# Opposition Brief — Block Drug Co. v. Hodosh

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1988
- **Citation:** 485 U.S. 1007

## Text

Bupreme Court, U.S,
RILBD

MAR 24 1988
No. 87-1394 _ 1088 F BEANO, mt
IN THE
Supreme Court of the United States

OcrosBer TERM, 1987

BLOCK DRUG COMPANY, INC., ET AL.,

Petitioners,
Vs .

MILTON HODOSH and RICHARDSON-VICKS INC.,

Respondents.

BRIEF IN OPPOSITION TO PETITION
FOR A WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

John O. Tramontine Hugh A. Chapin

W. Edward Bailey Paul Lempel

Norman H. Beamer William J. McNichol, Jr.

FISH & NEAVE KENYON & KENYON

Attorneys for Respondent Attorneys for Respondent
Richardson-Vicks, Inc. Milton Hodosh

875 Third Avenue 1 Broadway

New York, New York 10022 New York, New York 10004
(212) 715-0600 (212) 425-7200

oe

wes
ade

COUNTERSTATEMENT OF QUESTION PRESENTED

Did the Court of Appeals correctly hold, in answer to the ques-
tion of law certified by the District Court, that the proper focus
in determining the issue of contributory patent infringement
and patent misuse under 35 U.S.C. § 271 is on the product ac-
tually sold by petitioners and not on an ingredient of that pro-
duct alone?

STATEMENT PURSUANT TO RULE 28.1

PETITIONERS: Block Drug Company, Inc.
Block Drug Corporation
Dentco, Inc.

RESPONDENTS: Milton Hodosh
Richardson-Vicks, Inc.

Parent: The Procter & Gamble
Company

Partially owned subsidiaries:
PT. Richardson-Vicks Indonesia
Richardson Hindustan Limited
Vick Nigeria Limited

TABLE OF CONTENTS

COUNTERSTATEMENT OF QUESTION
ee oe IR S's ap dae a us ws

STATEMENT PURSUANT TO RULE 28.1...
TABLE OF CONTENTS......................
TABLE OF AUTHORITIES...................
CITATIONS TO OPINIONS BELOW ..........
STATUTES INVOLVED......................
COUNTERSTATEMENT OF THE CASE.......
SUMMARY OF ARGUMENT..................

REASONS WHY THE WRIT SHOULD NOT BE
GRANTED

A. This Court Should Not Exercise Its Certiorari
Jurisdiction To Review An Answer To A
Certified Question Of Law Before Final

SEES ie

B. The Court Of Appeals Correctly Held That
Section 271(c) Is Directed To The Product
EE SR ae a a a

1. The Plain, Unambiguous Language Of
Section 271(c) Is Conclusive And Directs
That Contributory Infringement Is
Determined By The Product Actually Sold

2. The Legislative History Of Section 271(c)
Shows An Unambiguous Congressional
Intent To Focus On The Product Actually
se tee cana 6 gidibts x oa 4 0a 9 8 oi

Page

10

iv

Page
3. The Court Of Appeals’ Answer To The
Certified Question Is Not In Conflict With
i as a a ana? bil ow ane 12
4. The Court Of Appeals’ Answer To The
Certified Question Is Not In Conflict With
Fee Pee SE Sek eee 16
I ig a Aes Go ry we eee 18

TABLE OF AUTHORITIES
Cases Page

Amer. Const. Co. v. Jacksonville Railway, 148
Oo ee SU 5 aca ON ed ee oe eee 6

Aro Mfg. Co. v. Convertible Top Co., 365 U.S.
SE EEE 5s ds oA Seok kee ees 13

Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422
(POG Res Se ko cc ee 17

B.B. Chemical Co. v. Ellis, 314 U.S. 495 (1942) . = 14, 16

Carbice Corp. v. Am. Patents Corp., 283 U.S. 27
CREE ios Sc iO ee ee eee 15

Consumer Product Safety Comm'n v. GTE
Sylvania, 447 U.S. -102 (1980)................ 9

Dawson Chemical Co. v. Rohm ¢ Haas Co., 448
Cats Ra Fr oe wa eae ee ee passim

Dr. Salsbury’s Laboratories v. I.D. Russell Co.
Lab., 212 F.2d 414 (8 Cir. 1954), cert. denied
we SEB ee Ce Sic eke Pee cae oes 16

Firemen v. Bangor & A.R. Co., 389 U.S. 327
to ene ye ee er eer a ect era 6

Gardner v. Westinghouse Broadcasting Co., 437
5; Meee eso A eee es 6

Hamilton Shoe Co. v. Wolf Brothers, 240 U.S.
ee | errr re ee ey 6

Hodosh v. Block Drug Co., Inc., 226 USPQ 645
ec ES <s-4 03S 2 vad bane eee eee 2,3

Hodosh v. Block Drug Co., 786 F.2d 1136
(Fed.Cir. 1986), cert. denied 107 S.Ct. 106
FREE bi Rela ev icdida is one ear ees 1

vi

Cases

Hodosh v. Block Drug Co., Inc., 833 F.2d 1575
(Fed.Cir. 1987) ........

