# Appendix — Mathis v. Hydro Air Industries, Inc. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385019_0359%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1987 - **Citation:** 484 U.S. 826 ## Text 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 [Text truncated at 120,000 characters. The full text is on the page linked above.] --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385019_0359%3A2. Public record. Not legal advice.