Opposition Brief — United States v. Hughes Aircraft Co.

No. 96-1297 , perice OF THE CLERK

IN THE

Mar 17 1997

Supreme Court of the Huited States

OCTOBER TERM, 1996

UNITED STATES OF AMERICA,

Petitioner,

v.

HUGHES AIRCRAFT COMPANY,

Respondent.

RESPONDENT?’S BRIEF

IN OPPOSITION

KENNETH W. STARR

Counsel of Record

CHRISTOPHER LANDAU

JAY I. ALEXANDER

DARYL JOSEFFER

KIRKLAND & ELLIS

655 Fifteenth Street, N.W.

Washington, DC 20005

(202) 879-5000

PHILIP C. SWAIN

KIRKLAND & ELLIS

300 South Grand Avenue

Los Angeles, CA 90071

(213) 680-8400

Counsel for Respondent

a

COUNTERSTATEMENT OF THE CASE

REASONS FOR DENYING THE WRIT

A.

CONCLUSION

TABLE OF CONTENTS

The Petition Should be Denied Because

Application of Warner-Jenkinson Would

Not Yield a Different Result ..........

Warner-Jenkinson Affirmed _ the

Approach to the Doctrine of Equivalents

Employed by the Federal Circuit in

Hughes Vil and Pennwalt ............

In Hughes XII, the Federal Circuit

Rejected the Government’s Position that

Hughes VII was Inconsistent with the

Element-by-Element Approach Required

Sy PRET Wn. be Sics k udeo dard eckec¥s

The Petition Should be Denied Because

the Equities Counsel Against Reopening

the Threshold Issue of Liability at this

MOD: pic adtavanddsscevcdcuotess

ii

TABLE OF AUTHORITIES

CASES PAGE

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

396 U.S. SP CSG bs cei ewedisewemniawm 11

Aro Manufacturing Co. v. Convertible Top

Replacement Co.,

36S U.S. SIO TIOGR isc votes ict civeeuses 11

Blonder-Tongue Laboratories v. University

of Illinois Foundation,

402 U.S. SID CURIE) +... cnc bw wenveccevesons 11,13

Cardinal Chem. Co. v. Morton Int'l, Inc.,

SOB U.S. OF CEG ae a rs score see cotter eeu $, 12

Cox Broadcasting Corp. v. Cohn,

AZO US. SPCR iad 0 5 00 0b an Che eakens Chars? 1]

Dawson Chemical Co. v. Rohm & Haas Co.,

448 US. TAR CII 6k 6 dnb eh eneent skaheirs 1]

Eli Lilly & Co. v. Medtronic,

496 U3, G64 SR i 6 oie sds eee ee a 11

Forsyth v. City of Hammond,

166 UD. SOG CRG vcscvaceeedbaabewtess 12

ee ee

ee

iii

Graver Tank & Mfg. Co. v. Linde Air Prods. Co.,

coogie Bo Ts err errr rere

Hughes Aircraft Co. v. United States,

og Ro ga. re

Hughes Aircraft Co. v. United States,

Be COU els SOE CROPS co cccccdeteccens

Hughes Aircraft Co. v. United States,

197 U.S.P.Q. 797 (Ct. Cl. 1977) ........

Hughes v. United States,

205 U.S.P.Q. 381 (Ct. Cl. Tr. Div. 1979

rev'd, 640 F.2d 1193 (ct. Cl. 1980) ......

Lawrence v. Chater,

op SR Beer errr ree

Lemelson v. United States,

752 F.2d 1538 (Fed. Cir. 1985) .........

Markman v. Westview Instruments,

i ce ec ceees

McCulloch v. Kammerer Corp.,

RP PrCEEED ve nberdeesectedeers

Pennwalt Corp. v. Durand-Wayland, Inc.,

833 F.2d 1737 (Fed. Cir. 1987) (en banc),

cert. denied, 485 U.S. 961 (1988) .......

