Opposition Brief — Novicky v. Syntex Ophthalmics, Inc.

» | . Supreme Court, U.S,

+> FILED

— ~FEB 21 1986

IN THE JOSEPH F. SPANIOL, JR.

Supreme Court of the United Statex— -_

October Term, 1985

NICK N. NOVICKY,

Petitioner,

VS.

SYNTEX OPHTHALMICS, INC. and ARAPAHOE

CHEMICALS, INC. (now SYNTEX CHEMICALS, INC.),

Respondents.

NICK N. NOVICKY,

Petitioner,

US.

GEORGE F. TSUETAKI and

FUSED KONTACTS OF CHICAGO, INC.,

Respondents.

On Petition for a Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

BRIEF OF RESPONDENTS IN OPPOSITION

James W. GouLp

MorGAN, FINNEGAN, PINE, FoLtey & LEE

345 Park Avenue

New York, New York 10154

(212) 758-4800

Counsel of Record for Respondents

Syntex

Of Counsel:

JoserpH A. DeGIROLAMO

MorGAN, FINNEGAN, Pine, Fotey & Lee

Counter Statement of

Questions Presented for Review

1. On remand, did the Court of Appeals for the Federal

Cireuit properly consider Marrese v. American Acad-

emy of Orthopaedic Surgeons, 470 U.S. , 105 S.Ct.

1327, 84 L.Ed. 2d 274 (1985), in reaffirming its prior

decision?

2. Was the extraordinary writ of mandamus properly

denied when mooted by issuance and reaffirmance of

the mandate of the Court of Appeals for the Federal

Circuit to the District Court?

(

It

Parties to the Proceeding

The parties named in the caption are the only parties

to this action. Respondents’ statement pursuant to Rule

28.1 is set forth in the margin.*

=

* Syntex Ophthalmics, Inc. and Arapahoe Chemicals, Inc. (now

Syntex Chemicals, Inc.) are Delaware corporations. They were

formerly sister corporations, each being a wholly owned subsidiary,

directly or indirectly, of Syntex (U.S.A.) Inc. which is a Delaware

corporation with its principal place of business in California. As of

December 19, 1985, all stock of Syntex Ophthalmics, Inc. was pur-

chased by Pilkington Brothers, p.lc., a corporation of the United

Kingdom. Syntex Ophthalmics, Inc. has its principal place of busi-

ness in Arizona. Syntex Chemicals, Inc. has its principal place of

business in Colorado.

Petitioner Nick N. Novicky, an individual, is affiliated with Pro-

gressive Chemical Research Inc. in Whitby, Ontario, Canada, and

has a laboratory in Calgary, Canada at 4315 64th Avenue.

George F. Tsuetaki is a resident of the state of Illinois with a

business ~ddress at Five North Wabash Avenue, Chicago, Illinois.

Fuse Kontacts of Chicago, Inc. is an Illinois corporation wholly

owned by George Tsuetaki with its principal place of business in

Chicago, Illinois.

TABLE OF CONTENTS

PAGE

COUNTER STATEMENT OF QUESTIONS PRE-

SENTED FOR REVIEW I

PARTIES TO THE PROCEEDING II

OPINIONS BELOW 2

A. The Federal Case 2

B. The State Case 3

JURISDICTIONAL STATEMENT 3

SUMMARY OF ARGUMENT 3

COUNTER STATEMENT OF THE CASE 4

ARGUMENT 5

A. Summary Judgment Of Syntex’ Title To The

Non-Private Patents And Applications Was

Properly Reaflirmed 6

B. The Recorded Assignments Perfect Syntex’

Title To The Patents In Issue 9

©. Denial Of Mandamus Was Proper Because

The District Court Was Acting Under A

Mandate 12

D. Novicky’s Remaining Arguments Are Barred

By Law Of The Case, Are Beyond The Nar-

row Remand, Or Are Premature 13

CONCLUSION 16

IV

TABLE OF AUTHORITIES

Cases:

Bradley v. Howard Hembrough Volkswagen, Inc., 89

Til. App. 3d 121, 411 N.E.2d 535 (4th Dist. 1980)

