Appendix — EWP Corp. v. Reliance Universal, Inc.

EDITOR'S NOTE

THE FOLLOWING PAGES WERE POOR HARD COPY

AT THE TIME OF FILMING. IF AND WHEN A

BETTER COPY CAN BE OBTAINED, A NEW FICHE

WILL BE ISSUED.

85 - 39 oe | ALR (

No.

IN THE

SUPREME COURT OF THE UNITED STATES

Of Counsel:

William H.

October Term, 1984

EWP CORPORATION and

LA SOCIETE TREFILUNION,

Vv

RELIANCE UNIVERSAL INC.,

Petitioners.

and

EXPOSIAC INDUSTRIES, INC.,

Respondents.

Petition for Writ of Certiorari

Appendix B

Nathaniel R. French

BIEBEL, FRENCH

& NAUMAN

2500 Kettering Tower

Dayton, Ohio 45423

(513) 461-4543

Counsel for Petitioners

Webb

Webb, Burden, Robinson

& Webb,

PA.

Oliver Building

Pittsburgh, PA 15222-2363

(412) 471-8815

COURT INDEX PRESS. INC. — 215 €. Ninth Street, Cincinnati, Ohio 45202 -

(513) 241-1450

PETITION FOR WRIT OF CERTIORARI TO THE

UNITED STATES SUPREME COURT

APPENDIX B

Trrennece- G.6.. POCO Bat reseee. 6606 tue 64S 66S S ERO OER ORES Bl

Patent Update: The Road to Uniformity And Its

PORE, GOL MEET ££ 606605 4 6 eS KS b SEU O SGD KOC SERS OS eK B6

+3)

United States Patent I’ 111) 3,578,036

{72} inventor Maurice Franco [56) References Cred

or — UNITED STATES PATENTS

- e082 3.396.761 8/1968 Laswell ............ 140/112

[22] Filed Mar. 18, 1969 é

145) Patented Baay 21, 2971 3,437,114 4/1969 Whucre etal... 140/112

[73] Asmgnee Trefiluaion Primary) Examiner —Lowel! A Larson

Parts, France Attorney —J Delattre-Seguy

{32} Pnonty Mar. 22, 1968

[33] Freace

{31} 144,908

[$4) LATTICE FOR THE REINFORCEMENT OF

TUBULAR CONCRETE ELEMENTS HAVING A

SOCKET METHOD FOR PRODUCING SAID

LATTICE AND THE PRODUCTS OBTAINED

1 Chaim, 4 Drewing Fig:.

Sd Wein ens.. 140107.

140/112

iss th cncnsuaincionnehabi'shennacarvakooh B21 27/22

(50) Phetd of Search ie 140/71.

"G4

tll

2

wae LN ry

ey

WL

2Cveeddddse

i

=

ABSTRACT: Method for producing s reinforcement having a

socket for a reinforced concrete tubular element having a

socket The method comprises forming @ prereinforcemen!

from latoce im wtoch some of the warp wires have successive

deformed nonrectilinear porvons whereas the othe: wart

wires and al! the weft wires are rectilinear The deformed wart

wires are bent m the form of welded mng: and the res: of the

latuce is ben! m the form of a cylinde: The pan of the

prereinforcement intended for the socke! par of the tubula’

element is radially expanded to the desired diameter by a!

least parually straightening the deformation of the deformed

warp wires

B2

3,578,036

PATENTED MAY 1 1 87

FIG.1

oe

ThaVRite FRancots

by. ). Blase he Mbsavie

B3

3,578,036

LATTICE FOR THE REINFORCEMENT OF TUBULAR

CONCRETE ELEMEN:S HAVING A SOCKET METHOD

FOR PRODUCING SAID LATTICE AND THE PRODUCTS

OBTAINED

The present cavention relates to latuces of welded wires for

producing reinforcements for concrete tubular element hav.

ing 2 socke! and to the production of this Lattice and the rein

forcements obtuned

ht ss already known to empl pe lattice for reinforcing

concrete tubular elements including a socket! However, the

cross secvon of the socke! = substantially greater than that of

the run or body of the tubular element and the bes! steels do

not have sufficent elongation characternstics to permit a large

expansion without fracture Thus. to produce a reinforcement

m one prece. there are at present two known methods

The firs! consists im avording the reinforcement of the

socket. the latuce being limited to the bod) of the tubular

element, however, the socket ther has a strength which

may be msufficrent mm some cases

The second method consists m producing the reinforcement

im two parts, namely one perm for the run or body of Ux wbu-

lar element and a wide: part for the socket. the two parts being

interconnected by meta) wires. however. this method ss rela

tively kong to carry out and sometumes delicate owing to the

difficulues of centering the part of the reinforcement mtended

to be embedded m the socket

The object of the present invention is to overcome theac

drawbacks

The invention provides a latuce of welded meta) wires

wherein a number of the warp wires have successive deformed

nonrectilinear portions, the deformanbons of sak! porvons

being permanent and such that, upon exeruon of tensile stress

thereon. said portions can be at least partially straightened.

whereas the other warp wires and all the weft wires are

rectlmear

Owing to their deformed portions. which may form folds,

waves. fractions of a coi! or any other sinuosities oF convolu.

