Petition for Writ of Certiorari — Mathis v. Hydro Air Industries, Inc.

8 6 3 9 66 ss Court, US,

EILEDB

JUN 9 peE7

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No. 86- : L

Sa ERERI-o--- i a Rl JR,

INTHE | >

Supreme Court of the Gnited States

OCTOBER TERM, 1986

CLEO D. MaTHIS and Vico PRopUCTS MANUFACTURING

Co., INC.

Petitioners,

VS.

Hypro AIR INDUSTRIES, INC., GERALD MORELAND, BILL

SPEARS, WATERWAY P.astics, INc., B & S PLASTICs,

Inc. dba WATERWAY PLASTICS, and PHILIP E.

CHALBERG, ROBERT WEYGAND, HYDRABATHS,

Respondents.

PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

EDWARD J. DARIN

EDWARD J. DARIN, INC.

301 East Colorado Blvd.,

Suite 518

Pasadena, CA 91101

(818) 793-0689

Attorney for Petitioners

PRESS OF BYRON S. ADAMS, WASHINGTON, D.C. (202) 347-8203

TORT POE LAE PT OE

QUESTIONS PRESENTED

This petition presents the following questions:

1. Is not the decision of the Federal Circuit erro-

neous in its application of the 1986 standards of the

duty of candor imposed on applicants for patents be-

fore the U.S. Patent and Trademark Office (PTO) for

establishing inequitable conduct, pursuant to the 1977

amendment to 37 CFR 1.56, since it amounts to a

retrospective application of the present day standards

by imposing new duties on patentees that take away

or impair vested patent rights in violation of the due

process clause of the U.S. Constitution and is in direct

conflict with the decision of the First Circuit in Dig-

ital Equipment Corp. v. Diamond 653 F.2d 701, 716,

210 USPQ 521, 536-547 (CA-1, 1981) and also, the

Federal Circuit’s early decision in Connell v. Sears,

Roebuck & Co., 722 F.2d 1542, 1551, 220 USPQ 193,

200-201 (Fed. Cir. 1983) where:

i) Each case dealt with the question of ret-

rospective application of 37 CFR 1.56 pro-

mulgated years after the events at issue;

and

ii) The First Circuit clearly indicated, con-

trary to the Federal Circuit Panel, its dis-

approval of placing the entire burden of

a proper disclosure to the PTO to satisfy

a duty of candor on an inventor not versed

in patent law, as clearly recognized by the

PTO Rule,

In the resolution of this first question, the Court

will be presented with this subsidiary question.

Does not the erroneous decision of the Federal Cir-

cuit, which was restricted to a judgment on inequit-

il

able conduct in the procuring of three utility patents,

based on a 1986 decision of the Federal Circuit, that

was nonexistent at the time of the trial in 1983, or

prior to the grant of the patents in suit in 1975-76,

namely, the decision of A. B. Dick Co. vs. Burroughs

Corp. 798 F.2d 1392, 1898, 2830 USPQ 849, 854 (Fed.

Cir. 1986) expand the Federal Circuit’s definitions of

“inequitable conduct” and conflicts with the opinion

of other panels of the Federal Circuit as to the mean-

ing of the word “important” to a patent examiner in

the context of 37 CFR 1.56 as to a finding of ‘‘ma-

teriality’’ as to inequitable conduct including Laitram

Corp. v. Cambridge Wire Cloth Co. 785 F.2d 292, 228

USPQ 935, 937 (Fed. Cir. 1986) which considered

“important”’ from the standpoint of “‘anticipation’”’ (35

USC 102), or ‘‘obviousness” (835 USC 108) for estab-

lishing materiality and the lack of a finding based on

either statutory criteria establishes the lack of ma-

teriality and thereby the lack of inequitable conduct;

and again, in 1986, in Pacific Furniture Manufac-

turing Co. v. Preview Furniture Corp. et al, 231

USPQ 67, 69 (Fed. Cir. 1986) wherein another panel

concluded there was no inequitable conduct when it

considered the undisclosed information was the start-

ing point for the patented improvements and the fact

of non-disclosure of that information by the applicant

and the attorney was considered as going ‘‘to intent

not to materiality” and, therefore, the Federal Circuit

has left the law confused and the ‘“‘duty”’ of applicants

and their counsel before the PTO uncertain to the

end that all vested patent rights granted by the PTO

are all suspect.

2. Does not the decision of the Federal Circuit con-

flict directly with the pronouncement of this Court

La ea eh NB ATE MI the Oi 6

ai as

ee.

ill

as to a Federal Court of Appeals application of the

‘clearly erroneous” standard of Rule 52(a) as held by

this Court in United States v. El Paso Natural Gas

Co. 376 US 651, 12 L.ed. 2d 12, 84 S.Ct. 10144

(1964); Anderson v. Bessemer City 470 U.S. __, 84

L.ed. 2d-518, 106 S.Ct. __(1985); amd Icicle Seafoods,

Inc. v. Larry Worthington et al. 475 U.S. —_, 89

L.ed. 2d 739, 106 S.Ct. __(1986), particularly in view

of the fact that the Federal Circuit ignored the

Respondents’ admissions in the Federal Circuit that

a mistake has been committed, since the district

court’s Findings of Fact did not include important

facts that would prevent the Federal Circuit from

fully evaluating the district court’s decision and

thereby resulted in a gross miscarriage of justice.

3. Were not the pronouncements of this Court in

Icicle Seafoods, Inc. v. Larry Worthington et al. 475

U.S. __, 89 L.ed. 2d 739, 106 S.Ct. __(1986) ignored

by the Federal Circuit in improperly applying the ap-

propriate standards of review in passing on the Dis-

trict Court’s judgment by failing in its opinion to

mention the specific factual findings of the District

Court, failing to discuss or analyze the factual find-

ings by indicating which findings it affirmed, rejected

or otherwise disposed of, within the meaning of Rule

52(a) of the Federal Rules of Civil Procedure and by

improperly making factual findings on its own

whereby the Petitioners lack an adequate explanation

of the true basis for the Judgment.

4. Does not the decision of the Federal Circuit rep-

resent a gross miscarriage of justice by affirming the

district court’s erroneous decisional approach in these

patent cases under 35 USC 102, 103, 112, and 282,

and which erroneous approach was carried over to

iv

the Federal Circuit’s consideration of the ‘‘material-

ity” of prior art relative to the inequitable conduct

and which trial court decisional approach was so

soundly condemned by the Federal Circuit in Panduit

Corp. v. Dennison Mfg. Co., 1 USPQ 2d 1593 decided

1/23/87,* since such a decisional approach permits de-

struction of every patent and subjects every inventor

and patent applicant to a claim of inequitabie conduct,

thereby frustrating Congress’ effort to effectuate its

constitutionally granted powers and the intent of the

framers’ of the U.S. Constitution to promote progress

in science and the useful arts; U.S. Constitution, Ar-

ticle 1, Section 8.

*on remand from the U.S. Supreme Court 106 S.Ct. 1578

(1986)

PBN Wy nhl cn AT it ere eee Y

RULE 28.1 STATEMENT

Pétitioner, Vico Products Manufacturing Co., Inc.

has no parent companies or subsidiaries, apart from

wholly owned subsidiaries or affiliates.

TABLE OF CONTENTS

Page

MEIN weditknadibcsdadladsininsleinekees © Ra, 1

RIESE CER a RN On 0 Re es a 2

THE CONSTITUTIONAL PROVISIONS, STAT-

UTES AND RULES INVOLVED ......................... 2

STATEMENT OF THE ‘CASE ................cc..00000000 2

8 eS eee ieee 6

Tras ME I sii rec ccavebchsntenahnenaniis 7

EAiees UID TRUUIRIID ecticciccocccodscssnceusceacstennsess 8

Sy I i 8

BE TD IIE <cduutsustncatiideinenasateinsteaadienichaes 11

THE REASONS FOR GRANTING OF THE

TPE | exesssinuacssendicitedieaseedeneeaie tine ost tae eae 13

I. The Court Should Issue The Writ Of

Certiorari In This Case Because The Federal

Circuit’s Affirmance Of The Trial Court On

The Issue Of Inequitable Conduct Was Clearly

A Retrospective 2 Of Present Day

Standards Of Conduct For Applicants Before

The Patent Office, Only Recently Announced

By The Federal Circuit, That Impairs Vested

Patent Rights In Violation Of The Due Proc-

ess Clause Of The Constitution, As Recog-

nized By The First Circuit And An Early

Decision Of The Federal Circuit Apparently

No Longer Followed But Not Overruled To

Prevent Manifest Injustice And To Avoid Fu-

CUD TROD cenarsresesesemenbissasistasiaaiateaions 13

vii

A. The Court Should Issue The Writ Of

Certiorari In This Case On The Issue Of

Inequitable Conduct As The Federal Cir-

cuit Only In 1984 Provided Specific

Standards For Evaluating Conduct Be-

fore The Patent Office, But Yet Different

Panels Have Interpreted The Standards

Differently In The Retrospective Appli-

cation The Present Day Standards.