Leitch Mfg. Co. v. Barber Co., 302 U.S. 458
(1938) os tS

Mercoid sti v. ei ell Co., 320 U.S. 680
(1944) . Pye. tae

Mercoid Corp. v. Mid-Continent Co., 320 U.S.
Gee SE i Scuvsweceareaeeeas cee

Morton Salt Co. v. Suppiger Co., 314 U.S. 488
(1942) . |

Motion Picture Co. v. Universal Film Co.. 243
U.S. 502 (1917) .

Oxy Metal Industries Corp. v. Quin-Tec, Inc.,
216 USPQ 318 (E.D.Mich. 1982) ....

Rex Chainbelt Inc. v. Harco Products, Inc., 512
F.2d 993 (9 Cir. 1975), cert. denied 423 U.S.
831 (1975)

Senza-Gel Corp. v. Seiffhart, 803 F.2d 661
(Fed.Cir. 1986) | 7

Shumaker v. Gem Manufacturing Co., 311 F.2d
273 (7 Cir. 1962) ere FE Mr tre

Sony Corp. v. Universal City Studios, Inc., 464
8 Se i | ey aor

Switzer Brothers, Inc. v. Locklin, 297 F.2d 39 (7
Cir. 1961)...

Page

11, 14

16

16-17

vii

Cases

Switzerland Assn. v. Horne’s Market, 385 U.S. 23
Ee Sea ons oss pie eee ieee eee aes .

United States v. Clark, 454 U.S. 555 (1982) .....
United States v. Turkette, 452 U.S. 576 (1981) ...

Watson Packer, Inc. v. Dresser Industries, Inc..
193 USPQ 552 (N.D.Tex. 1977) ...........

Other Authorities

ee SoG cn ks Sede big tee bh vekews
riers Pree er sre
EN a A ac td kupesw ae lads aka os

Hearings on H.R. 5988, H.R. 4061 and H.R.
5248 before the Subcommittee on Patents,
Trademarks and Copyrights of the House
Committee on the Judiciary, 80th Cong., 2d
ES ae a wae Sheek wees 6:

Federico, “Commentary On The New [1952]
Patent Act” (published in 35 U.S.C.A. Vol. 1
ENC 8a 0G Ba bea Ks ines Sead & eA ioe ae adie a 3

Oddi, “Contributory Infringement/Patent Misuse:
Metaphysics And Metamorphosis”, 44
Sh 2 ” ay Tf re

Page

17

passim

6, 7

ll

11-12

vill

CITATIONS TO OPINIONS BELOW

Hodosh wv. Block Drug Co., 833 F.2d 1575
(Fed.Cir. 1987)

Hodosh v. Block Drug Co., Inc., 790 F.2d 880
(Fed.Cir. 1986)

Hodosh v. Block Drug Co. , 786 F.2d 1136 (Fed.Cir.
1986), cert. denied 107 S.Ct. 106 (1986)

Hodosh v. Block Drug Co., Inc., 226 USPQ 645
(D.N.J. 1985)

STATUTES INVOLVED
35 U.S.C. § 271(c):

Whoever sells a component of a patented machine, manufac-
ture, combination or composition, or a material or apparatus
for use in practicing a patented process, constituting a material
part of the invention, knowing the same to be especially made
or especially adapted for use in an infringement of such patent,
and not a staple article or commodity of commerce suitable for
substantial noninfringing use, shall be liable as a contributory
infringer.

35 U.S.C. § 271(d):

No patent owner otherwise entitled to relief for infringement
or contributory infringement of a patent shall be denied relief
or be deemed guilty of misuse or illegal extension of the patent
right by reason of his having done one or more of the follow-
ing: (1) derived revenue from acts which if performed by another
without his consent would constitute contributory infringement
of the patent; (2) licensed or authorized another to perform acts
which if performed without his consent would constitute con-
tributory infringement of the patent; (3) sought to enforce his
patent rights against infringement or contributory infringement.

-

Te

kd ee

No. 87-1394

IN THE

Supreme Court of the United States

OcToBER TERM, 1987

BLOCK DRUG COMPANY, INC., ET AL.,

Petitioners,
vs.

MILTON HODOSH and RICHARDSON-VICKS INC.,

Respondents.