ons. @ i possible to elongate the corresponding warp wires

and the laruce can undergo, in the poruon pertaining to these

wires. an expansion im the direcvon m which the warp wires

extend

Another object of the inventon is to provide a method for

producing from the aforementoned latuce a reinforcement

having a socket for a reinforced concrete tubular element

which has a socket, said method comprising. in a firs! stage.

formung a reinforcement blank or prereinforcement by bend.

img and closing onto themae!ves. in the form of welded rings.

the transverse wires of a section of said lattice. sad secuion

being such thal the transverse wires corresponding to the

socket, and only these wires, have a succesmon of permanent!)

deformed nonrectilinear porvons so thal they have an ap

paren! perimeter equa! to the perimeter of the nondeformed

transverse wires of the rest of the prereinforcement but a real

tength substantually greater than sad penmeter, then, in a

second stage . radially expanding the prereinforcemen! 80 as to

elongate at least partial!) aaid monrectilinear portions of the

transverse wires of its socket and mmpart thereto an apparent

penmeter which s substantally greater than that of the rest of

the preremforcement and corresponds to that of the desired

socket of the reinforcement

Another object of the invention i to provide a prereinforce-

mem obtained by the aforementioned firs: stage, wherein

sore of the transverse wires have, starting from one of the

ends of the reinforcement and on 8 poruon of its bength, 8 suc-

cesmon of permanently deformed poruons so thal the ap

parent perimeter of said Wensveree wires ib equal to the

veranstar of the other undeformed warsverse wires. but a real

length substantially greater than saxd penmeter

A further object of the invention is t© provide a reinforce.

mem having 5 socke! obtained by means of the aforemen-

toned method, said latuce remforcement having transverse

erres bent and closed onto themselves im the form of welded

rings and wherein. im the zone of the socke!. the transverse

1s

25

35

45

$5

65

70

2

Yet another object of the invention is to provide @ tubular

reinforced concrete element having 8 socke! comprising 2 lai

tce reinforcement which extends throughout the bength of the

bod) and has in the none of gard socke! transverse wires which

have a trace of parual!y open or straightened de formavons

Thus the invention makes it possible to produce. as wil! be

understood. unde: excellent conditions which are further im

proved relative to known methods. tubular concrete elements

reinforcing them by means of 2 singh -prece reinforcement

which extends ito the whole of the socket

Further features and advantages of the invenvor wil! be ap

parent from the ensunng descnpuon with reference to the ac

companying drawing

IN THE DRAWING

FRO Is 2 chagrammatic ew of 2 plane sector of lattice

according to the invention

FR 25 8 perspective view of the same secoon of lattice

after having been ben! and welded so as to form a closed cylir

@ncal cage comstituting THE blank of the reinforcemen! or

prereinforcement,

FIG 31s a diagrammatic perspectve view of the reinforce

ment final!) obtained ernbedded m 8 concrete pipe having a

socket, and

FIG 45 2 chagrammatx perspectve new of a modification

of the remforcement for a tubular body having an oval cross

section including a flat portion

Reference will firs be had to FIG 1 which shows a secon

of an improved batuce according to the invention

This latuce comprises a senes of warp wires 1 and 2 and a

sernes of weft wires 3 The wires of the two series intersect at 2

might angk and arc welded together at the crossing pom! 4

Whereas the warp wires carrying the reference numeral i and

the weft wires 3 are rectilinear, the warp wires 2 are deformed

mm ahernately opposite directions so as to have successive non

rectilinear portions, erther m the form of corrugaton: as

shown, or in the form of folds. loops or other sinvosives oF

convolutions bocated in the plane or outsxie the plane of the

latuce

The deformed portions can be contmnuous, as shown, or mn

terrupted by shorn rectilinear porbons

The shape of the convoluuons, corrugations or other defo:

mations of the wires 2 5 so arranged that their amplitude cor

responds to the width of the electrodes of the welding machine

employed for welding the lattice. since the wrap wires and the

weft wires are welded at the crossing points

Thus shape ss also chosen as a function of the tota! elonga

on rate Corresponding to the necessary expansion

The same is truce as concerns the choice of the stee! of the

corrugated wires 2 whose elongation charactersspc¢ mus! be

considered as a funcuon of the required expansion

Now, let ts be assumed tha! it ts required to construct a rein

forcement for » concrete tubular element T having 8 socket ¢

(FXG. 3) There ss cut from the batoce according to the inven-

tion a section A (FIG 1) whose cbmensions correspond to the

those of the reinforcement to be embodied im this pipe oF tu-

bular element T. Thus section can be cut at the site of con.

struction of the pipes from a rol! of latuce oF in a factor) and

Gelivered to the site m the flat condmon

This section has, im the direction of the weft wires. the

desired bength for the remforcement, whereas in the direcbon

of the warp wires J, 2 it has a length equal to wd. in which ds

the desired chameter of the bod) of the reinforcement, that s

the part which s not the socket pari (FIG 2)

