# Opposition Brief — United States v. Hughes Aircraft Co.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1997
- **Citation:** 520 U.S. 1183

## Text

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

2

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

4

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385017_1346%3A3. Public record. Not legal advice.