BRIEF IN OPPOSITION TO PETITION
FOR A WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT

COUNTERSTATEMENT OF THE CASE

This is a five-year old patent infringement action that has yet
to be tried. It has been to the Court of Appeals for the Federal
Circuit twice — once in 1986 when the Court of Appeals revers-
ed a summary judgment of patent invalidity; and again in 1987
when the Court of Appeals answered the question of law cer-
tified by the District Court for interlocutory appeal.’ Petitioners

' Hodosh v. Block Drug Co., 786 F.2d 1136 (Fed.Cir. 1986), cert. denied 107
S.Ct. 106 (1986).

* Hodosh v. Block Drug Co., 833 F.2d 1575 (Fed. Cir. 1987).

Block Drug Company, Inc. et al. (collectively “Block”) now seek
a Writ of Certiorari to have the appellate answer to that cer-
tified question reviewed by this Court.

Respondent Dr. Hodosh, a practicing dentist, is the inventor
and owner of U.S. Patent No. 3,863,006 (the “Hodosh patent”).
The Hodosh patent discloses and claims a superior method for
desensitizing hypersensitive teeth (Appendix, D-1).* Claim 4 of
the Hodosh patent, which is the only claim that will be asserted
at trial, claims a method of desensitizing hypersensitive teeth
by applying a non-toxic paste, i.e., a toothpaste, mixed with
1-20% potassium nitrate (Appendix, D-3).*

Respondent Richardson-Vicks Inc. (“RVI”), is the exclusive
licensee under the Hodosh patent. RVI makes and sells desen-
sitizing toothpaste containing 5% potassium nitrate under the
trademark “DENQUEL’ (Appendix, B-2 and B-4).

Block makes and sells desensitizing toothpastes containing 5 %
potassium nitrate under the trademarks “PROMISE” and
“SENSODYNE-F” (Appendix, A-3; Petition, p. 6).

Block’s PROMISE and SENSODYNE-F toothpastes, like RVI’s
DENQUEL, have been marketed as specialty products design-
ed particularly for sensitive teeth.’ Block admits that purchasers
of its toothpastes PROMISE or SENSODYNE-F directly infringe
the Hodosh patent when they use those toothpastes to desen-
sitize teeth (Appendix, A-3). Thus, the complaints of Dr. Hodosh
and RVI aver that the sale by Block of its PROMISE and
SENSODYNE-F toothpastes is contributory infringement of the
Hodosh patent under 35 U.S.C. § 27l(c), and that Block's adver-
tising and packaging of those toothpastes is active inducement
of infringement of the Hodosh patent under 35 U.S.C. § 271(b).

’ Persons suffering from hypersensitive teeth react painfully to heated or chilled
foods, citric acid or sweets or other everyday stimuli, including toothbrush
contact (Appendix, D-2, col. 1, lines 12-15),

* Potassium nitrate is an old chemical that has many other uses.

* Hodosh v. Block Drug Co., 226 USPQ 645, 656 (D.N.J. 1985).

Before RVI entered the desensitizing toothpaste market with
DENQUEL, Block enjoyed a virtual monopoly of that market
(approximately 85 to 90%) with its earlier densensitizing
toothpaste containing strontium chloride, not potassium nitrate.*
When Block became aware of the threat posed by RVI’s intent
to enter this market with DENQUEL, Block sought a license
under the Hodosh patent. RVI — attempting with its new pro-
duct to compete with Block in this market — refused to license
Block (Appendix, A-3). It is this refusal to license Block that Block
urges to be patent misuse. Nobody else has requested or has been
denied a license under the Hodosh patent.

Block moved in the District Court for summary judgment of
patent misuse. The District Court denied that motion’, holding
(Appendix, B-14):

“In sum, several issues [of material fact] are presented,
not the least of which is whether these products
[Block’s PROMISE and SENSODYNE-F toothpastes]
have a substantial use other than to infringe the
[Hodosh patent].”

Block sought to avoid this genuine issue of material fact by
arguing that under Section 271(c) the Court should not look at
whether the desensitizing toothpastes it actually sells have any
substantial non-infringing use, but rather that the Court should

* Hodosh v. Block Drug Co., 226 USPQ 645, 647 (D.N.J. 1985).

’ Previously, the District Court in denying that motion as being moot had
observed (226 USPQ at 656):

“The court notes its doubts ast whether [Block’s] product, Pro-
mise Toothpaste for Sensitive Teeth, can truly be regarded as ‘a
staple article ... of cgmmerce suitable for substantial noninfring-
ing use, . . . . Indeed, the evidence before the court tends to con-
firm the fact that [Block’s] toothpastes have been marketed as
specialty products designed particularly for sensitive teeth, and
that they have been priced, and regulated, accordingly. At most,
therefore, an issue of fact appears to exist regarding whether there
is a substantial use for [Block’s] product that would not infringe
plaintiffs’ patent were it valid.”