Perkin-Elmer Corp. v. Westinghouse Elec. Corp.,

822 F.2d 1528 (Fed. Cir. 1987) .........

iv

Radio Station WOW, Inc. v. Johnson,

SOO Ue BA GRE 0 oR cha Seueviseeadeees

Sakraida v. Ag Pro,

GEFs SPROUT « vetnavecetsssvacines

United States v. Adams,

FOR as SOOO ov 6.os va ceuckeasacanets

Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,

65 U.S.L.W. 4162 (U.S. March 3, 1997)

CFO. TOFae csnctvcdesiunceesuteverehe

STATUTES

MUSE COI THE 6.56. 5

28 U.S.C. § 129262) (1994) .. 0. cece eee eees

OTHER

H. Rep. No. 1890, 69th Cong.,

yt Et, pe ie oye Pee

COUNTERSTATEMENT OF THE CASE

This case involves the Government’s unauthorized use

of U.S. Patent No. 3,758,051 (the Williams patent), which

covers a means of controlling the orientation of satellites in

space. The Williams technology enabled the United States to

launch the world’s ffirst successful high-orbiting

communications satellite by 1963. Then, over the next

30 years, the Government used the Williams invention in over

100 spacecraft, including spacecraft still in use today.

Respondent Hughes Aircraft Company, the patent’s owner,

filed this case in November 1973 seeking just compensation

from the Government. By stipulation of the parties, the trial

court in 1974 bifurcated the liability and compensation phases

of the case. See Opp. App. at 2. Trial on liability occurred in

1976-77.

The trial court concluded that government satellites

operating in a “real time” mode literally infringed the Williams

patent, but that government satellites operating in a “store-and-

execute” (“S/E”) mode did not infringe either literally or under

the doctrine of equivalents. See Pet. App. at 198a-366a.'

The Court of Appeals for the Federal Circuit reversed

the latter holding in 1983. See Pet. App. at 161a-92a (“Hughes

VIT’). In an opinion authored by Chief Judge Markey, the

appellate court held that the trial court had erred by limiting the

scope of the doctrine of equivalents only to “obvious and

exact” equivalents. /d. at 186a-92a. The Federal Circuit noted

that this formulation amounted to nothing more than a restate-

ment of the test for /iteral infringement, and thus effectively

abrogated the doctrine of equivalents. See id. at 187a.

' After a delay caused by the Government’s motion to disqualify the

original trial judge, see 197 U.S.P.Q. 797 (Ct. Cl. 1977), the trial court

initially held the patent invalid, see 205 U.S.P.Q. 381 (Ct. Cl. Tr. Div.

1979), but that holding was reversed on appeal, see 640 F.2d 1193 (Ct. Cl.

1980).

2

The Hughes VII court explained that an accused product

may infringe under the doctrine of equivalents “‘if it performs

substantially the same function in substantially the same way

to obtain the same result’ as the claimed product or process.”

Pet. App. at 180a (quoting Graver Tank & Mfg. Co. v. Linde

Air Prods. Co., 339 U.S. 605, 608 (1950)).

In applying this doctrine, the Hughes VII court

undertook a careful element-by-element analysis of each of the

three disputed claim limitations in representative claim 1. See

id. at 187a-9la. The court canvassed the similarities and the

differences between the claimed invention and the S/E

spacecraft and compared the claim elements to the accused

device in the context of the entire invention and the technology

involved. See id. at 179a-80a, 187a-91a. The court concluded

that “[t]he S/E spacecraft and the claimed Williams satellite

reflect the precise circumstance envisaged in Graver, supra, for

they perform the same function (receipt of and response to |

command signals from an external location to accomplish

precession), in substantially the same way (jet firings

synchronized, albeit later and internally, with ISA position) to :

obtain substantially the same result (controlled precession of ;

spin axis in a predetermined direction to orient a hovering

satellite).” Jd. at 191a-92a. Accordingly, the Hughes VII court ;

concluded that “Hughes has proven that the government’s S/E ;

spacecraft infringe Williams’ claims 1, 2, and 3 under the )

doctrine of equivalents.” Jd. at 192a.

