The Prior Art Relied On To Show That The Claimed

Invention Was Obvious

a. The Moziek Patent

The principal prior art reference relied upon is the Moziek

patent* (A65). The Moziek patent, just like the Kalman patent,

relates to an apparatus for extruding and filtering thermoplastic

material.

Moziek discloses a heated extruder to force softened plastic

into a filter device which includes a main flow passage (just like

4. U.S. Patent No. 3,112,525 issued December 3, 1963.

the flow passage in the Kalman patent) through which the softened

plastic material is forced to flow. The Moziek device shows use

of a slidable filter cartridge assembly positioned in a transverse

slot across the plastic flow passage. This slot is in the same

orientation as the slot for the filter band in the Kalman patent.

The Moziek device, just like the Kalman patent, also includes

side inlet and outlet ports at each end of the transverse slot. In

Moziek the filter screen element is in a cartridge assembly which

includes a framed perforated holder, a mesh filter screen and a

screen retainer (Fig. IV, A68).

The Moziek patent shows rotatable valves (Fig. III, A67) at

each end of the transverse slot at what are the ends of the inlet

and outlet ports. In one position the valves seal off the ends of

the slot and when the valves are rotated to a second position the

slot is completely open to allow insertion of a new filter screen

cartridge assembly in one side and removal of the clogged one

from the other side.

According to the Moziek patent, the rotating valves at each

end are kept closed with a cartridge filter screen assembly in place.

As plastic material is forced through the filter screen, the screen

eventually becomes clogged with contaminents and must be

replaced. The screen replacement is done without interrupting

continuous extrusion operations by opening up the valves at each

end and slowly pushing a new filter cartridge in and pushing the

dirty cartridge out.

When it is desired to effect a screen change, the Moziek patent

specifies (A72, Col. 5, 11. 66-75 to Col. 6, 11. 1-9) that:

**While thermoplastic material is being extruded,

the valve means 36a and 36b are opened by turning

the valve cores 50a and 50b 90° clockwise and

counter-clockwise respectively. A fresh cartridge

assembly (not shown) of the same construction as

the illustrated assembly 32 is then positioned within

one end of the slot 34 and brought into abutting

contact with one end of the clogged slidable

cartridge assembly 32. Force is then applied to the

fresh assembly by any suitable means (not shown),

such as a retractable ram, rod or similar device

in order to progressively push the fresh assembly

into the slot 34 and force the clogged assembly

32 beyond the chamber 26 where it can be readily

pulled out the other end of the slot 34 by manual

Or automatic means. It is preferable that the

replacement operation be performed at a rate such

that each increment of the fresh assembly is heated

by the temperature of the thermoplastic material

within the chamber 26 before being forced

therein.’’

The Moziek patent also discloses a construction for the

rotatable valves to provide additional cooling and this is explained

as follows (A71, Col. 3, 11. 73-75 to Col. 4, 11. 1-12):

‘*The tendency of most thermoplastic materials to

leak past the valve means is generally dependent

on the fluid viscosity of the thermoplastic material

at the temperature of extrusion. For materials of

low fluid viscosity, it has been found that /eakage

can be further reduced by supplemental cooling

of the valves. This may be most conveniently done

by hollowing or jacketing portions of the valve

means to permit circulation of a cooling medium.

One embodiment for supplementally cooling of

valve means 36a and 36b is shown in Fig. IV

wherein a valve core has been hollowed out and

equipped with intake and discharge nozzles 63a

and 63b respectively for the circulation of a cooling

medium. If supplemental cooling is desired, this

alternate valve core could be substituted for the

valve core 50a shown in Fig. III.’’ (emphasis

added).