The section A of latuce is bent and welded im the form of

cylindncal blank of prereinforcement B (FIG 2.) in ths

prereinforcement B the warp wires 1 and 2 become transverac

cwcula rings 1° and 2 whereas the weft wires 3 remain

rectilinear and embody generatrices of the resultung cyimdn-

ca) prereinforcement B in ths prereinforcement B, the rings

8* and 2 have 2 dhamciecr @ rough!) corresponding to the

mean charmeic: ab of the wall of the body of the concrete pipe

wires of the lattice have a trace of parually open deformations 75 T wo be obtained

O_O ee ae eee

B4

3,578,036

3

Note that Ge mag 2 formed by the corrugated wires 2

have an apparent penmete: ed which w equal to the perimeter

of the rings 1° formed by the wires 3 but a real length which 5

substanval)) greater than thu penmeter owing to their con-

voluvons corrugavons or other nonreculinear portions

When employing tha prereinforcement B benefit s had of

the existence of these corrugated portions of wires 2. which

consttute a sort of reserve by expansion of the mngs 2° and af.

ford larger mngs 2° (FIG 3). the diameter D of the rings 2

corresponding to the mean diameter of the wall of the socke! ¢

of the pipe and bemg substantial!) greater than the iniua!

diameter d whch corresponds to the diameter of the mng: i*

since the socket of a concrete pipe has a cross secuon which 5

greater than that of the body of the pipe

In order to change from the cylindncal prereinforcement B

shown an FIG 2 to the final reinforcement C shown in FIG 3.

the prereinforcement B & mounted on 8 expanding machine

for expanding the mngs 2°. Ths expansion i achieved by

means of a known apparatus, such as an expansible mandre!

controlie¢ by hydraulic pneumatic or mechanical) means and

imserted wm the rings 2*

By means of tt & apparatus, only the corrugated rings 2* are

expanded and undergo both a mechanica! circumferential

elongabon owing to the straightening of the corrugauons or

other deformabons and an mtrinsec elongation, that & an

elongation mm the fibers of the meta! Owing wo the “restore.

tion” of the excess length of the corrugavons, which were as it

were pul m “reserve” mm the mina) latnce, the total elongation

of the mngs from 2* and 2° can be conmderable and m an) case

substanual), greater than the mtninsec poambilmes of elonga

ton of uncorrugated wires

The bongiivdina) wires 3 are also expanded near they ends

im the connechon zone 4 between the expanded par and the

nonexpanded par. However, this connection zone 4 of shor

length so that the natura! or intrinsic elongauon or the wires 3

is sufficrent to permit the deformavon

In this way. the fina! reinforcement C shown in FIG 3 ob

tainec Thi reinforcement compnses a number of longitu-

dina! wires 3 embodying the generatrnces of the reinforcing

cage. @ large numbe: of nonexpanded circular mings 1° of un

corrugated wire and. in the zone of the socket. a smal! number

of mngs 2° of wire which w stil! more or bess deformed, the cor-

rugavons. folds or other convoluvons not having completely

Gtsappeared upon the expansion

Final!), m order to obtain the reinforced concrete pipe T,

this reinforcement C is placed in a mould into which the

concrete & poured The reinforcement s& embodied in the

concrete The pouring can be carned out mm a stat mould or

20

25

4s

4

the expanded penmete: corresponding to the socke! of the

pipe T after adding the elongation due to the straightening of

the deformavons This stee! may be. for example a.d nol en.

chusively, @ SIEMENS-MARTIN stee! of an oxygen-blown

stec!

Note moreover that although the uncorrugated wires of the

rings 1° and of the generatnces 3 may be Bagh! wires. tha o

to ba), wires hardened by drawing since the, are not intended

to be elongated and thei elongavor charectenstics before

fracture car de low. the wires 2 may be of a stce! having higher

charactersucs of elongation before fracture and preferably

but nol exe sively, monaging

Owing to the iniua’ deformavon of the wires 2 wn the form of

sinvosibes. convoluvons. corrugavons of folds. ft B possibic to

elongate therm to 8 substanual!) greater extent than would be

permutted by the intrinsic elongavor charactersucs of these

wires wher uncorrugated Consequentl). m & possibic to

manufacture in one prece a reinforcement for a concrete pipe

having 8 socket by a large expansion of the par of the prerein

forcement B corresponding to the socket zone of the pipe T

mmtended to be remforced

Thus. owing to the Invenvbor, M & posmbic to construct a

reinforcement m one piece, which & Quicker t& produce and

empl) than known reinforcements m two preces which are

mmterconnected This one-piece reinforcement can be more

easily bent than reinforcement in two pieces m the mould for

the concrete element or pipe

Further. mstead of transporung the remforcements to the

place of manufacture of the concrete pipes. m the

prefabncated form, which B space-comsummg and babic to

damage the reinforcements un the course of transport, the sim

pbcity of the method according to the mrendon enables the

reinforcement: t© be constructed on the sc. from roll or

panels of latuces which are eas) t© anspor with the

minmum of space consumpvon

The numenca! examples of the followmg table show the

substantia! increase in the possibiiives of elongavon of the lat

tice wires, owing to the length of wire which 5 put in reserve in

each corrugabons and restored by straightening

Ths table shows the resut: of statuses established from

man\ samples having undergone tensiles stresses under the

condrvons prescribed in the “Rules for the use of reinforced

concrete BA 6& *

The sample: were plane latuces of stee! wires having a

diamete: of 2.90 mm , the deformed wires had sinusoida! cor

rugauvons whose prich or wavelength was 30 mm and whose

amplitude was of the order of 10 mm

TABLE

Leet pro

@ucins Ei:

eer Btate of genx:

Type of wire gatiot tbe wire perce:!

