Appendix — Mathis v. Hydro Air Industries, Inc.
Supreme Court brief1987
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IN THE
Supreme Court of the Gnited States
OCTOBER TERM, 1986
CLeEo D. MATHIS and Vico PRODUCTS MANUFACTURING
Co., INc.
Petitioners,
vs.
Hypro Air INDUSTRIES, INC., GERALD MORELAND, BILL
SPEARS, WATERWAY Puastics, INc., B & S PLastics,
Inc. dba WATERWAY PLASTICS, and Puiip E.
CHALBERG, ROBERT WEYGAND, HypRABATHS,
Respondents.
APPENDIX TO PETITION FOR A WRIT OF
CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE FEDERAL CIRCUIT
Epwarp J. DaRIN
Epwarp J. DaR, INc.
301 East Colorado Blvd.,
Suite 518
Pasadena, CA 91101
(818) 793-0689
Attorney for Petitioners
PRESS OF BYRON 8S. ADAMS, WASHINGTON, D.C. (202) 347-8203
INDEX TO APPENDIX
Page(s)
Opinion of Court of Appeals for the Federal
i iliac ewasatnenideonticnoes la
Order Denying Rehearing . ..............:.cccsssssesssreeeees 6a
Excerpts from ae Motion to Strike Por-
tions of —_ ees’ Brief and Supplemental Ap-
ndix in Support of Appellants’ Attack on the
IE A PN a ch tihchs ie ssecscsscctsesses.. 8a
— from Appellees’ Opposition to Appellants’
otion to Strike Portions of Appellees Brief
and Supplemental Appendix Evidencing
—_—. Admissions in the Court of Appeals
of the Incomplete Nature of the Trial Court’s
Findings of Fact and the Need for the Omitted
I SIE Sihaseieenscscdeciccinesiccatsicercesccees lla
Order for Striking pages from Appellees’ Brief and
Supplementary Appendix —..............cccceeeeeeeeeees l4a
Pre-Trial Stipulation of Facts Excerpted from
Appellees’ Joint Responsive Brief _................ 16a
Excerpts from Opening Brief of Appellants Show-
ing How the Attack on the Tria! Court’s Find-
ings of Fact and Conclusions of Law Were
Raised and Preserved. ........:ssscccccccsssssrrreceeees 37a
Excerpts from Appellants’ Reply Brief Illustrating
Appellees’ Inability to Substantiate and Aban-
donment of the Basis for the Trial Court’s
Finding of Fact No. 43 re Claim 2 of the
Gs SEE SEEN. nentniikAcnbsashanssncenaseaensiaenesse 48a
Findings of Fact and Conclusions of Law of the
District Court for the Central District of Cal-
RISES HERI CRRR A SSA CRP tee ee a 54a
Three Identical and Separate Judgments of the Dis-
is osaunanaies 100a
Ruling of Trial Court After Trial ..................0.0.. llla
Plaintiffs’ Objections to Defendants’ Joint, Pro-
_ Findings of Fact and Conclusions of Law
howing How the Attack on the Findings and
Conclusions of Law was Raised _ ...............06 117a
ii
Provision of the Constitution of the United States
Article I, Section 8, Clause 8 — ......ssssceeerreees 143a
Title 35 of the United States Code Sections 101,
102, 103, 111, 112, 115, 154, 282, 285. ........ 144a
Federal Rules of Civil Procedure Rule 52(a) ....... 150a
Title 37—Patents, Trademarks and Copyrights,
Rules of Practice in Patent Cases, Rules 37
CFR 1.31, 1.51, 1.56 and cele 15la
la
Note: This opinion will not be published in a
printed volume because it does not add signifi-
cantly to the body of law and is not of widespread
legal interest. It is a public record. It is not cit-
able as precedent. The decision will appear in
tables published periodically.
UNITED STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT
Appeal No. 86-1181.
CLEO D. MATHIS, an individual,
Appellant,
v.
HypDro AIR INDUSTRIES, INC., a corporation, and GERALD
MORELAND, an individual,
Appellees,
Appeal No. 86-1224.
CLEO D. MATHIS, an individual and Vico Propucts
PRODUCTS MANUFACTURING Co., INC., a corporation,
Appellants,
Vv.
BILL SPEARS, an individual, d.b.a. WATERWAY PLASTICS
AND WATERWAY PLASTICS, INC., a corporation,
Appellees.
2a
Appeal No. 86-1182.
CLEO D. MAaTHIS, an individual, and Vico PRODUCTS
MANUFACTURING Co., INC., a corporation,
Appellants,
Vv.
Puitip E. CHALBERG and ROBERT WEYGAND, individuals,
and HyDRABATHS, a corporation,
Appellees.
DECIDED: February 13, 1987
Before MARKEY, Chief Judge, RICH, Circuit Judge, and
BALDWIN, Senior Circuit Judge.
RICH, Circuit Judge.
DECISION
The three related March 20, 1986, judgments of the
United States District Court for the Northern (errata en-
tered) District of California holding that all claims of Pat-
ents Nos. 3,890,655, 3,890,656, and 3,946,449, all entitled
“Whirlpool Jet for Bathtubs,” are invalid under at least one
of 35 USC 102, 103, and 112 and unenforceable for ine-
quitable conduct are affirmed with respect to those portions
of each judgment holding all the claims of each patent unen-
forceable and awarding reasonable attorney fees and costs
to the defendants. We do not reach the other issues.
OPINION
Inequitable Conduct
The duty on the part of a patentee and his attorney to
bring to the PTO’s attention information they are aware
3a
of which is materia] to the examination of the application
is absolute and uncompromising. See, e.g., Precision In-
strument Mfg. Co. v. Automotive Maintenance Machinery
Co., 324 U.S. 806, 816, reh’g denied, 325 U.S. 893 (1945);
J.P. Stevens & Co. v. Lex Tex Ltd., 747 F.2d 1553, 1560,
223 USPQ 1089, 1093 (Fed. Cir. 1984), cert. denied, 106
S. Ct. 73 (1985). The district court found that Mathis failed
to disclose to the examiner: (1) the Hayward and Jacuzzi
jets and knowledge that those jets are installed without
extraneous fastening devices and need not be installed us-
ing tees; (2) his own Model 548 Ultraspa; (3) knowledge
of a prior art spanner wrench and prior uses of his own
spanner wrench; and (4) that concrete extension pipes were
commonly discardable in the art.
The court further found that: (1) Mathis knew of the
Hayward jet and that it was identical to Hayward jets
Mathis knew to be available to the public in 1971; (2) he
knew of the jet made by Jacuzzi that contained one of the
supposedly patentable features of the subject matter of
claim 1 of both the ’655 and ’656 patents; (3) the Model
548 spa was constructed by plaintiff himself, did not use
“fittings,” and was sold well over a year before filing any
of the applications; (4) he was aware of a spanner wrench
used for automobiles before developing his first wrench
prototype and that the aluminum wrench in public use was
more similar to that claimed in the ’449 patent than to
the automobile wrench; and (5) that the concrete extension
pipes commonly used in certain swimming pools were dis-
cardable in the same way as that claimed in the '449
patent. ;
Based on all of the above, the court found that the
information not disclosed was material. Mathis’ arguments
to the contrary do not approach showing this finding to
be clearly erroneous. There is no doubt an examiner would
have considered this information important. Indeed, the
evidence at trial was that this information bore heavily on
the validity of the claims, although that much need not
4a
be shown to prove materiality. The information need only
be important to an examiner faced with deciding whether
to allow the application to issue. See A.B. Dick Co. v.
Burroughs Corp., 798 F.2d 1392, 1398, 230 rset 849,
854 (Fed. Cir. 1986).
Given the materiality of the undisclosed information, the
court properly found that, at the least, Mathis and his
attorneys were grossly negligent and showed a reckless
disregard for the truth. Gross negligence on the part of
the patentee or his attorney is enough, although more was
shown here. See Orthopedic Equipment Co. v. All
Orthopedic Appliances, 707 F.2d 1376, 1384, 217 USPQ
1281, 1287 (Fed. Cir. 1983). This finding of intent cannot
be clearly erroneous given the sheer volume of information
not disclosed to the examiner, the fact that Mathis argued
the novelty of a claimed feature during prosecution which
he knew was disclosed by the Hayward jet, and Mathis’
failure to disclose other information he was intimately
familiar with. Furthermore, Mathis’ attempt to exonerate
himself and save his patents by placing the blame on his
now deceased attorney and by claiming ignorance is un-
availing. 37 CFR 1.56(a).
Having found the foregoing, the district court judge
properly brought her judicial discretion to bear and ap-
propriately concluded, as a matter of law, that Mathis and
his attorney engaged in inequitable conduct. See American
Hoist & Derrick v. Sowa & sons, 725 F.2d 1350, 1364,
220 USPQ 763, 773 (Fed. Cir.), cert. denied, 469 U.S. 821
(1984).
Attorney Fees
Based on the conclusion of inequitable conduct during
prosecution, the abuses of discovery by Mathis—specifically
failing to produce relevant documents—, and the fact that
Vico representatives gave inconsistent testimony about
their efforts to locate and produce documents, the court
wo tall: Neato trl tahidiodta
5a
was convinced that Mathis showed a reckless disregard for
the truth, found the case “exceptional” as provided in 35
USC 285, and exercised her discretion to award reasonable
attorney fees to each of the three defendants. Mathis has
not shown that the finding that this case is exceptional is
clearly erroneous or that the court abused its discretion
in awarding fees.
We do not, however, award attorney fees to appellees
for defending this appeal.
6a
UNITED STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT
Appeal No. 86-1181
CLEO D. MATHIS, an individual,
, Appellant,
Vv.
Hypro Air INDUSTRIES, INC., a corporation, and GERALD
MORELAND, an individual,
Appellees.
Appeal No. 86-1224
CLteo D. MAarTHIs, an individual and Vico PRopUCcTS
MANUFACTURING Co., INC., a corporation,
Appellants,
V.
Bi_t SPEARS, an individual, d.b.a. WATERWAY PLASTICS
and WATERWAY PLASTICS, INC., a corporation,
Appellees.
Appeal No. 86-1182
._CLeo D. MAaArTuis, an individual, and Vico PRODUCTS
MANUFACTURING Co., INC., a corporation,
Appellants,
Vv.
PHILIP E. CHALBERG and ROBERT WEYGAND, individuals,
and HYDRABATHS, a corporation,
Appellees.
_ ee ee
_
3
eneensitiatiliieliia
7a
Before Markey, Chief Judge, RICH, Circuit Judge, and
BALDWIN, Senior Circuit Judge.
ORDER
A petition for rehearing having been filed in this case,
UPON CONSIDERATION THEREOF, it is
ORDERED that the petition for rehearing be, and the
same hereby is, denied.
FOR THE COURT
/s/_ Francis X. Gindhart
Francis X. Gindhart, Clerk
3/11/87
Date
ec: Mr. Edward J. DaRin
Mr. James B. Bear
Mr. Leonard Tachner
Mr. Richard S. Koppel
8a
Excerpts from Appellants’ Motion to Strike Portions of
Appellees’ Brief and Supplemental Appendix in Support
of Appellants’ Attack on the Findings of Fact
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
APPEAL NO. 86-1181
CLEO D. MATHIS,
Appellant,
Vv.
Hypro AIR INDUSTRIES, INC., et al,
Appellees,
APPEAL NO. 86-1182
CLEO D. MATHIS e al,
Appellants,
Wa
PHILIP E. CHALBERG et al,
Appellees,
APPEAL NO. 86-1224
CLEO D. MATHIS et al,
Appellants,
v.
BILL SPEARS et al,
Appellees,
TNE
9a
FILED
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
OCT 31 1986
Supplemental Appendix
A Joint appendix was filed in this Court by the parties.
The contents of the Appendix are governed by Federal
Rule of Appellate Procedure 30(a) and this Court’s Rule
12. The Appellees have included in their Brief a 97-page
“Supplemental Appendix,” including annotated Findings of
Fact and Conclusions of Law, certain exhibits, and certain
pre-trial documents. Apparently, counsel for Appellees are
now dissatisfied with their preparation of the Findings of
Fact and Conclusions of Law and require further docu-
mentation to support them.
This Court’s Rule 12 clearly governs the contents of the
Appendix and delineates what should be excluded ‘‘other
than by leave or Order of this Court.”” No such leave or
Order has been sought by the Appellees.
The documents, such as the pre-trial Stipulations and
annotated Findings of Fact and conclusions of Law are in
the nature of Briefs and Memoranda, which are specifically
excluded by rule 12 of this Court. The pre-trial Stipulation
is in the nature of Admissions, which were apparently
merged into the Appellees’ Findings of Fact and Conclu-
sions of Law, and therefore would be redundant. These
items should be struck from the Supplemental Appendix
accompanying the appellees’ Brief and should not be con-
sidered by this Court.
In addition, ‘‘tab 2’ of said Supplemental Appendix re-
lates to a Schindler patent 3,693,194. the Schindler patent
was not relied on by the lower Court in her validity de-
10a
termination. In announcing her ruling on June 13, 1983,
the trial judge specifically excluded the Schindler patent
as a basis for making a Finding of Fact, as evidenced by
page 1320 from the Joint Appendix that is attached hereto
for the Court’s convenience. The lower Court considered
that there was a mistake in the Schindler patent, as evi-
denced by her attached remarks, and that is the reason
for not utilizing the Schindler patent as a basis for her
Findings of Fact. The Appellants’ witnesses testified that
the whirlpool jet, as disclosed in Fig. 4 of the Schindler
patent, was inoperative, and the Defendants’ counsel con-
ceded at trial that it was inoperative as disclosed. The
Schindler patent should be eliminated from consideration
on this Appeal as outside the lower court’s ruling.
ee ee te
lla
Excerpts from Appellees’ Opposition to Appellants’ Mo-
tion to Strike Portions of Appellees Brief and Supple-
mental Appendix Evidencing Appellees’ Admissions in
the Court of Appeals of the Incomplete Nature of the
Trial Court’s Findings of Fact and the Need for the
Omitted Stipulated Facts
UNITED STATES COURT OF APPEALS FOR THE
FEDERAL CIRCUIT
Appeal No. 86-1181
CLEO D. MATHIS,
Appellant,
Vv.
Hypro AIR INDUSTRIES, et al.,
Appellees.
Appeal No. 86-1182
CLEO D. MarTuis et al.,
Appellants,
Vv.
Puitip E. CHALBERG et al.,
Appellees.
12a
Appeal No. 86-1224
CLEO D. MATHIs et al.,
Appellants,
We
BILL SPEARS et al.,
Appellees.
s** *¢ &
B. SUPPLEMENTAL APPENDIX
1. Pre-Trial Stipulated Facts
A large number of facts which had been mutually stip-
ulated by the parties in the Pre-Trial conference Order
were included in the supplemental Appendix attached to
Appellees’ Brief. Appellants object to this on the grounds
that the Stipulated Facts are ‘‘in the nature of Briefs and
Memoranda”, “in the nature of Admissions’’, and redun-
dant over the Findings of Fact and Conclusions of Law.
This objection is totally incomprehensible. The whole
purpose of the Stipulated Facts was to simplify the trial
and to avoid the necessity for taking testimony in areas
where stipulations had been reached. the stipulated facts
are a basic part of the evidentiary record upon which the
trial court based its decision. In some cases the stipulated
facts may be even more pertinent than the oral testimony
given at trial; oral testimony given by one side can be
rebutted by testimony from the other side, whereas stip-
ulated facts by definition state the factual situation as
agreed upon by both sides.
The briefs by both sides included numerous references
to the transcripts of oral testimony, to show support in
the record for the assertions in the briefs. the Stipulated
Facts were included in the Supplemental Appendix for
exactly the same purpose. To exclude them would be to
a ee ee eee
13a
wipe out an important part of the factual record which
formed the basis for the decision below.
Briefs and memoranda are not permitted in the Appen-
dix without leave or order of this Court because they are
argumentative in nature and may not further a review of
the factual underpinnings for the decision being reviewed.
The Stipulated Facts clearly are not argumentative, since
they were agreed to by both sides of the litigation. This
Court cannot fully evaluate the trial court’s decision with-
out the benefit of the Stipulated Facts.
FILED
14a
UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
APPEAL NO. 86-1181
CLEO D. MATHIS,
Appellant
Vv.
Hypro AIR INDUSTRIES, INC., et al.
Appellees
APPEAL NO. 86-11821
CLEO D. MATHIS et 4,
Appellants
Wa
Puitip E. CHALBERG et al,
Appellees
APPEAL NO. 86-1224
CLEO D. MATHIS et al,
Appellants
Vv.
BILL SPEARS et al,
Appellees
U.S. COURT OF APPEALS FOR
THE FEDERAL CIRCUIT
NOV 5 1986
FRANCIS X. GINDHART
CLERK
15a
ORDER ON APPELLANTS’ MOTION FOR STRIKING
PAGES FROM APPELLEES’
BRIEF AND SUPPLEMENTARY APPENDIX
DENIED NOV 5 86
For the Court
/s/ Diane Frye, Chief Deputy Clerk
16a
Pre-Trial Stipulation of Facts Excerpted from Appellees’
Joint Responsive Brief
FILED
AUG 2 1982
UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA
Civil Action No. 80-1389-MRP (Px)
CLEO D. MATHIS, an individual,
Plaintiff,
vs.
Hypro AIR INDUSTRIES INC., a corporation, and GERALD
MORELAND, an individual
Defendants.
Civil Action No. 80-4481-MRP (Px)
CLEO D. MATHIS, an individual and Vico PrRopucTs
MANUFACTURING Co., INC. a corporation,
Plaintiffs,
- VS.
BILL SPEARS, an individual, d.b.a. WATERWAY PLASTICS,
WATERWAY PLASTICS, INC., a corporation, and B & S
PLastics, INC., a corporation,
Defendants.
ee a ee en ere ae
q
7
:
ON et eR
17a
Civil Action No. 81-1631MRP (Px)
CLEO D. MATHIS, an individual and Vico PRODUCTS
MANUFACTURING Co., INC., a corporation
Plaintiffs,
vs.
PHILIP E. CHALBERG and ROBERT WEYGAND individuals,
and HYDRABATHS, a corporation ,
, Defendants.
PRE-TRAIL CONFERENCE ORDER
V. the following facts are admitted and require no proof.
A. THE PARTIES
1. CLEO D. MATHIS, an individual, is a resident of
Hacienda Heights, California, and is the owner of the three
patents in suit that .ave been granted in his name as the
sole inventor.
2. VICO PRODUCTS MANUFACTURING CO., INC.,
is a California corporation having its principal place of
business in E] Monte, California.
3. The defendants are:
a. Civil Action 80-1389
1. HYDRO AIR INDUSTRIES, INC., is a corporation
having a place of business in Orange, California.