Thus Moziek teaches that cooling of the valves can be done

to cool the plastic. This cooling, of course, will solidify the plastic

in the inlet and outlet ports to further reduce leakage, especially

when both ports are completely open during a filter screen change.’

b. The Garrahan Patent

The Garrahan patent* (A74) relates to a device for straining

scrap rubber and like materials (all thermoplastic materials) to

remove contaminents. To do this the Garrahan patent discloses

a straining head for attachment to the end of an extruder. The

strainer is provided with a main flow passage (like the one in

the Kalman patent) through which the softened material is forced

to flow. The strainer discharges in three directions but at each

discharge outlet guideways are formed to accommodate a long

filter which extends beyond the confines of the strainer head and

transverse to the flow path. In essence this long strainer passes

through side inlet and outlet ports in the same orientation as the

Kalman invention.

In operation, when the filter becomes clogged with

contaminents, the filter is moved until a fresh part of the filter

is in registry with the main flow path allowing the clogged filter

part to extend outside of the apparatus, so it can be cleaned. All

5. The Moziek patent (A71, Col. 3, 11. 64-68) states: ‘*The purpose of the

valve means 36a and 36b is to prevent excessive leakage during extrusion of

thermoplastic material, particularly on screen changes (when both valves are open]

and to eliminate partial disassembly of the unit before a screen change could

be made.’’ (emphasis added).

6. U.S. Patent No. 1,195,576 issued August 22, 1916.

of this is done while the extruder remains in operation so that

there is no interruption in the extrusion process while a clean part

of the filter is moved into the flow path.

4. The Device Found To Infringe

Like the Kalman and Moziek devices, the accused device has

a main flow passage for heated and softened plastic material to

flow. A transverse slot is provided and each end of the slot, on

either side of the flow passage, is cooled by forced air to solidify

the plastic in the slots. Instead of the filter band or ribbon of

the Kalman patent, the accused device uses a variation of the

Moziek slidable filter cartridge assembly in that a series of separate

but mechanically interlocked heavy metal filter cartridge assemblies

are used. A hydraulic ram pushes the interconnected filter plates

through and when a complete plate emerges from the exit slot

it is unhooked and removed for cleaning. A fresh clean plate is

then hooked on to the assembly at the inlet side (see for example

the representation at A6). Like the Moziek device the major

portion of the inlet and outlet ports cr slots is filled by the mass

of metal comprising the filter assembly. In fact the clearance

between the slot and the filter assembly is but .003 to .005 inches.

5. The Obviousness Argument Advanced Below

In both the District Court and the CAFC, K-C maintained

that the claimed Kalman invention at issue was obvious to one

of ordinary skill in the art within the meaning of 35 U.S.C. §103

in view of the teachings of the Moziek patent (A65) and the

Garrahan patent (A74).’

7. K-C also argued that if the Kalman claims were read broadly enough

to read on the accused device, then the scope of the claims for purposes of

determining validity should be equally as broad. This is true because a claim

is not a ‘‘nose of wax’’ to be twisted one way to determine validity and another

way to catch infringement. See White v. Dunbar, 119 U.S. 47 (1886).

10

K-C urged in both courts below that the mandate of Graham

v. John Deere Co., 383 U.S. | (1966) should be followed. In

Graham, this Court instructed that (1) the scope and content of

the prior art should be determined, (2) the differences between

the prior art and the claims at issue should be ascertained, and

(3) the level of ordinary skill in the art resolved. Against this

background, the obviousness or unobviousness of the claimed

subject matter is determined.

Adhering to Graham, K-C analyzed each element of the

claimed invention at issue for both courts and compared these

elements to the prior art. The following columnar presentation

compares the only two independent Kalman patent claims with

the scope and content of the prior art.

Claim 1 — The Process Claim

Claimed Recitation

A process for filtering a heat-

softened substance flowing

through a passage comprising

the steps of introducing a filter

band or ribbon

Scope and Content of the Prior

Art

The Moziek patent (A65)

discloses a process for filtering

a heat-softened substance

flowing through a passage,

chamber 26.

Moziek discloses a filter, the

assembly of a perforated holder

64, screen 66 and screen retainer

68 (Fig. V, A68) Kalman’s

expert witness conceded that the

Moziek filter is a band under the

dictionary definition of band

(A93).

by passing it through inlet and

outlet ports flanking said

passage so that a part of the

filter extends across said

passage,

forcing the substance through

the filter part to filter said

substance

whilst providing temperature

conditions at said inlet and outlet

ports resulting in the formation

within said ports of sealing plugs

of said substance of adequate

rigidity to prevent substantial

leakage at said ports,

and, when desired, effecting

movement of said filter through

said ports under conditions

providing for self-maintenance

of said sealing plugs to introduce

another part of said filter band

or ribbon into said passage.