Bushman Construction Co. v. Conner, 307 F.2d 888

(10th Cir. 1962)

Crown Die & Tool Co. v. Nye Tool & Machine Works,

PAGE

~]

9

261 U.S. 24, 43 S.Ct. 254, 67 L.Ed. 516 (1923) 11

Dunigan v. United States, 274 U.S. 195, 47 S.Ct. 566,

71 L.Ed. 566 (1927) 16

Ellis v. Dixon, 349 U.S. 458, 75 S.Ct. 850, 99 L.Ed. 1231

(1955) 16

Gayler v. Wilder, 51 U.S. 477, 13 L.Ed. 504 (1850) 11

Goodman v. Mead Johnson & Co., 534 F.2d 566 (3rd

Cir. 1976), cert. denied, 429 U.S. 1038 (1977) i)

Heywood-Wakefield Co. v. Small, 96 F.2d 496 (1st Cir.

1938), cert. denied, 305 U.S. 663 (1938) 12

Marrese v. American Academy of Orthopaedic Sur-

geons, 470 U.S. , 105 S.Ct. 1327, 84 L.Ed. 2d

274 (1985) | 8, 4, 5, 6

Mull v. Ford Motor Co., 368 F.2d 713 (2d Cir. 1966) . 10

Myers v. Manchester Insurance & Indemnity Co., 572

F.2d 134 (5th Cir. 1978) 10

Novicky v. Syntex Ophthalmics, —— U.S. ——, 105

S.Ct. 1740, 84 L.Ed. 2d 807 (1985) 3

Pittsburgh, Cincinnati, Chicago & St. Louis Railway

Co. v. Gage, 286 Ill. 213, 121 N.E. 582 (1918) | 7

PSL Realty Co. v. Granite Inv. Co., 86 Ill. 2d 291, 427

N.E.2d 563 (1981)

~]

PAGE

Seaife v. Western North Carolina Land Co., 90 F. 238

(4th Cir. 1898), cert denied, 173 U.S. 705 (1899) . 11

Shlensky v. South Parkway Building Corp., 44 Ul.

App. 2d 135, 194 N.E.2d 35 (1st Dist. 1963) 7,8

Spiller v. Continental Tube Co., 95 Ill. 2d 423, 447

N.E.2d 834 (1983) 6

Syntex Ophthalmies, Inc. v. Novicky, 214 U.S.P.Q. 272

(N.D. Tl. 1982), aff’d sub nom., Syntex Ophthal-

mies, Inc. v. Tsuetaki, 701 F.2d 677 (7th Cir.

1983) —~* 7 a te

Syntex Ophthalmies, Inc. v. Novicky, 591 F. Supp. 28

(N.D. Ill. 1983), aff’d m part, rev'd in part, 745

F.2d 1423 (Fed. Cir. 1984) 3 2, 13, 14

Syntex Ophthalmics, Inc v. Novicky, 745 F.2d

1423 (Fed. Cir. 1984), vacated 105 S.Ct. 1740

(1985) dy 8, 18, 14, 15

Syntex Ophthalmics, Inc. v. Novicky, 767 F.2d 901

(Fed Cir. 1985) .. 3,13

Tsuetaki v. Novicky, No. 80 CH 4724 (Cir. Ct. Cook

Cty. Ill. Jan. 31, 1981) | 3

Tsuetaki v. Novicky, No. 81-1727 (3d Div. 1983) . 3, 14, 15

United States v. Lovasco, 431 U.S. 783, 97 S.Ct. 2044,

52 L.Ed. 2d 752 (1977) 16

Waterman v. Mackenzie, 138 U.S. 252, 11 S.Ct. 334,

34 L.Ed. 923 (1891) aoe |

White v. Arco/Polymers, Inc., 720 F.2d 1391 (5th Cir.