2. GERALD MORELAND, an individual, is a resident
of Garden Grove, California.
b. Civil Action No. 80-04481
1. BILL SPEARS, an individual, is a resident of Agoura,
California..
2. Prior to filing the present action, WATERWAY
PLASTICS, INC., was a corporation doing business in San
18a
Fernando, California, as “WATERWAY PLASTICS”.
WATERWAY PLASTICS, INC., is the predecessor of B
& S PLASTICS, INC., a corporation doing business in San
Fernando, California as “WATERWAY PLASTICS” and
continuing the business of WATERWAY PLASTICS, INC.
c. Civil Action No. 81-1631
1. PHILIP E. CHALBERG, an individual, is a resident
within the jurisdiction of this Court.
2. ROBERT WEYGAND, an individual, is a resident
within the jurisdiction of this Court.
3. HYDRABATHS is a corporation having a regular and
established place of business in Santa Ana, California.
4. the defendants and principals of HYDRABATHS,
PHILIP E. CHALBERG and ROBERT WEYGAND, are
ex-employees of VICO PRODUCTS MANUFACTURING
CO., INC.
5. In addition to the whirlpool jet products manufac-
tured by Waterway Plastics to the order of Hydro Air
Industries, Waterway Plastics manufactures and sells
whirlpool jets to the order of other customers. These prod-
ucts have been manufactured for HYDRO-DYNAMICS
BATH SYSTEMS CORP., PREMIER PUMP, G & G IN-
DUSTRIES, CONGER BROS., and ANZEN PRODUCTS.
B. PATENTS IN SUI7T
6. The patents in issue with respect to validity and in-
fringement are:
a. U.S. Patent No. 3,890,655, granted on June 24, 1975
to Cleo D. Mathis and entitled “Whirlpool Jet for Bath-
tubs”. The ‘655 patent was based on a U. S. Patent Ap-
plication bearing Serial No. 392,046 and filed on August
27, 1973. Cleo D. Mathis is still the owner of the entire
right, title and interest in said patent.
b. U. S. Patent No. 3,890,656, granted on June 24, 1975
to Cleo D. Mathis and entitled ‘Whirlpool Jet for Bath-
19a
tubs”. The ’656 patent was based on a U. S. Patent Ap-
plication bearing Serial No. 470,369, filed on May 16, 1974
as a continuation-in-part of application Serial No. 392,046,
which was filed on August 27, 1973 and issued as the ’655
patent. Cleo D. Mathis is stil] the owner of the entire
right, title and interest in said patent.
c. U. S. Patent 3,946,449, granted on March 30, 1976
to Cleo D. Mathis and entitled ‘Whirlpool Jet for Bath-
tubs’. The ’499 patent was based on a U. S. Patent Ap-
plication bearing Serial No. 563,795, filed March 31, 1975
as a continuation-in-part of applications bearing Serial Nos.
392,046 and 470,369, which were filed respectively on Au-
gust 27, 1973 and May 16, 1974, and issued respectively
as the 655 and ’656 patents. Cleo D. Mathis is still the
owner of the entire right, title and interest in said patent.
7. The claims in issue of the patents in suit are:
1. 3,890,655 patent
Claims 1, 2, 6 and 7
2. 3,890,656 patent
Claims 1-5
3. 3,946,449
Claims 1, 8, 9 and 10
8. Record of Cleo D. Mathis patents before the Patent
Office:
a. 655 PATENT
This earliest filed application was examined by the Pat-
ent Office and resulted in the rejection of all of the orig-
inally filed claims based on the teachings of the prior art.
The Patent Examiner cited eight prior art patents in sup-
port of his position.
In responding to the action from the Patent Office, Cleo
D. Mathis’ counsel cancelled all of the original claims and
submitted a new set of seven claims.
20a
Upon re-examination of the patent application, the Ex-
aminer considered all of the newly submitted claims al-
lowable and allowed them. These seven claims are identical
to the seven patent claims.
b. 656 PATENT
The patent application as filed included five original
claims. Examiner Artis handled this application as well as
the one for the ’655 patent and allowed all of the five
claims upon the initial examination. The Examiner cited
the same eight prior art patents in the record which he
cited in the ’655 patent. The five patent claims are iden-
tical to the originally filed claims.
c. "449 PATENT
The original application was filed with eleven claims,
and all of the claims were found allowable by Examiner
Artis upon initial examination. The Examiner cited the
same eight prior art patents which he cited in the '655
and ’656 patents, with the addition of Patent No. 3,672,532.
The eleven patent claims are identical to the originally
filed claims.
9. An additional patent in issue with respect to the en-
forceability of the above three patents is the design Patent
No. 244,462, granted on May 24, 1977 to Cleo D. Mathis
and entitled “Whirlpool Jet Nozzle for Bathtubs and the
Like’. The design patent was based on an application filed
on November 24, 1975, bearing Serial No. 634,496. This
patent was dedicated to the public on December 10, 1981.
C. MATHIS WORK ON VENTURIS
10. Cleo Mathis began development of his venturi jets
in April 1971.
11. Exhibit 207 is an aluminum jet which is a sample
of the first prototype of the Vico jet products. It was
made shortly after the first sale of jets in accordance with
Exhibit 206.
lis
;
)
:
2la
12. The prototype jet shown in Exhibit 210 was made
in 1971.
13. Six prototypes, in accordance with Exhibit 210, were
manufactured by Cleo Mathis.
14. Two prototypes were manufactured in accordance
with Exhibit 211, but were never actually mounted on
bathtubs.
15. Exhibit 211 was built by Whitey Williams, as was
a prototype shown in Exhibit 212.
16. Twelve prototypes, in accordance with Exhibit 212,
were made.
17. The prototype in accordance with Exhibit 213 was
built by Cleo Mathis himself.
18. The prototype shown in Exhibit 214 was the first
of the prototypes shown in Exhibit 205 in which water
and air could be plumbed to plural jets without fittings
except for the venturis and the pipe itself.
19. Exhibit 215 is an invoice showing the purchase of
a sheet of PVC from Ryerson Steel on November 30, 1973.
Exhibit 214 was made either from the sheet purchased
under Exhibit 215, or just prior thereto.
20. The prototype shown in Exhibit 214 was made prior
to January 30, 1974.
21. Prototypes manufactured prior to the prototype
shown in Exhibit 214 supplied air to the venturi in a
manner similar to that used in the Jacuzzi part shown in
Exhibit 209.
22. A prototype, in accordance with Exhibit 216, was
first made after the prototype shown in Exhibit 214.
23. The prototype shown in Exhibit 217 was made after
the prototype shown in Exhibit 216.
Det ciaiinm i
a
24. Exhibit 218 is a prototype made for the purpose of
injection molding, which prototype was provided to Water-
way Plastics.
25. Exhibit 218 was personally made on a drill press
by Cleo Mathis.
26. The prototype shown in Exhibit 242 was developed
after the prototype of Exhibit 207 and before the proto-
type of Exhibit 210.
27. Exhibit 210 was made by Cleo Mathis no later than
May 27, 19738.
28. The round bar stock used for making Exhibits 211,
212, and 242, was purchased on May 23, 1973.
29. Exhibit 214 was made no later than November 29,
1973.
30. Exhibit 219 was made by Cleo Mathis no later than
December 4, 1974.
31. Exhibit 220 was made no later than October 27,
1974.
32. Exhibit 248 evidences the purchase of brass bar to
build Exhibits 211, 212, and 242, which bar was received
on or about May 22, 1973.
33. At the time that Exhibit 221 was filed, the best
embodiment of the device was made of brass as opposed
to plastic, as indicated by the use of the phrase ‘‘soldering”’
in the specification.
34. Exhibits 235 and 236 are Polaroid photographs made
of a prototype unit at the Vico facility which includes brass
jets as shown in Exhibits 210, 211, and 212.
35. Exhibits 239 and 240 are Polaroid photographs of
prototypes at the Vico facility using prototype jets as
shown in Exhibit 213.
Ee BGR WS. eee) Ga ey
23a
36. Exhibits 237 and 238 are Polaroid photographs of
a prototype tub at the Vico facility, including venturis as
shown in Exhibit 214.
D. MATHIS WORK ON SPANNER WRENCH
37. When prototypes were manufactured in accordance
with Exhibit 211, Cleo Mathis also made an aluminum
wrench (shown in Exhibit 264) with two pins to fit into
the holes in the head of the jet of Exhibit 211 and a
square part for receiving a wrench for tightening the head.
38. With the aluminum wrench used by Cleo Mathis
during his early experimentation, the wrench could be first
used for hand-tightening of the jet head on the prototype
units, and then could be used with a wrench to tighten
the head further.
39. Exhibits 258 and 259 are wrenches manufactured
by or for Vico Products.
40. Exhibit 264 is a sketch drawn by Cleo Mathis, show-
ing an aluminum wrench which was used to tighten the
heads on early prototypes of the Mathis jet.
41. On Exhibit 264, the portion marked “hex” would
accept a standard socket wrench.
42. The portion labeled ‘‘hex’”’ in Exhibit 264 could be
rotated by hand.
43. The aluminum spanner wrench made by Cleo Mathis
which is shown in Exhibit 264 was used on the hydroth-
erapy bath unit submitted to Los Angeles City for approval
on October 12, 19738.
E. PRIOR ART
44. Whirlpool jets were known in the art for use with
bathtubs, therapy tanks swimming pools and the like be-
fore the inventions of Cleo D. Mathis. A whirlpool jet
generally receives water under pressure from a suitable
source and air from a suitable source, and mixes them to
24a
emit a combination of water and air into a water vessel
such as a bathtub, tank or pool. The pressurized air and
water mixture results from the well known venturi prin-
ciple, causing air to be drawn into the whirlpool jet and
mixed with the pressurized water and discharged from the
jet. The mixed water and air is emitted in an agitated
condition. The water and air mixture may be directed to
a particular portion of a bather’s body for hydrotherapy
purposes.
45. The venturi jet manufactured by Jacuzzi and ex-
emplified by Exhibit 209 is prior art to the patents in suit.
46. The Jacuzzi jet exemplified- by Exhibit 209 is at-
tached to the wall of a bathtub by placing the head through
the wall of a bathtub, placing a gasket on the back side,
and screwing a nut up onto the head to hold the head in
place. Thereafter, the venturi is screwed into the back of
the head to mount the venturi on the wall of the tub.
47. The mounting of the Jacuzzi venturi exemplified by
Exhibit 209 permitted an adjustment for varying bathtub
thicknesses.
48. In normal plastic pipe construction using a solvent,
the solvent attacks the surface area and fuses the two
surfaces together. The surfaces mix together in the man-
ner that you would mix paint, a different process from
gluing.
49. The gasket shown in Exhibit 223, the ’449 Patent,
is similar to the gasket on the Hayward Jet, Exhibit 241.
50. The Kane advertisement, comprising the last two
pages of Exhibit 287, was published in 1971.
51. The Kane advertisement is prior art to all of the
patents in suit, namely, the "655 patent, the '656 patent,
and the °449 patent.
52. The following are prior art to each of the patents
in suit:
Se
a a
25a
Ultra-Spa Model 548 as illustrated in DX-204, and DX-
204 itself
Jet illustrated in DX-206
DX-241
DX-281
DX-287 (Kane patent only)
DX-289 and Jet No. 10, Tee No. 7, and Model 23
illustrated therein
DX-291, 292, 293
DX-821, 322, 323
DX-829B, C (329A could not be located)
DX-330
DX-831A, B
DX-332
DX-888A, B, C, D
DX-334
DX-335
DX-336
DX-838
DX-339
DX-340
DX-341
DX-342
DX-343
DX-345
Jet illustrated in DX-346
26a
DX-350
DX-351
Spanner wrenches illustrated in DX-367
58. The following are prior art to Patent No. 3,946,449:
DX-341
Jets referred to in DX-388, Invoices 6576, 6736, 6846
54. Prior t 1971, Defendants’ Exhibits 291, 292, and
293 were ded together, by solvent cementing, for use
as a subassembly, and this subassembly is prior air to all
of the patents.
55. When the subassembly of Exhibits 291, 292, and
293 was installed in a gunited pool, using one technique
in common usage more than one year prior to the filing
of the patents in suit:
A. Exhibit 294 was glued to Exhibit 293 and was long
enough to extend from Exhibit 293 to a location within
the swimming pool.
B. The pool was gunited to form the pool wall.
C. The gunite, before curing, was scooped away around
Exhibit 294.
D. After the gunite had cured, Exhibit 294 was cut off
so that Exhibit 295 could be glued to Exhibit 294 with
the flange of Exhibit 295 flush with the ultimate plaster
wall.
E. The pool gunite wall was plastered, to fill in the
scooped out hole around Exhibit 294 and to finish the pool
wall flush with the flange on Exhibit 295.
56. When the subassembly of Exhibits 291, 292, and
293 was installed in a gunited pool, using a second tech-
nique in common usage more than one year prior to the
filing of the patents in suit:
ek aah a) OS
27a
A. Exhibit 294 was glued to Exhibit 293 and was long
enough to extend from Exhibit 293 to a location within
the swimming pool.
B. The pool was gunited to form the pool wall.
C. Exhibit 294 was cut off to be flush with the plaster
line of the pool.
D. The pool was plastered flush with the cut-off of Ex-
hibit 294.
57. DX-291 through 295 were in public use as an as-
sembled unit prior to 1972.
58. Exhibit 241 includes a removable orifice which can
be installed in either of two reversed positions. In one of
these two reversed positions, the jet orifice would stick
out further toward the tub wall than in the other position.
59. Exhibit 241 will function if the orifice is screwed
only partially into the jet. In this condition, the function
of the jet will not change, but the distance between the
orifice and the tub wall will change through approximately
one-half inch.
F. MATHIS KNOWLEDGE OF PRIOR ART, AND
STATE OF MIND AT TIME OF FILING PATENT
APPLICATIONS
60. At the time that Cleo Mathis developed the proto-
type as shown in Exhibit 211, he was familiar with auv-
tomobile parts which included a pair of holes similar to
those in the head of Exhibit 211 for receiving a spanner
wrench. This wrench looked like a pair of pliers with two
pins for insertion into the holes to tighten the part.
61. At the time that Cleo Mathis began the development
of his jets in 1971, he was aware that the Hayward unit
of the type illustrated by Exhibit 241 was available.
62. At the time of filing his patent application, Exhibit
260, Cleo Mathis was aware of holes, similar to the open-
28a
ings 30 on Figure 3 of the patent (Exhibit 221), for re-
ceiving a spanner wrench in other applications than
hydrotherapy jets.
63. Cleo Mathis is aware of the fact that a standard
installation technique for a main drain in a bathtub in-
volves the use of a clamping nut on the outside of the
bathtub and a flange on the inside of the bathtub which
clamp the main drain fitting on the bathtub wall, and that
faucets are usually attached to a bathtub wall in a similar
manner, all of which he knew at the time he filed his
patent application, Exhibit 260.
64. A Jacuzzi jet of which Cleo Mathis was aware at
the time of building his first prototype, Exhibit 207, used
a venturi to draw air into the water flow, and thus mixed
air and water and supplied air and water to the jet through
the use of tees, which permitted the interconnection of
three jets on a bathtub to common air and water supply
pipes.
65. Exhibits 208 and 209 fairly represent to Jacuzzi jets
known to Cleo Mathis in 1971 prior to his construction of
his initial prototype, Exhibit 207.
66. “A connection of multiple jets in a tub by using tees
and surrounding pipe, solvent cemented into the tees, was
known to Cleo Mathis in 1971.
67. The Hayward venturi, Exhibit 241, was purchased
by Cleo Mathis approximately six years ago and is identical
to the Hayward venturis which were available and known
to him when Cleo Mathis began working on his whirlpool
bath system in 1971.
68. At the time the patent application for Patent No.
3,890,655 was filed, Cleo Mathis was aware of Jacuzzi,
Hayward, and Master jets on the market at that time,
including the Hayward jet of the type identified as Exhibit
241.
29a
69. The Hayward jet, Exhibit 241, was installed using
slip socket tees for connection to through-waterlines and
through-airlines. ma
70. The Hayward jet, Exhibit 241, included a direction
adjustment eyeball fitting.
71. The Hayward jet, as shown in Exhibit 241, included
a nut threaded onto the head to clamp the bathtub wall
between the nut and head flange to hold the unit in place
on a bathtub.
72. The clamping nut in the Hayward jet, Exhibit 241,
had the capacity to adjust for different wall thicknesses.
73. The jets shown in Exhibit 321 were manufactured
prior to the filing of the first of Cleo Mathis’ jet patents,
and he acquired Exhibit 321 when he was working on his
jets.
74. Exhibit 322 shows a jet which was in existence at
the time that Cleo Mathis was working on his jet products,
and he was aware of its existence at that time.
75. Exhibit 323 is a brass venturi which Cleo Mathis
was aware of before he filed his patent applications and
which was manufactured by Pool Equipment. This equip-
ment includes a removable orifice.
76. In 1970, it was a common practice in installing the
water discharge pipe into a gunited swimming pool to
extend the pipe as much as a foot beyond the final inside
wall of the pool, then to gunite thc pool, and then cut the
water discharge pipe off to length at the ultimate plaster
line to avoid burying the discharge line within the gunite.
Cleo Mathis was aware of this fact before he filed the
patent application which resulted in Exhibit 223.
77. It was Cleo Mathis’ opinion at the time of filing the
applications which resulted in Design Patent No. 244,462
that the sale of large jets to Bill Warren, evidenced by
DX-401, would not have any effect on the design appli-
30a
cation because the equipment was not actually shipped
until February 1975.
G. VICO SALES AND PUBLIC USES
78. Exhibit 204 is a brochure regarding a Model 548
combination bathtub, whirlpool bath, shower and steam
room, manufactured by Vico Products, which brochure was
distributed to the public no later than April 1975.
79. The combinatién whirlpool bathtub and sauna con-
forming to Exhibit 204 was sold, as evidenced by Exhibit
203, to Bob Reussor Homes, Inc. on April 3, 1971.
80. Exhibit 206 is a one-sheet drawing prepared by Cleo
Mathis, showing the jet which was included with the sale
of Exhibit 204, evidenced by the invoice, Exhibit 203.
81. Tubing used for the 548 unit sold in 1971 was pur-
chased from McLaughlin Steel on December 30, 1970.
82. Exhibit 249 is an invoice from McLaughlin Industrial
for piping used to plumb the first 548 spa.
83. Exhibit 250 is a statement from Lee’s Plumbing
Company’s dated February 10, 1971, for the purchase of
copper tubing used in the construction of the 548 spa
which was obtained on or about February 10, 1971.
84. Exhibit 251 shows the shipment of the first 548 unit
to Bob Reussor Homes and the contract agreement for
that purchase.