11

The Moziek device in a screen

change mode with both valves

open define inlet and outlet ports

flanking the passage through

which the _ heat-softened

substance flows (A82-83, A90).

Moziek forces the thermoplastic

material through his filter

assembly because of the extruder

screw 14 (A72, col. 5, 11. 46-49).

Moziek’s alternative valve form

(A67, Fig. 4) having provision

to circulate a cooling medium

through the valves is described

as being to reduce leakage

(supra, pp. 7-8) Kalman’s

experts conceded sealing plugs

would be formed by this Moziek

construction (A84-85, A88-89)

and K-C’s expert also agreed

(A95-96).

Moziek in the screen change

mode vesponds to this recitation

when the alternative cooled valve

cores are used. Kalman’s expert

witness conceded Moziek teaches

continued circulation of the

cooling medium (A88).

12

Claim 18 — The Apparatus Claim

Claimed Recitation

A filter device for filtering a

heat-softened substance,

including a body defining a

passage through which said

substance can be caused to flow

and slotted inlet and outlet ports

flanking said passage

through which a filter in the

form of a band or ribbon is

passed and can be moved to

introduce different parts of said

filter across said passage

said ports being adapted for the

formation therein, in use, of

sealing plugs of the substance

being filtered permitting

movement of said filter through

said slots without substantial

leakage of said substance

Scope and Content of The Pricer

Art

The Moziek patent discloses a

device for filtering a

thermoplastic material which is

by definition a heat-softened

substance.

Moziek shows a casing 24

defining a chamber 26 through

which the _ heat-softened

substance is caused to flow

(A90-91, A99-100).

Moziek with valves 36a and 36b

open for a screen change

discloses this element (A90-91,

A99-100).

Moziek in a screen change mode

with both valves open responds

to this claim element, Moziek

patent A65, supra, pp. 6-7.

(A90-91, A99-100).

Moziek responds fully to this

recitation with the cooled valve

cores (see quote supra, pp. 7-8

A86-87, A99-100).

13

and means to. provide Moziek’s cooled valve

temperature conditions at said corresponds fully to this

ports to form said plugs. recitation (A86-87, A91-92,

A99-100).

The CAFC affirmed the District Court’s judgment that the

Moziek patent did not fully anticipate the claimed invention. The

CAFC, while noting the District Court incorrectly analyzed the

law of anticipation (A21), nevertheless held that one element of

the claimed invention was not disclosed in Moziek and this was

enough to prevent the patent claims from being held invalid as

fully anticipated under 35 U.S.C. §102.' The one claim element

the CAFC found lacking was that ‘‘Moziek makes no provision

for a band or ribbon or any length of filter.’’ (A21).

Kalman’s expert at trial conceded that under the definition

of band he established in the case, the Garrahan patent showed

a filter in the form of a band (A94). This is the only element

the CAFC found missing from the Moziek patent. Furthermore,

as noted in the CAFC decision (A26), Kalman’s expert also

acknowledged it would be obvious to combine the teaching of

the Garrahan patent with the Moziek device. That testimony was

as follows:

**Q. So, if I saw the device I had constructed

[a Moziek-type device] worked without leaking and

8. K-C urged below that the Moziek patent was a full anticipation of the

claimed Kalman invention at issue under 35 U.S.C. §102. The only element lacking

from the claimed invention was that in Moziek the same filter was not in both

the inlet port and the outlet port at the same time. This is true because Moziek

discloses the use of two cartridge filter assemblies, in the form of a band, the

fresh one entering the inlet, butting against the clogged filter in the device and

slowly pushing the clogged filter out the outlet port. K-C had argued that the

claimed Kalman invention did not require that the same filter band be in both

ports at the same time.