In reaching this conclusion, the court addressed and

rejected the Government’s argument based on a prosecution

history (“file wrapper”) estoppel theory. See Pet. App. at 182a-

85a, 192a. The court first acknowledged that a patent holder

was estopped from obtaining a claim construction that would

recapture subject matter that had been disclaimed during the

patent application process. See id. at 182a. The court then

proceeded to analyze the reasons for and the effect of the claim

3

amendments during the Williams patent application, see id. at

182a-83a, and concluded that those amendments did not estop

Hughes from invoking the doctrine of equivalents against the

Government’s S/E satellites. See id. at 184a-85a.

The Federal Circuit’s decision in Hughes VII ended the

liability phase of the case. Accordingly, the appellate court

remanded “for determination of the quantum of recovery due

Hughes.” Jd. at 192a. The Government did not petition for

certiorari.

The trial court conducted a two-part trial on the issue of

just compensation in 1988 and 1991. At the conclusion of that

process, the trial court held that Hughes was entitled to a 1%

royalty plus delay compensation computed at the statutory tax

overpayment rate, 26 U.S.C. § 6621 (1994), as compensation

for the delay in payment since 1973. See Hughes Aircraft Co.

v. United States, 31 Fed. Cl. 481 (1994).

The Federal Circuit affirmed that judgment. See Pet.

App. at la-24a (“Hughes XII”). On the Government’s cross-

appeal, the appellate court, per Chief Judge Archer, expressly

declined the Government’s invitation to revisit the underlying

determination of liability. See id at 18a-24a. The 1°83

decision in Hughes VII, the court held, established the law of

the case with respect to liability, and the Government had

offered no compelling reason to depart from that ruling. See id.

In applying the doctrine of equivalents, the Hughes X7I court

noted, the Hughes VII court had properly “considered each

claim limitation not literally found in the S/E spacecraft” and

had concluded that “there was an equivalent for each claim

limitation not literally met.” Pet. App. at 21a.

4

REASONS FOR DENYING THE WRIT

The petition for certiorari should be denied. This case

does not warrant this Court’s plenary review, and indeed the

Government has not requested such review. Rather, the

Government’s sole argument is that the petition should be held

for this Court’s decision in Warner-Jenkinson Co. v. Hilton

Davis Chem. Co. Because that case had now been decided, see

No. 95-728, slip op., 65 U.S.L.W. 4162 (U.S. Mar. 3, 1997),

the sole remaining question is whether there is any basis to

grant the petition, vacate the judgment, and remand the case in

light of Warner-Jenkinson. The answer to that question is no.

As this Court has recently stated, the power to grant,

vacate, and remand “should be exercised sparingly.” Lawrence

v. Chater, 116 S. Ct. 604, 609 (1996) (per curiam). Such a

course is appropriate only when (1) there is a “reasonable

probability” that the lower court would reject its previous

analysis and thereby reach a different result, and (2) the

equities of the case, including “the delay and further cost

entailed in a remand,” do not outweigh the potential benefit.

Id. at 607.

A GVR in light of Warner-Jenkinson would be

inappropriate for two reasons. First, that decision in no way

affects the Government’s liability in this case. The Federal

Circuit’s analysis of the doctrine of equivalents, both in Hughes

VII in 1983 and in Hughes XII in 1996, is entirely consistent

with this Court’s analysis of the doctrine in Warner-Jenkinson.

Indeed, the Hughes XII court expressly rejected the

Government’s contention that Hughes VII is inconsistent with

the element-by-element approach to the doctrine of equivalents

reaffirmed by this Court in Warner-Jenkinson.

Second, there are sound equitable reasons for denying

the Government’s request to reopen the issue of liability. Both

Hughes and the federal judiciary have already been forced to

LO INE me ONS me SOI Ser KT

re ee ant ees

5

devote inordinate time and resources to this case. Reopening

the liability determination in Hughes VII at this late date would

thwart those efforts and thus undermine the “public’s strong

interest in the finality of judgments in patent litigation.”

Cardinal Chem. Co. v. Morton Int'l, Inc., 508 U.S. 83, 100

(1993). It is high time to bring this 24-year litigation odyssey

to an end.

A. The Petition Should be Denied Because Application

of Warner-Jenkinson Would Not Yield a Different

Result.