85. The Model 548 combination sauna/spa was shown at
the 1971 National Home Builders’ Show.
86. Cleo Mathis and Vico sold venturi products to Dr.
Benson before receiving any venturis from Waterway.
87. The items invoiced on Exhibit 247 were shipped
prior to May 24, 1974.
88. The No. 15 jet from Vico was offered for sale more
than one year before the design patent application was
filed in the Patent Office.
3la
89. One-thousand-and-twenty No. 15 venturis were re-
ceived from Waterway Plastics by Vico Products on Oc-
tober 27, 1974.
90. The whirlpool jets listed in Exhibit 388 were actually
sold to Benson Whirljet on October 11, 1973, November
19, 1973, January 3, 1974, April 15, 1974, and June 24,
1974, as indicated on the invoices.
91. The jets sold to Dr. Benson on Exhibit 412 had
plastic heads, and were probably like Exhibits 213/or 214.
92. The No. 15 jet was offered for sale to Bill Warren
more than one year before the application for Design Pat-
ent No. 244,462 was filed.
93. Cleo Mathis received about six samples of the large
jets from Waterway prior to the October 1974 volume
shipment of large jets. He installed the large jets in a
demonstration tank right after he received them from
Waterway and after he received the demonstration tank.
94. A No. 15 jet was offered for sale and shipped to
Cal Quip more than one year before the application for
Design Patent No. 244,462 was filed.
H. OPERATION AND INTERPRETATION OF THE
PATENTS IN SUIT
95. In Exhibit 221, at column 3, line 4, the statement
regarding the sealing engagement tightness changing as
the outlet 16 is tightened is in error.
96. The plain meaning of the language in Claim 1 of
the ‘656 Patent is that it requires a plurality of jets.
97. the Vico No. 15 or “large” jet is covered by Design
Patent No. 244,462. ‘
98. As shown in Exhfbit 221, the sealing pressure on
the O-ring is generated by the diameter of the hole drilled
in the bathtub wall, and does not change when the outlet
16 is tightened.
32a
99. The wrench referred to at Column 2, beginning at
line 65, of Exhibit 221, is an aluminum wrench fabricated
by Cleo D. Mathis, a sketch of which is shown in Exhibit
264.
100. If an O-ring were installed to seal a jet in the
manner shown in Figure 2 of the ’656 Patent, the assembly
would leak.
101. At the time of filing of the 656 Patent in May of
1974, the actual jets installed by Vico Products placed the
O-ring in a different location than is shown in the '656
Patent because, as shown in the ‘656 Patent, the config-
uration would leak.
102. On either a thin-walled or a thick-walled tub, in
order to seal, the O-ring must be placed between the ven-
turi head and the outside face of the bathtub wall.
I. CONSTRUCTION, INSTALLATION AND OPERA-
TION OF VICO’S PRODUCTS
103. Aside from the manner of supplying water and air
to the jet, the jet shown in Exhibit 214 operates identically
to the Jacuzzi device shown in Exhibit 209.
104. Exhibit 218 does not contain any functional im-
provements, as compared to Exhibits 214 or 216.
105. As to Plaintiff's jet, Exhibit 65, when it is installed
in swimming pools and spas which are filled with water
all of the time, it makes no difference whether Exhibit 65
is installed with the air pipe on the top or the bottom.
106. Prior to the introduction of the Vico large jet, the
small Vico jets, Exhibit 220, were installed exclusively in
bathtubs.
107. Installers of Vico jets are instructed that, with re-
gard to the concrete extension, Exhibit 265, and the nozzle
extension, Exhibit 267, the nozzle extension 267 is to be
foreshortened only if more than three-quarters of an inch
33a
is cut from the concrete extension 265. This occurs in an
unknown number of instances with regard to norma ' Vico
installations.
108. There is no way of determining, through an in-
spection of Exhibit 267, whether the item will be cut off
after it is installed.
109. The use of the jet depicted in Exhibit 223, the ‘449
Patent, with a vertical air supply, is shown in Exhibit 274.
The use of such a vertical air supply pipe is determined
by the ultimate plumber or installer.
109. Exhibit 237 shows a pair of Vico jets mounted by
Vico at the back end of a tub, which direct water in a
non-horizontal, upwardly angled jet, with the angle being
approximately thirty degrees to the horizontal.
110. There are occasions in which Vico’s jets are
mounted on tubs in which the supply pipes are not hori-
zontal, as when a supply pipe extends between a higher
and a lower jet.
111. The Vico hydrotherapy jets will function if the jets
are turned completely upside down so that the water sup-
ply conduit is above the air supply conduit, and Cleo Mathis
is aware of installations of Vico jets in this configuration.
112. Cleo Mathis is aware of installations of his hy-
drotherapy jets in which the water gnd air supply pipes
are at thirty degrees from the horizontal, with the jet still
properly functioning.
113. Exhibits 265 and 266 are Vico Products concrete
extension and its associated surface fitting, respectively.
114. If the venturi is spaced from the ultimate gunited
pool wall by a greater distance than the length of the
concrete extension, Exhibit 265, a pipe is used to span
the distance between the venturi and the concrete exten-
sion, Exhibit 265.
34a
115. By examining Exhibit 265 before installation, it is
impossible to determine where the extension will be cut
off after installation, or whether it will be cut off at all
when installed.
116. When Exhibits PX-26, DX-267, and DX-265 are
assembled in the proper manner, and the assembly is in-
stalled in a gunited swimming pool in accordance with Vico
instructions, Exhibit 267 is foreshortened after foreshor-
tening of Exhibit 265 only if Exhibit 267 is less than two-
and-a-half inches from the face of Exhibit 265.
J. CONSTRUCTION AND OPERATION OF
DEFENDANTS’ PRODUCTS
117. The gaskets used for sealing in the accused infr-
inging devices is similar to the gasket used in the Hayward
device, which is Exhibit 241.
118. Plaintiffs’ Exhibit 48 is a wrench, having a gen-
erally triangular configuration, manufactured by defendant
Hydro Air Industries.
119. The wrench marked Plaintiffs’ Exhibit 48 does not
infringe, directly or indirectly, patent No. 3,946,449.
K. APPROVALS AND CERTIFICATIONS FOR VICO
PRODUCTS
120. Exhibit 245 is a letter dated July 7, 1971, from
Underwriters Laboratory to Vico Products in regard to
approval of a combination unit referred to as the 548.
121. Exhibit 246 is a letter from Underwriters Labo-
ratory dated November 21,1962, to Vico Products relating
to the 548 unit.
122. The jet which was mounted on the tub submitted
for city approval on October 12, 1973 was the prototype
shown in Exhibit 213.
123. The system submitted to Los Angeles City for ap-
proval on October 12, 1973 was a complete jetted bath
system.
35a
124. for the No. 10 jet, a complete hydrotherapy sys-
tem was submitted for Los Angeles City approval, but for
the No. 15 jet, only the jet itself was submitted.
L. CLEO MATHIS PERSONAL INFORMATION
125. The only formal education which Cleo Mathis has
had subsequent to high school, relating in any way to
whirlpool jets, was a two-week course in thermal plastics
given by Ryerson Steel Company in Chicago, Illinois, and
an international correspondence school course in air move-
ment.
126. Cleo Mathis has never taken any engineering
courses.
M. PATENT MARKING
127. The Vico patented devices have not been marked
with the statutory patent notice.
VI. The following facts, though stipulated, shall be without
prejudice to any evidentiary objection:
None.
36a
EDWARD J. DaRIN, INC.
Date: July 26, 1982 By /s/ Epwarp J. DaRIN
Edward J. DaRin
Attorneys for Plaintiffs
JAMES B. BEAR,
KNOBBE, MARTENS, OLSON,
HuBBARD & BEAR
RICHARD S. KOPPEL
KoppeL & HARRIS
LEONARD TACHNER
FISCHER, TACHNER & STRAUSS
By /s/ RicHARD S. KOPPEL
RICHARD S. KOPPEL
- Attorneys for Defendants
APPROVED AND SO ORDERED:
this 2nd day of August, 1982.
/s/ Mariana R. Pfaelzer
U.S. District Judge
37a
Excerpts from Opening Brief of Appellants Showing
How the Attack on the Trial Court’s Findings of Fact
and Conclusions of Law Were Raised and Preserved
6. Findings of Fact and Conclusions of Law (A. p. 1449-
1506)
Rule 52 of F.R.Civ.P. mandates that findings of fact
shall not be set aside unless ‘‘clearly erroneous.” Findings
that rest on an erroneous view of the law may be set
aside on that basis alone. Rule 52 does not apply to con-
clusions of law; Pullman-Standard v. Swint 456 U.S. 273,
287 (1982); W. L. Gore & Associates, Inc. v. Garlock, Inc.
721 F.2d 1540, 1547, 220 USPQ 303, 308 (Fed. Cir. 1983),
cert. denied 105 S. Ct. 172 (1984). In this case, the trial
judge erroneously adopted the defendants’ view of the ap-
plicable law in Conclusions of Law No. 1 (A. p. 1486-1487).
In addition at least Findings of Fact Nos. 5, 29, 32, 58,
60 and 74 also reveal an erroneous view of the law and
the application of the facts thereto.*
Conclusion of Law No. 1 licensed the Court to ignore
the current decisions of this Court since the lower Court
relied on other circuits. This erroneous view of the law is
in itself a proper basis for the remand of the case unless
the record permits only one resolution of the factual issues;
Pullman Standard, Supra, at page 292 of 456 U.S.
It is further submitted that in these appeals the Findings
of Fact should be set aside ‘since upon a review of the
entire evidence, this court can readily be left with a def-
inite and firm conviction that a mistake has been com-
‘mitted; United States v. United States Gypsum Co. 333
*Plaintiffs’ counsel continuously directed the tria] court’s attention
to this Court’s decisions and their application to the Facts of these
cases (A. p. 1429-1448, docket entries 203, 204, 207 and 208 in Civil
Action 1389 [not of record)).
38a
U.S. 364, 395, 396 (1948); ACS Hospital Systems, Inc. v.
Montefiore Hospital (Fed. Cir. 1984) 732 F.2d 1572, 221
USPQ 929, 933. A number of the Findings of Fact are
induced by an erroneous view of the law and/or combine
both facts and_law-and are for those reasons, as well, not
binding on this Court. In addition, some of the Findings
of Fact are not supported by the evidence and based on
an erroneous interpretation and application of the patent
statute, 35 USC. For example, Findings of Fact Nos. 8,
22, 32, 50, 57, and 58 are not supported by the evidence;
Findings Nos. 24, 26-29, 31, 33, 34, 36, 38, 42, 43, 48,
52, 53, 56 and 75 have been induced by an erroneous view
of the law; Findings Nos. 11, 14-16, 18, 19, and 25 are a
mixture of fact and law. The specific Findings of Fact will
be considered in more detail hereinafter in the consider-
ation of specific issues.
7. Validity of the Mathis Patents in Suit
A. Presumption of Validity—35 USC 282
The lower Court merely recited the burden of persuasion
with regard to the validity presumption in Conclusion of
Law Nos. 2-4. No consideration apparently was given to
the presumption as to the prior art considered by the
Patent Office and the relation of the cited and uncited
prior art in evaluating the burden of the defendants. The
trial judge also misconstrued her role. The burden was on
the defendants to show that prior art had not been con-
sidered by the Patent Office; Richdel, Inc. v. Sunspool
Corp. 714 F.2d 1573, 219 USPQ 8, 11 (Fed. Cir. 1983);
Solder Removal Co. et al v. U.S. International Trade Com-
mission et al 582 F.2d 628, 632-633, 199 USPQ 129, 133,
see notes 8, 9 and 10 (CCPA 1978). The trial judge mis-
construed her role as requiring her to decide whether she
considered the inventions patentable, in place of deciding
whether the patent’s challengers had carried their burden
of proving by clear and convincing evidence of facts com-
pelling a conclusion of patent invalidity; Panduit Corp. v.
39a
Dennison Mfg. Co. 774 F.2d 1082, 227 USPQ 337, 342,
346 (Fed. Cir. 1985). This is very apparent when the trial
Court ruled the Mathis design patent invalid and permitted
evidence of its invalidity after it was dedicated to the
public prior to trial; see Findings of Fact Nos. 5, 85-91
and each of the Judgments (A. p. 1507-1519).
Patents are born valid; 35 USC 282; Roper Corp. v.
Litton Systems, Inc. 757 F.2d 1266, 1270, 225 USPQ 345,
347 (Fed. Cir. 1985). Patent claims are the measure of a
patent grant; Coleco Industries, Inc. v. U.S. International
Trade Commission 573 F.2d 1247, 197 USPQ 472, 476
(CCPA 1978). Patent claims are to be read and construed
in light of the specification and the prosecution history of
the patent. Claims should be construed, if possible, as to
sustain their validity; ASC Hospital Systems, Inc. v. Mon-
tefiore Hospital 732 F.2d 1572, 221 USPQ 929, 933 (Fed.
Cir. 1984).
7-_* * &
(1) Public Use
The lower Court concluded that there was public use of
a Mathis designed “aluminum spanner wrench’’ (X-264)
more than one year prior to the filing date of the ‘449
patent; Conclusion of Law No. 16 (A. p. 1449-1506) and
therefore invalidates “the patent’? under 35 USC 102(b).
Finding No. 59 recites the differences between the wrench
of claim 1 and the one “publicly used.” On its face, Con-
clusion of Law No. 16 is in error, “assuming” there was
public use since the claimed material differs from the one
used.
All of the facts regarding the alleged “‘public use’”’ are
not in the Findings of Fact for evaluation. Mr. Mathis
clearly testified concerning these facts, and this Court can
evaluate them in view of the proper authorities (A. p. 1227,
line 2-p. 1228, line 22). The wrench (X-264) was used in
the Vico plant to install the Mathis prototype jets on a
40a
bathtub for submission to a testing lab for approval of the
system. The jetted tub was not sold and the sole wrench
available never left the Vico plant. The jetted tub was not
publicly available and the entire system was tested to de-
termine whether or not it met standards. The test was
not passed and Vico brought the jetted tub back to their
plant (A. p. 2292-2299, X-394). The jets were redesigned
in view of the failure of the test, resulting in the ‘656 jet
design. The lower Court concluded the above facts rep-
resented ‘‘commercial exploitation” in Conclusion No. 15.
The subject matter of the tests obviously had nothing
to do with the manner of mounting of the jets on the tub
or the specific character of the tool used. The only ‘“‘clue”’
was the spaced opening on the water outlet and the “‘pub-
lic’ activity regarding the jets was after the filing date
of the ’655 patent application. Mr. Mathis was still ex-
perimenting with his jets and the system until he devised
the system disclosed in the ’656 patent, filed in May, 1974.
The jet and spanner wrench were abandoned and rede-
signed by Mathis. The spanner tool, unlike the machines
in the precedents cited by the lower court, was not used
to produce a product that was sold so as to constitute a
public use. Plaintiffs submit there was no “public use’’ in
a fair evaluation of the facts; see In re Smith and Mc-
Laughlin 714 F.2d 1127, 218 USPQ 976, 283 (Fed. Cir.
1983); T. P. Laboratories, Inc. v. Professional Positioners,
Inc. 724 F.2d 965, 220 USPQ 577 (Fed. Cir. 1984).
** * &
10. Design Patent 244,462
The lower Court found the design patent invalid due to
fraud on the Patent Office in the three Judgments. Finding
No. 5 erroneously states that only infringement was no
longer in issue as a result of the dedication (A. p. 405)
but should have included validity as the defendants’ counsel
had earlier recognized (A. p. 1426, lines 7-13). Plaintiffs
submit that the dedication removed the issues of validity
pare
4la
and infringement from the Court’s jurisdiction; Chris-Craft
Industries v. Monsanto Co. 178 USPQ 199 (C.D. Cal. 1973);
W. L. Gore Associates v. Oak Materials 424 F. Supp. 700,
192 USPQ 687 (D.C. Del. 1976). Public policy favors vol-
untary dismissal of actions; Larchmont Engineering v. Tag-
genburg Ski Center 444 F.2d 440, 170 USPQ 241 (CA-2
1971).
After the dedication of the design patent in December,
1981, plaintiffs moved to dismiss the design patent from
the three complaints. The motion was granted but the
litigation re the design patent continued due to the im-
proper reservations by the Court. Apparently the Court
was impressed that a finding of fraud as to the design
patent would taint the three utility patents, based on the
defendants’ theory which was completely and erroneously
accepted by the lower Court (A. p. 1405, line 17-1407; p.
1408, line 24; p. 1413, line 24-p. 1414, line 20; p. 1388,
line 11-p. 1390, line 7). Plaintiffs’ counsel attempted to
show that this was an erroneous position during the pre-
trial hearings and again, after trial and before judgment,
counsel directed the lower Court’s attention to this Court’s
decision in SSIH Equipment S.A. v. U.S. International
Trade Commission 713 F.2d 746, 218 USPQ 678, 689, 690
(Fed. Cir. 1983) (A. p. 1344, lines 1-17). As in SSIH Equip-
ment, Supra, the design patent was applied for after the
’655 and ’656 patents issued and the ’449 patent issued
shortly after the design patent application was filed. None
of the utility patents are directed to the invention claimed
in the design patent, and there is no overlap in the claimed
inventions.* Conclusion of Law No. 46 and Finding No.
75 are completely in error as a result of ignoring the SSJH
decision. This action of the lower Court tainted the entire
proceedings regarding the utility patents in suit and se-
*All of the Mathis utility patents were considered by the design
Examiner.
42a
riously prejudiced the plaintiffs’ cases and led to the award
of attorneys’ fees.
11. Fraud and Other Inequitable Conduct
Inequitable conduct requires proof by clear and con-
vincing evidence of a threshold degree of materiality of
the nondisclosed or false information. It also requires proof
of a threshold intent, J. P. Stevens & Co. v. Lextex, Ltd.
747 F.2d 1553, 223-USPQ 1089, 1092 (Fed. Cir. 1984).
Findings Nos. 73 and 74 are not FACTS but Conclusions
of Law.
A. ’655—Findings Nos. 19-22, 77 and 78
These Findings involve the conclusion that the Hayward
jet is the same as the claimed subject matter—which it is
not. The lower court determined that counsel for the in-
ventor misrepresented to the Patent Office, based in her
remarks in Findings of Fact Nos. 19 and 21.
Mr. Mathis admitted prior knowledge of the Hayward
jet (A. p. 18, line 20-p. 23, line 13; p. 32, lines 3-11) but
that it was completely different (A. p. 20, lines 5-16).
Mathis knew of no jet commercially available that could
be installed and performed in the manner of his invention
(A. p. 28, lines 8-13). Mr. Mathis disclosed his models and
prior art to his patent counsel Comstock (A. p. 25, line
17-p. 27, line 21; p. 131, line 4-p.136, line 7). One of the
models was used to produce the drawings for the ‘655
patent application. Dr. Alperin testified to the obvious dif-
ferences between the Hayward and Mathis jets from a
technical standpoint. (A. p. 243, line 24-p. 246, line 16).