Ordinary bright mid Marti sitet! ........... @ «Uncorrogaied ee

Corrugaicc ... 3)-35

Ordinary annealed miki Martin ster). ........ _—_ a OD oeorragsie! a

Corrugaied _. oe

Nore. Elongatior increases: wher the wiki of ibe masher of the bettice decrease

im a centrifuga! casting mould

Thus, m wil) be understood that the shape and amplitude of

the convolutons, sinuosities. corrugations, folds or other

deformations of the wires 2 must be such that the sum of the

mtrinsx elongation of the wires 2, duc to the charactensncs of 65

elongation proper to these wires, and the elongation of

“restoravon “due to the straightening of the deformatons. al-

lows an amphtude of expansion of these wires 2 which os suffi.

cient to produce, without fracture, a reinforcement for a

socket having # diameter D substantially greater than the 70

diameter d of the body of the armature

Im view of the fact that for practical reasons the length of

wire put m reserve in the deformations s nonetheless inmited,

the stee! of the wires 2 is selected from 8 quality having an in-

As can be seen, the gain m tota! elongabon obtained with

bright wire owing to the corrugavons & mcreased by 25 per

cent in absolute value hs relatve value is consxicrable since it

is mulupbed by about 6

The gain im the elongabon due to the corrugabons with an

mealed wire is between 2! and 25 percent m absolute value It

is bess in relative value than m the case of the bnght wire since

the imtrinsic elongation charactersucs of this wire when un

corrugated are alrcady appreciable

However, the tota) elongabon is greater for th: annealed

corrugated wire than for the bngh! corrugated wire so that it

allows a greater expansion than the corrugated brgh! wir,

which corresponds to a greater rato between the diameter of

the socket of the prpe and the diameter of the body of the

trinsk elongation characteristic which is sufficient to obtain 75 pipe

B5

3,578,036

$s

The example described hereinbefore relates to 8 concrete

pipe hevn.g 8 circular section In the embodiment show. im

FXG 4, the invention & appired w a pipe T' having an oval sec-

won and = fiat portion The reinforcement C’ bas @ cor-

responding shape Thi shape is applicable in particular to

concrete pipes for drains

The deformauons (folds. sinucsiues. loops, convolubons or

corrugations) can be im the plane of the latuce panel or pro-

ject fror. ths planc, that s. the deformations can be, in the

ben! reinforcement cage. m the theoreuca) surface similar to

that of the tubular element and passing through the bongitu-

dina) of generatrix wires. or project inwardly or outwardly

relabve to ths theoreb<a) surface and onented m any way

Although specific embodiment of the invenvon have been

described, many tnodifications and changes may be made

therein without departing from the scope of the invenbon as

defined in the appended claims

Thus th invention is appbcable not only to tubular ek-

ments but also to oval, ellrpucal or pnsmatx tubular elements.

the reinforcement having an oval, ellptica) or pnsmatic shape

Having now described my invenbon what | claim as new and

Geure to secure by Letters Patent is

Iclam

6

1. A method for producing s reinforcement having a socket

for @ reinforced concrete tubula: element having 8 sockci,

from 8 lattice having warp wires and wef wires and wherein s

number of the warp wires have successive deformed non.

5 rectilinear portions, the deformations of ani’ vortons being

permanent and such that, upon exertion of tensile stress

thereon, said poruons can be al leas! partially straightened,

whereas the other warp wires and al! the ewefi wires arc

rectilinear, said method comprising. in a firs: stage. forming

10 prereinforcement by bending and closing onto themse!ves. in

the form of welded rings. the transverse wires of 8 section of

eaid latuce, said section being such tha! the transverse wires

corresponding to the socket, and only these wires, have a suc-

cession of permanently deformed nonrectilinear porbons so

15 that they have an apparent perimeter equal to the perimeter of

the nondeformed transverse wires of the rest of the prerein

forcement but a rea) length substantial!) greate: than sad

perimeter, thtn, m a second stage. rachally expanding Ux

prereinforcement so as to elongate at beast partal!) sad non

20 rectilinear porvons of the transverse wires of ms socket and

impar thereto an apparent perimeter which 5 substanual!)

greater than that of the rest of the prereinforcement and cor-

responds to that of the desired socke of the reinforcement

25

35

50

55

65

70

75

B6

PATENT UPDATE: THE ROAD TO UNIFORMITY AND ITS POTHOLES

George Whitney

Buunbaugh, Graves, Donohue & Raymond

New York, NY

Assisted by Brendan J. O'Rourke, Esc.

Buunbaugh, Graves, Donohue & Raymond

B7

First let us look to the cases addressing Section

103. In the seven years prior to the C.A.F.C., nine of the

eleven regional courts of appeals addressed Section 103 some

41 times. In 36 of those cases, the district court cited

the Supreme Court decision in Graham v. John Deere, 383 U.S.