_

look only to the ingredient potassium nitrate which as a staple
has many other uses. Block made this argument notwithstand-
ing the fact that it does not sell potassium nitrate by itself as
a staple. The District Court and Court of Appeals for the Federal
Circuit unanimously rejected Block’s argument, holding that
Section 27l(c) requires the Court to focus on the product ac-
tually sold by Block.

SUMMARY OF ARGUMENT

The Petition should be denied because it seeks review of the
answer by the Court of Appeals to a certified question of law
from an interlocutory order denying summary judgment. Block’s
Petition for review before final judgment is contrary to this
Court’s long standing policy of not issuing a writ of certiorari
before final judgment except in extraordinary cases.

The Petition should be denied because the Court of Appeals
correctly held that Section 271(c) is directed to the product ac-
tually sold by the alleged contributory infringer. That decision
carefully reviewed and is consistent with the plain language of
Section 271, its legislative history, and this Court’s prior deci-
sions including Dawson Chemical Co. v. Rohm & Haas Co.,
448 U.S. 176 (1980). It is also consistent with the decisions of
other Courts of Appeals.

REASONS WHY THE WRIT SHOULD NOT BE GRANTED

A. This Court Should Not Exercise Its Cer-
tiorari Jurisdiction To Review An Answer
To A Certified Question Of Law Before
Final Judgment

As this Court often has observed, federal law expresses a policy
against piecemeal appeals. Gardner v. Westinghouse Broad-
casting Co., 437 U.S. 478, 480 (1978); Switzerland Assn. v.
Horne’s Market, 385 U.S. 23, 24 (1966). Consistent with that
statutory policy, this Court has declined to issue writs of cer-
tiorari before final judgment except in extraordinary cases.
Firemen v. Bangor & A.R. Co., 389 U.S. 327, 328 (1967);
Hamilton Shoe Co. v. Wolf Brothers, 240 U.S. 251, 258 (1916):
“except in extraordinary cases, the writ is not issued until final
decree.” To like effect is Amer. Const. Co. v. Jacksonville
Railway, 148 U.S. 372, 384 (1893): “this court should not issue
a writ of certiorari to review a decree ... on appeal from an in-
terlocutory order, unless it is necessary to prevent extraordinary
inconvenience and embarrassment in the conduct of the cause”.

Block has failed to make any showing that this is an extraor-
dinary case or that proceeding to final judgment in the District
Court would cause extraordinary inconvenience or embarrass-
ment in the conduct of this case. For that reason alone, the writ
should not be granted.

B. The Court Of Appeals Correctly Held
That Section 271(c) Is Directed To The
Product Actually Sold

Congress in enacting Sections 271(c) and (d) drew a clear line
between contributory infringement and patent misuse. As this
Court observed in Dawson Chemical Co. v. Rohm & Haas Co.,
448 U.S. 176, 198, 200 (1980):

“If both the patent misuse and contributory infringe-
ment doctrines are to coexist, then, each must have

some separate sphere of operation with which the
other does not interfere.

* * *

“The approach that Congress took toward the
codification of contributory infringement and patent
misuse [in 35 U.S.C. §§ 271(c) and (d)] reveals a com-
promise between those two doctrines and their com-
peting policies that permits patentees to exercise con-
trol over nonstaple articles used in their inventions.”

Thus, if Block is a contributory infringer under Section 271(c),
there can be no patent misuse because Section 271(d) would
authorize (1) Dr. Hodosh’s grant of an exclusive license under
his patent to RVI, (2) RVI’s sale of its DENQUEL product, and
(3) RVI’s right to refuse to license Block under the Hodosh
patent.®

The issue on the summary judgment motion, which was
denied by the District Court, was whether Block was selling a
staple or a nonstaple under Section 271(c). The Court of Ap-
peals correctly held, as did the District Court, that the proper
focus in determining that issue is on the product actually sold
by Block and not on the potassium nitrate ingredient of that
product.°

* Dawson made clear that Section 271(d) authorizes refusals to license others
to perform acts which constitute contributory infringement. 448 U.S. at 214-15,
223. Block improperly suggests (Petition, pp. 10, 11) that the force of this
precept set down in Dawson should somehow be discounted because it was
decided by a 5-4 majority of this Court.