The Jacuzzi jet, Finding No. 78, was the equivalent of
Hayward.
Patent attorney Plante testified re Comstock’s remarks
in Findings Nos. 19 and 21 (A. p. 433, line 14-p. 435, line
10); the duty of an applicant to disclose prior art (A. p.
492, line 1-p. 494, line 6); the knowledge of Patent Ex-
aminers such as the Primary Examiner Artis who proc-
43a
essed the three Mathis patents. Mr. Plante considered the
Comstock arguments in view of the Hayward jet to be
legitimate arguments (A. p. 518, line 5-p. 523, line 5, not-
ing p. 522, lines 9-17 in particular). The same was true
of the Jacuzzi jet (A. p. 523, line 6-p. 524, line 14).
The present day Rules of Practice, Rule 56 (837 CFR
1.56) (amended on March 1, 1977) recites the duty to dis-
close and is incorporated in the oath or declaration. No
such statement appears in the Mathis oaths. Rule 56 can-
not be applied retroactively; Digital Equipment Corp. v.
Diamond 653 F.2d 701, 210 USPQ 521, note 5 on p. 530
and note 17 on p. 588 (CA-1, 1981). The Patent Office
does not intend to require an inventor to be skilled in
patent law, and in this case as Mathis was a novice in
patent law. The present Rule 1.56(b) recites the duty is
satisfied by the disclosure to an attorney responsible for
the preparation or prosecution of the application. Mr.
Mathis relied on Mr. Comstock’s judgment and in the pat-
ent applications, he referred to the prior art jets in general
terms. Mere evidence of simple negligence, oversight, or
an erroneous judgment made in good faith not to disclose
prior art is not sufficient to render a patent unenforceable;
Orthopedic Equipment Co. v. All Orthopedic Appliances
707 F.2d 1376, 217 USPQ 1281, 1286 (Fed. Cir. 1983).
The inventor satisfied his duty by disclosing the jet to
his counsel and the evidence of the inventor’s threshold
intent was not established per J. P. Stevens & Co., Supra.
Mr. Comstock’s judgment may have been erroneous but is
not sufficient to establish inequitable conduct; page 1092
of 223 USPQ of J. P. Stevens Co. citing Orthopedic Equip-
ment, Supra. Also note Reactive Metals and Alloys Corp.
v. ESM, Inc. 769 F.2d 1758, 226 USPQ 821, 825 (Fed.
Cir. 1985) re judgments attorneys have to make re filing
patent applications. The Hayward jet neither anticipates
nor renders obvious the subject matter of claim 1 of ’655,
and therefore the necessary threshold showing of mate-
riality has not been made; Laitram Corp. v. Cambridge
44a
Wire Cloth Co. (no Fed. cit. available) 228 USPQ 935, 937
(Fed. Cir. 1986).
Mr. Comstock’s arguments in Finding No. 21 are true,
including Hayward. Any finding equating Hayward and
Mathis claim 1 is erroneous as it is based on Mathis’ teach-
ings. The lower Court’s Conclusion of law No. 43 is based
on an erroneous understanding of the facts and law and
is reversible error. -
B. ’656—Findings Nos. 38-41, 44, 79-81
. Plaintiffs submit that the Findings regarding the lack
of disclosure of the use of T’s and other fittings is clearly
contrary to the Mathis patent specifications, as any one
skilled in the art can appreciate; note column 1, lines 23-
25, 42-48; column 3, lines 45-48. Patent specifications are
addressed to those skilled in the art, not laymen or judges.
The identity between the prior art and claim 1 referred
to in Finding No. 38 is completely erroneous as established
regarding the discussion of the ‘656 patent hereinabove.
Also the prior art is disclosed to those skilled in the art
in the Steimle reference of record; see J.P. Stevens & Co.,
Supra, page 1092 of 223 USPQ re cumulative material.
Mathis and his counsel did not disclose or suggest the prior
art was identical to the claimed invention because it is not
true.
The Finding re ‘‘Model 548 Ultra Spa” can also readily
be disposed of as it is not relevant to the claimed invention
and is duplicative of the prior art, including the Agnellino
patent of record, X-177 (A. p. 1807-1810). It is incredible,
including to the inventor Mathis, that said Model 548 jet
had any relevance to his patents (A. p. 79, line 18-p. 80,
line 10; p. 218, line 23 p. 221, line 4). It was discarded
by Mathis as of no value. Dr. Alperin saw no relationship
to what is in the Mathis patents (A. p. 262, lines 1-21)
and that the Agnellino used pipes as basic jet structures
(A. p. 262, line 22-p. 264, line 1). The statement of fact
in Conclusion of Law No. 43 is erroneous, the materiality
45a
of the prior art is clearly open to dispute—it is not relevant
and need not be disclosed to any greater extent that it
was, and no fraud was established under any rules. This
is reversible legal error.
C. ’449—Findings Nos. 70, 82-84
(1) Claim 1
The inequitable conduct was based on the “public use’”’
of an aluminum wrench only. It is obvious that if there
was no public use, there was no need to disclose anything
to the Patent Office. Based on the above arguments there
was no public use or fraud.
The patent Examiner obviously was knowledgeable as
to spanner wrenches in general. No claim was ever made
in the Mathis application to a spanner wrench per se. The
449 patent claim 1 was allowed by the Patent Office in
the form originally filed. The inference that can readily
be drawn from the claim is that the inventor and his
counsel considered spanner wrenches per se to be old in
the art and only claimed as novel a very specific design
in a very specific combination. No evidence was produced
that the specifically claimed wrench was used or sold with
the claimed jet structure. Conclusion of Law No. 43 is not
based on the evidence as the commercialization of the jets
per se prior to the ’449 filing was after the ’655 filing
and was legally proper. No fraud was established as to
claim 1 of ’449.
(2) Claim 10
The lower Court found in Finding No. 70 the inventor
should have disclosed his knowledge of the use of exten-
sions on jets for building jets into concrete walls. It should
be evident that any Primary Examiner would have been
aware of extensions for use with jets or any other article.
The very specific combination defined by claim 10, taken
as a whole, was not known prior to the Mathis invention
and is not disclosed in the prior art since it comprehends
46a
more than merely an extension. It was not established by
clear and convincing evidence that the Examiner would
not have allowed claim 10 if he had known of the use of
a concrete extension as disclosed by Kane. Plaintiffs sub-
mit the finding of fraud by the lower Court re claim 10
was erroneous.
D. Design Patent 244,462 Findings Nos. 85-92
Judge Markey’s comments in E. J. DuPont de Nemours
& Co. v. Berkley & Co., Inc. 620 F.2d 1247,205 USPQ 1,
23 (CA-8, 1980) fit this case perfectly--the defendants tried
the inventor personally rather than the patents in suit.
This is brought home forcibly regarding the actions taken
and approved by the lower Court in permitting an “army”
of document reviewers to attack the plaintiffs’ business
and files to satisfy the defendants’ “‘suspicions.’”’ This was
permitted on the basis of lack of understanding of the law
(A. p. 1408, line 1-p. 1414, line 25). .
A secret motion was filed to satisfy the suspicions of
the defendants’ counsel (A. p. 1379-1380). The defendants,
after trial, clearly stated that their suspicions were based
on “improper’’ answers to Interrogatories that did not
identify sales “‘within” one year of the filing date of the
design patent (A. p. 1334, line 10-p. 1335, line 24). The
Interrogatory was poorly drafted and lead to the confusion
in responding since it requested activities prior to the No-
vember 24, 1975, filing date of the design patent—not prior
to the one year grace period before the filing date. The
activities one year prior were of no legal significance as
to the design patent and certainly not of the utility patents
as they were all filed prior thereto (A. p. 2085-2158). The
court granted the request to inspect documents of the
plaintiffs and in the same day Vico was overrun and over-
whelmed with people, remarks and threats of contempt.
This resulted in the disruption of the business and the
need for clarification of the Order (A. p. 1405-1414, 1417-
1419, p. 1387-1400; p. 940, line 8-p. 941, line 12). At the
47a
hearing the Court was advised, prior to the dedication,
that the design patent would be withdrawn from the lit-
igation (A. p.1388, line 3-p. 1390, line 8). These facts par-
allel Reactive Metals and Alloys Corp. v. ESM, Inc. 769
F.2d 1758, 226 USPQ 821, 824, 825 (Fed. Cir. 1985) re
disclosing sales and use activities during the one year grace
period.
The plaintiffs lacked (1) an understanding of the legal
significance of an “offer for sale’’ under the patent stat-
utes (A. p. 938, lines 9-18) and (2) proper patent advice
(A. p. 52, line 11-p. 53, line 5; p. 927, lines 1-19; p. 928,
lines 4-19; p. 931, line 21-p. 932, line 2). The inventor
lacked knowledge of the “pick up” of a jet (A. p. 106,
line 15-p. 108, line 3; p. 198, line 8-p. 204; p. 207, line 9-
p. 208, line 24; p. 221, lines 5-18; p. 930, line 3-p. 955,
line 10). There was no intent to deceive and the patent
was dedicated as soon as possible.
The defendants never discussed their ‘“‘suspicions’’ with
plaintiffs’ counsel but filed their secret documents, and
thus the evaluation of the facts in a “real world” sense
was obscured.
Every admission of Mathis was called fraud. Digital
Equipment Corp. v. Diamond 653 F.2d 701, 210 USPQ
521, 538 (CA-1, 1981) discusses relevancy of nondisclosed
information and, as was true of Mr. Mathis, the inventor
“did not promise the invention was not prima facie on
sale’ when he executed the oath; page 539 of 210 USPQ.
48a
Excerpt from Appellants’ Reply Brief Illustrating
Appellees’ Inability to Substantiate and Abandonment
of the Basis for the Trial Court’s Finding of Fact No.
43 re Claim 2 of the Mathis ‘656 Patent
Pivotal Issue on Appeal
The pivotal issue on appeal then, is as stated by the
Appellants as Issue No. 1, and is found on page 1 of the
Appellants’ Brief. Briefly, this issue is directed to whether
the Findings of Fact and conclusions of Law are based
on an erroneous view of the law and/or are “clearly er-
roneous” within the meaning of Rule 52 of the Federal
Rules of Civil Procedure. The resolution of this issue also
is important to the resolution of whether the defendants
have met their burden under 35 USC 282 as defined by
this Court.
Attention is respectfully directed to a decision authored
by Judge Rich published since the filing of the Appellants’
Brief that clearly sets out the metes and bounds for con-
sideration of the review under Rule 52(a), Federal Rules
of Civil Procedure; Hybritech Inc. v. Monoclonal Antibod-
ies, Inc. 231 USPQ 81 (CAFC Sept. 19, 1986). Attention
is specifically directed to pages 86 and 87 of 231 USPQ
concerning the review under Rule 52(a) as it applies to
the Findings of Fact and Conclusions of Law in this
Appeal. Appellants are in this Court because they are of
the firm opinion that the Findings of Fact and inferences
drawn by the trial Court and her Conclusions of Law fall
within the meaning of “‘clearly erroneous” re Rule 52(a)
of Federal Rules of Civil] Procedure.
Appellants submit that the Appellees’ Brief is an ex-
cellent vehicle to point up the deficiencies in the lower
Court’s Findings of Fact and Conclusions of Law (prepared
by the defendants’ counsel and adopted virtually verbatim
by the lower Court after a three-year delay). The Brief is
an attempt to “fill in the blanks’ concerning the facts and
law that the defendants’ counsel has fostered onto the
49a
lower Court. Appellants submit, once again, that in re-
viewing the record in this case that this Court can be
definitely left with the firm conviction that a mistake has
been committed which is the fundamental basis for re-
versing the lower Court.
As Judge Rich indicated-in Hybritech, Supra, Rule 52
is to provide Appellate Courts with the lower Court’s in-
sights into the case. The only benefit that the Appellants
or the Appellate Court has of the lower Court’s insight
of the case is her brief remarks concerning the Parr pat-
ent, the tests of the “replica’’ of the Parr injector, and
the testimony of Attorney Jessup. (The remainder is in
essence the work product of the counsel of the Appellees.)
The testimony of Mr. Jessup at the trial and the objection
of Appellants’ counsel thereto from day one, are included
as an Addendum hereto for this Court’s convenience, in
resolving this pivotal issue.
Presumption of Validity - 35 USC 282
Although the lower Court in her Conclusion of Law has
given lip service to the presumption of validity under 35
USC 282, it is not clear that the Defendants’/Appellees’
burden of establishing invalidity by clear and convincing
evidence was ever fully appreciated by the lower court and
that the applicable rules of law to the facts were fully
appreciated. The Conclusions of Law concerning the pre-
sumption, namely, Conclusions 2, 3, and 4 were read with
the erroneous view of the law in Conclusion of law 1 and
would lead one to believe that there was a lack of un-
derstanding of the proper, applicable law to the facts of
this case. Appellants submit that there was no clear and
convincing evidence to support all of the Findings of in-
validity either under 35 USC 102, 103 or 112.
** * &
Installation of Mathis Jet
With regard to the specific design of the Mathis’ jet,
such as found in the ’655, 656 and the ’449 patents, the
50a
ability to mount the jet, the commercial embodiment of
which is found in Fig. 2 of the ’656 patent, on one side
only is evidenced by the use of the spanner wrench holes
in the water outlet of the Mathis’ structure. In fact, there
is no prior art that suggests a whirlpool jet that is per-
mitted to be installed from one side of the tub. All of the
known prior art whirlpool jets require access to both sides
of the wall, including the Parr et al patent and the Hay-
ward and Jacuzzi jets. In an aquarium, as in Parr, the
large “‘diffuser’”’ in the inside of the fish tank allows grip-
ping of the diffuser for mounting it on the aquarium wall.
When a substantially flush water outlet is utilized with the
housing designed by Mr. Mathis, in accordance with claim
1 of the ’655 patent, and is mounted from the inside of
a tub only, there is no gripping surface and the use of a
pair of spanner holes for a spanner wrench to engage the
water outlet is nowhere suggested or hinted at in the prior
art. This is true for the simple reason that there is no
prior art structure that allows the jet to be installed from
one side only, as Mr. Mathis designed. There was no need
for spanner wrench holes or spanner wrenches in the
whirlpool jets of the prior art for mounting the water
outlet when you have access to both sides of a wall to
which the jet is to be mounted.
(c) Claim 1 of ’449 - Public Use
Appellants submit there is no issue that the 449 patent
is a continuation-in-part based on the disclosures in the
’655 and ’656 patents. The differences in the position of
the Appellants and the Appellees (although not articulated
by the Appellees) is concerning the issue of a public sale
based on the sales of the appellants to Benson Whirlpool
Jet. There is no evidence that a spanner wrench was sold
by the Appellants along with the whirlpool jets sold to
Benson. At the time of the Benson sale, the ’655 patent
application and the ’656 patent application were on file.
The patent applications, then, permitted sales after their
filing dates without any legal significance concerning the
5la
statutory bars of prior sales under 35 USC 102. There is
no evidence that a spanner wrench was sold in combination
with these whirlpool jets and, therefore, the basis for the
public sale is in error, irrespective of the dates of sales
of whirlpool jets. Any other approach would prevent an
inventor from making sales of his devices within the one-
year grace period and after he has covered the subject
matter of a sale in a patent application on file with the
U.S. Patent Office because his inventions require a spanner
wrench for installation that is not specifically disclosed in
his patent application, and therefore is contrary to the
fundamental rationale of the U.S. patent laws. It is sub-
mitted that it is illogical to assume that a spanner wrench
as covered by claim 1 of the 449 patent was necessary
to have been supplied by the inventor and contrary to
defendants’ burden of proof. It is further submitted that
to destroy the Mathis patent based on such a weak reed,
based on an infringer’s speculation, is clearly contrary to
the rules of evidence requiring clear and convincing evi-
dence of prior sales of the subject matter of a patent claim.
The claim specifically covers a whirlpool jet having a
water outlet with a pair of spaced openings in combination
with a specific design of a spanner wrench to fit within
the openings on the water outlet to facilitate the mounting
of the jet from only one side of the tub wall. No evidence
of a prior sale of such a combination was ever presented
in the lower Court.
Abandonment of Law of Gravity as Prior Art
In referring to the Appellees’ Brief on page 32 con-
cerning claim 2 of the ’656 patent, it should not go un-
noticed that the Appellees who provided the lower court
the Finding of Fact establishing the law of gravity as prior
art with respect to this claimed subject matter have now
abandoned this position. This is a clear admission that the
Findings of Fact and the Conclusions of Law based thereon
concerning the subject matter of claim 2 is clearly erro-
52a
neous and is not supported by the trial Court’s Findings
of Fact and Conclusions of Law and amounts to reversible
ERROR. In fact, the Appellees are now submitting in their
Brief an entirely new defense, again, without any evidence
to support it, namely that the subject matter was not
invented by Mr. Mathis. Not only does this establish, as
a minimum, that claim 2, but the claims dependent thereon,
namely, claims 3 through 5 of the ’656 patent, are all
clearly valid and not invalid as found by the trial Court
as there is no prior art as admitted in the Appellees’ Brief.
Alternate Grounds of Invalidity
The Appellees apparently are presenting arguments to
show that, irrespective of the erroneous position of the
lower Court under 35 USC 102, the claims may be invalid
under 103.* It should not be overlooked that the evaluation
of this case involves the evaluation of the “exceptional”
aspect of 35 USC 285 concerning attorneys’ fees. To admit
no anticipation or watér down the defense under 35 USC
102 is very significant concerning the evaluation of the
award of attorneys’ fees and should not be overlooked by
this Court. The invalidity on the basis of 35 USC 103 is
a significantly different position than under 102 and should
be understood to negate any award of attorneys’ fees in
that it does not render the case exceptional.
In the defendants’ eagerness to establish bad faith on
behalf of Mr. Mathis and all of his witnesses and his
counsel, the Appellees’ counsel, as the lower court has
done, have carefully avoided coming to grips with this
Court’s decision in SSIH Equipment S.A. v. U.S. Inter-
national Trade Commission 713 F.2d 746, 218 USPQ 678,
689, 690 (Fed. Cir. 1983) as noted on page 52 of the
Appellants’ Opening Brief. This establishes the lack of re-
lationship between the patents and the erroneous position
of the lower court during the pretrial hearings and again
*See note 2 on page 10 of Appellees’ Brief.
53a
after trial and before judgment, as well as failing to rec-
ognize this Court’s decisions, as the lower court was prone
to do. None of the utility patents is directed to the in-
vention claimed in the design patent, and there is no over-
lap in the claimed inventions. Accordingly, this decision
distinguishes the rationale of the cases cited by the lower
court and the Appellees in their responsive Brief. This is
a clear error of law that is reversible.