1 (1966). In only a few of those cases did the decisions

also cite and recognize as controlling the Supreme Court's

decisions in Anderson's Black Rock, Inc. v. Pavement Salvage

Co., 396 U.S. 57 (1969), and Sakraida v. Ag Pro Inc., 423

U.S. 273 (1976).

Since October 1, 1982 (relying on an excellent

Statistical analysis by Donald R. Dunner in the April l,

1985 -- Practicing Before The Court of Appeals For The

Federal Circuit program that he chaired for the Practising

Law Institute in New York City, which included cases decided

through January 18, 1985), the Federal Circuit has addressed

Section 103 -- 45 times in the 135 cases considered which

arose in the district courts. In ten cases, the issue of

Section 103 hac been before a jury. Section 103 was addressed

B8

in 2 of the 4 Claims Court cases it has decided, in 3 of the

9 I.T.C. cases, and in 114 of the 149 PTO cases.

Fraud and inequitable conduct have been considered

12 times.

Section 102 was considered in 22 out of 135 dis-

trict court cases, 1 out of 4 Claims Court cases, 2 out of 9

I.T.C. cases, and 5 out of 149 PTO cases.

Section 112 was addressed in 10 district court

cases, once in the Claims Court cases, once in the I.T.C.

cases, and 12 times in the PTO cases.

The issues of infringement were addressed in 52

out of the 135 district court cases, twice in Claims Court

cases, and five times in the 9 I.T.C. cases.

Increased damages has been addressed 7 times,

frivolous appeals 10 times, attorneys' fees 21 times, and

jury trials 15 times.

Bearing in mind the tremendous effort that has

been made by the members of the court in these highly

expository written opinions -- irrespective of what one

might say about the inherent problem of obiter dictum, we do

have a highly comprehensive controlling body of law on which

to base our practice.

I find concern in the fact that the Federal Circuit

remanded in only 3 of 135 district court appeals and in only

2 of 149 PTO appeals. Since the Federal Circuit reversed

B9

either in whole or in part 42 times (36%) in the district

court cases and 30 times (20%) in the PTO cases, I respect-

fully suggest that they have gone a long way to create the

perception that in the zeal to be result oriented, they have

arrogated the roles of trial judge and jury. Such perception,

in contrast to the intent to reduce litigation bv creating

uniformity and predictability, may be an incentive to liti-

gate -- not to settle -- prior to testing the theories of

one's case before the Federal Circuit.

B10

CAFC: THE SUPREME COURT OF PATENT LAW

As a result-oriented court, the CAFC has set up

vehicles within patent law which it can use to obviate the

traditional standards of review in reversing lower court

decisions. It appears that not enly have the result-oriented

vehicles been established, they have been used in several

recent decisions to circumvent the factual findings of the

trial courts. Before highlighting certain key decisions in

which the CAFC has used the artificial devices, a more de-

tailed analysis of exactly what the "vehicles" are and how

they work is necessary.

Perhaps the most important issue which the CAFC has

seized upon in giving itself the latitude to decide each case

is whether obviousness is a question of law or a question of

fact. While the CAFC has settled the issue in a legal sense,

its subsequent application of its decisions on the issue has

given patent practitioners little guidance on how the CAFC

will decide the obviousness question.

More specifically, the CAFC has decided that, while

the underiying considerations regarding the issue of obvious-

ness are factual determinations governed by the clearly er-

roneous standard of Rule 52(a) of the Federal Rules of Civil

t 4

Procedure, the ultimate cetermination of obviousness is a

ct

legal issue not subject to the clearly erroneous standard.

SSIH Equipment, S.A. v. United States International Trade

Commission, 713 F.2d 746, 218 U.S.P.Q. 678 (Fed. Cir. 1983);

Atlas Powder Co. v. E.I. Du Pont de Nemours & (Co., 224

U.S.P.Q. 409 (Fed. Cir. 1984).

atBe

This approach has unquestionably become the law

the CAFC and was

Fromson vv.

Advance

B11

in

followed as recently as February 1985 in

Offset Plate, Inc., Appeal Nos. §84-

1542/1553,

applicati

ever,

~

of

dichotomy

whereby it

ness without

erroneous. The

the trial court

that the trial

plain error.

ticularly danger

constructing the

question whether

an appeliate

having

r. February 21, 1985).

not.

t, has established an approach

court's findings on obvious-

to hold a single finding of fact clearly

agree with the factual findinas of

way down the line but then conclude

conclusion

Court has given itself is a

par-

h the CAFC is, in part,

foundation of uniformity, and brings into

is limiting itself to its

Sa. Yas

clusions by

of the Francois

is a question of

first stating

patent in suit

in determining

trial

: : 7 } -

findings as legal con-

the single claim

TA 4

LUO

law and question is freely reviewable

by this court." EWP Corp., supra, slip op. at p. 12. The

Court has indicated in the first sentence of its opinion that

the vehicle it will use to arrive at its own conclusion is

the question of law versus question of fact distinction.

Unfortunately for the plaintiff, the questions of

fact in EWP Corp. were "freely reviewed.” This point is

illustrated by the Court's language when it stated the fol-

lowing:

Having corsidered the careful review

of the prior art by the district court

and the briefs in this court, we set

forth below what appears to us to be the

prior art most relevant to the method

claimed in the patent in suit.