Because this Court’s recent decision in Warner-

Jenkinson is entirely consistent with the Federal Circuit’s

reasoning in this case, there is no “reasonable probability” that

the Federal Circuit would reach a different result on remand.

Lawrence, 116 S. Ct. at 609.

1. Warner-Jenkinson Affirmed the Approach to

the Doctrine of Equivalents Employed by the

Federal Circuit in Hughes VII and Pennwalt.

The Warner-Jenkinson Court unanimously reaffirmed

the validity of the doctrine of equivalents. See slip op. at 22, 65

U.S.L.W. at 4168. The Court also reiterated the long-standing

rule that “[eJach element in a patent claim is deemed material

to defining the scope of the patented invention.” Jd. at 10, 65

U.S.L.W. at 4165. The central question in a doctrine of

equivalents case is thus: “Does the accused product or process

contain elements identical or equivalent to each claimed

element of the patented invention?” Jd. at 21, 65 U.S.L.W. at

4168.

The principle that the doctrine of equivalents must be

applied on an element-by-element basis is hardly novel. That

principle was fully elaborated by the Federal Circuit a decade

ago in Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931

6

(Fed. Cir. 1987) (en banc), cert. denied, 485 U.S. 961, 1009

(1988). As the Pennwalt court explained:

‘[A] court may not, under the guise of applying

the doctrine of equivalents, erase a plethora of

meaningful structural and functional limitations

of the claim on which the public is entitled to

rely in avoiding infringement. . . . [I}n applying

the doctrine of equivalents, each limitation must

be viewed in the context of the entire claim. . . .

It is well settled that each element of a claim is

material and essential, and that in order for a

court to find infringement, the plaintiff must

show the presence of every element or its

substantial equivalent in the accused device.’

833 F.2d at 935 (quoting Perkin-Elmer Corp. v. Westinghouse

Elec. Corp., 822 F.2d 1528, 1532-33 (Fed. Cir. 1987) (Markey,

C.J.)) (citations omitted). The Pennwalt court went on to hold

that, under the facts of that case, infringement under the

doctrine of equivalents had not been established because the

accused device did not perform the same or substantially the

same functions required by the patent claims. See 833 F.2d at

935-37.

Pennwalt’s explanation of the element-by-element

approach to the doctrine of equivalents is completely consistent

with Warner-Jenkinson’s observation that courts should “focus

on individual [claim] elements” and employ “special vigilance

against allowing the concept of equivalence to eliminate

completely any such elements.” Slip op. at 21, 65 U.S.L.W. at

4168.

7

2. In Hughes XII, the Federal Circuit Rejected

the Government’s Position that Hughes VII

was Inconsistent with the Element-by-

Element /.pproach Required by Pennwalt.

The Government’s main argument in favor of reopening

the liability holding established 14 years ago in Hughes VII has

been that the holding is no longer good law in light of

Pennwalt. See Pet. App. at 18a (“The government argues that

Hughes VII should not be the law of the case after this court’s

in banc decision in Pennwalt.”). Specifically, the Government

argued below that Hughes VII had applied an “invention as a

whole” standard, whereas Pennwalt had applied an “element-

by-element” standard. That very argument remains the

centerpiece of the Government’s petition for certiorari. See

Pet. at 8.

The Federal Circuit, however, squarely addressed and

rejected that argument. The Hughes XII court explained that

the Hughes VII court had “considered each claim limitation not

literally found in the S/E spacecraft and looked at whether the

elements of the S/E spacecraft performed the same function in

substantially the same way to obtain the same result.” Pet.

App. at 21a. “Because there was an equivalent for each claim

limitation not literally met, the [Hughes VII] court concluded

that the differences between the claimed invention and the S/E

spacecraft were too insubstantial to avoid liability under the

doctrine of equivalents.” Jd. (citations omitted). Thus, the

Hughes VII analysis was “entirely consistent with Pennwalt.”

Id. In view of this element-by-element equivalence, the

Hughes XII court also noted the harmony of the Hughes VII

decision with the “insubstantial change” analysis set forth in its

then-recent decision in Hilton Davis. Id. at 22a.