* Block improperly raises other questions that were not certified to or answered

by the Court of Appeals and will be determined by the District Court on re-

mand, e.g., Block’s contention (Petition, pp. 4-5, 11) that the “nontoxic paste”

of its product is merely an “inert diluent” (it is not), Block’s contention (Peti-

tion, pp. 7, 16-18) that “inert diluents” or the like can never be considered

in the staple/nonstaple determination (there is no such rule of law), and Block’s
contention (Petition, p. 15) that such facts as pricing, marketing and consumer

¥ preferences are mere “marketplace expedients” which should be ignored in
(Footnote continued)

2

There can be no doubt that one who merely sells the staple
chemical potassium nitrate would not infringe " or contributori- _
ly infringe the Hodosh patent and to attempt to license or en-
force the Hodosh patent against such a person would be misuse.
That person is not Block, but is the company that sells potassium
nitrate to Block" Block does not sell the staple chemical
potassium nitrate. Block sells its especially formulated desen-
sitizing toothpastes that contain potassium nitrate as an ingre-
dient and, if its desensitizing toothpastes are nonstaples, Block
is a contributory infringer of the Hodosh patent. Dawson, supra,
448 US. at 186 n.6.

Nor can there be any doubt that the patent misuse doctrine
evolved at least in part to foster competition. It is noteworthy
that here the only request for a license under the Hodosh pa-
tent came from Block who enjoyed a virtual monopoly of the
desensitizing toothpaste market (approximately 85 to 90%)
before RVI entered that market with its new product DEN-
QUEL. Block by requesting a license under the Hodosh patent
implicitly recognized that it was not selling a staple because if
it were, it would not need such a license. In fact, if Block were
selling a staple, the grant of a license to Block under the Hodosh
patent could constitute patent misuse. Switzer Brothers, Inc.
v. Locklin, 297 F.2d 39 (7 Cir. 1961).

the staple/nonstaple determination. Such marketplace facts are material to
the requirement that, to be a staple, the product sold must have an actual,
commercial noninfringing use. As this Court said in Dawson (448 U.S. at 184),
“a ‘nonstaple article [is] one that has no commercial use except in connection
with [the] patented invention.”

” Assuming that no active inducement of others to infringe took place.

" No attempt has been made to license or enforce the Hodosh patent against
that supplier.

2 Block has no support in the record for its statement (Petition, pp. 3, 6) that
Hodosh or RVI “refus{ed] to license the patented method unless the licensee
also purchased RVI’s unpatented toothpaste.” That statement is factually in-
correct. Nobody other than Block has ever requested or been refused a license
under the Hodosh patent.

Block has no basis for its assertion that the Court of Appeals’
decision “significantly expands a natentee’s monopoly” (Petition,
p. 7). In answering the certified question, the Court of Appeals
correctly looked to the plain language of Section 271 (Appen-
dix, A-5, A-6) as well as its legislative history (Appendix, A-6,
A-7). The Court of Appeals also correctly considered Dawson
and other prior decisions of this Court," as well as decisions of
other Courts of Appeals (Appendix, A-7 through A-9).

1. The Plain, Unambiguous Language
Of Section 271(c) Is Conclusive And-
Directs That ContributoryInfringe-
ment Is Determined By The Product
Actually Sold

The answer to the certified question turns on the construc-
tion of Section 27l(c). As this Court stated in Dawson, supra
(448 U.S. at 187):

“It is axiomatic, of course, that statutory construc-
tion must begin with the language of the statute itself.”

The Court of Appeals started there, found no ambiguity in that
statute (Block points to none) and held that its plain wording
refuted Block’s argument (Appendix, A-4 through A-6). This was
the correct approach. “If the statutory language is clear, it is
ordinarily conclusive.” United States v. Clark, 454 U.S. 555, 560
(1982); United States v. Turkette, 452 U.S. 576, 580 (1981); Con-
sumer Product Safety Comm'n v. GTE Sylvania, 447 U.S. 102,
108 (1980).

Section 271(c) unambiguously states that it is the material sold
which controls in applying that statute. Applying the language
of that statute to this case:

'’ It is not true that the Court of Appeals “discarded” (Petition, p. 10) these
decisions — the Court of Appeals correctly concluded that they did not answer
the certified question (Appendix, A-8, A-9). In other circumstances, the Court
of Appeals has not hesitated to apply this Court’s authorities on patent misuse.
Senza-Gel Corp. v. Seiffhart, 803 F.2d 661, 665 (Fed.Cir. 1986).

10

“Whoever [Block] sells . . . a material [Promise and
Sensodyne-F toothpastes] . . . for use in practicing a
patented process [Hodosh patent Claim 4], con-
stituting a material part of the invention [potassium
nitrate mixed with a nontoxic paste as called for by
Claim 4], knowing the same to be especially made or
especially adapted for use in an infringement of such
patent [Block labels and promotes those toothpastes
as ‘toothpastes for sensitive teeth’ and knew of the
Hodosh patent before it began selling those
toothpastes], and not a staple article or commodity
of commerce suitable for substantial noninfringing use
[the genuine issue of fact found by the District Court],
shall be liable as a contributory irfringer.”