Accordingly, There Is An Immediate Spe-

cial Need For Nationwide Uniformit

Which The Federal Court Is Not Provid-

TENE ccctsconsbnsonedaniishnecnadéseenstentasosibootseasesccese 15

B. No Novice Inventor, Unskilled In Patent

Law, Who Relied On His Patent Counsel

To Obtain A Patent For Him Should Be

C With Inequitable Conduct Under

Any Standards When It Is Impossible To

Obtain The Testimony Of e Patent

Counsel To Explain His Action Of Non-

disclosure Of Certain Information .......... 19

II. The Need For Review Of The Issues Relating

pe Pew 52(a) Raised By Questions 2

WRN & . cccencasocisocrncnncctnpboncdrasstnciesabesccseszenecozene 20

A. The Court Should Issue The Writ Of

Certiorari In This Case Under The Su-

rvisory Authority Of U.S.S.C. Rule 17

ecause The Federal Circuit’s Affirmance

Of The Trial Court Is Grounded Upon A

Total Disregard Of The Requirements Of

F.R.CIV.P. Rule 52(a), The Prevailing

Parties’ Admitted Deficiencies Of The

Findings, As Well As The Federal Circuit

Improperly Making Factual Findings (Er-

roneous Facts) And Thereby Ignoring The

Pronouncements Of This Court To Pre-

vent Manifest Injustice In The Future .. 20

III. The Need For Review Of The Issues Raised

By Question No. 4 Is Necessary To Prevent

A Gross Miscarriage Of Justice .................. 24

viii

A. The Court Should Issue The Writ Of

Certiorari In-This Case Because The Fed-

eral Circuit’s Affirmance Of The Trial

Court Solely On The Issue Of Inequitabie

Conduct Incorporated The Erroneous Ap-

roach Ado By The Trial Ju

ased On Erroneous Patent Claim

Interpretation And Erroneous Interpre-

tation Of The Cited And Uncited Prior

Art By The Counsel Of Prevailing

Ra) ea a 24

B. The Erroneous Interpretation Of The Pat-

ents In Suit, The i In Issue, And

The Lack Of Review Of The Cited And

Uncited Art Has Approved The Trial

Counsel’s Improper Erroneous Conclu-

sions Authenticated By The Trial Court’s

Lack Of Appreciation Of The Petitioner’s |

SPURNED * inksctandehistnsapisdnnctdisesiatitiictitidsmne 28

OU 30

TABLE OF AUTHORITIES

CASES: Page

A. B. Dick Co. v. Burroughs Corp., 798 F.2d, 1392,

1398, 230 USPQ 849, 854 (Fed. Cir.

GETITE - cccnocarccnsesdunnestsndvepnspacnsnecéocescunensesens 16,20,26,29

Anderson v. Bessemer City, 470 U.S. —_, 84 L.ed.

BE BIB, BOG BAR. CER cccviccssccescesscesescscesees 22

American Hoist & Derrick Co. v. Sowa & Sons,

Inc., 725 F.2d 1350, 1632-63, 220 USPQ

WOR, FA RI TD oncccccccencasncssorrccnnenccsece 13,24

Chicago College of Osteopathic Medicine v. Geo. A.

Fuller Co., 719 F.2d 1335, 1353, (CA-7,

SIDE ds bihslpcabstndendtdhiatatiunsbieniolassinbuaggantenaacericsiocs 19

Chicopee Mfg. Corp. v. Kendall Co., 288 F.2d 719,

129 USPQ 94 (CA. I) Shc cela ctecaltctens 21

Connell v. Sears, Roebuck & Co., 722 F.2d 1542,

fee 220 rise 193, 201 (Fed. Cir. 1983) ... 14

. v. Diamond, 653 F.2d 701,

me Fi USPQ 521, 536, 547 (CA-1,

1981) i ia Alina diana atin aiedtiiinais 13,16,17,18,24

DuPont v. Berkeley & Co., 620 F.2d 1247, 1274-75,

205 USPQ 1, 28 (C.A. 8 1980) ...ccccccccccceeeee. 10

Environmental Designs Ltd. v. Union Oil Co. of

Calif., 713 F.2d 693, 698, 218 USPQ 685, 870

I a casiisceniinmnindaneoss 24

Graham v. Deere, 383 U.S. 1 (1965) ................. 17,25,26,27

Hycor Corp. v. Schleuter Co., 740 F.2d 1529, 1540,

222 USPQ 553, 561-562 (Fed. Cir. 1984) _.... 20

Icicle Seafoods, Inc. v. Larry Worthington et al, 475

U.S. __, 89 L.ed. 2d 739, 106 S.Ct.

sia ~ Aeaielendiaiieiasdaeiiaditabsesiinhiiisaicintniinniniieatnnnne 22

J. P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553,

1559, 223 USPQ 1089, 1092 (Fed. Cir.

SEY scchsdinidiipdalininuiiciinnninatndiinsinbanities 15,16,17,20,25

Kansas Jack v. Kuhn, 719 F.2d 1144-1151-52, 219

USPQ 857, 861 i RC 18

Table of Authorities Continued

Page

Kimberly Clark Corp. v. Johnson & Johnson, 745

F.2d 1487, 1454-55, 223 USPQ 608, 614, 616

CO Gs CI aatibindcnibelschaddiaeeibinedinienseas 18,24,25

Laitram Corp. v. Cambridge Wire Cloth Co., 785

F.2d 292, 228 _— 935, 937 (Fed. Cir.

RDO... icihinsicideepnidbinnidiinicnnttliiilinianainiiiiaimcceans 18,25,26

Norton v. Curtiss, 483 F.2d 779-795, 167 USPQ

Se, CRG Ce SUE snncrasenciviccavcteivintcass 18

Orthopedic Appliances, Inc. v. All Orthopedic Ap-

pliances Inc., 707 F.2d 1376-1383, 27 USPQ

1281, 1286 (Fed. as, SED: secenpieninennshibiabinianes 10

Pacific Furniture Mfg. Co. v. Preview Furniture,

231 USPQ 67, 69 (Fed. Cir. 1986)... 25

Panduit Corp. v. Dennison Mfg. Co., 1 USPQ 2d

RE RUE | Adnnoacieennidivienilinincin 27,28

Precision Instrument Mfg. Co. v. Automotive Main-

tenance Machinery Co., 324 U.S. 806, 816, re-

hearing denied 325 U.S. 8938, 65 USPQ 133

CRIED . — <cocssnsnccneqiteaduieanaibunpliaandubatinnsniaimepiapiadinics 14

Pfizer, Inc. v. International Rectifier Corp., 545

F.Supp. 486, 535-538, 207 USPQ 397, 435 (C.D.

Cal. 1980) aff'd. 685 F.2d 357 (CA 9-1982) . 14

Pfizer, Inc. v. International Rectifier Corp., 538

F.2d 180, 185-187, 193-194, 190 USPQ 273,

277, 279, 286, 287 (CA-B, 1976) ..........cc000.... 17

Reinke Mfg. Co. v. Sidney Mfg. Corp., 446 F.Supp

1056, 199 USPQ 401 (D. Neb. 1978); affirmed

594 F.2d 644, 201 USPQ 344 (CA-8, 1979) . 19

SSIH Equipment, S.A. v. U.S. International Trade

Commission and Stewart Warner, 718 F.2d

365, 378, 379, 218 USPQ 678, 689-90 (Fed. Cir.

WINGED cncusthinstibciaccnmidceeaialieaaaaa tlhe nie ibacas 10,23

Peeler ea ectictisin en esr ewe thick: PORN ORLY tee he il

xi

Table of Authorities Continued

Page

Tokyo Shibaura Electric Co. v. Zenith Radio Corp.,

404 F.Supp. 547, 188 USPQ 55 (D. Del. 1975)

affirmed 548 F.2d 88, 193 USPQ 73 (CA-3,

RUT) sccsrarscqvepececsecconentnncceunbahainscsacnnnsetsnesuaessees 19

United States v. El Paso Natural Gas Co., 376 U.S.

651, 656 footnote 4, 12 L.ed. 2d 12, 84 S.Ct.