1983) 10

te i

PAGE

Statutes:

28 U.S.C. §1254(1) S

28 U.S.C. §1738 5

Other Authorities:

4 WALKER On Patents 6341, at 367, 370-74 (Deller’s 2d

ed. 1965) hiss 12

9 Wicmore, Evivence §2590, at 822 (Chadbourn rev.

1981) | 1]

IN THE

Supreme Cont of the United States

October Term, 1985

No. 85-1243

to

Nick N. Novicxy,

Petitioner,

US,

Syntex OputHaumics, Inc., and ARAPAHOE

Cuemicats, Inc. (now Syntex CuHeEmicats, Ivc.),

Respondents.

Nick N. Novicxy,

Petitioner,

vs.

Grorce F. Tsurraki and Fusep Konvacts or Cuicaco, Ine.

, b

Respondents.

On Petition for a Writ of Certiorari to the United States

Court of Appeals for the Federal Circuit

ee

BRIEF OF RESPONDENTS IN OPPOSITION

Respondents, Syntex Ophthalmics, Inc. and Arapahoe

Chemicals, Inc. (now Syntex Chemicals, Inc.) (hereinafter

collectively ‘‘Syntex’’) respectfully request that the Court

deny Nick N. Novicky’s (hereinafter ‘‘ Novicky’’) Petition

*)

for a Writ of Certiorari. Neither the questions presented

nor the reasons given by petitioner for grant of the writ

provide appropriate bases for the exercise of this Court’s

discretionary jurisdiction, because there was no error below

and because petitioner’s assertions are (a) barred by un-

appealed law of the case, (b) beyond the narrow scope of

remand or (c) premature because asserted in a pending

Appeal in the Federal Circuit.

OPINIONS BELOW

A. The Federal Case

The decision of the District Court for the Northern

District of Ulinois granting Syntex a preliminary injunc-

tion is reported as Syntex Ophthalmics, Inc. v. Novicky,

214 U.S.P.Q. 272 (N.D. Ill. 1982), aff’d sub nom., Syntex

Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677 (7th Cir. 1983).

The opinion of the District Court for the Northern District

of Illinois holding Novicky misappropriated Syntex’ trade

secrets and granting a final injunction is reported as Syn-

tex Ophthalmics, Inc. v. Novicky, 59° F. Supp. 28 (N.D.

Il. 1983), aff’d m part, rev’d im part, 745 F.2d 1423 (Fed.

Cir. 1984). The opinion of the Court of Appeals for the

Federal Circuit affirming the District Court’s findings of

trade secret theft and grant of summary judgment as to

Syntex’ title to six of the eight patent and applications

in issue is reported at 745 F.2d 1423 (Fed. Cir. 1984). On

remand on other issues, the District Court entered judg-

ment for Syntex on September 4, 1985, now on appeal to

the Federal Circuit. Novicky’s first Petition for Certiorari

was grantea, and judgment vacated and remanded on

*)

>?

March 18, 1985, reported at Novicky v. Syntex Ophthalmics,

U.S. ——, 105 S.Ct. 1740, 84 L.Ed.2d 807 (1985).

The opinion of the Federal Circuit on remand, the subject

Ine.

of the present Petition, is reported at Syntex Ophthalmics,

Inc. v. Novicky, 767 F.2d 901 (Fed. Cir. 1985).

B. The State Case

The decision of the Lilinois state court is reported as

Tsuetaki v. Novicky, No. 80 CH 4724 (Cir. Ct. Cook Cty.

I. Jan. 31, 1981). The Illinois Appellate Court decision

sor

is reported as Tsuetaki v. Novicky, No. 81-1727 (3d Div.

1983).

JURISDICTIONAL STATEMENT

This Court only has jurisdiction to review the decision

of the Court of Appeals for the Federal Cireuit in this

matter pursuant to 28 U.S.C. § 1254(1), if a writ of certio-

rari is granted upon Novicky’s petition. The judgment of

the Federal Circuit for which this Court’s review is sought,

was decided July 18, 1985.