54a
FINDINGS OF FACT AND CONCLUSIONS OF LAW
OF THE DISTRICT COURT FOR THE CENTRAL
DISTRICT OF CALIFORNIA
CASE NO. CV 80-1389 MRP
CLEO D.-MATHIS, an individual,
Plaintiff,
Hypro AIR INDUSTRIES, INC., a corporation, and GERALD
MORELAND, an individual,
. Defendants.
CASE NO. CV 80-4481 MRP
CLEO D. MATHIS, an individual, and Vico PrRopUucTs
MANUFACTURING Co., INC., a corporation,
Plaintiffs,
¥.
BILL SPEARS, an individual, d/b/a WATERWAY PLASTICS and
WaTERWAY PLASTICS, INC., a corporation,
Defendants.
CASE NO. CV 81-1631 MRP
CLEO D. MATHIS, an individual, and Vico Propucts
MANUFACTURING Co., INC., a corporation,
Plaintiffs,
v.
PHILIP E. CHALBERG and ROBERT WEYGAND, individuals,
55a
and HYDRABATHS, a corporation,
Defendants.
Filed
FEB 20 1986
FINDINGS OF FACT
1. These are three actions brought by the plaintiff, Cleo
D. Mathis (‘‘Mathis’’) charging defendants Hydro Air In-
dustries, Inc. (““HAI’’), and its president, Gerald W. Mo-
reland; Hydrabaths, a corporation (“‘Hydra’’), and its
president, Philip E. Chalberg, and its general manager,
Robert Weygand; and Waterway Plastics, Inc. (‘“‘Water-
way’’), its successor, B&S Plastics, Inc., and its president,
Bill Spears, with infringement of three utility patents, Nos.
3,890,655, 3,890,656, and 3,946,449, each of which is en-
titled ‘‘Whirlpool Jet For bathtubs’’. Vico Products Man-
ufacturing Co., Inc. (‘Vico’) was named as an additional
plaintiff with respect to the actions against defendants
Hydra and Waterway.
2. The suit against defendant HAI was consolidated for
trail with suits charging defendants Waterway and Hydra
with patent infringement, since all of these suits involve
common issues relating to the validity and infringement
of the 655, ’656, and ’449 utility patents. These defendants
are referred to collectively herein as ‘‘the defendants’.
3. The defendants have denied infringement and patent
validity, and have counterclaimed for a declaration of non-
infringement and patent invalidity. Both plaintiffs and
defendants seek a declaration that the case is exceptional
under 35 U.S.C. § 285 and that they are entitled to an
award of attorneys’ fees. Charges of unfair competition
against Waterway, Hydra and their principals have pre-
viously been dismissed, while the defendants’ claims of
patent misuse and antitrust violations have been bifurcated
for later trial.
56a
4. Although Mathis only developed a single jet struc-
ture, which he manufactured in a large and a smali ver-
sion, he added features to the jet over a period of time.
Thus, the ’656 and ’449 patents are “‘continuation-in-part”’
applications, incorporating the disclosure of the ’655 pat-
ent.
5. The complaints, as originally filed, also alleged in-
fringement of a fourth patent, namely Design Patent No.
D-244,462 (‘Design Patent”) (Exhibit 224-224A). Infringe-
ment of this Design Patent is no longer an issue here
since defendants, during discovery, examined Vico’s files
and found documents evidencing sales of the jet which is
the subject of the Design Patent, which sales took place
more than one year prior to November 24, 1975, the filing
date of the Design Patent application. Upon learning this,
plaintiff dedicated the Design Patent to the public by filing
appropriate papers with the Patent and Trademark Office,
and brought a motion to amend his complaints to withdraw
the Design Patent as an issue here. The motion was
granted on condition that the Design Patent, although ded-
icated to the public, continue to be relevant to the present
suits, insofar as it pertains to the issue of attorneys’ fees,
and to the issue of the enforceability of the three utility
patents, 655, 656, and 449.
6. the patented water jets and the allegedly infringing
jets sold by defendants are of the type commonly employed
in spas or in hydrotherapy “‘jacuzzi-type” bathtubs. These
jets generate turbulence in the water by mixing water and
air and discharging the mixture at a relatively high ve-
locity.
7. In general, all water jets, including those in common
use before those which are the subject of the patents in
suit, include a water supply pipe, @n air supply pipe, a
water nozzle, a mixing chamber, and a water outlet (dis-
charge port). Water is supplied under pressure through
the water supply pipe to the water nozzle. The water noz-
57a
zle discharges the water into the mixing chamber and out
of the outlet at a relatively high velocity. As the water
travels through the mixing chamber, it creates a suction
so that air is drawn into the mixing chamber through the
air supply pipe for mixing with the water prior to dis-
charge through the water outlet. The presence of the as-
pirated air in the water discharge adds to the turbulence
created in the tub.
8. The plaintiff does not claim to have invented this
‘Sacuzzi-type” structure, but claims to have invented a
structural arrangement of the parts of the jet to facilitate
installation. The defendants claim that these structural de-
tails were well known prior to the plaintiff's alleged in-
vention.
9. For each of the three patents in suit, the specific
claims at issue here are:
655 Patent
Claim No. 1, 2, 6, 7
656 Patent
Claim No. 1, 2, 3, 4, 5
"499 Patent
Claim No. 1, 8, 9, 10
THE ’655 PATENT
10. The ’655 patent defines a jet which is mounted on
a bathtub without external fasteners by sandwiching the
bathtub wall between the jet housing and the water outlet.
All of the claims of the patent further-require that the
water outlet have an annular groove for mounting an O-
ring. This O-ring is defined as sealing the jet to the interior
periphery of the hole formed in the wall of the bathtub,
through which the water outlet is inserted.
11. With the exception of the O-ring for sealing between
the jet and the bathtub, and the groove for this O-ring,
58a
the prior art Parr patent No. 1,526,179 discloses a jet
having all the elements of Claim 1 in precisely the form
and arrangement defined by Claim 1. Although this patent
shows the jet being utilized in an aquarium tank, the jet
functions in the same manner as the jets in issue, directing
a mixture of air and water into the tank, creating what
plaintiff refers to as a “venturi effect”, to agitate the
water in the tank. Since the Parr patent deals with a
device for agitating liquids, those working in the hydroth-
erapy jet industry would view the teachings of Parr with
interest if they were seeking a better mounting arrange-
ment for a jet. Thus, Parr is analogous art.
12. Mathis testified that he had conducted a test to
simulate the operation of the Parr device to determine
whether the device shown in the Parr patent could operate
as a hydrotherapy jet. The device used in this test was
one of plaintiff's own jets, upon which he had placed an
extension tube of the type shown in the ’449 patent, to
provide an extended water outlet. The test was conducted
at a water pressure which was substantially lower than
that which plaintiff used in operating his own hydrotherapy
jets.
13. Although Mathis claims that the Parr device is in-
capable of operating as a hydrotherapy jet, the Court finds
that it is capable of functioning as a hydrotherapy jet.
Defendants’ expert, Warren Jessup, conducted a series of
tests in which a working replica of the Parr device was
mounted to a water tank and connected to a water supply
at a pressure slightly less than the water pressure at which
plaintiffs’ jets operated. The Parr replica was operated
under various conditions, and displayed an ability to as-
pirate air and provide a hydrotherapy stream of air and
water on a scale comparable to the Mathis jets. A video-
tape of Mr. Jessup conducting the tests was introduced,
and a portion of the test was repeated in open court. The
tests and Mr. Jessup’s testimony were credible and the
59a
testimony of Mathis and his expert witness on this issue
was not.
14. The Parr patent anticipates the first principal fea-
ture defined by Claim 1 of the ’655 patent, namely, mount-
ing the jet without external fasteners by sandwiching the
tub wall between the jet housing and the water outlet.
15. The sandwiching feature of claim 1 is also disclosed
by a prior art Hayward Manufacturing Company jet (Ex-
hibit 241). This Hayward jet sandwiches the tub wall be-
tween the water outlet and the flanged nut, rather than
between the water outlet and the jet body. However, it
would be obvious to one of ordinary skill in the art to
modify the Hayward jet in the manner defined by Claim
1. Further, if Mathis’ contention is accepted that the An-
zen jet (Exhibit 307) infringes when used with a fastening
nut, such as that of Hayward, then the Hayward jet is an
anticipation of the sandwiching feature of Claim 1.
16. The second principal feature of this claim is an O-
ring, seated in a specially-made groove located in the water
outlet, and sealing to the interior periphery of the hole in
the bathtub wall. Mathis has consistently maintained that
this element should be broadly interpreted to cover any
type of seal, such as a flat washer or silicone. Under this
definition, the prior art parr patent includes structures
equivalent to the O-ring and groove. Thus, Parr is an
anticipation of Claim 1 of the ’655 patent; it includes each
and every claim element in precisely the arrangement re-
quired by the claim.
17. Although the Parr patent appears to show a flat
washer for sealing the water outlet to the interior wall of
the tub or tank, the washer is not described anywhere in
the Parr patent specification. However, the prior art Hay-
ward Manufacturing Company jet (Exhibit 241) clearly
shows a flat washer for sealing a jet to a bathtub.
18. If a narrower, more limited definition of the O-Ring
and groove is applied, the claim is still obvious. The Parr
60a
patent includes each and every element of the claim except
the O-ring and its groove. O-rings, however, are well known
and commonly used in the plumbing trade to seal the
surface of a rotatable member to the surface of a housing.
For example, the rotatable handles on water faucets are
commonly sealed to the faucet housing by use of O-rings.
Rotatable water spigots, of the type commonly found on
kitchen sinks, utilize O-rings to seal the spigot to the fau-
cet housing. Moreover, the use of O-rings to seal mutually
rotatable surfaces in hydrotherapy jets is disclosed in prior
art Nash patent No. 3,391,870 (Exhibit 436). In virtually
every use of an O-ring, a groove is provided to locate the
O-ring. Use of an O-ring and its associated groove for the
purpose for which it was designed is not invention, but
merely an obvious expedient, as would be expected from
an application of the ordinary skills of those working in
the art.
19. A review of the prosecution history (‘‘file wrapper’’)
of the 655 patent before the Patent Office indicates that
plaintiff breached his duty of candor to the Patent Office
during the prosecution of this patent. In response to the
Examiner’s rejection of all of the originally filed claims,
plaintiff cancelled these claims and substituted new ones.
The new independent claim was identical to the cancelled
independent claim, except that it added additional struc-
tural details regarding the “sandwiching’”’ feature and
added the ‘“O-ring/groove’’ features discussed above.
Plaintiff distinguished the new Claim 1 from the prior art
cited by the Examiner by making the following arguments:
Applicant’s new independent claim is drawn
particularly to applicant’s novel structure in which
the water outlet has an annular radial flange hav-
ing an inner surface abutting against the inside
of the bathtub wall. ... The water outlet has an
annular groove adjacent to the flange, with a
resilient O-ring bushing mounted in the groove.
[Upon rotational tightening of the water outlet
6la
with respect to the housing, the bathtub wall is
held between the flange and the housing, with
the O-ring bushing making sealing engagement
with the inner edge surface of a circular opening
through which the water outlet extends.
It will be noted that only a circular opening
need be cut in the wall of the bathtub and no
fastening members are connected to the bath-
a
This inventive concept and structure are no-
where found in the references cited by the Ex-
aminer, in all of which screws and similar
fastening devices extend into the wall of the
bathtub... .
20. Plaintiff could not make these arguments relating
to mounting the jet on the bathtub wall without extraneous
fastening devices such as screws and similar fasteners, in
light of the prior art Hayward jet. Plaintiff was fully aware
of the Hayward jet and its lack of screws or similar fas-
teners prior to filing his application for the ’655 patent,
but failed to disclose the existence of the Hayward device
to the Patent Office. The Hayward jet is also significant
in that it utilizes a flat washer, located adjacent to screw
threads, which abuts an annular radial flange to seal the
flange to the inside of the bathtub. If a flat washer and
threads are equivalent to an O-ring and groove, as plaintiff
contends, the Hayward jet would be even more pertinent
as a prior art reference. The Hayward jet is a more per-
tinent reference than anything that was before the Patent
Examiner, and plaintiff's failure to disclose its existence,
compounded by his affirmative assertions that his inventive
structure is nowhere found in the prior art, constitutes
inequitable conduct.
21. In the same response to the Patent Office Examiner,
plaintiff argued that another feature of Claim 1 was non-
existent in the prior art, namely that:
62a
The threaded engagement between the water out-
let and housing not’ only mounts the jet without
extraneous fastening devices, but also provides
automatic adjustment to fit various thicknesses
of bathtub walls.
22. Plaintiff was aware, at the time this argument was
made, that both the prior art Hayward jet and a prior art
Jacuzzi jet provided the same wall thickness adjustment.
His failure to disclose these facts, and his argument to
the Patent Office Examiner constitute a serious breach of
his duty of candor in the Patent Office proceeding.
23. None of the prior art patents or devices discussed
in the preceding paragraphs were before the Patent Office
during the examination of Claim 1 of the ’655 patent.
These references were more pertinent than the prior art
cited by the Patent Office Examiner.
24. Claim 2 adds to the overall combination of Claim 1
a requirement that the water outlet flange be substantially
flush with the inner wall of the bathtub to prevent injury
of occupants of the tub. The term “‘substantially flush’’ is
vague, since it is impossible to determine how thick the
flange might be and stil] fall within the claim definition.
Nonetheless, if the claim is interpreted as requiring that
the flange be flat enough to prevent injury to occupants
of the tub, then this feature is clearly shown in the prior
art Hayward jet, the Everston patent No. 3,263,678 (Ex-
hibit 430), the Witten Jr. patent No. 3,432,867 (Exhibit
440), the Abraham et al. patent No. 1,393,482 (Exhibit
421), and the Blau et al. patent No. 3,027,568 (Exhibit
427), all of which are prior art under section 102(b).
25. The “substantially flush” feature of any of these
prior art patents could be combined in an obvious manner
with the basic structure taught by the Parr patent to yield
the invention defined by the combination of Claims 1 and
2. This fact is evidenced by the test which Mr. Jessup
63a
conducted on the Parr replica with a flush outlet. That
test showed that the Parr replica worked as well with a
flush outlet as with an outlet cone.
26. In addition, the construction of water openings for
bathtubs in a manner which will yield a flush surface to
avoid injury is well known. For example, virtually every
drain opening at the bottom of bathtubs is flush with the
bathtub bottom. Likewise, water return lines and other
fixtures in swimming pools have historically been made
flush to the pool wall to avoid injury. The feature defined
in Claim 2, therefore, adds nothing more than the standard
precaution to the otherwise unpatentable structure defined
in Claim 1, and the claim is invalid.
27. Claim 6 is dependent upon Claim 2, and thus in-
cludes the structure previously discussed with regard to
both Claim 1 and Claim 2. In addition, this claim adds the
requirement that the water supply pipe be connected to
a transverse passage in the jet housing. Piaintiff contends
that this claim language means that the water supply pipe
enters the housing from the side, rather than from the
rear. The Parr patent clearly supplies water transversely
to the side of the jet housing, and thus anticipates this
feature. Furthermore, the Jacuzzi patent No. 3,571,820
(Exhibit 442) which is prior art under section 102(b), shows
a water supply pipe 61 (Figure 1) connected to a jet 25
so that it enters the jet 25 from the side, rather than the
rear. Claim 6 is thus obvious in light of the prior art.
28. Claim 7 is dependent upon Claim 6, Claim 2, and
Claim 1, and thus includes all of the structure delineated
in these claims. Claim 7 adds to the previous claims the
feature of a water supply pipe which extends completely
through the housing so that a manifold may supply water
to plural jets around the perimeter of a bathtub. The prior
art Anzen jet (Exhibits 291-295), the Everston patent No.
2,263,678 (Exhibit 430), and the Jacuzzi patent No.
8,297,025 (Exhibit 482) show this concept. It would be
64a
obvious to those ordinarily skilled in the art, in view of
these patents, that this feature could be added to the basic
Parr reference. Claim 7 is thus invalid under 35 U.S.C. §
103.
29. The details covered by the dependent claims of the
’655 patent cannot serve to save independent Claim 1 from
invalidity.
THE ’656 PATENT
30. Like the ’655 patent, the ’656 patent has only one
independent claim, Claim 1. This claim defines a jetted
bathtub as a complete, installed assembly having plural
jets which are connected to air and water supply pipes
manifolded around the perimeter of the tub. The jets have
transversely directed air inlet and water inlet openings for
receiving the air and water supply pipes without fittings.
31. The Anzen jet (Exhibits 291-295), which is stipulated
to be prior art under 35 U.S.C. § 102(a), when installed
includes each and every element of claim 1, arranged in
precisely the combination required by the claim. Such an
installation is prior art to this 656 patent, based on the
testimony of Mr. Allen. Thus, as an installed assembly,
the Anzen jet (Exhibits 291-295) completely anticipates
Claim 1. The definition of “housing’”’ in the claim reads
directly on the assembly of Exhibits 293 (7.e., the element
including the nozzle) and 291 and 292 (i.e., the water and
air tees). In fact, this reading is required by the claim
definition of transverse water and air openings on the
housing. When the claim is properly interpreted in this
manner, the complete, installed assembly includes water
and air supply pipes connected to these openings without
fittings.
32. Plaintiff has urged that the term “without fittings”’
in Claim 1 prohibits anticipation, under 35 U.S.C. § 102,
by the Anzen jet (Exhibits 291-295). This contention is
contrary to the clear language of the claim, which only
65a
requires that the water and air supply pipes be connected
to the transverse water and air openings of the housing
without fittings. Further, the plaintiff's attempt to avoid
claim anticipation by interpreting the term “without fit-
tings’’ to define a one-piece or unitary housing makes Claim
5 of the ’656 patent a nullity. Claim 5 defines the elements
of the housing as unitary. To read these limitations im-
plicitly into Claim 1, through the term ‘‘without fittings’’,
would require a reading of the Claim 5 limitations into
Claim 1. This clearly was not the intent of the plaintiff
when the patent was before the Patent Office.
33. Further, in the Anzen jet, the tees used for con-
necting the water and air, as well as the housing, are
made of plastic. Before connection to the supply pipes, the
tees are attached to the housing. Such attachment of plas-
tic plumbing parts is accomplished with a solvent, not glue.
The mating parts are softened with solvent and intercon-
nected, so that the mating surfaces flow into one another,
like mixing paint. When the solvent later dries, the parts
become “integral” or ‘‘unitary.’”’ The Anzen jet was pre-
assembled in this manner, in this country, before plaintiff's
alleged invention, and is prior art to the ’656 patent. This
jet provided a “unitary” structure to which the water and
air pipes were then attached ‘‘without fittings”. This is a
complete anticipation under 35 U.S.C. § 102.