SE EE | tbdabetciceactadeaentthinbccbesbensnetssentsnvinges 20

In re Vico Products Mfg. Co., Inc., 229 USPQ 364,

367, 368 (TTAB 1985) reconsideration denied

229 USPQ 716, 718 (TTAB 1986) _................ 29

PROVISIONS OF THE U.S. CONSTITUTION:

Se ee ee I © aii cdbicidncteeaceitiidcacles 2,16

I eS Sarnccth bdbishash cacitibbtbdecstidatidecbananidelii 2

STATUTES:

United States Code, Title 35, Sec. 101. ............... 2

United States Code, Title 35, Sec. 102 ........... 2,3,27,28

United States Code, Title 35, Sec. 103 ...... 2,3,25,27,28

United States Code, Title 35, Sec..111. ............... 2

United States Code, Title 35, Sec. 112... 2,3,27

United States Code, Title 35, Sec. 115 ou... 15

United States Code, Title 35, Sec. 154. .............. 2,16

United States Code, Title 35, Sec. 282. ............... 2

United States Code, Title 35, Sec. 285 ............... 2

RULES:

U.S. Supreme Court Rule 17.1(a) and 17.2 ......... 2,20,24

Federal Rules of Civil Procedure 52 &

eee sceiedialadinininnvees 2,5,12,20,21,22,23

Patent Office Rules Of Practice (837 CFR) 1.31 .. 2

Patent Office Rules Of Practice (37 CFR) 1.51 .. 2

xii

Table of Authorities Continued

Page

Patent Office Rules Of Practice (37 CFR)

RAB dcascctincndancthbintisttennions 2,5,11,13,14,15,18,25,26,27

Patent Office Rules Of Practice (37 CFR)

RINE clbcieidluibideispbiteingsdblinieatbtuateseshisderesse 2,14,19,26

Patent Office Rules Of Practice (37 CFR)

SA hidased sre eisa cede taacadtath easereccicncees 2,12,18,19

Patent Office Rules Of Practice (37 CFR)

SR AEE -sescoaiahadeblacaicins neauaidlaincttaieaconodnsoundiunseacocan 2,15,18

TEXTBOOK:

“Patent Litigation: Procedure and Tactics,’’ Vol. 3

by R.A. White, pages 8A-21-8A-23 __.............. 15

PUBLICATION:

Journal of Patent and Trademark Society, Jan.

1987, Vol. 69, No. 1 pages 27-46, entitled ‘‘Pat-

ent Law and the Presumption of Moral Reg-

ularity; A Critical Review of Recent Federal

Circuit Decisions on Inequitable Conduct and

Willful Infringement” by Donald S. Chisum 17

IN THE

Supreme Court of the Anited States

OCTOBER TERM, 1986

No. 86-

CLEO D. MATuHIS and Vico PRODUCTS

MANUFACTURING Coo., INC.,,

Petitioners,

Vv.

Hypro Air INDUSTRIES, INC., (GERALD MORELAND}

BiLt SPEARS, WATERWAY P tasticsi, INc,, B & S PLastics

Inc., dba WATERWAY PL astics; and Pricip B, CHALBERG,

ROBERT WEYGAND, Hy! DRABATHS,

Respondents.

PETITION FOR A WRIT OF CE:RTIORARI TO THE

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

The petitioners, Cleo D. Mathis aind Vico Products Man-

ufacturing Co., Inc. respectfully pray that a writ of

certiorari issue to review the judgment of the United States

Court of Appeals for the Federal Ciircuit in its causes Nos.

86-1181; 86-1182; and 86-1224. The Judgment was entered

on February 13, 1987. Rehearing was denied on March

11, 1987.

OPINION

The opinion of the Court of Appeals is unpublished and

is reprinted in the appendix to the petition commencing

at page la.

The district court's Findings of Fact and Conclusions of

Law are reported in 1 USPQ 2d 1618 and is reprinted in

the appendix to this petition commencing at page 54a.

JURISDICTION

The judgment of which review by this Court is sought

was entered on February 18, 1987, and rehearing was

denied on March 11, 1987. This Court has jurisdiction by

virtue of 28 U.S.C, Section 1254(1).

THE CONSTITUTIONAL PROVISIONS,

STATUTES AND RULES INVOLVED

U.S, CONSTITUTION, AMENDMENT V

“No person shall .... be deprived of life, liberty or

property without due process of law. . .”

In addition to the above constitutional provision, these

cases involve Article I, 48, Clause 8 of the U.S. Consti-

tution (A.p. 148a) and the Federal patent laws (A.p. 144a-

149a), the Federal Rules of Civil Procedure (A.p. 150a)

and the Patent and Trademark Office Rules of Practise

(A.p. 151a-154a), The statutory provisions involved are 35

USC 101, 102, 108, 111, 112, 154, 282 ad 285. the Federal

Rule involved is 52(a) and the Patent and Trademark Of-

fice Rules are 1.31, 1.51, 1.56 and 1.63 37 CFR 1.31, 1.51,

1.56 and 1.68.

STATEMENT OF CASE

These proceedings were commenced in the United States

District Court for the Central District of California on

complaints for infringement of three utility patents

3,890,655; 3,890,656; and 3,949,499 on whirlpool jet im-

provements of the sole inventor, Cleo D. Mathis, the pat-

ent owner. The three complaints for infringement were

filed in a short space of time in 1980-81 claiming infringe-

ment by each of the defendants copying the Mathis’ im-

3

provements of whirlpool jeta manufactured and sold on

behalf of the defendants.

The defendants each have denied infringement and pat-

ent validity. The suits against all of the defendants were

consolidated for trial in the District Court.

The proceeding below also involved a Cleo D. Mathis

design patent D244,462 on a whirlpool jet. The design

patent was dedicated to the public by Mr. Mathis prior to

the trial in the District Court.

The whirlpool jet improvements that are the aubject of

the three Mathis utility patenta all relate to different spe-

cifie structural parts for facilitating the mounting of a

whirlpool jet on a bathtub or similar water vessel and to

minimize the space required for the air and water supply

lines immediately adjacent the periphery of a water vessel

having a plurality of the Mathis patented type of whirlpool

jets mounted to the bathtub to the end that a whirlpool

jet or hydrotherapy system can be installed on any bath-

tub, including on an existing tub in a home or residence

without moving the tub due to Mr. Mathis’s patented im-

provements.

The entire whirlpool jet industry, as well as each of the

Respondents, have copied the Mathis’ patented structures.

The copyists include the pioneer in the industry, the Ja-

cuzzi company. Each of the three Mathis’ utility patents

include patent claims that define specific improvements to

whirlpool jets not found in any other whirlpool jet known

to Mr. Mathis. No prior art whirlpool jet was known to

Mr. Mathis to be capable of functioning in the manner of

each of his patented structures.

The District Court, after a court trial, rendered her brief

ruling on June 13, 1983, (A. p. 11la-116a) indicating her

conclusions of validity of the three Mathis’ utility patents

as invalid under 85 USC 102, 103 and 112, and unen-

forceable for inequitable conduct before the Patent Office.

4

No other opinion was rendered by the trial court. The

District Court also awarded each of the prevailing parties

their reasonable attorneys’ fees and costs (A.p. 100a-111a).

The announced ruling was based, in part, on the

defendants’ proposed, pre-trial Findings of Fact and Con-

clusions of Law. The specific basis for the District Court's

conclusions of validity was not stated at the time of the

ruling, or at any other time. The only portion of the Dis-

trict Court’s ruling in 1983 that was clear was stated by

her as follows:

“Now, I want you to know that the teatimony

about the Parr patent ia very important, and the

tests are a very important part of the decision

that I made, So I accept the comments that Mr.

Jessup made about the Parr patent.” (A.p. 114a)

In 1986 the District Court adopted substantially ver-

batim the Findings of Fact and Conclusions of Law sub-

mitted in 1983 by the prevailing parties. Three separate

judgments as to patent invalidity and granting each of the

defendants their attorneys’ fees were entered on March

21, 1986. (A.p. 100a-1 11a)

An important fact is that patent counsel Robert Com-

stock, a sole practitioner, solely represented the inventor,

Mr. Mathis, until his death, prior to the commencement

of the litigation, and therefore was unavailable for any

purpose. Mr. Mathis was inexperienced in patent matters

but testified at the trial in good faith. (A.p. 35a) Mr. Mathis

revealed his understanding of the “undisclosed informa-

tion’’ to Mr. Comstock.

During the appeal proceedings the defendants/appellees

filed a joint responsive brief, which included a Supple-

mental Appendix, including a number of pre-trial docu-

ments. The Appellants moved to strike portions of

Appellees’ Brief and Supplemental Appendix as being be-

yond the issues determined by the District Court (A.p. 8a-

10a) In opposing Appellants’ Motion to Strike, the Appellee

made an important admission as to the incomplete nature

of the District Court’s Findings of Fact that the Appellees

had prepared. (A.p. 12a-13a) Appellees represented that

the stipulated facts were an important part of the facts

relied on by the trial court. Appellees insisted that the

Federal Circuit must consider the pre-trial, stipulated facts

by indicating:

“This Court cannot fully evaluate the trial

court’s decision without the benefit of the stip-

ulated facts.’”’ (A.p. 13a)

Appellants’ Motion was denied by a deputy clerk of the

Federal Circuit (A.p. 15a). The findings are further defi- -

cient by a further admission by the Appellees’ counsels’

abandonment in their responsive Brief of the substance of

finding No. 43 establishing the law of gravity as prior art.

(A.p. 67a-68a, 51a-52a)

The Federal Circuit ruled only on the issues of inequit-

able conduct as to the three utility patents in suit by

affirming the lower court and affirming the award of rea-

sonable attorneys’ fees and costs to each of the defendants.