SUMMARY OF ARGUMENT

This Court’s decision of March 18, 1985, ordered the

Federal Circuit to reconsider its prior decision in light of

Marrese v. American Academy of Orthopaedic Surgeons,

470 U.S. ——, 105 S.Ct. 1827, 84 L.Ed. 2d 274 (1985), by

applying Illinois law of collateral estoppel rather than

federal law. The Federal Circuit did precisely that, and

in a well-reasoned opinion reaffirmed its prior decisien

4

The District Court, meanwhile, proceeded under the

original remand from the Federal Circuit which was not

appealed to this Court and was therefore unaffected by this

Court’s decision. Further, no final judgment was entered

by the District Court until the Federal Circuit mandate

was issued, mooting any controversy about the power of

the District Court to act.

Novicky’s arguments about, inter alia, removal (Peti-

tioner’s Brief page 15, ‘‘P5 p. 15’’), the original denial of

remand to the state court (PB p. 25) and entry of a pre-

liminary injunction (PB p. 19), have been previously de-

nied, are therefore the law of the case, and should not be

considered further.

Other arguments, such as the District Court’s denial

of Novicky’s demand for a jury trial, are premature, since

these very same issues are now on appeal to the Federal

Circuit.

In short, most of the V’etition is but a thrice-warmed

rehash, and on the one real issue of Marrese, 105 S.Ct. 1327,

Petitioner is reduced to alleging falsely that ‘‘The Federal

Circuit just ignored this Court’s Order... ’’ (PB p. 28).

In fact, the Federal Cireuit carefully considered Marrese

and Illinois law, and its decision should stand.

COUNTER STATEMENT OF THE CASE

Once again, Novicky has devoted most of his brief to

a narrative largely unsupported by the record. In the in-

terest of brevity, Syntex commends the opinions below

(citations supra pp. 2-3) for their concise statements of the

~

actual findings of fact. To date, five different courts have

summarized the relevant facts: the Illinois state trial court,

the Illinois Appellate Court, the District Court for the

Northern District of Illinois (twice), the Court of Appeals

for the Seventh Circuit, and the Court of Appeals for the

Federal Circuit. The well-reasoned and thorough opinions

of District Court Judge Decker and Federal Circuit Judge

Davis state the relevant facts most aceurately and sue-

cinctly, and do not need repetition here.

These decisions convey also the duration of this legal

saga and the lengths to which our system of justice will

go to afford an individual his days in court. However, at

this stage, there being no error below, simple justice and

common sense urge denial of the Petition.

ARGUMENT

The narrowest issue on remand presented by Marrese,

105 S.Ct. 1327, is ‘‘ whether a state court judgment may have

preclusive effect on a federal antitrust claim that could

not Lave been raised in the state proceeding.’’ Id. at

1331. Here, of course, the claims in the state and federal

actions were of the same nature, namely misappropriation

of trade secrets and ownership of patents, although only

the title to the ‘‘non-private’’ patents and applications i+

relevant in the remand of these appeals.

Marrese also stands for the broader proposition that

28 U.S.C. § 1738 ‘‘requires a federal court to look first to

state preclusion law in determining the preclusive effects

of a state court judgment.’’ Marrese, 105 S.Ct. at 1332.

6

Stated more precisely, the concern in Marrese is that a fed-

eral court might give a greater preclusive effect to a state

court judgment than the state court itself might give. Again,

this concern is not present here, since Syntex’ claim to pat-

ent title is based on (a) state preclusion law that is essen-

tially the same as the federal law relied upon by this Court

(see discussion imfra); or (b) valid assignments recorded

in the PTO (see discussion infra).

Notwithstanding Marrese’s note that state law deter-

mines the effect of a state court settlement and consent

order, Jd. at 1333, fn. 2, here the settlement between Tsue-

taki and Syntex, upon which Syntex relied, was entered in

the federal action. This negates any need to look to state

law with respect to Tsuetaki’s assignment to Syntex.

Thus, the narrow question presented is whether the

Federal Circuit’s decision on remand went beyond Illinois

state law in deciding the title issue as to the non-private

patents and applications. The answer is no.