14

I saw Garrahan, could I say why can’t I use Mr.

Garrahan’s teaching with a device that Mr. Moziek

taught me to build, because I know it would

work? A. What is Mr. Garrahan’s teaching that

you’re postulating?

Q. Use of a long filter band that extends out

— out of my extruder pad or my screen changer

body. A. Ali right.

Q. Would that be a fair combination of the

tales of Garrahan and Moziek? A. Well,

yes, I’d say so. This is a slide changer, and that’s

a slide changer. Why not use this instead of that.

While apparently acknowledging this admission, the CAFC

determined that it was not an adequate basis for a finding of

obviousness and patent invalidity (A26). The CAFC relied instead

on ‘‘other evidence respecting the nonobviousness of Kalman’s

claimed invention’’ (A27) — the secondary considerations — and

found that these considerations tipped the scale to hold the claimed

subject matter unobvious and, hence, the patent valid.'°

9. This admission also establishes the level of ordinary skill in this art along

with the teachings of the Moziek and Garrahan patents as well as other patents

cited which showed recognition in the plastic working field that chilling hot plastic

results in a solidification of the plastic and that such solidified plastic could be

used as a seal against leakage.

10. The reliance in both courts below on the secondary consideration

evidence is somewhat anomalous in view of the District Court’s statement, after

an objection by K-C’s counsel, that ‘‘Well commercial success is — this case

is not going to be decided on the issue of commercial success, but it’s just one

of the more or less minor factors that I can consider.’’ (emphasis added, Tr. 214).

15

The CAFC also termed K-C’s proposed combination of

references a hypothetical combination of prior art features.''

However, this criticism rings hollow because Kalman’s expert

admitted that the combination of the Moziek and Garrahan patent

teachings was ‘“‘fair.’’ Thus, in reality, the CAFC was swayed

by the secondary consideration evidence of commercial success

and long-felt need and promoted these secondary objective

considerations to a level of sufficient importance to enable the

CAFC to override the clear testimonial admission of obviousness.

REASONS FOR GRANTING THE WRIT

The CAFC’s reliance on secondary considerations to salvage

an otherwise obvious invention is contrary to clear holdings of

this Court.

In Graham v. John Deere Co., 383 U.S. 1 (1966), this Court

for the first time had an opportunity to interpret newly enacted

Section 103 of the Patent Act of 1952. In Graham this Court

found that Section 103 was merely a codification of the standard

of invention enunciated in Hotchkiss v. Greenwood, 11 How.

248 (1850) and not a change in the law:

**We believe that this legislative history, as well

as other sources, /shows that the revision was not

intended by Congress to change the general level

of patentable invention. We conclude that the

11. This is a mischaracterization of K-C’s position below. K-C had advanced

only two arguments of invalidity, one being the claims were anticipated under

35 U.S.C. §102 by Moziek alone or obvious, under 35 U.S.C. §103, in view of

Moziek and Garrahan alone. The other prior art discussed by K-C was cited only

to show the state of the art to determine the level of ordinary skill in the art.

16

section [103] was intended merely as a codification

of judicial precedents embracing the Hotchkiss

condition, with congressional directions that

inquiries into the obviousness of the subject matter

sought to be patented are a prerequisite to

patentability.”’ 383 U.S. at 17.

The Graham Court then went further and noted that such

secondary considerations as commercial success, etc. ‘‘may have

relevancy.’’ In light of this Court’s determination that Congress

had not intended to change the general level of patentable

invention, it is apparent that earlier decisions of this Court may

be looked to for a determination of the circumstances under which

these ‘‘secondary considerations’’ are relevant.

Prior to Graham, this Court consistently held that secondary

considerations without invention will not make a patentable

invention. Deforest Radio Co. v. General Electric Co., 283 U.S.