In affirming the District Court, the Federal Circuit sum-

marized and redefined certain facts that it considered were

found by the District Court and found other facts de novo

that were technically erroneous facts; i.e., contrary to the

parties stipulated facts in the trial court. Rule 52(a) was

not mentioned, nor were any findings identified by number

or analyzed as to the underlying facts. (A.p.2a-4a)

The Federal Circuit found that certain information not

disclosed by Mr. Mathis’ counsel to the Patent Office would

have been “important” to a Patent Examiner in consid-

ering the Mathis patent applications and thereby estab-

lished the ‘‘materiality’”’ of the information per the present

day Rule 1.56 of the Patent and Trademark Office along

with the 1986 rationale of A. B. Dick Co., Supra, inter-

preting the Rule. The inequitable conduct as to undisclosed

information was based on Mathis and his attorney being

“grossly negligent’”’ and, therefore, satisfying the threshold

‘intent.”’ No findings of the lower court were referred to

by the Federal Circuit.

The Appellants in the Federal Circuit followed through

their attack of the District Court’s Findings of Fact in

their Briefs and oral argument before the Federal Circuit

as being based on an erroneous view of the law and the

application of the facts thereto. (A.p. 37a-47a) The findings

were further attacked as not being supported by the evi-

dence. This attack on the Findings of Fact was directed

to all the issues in the three patents, including the issues

relevant to inequitable conduct. In view of the

Respondents’ admissions in the Federal Circuit, it is clear

that the District Court’s findings are incomplete and the

Federal Circuit rendered a decision without all the facts

before them.

U.S. Patent 3,890,655

The basic claim, claim 1, of this Mathis ’655 patent

defines the structural organization of a whirlpool jet so

that the jet can be mounted to the wall of a bathtub or

similar water vessels without any fasteners of any type

and is automatically adjustable to different tub wall thick-

nesses. Once the back portion of the jet is mounted through

an aperture in the tub wall or the “blind” side, the in-

stallation of the jet can be completed solely from the inside

of the tub by securing the jet outlet to the back side of

the jet to complete the installation of the entire jet. Claim

1, a detailed claim, includes this novel feature by the re-

citation in the patented claim in column 4, line 33, et seq.

as:

‘“’.. to mount said jet on the bathtub without

any fastening members being connected to the

bathtub, the threaded engagement between said

water outlet and housing providing automatic ad-

justment of said jet to fit various thicknesses of

bathtub walls.”

The foundation for this claim language ‘‘without any

fastening members’”’ is found in column 4, lines 1-3, of the

655 patent by the following language:

“It should be noted that the device of the pres-

ent invention requires no screws or other fas-

tening members to be attached to the tub.”

This statement is repeated in column 3, line 55—column

4, line 2 of the Mathis ’656 patent and, again, in column

4, lines 52-54, of the Mathis ’499 patent.

The other patent claims in issue in the ’655 patent are

dependent on claim 1 and include further features of the

whirlpool jet construction.

U.S. Patent 3,890,656

The basic claim 1 of this patent covers a whirlpool jet

assembly of a plurality of jet housings mounted in spaced

relationship on a bathtub wall. The claim characterizes the

jet housings as:

\

“... having a transversely directed water inlet

opening and an adjacent transversely directed air

inlet opening ...” (column 4, lines 11-13)

so that the water supply pipes on the exterior of the

bathtub are:

“.. directly connected to each of said water

inlet openings without fittings, ...” (column 4,

lines 15-17)

and the exterior air supply pipes are :

“... directly connected to each of said air inlet

openings without fittings, ...” (column 4, lines

18-21).

Dependent claim 2 recites the necessary means for com-

pleting the whirlpool jet system and the structural design

for draining the water from within the whirlpool jet system

after the whirlpool jet system is turned off. This feature

is recited as:

“The bottom of said water inlet opening of each

of said housings being disposed above the bottom

of said mixing chamber, whereby said water sup-

ply pipe is completely drained into said mixing

chamber after each use.” (col. 4, 1. 34-38).

The remaining patent claims are dependent on claims 1

and 2 and all recite further improvements in the Mathis

whirlpool jets.

U.S. Patent 3,946,499

The basic claim 1 of this patent covers a whirlpool jet

mountable on opposite sides of the wall of a water vessel

in accordance with the Mathis teachings in the '655 and/

or ’656 patent in combination with a specially designed

spanner wrench. The water outlet mounted on the inside

wall of the bathtub is provided with a pair of spaced open-

ings to receive the spanner wrench and allow the jet parts

to be secured from only the inside of the tub.

Dependent claims 8 and 9 provide for optional config-

urations for supplying air to the jet body.

Dependent claim 10 provides for the use of the whirlpool

jet on opposite sides of a concrete wall by means of ex-

tensions for the jet body and jet nozzle.

U.S. patents 3,890,656 and 3,946,499 were granted as

the applications were originally filed. The same patent ex-

aminer processed the 3 Mathis applications.

The District Court

A model of a prior patented structure proffered as a

replica of the drawing in the Parr et al patent 1,526,179

to establish its operation as a whirlpool jet was demon-

strated during the trial. Tests were secretly run a number

of months prior to trial and recorded on video tape with

defendant’s (patent law) expert conducting the tests. The

tests were never disclosed to the Plaintiffs prior to trial

to afford a fair understanding of the replica by Plaintiffs’

technical experts; Finding of Fact No. 13. (A.p. 58a-59a)

The Plaintiffs’ experts (patent and technical) and the

inventor, Mr. Mathis, testified on the basis of the infor-

mation disciosed in the Parr et al patent directed to the

necessary structures for aerating a fish tank. In the very

limited time afforded for examination of the replica, view-

ing of the videotape during the trial, and the “working

replica” of the Parr device (an inherently unfair proce-

dure), the Plaintiffs’ experts pointed out the specific dif-

ferences between the Parr patent disclosure and the

“working replica’ end the reasons the “replica” had the

ability to produce a different action than that clearly con-

templated by the Parr et al patent disclosure.

The trial judge, who was untrained in patent matters,

apparently assumed a working replica could be constructed

from the patent drawings, and there was a direct corre-

spondence between the replica and the patent drawings.

The Plaintiffs’ experts were considered by the trial judge

as incredible, apparently on the basis that “seeing is be-

lieving’”’ and adopted Finding of Fact No. 13 and com-

pletely, erroneously, ignored Plaintiffs’ evidence.

The Court announced the manner in which the prevail-

ing parties were to prepare the findings of fact and con-

clusions of law and how the objections were to be processed

as follows:

“Yes, yes. Here is what I want to do:

I want you to submit the findings and conclusions

to me. I want that within a relatively short period

of time. What you do is you take the ones that

you gave me, you line out the things which—

obviously you have to take out al] the portions

on infringement. Then you give Mr. DaRin what-

10

ever length of time he wants to consider them.

He has to file nothing by way of objection. Then

we will go through the ones to which you have

an objection, Mr. DaRin, because it is too much

trouble to start writing things again. It won’t be

any trouble to you because you just have to take

what you already submitted;” (A.p. 115a).

The Plaintiffs’ counsel was afforded an opportunity to

object to the prevailing parties’ Findings and Conclusions.

The District Court judge, however, limited the objections

of Plaintiffs’ counsel on the issue of fraud and inequitable

conduct by stating:

“The Court: Now, when you get to this part on

fraud and inequitable conduct, you

can sum that up, can’t you:

“Mr. DaRin: Right, and I think at least the re-

cent cases from the Court of

Appeals help me in that regard.’

“The Court: I don’t think we need to go into

these.

“Mr. DaRin: Okay.

“The Court: I think that fraud is something that

I have to deal with.

“Mr. DaRin: Correct.

“The Court: And the conclusions of law do not

trouble you. It is the findings of fact

' The cases from the Court of Appeals referred to were the Federal

Circuit decisions on ‘‘fraud’’; namely, Orthopedic Company Inc. v. All

Orthopedic Appliances, Inc. 707 F.2d 1376, 1388, 217 USPQ 1281, 1286

(Fed. Cir. 1983); DuPont v. Berkeley & Co. 620 F.2d 1247, 12741275,

205 USPQ 1,23 (C.A.8 1980) SSIH Equipment, S.A. v. U.S. Interna-

tional Trade Commission and Stewart Warner, 718 F.2d 365, $78, 379,

218 USPQ 678, 689-90 (Fed. Cir. 1983) (A.p. 1343, line 11- page 1344,

line 6).

ll

upon which they are based, I mean,

your point is you can’t come to

those conclusions of law because you

have no facts upon which to base

them.”

“Mr. DaRin: Right.” (A.p. 139a-140a)

The procedure for disposing of the objected to Findings,

as announced by the Court, hereinabove, was never re-

sorted to by the lower court.