A. Summary Judgment Of Syntex’ Title To The

Non-Private Patents And Applications Was

Properly Reaffirmed

The Federal Circuit on remand reaffirmed its decision,

since relevant Illinois law on issue preclusion is essentially

the same as the federal law, Spiller v. Continental Tube

Co., 95 Til. 2d 423, 447 N.E.2d 834 (1983). Specifically,

assuming arguendo that the Illinois trial court’s judgment

is vacated and remanded for a new trial between Novicky

and Tsuetaki, under Illinois law the lower court must retry

the case in conformity with the opinion of the appellate

7

court. Pittsburgh, Cincwwnati, Chicago & St. Louis Railway

Co. v. Gage, 286 Ill. 213, 217, 121 N.E. 582, 584 (1918);

Shlensky v. South Parkway Building Corp., 44 Ill. App. 2d

135, 194 N.E.2d 35, 38 (1st Dist. 1963).

This does not mean that a bare mandate negates the

actual opinion. Even the main case relied on by Novicky,

PSL Realty Co. v. Granite Inv. Co., 86 Tl. 2d 291, 427 N.F.

2d 563, 571 (1981) states ‘‘[i]n construing the language [of

the mandate] matters which are implied may be considered

embraced by the mandate. [Citations omitted.] The trial

court may only do those things directed in the mandate.

[Citation omitted.| The trial court has no authority to

act beyond the dictates of the mandate.’’

Other Illinois cases have parallel language:

Bradley v. Howard Hembrough Volkswagen, Inc., 89 Ml.

App. 3d 121, 124, 411 N.E.2d 535, 537 (4th Dist. 1980) :

When a trial court’s judgment is reversed, the trial

court is clearly bound by the appellate court’s deter-

mination of all questions decided and can only act in

such proceedings in a manner as conforms to the ap-

pellate court’s judgment.

Pittsburgh, Cincinnati, Chicago & St. Louis Railway Co.

v. Gage, 286 Ill. 213, 217, 121 N.E. 582, 584 (1918):

Where a judgment is reversed by an appellate court,

the judgment of the appellate court is final upon all

questions decided, and those questions are no longer

open to consideration. If the cause has been remanded,

the court to which it is remanded can take only such

proceedings as conform to the judgment of the appel-

late court. [f specific directions are given, the court

8

can do nothing but carry out the specific directions. If

specific directions are not given, it must be determined

from the nature of the case what further proceedings

are proper, and it is the duty of the court to which

the cause is remanded to examine the opinion and pro-

ceed in conformity with it.

Shlensky v. South Parkway Building Corp., 44 Ill. App.

2d 135, 194 N.E.2d 35, 38 (1st Dist. 1963) :

It was the duty of the Circuit Court to examine the

opinion of the Supreme Court and proceed in con-

formity with it.

The Federal Circuit thus correctly read the Novicky

Illinois Appellate Court decision as to the non-private

patents and applications. Although the Illinois Appel-

late Court did not give specific instructions to the trial

court, it did (as noted by the Federal Circuit at 745 F.2d

at 1431-32) accept the triai court’s findings that Tsuetaki

was the owner of the four non-private patents (plus the

two divisionals of the 303 patent) and applications which

were assigned by Tsuetaki to Syntex pursuant to the set-

tlement agreement. The Illinois Appellate Court also ac-

cepted the trial court’s finding that Novicky conceded the

other patents and patent applications at issue were as-

signed to Tsuetaki in accordance with the original employ-

ment agreement signed hy Novicky.

Also, the Illinois Appellate Court noted that (1) Novicky

was paid a total of $20,000 for patent application Serial

No. 6725 (U.S. Patent No. 4,216,303), (2) Novicky

filed two more applications for other inventions which

‘*Novicky agrees belong to Tsuetaki’’ and (3) Novicky filed

9

three additional patent applications, only two of which

[the ’483 and ’989 private patents] Novicky claimed belong

to him.

In any retrial in the Lllinois state court, the only issue

thus remaining is modification of the original No-

vicky/Tsuetaki employment agreement as it relates to

Tsuetaki’s payments to Novicky for production of contact

lens polymeric rods. These contact modification issues are

neither part of Novicky’s Petition for Writ nor did Syntex

assert such modifications as collateral estoppel. Further, the

original employment agreement entered into between No-

vicky and Tsuetaki dealing with assignment of the non-

private patents would not be at issue. The Lllinoise trial

court, in conformity with the Illinois Appellate Court’s de-

cision, would thus collaterally estop Novicky from retrying

any issues as to the validity of his assignments of the non-

private patents to Tsuetaki under the original agreements,

the same result reached by the Federal Circuit.