664, 685 (1931); Textile Machine Works v. Louis Hirsch Textile

Machines, 302 U.S. 490, 498-99 (1934); Paramount Publix Corp.

v. American Tri-Ergon Corp., 294 U.S. 464, 473-77 (1935);

Altoona Publix Theatres, Inc. v. American Tri-Ergon Corp., 294

U.S. 477, 487-88 (1935); Toledo Pressed Steel Co. v. Standard

Parts, Inc., 307 U.S. 350, 356-57 (1939); Dow Chemical Co. v.

Halliburton Oil Well Cementing Co., 324 U.S. 320, 330 (1945);

Great Atlantic & Pacific Tea Co. v. Supermarket Equipment

Corp., 340 U.S. 147, 153 (1950).

Since Graham this Court has unswervingly reiterated that

principle and rejected any assertion that the standard of patentable

invention can be established solely by the objective criteria of

the secondary considerations. Anderson’s-Black Rock, Inc. v.

Pavement Salvage Co., Inc., 396 U.S. 57, 61 (1969); Sakraida

v. Ag Pro, Inc., 425 U.S. 273, 282-83 (1976); Dann v. Johnston,

425 U.S. 219, 230, fn. 4 (1976). See also, dissent of Justices White

17

and Brennan from denial of certiorari in Roanwell Corp. v.

Plantronics, Inc., 429 U.S. 1004 (1977).

Despite the clear holdings of this Court that ‘‘secondary

considerations’’ cannot make an otherwise obvious invention

patentable, the CAFC, now the single court of appeals in patent

cases, has enunciated a new standard at variance with the standard

set out by this Court.

The case at bar is not an isolated incident as the following

recent cases from the CAFC show:

**The district court erred in saying: ‘Where a patent

is obvious, it cannot be saved from invalidity by

resorting to ‘‘secondary factors’’ . . .” The issue

is the obviousness of the claimed invention, and

that issue can be resolved only after ai// relevant

evidence of obviousness, including so-called

‘secondary considerations’ if any, has been taken

into account.’’

Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir.

1983).

**As is or should be true with every performance

of the judicial process, all relevant evidence on each

dispositive issue [i.e., secondary considerations]

must be fully considered and evaluated.’’

Environmental Designs, Ltd. v. Union Oil Co. of California, 713

F.2d 693, 695 (Fed. Cir. 1983).

“It is jurisprudentially inappropriate to disregard

any relevant evidence on any issue in any case,

patent cases included. Thus evidence arising out

18

of the so-called ‘secondary considerations’ must

always when present be considered en route to a

determination of obviousness. ... It is to be

considered as part of all the evidence, not just when

the decisionmaker remains in doubt after reviewing

the art.”’

Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538-39 (Fed.

Cir. 1983).

‘**In evaluating the commercial success evidence,

Judge Kelleher said, ‘commercial success without

invention will not make patentability.’ That

approach was flawed, as explained in Stratoflex,

supra’’ [reference is to Stratoflex, Inc. v. Aeroquip

Corp., 714 F.2d 1530, 1538 (Fed. Cir. 1983)].

Kansas Jack, Inc. v. Kuhn, ___. F.2d ____, 219 USPQ 857, 861

(Fed. Cir. 1983).

Yet what Judge Kelleher said in the quote above, which the

CAFC said was flawed, is what this Court said in A&P, supra,

340 U.S. at 153.

The CAFC in South Corporation v. United States, 690 F.2d

1368 (Fed. Cir. 1982) has stated that it will be bound by the

decisions of its two predecessor courts, the Court of Customs

and Patent Appeals and the Court of Claims. Thus, the South

precedent incorporates prior decisions of the CCPA requiring

evaluation of evidence on the secondary considerations in a// cases,

not just when the issue of obviousness remains in doubt after

application of the three pronged Graham factual analysis. See

Stevenson v. ITC, 612 F.2d 546, 553 (CCPA 1979); Solder

19

Removal v. ITC , 582 F.2d 628, 635 (CCPA 1978); In re Fielder,

471 F.2d 640, 644 (CCPA 1973)."?

The regional courts of appeals had uniformly properly

followed the decisions of this Court.