The evidence in the trial court included the fact that

the Jacuzzi and Hayward companies (the source of the

undisclosed information), as well as the defendants, both

changed their whirlpool jet designs to incorporate all of

the features patented by Mr. Mathis in claims 1 of both

the 655 and 656 patents.

Federal Circuit

In a 5-page decision, summarizing what appeared to the

Federal Circuit to be the lower court’s Findings of Fact,

rendering additional findings ‘de novo’ and citing the

Federal Circuit decisions, non-existent at the time of trial

in 1983, and those not considered by the trial judge, the

Federal Circuit affirmed. (A.p. 2a) The recent decisions of

the Federal Circuit established standards for inequitable

conduct before the PTO that were only vaguely defined

prior to the grant of the three utility patents. The Findings

as to “materiality” per 37 CFR 1.56 were adopted without

proper legal analysis of the Findings of the lower court.

The Federal Circuit’s judgment of reducing the case

down to the issue of ‘inequitable conduct” has expunged

the real basis for the lower court’s ruling as a whole,

namely, the evidence on the Parr et al patent. The sum-

mary treatment of the issue of ‘‘materiality’’ of the non-

disclosed information was without proper reference to any

one patent, or a patent claim that related the undisclosed

information to the claimed invention or the information

12

considered by the PTO to establish ‘materiality’ (as the

Federal Circuit has soundly condemned District Court

judges for doing). The Federal Circuit ignored the_provi-

sions of 37 CFR 1.56(b) as to an inventor’s satisfying his

duty of disclosure by disclosure to his counsel, as Mr.

Mathis did. The lower court’s findings also failed to spe-

cifically consider 37 CFR 1.56(b). Mr. Mathis testified at

the trial, along with other witnesses, in good faith to es-

tablish the lack of materiality of the undisclosed infor-

mation. In addition, the admission of the defendant’s

counsel as to the deficiencies of the facts disabling the

evaluation of the lower court’s judgment was not men-

tioned by the Federal Circuit. The Federal Circuit’s finding

“de novo” was contrary to stipulated Fact No. 64—the

Jacuzzi (and Hayward) jets were supplied water and air

through ‘“‘tees.”” (A.p. 28a). Although the Appellees’

counsels’ committed legal suicide in admitting the defi-

ciencies in the findings as noted hereinabove, the Federal

Circuit ignored the admissions in focusing on inequitable

conduct. Furthermore, the Appellants’ objections to the

Findings and Conclusions of Law re Rule 52(a), including

the fact that findings were not supported by the evidence,

was ignored by the Federal Circuit.

13

REASONS FOR GRANTING OF THE WRIT

I. The Court Should Issue The Writ Of Certiorari In

This Case Because The Federal Circuit’s Affirmance

Of The Trial Court On The Issue Of Inequitable Con-

duct Was Clearly A Retrospective Application Of

Present Day Standards Of Conduct For Applicants

Before The Patent Office, Only Recently Announced

By The Federal Circuit, That Impairs Vested Patent

Rights In Violation Of The Due Process Clause Of

The Constitution, As Recognized By The First Circuit

And An Early Decision Of The Federal Circuit Ap-

parently No Longer Followed, But Not Overruled, To

Prevent Manifest Injustice And To Avoid Future Er-

rors.

The Patent Office Rule 1.56 relied on by the Federal

Circuit was adopted by the PTO on January 28, 1977. The

patents in issue were all filed in the Patent Office and

granted before the adoption of Rule 1.56 (87 CFR 1.56)

in its present form. (A.p. 152a-153a)

Immediately prior to the existence of the Federal Cir-

cuit, the First Circuit, in a well reasoned decision, con-

sidered the issue of fraud on the PTO relative to the

present day and prior Patent Office Rule 1.56 in Digital

Equipment Corp. v. Diamond 653 F.2d 701, 210 USPQ

521 (CA-1, 1981). The First Circuit made it clear that the

application of Rule 1.56 as promulgated in 1977, to the

conduct of Patent Office applicants prior to the creation

of the regulation is improper. The learned First Circuit

also noted that the 1977 regulation adopted a definition

of ‘‘materiality’’ that is more expansive than applied in

prior ‘‘Fraud Cases;’’ Digital, Supra, Note 17 on page 716

of 653 F.2d; pages 537-538, including note 17 of 210 USPQ.

The Federal Circuit through Judge Rich adopted the

reasoning of Digital Equipment in American Hoist & Der-

rick Co. v. Sowa & Sons, Inc. 725 F.2d 13850, 1862, 220

USPQ 768, 772 (CAFC 1984).

14

In one of its first cases dealing with the issue of fraud

on the Patent Office, or inequitable conduct, the Federal

_ Circuit reviewed 37 CFR 1.56(a) and recognized that the

Court was “not at liberty ... to apply the present day

standard retroactively in this case, ...” (patent granted

in 1969) Connell v. Sears, Roebuck & Co. 722 F.2d 1542,

1551, 220 USPQ 193, 201 (Fed. Cir. 1983).

Subsequently, the Federal Circuit applied the 1977 def-

initions of 37 CFR 1.56 to pre-1977 patent applications

and patents, as in the case of the Mathis patents herein.

Apparently, ignoring the fact that the PTO rule was am-

biguous as to an applicant’s duty of disclosure prior to the

1977 change, the Federal Circuit has taken the position

that the rule is a mere codification of prior case law. It

is true that this Court in Precision Instrument Mfg. Co.

v. Automotive Maintenance Machinery Co., 324 U.S. 806,

816, rehearing denied 325 U.S. 893, 65 USPQ 133, (1945)

established that a patent applicant and his attorney have

a duty to the PTO to bring information to their attention

that is ‘material’ and which duty is absolute and uncom-

promising. This decision was based on the equitable doc-

trine of unclean hands on very specific facts. The rhetoric

of the Precision Instrument, Supra, case provides no stand-

ards to guide applicants for patents and their attorneys

for avoiding a charge of fraud or inequitable conduct in

soliciting patents.

The Federal courts have recognized, as late as 1980,

that there cannot be, nor has there been, any exact inter-

pretation of the “duty of candor” owed by a patent ap-

plicant, as set out in Precision Manufacturing Co., Supra,

in Pfizer, Inc. v. International Rectifier Corp., 545 F. Supp.

486, 535-538, 207 USPQ 397, 435 (C.D. Cal. 1980), aff'd.

685 F.2d 357 (CA-9, 1982) after reversal by the Eighth

Circuit in Pfizer vs. International Rectifier Corp. 538 F.2d

180, 185-187, 198-194, 190 USPQ 273, 277-279, 286 (CA-

8, 1976).

15

Unlike the oaths executed by Mr. Mathis with his patent

applications (35 USC 115), (A.p. 147) the present day PTO

rules require an ‘‘acknowledgment” by the inventor of his

duty to disclosure per Rule 1.56 in Rule 1.63(b-3) (A.p.

153a-154a).

The public interest is clearly at issue since it has been

a source of great concern to the patent bar that conduct

before the PTO will be retrospectively labeled fraudulent

or inequitable based on a hindsight evaluation of the prior

conduct; note “Patent Litigation: Procedure & Tactics,”

Vol. 3 by R. A. White, pages 8A-21-8A-23.

A. The Court Should Issue The Writ Of Certiorari In This

Case On The Issue Of Inequitable Conduct As The Fed-

eral Circuit Only In 1984 Provided Specific Standards

For Evaluating Conduct Before The Patent Office, But

Yet Different Panels Have Interpreted The Standards

Differently In The Retrospective Application Of The

_ Present Day Standards. Accordingly, There Is An Im-

mediate Special Need For Nationwide Uniformity Which

The Federal Court Is Not Providing.

The Federal Circuit in the 1984 decision of J. P. Stevens

& Co. v. Lex Tex Ltd., 747 F.2d 1558, 1559, 223 USPQ

1089, 1092 (Fed. Cir. 1984) adopted the broader label of

“inequitable conduct” rather than “fraud on the PTO”’ to

identify a breach of the duty of candor to distinguish from

common law “fraud.” This eliminated the defense of “‘good

faith” that was previously available in “fraud” allegations.

The District Court judge considered the decisions of the -

Ninth Circuit controlling in this patent case per her Con-

clusion of Law No. 1; note Conclusions Nos. 34-37, 39-42

re inequitable conduct. (A.p. 92a-95a) The Federal Circuit’s

decisions that were rendered during the lengthy period

these cases were under submission, that significantly

changed the law, were not considered by the trial judge.

Among these cases was the 1984 important case of J. P.

Steven & Co., Supra. This Stevens decision was basic to

16

the affirmance, along with the overly expansive view of

the Federal Circuit announced in 1986 as to inequitable

conduct in A. B. Dick Co. v. Burroughs Corp., 798 F.2d

1392, 1398, 230 USPQ 849, 854 (Fed. Cir. 1986).