EWP Corp., supra, slip op. at 6 (emphasis added). It is the

role of the trial court to determine what the most relevant

prior art is, yet the CAFC, in essence, replaced the trial

court's findings with its own. Moreover, the language used

by the CAFC draws the reader's attention to what the Court is

doing: “{t]Jhe other most relevant prior art, in our view, is

eee EWP Corp., supra, slip op. at p. 8 (emphasis added).

The Court's analysis of the prior art comes danger-

ously close to a de novo review of the facturl issues.

In rejecting the trial court's analysis of the

secondary considerations,” the CAFC replaced the trial

court's findings with its own speculation finding that "it is

not unusual to see astute businessmen capitalize on it [the

patent in issue] by erecting a temporarily successful licens-

ing program thereon." EWP Corp., supra, at p. 17.

wiht ns

The panel of judges in EWP Corp. consisted of

Judces Rich, Davis, anc Baldwin. In his concurring opinion,

Judge Davi attempts to clarify exactly why the secondary

considerations, on which the district court relied, would not

tip the scale in the patentee’s favor. Again, one finds the

FC guilty of replacing the district court's findings with

its own, absent a ruling that the district court was clearly

erroneous. Judge Davis states that, had the teachings of the

prior art (foreign patents) been widely circulated, "I _ judge

that the invention at issue would have been made very much

earlier and would have attained like success." EWP Corp.,

supra, Slip op. (Davis, Circuit Judge, concurring at p. 2 of

the concurrence) (emphasis added).

Not only has Judge Davis made his own factual find-

ing, the findins is based on mere speculation.

C's reputation since its inception has been

"pro-patent,' and its reversal of the district court's (non-

jury) hoidinae of nonobviousness, therefore, is all the more

curious.

A seccrc legal issue upon which the CAFC has seized

in orcs to Ge -.c2z the guestion of obviousness as it sees fit

is the s».-calied "secondary considerations" question -- i.e.,

how m:icr weicht must a trial court give to secondary consid-

erations in determining the question of obviousness. Before

illustrarcing how much latitude the CAFC has granted itself in

reviewing secondary considerations, a review of the CAFC

<a

B14

decisions and the evolution of the factors under Graham v.

John Deere is fundamental to an understanding of how the CAFC

presently approaches the issue.

Clearly, under Graham, the obviousness question

rested on factual determinations as to (1) the scope and

content of the prior art, (2) the differences between the

claimed invention and the prior art, and (3) ‘the level of

ordinary skill on the art. Graham v. John Deere Co., 383

U.S. 1, at 17, 148 U.S.P.Q. 459, at 466-467 (1966). Although

the Supreme Court did discuss secondary considerations, the

secondary considerations were viewed differently than the

enumerated three-pronged analysis.

Before the CAFC tackled the issue, certain courts

viewed secondary considerations as evidence which would tip

the balance in favor of patentability in close cases. See,

e.g., American Seating Co. v. National Seating Co., 568 F.2d

611, 199 U.S.P.Q. 257 (6th Cir. 1978); Stratoflex, Inc. v.

Aeroquip Corp., 218 U.S.P.Q. 231 (E.D. Mich. 1982). However,

under the CAFC decisions, it is clear that secondary consid-

erations are to be reviewea and considered in all cases, not

merely in the close cases.

In Stratoflex, Inc. v. Aeroguip Corn., ie. Cea

1530, 218 U.S.P.Q. 871 (Fed. Cir. 1983), the CAFC ruled that

secondary considerations should always be considered by the

trial court, reasoning further that "({iJndeed, evidence cf

secondary considerations may often be the most probative and

B15

cogent evidence in the record." Stratoflex, Inc., supra, 218

U.S.P.Q. at 879.

While the CAFC concluded that it was error for the

district court to exclude such evidence from consideration,

the CAFC did not remand the case for further proceedings.

Instead, the CAFC decided that since such evidence (although

not considered by the district court) was in the record, the

interests of judicial economy dictated its consideration and

evaluation by the CAFC on the appeal.

Under its earlier decisions, therefore, it appears

that while the CAFC required an analysis of the secondary

considerations, failure by the district court to consider

such evidence would not compel the CAFC to reverse or vacate

the district court decision.

Four months after the CAFC's decision in Strato-

flex, the CAFC reversed a holding of invalidity based upon

what it termed "objective evidence." W.L. Gore & Associates

-. @eorioee, ine,., 721 F.26 1540, 220 U.S.?.@. 303 (Fed. Cir.

1983). The reference to "objective evidence" as opposed to

“secondary considerations" can be seen as an attempt by the

CAFC to give such evidence primary significance, since the

term “secondarv" was viewed by some courts to mean “of less

importance."

Clearly, under the CAFC decisions, “secondary con-

"

siderations (commercial success, fulfillment of long felt

need, etc.) were beginning to take on primary significance.

B16

Under the present CAFC decisions, the Court has

been careful to use the term “objective evidence." Further-

more, the present cases make clear the notion that objective

evidence should be viewed as a fourth factor under Graham.