Prior to October, 1982 when patent appeals were heard by

the regional courts of appeals, they had universally followed the

direction of A&P and Black-Rock that evidence of ‘‘secondary

considerations’’ was to be looked to only in cases where the

question of obviousness, after application of the Graham factual

inquiry, remained in doubt.

Merely illustrative of those appellate courts’ views are the

following relatively recent cases: /nternational Tel. & Tel. Corp.

v. Raychem Corp., 538 F.2d 453, 459 (ist Cir.), cert. denied,

429 U.S. 886 (1976); Timely Products Corp. v. Arron, 523 F.2d

288, 295 (2d Cir. 1975); Digitronics Corp. v. New York Racing

Association, Inc., 553 F.2d 740, 748-49 (2d Cir.), cert. denied,

sub. nom., Amperex Electronics Corp. v. New York Racing

Association, Inc., 434 U.S. 860 (1977); Systematic Tool & Machine

12. While South Corporation v. United States, 690 F.2d 1368 (Fed. Cir.

1982) indicated precedents of the Court of Claims would be binding as well, the

CAFC is apparently ignoring, without expressly overruling, contrary holdings

on this point by its predecessor Court of Claims. See Kemode Mfg. Co. v. United

States, 347 F.2d 315, 319 (Ct. Cl. 1965) where the Court held:

**[I}t is only in those cases where the question of patentable

invention is in doubt that evidence of commercial success can

be persuasive of patentability.”’

Accord, Karch v. United States, $68 F.2d 722, 728 fn. 6 (Ct. Cl. 1977), cert.

denied, 436 U.S. 956 (1978).

20

Co. v. Walter Kidde & Co., Inc., 555 F.2d 342, 343 fn. 2 (3rd

Cir.), cert. denied, 434 U.S. 857 (1977); Reed Tool Co. v. Dresser

Industries, Inc., 672 F.2d 523, 527 fn. 11 (Sth Cir. 1982); Cathodic

Protection Service v. American Smelting Refining Co., 594 F.2d

499, 513 (Sth Cir.), cert. denied, 444 US. 965 (1979); Parker v.

Motorola, Inc., 524 F.2d 518, 531 fn. 13 (Sth Cir. 1975), cert.

denied, 425 U.S. 975 (1976); May v. American Southwest

Waterbed Distributors, Inc., 715 F.2d 876, 884-85 (Sth Cir. 1983);

Philips Industries, Inc. v. State Stone & Mfg. Co., Inc., 522 F.2d

1137, 1141-42 (6th Cir. 1975); American Seating Co. v. National

Seating Co., 586 F.2d 611, 622 (6th Cir.), cert. denied, 441 U.S.

907 (1978); Eltra Corp. v. Basic, Inc., 599 F.2d 745, 756 (6th

Cir.), cert. denied, 444 U.S. 942 (1979); Panduit Corporation v.

Burndy Corporation, 517 F.2d 535, 541 (7th Cir.), cert. denied,

423 U.S. 987 (1975); Republic Industries, Inc. v. Schlage Lock

Co., 592 F.2d 963, 975-76 (7th Cir. 1979); Lee Blacksmith, Inc.

v. Lindsay Bros., Inc., 605 F.2d 341, 345 (7th Cir. 1979); Ashland

Oil, Inc. v. Delta Oil Products Corp., 685 F.2d 175, 177-78 (7th

Cir. 1982), cert. denied, ___. U.S. ___., 103 S. Ct. 1769 (1983);

Brunswick Corp. v. Champion Spark Plug Co., 689 F.2d 740,

751-52 (7th Cir. 1982); Exer-Genie, Inc. v. McDonald, 453 F.2d

132, 136 (9th Cir. 1971), cert. denied, 405 U.S. 1075 (1972); Deere

& Co. v. Sperry Rand Corporation, 513 F.2d 1131, 1133 (9th

Cir.), cert. denied, 423 U.S. 914 (1975); Bristol Locknut Co. v.

SPS Technologies, Inc., 677 F.2d 1277, 1281 (9th Cir. 1982); Deere

& Co. v. Hesston Corp., 593 F.2d 956, 962 (10th Cir.), cert.

denied, 444 U.S. 838 (1979).