34. Each and every element of Claim 1 is disclosed by
the prior art Jacuzzi patent No. 3,297,025 (Exhibit 432)
in exactly the combination required by the claim. Like the
Anzen jet (Exhibits 291-295), the Jacuzzi patent shows the
use of water and air tees. These elements must be a part
of the housing defined in Claim 1. Although a threaded
connection is shown, the air and water pipes are connected
to the transverse air and water openings without fittings.
35. Thus, the Jacuzzi patent completely anticipates Claim
1 of the '656 patent under 35 U.S.C. § 102. This reading
of Claim 1 on the Jacuzzi patent is even more apparent
66a
in view of the fact that the tees could not be attached to
the supply pipes of Jacuzzi until they are first attached
to item 24 of figure 2—otherwise the pipes would extend
from the tees, making it impossible to thread the tees into
item 24. Thus, the structure of the Jacuzzi jet requires
that the tees and item 24 be pre-assembled before the
supply pipes (Figure 1, items 41, 42) can be connected.
At this pre-assembly stage, the claim definition reads lit-
erally on the Jacuzzi structure, since the supply pipes are
later connected ‘without fittings’.
36. Plaintiff has attempted to use the term “without
fittings” to avoid the prior art. In view of the prior art
Anzen jet and the Jacuzzi patent, the only interpretation
of the claim that could avoid direct anticipation is that the
housing, with its inlets, is unitary, or one piece. With this
interpretation, the invention is obvious and Claim 1 is
invalid under 35 U.S.C. § 103. The prior art Anzen jet is
clearly in ‘“‘one piece’. The only difference between the
Anzen jet and plaintiff's jet is that the Anzen jet is made
unitary by solventing plastic parts together, while plaintiff's
jet is molded. However, molding is a common, well known
technique which would be obvious to anyone skilled in the
art. Accordingly, the claimed invention is obvious in view
of Jacuzzi and Anzen.
37. Any attempt by plaintiff to use the term “without
fittings’ to avoid anticipation would make this claim vir-
tually impossible to interpret. 35 U.S.C. § 112 prohibits
the use of such vague, imprecise terms in patent claims
because adequate notice must be provided to the public as
to the scope of the patent. Vague and imprecise terms in
a patent afford the patentee an opportunity, after issuance
of the patent, to define the claims in a way that is best
suited to maximize the patentee’s patent monopoly. The
claims are invalid under 35 U.S.C. § 112.
38. Plaintiff knew, but did not disclose to the Patent
Office, that it had become a common practice to install
67a
jets utilizing tees to provide transverse air and water inlet
openings, and thus to form a jet structure identical to that
defined in Claim 1. Plaintiff did refer in the specification
to problems associated with using tee fittings, implying
that these installations were extremely complex. He did
not disclose or suggest that the prior art was identical to
the claimed invention, and that the only possibly novel
feature was making it in one piece.
39. More than one year before filing this patent appli-
cation, plaintiff sold a unit called the ‘‘Model 548 Ultra
Spa’. This spa included jets which were formed as an
extension of the water supply pipes, and thus required no
“fittings’’. Since plaintiff only displayed and sold a single
model 548, this sale was peculiarly within his knowledge,
and could not have been known to the Patent Office Ex-
aminer. Plaintiff nonetheless failed to inform the Examiner
of this earlier sale.
40. Neither the prior art Anzen jet nor the Jacuzzi pat-
ent, both of which were more relevant than the prior art
cited, were before the Patent Examiner during prosecution
of the '656 patent.
41. With respect to the '656 patent, plaintiff breached
the duty of candor to the Patent Office.
42. Dependent claim 2 is directed toward drainage. It
is obvious that a jet installed in a recirculating bathtub
system should be arranged to drain when the tub is
drained. Otherwise, dirty bathwater would remain in the
jet system, and would be mixed with the next person’s
bathwater.
43. The simple expedient of placing a pipe above an
outlet, so that the pipe will drain into the outlet, is obvious,
since this is the only practical way of achieving this de-
sirable safety feature. Stated differently, this claim in ef-
fect attempts to monopolize the concept that water runs
downhill, and that the outlet of a supply pipe should be
68a
the lowest point of the pipe, if the pipe is to drain. In
view of the prior art relevant to Claim 1, the claim is
obvious under 35 U.S.C. § 108.
44. Plaintiff’s prior art ‘“Model 548 Ultra Spa” included
jets which were arranged to drain completely, yet plaintiff
withheld the fact of the earlier sale from the Patent Office
Examiner. This breach of plaintiff's duty of candor renders
Claim 2 unenforceable.
45. Furthermore, plaintiff has accused certain jets of
HAI and other defendants with infringement of Claim 2,
even though such jets would drain no better than the prior
art Anzen jet. Thus, as this claim is interpreted by plaintiff
himself, the drainage feature is anticipated by the Anzen
jet.
46. Claim 3 adds dividers in the water and air inlet
openings against which the opposed water and air pipes
abut. Dividers for providing abutments for connected pipes
have been common in the plastic pipe field almost as long
as plastic pipe itself. In fact, dividers which provide abut-
ments are included in the prior art Anzen jet. Thus, Claim
3 is obvious under 35 U.S.C. § 108.
47. Claim 4 adds to Claims 1, 2, and 3, on which it is
dependent, a requirement that the jet housing must extend
from the tub the same distance as the water and air supply
pipes. The prior art Anzen jet includes this feature. Thus,
the claim is obvious under 35 U.S.C. § 103.
48. It is obvious that the jet could be made as a unitary,
molded fitting, as required by Claim 5, particularly in view
of the prior-art Anzen jet. The fact that the plastic parts
could be molded is well known in the prior art. Thus, Claim
5 is also obvious under 35 U.S.C. § 103.
THE ’449 PATENT
49. The ’449 patent has two independent claims, Claims
1 and 10,- both o: which are in issue here. Claim 1 of the
69a
’449 patent defines a wrench in combination with a jet,
while Claim 10 defines an extension pipe and a nozzle in
combination with a jet.
50. Although the ’449 patent is a continuation-in-part
of two earlier filed patents, namely the 655 patent and
the ’656 patent, plaintiff is not entitled to rely on the
filing dates of these prior patents because the subject mat-
ter claimed in the ’449 patent was not disclosed in either
of them. Thus, prior publications, public uses, and offers
for sale which occurred more than one year before the
March 31, 1975 filing date of the ’449 patent are prior
art to the 449 patent.
51. The wren 1 of Claim 1 is of a type commonly re-
ferred to as a ‘“‘spanner wrench’’, and includes a pair of
pins which are received by mating openings in the water
outlet of a jet so that the outlet can be rotated by the
wrench. The first part of the claim reads on the jet, while
the latter part of the claim reads on the wrench.
52. Plaintiff's wrench is obvious in view of the Rudolph
patent No. 3,073,206 (Exhibit 429) and the Noyes patent
No. 672,217 (Exhibit 420). Rudolph discloses a cap screw
(Figure 3) having diametrically spaced openings for re-
ceiving a wrench (Figure 4). The Rudolph wrench has a
pair of pins spaced to fit within the openings of the cap
screw, as well as an opening 21 (Figure 5) for receiving
a tool to rotate the wrench. It is unclear whether the
Rudolph wrench discloses knurling; however, knurling is
clearly disclosed in the Noyes patent. Thus, the wrench
structure defined by Claim 1 is obvious in light of the
prior art.
53. The particular jet structure defined by Claim 1 is
anticipated by the Parr patent No. 1,526,179 (Exhibit 422).
Although Parr does not include openings for receiving a
spanner wrench, the need to provide such openings is
taught by each of the above-described spanner wrench pat-
ents, and thus would be obvious.
70a
54. HAI has manufactured two different wrenches: (a)
an ‘“‘old wrench” which had knurling and a square hole to
receive a wrench, and (b) a “new wrench”, introduced
shortly after notice was given regarding the ’449 patent.
The “new wrench’, instead of knurling, has a triangular
configuration for gripping, and instead of a hole has a hex-
shaped post for accepting a wrench. The plaintiff has ad-
mitted that the “new wrench’”’ does not infringe Claim 1;
this amounts to an admission that the alleged invention is
directed to knurling and a square hole. Clearly, this does
not meet the standard of invention under 35 U.S.C. § 103.
55. More than a year prior to filing the ’449 patent,
plaintiff made an aluminum spanner wrench which was
used to tighten the water outlets on some of plaintiff's
early jets. This wrench was the functional equivalent of
the wrench defined by Claim 1 of the ’449 patent, and
included a pair of diametrically spaced pins for insertion
into mating openings on the water outlet of a jet. The
only differences between the wrench and that claimed in
the ’449 patent is the lack of knurling, and the use of a
wrench receiving post instead of an opening.
56. Plaintiff's aluminum spanner wrench was used to
install jets on a hydrotherapy bath unit which was sub-
mitted to the City of Los Angeles for approval on October
12, 1973. Although the exact date of use is uncertain, it
must have been before October 12, 1973, when the hy-
drotherapy unit was submitted. In any case, this date was
before the critical date of the ’449 patent (March 31, 1974).
57. There were commercial uses of plaintiff's aluminum
wrench on jets prior to the critical date of the ’449 patent.
Plaintiff sold a number of whirlpool jets to Benson Whirljet
on October 11, 1973, November 19, 1973, and January 3,
1974, all of which dates are more than one year before
the filing date of the ’449 patent. According to plaintiff,
these jets were probably like the jets shown in Exhibits
213 or 214 which included diametrically spaced openings
7la
on the water outlet for receiving a spanner wrench. There
appears to be no practical way of tightening these jets
without the use of a spanner wrench. The jets shown in
Exhibits 213 and 214 anticipate the jet structure portion
of the Claim 1 definition.
58. The aluminum spanner wrench was in existence at
the time of the first of the series of jet sales to Benson
Whirljet, since plaintiff used this wrench previously to in-
stall the City of Los Angeles hydrotherapy jets. The con-
clusion is inescapable that one of two events occurred at,
or near, the time of the first sales to Benson Whirljet in
October of 1973. Either plaintiff gave, sold, or loaned the
spanner wrench, or one like it, to Benson Whirljet, or he
personally used the wrench to instal] the jets for Benson
Whirljet. Otherwise, Benson Whirljet could not have com-
pleted installation of the jets which it purchased from
plaintiff.
59. These public uses establish that plaintiff's aluminum
wrench is prior art to the ’449 patent. The differences
between the aluminum wrench and the wrench defined by
Claim 1, namely a wrench hold and knurling, are so trivial
as to make Claim 1 obvious under Section 103.
60. Dependent claims of a patent are typically directed
toward a narrower definition of the inventive feature of
their parent claim. In the case of Claims 8 and 9, however,
features unrelated to the wrench of the parent Claim 1
are defined. In view of the invalidity of the parent Claim
1, Claims 8 and 9 are valid only if the air inlet which they
define makes the overall combination non-obvious.
61. Claim 8 defines a vertically directed inlet extending
into the top of the jet housing, above the air inlet opening,
the inlet being adapted to receive the lower end of a
vertically directed air supply pipe. This feature of the ’449
patent is included in a number of prior art references,
namely the Hayward device, the Anzen device, and the
Parr patent.
72a
62. Claim 9 adds to Claim 8 a cap which is removably
mounted on the upper end of the air inlet to close off the
inlet. The Guiler No. 3,845,982 (Exhibit 434) and Parr No.
1,526,179 (Exhibit 422) patents disclose similar structures.
Furthermore, the use of caps to close off pipes is an ob-
vious expedient, commonly used in the trade. Thus, Claim
9 is also obvious in view of the prior art. |
63. Claim 10 of the’ ’449 patent defines a jet in com-
bination with: (1) an extension pipe, with concrete poured
there about, with the end of the extension protruding be-
yond the edge of the concrete; (2) a nozzle, comparable in
length to the extension pipe; and (8) a “‘discardable”’ end
on both the extension pipe and the nozzle.
64. The jet portion of Claim 10 is anticipated by several
prior art references, such as the jet shown in the Kane
brochure, the Parr patent, and the prior art Hayward jet.
There is nothing patentable about the jet taken by itself.
65. Extension pipes installed in the manner defined by
Claim 10 are well known in the art, as evidenced, e.g., by
the Kane brochure, which shows a jet with an extension
sleeve extending through a concrete pool wall and includes
instructions to cut the extension off flush with the tile on
the inside of the pool. The Anzen jet also includes such
an extension. The only difference between the extension
portion of Claim 10 and the prior art relates to the pro-
vision of threads on the extension, so that it can be thread-
edly connected to the jet. In most of the prior art, such
connection is made by means of a slip fitting (i.e., an
unthreaded plastic socket which receives an unthreaded
plastic pipe). However, the substitution of a threaded con-
nection for a slip fitting connection is an obvious expe-
dient, well known to those in the art.
66. Apparently, plaintiff's claimed ‘invention’? was to
make the nozzle long, so that its tip would extend closer
to the discharge outlet of the jet. However, this idea was
well known in the prior art, as evidenced by Figure 5 of
73a
Jawett patent No. 2,799,866 (Exhibit 426). Similar nozzles
are disclosed in Figure 6 of Gilson patent No. 2,591,252
(Exhibit 485); Figure 2 of the Solley patent No. 2,091,167
(Exhibit 423); and Figures 3 and 4 of Everston patent No.
3,263,678 (Exhibit 430).
67. Moreover, it was common to use both nozzles and
concrete extensions in combination with jets, as evidenced
by the Kane brochure. Thus, the particular combination of
elements defined by Claim 10 is obvious under 35 U.S.C.
§ 103.
68. Claim 10 also fails to particularly point out and dis-
tinctly claim the invention as required by 35 U.S.C. § 112.
In this regard, plaintiff’s use of the term “‘discardable’”’ in
Claim 10 presents a serious problem of vagueness. If ‘‘dis-
cardable” means “capable of being cut off’’, it is mean-
ingless, since anything is capable of being cut off. On the
other hand, if “discardable” means actually ‘‘cut off’, then
the term may have some meaning. But, the nozzle may
be used without being cut off, and it is impossible to de-
termine beforehand whether or not the user will cut off
the nozzle.
69. The use of the term “‘discardable’’ makes it impos-
sible to determine from examination whether a given de-
vice falls within the scope of the claim. Thus, the claim
does not provide the public with adequate notice as to
which devices are within the patent grant, and which are
not.
70. With the exception of the Steimle patent, none of
the prior art patents or devices which are the subject of
these Findings were before the Patent Office during ex-
amination of the ’449 patent. Plaintiff did not disclose to
the Patent Office the fact that his spanner wrench was
used, more than one year prior to the filing date, to install
jets on the City of Los Angeles hydrotherapy unit, and
on the jets sold to Benson Whirljet. Likewise, with respect
to the concrete extension pipe, the plaintiff did not disclose
74a
to the Patent Office the fact that extensions were common
in the art.
TEST FOR PATENTABILITY
71. The first two elements of the test set forth in Gra-
ham v. John Deere Co., 338 U.S. 1, 86 S. Ct. 684 (1966),
namely (1) the scope and content of the prior art, and (2)
the differences between the prior art and the claims at
issue, have been considered above. The third element, i.e.
the level of ordinary skill in the pertinent art, is the same
for each of the patents at issue here. The pertinent art
in this case includes at least plumbing equipment and de-
vices for mixing air with water and injecting the mixture
into a water vessel.
72. Those of ordinary skill in this art are persons having
a working knowledge of plumbing fittings and fixtures,
and also some knowledge of fluid mechanics and dynamics,
materials and their properties, and basic mechanical en-
gineering skills. This knowledge can be obtained by on-
the-job training, and requires only a familiarity with how
things work, not the scientific terms used to explain them.
FRAUD AND OTHER INEQUITABLE CONDUCT
73. Plaintiff failed to disclose to the Patent Office prior
art information of which he was fully aware. This prior
art information was essential to a proper evaluation of
plaintiff's applications by the Patent Office. The infor-
mation withheld was clearly material, and was more per-
tinent to the patent applications than any art found by
the Patent Office in its own investigation. In several in-
stances, the pertinent prior art which was not disclosed
consisted of Mathis’ own products.
74. Plaintiff's failure to disclose the pertinent prior art
to the Patent Office was at the very least grossly negligent
and showed a reckless disregard for the truth. This con-
duct related directly to each of the patents in suit as well
as to the design patent, and when viewed in light of the
75a
materiality of the withheld information, constitutes fraud
on the Patent Office with respect to each patent. The
patents in suit are each tainted with inequitable conduct
and fraud which renders them unenforceable.
75. Each of the patents in suit are related in that they
are directed to different features of the same products.
Plaintiff asserts that the ’655, 656, and 449 patents each
apply to both the Vico No. 15 and No. 10 jets and to
defendants’ products, and infringement of the design pat-
ent was alleged for many of these same products. The
‘449 patent was a continuation-in-part of the ’655 and ’656
patents, while the ’656 patent was a continuation-in-part
of the 655 patent. Because of the close relationship of
these three utility patents each to the other, as well as
to the design patent, all of the patents are invalid, or at
least unenforceable, if fraud is established with respect to
any one of them. That being the case here, none of the
patents may be enforced against defendants.
76. In addition to rendering the patents invalid or unen-
forceable, plaintiff's conduct also makes an award of
attorneys’ fees appropriate. Plaintiff's failure to disclose
his knowledge of relevant prior art evidences a reckless-
ness about the truth, at the very least. Plaintiff attempted
to characterize his failure to inform the Patent Office Ex-
aminer of the relevant prior art as merely an erroneous
judgment made in good faith. However, the prior art with-
held from the Patent Office was so relevant to the patent
claims that a good faith judgment of immateriality would
have been impossible.
77. At the time plaintiff made the alleged inventions at
issue here, and at the time -plaintiff filed the patent ap-
plications, plaintiff had in his possession a jet manufac-
tured by Hayward Manufacturing Company (“Hayward’’)
(Exhibit 241) which plaintiff admits is prior art to each of
the patents in suit. The jet is identical to Hayward jets
which Mathis knew to be available to the public in 1971
76a
when he began working on a whirlpool bath system. The
Hayward jet was not disclosed to the Patent Office during
the prosecution of the ’655 patent or any of the other
patents in suit.
78. In 1971, prior to the construction of his initial pro-
totype, plaintiff was aware of hydrotherapy jets, such as
Exhibit 209, which were produced by Jacuzzi Brothers,
Inc. (“‘Jacuzzi’’) and which plaintiff has admitted was prior
art to all of the patents in suit. The Jacuzzi jet is attached
to the wall of a bathtub by placing the head through the
wall of the bathtub, placing a gasket on the backside of
the head, and screwing a nut onto the head to hold the
head in place. Thereafter, the venturi is screwed into the
back of the head and thereby mounted on the tub wall.