Therefore, the preclusive effect of the Lllinois Appel-

late Court’s judgment is the same under both state and

federal law, and the Marrese decision has no effect on the

result of the Federal Cireuit’s prior decision.

B. The Recorded Assignments Perfect Syntex’

Title To The Patents In Issue

In deciding whether to reaffirm summary judgment of

title to the non-private patents and applications in Syntex,

an appellate court can look to the entire record, Bushman

Construction Co. v. Conner, 307 F.2d 888, 892-93 (10th Cir.

1962) and can apply the same tests as a district court,

Goodman v. Mead Johnson & Co., 534 F.2d 566, 573 (3rd

Cir. 1976), cert. denied, 429 U.S. 1038 (1977). The Federal

10

Circuit (or this Court) thus could have relied on Tsuetaki’s

settlement with Syntex of the federal action, the recorded

assignments in the Patent Office and the admissions of the

parties, without addressing Tlinois law on issue preclusion.

Marrese thus does not affect the federal issue of the

effectiveness of Tsuetaki’s assignments of the non-private

patents and applications to Syntex. The existing appeal

record as to these patents and applications show that:

1. Novicky assigned U.S. Patent No. 4,216,303 to Tsue-

taki. This assignment is recorded in the Patent and Trade-

mark Office and is shown on the face of the ’303 patent.

2. Novicky also assigned U.S. Patent Nos. 4,314,068

and 4,365,074 to Tsuetaki. These are divisionals of the

"303 patent, and are covered by the original assignment.

3. Novicky also executed written recorded assignments

for three other applications, namely applications Serial

Nos. 072,449 (issued as U.S. Patent No. 4,303,772) ; 103,408

(abandoned) and 081,682 (abandoned).

4. Further, while represented by counsel, Novicky filed

a sworn Answer to Tsuetaki’s state court complaint ad-

mitting that the three applications listed in paragraph

three above were assigned to Tsuetaki, pursuant to the

terms of the Agreement. Such pleadings, at a minimum,

act as adverse evidentiary admissions against Novicky,

White v. Arco/Polymers, Inc., 720 F.2d 1391, 1396 (5th

Cir. 1983), whether or not they are considered conclusively

binding, Myers v. Manchester Insurance & Indemnity Co.,

572 F.2d 134 (Sth Cir. 1978); Mull v. Ford Motor Co., 368

+m Ra cecal

ll

F.2d 713, 715-16 (2d Cir. 1966); Scaife v. Western North

Carolina Land Co., 90 F. 238, 240-41 (4th Cir. 1898), cert.

denied, 173 U.S. 705 (1899); 9 Wicmore, Evinence 4 2590,

at 822 (Chadbourn rev. 1981).

3. The ’772 patent referred to in paragraph three above

also shows assignment to Tsuetaki on its face.

Thus all of the non-private patents and applications

here in issue have valid, recorded assignments from No-

vicky to Tsuetaki. As part of the settlement with Syntex,

Tsuetaki executed an assignment of all of these patents

and applications to Syntex, also recorded in the Patent and

Trademark Office. Accordingly, the state and federal court

and Patent and Trademark Office records show that

Novicky’s assignments to Tsuetaki were valid and effective.

Novicky never challenged the fact of these assignments of

the non-private patents and applications in either the state

or federal actions.

At the time Novicky assigned the patents and applica-

tions to T'suetaki for valuable consideration, there was no

dispute as to the validity of the assignments nor were there

any prior recorded or unrecorded assignments more than

three months old. Therefore, Tsuetaki’s title in the non-

private patents and applications became absolute and

Syntex’ acquisition of those patents and applications with

knowledge of the prior assignments gave it the entire right,

title and interest to those patents and applications which

cannot be cut off now by Novicky. Crown Die & Tool Co.

v. Nye Tool & Machine Works, 261 U.S. 24, 36-37, 43 S.Ct.