Indeed the Second Circuit, after straying from application

of this principle in Plantronics, Inc. v. Roanwell Corp., 403 F.

Supp. 138, aff’d per curiam, 535 F.2d 1397 (2d Cir. 1976), cert.

21

denied, 429 U.S. 1004 (1977), came back into the fold in

Digitronics, supra.'’

Thus, it is evident that prior to the advent of the CAFC,

the regional courts of appeals had uniformly and correctly applied

the standard for determining obviousness of an invention as that

standard has been interpreted by this Court.

Ill.

The Need For Review By This Court

Since its creation by the Federal Courts Improvement Act

of 1982, §402, 28 U.S.C. §171, the CAFC is now the only court

of appeals to review judgments of all the district courts rendered

in actions for patent infringement, 28 U.S.C. §1295(a)(1). The

district courts now look to the CAFC for instruction and guidance

in interpretating the patent law.'* With the CAFC’s adoption of

13. There, 553 F.2d at 748, the Court commented:

‘*Any theory that ‘secondary’ considerations must be given

weight before a determination of obviousness can be made

was laid to rest in Sakraida v. Ag Pro, Inc.,”’

‘Only in a close case, in which application of the subjective

criteria of nonobviousness in 35 U.S.C. §103 does not produce

a firm conclusion can these objective or secondary

considerations be used to ‘tip the scales in favor of

patentability’. Roanweil Corp. v. Plantronics, Inc., supra, 429

U.S. at 1008, 97 S. Ct. at $41 (White, J. joined by Brennan,

J. dissenting from denial of certiorari). . .”’

14. See Air Products and Chemicals, Inc. v. Chas. S. Tanner Co.,

, 219 USPQ 223, 227 (D.S.C. 1983) where the Court stated:

(Cont'd)

F. Supp.

22

the prior precedents of the CCPA, decisions such as /n re Fielder,

471 F.2d 640 (CCPA 1973), cited by the CAFC as authority in

Stratoflex, supra, are now binding on the district courts. Fielder

was written after this Court’s decision in Anderson’s-Black Rock,

Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969) where this Court

reiterated:

“It is, however, fervently argued that the

combination filled a long felt want and has enjoyed

commercial success. But those matters ‘without

invention will not make patentability.” A&P Tea

Co. v. Supermarket Corp., 340 U.S. 147, 153.”’

396 U.S. at 61.

While acknowledging Black-Rock, the Fielder court stated

that it was error to fail to consider evidence of commercial success

and satisfaction of long-feit needs. In Fielder there even was a

concession of prima facie obviousness, 471 F.2d at 642, but the

Fielder court took pains to make clear that it was error to disregard

such evidence of secondary considerations even in the face of a

concession of obviousness.

It is now clear that the new CAFC has departed radically

from this Court’s clear mandate regarding the proper place of

(Cont'd)

**As of October 1, 1982, the United States Court of Customs

and Patent Appeals (“‘CCPA’’) and the United States Court

of Claims were merged to form the United States Court of

Appeals for the Federal Circuit (““CAFC’’). The new court

has exclusive appellate jurisdiction of appeals in all patent

infringement actions. 28 U.S.C. §1295(a)(1). In a recent

decision, South Corp. v. United States, 690 F.2d 1368, 1369,

215 USPQ 657 (Fed. Cir. 1982), the new court ruled that all

decisions of its predecessor courts will be considered binding

as precedents upon it. Those decisions are therefore controlling

here.”’

23

**secondary considerations”’ in a long line of decisions, e.g., A&P,

Graham, Sakraida, Black-Rock, supra. The CAFC’s de facto

repudiation of Black-Rock and A&P as the definitive guidelines

for handling evidence of the ‘‘secondary considerations’’ is

manifest. Instead of following the three step factual inquiry set

down in Graham, which clearly implies that evidence of

**secondary considerations’’ is subordinate and is to be turned

to only in cases of doubt as to obviousness, the CAFC instead

has unjustifiably elevated commercial success and the other

objective secondary considerations to be the _ bell-weather

barometer of patentable invention.