Litton Industrial Products, Ince. v. Solid State Systems

Corp., Appeal Nos. 84-818/858, slip op. (Fed. Cir. Feb. 29,

1985). In Litton, the Court lists objective’ evidence as "(4)

other ('secondary') considerations, which may serve as indi-

cia of unobviousness," citing Graham _v. John Deere Co. The

Court's peculiar treatment of the word “secondary" suggests,

again, that it means something other than its usual meaning.

The court defines "secondary " :o mean "other" when it

stated, "As to other considerations .... Litton, supra,

slip op. at 14.

Now that the CAFC has given objective evidence

primary consideration, it can use this factor to decide con-

clusively on the issue of obviousness or it can simply find

that the objective evidence does not overcome a strong show-

ing of obviousness.

As explored above, the CAFC has decided that objec-

tive evidence can constitute the most probative and compel-

ling evidence on the issue of obviousness. Stratoflex, Inc.

Vv. Aeroquip Corp., /13 F.2d 1530, 218 U.S.P.Q. 871 (Fed. Cir.

1983); W.L. Gore Associates, Inc. v. Garlock, Inc., 721 F.2d

1540, 220 U.S.P.Q. 303 (Fed. Cir. 1983).

ts |

Bi7

The latitude which the CAFC has granted itself

under the guise of objective evidence is apparent upon an

examination of its recent decisions. At one end of the spec-

trum is the Court's decision in Simmons Fastener Corp. v.

Illinois Tool Works, Inc., 739 F.2d 1573, 222 U.S.P.Q. 744

(Fed. Cir. 1984). It is clear under Simmons that objective

evidence of nonobviousness is not only a factor which must be

considered, such evidence may be controlling even when the

teachinas of the prior art prima facie suqgest the claimed

invention. Simmons Fastener Corp., supra, 222 U.S.P.Q. at

747.

Such was the case in Simmons. The CAFC agreed with

the district court that the teachings of the prior art sug-

gested the invention in question, yet the CAFC reversed the

district court's holding of obviousness, based upon the dis-

trict court's failure to consider the evidence of commercial

success. However, the CAFC did not state with any certainty

exactly what objective evidence upon which it was basing its

reversal.

This case is curious because it cites Stratoflex

and W.L. Gore. While relying on Stratoflex for its legal

propositions, Simmons is in direct conflict with Stratoflex

in the CAFC's application of the legal standards.

In Stratoflex, the CAFC found that the district

court erred in not considering the secondary considerations

and then made its own findings with respect to the objective

B18

evidence. Ultimately, the CAFC affirmed the district court's

finding of obviousness even though the district court erred

in reviewing only three of the Graham factors.

In Simmons, the CAFC reversed the district court's

holding of obviousness, based upon the trial court's failure

to consider the objective evidence. Oddly enough, the CAFC

did not refer specifically to the objective evidence which it

felt established nonobviousness. The Simmons decision is

even more puzzling since the CAFC agreeed with the district

court that the prior art suggested the invention.

These two cases illustrate that the CAFC can use

the fourth factor of the obviousness question to decide each

case as it sees fit.

Whereas the objective evidence in Simmons overcame

the fact that the prior art suggested the invention, in EWP

Corp. v. Reliance Universal Inc., Appeal No. 84-711, slip op.

(Fed. Cir. Feb. 21, 1985), the CAFC brushed aside strong

evidence of commercial success in reversing the district

court's holding of nonobviousness. The trial court in EWP

Corp., 221 U.S.P.Q. 542 (S.D. Ohio 1983), found that virtu-

ally every manufacturer in competition with the plaintiff had

sought and obtained a license in the claimed invention. Fur-

ther, the district court found that the invention had filled

a long-felt and serious need in the relevant industry and

that it had an immediate and extensive impact on the indus-

try.

—_

The CAFC in EWP Corp. dismissed the secondary con-

siderations by describing the licensing agreements (every

competitor in the United States except defendant obtained

one) as "a temporarily successful licensing program." EWP

Corp., supra, slip op. at 17. In so stating, the CAFC has

made its own factual finding cloaked in the question of law

versus question of fact distinction.

So far we have seen two separate but closely relat-

ed problems on the issue of obviousness and two separate but

related vehicles with which the CAFC can use to arrive at a

desired result.

It is becoming increasingly clear that the result

the Court seeks is not necessarily a "pro-patent" approach.

Rather, it appears that the Court is attempting to give it-

self the latitude to decide cases whichever way it feels most

strongly, regardless of the established standards of review

which have traditionally guided the federal circuit courts.

A third vehicle used by the CAFC in deciding cases

according to its own preferences rests on the presumption of

validity. While the presumption of validity, itself, does

not change under the Court's decisions, the CAFC's applica-

tion of the presumption has had varying importance depending

upon its ultimate holding on obviousness.

The CAFC has made clear that the presumption of

validity under 35 U.S.C. § 282 can neither be strengthened

nor destroyed. It is, instead, a procedural device placing

-28-

the burden of proof upon the party asserting invalidity.

D.L. Auld Co. v. Chroma Graphics, 714 F.2d 1144, 219 U.S.P.Q.

13 (Fed. Cir. 1983). The Court has focused on the burden of

overcoming the presumption of validityg and not the presump-

tion itself.