This mounting technique permits an automatic adjustment
for varying thicknesses of bathtub walls without any fas-
tening members attached to the bathtub, a feature which
is claimed in claim 1 of the ’655 patent and was not
disclosed in any of the prior art patents cited by the Patent
Office.
79. Plaintiff was also aware as early as 1971 that the
Jacuzzi jet could be supplied with air and water in a bath-
tub installation through the use of tees attached to the
air and water inlets, and that when so assembled, multiple
jets could be interconnected on a bathtub with common
air and water supply lines. Jacuzzi installations of this
type, with the air and water supply lines and the jets
installed horizontally, anticipated Claim 1 of the ’656 pat-
ent.
80. Despite his prior knowledge of the Jacuzzi jets and
the manner in which they were installed, plaintiff did not
disclose any of this information to the Patent Office in
connection with his applications for either the ’655 or 656
patents.
81. The Model 548 spa which plaintiff himself con-
structed and solid well over a year before filing any of his
poe 77a
patent applications had “‘no fittings” and drainage features
similar to the ’656 patent. None of the prior art patents
had these features, yet plaintiff failed to disclose his own
Model 548 to the Patent Office.
82. Prior to developing his first prototype for a spanner
wrench, plaintiff was aware of and had actually seen a
spanner wrench used with automobile parts. The auto
wrench looked like a pair of pliers with two pins for in-
sertion into corresponding holes in the automobile part. It
was used to turn and tighten the part in the same manner
a Vico spanner wrench is used to tighten a jet. Plaintiff
failed to disclose this information to the Patent Office, and
the Patent Examiner did not cite any prior art references
showing a spanner wrench.
83. Plaintiff made and publiciy used on his own jets an
aluminum spanner wrench which was much closer to the
wrench claimed in the ’449 patent than anything found by
the Patent Office. Plaintiff failed to disclose to the Patent
Office either the existence of his aluminum wrench, its use
in tightening the jets submitted to the city for approval,
or his sale of jets with spanner wrench openings to Benson
Whirljet Systems, all of which occurred more than a year
before the ’449 patent was applied for.
84. In 1970, prior to plaintiffs’ making any of the al-
leged inventions in suit, it was a common practice when
installing a water discharge pipe into a gunited swimming
pool to extend the pipe as much as a foot beyond the final
inside wall of the pool, to then gunite the pool, and finally
to cut the water discharge pipe off to the length of the
ultimate plaster line in order to avoid burying the dis-
charge line within the gunite. The water discharge pipe
thus served as an extension, the end of which was “dis-
cardable” so that the thickness of the pool wall could vary
without affecting the installation of the discharge pipe; this
is the very same technique claimed for the extension of
the ’449 patent. Plaintiff was aware of this practice before
78a
filing his application for the ’449 patent, but he failed to
inform the Patent Office of this practice.
85. Each of the defendants were also accused of infr-
inging Design Patent No. 244,462 in the original and early
amended complaints filed by plaintiffs. Through an inter-
rogatory, defendants sought copies of all invoices and pa-
pers evidencing sales or other disclosures or transfers, by
plaintiffs of jet products covered by the patents in suit,
up until the November 24, 1975 filing date of the design
patent. Plaintiffs produced a total of nine such invoices,
none of which indicated any activity by plaintiffs that might
invalidate the patents. Upon learning independently that
Vico had made additional jet sales during the period in
question which had not been disclosed, defendants sought
and obtained an order granting them access to Vico’s files.
In the course of inspecting the files, defendants discovered
approximately 295 additional invoices for sales of jets to
some 125 different customers, all of which sales had pre-
dated November 24, 1975. Although these documents were
within the scope of the interrogatory, plaintiffs had failed
to produce them. Two of the invoices evidenced sales of
No. 15 jets more than one year prior to November 24,
1974, the ‘‘critical date” for the design patents, and three
of the invoices evidenced jet sales to Benson Whirljet prior
to March 31, 1974, the critical date for the ’449 patent.
These invoices were kept in Vico’s files and were available
to Vico at all times since they were generated.
86. One invoice showed that a No. 15 jet had been
shipped to Cal-Quip Company on November 21, 1974, three
days before the critical date, and that Cal-Quip had paid
for the unit. It was stipulated that the jet had been offered
for sale to Cal-Quip before the critical date. Although this
sale clearly rendered the subject of the design patent un-
patentable, plaintiff went ahead with filing of the patent
application for the design patent. Further, he did not ded-
icate the design patent until after defendants had discov-
ered the Cal-Quip invoice through their own efforts.
79a
87. Another invoice which defendants discovered was
for the sale of jets and other whirlpool equipment to Mar-
Lyn Container Corporation, with shipment made to the
residence of its president, William Warren. The invoice
itself was dated only November, 1974, but associated parts
lists, including one dated November 16, 1974, identified
the No. 15 jet. Mathis thereafter admitted that the jets
had been offered for sale a week before November 24,
1974. This constituted a placing on sale under 35 U.S.C.
§ 1¢2(b). He admitted that he was ware of the sale at the
time he filed his application for the design patent, and
attempted to explain his failure to call it to the attention
of the Patent Office by stating that, because the jet equip-
ment was not actually shipped until February 1975, he
thought it would not have any effect on the design ap-
plication. He never brought the pertinent information to
the attention of the Patent Office.
88. At some time prior to October 22, 1974, plaintiff
met with Leonard Gordon, president of Riviera Industries,
Inc. Riviera was in the business of manufacturing spas
and accessories, and had been purchasing whirlpool jets
from another supplier. At the meeting, plaintiff showed
Mr. Gordon a large jet covered by design patent and in-
dicated that it was available for sale. This constituted a
placing on sale under 35 U.S.C. § 102(b).
89. In response to discovery requests for documents re-
lating to the validity of the patents originally in suit,
plaintiffs produced only nine out of over 300 invoices called
for. Among the documents which plaintiffs withheld were
the documents which ultimately led to proof of the inva-
lidity of the design patent and its dedication to the public.
Further, plaintiffs did not indicate that any documents had
not been produced.
90. Not only did Vico fail to produce all of the docu-
ments called for relating to the design and ’449 patents,
in addition, Vico’s representatives gave inconsistent tes-
80a
timony on their efforts to locate and produce documents.
Mathis, president and fifty percent owner of Vico, testified
that he identified to his wife the customers whom he re-
membered as early jet purchasers and asked her to gather
all of the documents requested in the interrogatories. Mrs.
Mathis is an officer and fifty percent owner of Vico. She
testified that she had seen the interrogatory, including the
request for all documents relating to any of the patents
in suit dated prior to November 24, 1975. She further
testified that she went through all of Vico’s invoice files
in an attempt to locate invoices, but that she only looked
for documents relating to the design patent, and only for
documents dated prior to November 24, 1974, not 1975.
She did this despite the fact that Mr. Mathis had asked
her to locate all invoices prior to November 24, 1975, not
November 24, 1974.
91. The earliest invoice which plaintiff produced evi-
dencing the sale of a jet covered by the design patent was
dated January 14, 1975, indicating that shipment had been
made the same day. Early in the litigation, plaintiff's
attorney sent defendant Hydro Air’s attorney a letter stat-
ing that this invoice established January 14, 1975 as the
first sale of the design patent jet. Despite this letter, Mrs.
Mathis testified that she had seen the Cal-Quip invoice,
but hadn’t produced it because it was dated December 10,
1974. When asked why plaintiff had represented January
14, 1975 as the first sales date for the design patent jet
despite Mrs. Mathis’ having seen the earlier Cal-Quip in-
voice, Mathis could offer no explanation.
92. Plaintiff also produced an invoice to Benson Whirl-
jets dated April 15, 1974, subsequent to the critical date
for the ’449 patent, but he failed to produce three earlier
invoices dated prior to the critical date. Mrs. Mathis tes-
tified that she had seen all of the Benson invoices, but
had not produced the first three because they were for
sales of prototype jets, whereas the April 15, 1974 invoice
was for the sale of a manufactured jet. She further tes-
8la
tified that she had not produced the April 15, 1974 invoice
because it was for a small jet, not the large jet (although
she had produced numerous later-dated small jet invoices),
and stated that Mathis probably produced the April 15
invoice because it was for a manufactured jet. Mathis sub-
sequently admitted when he was presented with evidence
that no manufactured jets were available until June 1974,
that the April 15 invoice was also for the sale of a pro-
totype jet, not a manufactured jet.
93. Plaintiff's course of conduct demonstrates a reck-
lessness with regard to the truth, which justifies an award
of attorneys’ fees under the ‘‘exceptional case” provision
of 35 U.S.C. § 285. Although it arguably also would justify
an award of attorneys’ fees under the Federal Rules of
Civil Procedure, the award is not made on that ground.
CONCLUSIONS OF LAW
CONTROLLING LAW
1. As of October 1, 1982, all patent appeals are directed
to the new Court of Appeals for the Federal Circuit, com-
prised of the former Court of Customs and Patent Appeals
(“CCPA”’) and the Court of Claims. Federal Court Im-
provement Act (public law 97-164, 96 stat. 25). The Court
of Appeals for Federal Circuit (““CAFC’’) has adopted the
decisions of the CCPA and the Court of Claims as binding
precedent. South Corp. v. United States, 690 F.2d 1368,
215 U.S.P.Q. 657 (CAFC 1982). Thus, while the decisions
in the Ninth and other Circuits may be looked to as prec-
edent in patent controversies, in case of conflict, the de-
cisions of the CCPA and Court of Claims presumably are
controlling.
PRESUMPTION OF VALIDITY
2. Section 282 of Title 35, United States Code, provides
that a patent is presumed to be valid.
82a
3. The Court of Appeals for the Federal Circuit has held
that the presumption of patent validity is not weakened
by the failure of the Patent Examiner to consider the most
relevant prior art. Rather, even where the Patent Office
Examiner did not consider the most pertinent prior art,
the presumption remains and has the effect of imposing
on the party asserting invalidity the burden of going for-
ward as well as the burden of persuasion. SSIH Equipment
S.A. v. U.S.I.T.C., 718 F.2d 365, 375, 218 U.S.P.Q. 678
(CAFC 1988).
4. Although the burden of going forward with the proof
and of persuasion is on the party asserting invalidity, that
party is more likely to carry its burden of persuasion when
more pertinent prior art, not considered by the Patent
Examiner, is presented. Solder Removal Co. v. U.S.I.T.C.,
582 F.2d 628, 633, 199 U.S.P.Q. 129 (C.C.P.A. 1978).
SECTION 102: PRIOR ART AND ANTICIPATION
5. For each of the three patents in suit, there are a
number of prior art references which were not before the
Patent Office, and which were far more relevant than any
prior art considered by the Patent Examiner.
6. Subsections (a) through (g) of 35 U.S.C. § 102 define
“prior art’”’ by enumerating the circumstances under which
the grant of a patent is precluded. A publication, patent,
or event may qualify as a prior art reference under any
of these subsections. When all of the elements of a patent
claim are found in one prior art reference, the patent claim
is invalid, and the invention is said to be anticipated as
a matter of law. This is true, even if the intended use of
the anticipating device is different from the intended use
of the claimed device. Exer-Genie, Inc. v. McDonald, 453
F.2d 132, 133, 171 U.S.P.Q. 277-278 (9th Cir. 1971), cert.
denied, 405 U.S. 1075, 31 L. Ed. 2d 809, 92 S. Ct. 1498;
Beckman Instruments, Inc. v. Chemstronics, Inc., 428 F.2d
555, 561, 165 U.S.P.Q. 355, 360 (5th Cir. 1970), cert. de-
nied, 440 U.S. 956, 276 L. Ed. 2d 264, 91 S. Ct. 353
ae
83a
(1970) (‘{Ijn order to be valid over the prior art, [the
patent] must claim not novel use, but novel conception.’’)
7. In relevant part, 35 U.S.C. § 102 provides:
A person shall be entitled to a patent unless—
(a) the invention was known or used by others
in this country, or patented or described in a
printed publication in this or a foreign country,
before the invention thereof by the applicant for
patent, or (b) the invention was patented or de-
scribed in a printed publication in this or a for-
eign country or in public use or on sale in this
country, more than one year prior to the date of
the application for patent in the United States,
or ... (e) the invention was described in a patent
granted on an application for patent by another
filed in the United States before the invention
thereof by the applicant for patent ....
8. In determining the issue of anticipation under 35
U.S.C. § 102, the only relevant inquiry is whether the
claims can be read on a prior art reference. In other
words, the inquiry is whether the prior art reference con-
tains each and every element of the claim. As stated above,
when all the elements of a patent claim are found in one
prior art reference, where such elements do substantially
the same work in the same way, the patent claim is invalid,
and the invention is said to be anticipated. See Continental
Oil Co. v. Cole, 684 F.2d 188, 195 (5th Cir. 1981), cert.
denied, 454 U.S. 830, 102 S. Ct. 124, 70 L. Ed. 2d 106;
In re Self, 671 F.2d 1344, 1350-1351, 213 U.S.P.Q. 1, 7
(C.C.P.A. 1982).
9. With regard to subsection (b), the date which is ‘“‘more
than one year prior to the date of application for patent’’
is referred to as the “critical date’. For the purpose of
subsections (a) and (e), the date that the patented device
was invented is the same as the filing date of the patent
84a
application, absent clear and junequivocal evidence to the
contrary.
10. The following table shows, for each of the three
patents in suit, the critical date, the invention or filing
date, and the issue date.
Critical Invention or Issue
Date ~—sfiling date date
"655 Aug. 27, 1972 Aug. 27, 1973 June 24, 1975
656 May 16, 1973 May 16, 1974 Mar. 31, 1975
"449 Mar. 31, 1974 Mar. 31, 1975 Mar. 30, 1976
11. Based on these dates, the following table sets forth
the applicable statutory subsections for each of the prior
art references relied upon by the defendants for each of
the three utility patents.
Patents in
Suit
REFERENCE Section(s) ’655 656 ’449
Abraham (No. 1,393,482 102(b) D4
Ex. 421)
Anzen Jet (Exhibit 102%a)& (b) X xX X
291-295)
Blau (No. 3,027,568 102(b) X
Ex. 427)
Everston (No. 3,391,870 102(b) xX
Ex. 430)
Gilson (No. 2,591,252 102(b) X
Ex. 485 ;
Greene (No. 3,749,424 102(e) x
Ex. 449)
Guiler (No. 3,345, 982 102(b) X
Ex. 434)
Haker (No. 3,821,975 102(e) X
Ex. 450)
Hayward Jet (Exhibit 102(b) ) ir eee
241)
Holt (No. 2,525,222 102(b) ».4
Ex. 424)
Jacuzzi (No. 3,297,025
Ex. 432)
Jacuzzi (No. 3,571,820
Ex. 442)
Jacuzzi Jet (Exhibit
209)
Jawett (No. 2,799,866
Ex. 426)
Kane Brochure (Exhibit
237)
Mathis Aluminum
Wrench (Exhibit 264)
Mathis Jets (Exhibits
213, 214)
Nash (No. 3,391,870
Ex. 436)
Noyes (No. 672,217
Ex. 420)
Parr (No. 1,526,179
Ex. 422)
Rudolph (No. 3,073,206
Ex. 429)
Solley (No. 2,091,167
Ex. 423)
Steimle (No. 3,628,529
Ex. 444)
Vico Model 548
Ultra Spa
Whelan (No. 1,164,561
Ex. 4&1)
Witten Jr. (No.
3,432,867 Ex. 440)
12. With the exception of the Mathis Jets and the Mathis
85a
102(b)
102(b)
102(a) & (b)
102(b)
102(a) & (b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
102(b)
X
~~ MK OK
~~ MM OM OM
aluminum wrench, all of the above references are either
stipulated or admitted to be prior art, or are patents hav-
ing the appropriate issuance or filing dates required by §
102, subsections (b) and (e). The Mathis aluminum wrench
is prior art under the “‘public use’”’ provisions of subsection
102(b). The Mathis jets are prior art under the “‘on sale”
provision of § 102(b) by virtue of their sale to Benson.
PUBLIC USE
13. Under the patent laws, an inventor is given a one-
year period for filing his patent application. The one-year
period begins to run when the inventor does certain acts,
one of which is placing the invention in public use.
14. A single use, not incidental to experiment, of a de-
vice embodying the invention by a person, other than the
inventor, where the user is under no obligation of secrecy,
can constitute a public use. Watson v. Allen, 254 F.2d 342,
345 (D.C. Cir. 1958).
15. In addition, public use includes commercial exploi-
tation by the inventor of a machine or process, even though
the machine or process is kept secret. Thus, if an inventor
secretly uses a tool (such as the Mathis aluminum wrench)
which he has invented to build or put together a product
in his factory, and sells the product, this constitutes a
public use of the tool. In re Yarn Processing Patent Va-
lidity Litigation, 498 F.2d 271, 277, 183 U.S.P.Q. 65 (5th
Cir. 1974), cert. denied, sub nom. Sauquoit Fibers Co. v.
Lessona Corp., 419 U.S. 1057 (1974), 42 L. Ed. 2d 654,
95 S. Ct. 640; Metallizing Engineering Co. v. Kenyon Bear-
ing and Auto Parts Co., 153 F.2d 516 (2d Cir. 1946), cert.
denied, 328 U.S. 840, 90 L. Ed. 1615, 66 S. Ct. 1016
(1946).
16. The Mathis aluminum wrench was in public use more
than one year before filing the application for the ‘449
patent under either of the above tests. Such public use
invalidates the patent under 35 U.S.C. § 102(b).
OBVIOUSNESS
17. Section 103 provides that, even though the invention
is not anticipated under § 102, the invention is not pat-
entable if, in view of the prior art, the invention would
have been obvious to one of ordinary skill inthe art.
Section 103 provides:
87a
A patent may not be obtained though the inven-
tion is not identically disclosed or described as
set forth in Section 102 of this title, if the dif-
ferences between the subject matter sought to be
patented and the prior art are such that the sub-
ject matter as a whole would have been obvious
at the time the invention was made to a person
having ordinary skill in the art to which said
subject matter pertains. Patentability shall not be
negatived by the manner in which the invention
was made.
18. The term “prior art”, as used in § 103, is defined
by § 102. Under § 103, however, only analogous art may
be relied upon as prior art. “If elements and purpose in
one art are so related and similar to those in another art
that the relationship would appeal to the mind of a person
having mechanical skill and knowledge of the purposes of
the other, then the arts may be said to be analogous’.
