Reply Brief — Quaker City Gear Works, Inc. v. Skil Corp.

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MAY 28 1985

NDER L STEVAS,

SUPREME COURT OF THE UNITED SWATES °=™

October Term, 1984 7>

No. 84-1568

QUAKER CITY GEAR WORKS, INC., et al.,

Petitioners,

Vv.

SKIL CORPORATION,

Respondent.

PETITIONERS’ REPLY BRIEF

THOMAS M. FERRILL, JR.

JOHN W. LOGAN, JR.

FERRILL & LOGAN

Suite 430, 550 Pinetown Road

Fort Washington, PA 19034

Attorneys for Petitioners

PACKARD PRESS / LEGAL DivISION, 10th & SPRING GARDEN STREETS, PHILA., PA. 19123 (215) 236-2000

TABLE OF CASES

Cases: Page

Baginsky v. United States, 697 F.2d 1070, at 1077

(Fed. Cir. 1983), cert. denied, ___U.S. —___.,

104 S.Ct. 423 (1983), reh. denied, ___U.S.

S fio & £5 | | eae 5

Jones v. Hardy, 727 F.2d 1524, at 1534 (Fed. Cir.

as Ahir ng hbk oo 6 2 We Ochs 5

Weinar v. Rollform, Inc., 744 F.2d 797, 811 (Fed.

EN se Ni Ue wan be wag oR RN ORS 1

Miscellaneous: |

Federal Rule of Civil Procedure 49(a)............ 2,3

Valmet Oy and TVW Papermachines, Inc. v. Beloit

Corp., Docket No. 84-1664 (Filed April 25,

SE I Os oe Wk veg wae owen eee ss 5

IN THE

SUPREME COURT OF THE UNITED STATES

October Term, 1984

No. 84-1568

QUAKER CITY GEAR WORKS, INC., et al.,

Petitioners,

Vv.

SKIL CORPORATION,

Respondent.

PETITIONERS’ REPLY BRIEF

Quaker City’s petition presents three distinct ques-

tions for the Court’s consideration. Respondent’s brief in

opposition deals to some extent with the second question

(concerning reweighing of the evidence); it barely

touches the first question (on the evidence to be consid-

ered on a motion for judgment n.o.v.), and totally disre-

gards the third question (on the significance of direction

of burden of proof as to the contested issue). What re-

spondent interjects instead of dealing directly with these

questions are (1) its manifestations of its distrust of jury

trials (pp. 2 (f.n.}, 4-5 and 9-12), and (2) a strained at-

tempt to demonstrate how the evidence could support a

finding made by the appellate court if distorted to serve

respondent’s purpose. !

1. Respondent's brief in opposition also avoids comment on the

pre-disposition of the Federal Circuit Court of Appeals to give little

if any weight to opinions handed down by other Courts of Appeals,

as taken up in the Petition at pages 5, 6 n. 1, 11 and 14. Ina specially

concurring Opinion in Weinar v. Rollform, Inc., 744 F.2d 797, 811

(Fed. Cir. 1984), Senior Judge Nichols deplored the lack of attention

to cases from other Circuits. He expressed concern that the Federal

Circuit Court’s “exclusive jurisdiction, over certain areas of law, is

not to be construed as a legislative direction to ignore the efforts of

other courts to deal with the same problems, efforts exerted when

over many years they shared the responsibility that is now ours.”

1

2

Central to the decision by the Court of Appeals for

the Federal Circuit is its fact finding — a finding, oppo-

site to that of the jury, as to whether a person skilled in

the art is enabled by the United States patent, without

necessity of a DIN 58400 paper mentioned in it, to make

and use the invention described in the patent in suit.

As the Court of Appeals for the Federal Circuit rec-

ognized, the jury decided this fact question in the affir-

mative. The District Court, mistakenly believing the jury

had not made a finding on this question, and therefore

believing itself free under Rule 49(a) to make its own fact

finding, adjudging witness credibility and drawing its

own inferences, reached its fact finding opposite to that

of the jury.2

On pages i, 4, 5, 6, 9 and 12, respondent Skil chal-

lenges the reference to the action of the Court of Appeals

as reweighing the evidence on the question of “essential

material.” This does not withstand scrutiny. As the Court

of Appeals for the Federal Circuit correctly observed, the

jury made the inherent finding that the unavailable Ger-

man paper was not essential material to the U. S. patent,

by its affirmative answer that said U.S. patent provides

enabling disclosure. (App. A, pp. A-28 and A-29). That

2. An inference in favor of the moving party Skil and against

Quaker City was drawn by the District Court in arriving at iis fact

finding of essential material to the paient, as follows:

“In light of all the evidence, particularly Prof. Roth's testimony

that the German Standard was ‘necessary’ to design the wheel

used in a related German patent |sic, application], | find that

the German Standard was ‘essential material’ for the design of

the Patent at issue here as well.”

(App. A, p. A-10).

Either a similar inference was drawn by the Court of Appeals for

the Federal Circuit in reaching its own finding of fact of “essential

material” opposite to the jury’s, and fatal to Quaker City, or the

Court of Appeals ignored the extensive differences between the U.S.

patent and the far shorter, different, German patent application as to

which, and only as to which, Roth was examined concerning DIN

58400.

‘ee OU?

/

3

finding »y the jury resulted from its weighing all the ev-

idence pro and con enabling disclosure in the U.S.

patent, as urged by respondent Skil and instructed by

the court (App. A, pp. A-79-82).%

The District Court, being unaware that this finding

of fact had already been made by the jury, deemed itself

to be performing initial weighing (not a re-weighing) of

the evidence on the essential material question (App. A,

pp. A 9-10). From the District Court’s prefatory expla-

nation that it believed Fed. R. Civ. P. 49(a) to authorize

this, it may be inferred that the District Court could well

have been reluctant to overturn a jury finding if already

made to the effect that the German paper mentioned a

few times in the U.S. patent was not essential material to

it —i.e., that the U.S. patent itself does provide enabling

disclosure without necessity of obtaining that paper.