The end result is that all inventors’ conduct before the

PTO in the 1970’s and later has been and will be evaluated,

retrospectively, under present day standards that vary with

the panels of the Federal Circuit. The A. B. Dick, Supra,

decision ignores the realities of the practise of patent law-

yers and agents before the PTO and the fact that the

“undisclosed” material did not affect the validity of the

patent. This retrospective application of the present day

standards impairs all vested patent rights granted prior

to A. B. Dick, Supra.

The Patent Bar has criticized the A. B. Dick rationale

and some members of the Bar have concluded the Federal

Circuit has gone too far, while others see the erosion of

the Patent System.

In addition, since different panels of the Federal Circuit

have interpreted the criteria set out in J. P. Stevens, Su-

pra, differently the present day patent grants are even

more suspect and indefensible to the patentees, thereby

negating the constitutional provision for advancing the

practical arts.* This position was recognized by the First

Circuit in Digital Equipment Corp., Supra, but ignored by

the Federal Circuit, page 716 of 653 F.2d, page 538 of

210 USPQ.

What should be abundantly clear at this point is that

the standards for evaluating inequitable conduct are con-

2 The litigation in the District Court consumed approximately 6 years

of the 17 year patent grant, 35 USC 154, all to the advantage of the

infringers. This in itself frustrates the constitutional provisions of pro-

tecting inventors. Approximately 3 years of the 6 covered the period

the cases were under submission. During this period Mr. Mathis’ orig-

inal patent law expert passed away and the technical expert at trial

passed away. Justice was delayed and denied.

17

fused since the Federal Circuit panels interpret the stand-

ards differently calling for clarification NOW.

The Federal Circuit’s summary of the facts of record

on page 3 of their Opinion is clearly erroneous. (A.p. 3a)

The prior art Jacuzzi and Hayward jets did not have “the

supposedly patentable features’ of the subject matter of

claim 1 of both the ’655 and 656 patents. In fact, the

prior art designs of these two competitors’ products were

changed to include both the features of claim 1 of ‘655

and the novel features of claim 1 of '656 Mathis patents

many years after the grant of the Mathis patents when

the subject matter of these separate claims is taken “as

a whole” as required by this Court in Graham v. Deere,

883 U.S. 1. These factors were not evaluated by any one

court re ‘‘materiality” _ er the Lex Tex, Supra, standards.

A respected writer in the patent field has also criticized

the decisions of the Federal Circuit as to ‘inequitable con-

duct” leading to unpredictable results, implication of the

morals of good faith of a party, and inquiry into the quality

of prior legal representation leading to the necessity of

testimony by counsel; “Patent Law and the Presumption

of Moral Regularity: A Critical Review of Recent Federal

Circuit Decisions on Inequitable Conduct and Willful In-

fringement”’, Donald S. Chisum, Journal of the Patent &

Trademark Society, January, 1987, Vol. 69, No. 1, pages

27-46.

The courts have recognized that a patent infringer is

permitted to sidestep the main issues of patent validity

and infringement by their conduct in asserting patent

unenforceability; Digital Equipment Corp. v. Diamond, Su-

pra, page 726 of 653 F.2d, 547 of 210 USPQ citing Pfizer

v. International Rectifier Corp., Supra, page 196 of 538

F.2d, pages 286-287 of 190 USPQ.

Patentees and applicants before the Patent and Trade-

mark Office are entitled to a thorough examination of the

validity of their contributions and their conduct before the

18

Patent and Trademark Office should be of secondary im-

portance in light of a prior conclusion of invalidity as rec-

ognized by the CCPA in Norton v. Curtiss, 433 F.2d 779,

795, 167 USPQ 532, 544-45 (CCPA 1970)

Only then can the issue of inequitable conduct be prop-

erly evaluated in terms of the metes and bounds of the

patent claims and the prior art of record, as the Federal

Circuit recognized in Kimberly Clark Corp. v. Johnson &

Johnson, 745 F.2d 1487, 1454-55, 223 USPQ 603, 616

(Fed.Cir. 1984). The Federal Circuit indicated in Kansas

Jack v. Kuhn, 719 F.2d 1144-1151-52, 219 USPQ 857, 861

(Fed. Cir. 1988)—the fact finder must evaluate all of the

facts and circumstances in each case (i.e., in each patent).

Both lower courts in considering the retrospective ap-

plication of Patent and Trademark Office Rule 1.56 have

ignored subdivision (b) of the Rule as to disclosure by an

applicant to his patent counsel to the extent of penalizing

the inventor for his attorneys’ judgment. The Rule clearly

states that the duty of disclosure of an applicant shall be

satisfied by disclosure to his patent counsel or agent and

such an attorney or agent has no duty to transmit infor-

mation which is not material to the examination of a pat-

ent application, 37 CFR 1.56(b) (A.p. 152a) The Digital

court did not approve placing the entire burden of proper

disclosure on an inventor not versed in patent law; Note

25 on page 720 of 653 F.2d; Note 25 on pages 541-42 of

210 USPQ, Supra. The oaths executed by Mathis in the

70’s were not in accordance with present day Rule 1.63(b-

8). (A.p. 154a)

Mathis’ patent counsel was not available to testify as

to his reasoning on materiality or intent as in Laitram

Corp., Supra. The hindsight, speculative evaluation by the

lower court resulted in injustice to this inventor and will

to similarly situated novice inventors in the future. In this

case, the inventor was a novice to the whirlpool jet art

19

as well as to patent law, as the patents in suit evidence

his first excursions into both of these fields.

B. No Novice Inventor, Unskilled In Patent Law, Who Re-

lied On His Patent Counsel To Obtain A Patent For

Him Should Be Charged With Inequitable Conduct Un-

der Any Standards When It Is Impossible To Obtain

The Testimony Of The Patent Counsel To Explain His

Actions Of Non-Disclosure

The Federal Circuit’s decision drew the inference that

the inventor was attempting to place the blame on his

deceased attorney and claiming ignorance and then cited

37 CFR 1.56(a) not (b). A key element in being able to

draw a negative inference against a party—Mathis—is that

it must be shown that Mathis had the power to produce

Mr. Comstock. Obviously he did not; Chicago College of

Osteopathic Medicine v. Geo A. Fuller Co. 719 F.2d 1335,

1353 (CA-7, 1983).

The PTO recognizes that inventors per se are not ex-

pected to be experts in patent law. Cannot the inventor’s

conduct exhibit ignorance as to patent matters rather than

gross negligence?-YES.

In the factual area of errors of omission in failing to

inform the PTO of prior art known to the attorney or the

applicant, the recent cases indicate that both the courts

and the PTO, prior to the Federal Circuit, are likely to

respect that judgment, even if it was wrong, including the

following cases: Tokyo Shibaura Electric Co. v. Zenith Ra-

dio Corp. 404 F. Supp. 547, 188 USPQ 55 (D. Del. 1975);

affirmed 548 F.2d 88, 193 USPQ 73 (CA-3, 1977) (The

attorney died and superior did not review application in

detail) Reinke Mfg. Co. v. Sidney Mfg. Corp. 446 F. Supp.

1056, 199 USPQ 401@D. Neb. 1978); affirmed 594 F.2d

644, 201 USPQ 344 (CA-8, 1979) (Inventor testified he

disclosed relevant art to his attorneys.) The Federal Circuit

followed suit, and, early on, recognized that an erroneous

judgment made in good faith is insufficient to prove the

20

threshold intent required to establish inequitable conduct;

see page 1560, 747 F.2d page 1092 of 223 USPQ, Lex

Tex, Supra, and Hycor Corp. v. Schlueter Co. 740 F.2d

1529, 1540, 222 USPQ 553, 561-562 (Fed. Cir. 1984).

Enough mud was thrown at the inventor to give the

trial judge the opportunity to conclude his hands were

unclean—the trial counsel so evaluated the trial judge and

she performed admirably. Judge Rich did not explain what

was the error in disclosing the information to counsel and

why his hindsight evaluation of the information should con-

trol other than referring to A. B. Dick, Supra, as the law.

The underlying facts were not evaluated as required by

this Court, under Rule 52. The only analysis of the claims

and the prior art was by the prevailing parties’ counsel

and the trial judge ignored the Mathis evidence and ob-

jections. Claim 1 of the ’655 patent defines specifically

over the Hayward jet for purposes of validity and there

is no material information disclosed or undisclosed, as to

all of the claims of the ’656 patent for either the purposes

of validity or inequitable conduct, for example.

II. The Need For Review Of The Issues Relating To

Rule 52(a) Raised By Questions 2 And 3

A. The Court Should Issue The Writ Of Certiorari In This

Case Under The Supervisory Authority Of U.S.S.C. Rule

17 Because The Federal Circuit’s Affirmance Of The

Trial Court Is Grounded Upon A Total Disregard Of

The Requirements Of F.R. Civ. P. Rule 52(a), The Pre-

vailing Parties’ Admitted Deficiencies Of The Findings,

As Well As The Federal Circuit Improperly Making Fac-

tual Findings (Erroneous Facts) And Thereby Ignoring

The Pronouncements Of This Court To Prevent Manifest

Injustice In the Future.