The Federal Circuit’s conclusion that the Hughes VII

court’s analysis is consistent with the element-by-element

approach required by Pennwalt (and now Warner-Jenkinson)

is demonstrably correct. From its earliest days, the Federal

Circuit has been mindful of the important role played by patent

claims. See, e.g., Lemelson v. United States, 752 F.2d 1538,

1551 (Fed. Cir. 1985) (“It is . . . well settled that each element

of a claim is material and essential, and that in order for a court

to find infringement, the plaintiff must show the presence of

every element or its substantial equivalent in the accused

device.”).

The Hughes VII court thoroughly reviewed the evidence

of equivalency as to each of the three disputed claim

limitations, elements (e), (f), and (g) of representative claim 1.

See Pet. App. at 188a-92a. Applying the rule, now confirmed

by Warner-Jenkinson, that later-developed equivalents,

recognized as such at the time of infringement, can constitute

infringing equivalents, the Federal Circuit held that the small

differences in operation between the patented satellites and the

accused S/E satellites arose from the Government’s substitution

of a technological embellishment made possible by advances

in technology that allowed a computer to fly on board the

spacecraft to execute commands to fire the spacecraft’s thruster

at the desired time in its spin cycle. See Pet App. at 189a-91a.’

? As the Hughes XII court explained:

Based on the specification and engineering evidence, the

[Hughes VII] court concluded that “retention of the ISA

position in an on-board computer, while transmitting

sufficient information to enable the ground crew to use

that computer-retained information to control the

satellite, is the modern-day equivalent of providing an

indication of ISA to ground” as required by paragraph (e)

of claim |. It also determined that the external

synchronization of the command signal with the ISA

position as specified in paragraphs (f) and (g) is

(continued...)

9

The Government’s continued assertion that Hughes VII

relied on an improper “invention as a whole” standard is thus

baseless. The Federal Circuit held in Hughes VII and

confirmed in Hughes XII that the Government had done no

more than substitute equivalent elements for the Williams

patent claim elements. As the Hughes VII court noted, the

Government’s argument (resurrected in the petition) that the

accused S/E satellites do not send an ISA signal to the ground

may be a valid argument against literal infringement, but does

not address the question whether the S/E satellites contain an

equivalent of that element. See Pet. App. at 190a.’

Because the Federal Circuit has already directly decided

the issue that would arise on a remand, no purpose would be

served by further prolonging this litigation. Accordingly, this

? (...continued)

equivalent to the internal synchronization accomplished

onboard the S/E spacecraft by using modern memory

circuits. The court said that use of ISA information

onboard as a reference point for firing the jet, instead of

using the ISA information on the ground as a reference

point, was merely a relocation in the function and did

not change the function performed, the manner of

operation, or the result obtained.

Pet. App. at 19a-20a (citations omitted).

3 The Government also asserts that the Hughes VII court erred in

substituting its fact findings for those of the trial judge. See Pet. at 10 n.4.

That assertion too is meritless. The Hughes V1/ court did no such thing;

rather, it (1) held that the trial judge had employed an improper legal

standard and (2) applied the proper standard to the facts of the case. See

Pet. App. at 18Sa-92a. In any event, this contention provides no basis for

a GVR, as the Warner-Jenkinson Court declined even to address the

tangentially-related question presente. whether application of the doctrine

of equivalents is a question of fact or law. See slip. op. at 19-20,

65 U.S.L.W. at 4167-68.

10

Court should simply deny the petition. See Lawrence, 116 S.

Ct. at 606-07.

B. The Petition Should be Denied Because the Equities

Counsel Against Reopening the Threshold Issue of

Liability at this Late Date.

A GVR in light of Warner-Jenkinson would be

particularly inappropriate in this case, because the threshold

issue of liability was settled—fairly and finally—14 years ago.

Since that time, both Hughes and the federal judiciary have

devoted inordinate time and effort to resolving the issue of

compensation. It is simply too late in the day now to wipe the

slate clean and return to square one. Thus, even if there were

otherwise any arguable basis for a GVR in light of Warner-

Jenkinson, the equities of this case cry out strongly against such

a course. See Lawrence, 116 S. Ct. at 607.