The plain words of the statute require the Court to focus on
what is actually sold and the Court of Appeals correctly rejected
Block’s argument to the contrary.

2. The Legislative History Of Section
27l(c) Shows An Unambiguous
Congressional Intent To Focus On
The Product Actually Sold

The Court of Appeals also looked to the legislative history
of Section 27l(c) and found that it confirmed the Court’s con-
struction of that statute: “The legislative history of § 271(c) is
in complete agreement with reliance on the plain wording of
the statute” (Appendix, A-6).

Section 271(c) was enacted as part of The Patent Act of 1952
— the result of an effort of over four years to reform the patent
laws. The title of the bill originally proposed in 1948 was, “A
Bill to Provide for the Protection of Patent Rights Where En-
forcement Against Direct Infringers Is Impracticable, To Define
Contributory Infringement And For Other Purposes”. As Mr. Giles
Rich (one of the principal authors of the Act, and now a Judge
of the Court of Appeals for the Federal Circuit) testified, this
bill (similar to Section 271(c) as eventually enacted) was intended

ll

~

to offset the perceived effect of Mercoid Corp. v. Mid-Continent
Co., 320 U.S. 661 (1944) and Mercoid Corp. v. Honeywell Co.,
320 U.S. 680 (1944), ie., that the Mercoid decisions “destroyed
{the contributory infringement] doctrine” (Rich, Hearings on
H.R. 5988, H.R. 4061 and H.R. 5248 befor the Subcommittee
on Patents, Trademarks and Copyrights of the House Commit-

~ tee on the Judiciary, 80th Cong., 2d Sess., pp. 4-5 (1948)). Mr.
Rich explained (id.):

a Boothe

“The decisions prevent the patentee from obtaining
relief against the person who is guilty of causing in-
fringement of the patent and leave him only the right
to recover against innocent members of the public who
have been induced to use the patented process. Thus,
the effect of the decisions is to protect the guilty and
encourage suits against the innocent. As a practical
matter, no patentee can afford to attempt to protect
his invention by suing all the innocent members of the
public who have been induced to use it.”

The Court of Appeals also relied (Appendix, A-6) on Mr. P.
J. Federico, another of the principal authors of The Patent Act
of 1952, citing his Commentary On The New [1952] Patent Act
(published in 35 U.S.C.A. Vol. 1 (1952)), p. 53, which states:

“Paragraph (c) [of Section 271] deals with what the
Committee Report characterized as ‘the usual situa-
tion in which contributory infringement arises. Con-
tributory infringement under this paragraph requires
the presence of the following factors:

“1. The thing sold must be ‘a component of a
patented machine, manufacture, combination or com-
position, or a material or apparatus for use in prac-
ticing a patented process.’ The thing sold is presumably
not itself patented since if it were patented the ques-
tion of contributory infringement, as distinguished

ee

12

from direct infringement, would scarcely arise and the
paragraph would have little or no apparent purposes.”

“2. The thing sold must constitute a material part
of the invention, that is, of the patented invention.

“3. The thing sold must be especially made or
especially adapted for use in an infringement of the
patent.

“4. The seller must have knowledge of factor three.

“5. In addition the thing sold must not be ‘a staple
article or commodity of commerce suitable for
substantial noninfringing use. ” (Emphasis supplied.)

Thus, the legislative history of Section 27l(c) confirms the
meaning of the plain language of that statute — the focus is
on the product actually sold.

3. The Court Of Appeals’ Answer To
The Certified Question Is Not In
Conflict With Dawson

In urging that the proper focus for the staple/nonstaple deter-
mination be on potassium nitrate alone, Block ignores the plain
language of Section 271(c) and its legislative history. Block in-
stead argues that this Court in Dawson narrowly defined
nonstaples, placing principal reliance (Petition, p. 10) on a quota-
tion from that decision (448 U.S. at 213):

“(Bly enacting §§ 271(c) and (d), Congress granted
to patent holders a statutory right to control nonstaple
goods that are capable only of infringing use in a

“ Thus, Block's emphasis (Petition, pp. 5-6) on the fact that the composition
claims on potassium nitrate toothpaste were rejected and then abandoned is
misplaced. In Dawson, supra, for example, the substance propanil itself had
been found unpatentable. as anticipated, in prior litigation (448 U.S. at 181-82).
That did not prevent propanil from being a nonstaple insofar as contributory
infringement of the method patent was concerned.