As recognized by this Court in Graham, supra,

‘*(T]he federal patent power stems from a specific

constitutional provision which authorizes the

Congress ‘To promote the Progress of *** useful

Arts, by securing for limited Times to ***

Inventors the exclusive Right to their ***

Discoveries.’ Art. I, §8, cl. 8. The clause is both

a grant of power and a limitation. ... The

Congress in the exercise of the patent power may

not overreach the restraints imposed by the stated

constitutional purpose. Moreover, Congress may

not authorize the issuance of patents whose effects

are to remove existent knowledge from the public

domain, or to restrict free access to materials

already available. Innovation, advancement, and

things which add to the sum of useful knowledge

are inherent requisites in a patent system which

by constitutional command must ‘promote the

Progress of *** useful Arts.’ This is the standard

expressed in the Constitution and it may not be

ignored. And it is in this light that patent validity

‘requires reference to a standard written into the

a3

Constitution.’ Great A&P Tea Co. v. Supermarket

Equipment Corp. . . . 340 U.S. at 154 (concurring

opinion).’’ 383 U.S. at 5-6.

If Congress is constrained to be guided by the constitutional

standard, should not all courts and especially the court charged

with the sole appellate responsibility for decisions of patent validity

be constrained to follow the same standard? To pose the question

is to answer it.

The mere fact that one reaps commercial success from

marketing an invention should not become part of the standard

of patentability in a// cases. The fact that an invention satisfies

a long-felt need is no indication, standing alone, that the invention

itself is not obvious. An inventor is charged with the knowledge

of all the accumulated publicly available prior art at the time the

invention is made.'* That is the basis for this Court’s statement

in Graham, that ‘‘Congress may not authorize the issuance of

patents whose effects are to remove existent knowledge from the

public domain.’’ 383 U.S. at 6.

15. As effectively stated by Judge Learned Hand in Frank B. Killian & Co.

v. Latex Corp., 188 F.2d 940, 943 (2d Cir.), cert. denied, 342 U.S. 861 (1951):

“*Moreover, presumably he [the inventor] designed his machine

from the ground up and without suggestion or cue; and we

may well agree that, taken as a feat, that displayed enough

originality to support a patent. However, as we have just

said . . . , the law does not use such a subjective test in judging

a patent; on the contrary it imputes to the inventor an

omniscience which will again and again deprive him of the

reward that his talents as an individual might otherwise

deserve. That is a corollary of a monopoly, not limited to

plagiarists.’’

See also, Seewall v. Jones, 91 U.S. 171 (1875).

25

That no one person has all of the accumulated knowledge

of all the prior art (which knowledge, however, is imputed to

a patentee) and that a long-felt need for an invention may,

therefore, exist is irrelevant. If the invention only combines old

elements in a manner clearly embraced by the prior art, it fails

to meet the constitutional standard for patentability. Those factors

serve only to confirm the wisdom of this Court’s admonition that

evidence of the so-called secondary considerations should not tip

the scales to make patentable that which is no more than an

obvious invention.

This clear departure by the CAFC in deciding the important

federal question of obviousness of a patented invention is in

conflict with every applicable decision of this Court. Clearly, this

Court should exercise its discretion under Rule 17, Supreme Court

Rules, and issue a writ of certiorari.

Absent positive and effective direction by this Court, it is

apparent that the CAFC will continue to set aside this Court’s

clear prior mandates. The result will be the imposition on the

district courts of a more lenient standard of patentability. The

erosion of that standard will eventually constrain the free and

unfettered use by the public of technology within the public

domain. It is imperative that this Court act at the earliest

opportunity to give proper direction to the appellate court solely

responsible for overseeing the patent system.

26

CONCLUSION

For all the reasons stated, it is respectfully requested that

this Court grant the petition for writ of certiorari to the Court

of Appeals for the Federal Circuit to review the decision below.

Respectfully submitted,

LEONARD J. SANTISI

CURTIS, MORRIS

& SAFFORD, P.C.

Attorneys for Petitioner