More than two decades ago, the Government stipulated

to the use of bifurcated proceedings in this case. See Opp. App.

at 2. Pursuant to that stipulation, the Government agreed to a

* This Court reversed and remanded the Federal Circuit’s Hilton Davis

decision because the Federal Circuit in that case had failed to consider all

the requirements of the doctrine of equivalents, “particularly as related to

prosecution history estoppel and the preservation of some meaning for each

element in a claim.” Slip op. at 22, 65 U.S.L.W. at 4168. Moreover, this

Court recently entered a GVR order in two cases, Shoketsu Kinzoku KK v.

Festo Corp., No. 95-1546 and Honeywell, Inc. v. Litton Sys., Inc., No.

96-874, where it appeared that the element-by-element analysis was not

conducted, but denied certiorari in two cases that had apparently not

ignored the claim limitations. Micron Separations, Inc. v. Pall Corp.,

No. 95-1096 and Maxwell v. J. Baker, Inc., No. 96-851. In this case, the

Federal Circuit engaged in a careful element-by-element review, and fully

considered the Government’s arguments that prosecution history estoppel

prevented Hughes from asserting equivalents of the disputed claim

elements. See Pet. App. at 187a-9la; 182a-85a. Thus, no purpose would

be served by a remand on this issue.

me Nl itil ey i teed 5 ale Aa ta

RR a TE ts 4

Pet ee ee

11

threshold determination of liability and then, if necessary, to a

subsequent determination of compensation.’ The liability issue

was conclusively resolved by Hughes VII in 1983. The

Government could have sought certiorari at that time,° but did

not.

With the Government’s liability thus settled, the trial

court held a trial on compensation over a period of three and

one-half years; the court then spent an additional three years

weighing the evidence and preparing no fewer than three

* Such bifurcated proceedings are possible in patent cases because

Congress has specifically authorized interlocutory appeals limited to the

threshold issue of liability. See 28 U.S.C. § 1292(cX21994). That statute

reflects the notoriously expensive and time-consuming nature of patent

litigation. See, e.g., Blonder-Tongue Laboratories v. University of Illinois

Foundation, 402 U.S. 313, 334-38, 348 (1971); McCulloch v. Kammerer

Corp., 331 U.S. 96, 98 (1947). See also H. Rep. No. 1890, 69th Cong., 2d

Sess. 1 (1927) (“legislation of this nature is necessary to prevent a great

burden of expense to litigants in actions to determine the validity of patents,

where an accounting is involved”).

© In keeping with the statutory scheme set forth in 28 U.S.C. § 1292(c)(2),

this Court has routinely granted certiorari to review interlocutory decisions

on patent infringement liability. See, e.g, Eli Lilly & Co. v. Medtronic,

Inc., 496 U.S. 661 (1990); Dawson Chemical Co. v. Rohm & Haas Co.,

448 U.S. 176 (1980); Sakraida v. Ag Pro, Inc., 425 U.S. 273 (1976);

Anderson's-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969);

United States v. Adams, 383 U.S. 39 (1966); Aro Manufacturing Co. v.

Convertible Top Replacement Co., 365 U.S. 336, 338 (1961); Graver Tank

& Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605 (1950). This

practice is consistent with this Court’s established practice of treating state

court judgments as final if liability has been decided and only an accounting

remains. See, e.g., Cox Broadcasting Corp. v. Cohn, 420 U.S. 469, 480

(1975) (citing cases). Because an accounting does not moot the liability

dispute, “immediate rather than delayed justice would be the best way to

avoid ‘the mischief of economic waste and of delayed justice.”” Jd. at 477-

78, 480 (quoting Radio Station WOW, Inc. v. Johnson, 326 U.S. 120, 124

(1945)).

12

written opinions. During that trial, the court heard testimony

from 61 witnesses, reviewed the deposition testimony of

approximately 95 additional witnesses, and received more than

4,500 exhibits into evidence. The transcript of the trial

testimony alone includes more than 20,000 pages and the

documentary exhibits occupy more than 142 linear feet of shelf

space. See Hughes Aircraft Co. v. United States, 29 Fed. Cl.

197, 202 (1993).