13
|

patented invention, and that are essential to that in-
vention’s advance over prior art.”

er ay

From this passage, Block argues (Petition, p. 12) that the pro-
per focus for the staple/nonstaple determination is on the “heart”
or “essential” of the invention.’ In rejecting Block’s reliance on
Dawson as “misplaced” (Appendix, A-7), the Court of Appeals
explained (id.):

“Contrary to Block’s protestations, the Court in
Dawson did not address any question of whether
courts, when making the staple/nonstaple determina-
tion, should look to the product actually sold or to
a mere ingredient in that product. Similarly, Block’s
argument that the court in Dawson looked to the
‘essence’ or ‘essential’ of the claimed invention when
it referred to ‘propanil’ instead of ‘propanil mixed with
an inert diluent’ is unfounded. Both parties sold the

‘Ss This Court in Aro Mfg. Co. v. Convertible Top Co., 365 U.S. 336 (1961),
rejected the approach of focusing on an alleged “heart” of the invention and
ignoring other material elements of the claimed invention in determining in-
fringement in the context of the “repair-reconstruction” doctrine.

Block has seized (Petition, pp. 5, 12) upon the following statement made
by the Court of Appeals on the first appeal in reversing the District Court's
summary judgment of invalidity of the Hodosh patent (Hodosh v. Block Drug
Co., 786 F.2d 1136, 1143 (Fed.Cir. 1986)):

“Dr. Hodosh’s invention was the discovery of an apparently
superior desensitizing agent and he never thought it was a
toothpaste formula.” (Emphasis in original.)

But on the first appeal, the Court of Appeals did not have before it any issue
of contributory infringement (or patent misuse). The Court of Appeals did
not imply in any way that the nontoxic toothpaste component of the material
actually sold by Block “has nothing to do with the inventive concept” (Peti-
tion, p. 5) in determining contributory infringement. Block’s strained con-
struction flies in the face of the very principle that motivated the Court of

~ Appeals’ original observation -- focusing only on potassium nitrate is to ig-
nore the invention as a whole. Hodosh, supra, 786 F.2d at 1143 n.5.

SSS

14

same product and Dawson conceded that the product
actually sold was a nonstaple article. Hence, the Court
had no need to, and did not answer the question here
certified.”

The passage from Dawson on which Block relies simply refer-
red to the requirement of Section 271l(c) that the material ac-
tually sold must not be “suitable for substantial noninfringing
use” and must be “a material part of the invention.”

Rather than construing the scope of Section 271(c) narrowly
or broadly, this Court in Dawson specifically stated (448 U.S.
at 219):

“{S]ince petitioners have conceded contributory in-
fringement for the purposes of this decision, the scope
of that subsection is not directly before us.”

This concession by petitioners’ in Dawson included a stipula-
tion that propanil was a nonstaple. 448 U.S. at 185-86. There
was no reason for this Court to have addressed the issues now
raised by Block concerning the proper focus for the
staple/nonstaple determination.

Thus, this Court’s decision in Dawson provides no support
for Block.” To the contrary, in Dawson, after a thorough

‘° The desensitizing toothpastes sold by Block are a material part of the inven-
tion of Claim 4 of the Hodosh patent, i.e., “potassium nitrate mixed with a
nontoxic paste.” In any event, the Court of Appeals specifically stated that
this issue was not before it (Appendix, A-7 n.12).

'’ Nor do the pre-1952 decisions of this Court support Block. Block improper-
ly states that “[t]he Federal Circuit refused to consider these cases, stating
that they are unpersuasive because ‘the court spoke before the advent of §
271’ ” (Petition, p. 13). This is a gross distortion of what the Court of Appeals
said (Cf. Appendix, A-8, A-9). That was only one of a number of reasons given
by the Court of Appeals and would apply only to the Mercoid decisions of
this Court, and B. B. Chemical if construed as involving a nonstaple.
(Footnote continued)

15

discussion of the contributory infringement/misuse case law and
the legislative history of Section 271, this Court concluded (448
U.S. at 203):

“In our view, the relevant legislative materials abun-
dantly demonstrate an intent both to change the law
and to expand significantly the ability of patentees
to protect their rights against contributory infringe-
ment.” (Emphasis supplied.)

Block’s “advance over the prior art”, i.e., “essence” or “heart”
of the invention, theory (Petition, p. 12) would be a contrac-
tion of the protection against contributory infringement afforded
patentees by Section 271(c) and thus contrary to the intent of
Congress in enacting that statute."

In addition, this Court observed in Dawson (448 U.S. at 188):
“(T]he contributory infringement doctrine. . . . ex-

ists to protect patent rights from subversion by those
who, without directly infringing the patent

The Court of Appeals also said that in most cases, the materials actually
sold were themselves found to be staples. This was the case in Carbice, 283
U.S. at 29, and in Leitch, 302 U.S. at 460. In both Motion Picture and Mor-
ton Salt, the products actually sold were supplies which were not a “material
part of the invention”, i.e., the supplies were not an element of the claimed
inventions.