Quite a few years ago, the mechanical adoption of the

prevailing parties’ findings were condemned by this Court

as not revealing the discerning line for decision of the

basic issues in United States v. El Paso Natural Gas Co.

376 U.S. 651, 656, 12 L. ed. 2d 12, 84 S. Ct. 1044 (1964).

21

In fact, this Court denounced this procedure by trial judges

as an abandonment of their duty and trust placed on the

judges by Rule 52. In sum, it has been indicated as follows:

“When these findings get to the courts of

appeals, they won’t be worth the paper they are

written on as far as assisting the Court of

Appeals in determining why the judge decided

the case.’’ footnote 4, page 656 of 376 U.S.

As noted herein the STATEMENT OF THE CASE, even

the drafters of the findings confessed they were deficient.

It is respectfully submitted that this is exactly what has

occurred in this patent case and occurs in many, many

patent cases. As noted hereinabove, no opportunity was

given to Respondent’s counsel to object to the prevailing

parties’ proposed findings on the dispositive issue of ine-

quitable conduct. The trial judge’s failure to permit (her

announced) hearing on the objections to the inequitable

conduct findings and failure to recognize and follow the

Federal Circuit’s decisions, along with the substantial

adoption of the prevailing parties’ findings without any

consideration of the Petitioners’ evidence, involves the fail-

ure of the trial judge to perform her judicial function and

amounts to a denial of due process.

The failure to the trial court and the Federal Circuit to

evaluate the information known and considered by the pat-

ent examiner relative to that not known to him as im-

portant to the validity evaluations of each patent in suit

and also as to what information would have been ‘“‘im-

portant” to a patent examiner for the evaluation of ine-

quitable conduct under the Federal Circuit’s present day

standards so that due process required a remand to the

trial court and not affirmance by the Federal Circuit; see

Chicopee Mfg. Corp. v. Kendall Co. 288 F.2d 719, 129

USPQ 94 (CA-4, 1961). The Federal Circuit compounded

the denial of due process by attempting to summarize the

facts and establish facts de novo, including erroneous facts,

22

contrary to this Court’s pronouncements. The review of

the factual findings under Rule 52(a) would have revealed

that a “reasonable fact finder’ would not accept them in

light of the record in its entirety; Anderson v. Bessemer

City 470 U.S. __, 84 L.ed. 2d 518, 106 S.Ct. __ (1985)

and Icicle Seafoods, Inc. v. Larry Worthington et al 475

U.S. —_89 L. ed. 2d 739, 106 S. Ct. __(1986).

The summary of the facts by the Federal Circuit did

reveal, however, that the “Stipulated Facts’’ which were

not included in the trial court’s Findings and the admission

of Respondent’s counsel in the Federal Circuit were ig-

nored. In fact, the de novo findings of the Federal Circuit

were, technically, erroneous and contrary to the parties’

stipulated facts; see 655 patent hereinabove and Fact No.

64 (A.p. 28a)

In the second paragraph of page 3, Judge Rich sum-

marized the lower court’s findings regarding the Model

548 Spa. An analysis of this whirlpool jet structure would

have revealed that the jet structure was a step backward

in the art, as evidenced by the background discussion in

the ’656 patent relative to the subject matter of the claims

of the ’656 patent, taken as a whole, and, therefore, the

validity and enforceability should have been established.

Without a proper analysis required by Rule 52 and the

pronouncements of this Court relative thereto, the adop-

tion of the lower court’s findings were erroneous or a

gross miscarriage of justice in these cases.

The design patent was dedicated to the public before

trial. The trial judge permitted the defendants to prove

invalidity and encumbered the record and Findings of Fact

with documents that were not relevant; i.e., Finding 89

lists 300 invoices without addressing the fact that most of

the invoices were within the one year statutory period,

and, therefore, of no legal consequence.

The Federal Circuit, in its infinite wisdom, referred to

the “finding of intent cannot be clearly erroneous given

23

the sheer volume of information not disclosed.”’ It would

appear that the “sheer volume”’ must refer to the invoices

on the design patent and the “sheer volume” was not

relevant to the design patent. Did the Federal Circuit have

in mind Conclusions of Law 43 and 46? (A.p. 96a-97a)

Furthermore, the design patent was excluded from the

Federal Circuit’s consideration; see page 2 of the Opinion

(A.p. 2a).

The Federal Circuit has recognized that “inequitable

conduct”” as to one patent cannot taint patents obtained

earlier merely because they are interrelated, SSIH Equip-

ment S.A. v. U.S. International Trade Commission et al

718 F.2d 365, 378-79 218 USPQ 678, 689, 690 (Fed. Cir.

1983). The lower court’s Findi and Conclusions of Law

No. 46 (A.p. 97a) are to this effect but were not rejected

by the Federal Circuit, nor was the summary of the facts

established to support such a conclusion. A design patent

and a utility patent, on their faces, are different in kind.

The District Court apparently did not evaluate this Federal

Circuit decision and the facts of the patents prior to adopt-

ing Conclusion of Law No. 46.

The attempt by the Federal Circuit to equate claim 1

of each of patents Nos. '655 and '656 to “‘one of the

supposedly patentable features’”’ is meaningless since the

two claims define different combinations of elements, nei-

ther of which is in the “known Jacuzzi jet.”’ (A.p. 3a)

As a result of the summary approach to the Findings

of Fact, it would clearly appear that the Federal Circuit

could not affirm the trial court without re-writing the de-

ficient Findings and writing some of their own, all contrary

to the spirit of Rule 52(a) and this Court’s decisions.

To permit Courts of Appeal to share more actively in

the fact-finding function tends to undermine the legitimacy

of the District Courts in the eyes of litigants, multiply

appeals by encouraging appellate retrial of some factual

issues, and needlessly reallocates judicial authority. The

24

public interest can be best promoted by recognizing that

the trial court, not an appellate tribunal, should be the

finder of the facts, thereby leading to stability and econ-

omy in the judicial process. Trial courts should adopt Find-

ings based on an evaluation of both parties’ evidence, not

only the prevailing parties’ evidence.

Petitioner submits that the Federal Circuit has strayed

too far from the accepted and usual course of judicial

proceedings in this case and has sanctioned such a de-

parture by the trial court and this Court should grant the

Petition pursuant to this Court’s Rules 17.1 and 17.2 to

correct this conduct as it calls for an exercise of this

Court’s power of supervision per Rule 17.1(a).

III. The Need For Review Of The Issues Raised By

Question 4 Is Necessary To Prevent A Gross Mis-

carriage Of Justice

A. The Court Should Issue The Writ Of Certiorari In This

Case Because The Federal Circuit’s Affirmance Of The

Trial Court, Solely On The Issue Of Inequitable Con-

duct, Incorporated An Erroneous Approach Based On

The Erroneous Approach By The Trial Judge, Based On

The Erroneous Patent Claim Interpretation And Erro-

neous Interpretation Of The Cited And Uncited Prior

Art By The Counsel Of Prevailing Parties.

Fundamental to any evaluation of inequitable conduct is

the correct interpretation of each of the three patents in

issue and, in particular, the patent claims in issue from

the standpoint of the information considered by the PTO.

The Federal Circuit recognized that Fraud cannot consist

of a failure to duplicate what is in the file wrapper; En-

vironmental Designs, Ltd. v. Union Oil Co. of Calif. 713

F.2d 693, 698, 218 USPQ 685, 870 (Fed. Cir. 1983). Again,

in 1984 in American Hoist & Derrick Co. v. Sowa & Sons,

Inc. 725 F.2d 1350, 1363, 220 USPQ 763, 772 (Fed. Cir.

1984), the Court stated in citing Digital, Supra, an ap-

plicant is under no obligation to disclose all pertinent in-

formation. This was restated by the Court in Kimberly-

25

Clark Corp. v. Johnson & Johnson 745 F.2d 1437, 1454,

223 USPQ 603, 614 (Fed. Cir. 1984). The J. P. Stevens &

Co. v. Lex Tex, Ltd. panel stated that a reference that is

cumulative to the cited art is not material, 747 F.2d 1553,

1559-60, 223 USPQ 1089, 1092 (Fed. Cir. 1984).

The Laitram, Supra, panel considered “important” re

37 CFR 1.56(a) for purposes of materiality from the stand-

point of anticipation (35 U.S.C. 102), or “‘obviousness”’ (35

U.S.C. 103), and the absence of either statutory criteria

establishes lack of materiality and thereby lack of “im-

portance’”’; 785 F.2d 292, 295, 228 USPQ 935, 937 (Fed.

Cir. 1986).