The jury having determined that the German paper

was not essential material to the U.S. patent, and this

being a fact question, the Court of Appeals for the Fed-

eral Circuit reached its opposite finding of fact upon its

reweighing of the evidence. (App. A, pp. A-29 to A-33,

inclusive). This reweighing involved some evidence por-

tions which the Court of Appeals deemed to support, di-

rectly or by inferences, the conclusion it reached, i.e., its

finding of fact that the German paper as referred to in the

U.S. patent was essential material to that patent, result-

ing in patent invalidity for lack of enabling disclosure.

Tacitly recognizing that there is no disputing the

very extensive contrasts between the Roth German ap-

plication and the far more complete, self-sufficient U.S.

patent in suit, referred to in the petition at page 6, note

2, and demonstrated in Appendix B, double-pages B-9 to

B-18, respondent relies instead on so inaccurately restat-

3. As the trial court instructed the jury concerning interroga-

tory 11 (to which the jury’s answer was affirmative), “. . . there

has been lot — a lot of evidence as to this particular issue and it’s for

your determination.” (App. A, p. A-81).

4

ing the facts of this case as to blur the subject of Roth's

‘estimony under scrunity.

Contrary to respondent's statements on page 2, Roth

was not examined as to whether a DIN 58400 paper

would be necessary along with the U.S. patent — he gave

no testimony about that aspect of the U.S. patent. He

was asked the two questions at the bottom of page A-63

only in regard to his earlier, less complete German patent

application about which he was being questioned, and

only in respect to an unspecified earlier draft of DIN

58400 — not the September, 1963 draft which respon-

dent incorrectly reports as having been the subject of

Roth's testimony. Roth neither was questioned about

that September draft nor testified about it.

On page 2, while purporting to correct or supple-

ment petitioners’ statement of the case, respondent

mischaracterizes Roth as the licensor and Quaker as lic-

ensee of the Roth U.S. patent. Yet, at the trial, it was

respondent which adduced evidence of Quaker’s own-

ership of the patent, Quaker having purchased it some

eleven months before the trial.

These misstatements as to the facts on page 2 cul-

minate in respondent's mischaracterizations on page 9,

where it persists in slurring over the separate facts as to

the U.S. patent and a stated draft of DIN 58400 to which

it refers, and the contrasting, far less complete and less

accurate German application in which are included un-

specific references to DIN 58400.* Straining to maxi-

mize its reliance on this distorted picture, respondent

characterizes Roth's testimony at the bottom of page

A-63 of Appendix A as Roth's “own admission, although

4. The completeness and specific numerical examples in the

U.S. Patent, in contrast to the German application, are shown in

side-by-side comparison in Appendix B, double-pages B-9 to B-18,

inclusive. The mentions of DIN 53400 in the German application

occur on the left-hand pages of B-13 and B-14. Copies of some drafts

of DIN 58400 were produced during discovery and were made ex-

hibits for identification by respondent.

5

contrary to his interest.” (Respondent's brief, page 9)

This exposes the need for having seemingly lost sight on

page 2 of the proven fact that Quaker had acquired the

ownership of the U.S. patent long before Roth was called

as a witness at trial by respondent.®

On pages 12-13, respondent argues that the Court of

Appeals for the Federal Circuit did not engage in “de

novo ‘reweighing’ of the evidence,” charitably suggest-

ing instead that it “engaged in a complete review of the

record to verify the absence of substantial evidence to

support the jury's limited ‘findings’.” To the contrary, as

scrutiny of the opinions by the District Court and the

Court of Appeals for the Federal Circuit demonstrates,

said appellate court did revert to de novo fact finding, in

accordance with said court's irrepressible tendency

which has been criticized by a Judge of said court in two

recent cases, Jones v. Hardy, 727 F.2d 1524, at 1534

(Fed. Cir. 1984), and Baginsky v. United States, 697

F.2d 1070, at 1077 (Fed. Cir. 1983), cert. denied,

U.S. __., 104 S. Ct. 423 (1983), reh. denied, ___US.

—_.., 104 S. Ct. 987 (1984). This criticism is borne out

by recent statistics.®

5. Roth's testimony was elicited by questions expressed in En-

glish, translated to German, and answered in German and translated

to English, only the English versions being transcribed. The jury

had the benefit of observing two weeks of trial testimony including

this.

6. Valmet Oy and TVW Papermachines, Inc. v. Beloit Corp.,

Docket No. 84-1664, is a Petition for Certiorari filed April 25, 1985,

three weeks after the filing of the present Petition by Quaker City

Gear Works, Inc. et al. Said copending Valmet Oy petition also seeks

review and supervisory restraint of the tendency of the Federal Cir-

cuit Court of Appeals to usurp the fact finding functions properly

relegated to the trial courts. The final page of the appendix to the

Valmet Oy petition tabulates data showing that the ratio of the per-

centage of petitions from the Federal Circuit complaining of its de

novo fact finding is some ten (10) times higher than the average of

the petitions complaining of de novo fact finding by all the other U_S.

Courts of Appeals.

6

For the foregoing reasons and those set forth in the

Petition, certiorari should be granted.

Respectfully submitted,

THOMAS M. FERRILL, JR.

JOHN W. LOGAN, JR.

FERRILL and LOGAN

550 Pinetown Road, Suite 430

Fort Washington, Pennsylvania 19034

Attorneys for Petitioners