Block’s reliance on the post-Dawson, Sony case is also misplaced. In Sony,
this Court held that the record supported a finding that t!.ere was “signifi-
cant” noninfringing use for the Betamax (the accused article). 464 U.S. at 442.

‘* The commentator on which Block relies (Petition, pp. 10 n.4, 15 n.9) con-
cedes that Block’s interpretation of Dawson would be “a significant limita-
tion which may not have been previously apparent ... imposed upon the doc-
trine of contributory infringement” and would turn contributory infringe-
ment into “an exceedingly restrictive tort”. Oddi, “Contributory Infringe-
ment/Patent Misuse: Metaphysics And Metamorphosis,” 44 U.Pitt.L.Rev.
73,85,127 (1982).

i

16

themselves, engage in acts designed to facilitate in-
fringement by others. This protection is of particular
importance in situations ... where enforcement against
direct infringers would be difficult, and where the
technicalities of patent law make it relatively easy to
profit from another’s invention without risking a
charge of direct infringement.”

Blcck markets PROMISE and SENSODYNE-F for no purpose
other than to profit from sales of these products to persons with
hypersensitive teeth who, in using those products, directly in-
fringe the Hodosh patent. It would be a practical impossibility
for RVI or Dr. Hodosh to monitor direct infringement carried
on by persons with hypersensitive teeth in the privacy of their
homes. The Court of Appeals observed (Appendix, A-6) that
Congress in enacting Section 271 (c) explicitly recognized that
without protection from contributory infringement, owners of
method patents, like respondent here (Appendix, A-6 n.11),
would have no effective protection.

4. The Court Of Appeals’ Answer To
ere The Certified Question Is Not In
Conflict With The Ninth Circuit

Block relies upon the Ninth Circuit’s decision, Rex Chainbelt
Inc. v. Harco Products, Inc., 512 F.2d 993 (9 Cir. 1975), in the
hope of finding a conflict between the Circuits. But in that case,
the Ninth Circuit declined to reverse the District Court’s finding
of fact that the material actually sold — epoxy resin in “extended”
form with inert “fillers’"— was a staple (512 F.2d at 998, 1000 n.1).”

Thus, Block’s quotation (Petition, pp. 9, 15) from B.B. Chemical, for the
proposition that “the most convenient way of exploiting a patent” and
“marketplace expedients” are irrelevant, must be leavened by these practical
considerations expressed in Dawson.

* The other cases cited by Block (Petition, p. 16 n.10) are distinguishable on
the same ground. In Dr. Salsbury’s, the material actually sold by the accused
contributory infringer was.“3-nitro” in powdered or tablet form, which the
Court found was a staple. In Oxy Metal, the Court found that certain packaged
blends of staple chemicals that the accused contributory infringer actually

(Footnote continued)

a Ac

Even if the product actually sold in Rex Chainbelt had not
been a staple, it is questionable whether this would present a
conflict between Circuits, given the fact that the Court of Ap-
peals for the Federal Circuit was vested by Congress with na-
tionwide and exclusive jurisdiction in patent appeals” so as to
achieve uniformity in patent law,” and given the fact that the
Ninth Circuit’s decision in Rex Chainbelt preceded the forma-
tion of the Federal Circuit. It is submitted that the District
Courts in the Ninth Circuit now would follow the Federal Cir-
cuit’s decision in this case if the product actually sold in Rex
Chainbelt had not been a staple.

sold were themselves staples and that “the patents at issue do not call for the
addition of specific blends of ingredients, but rather the individual chemicals
themselves” (216 USPQ at 324).

Block does not address the nonstaple cases cited by the Court of Appeals
(Appendix, A-5): Shumaker v. Gem Manufacturing Co., 311 F.2d 273 (7 Cir.
1962); Watson Packer, Inc. v. Dresser Industries, Inc., 193 USPQ 552, 561
(N.D.Tex. 1977).

t 28 U.S.C. §§ 1292(c), 1295.

2 Atari, Inc. v. JS & A Group, Inc., 747 F.2d 1422 (Fed.Cir. 1984).

18

CONCLUSION

It is respectfully submitted that Block’s Petition should be
denied.

Respectfully submitted,

JOHN O. TRAMONTINE HUGH A. CHAPIN
W. EDWARD BAILEY PAUL LEMPEL
NORMAN H. BEAMER WILLIAM J. MCNICHOL, JR.

FISH & NEAVE KENYON & KENYON

Attorneys for Respondent Attorneys for Respondent
Richardson-Vicks Inc. Milton Hodosh

875 Third Avenue 1 Broadway

New York, New York 10022 New York, New York 10004
(212) 715-0600 (212) 425-7200

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385019_1376%3A2. Public record. Not legal advice.