It would be inequitable, to say the least, to subject

Hughes and the lower courts to yet another round of trials and

appeals at this late date. The trial record in this case is

decidedly cold: it was created in 1976. To be sure, a great deal

of money is at stake in this case, but the bulk (more than two

thirds) of that money is attributable to the accumulation of

interest as a result of the Government’s refusal to pay Hughes

a royalty since 1973. Thus, as the Hughes XI/ court wisely

observed in rejecting the Government’s request to reopen the

determination of liability established in Hughes VII,

“promptness of decision . . . is one of the elements of justice.”

Pet. App. at 23a (quoting Forsyth v. City of Hammond,

166 U.S. 506, 513 (1897)).

In addition to wasting public and private resources,

reopening a 14-year-old infringement judgment would

contravene the “strong public interest in the finality of

judgments in patent litigation.” Cardinal Chemical Co. v.

Morton International, Inc., 508 U.S. 83, 100 (1993). Public

policy requires a conclusive and determinative adjudication of

a patent’s validity and scope, for a “zone of uncertainty which

enterprise and experimentation may enter only at the risk of

infringement claims would discourage invention only a little

less than unequivocal foreclosure of the field.” Markman v.

Westview Instruments, Inc., 116 S. Ct. 1384, 1396 (1996)

(internal quotation and citation omitted). That is why this

Court has long gone to great lengths to increase the certainty

pwn od

13

and conclusiveness of patent judgments.’ Leaving

infringement or validity judgments in limbo for 14 years would

ill-serve the inventors and businesses that necessarily rely on

them.

Infringement trials and accountings are far too costly

and time-consuming for a reviewing court to pronounce, at the

conclusion of decades of litigation, that the entire proceeding

was a mere dress rehearsal. Accordingly, this Court should

deny the Government’s request to brush away 24 years of

litigation and start all over again.

” See, e.g., Markman, 116 S. Ct. at 1396 (holding that patent interpretation

is a question of law, in part to promote uniformity); Cardinal Chemical,

$08 U.S. at 98-101 (encouraging the circuit court to enter alternative

holdings, in order to provide greater certainty); Blonder-Tongue, 402 U.S.

at 349-50 (permitting use of nonmutual collateral estoppel in patent

infringement cases, thereby increasing conclusiveness).

14

CONCLUSION

For the foregoing reasons, the petition for writ of

certiorari should be denied.

Dated: March 17, 1997 Respectfully submitted,

KENNETH W. STARR

Counsel of Record

CHRISTOPHER LANDAU

JAY 1. ALEXANDER

DARYL JOSEFFER

KIRKLAND & ELLIS

655 Fifteenth Street, N.W.

Washington, DC 20005

(202) 879-5000

PHILIP C. SWAIN

KIRKLAND & ELLIS

300 South Grand Avenue

Los eles, CA 90071

(213) 680-8400

Counsel for Respondent

]

IN THE UNITED STATES COURT OF CLAIMS

No. 426-73

(Filed June 24, 1974)

H'JGHES AIRCRAFT COMPANY

Plaintiff,

THE UNITED STATES,

)

)

)

)

v. )

)

)

)

Defendant. )

MEMORANDUM OF

PRELIMINARY PRETRIAL CONFERENCE

On June 20, 1974, a preliminary pretrial conference was

held in the office of the undersigned. The conference was

attended by Dugald S. McDougall, Esq., and John A. Sarjeant,

Esq., representing plaintiff; James D. Stokes, Jr., Esq., and

Barry Betrin, Esq., representing defendant. In addition, Mr.

Daniel Poole, a summer intern at the Department of Justice,

was iti attendance.

In response to an inquiry concerning the existence of

unusual discovery problems, I was advised by Mr. McDougall

that the parties were proceeding on the basis of voluntary

discovery and that although documents falling into a number of

broad categories have been requested by Mr. Stokes, plaintiff

would make every attempt to comply with the request. Neither

side appeared to anticipate any unusual or difficult discovery

problems. Mr. McDougall was confident that discovery could

be completed by spring of next year and a trial scheduled for

about this time next year. While Mr. Stokes did not totally

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agree, there appeared to be no serious dispute that discovery

could be completed by spring of next year absent the

development of any unusual and unknown problems.