San Marino Electronic Corp. v. Geo. J. Meyer Mfg. Co.,
155 U.S.P.Q. 617, 632 (C.D. Cal. 1967) (No official report),
aff'd sub nom. Geo. J. Meyer Mfg. Co. v. San Marino
Electronic Corp., 422 F.2d 1285 (9th Cir. 1970). In affirm-
ing this case, the Court of Appeals for the Ninth Circuit
further stated that prior art “includes not only the knowl-
edge accumulated with respect to a problem in a particular
industry[,] but that accumulated in those scientific fields
the techniques of which have been commonly employed to
solve problems of a similar kind in the particular and
closely related fields.” Geo. J. Meyer Mfg. Co. v. San Mar-
ino Electronic Corp., 422 F.2d 1285, 1288, 165 U.S.P.Q.
23, 26 (9th Cir. 1970).
19. The Court of Customs and Patent Appeals has
adopted a two-step test to determine whether a reference
is analogous under § 103. The first step is to decide
whether the reference is within the field of the inventor’s
endeavor. If so, the reference is automatically considered
to form part of the prior art. If the reference is not within
88a
the field of the inventor’s endeavor, the court must de-
termine whether it is reasonably pertinent to the particular
problem with which the inventor was involved. Jn re Wood,
599 F.2d 1032, 1036, 202 U.S.P.Q. 171, 174 (C.C.P.A.
1979). Thus, the scope of the pertinent prior art is not
defined solely by the particular item of commerce or field
of use in which the patentee’s invention has particular
application. Rather, the pertinent prior art is defined in
terms of the “nature of the problems confronting the
would-be inventor,” which may include many diverse areas
of use. In re Miot-Fijalkowski, 676 F.2d 666, 669-670, 213
U.S.P.Q. 713, 716 (C.C.P.A. 1982).
20. In Graham v. John Deere Co., 383 U.S. 1, 15 L.
Ed. 2d 545, 86 S. Ct. 684 (1966), the Supreme Court
defined the test for non-obviousness:
Under § 103, the scope and content of the prior
art are to be determined; differences between the
prior art and the claims at issue are to be as-
certained; and the level of ordinary skill in the
pertinent art resolved.
383 U.S. at 17, 86 S. Ct. at 694.
21. There is no requirement that the inventor actually
know of the prior art, nor is there any requirement that
the art would have been uncovered in a patent search,
had the inventor conducted one. Rather, “[t]he issue of
obviousness is determined entirely with reference to a hy-
pothetical ‘person having ordinary skill in the art.’ It is
only that hypothetical person who is presumed to be aware
of all the pertinent prior art. The actual inventor’s skill
is irrelevant to the inquiry. . . .” Standard Oil Co. v. Amer-
ican Cyanamid Co., 744 F.2d 448, 455 (CAFC 1985) (em-
phasis in original). See also Kimberly-Clark Corp. v.
Johnson & Johnson, 745 F.2d 1437, 1449-53 (CAFC 1984).
22. Thus, “the test for patentable invention is whether
the innovation would have been obvious to a person of
89a
ordinary skill [in the art] charged with complete knowledge
of all pertinent prior developments....’’ Tveter v. AB
Turn-O-Matic, 633 F.2d 831, 834, 209 U.S.P.Q. 22, 26 (9th
Cir. 1980), cert. denied, 451 U.S. 911, 68 L. Ed. 2d 300,
101 S. Ct. 1983 (1981). The level of skill possessed by this
hypothetical person of ordinary skill is a question of fact,
but the issue of obviousness is a question of law.
23. The mere exercise of skill and ingenuity does not
meet the standard of invention even though it results in
“great convenience, producing a desired result in a cheaper
and faster way, and enjoying commercial success ....’
Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282, 47 L. Ed.
2d 784, 96 S. Ct. 1532, 180 U.S.P.Q. 449, 453 (1976). As
the Ninth Circuit Court of Appeals in Tveter v. AB Turn-
O-Matic stated:
An innovation is not necessarily patentable be-
cause it results in greater convenience and utility.
to be patentable, an innovation must embody
“invention”; and “invention” excludes adijust-
ments, alterations, and improvements that could
be expected to result from the exercise of the
skill and ingenuity of a mechanic charged with
knowledge of all that is disclosed in the prior art.
This is the exclusion expressed in Section 103’s
requirement that the innovation must not be “‘ob-
vious” to such a person. [Citation omitted.]
633 F.2d at 834, 209 U.S.P.Q. at 26.
24. It is not invention to “combine ideas or information
which are drawn from the existing fund of public knowl-
edge and which produces results that would be expected
by one of ordinary skill in the art.” Farmer Bros. Co. v.
Coca-Cola Co., 384 F. Supp. 595, 599; 184 U.S.P.Q. 587,
589 (C.D. Cal. 1974).
25. Whether the patentee has made a significant con-
tribution to the art is not determinative of patentability.
90a
The advantages of the claimed invention over the prior
art are merely secondary considerations in determining
whether the invention is obvious; they are not determi-
native. Great A&P Tea Co. v. Supermarket Equipment Co.,
340 U.S. 147, 153, 95 L. Ed. 162, 71 S. Ct. 127, 87
U.S.P.Q. 303, 306 (1950).
26. Whether or not the industry adopts the patentee’s
improvements is also not determinative of patentability.
Goldman v. Bobbins, 245 F.2d 840, 844; 114 U.S.P.Q. 137,
140 (7th Cir. 1957).
27. Each of the patents in suit are invalid under 35
U.S.C. § 103, and the independent claims of the ’655 and
"656 patent are invalid by anticipation under 35 U.S.C. §
102.
SECTION 112
28. Section 111 requires that the application for patent
shall include a specification as provided in section 112.
Section 112 provides that an inventor shall conclude the
specification ‘with one or more claims particularly pointing
out and distinctly claiming the subject matter which the
applicant regards as his invention.”
29. The requirement of clarity in patent claims is based
upon the public’s right to notice regarding potential in-
fringement. General Electric Co. v. Wabash Appliance
Corp., 304 U.S. 364, 369, 82 L. Ed. 1402, 58 S. Ct. 899
(1938).
30. In United Carbon Co. v. Birney and Smith Co., 317
U.S. 228, 87 L. Ed. 232, 63 S. Ct. 165 (1942), Justice
Jackson stated:
To sustain claims so indefinite as not to give the
notice required by the statute would be in direct
contravention of the public interest which Con-
gress therein recognized and sought to protect.
317 US. at 283.
9la
The statutory requirement of particularity and
distinctness in claims is met only when they
clearly distinguish what is claimed from what
went before in the art and clearly circumscribe
what is foreclosed from future enterprise. A zone
of uncertainty which enterprise and experimen-
tation may enter only at the risk of infringement
claims would discourage invention only a little
less than unequivocal foreclosure of the field.
317 U.S. at 236.
31. By making the claims vague and indefinite, the in-
ventor is able to broaden the claims to include devices
which he considers to be infringing, or narrow the claims
to avoid prior art, simply by interpreting the claims in the
manner best suited to extend his monopoly power. Section
112, therefore, requires the inventor to particularly point
out and distinctly claim his invention. Nelson v. Batson,
822 F.2d 182, 134, 188 U.S.P.Q. 552, 553-554 (9th Cir.
1963).
32. In the case of Application of Collier, 397 F.2d 1003,
158 U.S.P.Q. 266 (C.C.P.A. 1968), the patentee defined
his inventions in terms of a “‘crimpable’’ member, but did
not positively point out whether such member was crimped
or not crimped. The U.S. Patent Office Board of appeals
rejected the claim as indefinite under 35 U.S.C. § 112 and
the CCPA affirmed the rejection stating:
The main fault we observe in Claim 17 is indef-
initeness in the sense that things which may be
done are not required to be done. For example,
the ferrule or connector member is crimpable, but
not required, structurally, to be crimped... .
397 F.2d at 1006.
33. The ’656 patent and Claim 10 of the °449 patent
fail to satisfy the requirements of section 112, and are
therefore invalid.
>
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FRAUD AND OTHER INEQUITABLE CONDUCT
34. Inequitable conduct on the part of the applicant in
obtaining a patent may cause a court to refuse to enforce
the patent against infringing parties. Precision Instrument
Mfg. Co. v. Automotive Maintenance Machinery Co., 324
U.S. 806, 89 L. Ed. 1381, 65 S. Ct. 993 (1945). In Pre-
cision Instrument, the court refused to enforce a patent
where the patentee had failed to disclose its knowledge
that another party to an interference proceeding involving
the patent had committed perjury. Finding that the pa-
tentee “‘ha{d] not displayed the standard of conduct req-
uisite to the maintenance of [a] suit in equity,” 324 U.S.
at 819, the court dismissed the infringement action under
the equitable doctrine of unclean hands, stating that:
A patent by its very nature is affected with a
public interest.... [A] patent is an exception to
the general rule against monopolies and to the
right to access to a free and open market. The
far-reaching social and economic consequences of
a patent, therefore, give the public a paramount
interest in seeing that the patent monopolies
spring from backgrounds free from fraud or other
inequitable conduct and that such monopolies are
kept within their legitimate scope.
324 U.S. at 816.
35. One of the most frequently cited cases in this area
is Norton v. Curtiss, 483 F.2d 779, 167 U.S.P.Q. 5382,
(CCPA 1970). In Carpet Seaming Tape Licensing Corp. v.
Best Seams, Inc., 616 F.2d 1133, 1189, fn4, 206 U.S.P.Q.
213, the Ninth Circuit quoted from Norton v. Curtiss in
defining the scienter requirement in patent fraud:
[T]he procurement of a patent involves the public
interest, not only in regard to the subject matter
of the patent grant, but also in the system under
which that grant is obtained. Conduct in this area
93a
necessarily must be judged with that interest al-
ways taken into account and objective standards
applied. Good faith and subjective intent, while
they are to be considered, should not necessarily
be made controlling. Under ordinary circumstan-
ces, the fact of misrepresentation coupled with
proof that the party making it had knowledge of
its falsity is enough to warrant drawing the in-
ference that there was a fraudulent intent. Where
public policy demands a complete and accurate
disclosure it may suffice to show nothing more
than that the misrepresentations were made in
an atmosphere of gross negligence as to their
truth.
433 F.2d at 795-96 (emphasis in original).
36. The CAFC has recently clarified the concept of fraud
on the Patent Office in American Hoist & Derrick Co. v.
Sowa & Sans, Inc., 725 F.2d 1850, 220 U.S.P.Q. 763
(CAFC 1984), cert. denied, 88 L. Ed. 2d 41, 105 S. Ct.
95, 58 U.S.L.W. 3236. This decision dealt with fraud under
the patent laws as a concept distinct from common law
fraud, and established a sliding scale between intent and
the materiality of the withheld information as the appli-
cable test.
The considerations here are distinct from fraud
as a common law cause of action. In the latter
instance, it is usual that a jury can render a
verdict for plaintiff by answering affirmatively
the factual questions of (1) knowing (2) misre-
presentation or omission (3) of a material (“‘im-
portant” or “‘inducing’’) fact, (4) intent, and (5)
reliance by the party deceived (6) to his damage.
It need only answer ‘‘yes’’ to these fact questions
to find fraud.
Here, however, because an applicant’s misrepre-
sentation or failure to meet his “duty to disclose
94a
to the Office information ... which is material’
will not in itself render a patent invalid or unen-
forceable, see 37 CFR 1.56(a) and (d), “fraud”
may be determined only by a careful balancing
of intent in light of materiality.
725 F.2d at 1363-4; 220 U.S.P.Q. at 773-74.
37. Where the pertinence of the information is clear,
the applicant has no discretion to withhold it. In Monolith
Portland Midwest Co. v. Kaiser Aluminum & Chemical
Corp., 407 F.2d 228, 160 U.S.P.Q. 577 (9th Cir. 1969), the
Ninth Circuit rejected the patent owner’s excuse that its
failure to disclose prior public uses was based on a good
faith belief that they were experimental and did not differ
in kind from other uses that were disclosed. The court
responded by stating, ““Whatever theory Monolith may have
had in mind about the legal effect of the 1955 uses, it
failed to disclose openly and fully the underlying facts to
the Patent Office.” 407 F.2d at 295.
38. Failure to disclose offers for sale or public uses of
the patented invention made more than a year before the
filing date constitutes an affirmative misrepresentation,
since the declaration signed by the applicant in applying
for the patent states affirmatively that there have been
no such bars to patentability.
39. A patent applicant has a duty not only to refrain
from positive misrepresentations, but also to disclose all
material prior art known to him, especially prior art which
is more relevant than that cited and considered by the
Examiner. True Temper Corp. v. C.F. & I. Steel Corp.,
601 F.2d 495, 507-8, 202 U.S.P.Q. 412 (10th Cir. 1979).
A failure to disclose material prior art is an omission which
can also constitute fraud. Beckman Instruments, Inc. v.
Chemtronics, 428 F.2d 555, 564-65 (5th Cir. 1970), cert.
denied, 400 U.S. 956, 27 L. Ed. 2d 264, 91 S. Ct. 353.
40. The Patent Office regulations codifying the test for
materiality state:
95a
[Information is material where there is a sub-
stantial likelihood that a reasonable examiner
would consider it important in deciding whether
to allow the application to issue as a patent.
37 C.F.R. § 1.56.
41. In American Hoist & Derrick Co. v. Sowa & Sand,
Inc., supra, the CAFC adopted the Patent Office § 1.56
standard as “an appropriate starting point for any dis-
cussion of materiality, for it appears to be the broadest,
thus encompassing the others, and because that materiality
boundary most closely aligns with how one ought to con-
duct business with the (Patent Office).”’ (725 F.2d at 1363.)
As with plaintiff's patents, the patent involved in Amer-
ican Hoist was applied for before the effective date of §
1.56.
42. The CAFC went on to adopt the holding in Digital
Equipment Corp. v. Diamond, 653 F.2d 701, 210 U.S.P.Q.
521 (1st cir. 1981), that materiality was not the only con-
sideration.
Questions of ‘materiality’ and ‘‘culpability” are
often interrelated and intertwined, so that a
lesser showing of the materiality of the withheld
information may suffice when an _ intentional
scheme to defraud is established, whereas a
greater showing of the materiality of withheld
information would necessarily create an inference
that its non-disclosure was ‘‘wrongful.”’
725 F.2d at 13638, quoting 220 U.S.P.Q. at 773, 653 F.2d
at 716, 210 U.S.P.Q. at 538. Thus, where an objective
“but for” inquiry is satisfied, “although one is not nec-
essarily grossly negligent in failing to anticipate judicial
resolution of validity, a lesser showing of facts from which
intent may be inferred may be sufficient to justify holding
the patent invalid or unenforceable, in whole or in part.”
Conversely, a showing of something more than gross neg-
96a
ligence or recklessness may be required when the withheld
information is not crucial. Intent may be shown by “any
relevant degree of proof—from inference to direct evi-
dence, i.e., from gross negligence or recklessness to a
deliberate scheming.” (725 F.2d at 1363, 220 U.S.P.Q. at
778).
43. Plaintiff breached his duty to the Patent Office with
respect to the three utility patents in suit and also the
design patent by failing to disclose prior art of which he
was aware and which was more pertinent to his applica-
tions than any of the reference found by the Examiner.
The nondisclosed prior art was so material to the issuance
of the patents that the appropriate standard of intent for
fraud must be held to be gross negligence or recklessness.
For the ’655 patent, the arguments plaintiff presented to
the Patent Office, which ultimately resulted in the allow-
ance of his application, could not have been made had he
disclosed the Hayward and Jacuzzi jets; in fact, his ar-
guments show that these prior art jets were much closer
to his claimed invention than any of the cited art. The
’656 patent is invalid in view of the prior art method of
installing jets, which was known to plaintiff, and plaintiff's
own Model 548 spa, neither of which was disclosed to the
Patent Office. The materiality of this prior art can hardly
be open to dispute. For the ’499 patent, plaintiff's own
commercialization of jets and associated spanner wrenches,
as well as his undisclosed knowledge of swimming pool
construction practices, was so material as to render the
patent invalid. His undisclosed sales of jets covered by the
design patent was also sufficiently material as to invalidate
the patent.
44. The evidence of scienter was insufficient to establish
fraud in the common law sense. However, Mathis’ unex-
cused failure to disclose his knowledge of prior art that
was obviously material, and in fact invalidated all of his
patents, was a fraud on the Patent Office for each of the
four patents.
97a
45. Fraud in the procurement of a patent results in the
following consequences:
(a) The patent is invalid and unenforceable.
(b) Related patents owned by the same party which
have been litigated together with the fraudulently procured
patent are unenforceable.
(c) The case may be held ‘‘exceptional’’ under 35
U.S.C. § 285 and defendants awarded their reasonable
attorneys’ fees expended in defending an infringement ac-
tion brought on the fraudulently procured patent.
46. Fraud committed with respect to one patent renders
other related patents unenforceable where enforcement of
all of the patents is sought. The necessary relation among
patents is present where the devices covered by the var-
ious patents are important, if not essential, parts of the
same machine. Keystone Driller Co. v. General Excavator
Co., 290 U.S. 240, 78 L. Ed. 298, 54 S. Ct. 146 (1933).
The Mathis utility and design patents are so closely related
that fraud with respect to any one of them will invalidate
the others.
47. An action is “exceptional” within the meaning of
35 U.S.C. § 285 upon ‘‘a finding of unfairness or bad faith
in the conduct of the losing party, or some other equitable
consideration of similar force, which makes it grossly un-
just that the winner of the particular lawsuit be left to
bear the burden of his counsel fees. .. .”” Park-in-Theatres
v. Perkins, 190 F.2d 187, 142 (9th Cir. 1951). Fraud on
the Patent Office is clearly a sufficient basis to hold an
infringement suit exceptional.
48. The CAFC has recently confirmed its rule that “a
case under 35 U.S.C. 285 ‘may be exceptional for some
other reason than inequitable conduct during prosecution
(of the patent application),” Hughes v. Novi American, Inc.,
724 F.2d 122, 220 U.S.P.Q. 707, 710 (CAFC 1984). In
Hughes, early sales and advertising which barred the grant
98a
of a patent were brought to light seven months prior to
trial. The CAFC affirmed an award of attorney’s fees based
on both gross negligence or intentional misrepresentation
by the inventor in failing to inform the Patent Office of
the sales activity, and the persistence of the purchaser of
the patent in maintaining the litigation after it had knowl-
edge of the invalidating prior use and sale. Furthermore,
the inventor was personally held liable for attorneys’ fees
because of false interrogatory answers he filed denying
the prior public use and sale, as well as his awareness
that the defendant did not infringe. In the present liti-
gation, Mr. Mathis’ withholding of documents that proved
the invalidity of the design patent, his continuance of the
suit on the utility patents after becoming aware of the
prior art Parr patent that clearly rendered them invalid,
and his misleading “simulation” of the Parr patent all
render the case exceptional and warrant an award of
attorneys’ fees.
49. The dedication of the design patent to the public
makes the defendants prevailing parties under 35 U.S.C.
§ 285, Rotoflow Corp. v. Mafi-Trench C
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