254, 67 L.Ed. 516 (1923) ; Waterman v. Mackenzie, 138 U.S.

252, 255, 11 S.Ct. 334, 34 L.Ed. 923 (1891); Gayler v.

12

Wider, 51 U.S. 477, 480-81, 492-94, 13 L.Ed. 504, 505-06,

510-11 (1850); Heywood-Wakefield Co. v. Small, 96 F.2d

496, 499-500 (1st Cir. 1938), cert. denied, 305 U.S. 663

(1938) ; 4 WaLKer On Patents § 341, at 367, 370-74 (Deller’s

2d ed. 1965).

At the time Syntex recorded its assignment from

Tsuetaki of the non-private patents and applications, the

records of the Patent and Trademark Office revealed title

to such patents and applications in Tsuetaki. Syntex’ as-

signments from Tsuetaki thus give it title to the non-private

patents and applications without reference to state pre-

clusion law, since Syntex relied upon the federally recorded

conveyances from Novicky to Tsuetaki.

C. Denial Of Mandamus Was Proper Because The

District Court Was Acting Under A Mandate

Novicky focuses only on the last month of the complex

remand sequence to allege that the District Court had no

power to issue its September 4, 1985 decision. This ignores

the simple fact that the District Court acted under a valid

mandate entered a year earlier which was unaffected by

this Court’s decision.

The Federal Circuit issued its original remand man-

date on October 3, 1984. Judge Decker then scheduled a

status conference and hearing for February, 1985. In

January, Novicky filed his first Petition for Certiorari. He

then filed a motion to recall the mandate which was then

admittedly already issued. The Federal Circuit denied the

motion to recall on January 28, 1985.

The trial court then proceeded with an evidentiary hear-

ing on February 7, 1985. On Mareh 18, 1985, this Court

13

entered its decision remanding for consideration of Mar-

rese. The Federal Circuit on July 18, 1985 reaffirmed its

earlier decision, expressly holding that its original remand

to the District Court had ‘‘nothing to do with the Supreme

Court’s Marrese decision and opinion, and are in no way

affected by either.’’ (Appellant’s Appendix A-48 and 767

F.2d at 902)

Thus the District Court’s hearing on February 5, 1985

was effective under the original mandate, as was its deci-

sion on September 4, 1985 after the Federal Cireuit’s re-

affirmation on July 18, 1985.

Finally, the issue is moot since the Federal Circuit is-

sued the mandate on its reaffirmation on remand from this

Court on October 2, 1985 (delayed by Novicky’s motion for

rehearing). Certainly, then, its denial of the mandamus

alleging no mandate on October 20, 1985 was well founded

and proper.

D. Novicky’s Remaining Arguments Are Barred

By Law Of The Case, Are Beyond The Narrow

Remand, Or Are Premature

Novicky’s brief blithely ignores the repeated, binding

findings of fact of the courts below. For example, Novicky

asserts the batch sheets he stole and sold to Tsuetaki had

no value (PB pp. 6-8), ignoring repeated holdings that

Syntex had valuable trade secrets in them. Syntex Oph-

thalmics, Inc. v. Novicky, 745 F.2d 1423, 1434 (Fed. Cir.

1984) ; Syntex Ophthalmics, Inc. v. Tsuetaki, 701 F.2d 677,

683 (7th Cir. 1983). Novicky also asserts he independently

conceived a monomer called S-9, ignoring the findings that

this was not independent of his work for Syntex. Syntea

Ophthalmics, Inc. v. Novicky, 591 F. Supp. 28, 34 (N.D. TH.

1983) ; Tsuetakt, 701 F.2d at 682.

14

Novicky’s assertion of improper removal (PB pp. 15-

16) likewise ignores clear holdings that removal was proper.

Novicky, 745 F.2d at 1431.

Novicky’s claim of total victory in the Illinois Appel-

late Court (PB p. 17) also ignores that court’s holding that

the private patents belonged to Syntex [T’suetaki v. No-

vicky, No. 81-1727 (3d Div. 1983)] and Novicky’s binding

admissions that he assigned the other patents to Tsuetaki.