While the presumption is unchanged, the burden of

overcoming the presumption is “less easily carried when the

evidence relied upon consists only of the prior art consid-

ered by the examiner." Hughes Aircraft Co. v. United States,

717 F.2d 1351, 219 U.S.P.Q. 473 (Fed. Cir. 1983). Converse-

ly, the burden is more likely to be carried when prior art

more relevant than that considered by the examiner is intro-

duced. SSIH Equipment S.A. v. United States International

Trade Commission, 718 F.2d 365, 218 U.S.P.Q. 678 (Fed. Cir.

1983).

In EWP Corp. v. Reliance Universal Inc., Appeal No.

84-711, slip op. (Feb. 21, 1985), in reversing the trial

court's holding of nonobviousness, the CAFC never resolved

he guestion on the presumption of validity. The CAFC did

not discuss whether the appellant had proven invalidity by

clear and convincing evidence.

The CAFC, in determining validity, therefore, can

either (1) stress that the burden of overcoming the presump-

tion is more easily carried since move relevant prior art has

been brought tc the court's attention, (2) stress that the

burden is less easily carried since the examiner has made nis

=20—

B21

determination in light of the same prior art, or (3) remain

silent as to the presumption and the standard of proof.

One issue which was, until recently, in apparent

conflict due to the differing views of the circuit judges was

whether the § 282 presumption of validity has any bearing in

a reexamination proceeding. In In re Etter, Appeal No. 84-

1213, slip op. (Fed. Cir. Feb. 27, 1985), the question was

resolved by the Federal Circuit sitting in banc. The CAFC

decided that the § 282 presumption is not applicable in re-

examination proceedings. The Court reasoned that reexamina-

tion permits petitions to the Patent Office based upon new

information about preexisting technology which may have es-

caped review at the time of the initial examination. In re

Etter, supra, slip op. at 8.

In concurring, Judge Nies, joined py Judges Smith

and Bissell, raised persuasive arguments that matter previ-

ously received by the Patent Office in its original deter-

mination should carry the statutory presumption of validity

under § 282. She argued that while reexamination is tech-

nically an ex parte proceeding, it is, in many cases, a con-

tinuation of inter partes proceedings. Judge Nies further

argued that the majority's holding puts parties, assserting

invalidity in civil cases, in a better position by removing

the § 282 presumption, where the civil action is stayed pend-

ing the outcome of a petition for reexamination.

~~

It seems that no matter how the district court has

approached a particular issue, the CAFC has the latitude to

resolve the issue of its own accord. We saw in EWP Corp.,

for example, that the CAFC reversed the district court's

"thorough analysis" on the issue of obviousness without find-

ing any of the underlying factual determinations clearly

erroneous. The district court applied the correct standards

but was reversed as a matter of law.

In contrast, the CAFC affirmed the district court's

finding of obviousness even where the district court applied

the “genius” inquiry no longer viable under Graham _v. John

Deere Co. Vandenberg v. Dairy Equipment Co., 224 U.S.P.Q.

195 (Fed. Cir. 1984). The Court brushed aside the improper

ise of the "genius" standard by finding, "“[h]lowever, we do

not believe that this unfortunate lapse into a bygone era

tainted the court's decision." Vandenberg, supra, 224

U.S.P.Q. at 197. If a "genius" inquiry does not taint a

court's determination on the issue of obviousness, why did

the Supreme Court reject the test in Graham _v. John Deer

Co.? One must expect that, had the CAFC disagreed with the

district court's ultimate conclusions, the “unfortunate lapse

into a bygone era" would have been elevated to the status of

"reversible error."

Perhaps one reason why the CAFC has applied appar-

ently uniform standards differently is the fact that, while

the CAFC is only one court, it is made up of many different

—. 7

B23

panels. It functions as would any other circuit. a 26

prone, therefore, to conflicting decisions just as other

circuits are prone to internal disagreement.

Yet, since, at present, the CAFC functions as the

final arbitor of patent disputes, the scenario is even more

complex. Patent practitioners are faced with analyzing final

decisions written by numerous different panels. To illus-

trate the problem, picture the United States Supreme Court

handing down decisions based upon the input of a three-member

panel. The assignment of the case to a certain panel could

well determine the outcome of the case before it is even

decided. For example, a criminal defendant asserting viola-

tions of his constitutional rights would much prefer a

three-member panel of Marshall, Brennan, and Blackman to a

panel consisting of Burger, Powell, and Rehnquist.

The danger facing patent practitioners is that the

CAFC has taken on the role as the final arbitor, yet the

panel of judges is different in nearly every case. While the

Supreme Court has certainly had conflicting opinions, each

decision specifically shows whether the Court is united,

sharply divided, or somewhere in between the two. The weight

of their authority is measurable.

Such is not the case with the CAFC, yet it has been the

final word in patent cases since its inception in October

1982. The longer the Supreme Court waits to review a patent

case, the greater the impact of the CAFC line of cases be-

~~

If the Supreme Court affirms a CAFC decision, the

CAFC's power to decide cases whichever way it wants will be

increased. In order to reverse a holding of the

CAFC, the Supreme Court is faced with the prospect of having

CAFC's approach to a long line of