Counsel for the parties agreed that the issue of damages

should be severed and that trial should initially be held on

patent infringement and validity.

Mr. McDougall advised that the patent involved in the

above-styled litigation is also being urged against Philco-Ford

Corporation and the Marconi Company of England in the

District of Florida. However, venue problems may result in the

transfer of the Florida litigation to the Delaware District Court,

with plaintiff proceeding solely against Philco-Ford. Mr.

McDougall seemed to think that the slow pace at which the

case is proceeding both in Florida and/or Delaware dictates

against this court’s waiting to determi«r the results of pending

District Court litigation. He, accordingly, urged that we

proceed to try the case in this court. Mr. Stokes was not in total

agreement with Mr. McDougall and, instead, urged that a “wait

and see” attitude be taken to evaluate the effects on this

litigation of events which occur in the Florida and/or Delaware

litigation.

Mr. McDougall indicated that all three claims of the

patent involved in the litigation are being infringed. As

presently advised, Mr. McDougall stated that the alleged

infringing devices are being manufactured by TRW, Inc., and

the Philco-Ford Corporation. While he indicated that plaintiff

did not have in its possession any TRW, Inc., and/or Philco-

Ford Corporation drawings or manuals that illustrate the

devices supplied to the Government, he nonetheless did not feel

any need for defendant to supply any such materials. Instead,

he indicated that he would discuss the matter with

knowledgeable Hughes Aircraft Co., employees and proposed

by way of stipulation of facts and/or drawings that would

represent systems produced by TRW, Inc., and or Philco-Ford

to the Government.

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With regard to defendant’s stipulating that at least one

accused device was procured during the relevant accounting

period, Mr. Stokes indicated that as presently advised he was

unable to enter into any such stipulation. Moreover, Mr. Stokes

stated that his investigation to date shows that all procurement

was made prior to the issuance of the patent involved in the

subject suit. Mr. Stokes thus feels that if the supporting facts

exist, he may move for dismissal because of the lack of

jurisdiction by this court.

The parties briefly discussed the continuing use during

the relevant accounting period by the Government of accused

devices procured prior to the issuance of the Williams patent.

As explained, signals from the United States are periodically

transmitted to satellites incorporating the alleged invention for

the correction of the satellites’ positions and/or attitude.

_ Plaintiff urged that the periodic monitoring amounts to use by

the United States. The Government, on the other hand, appears

to be arguing that while the pulses may be transmitted from the

United States, the alleged infringement occurs, if at all, in outer

space and thus may be beyond the reach of plaintiff's United

States patent.

Mr. McDougall indicated that questions such as these

may not have to be resolved because of the procurement by the

Government of an alleged infringing device since the filing of

the petition in the above-styled case. To this, Mr. Stokes stated

that a new petition may have to be filed since there may not be

any procurement and/or use during the accounting period

covered by the pending case. The question of defendant’s

stipulating that at least one of each of the accused devices or all

the representative devices being procured during the relevant

accounting period will be reconsidered as soon as the accused

devices become known.

Mr. McDougall also indicated that he did not have any

need at this time for any of the factual information upon which

the defenses alleged in defendant’s answer are based. While

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such information will eventually be sought, Mr. McDougall

preferred to delay such discovery for the time being.

As a result of agreement by counsel for the parties,

IT IS HEREBY ORDERED that defendant will by

August 5, 1974, submit a written request regarding production

of documents to plaintiff. Plaintiff has agreed to respond to

defendant’s request within 60 days after its receipt.

Plaintiff has agreed to submit a proposed stipulation of

facts regarding the infringement issue to defendant by

September 16, 1974. Defendant will attempt to respond to

plaintiff s proposed stipulation of facts by November 13, 1974,

with reasonable extensions of time being acceptable, if

necessary.

IT IS FURTHER ORDERED that a pretrial conference

will be held on February 5, 1975, at a time to be later set to

discuss topics such as the status of the case and the setting of

a trial date. Further topics for discussion will be added well in

advance of the pretrial date to enable adequate preparation time

by counsel for the parties.

Joseph v. Colaianni, Trial Judge