Novicky, 745 F.2d at 1432.

Novicky’s complaint that there was no evidentiary hear-

ing on the preliminary injunction (PB p. 19) ignores the

affirmance on appeal based on the clear holdings that he

copied Syntex’ trade secrets ‘‘almost verbatim’’. Novicky,

591 F. Supp. at 35; Novicky, 745 F.2d at 1485. Novicky’s

challenges to the final injunctions (PB pp. 23-24, 31) are

pending in the Federal Cireuit, precluding consideration

here.

Novicky’s assertion that he began work on the private

patents after leaving Syntex (PB pp. 19-20) ignores his

binding admissions of fact to the contrary. Novicky, 591 F.

Supp. at 37; Novicky, 745 F.2d at 1433 n.20.

Novicky’s use of innuendo, by referring to a ‘‘mysteri-

ous settlement agreement’’ (PB p. 22), ignores the simple

fact that the legally operative patent assignments on which

summary judgment was based were filed in open eourt.

Novicky, 591 F. Supp. at 30.

Novicky also claims he should have title to all the pat-

ents because of his theory of rescission of an August 1978

contract, ignoring repeated findings that the August con-

lo

tract only affected the two private patents, not his separate

legal assignment of the ’303 and other non-private patents

to Tsuetaki. Tsuetaki v. Novicky, No. 81-1727 (3d Div.

1983) ; Novicky, 745 F.2d at 1431-32.

Title to the two private patents, which Novicky re-

peatedly admitted he invented while at Syntex (745 F.2d

at 1433) are of course not in issue here. The Federal Cir-

euit remanded this issue to the District Court for a hear-

ing. That hearing resulted in a finding that Syntex directly

owned the private patents because Novicky invented them

while under an employment contract with Syntex, not re-

lying on collateral estoppel from the Illinois state court

decision. Therefore, Marrese has no effect on the private

patents.

Novicky’s claim that he has been denied a hearing on

his counterclaim to title to the private patents (PB p. 26)

is simply false. Such a hearing was held on February 7,

1985, the same day that Novicky’s counsel for this petition

withdrew because Novicky filed a pro se civil rights law-

suit against the Honorable Judge Decker. Novicky him-

self served the complaint the day of the hearing, but said

in an affidavit filed in the pending Federal Circuit appeal

that he did not attend because he saw a U.S. Marshal out-

side the courtroom and was afraid to re-enter the same

room where he had earlier served his complaint.

In any event, Novicky has a pending appeal in the Fed-

eral Cireuit involving, wéer alia, title to these private

patents. Therefore, any assertion here about such pro-

ceedings, including any claim to a jury trial, is premature.

Finally, Novicky did not challenge any of the court’s

decisions below on due process grounds. Novicky’s asser-

16 /

tion that he has been deprived of property without due

process of law was neither pleaded, argued, nor briefed

either in the District Court or in the Federal Circuit, and

therefore, this Court should not consider it here. See e.g.,

Dumgan v. United States, 274 U.S. 195, 200 (1927); Ellis

v. Dixon, 349 U.S. 458, 460 (1955) ; United States v. Lovasco,

431 U.S. 783, 739 n.7 (1977).

In short, to use Novicky’s words, it is his case which

is ‘fin shambles’’ (PB p. 32). The accumulated court de-

cisions have hemmed him in so narrowly that he now simply

ignores them to fabricate a story grounded in fantasy.

CONCLUSION

This Court’s narrow concern in remanding to the Fed-

eral Circuit, namely consideration of Marrese, has been

fully and properly addressed by the Federal Circuit. No-

vicky’s Petition For Writ of Certiorari should be denied

because it raises no effective challenge to that decision and

dwells instead on issues either long decided or premature.

Novicky’s Petition For Writ of Certiorari should ac-

cordingly be Dreniep.

Respectfully submitted,

James W. Govutp

(Counsel of Record)

JosePpH A. DeGroLamo

Attorneys for Respondents

Syntex Ophthalmics, Inc. and

Arapahoe Chemicals, Inc. (now

Syntex Chemicals, Inc.)