Yet another panel of the Federal Circuit in 1986 in

considering the standards of materiality and intent in the

J. P. Stevens, decision, Supra, relative to prior art designs

that were utilized as a starting point for the patented

improvements under consideration and known to the pa-

tentee and its attorney but not disclosed to the PTO goes

to intent and not to materiality under 37 CFR 1.56. This

panel considered that this evidence did not clearly and

convincingly establish that a reasonable patent examiner

would have considered the starting point information ‘im-

portant” in deciding to issue the patent; Pacific Furniture

Mfg. Co. v. Preview Furniture 231 USPQ 67, 69 (Fed. Cir.

1986).

The Pacific Furniture, Supra, rationale parallels the

facts with respect to the Mathis ’655 patent, namely, the

Hayward jet, was considered as the starting point—the

whirlpool jet Mathis found unsatisfactory for his purposes

and commenced to improve on and did improve on as

testified to extensively by Mr. Mathis. The findings of the

trial court describe the difference covered by claim 1 of

the ’655 patent; see Findings 10, 15 and 20 (A.p. 57a-

59a,61a) The trial court found the differences ‘“‘obvious’’

without any analysis under 35 USC 108 (in finding No.

15) as required by this Court in Graham v. Deere, Supra.

26

Similarly, claim 1 of the ’656 patent is redefined in Finding

No. 30. (A.p. 64a) The prior art referred to in the Mathis

specification relative to claim 1 of the ’656 patent is in-

tentionally misconstrued in Finding No. 38 (A.p. 67a) to

support the claim of inequitable conduct and attorney fees.

Similarly, the Model 548 structure was redefined to es-

tablish invalidity and inequitable conduct per Findings 39

and 44. (A.p.67a-68a) In fact, the Mathis specification de-

scribes the prior art that is an improvement over the

method of supplying water and air to the whirlpool jets

in his Model 548 Spa as recognized by the statement in

Finding No. 38. (A.p. 67a)

The A. B. Dick panel, Supra, stated their understanding

of the language of 37 CFR 1.56(a) as simply “important

to a reasonable examiner’ contra the aforementioned

interpretations by the above noted panels. Unlike the Lav-

tram, Supra, panel, the A. B. Dick panel flatly stated that

materiality is not whether there is anticipation or obvious-

ness; page 1397 of 798 F.2d, page 853 of 230 USPQ. This

now places the burden on an applicant and his patent

counsel to disclose all known information whether the Ex-

aminer has knowledge of it or not and whether the Ex-

aminer has cited it or not and whether or not counsel

considers it material; thereby all known information now

is “important” under Rule 1.56.

The PTO Rule 1.56 defines “important’’ as to a “rea-

sonable examiner.” There is no standard in the rule or

anywhere to define a “reasonable examiner’ or the level

of skill of an Examiner to permit proper interpretation of

the ‘‘importance’”’ to the Examiner under Rule 1.56. An

Examiner’s evaluation of the prior art and an applicant’s

invention varies with the level of skill and experience of

the individual Examiner and his particular familiarity with

the class of inventions falling within his assigned expertise,

as does evaluation of patent counsel. Is the Examiner one

of “ordinary” skill of the art, higher or lower than the

skill? A valid decision as to an Examiner’s skill is not

enti

27

unlike the skill of the art required under a 103 obviousness

evaluation required by this Court in Graham, Supra. Any

other approach results in a hindsight evaluation by the

Courts as to information never revealed to the reasonable

Examiner.

The Federal Circuit opinion clearly indicated that it did

not reach the issues under 35 U.S.C. 102, 103 and 112 in

the opening paragraph of its opinion (A.p. 2a).

Judge Markey highlighted the “tricks of the trade’’ that

are resorted to by some patent trial lawyers to obtain

their desired results in Panduit Corp. v. Dennison Mfg.

Co. 1 USPQ 2d 1953 (Fed. Cir. 1987). Petitioner submits

that patents, patent claims and prior information should

be fully examined and properly interpreted on the basis

of the entire record or all evidence in order to reach a

valid judgment on inequitable conduct.

Petitioner submits that in all patent cases involving ine-

quitable conduct that the record cannot be properly eval-

uated as to undisclosed information per se without

establishing properly, (1) the claimed subject matter, (2)

the prior information of record, and (8) the relationship

of the cited and uncited information as to the claimed

subject matter “‘as a whole.’’ If the trial court’s decisional

approach is of the type condemned by Judge Markey, the

Same approach can make any undisclosed known infor-

mation appear “important”? under Rule 1.56 to establish

materiality and therefore the isolation of a single issue

should be condemned by this Court as it is inequitable to

patentees who have made a valuable contribution to so-

ciety, as in these cases.

28

B. The Erroneous Interpretation Of The Patents In Suit,

The Claims In Issue, And The Lack Of Review Of The .

Cited And Uncited Art Has Approved The Trial

Counsel’s Improper Erroneous Conclusions Authenti-

cated By The Trial Court’s Lack Of Appreciation Of

The Petitioner’s Evidence.

What Judge Markey has condemned in Panduit, Supra,

has occurred in this case. The claims were reduced to

shorthand expressions such as to “sandwiching”’ re claim

1 of '656, restricted the claim language of claim 1 of ’655

to “screws and similar fasteners” to encompass the Hay-

ward Jet ‘‘nut” and thereby read out of the claim ‘“‘without

any fastening members being connected to the bathtub”

which is not descriptive of the Hayward “‘nut.’”’ The dis-

cussion of the prior art use of T-fittings disclosed in the

Mathis ’655 patent has been re-interpreted to establish the

infringer’s position and without reference to the actual

state of the prior art as established by the record. Simi-

larly, the language of claim 1 of the ’656 patent as to

plural jets being ‘‘directly connected” ... “without fit-

tings” has been reconstructed by the prevailing parties in

terms of the prior art.

The trial court’s Finding of Fact No. 15, (A.p. 59a) on

its face, is contrary to the conclusion reached by the Fed-

eral Circuit on page 3 of its Judgment, that the Hayward

and Jacuzzi jets are installed without extraneous fastening

devices, since the finding itself indicates that the Hayward

jet uses a “flanged nut” (a fastening device) and its lo-

cation on the tub. As the finding also makes clear, ref-

erence to anticipation and obviousness with regard to 35

U.S.C. 102 and 103 are integrally related to the finding

which the District Court adopted and which the Federal

Circuit has redefined on page 3 of its Opinion.

The inventor acknowledged the lack of disclosure to the

Patent Office by his patent counsel of the Hayward jet

and the fact that it was the prior art he improved upon

and there was extensive testimony by him and his wit-

29

nesses in the trial court that was overlooked with regard

to this matter. It is respectfully submitted that in following

this Court’s evaluation of an invention, the proper consid-

eration and evaluation of the claim language would result

in a completely different result than the evaluation of the

claimed subject matter based on erroneous unilateral inter-

pretations. Judge Markey recognized that erroneous patent

claim interpretation requires REMAND; page 1603 of 1

USPQ 2d.

The decisional approach in the trial court and in the

Federal Circuit permits the destruction of every patent

and subjects every inventor and patent applicant to a claim

of inequitable conduct, particularly in view of the Federal

Circuit’s rationale in A. B. Dick Co., Supra, by penalizing

every lack of disclosure of information known to an in-

ventor, whether or not it affects the validity of the patent,

thereby frustrating Congress’ effort to effectuate its con-

stitutionally granted powers and the intent of the framers

of the Constitution. This appraoch renders the costs of

obtaining patents, and litigating patents, particularly to

independent inventors, prohibitive.

The same Mathis patents were before the PTO in an

attempt to obtain a trademark registration on the config-

uration of the venturi body per se. The same Federal

Circuit panel affirmed the decision (unpublished) of the

Trademark Trial and Appeal Board in denying the regis-

tration on the grounds that included the fact the Mathis

structure was of a superior design; Jn re Vico Products

Mfg. Co., Inc. 229 USPQ 364, 367, 368 (TTAB 1985), re-

consideration denied 229 USPQ 716, 718 (TTAB 1986).

The errors of law committed by the trial court are too

numerous to discuss in this Petition, but a reading of the

short Opinion of the Federal Circuit leaves no room for

doubt that the conclusions are based on the erroneous facts

and conclusions of the trial court, compounded by further

erroneous fact findings by the Federal Circuit whereby a

30

gross miscarriage of justice has been committed and will

continue to be committed without a change in the deci-

sional approaches ordered by this Court.

Petitioners are entitled to more than the ready adoption

of the prevailing parties erroneous interpretations of the

lower court.

CONCLUSIONS

For these various reasons, this Petition for Certiorari

should be granted. The decisions of the trial court and the

Federal Circuit would impose a manifest ifjustice on Mr.

Mathis, and Mr. Mathis accordingly prays, most urgently,

that the Writ of Certiorari be issued.

In view of the conflict of the decision below with the

past decisions of this Court, and the conflict in the deci-

sions of-the numerous Federal Circuit panels, the Court

may wish to consider summary reversal.

Respectfully submitted,

EDWARD J. DARIN

EDWARD J. DARN, INC.

301 East Colorado Blvd., Ste. 518

Pasadena, CA 91101

Attorney for Petitioners