Appendix — Harvest Brand, Inc. v. A. E. Staley Manufacturing Co.

Supreme Court brief1972

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APPENDIX A ~

Opinion Below of the District Court

In the United States Distriet Court —

for the District of Katisas

A. K. Staley Manufacturing Com- >

‘pany, a Corporation of Delaware,

Plaintiff,

VS, ae ;

- Civil Action

, | a No. IKXC-2588

_ Harvest Brand, Ine., d/b/a Stock-

ade Products, a Corporation of

IXansas,

~ Decision of the Court

(Filed October 13, 1970)

Findings of Fact

aA. Plaintiff is A. KL Staley Manufacturing Company,

a Delaware corporation, with its principal place of busi-

ness in’ Deeatur,-Ilinois. Defendant is Harvest Brand,

Inec., d/b/a Stockade Products, with its principal place

of business in Pittsburg, Kansas, .

2. Pursuant to 28 U.S.CLA, $1538, this Court is vested

with jurisdiction over the subject matter and the parties -

to this action,

3. This action involves United States Letters Patent No.

3,246,336, which was issued April 12, 1966, upon the -ap--

plication. of Lester” Baribo, Marvin W. Porter, Almerit —

W. Turner, and Kenneth N. Wright, said, application hav-

ing been filed on April 8, 1963. This pateiit will herein:

‘2 one —Defendant,} — Cia a

— A-2—

after be referred to as the “Staley patent,’’.in that. it

was assigned by the applicants to the plaintiff, and has

been owned by the plaintiff since its issuance,

4. The patent in issuc is directed to a feed block com-

position and js.entitled ** Molasses -) Blocks and Method

of Preparation and Use’? (Pf, Ex

5. More’ specifically, the contested patent has eleven

claims of which claims 1-3 and 5-11 are iy dispute. These

claims not only specify variations on a recipe for an

animal feed block, but also prescribe a method of making

the block and of feeding the block, The precise claims

- with which this action is Concerned are:

“1. An animal feed block characterized by its re- .

sistance to weathering comprising from about 5- to

about 40°; sodium chloride by weight, based on the

weight of the block, and dehydrated molasses, the

whole being bonded by a wet binder, the equivalent

amount’ of molasses in the block being not less than

DOG

460 -

An animal feed block characterized -by its re-

sistance to weathering comprising from about 5 to

about 40° by weight sedium chloride, from about

1 to about 40 by weight of a material selected from

the group consisting of -edible mineral oil and edible

fat, the weights based on the weight of the block,

and dehydrated molasses, the whole being bended by .

a wet binder, the equivalent * amount of molasses in

the block being not less than 0%.

“3. The article of claim 2 ee the wet binder

is wet molasses,

**5. The article of claim 2 wherein the amount of salt

ranges from about 5 to about 20%.

sin MB on

“6. An animal feed -in block form characterized by

“its resistance to weathering comprising from about

15 to. about 234 by weight sodium chloride, from

about 70: to about 77% by weight dehydrated molasses,

‘the said dehydrated molass:. having a molasses’

equivalent ranging from about 85 to about 90%, and

from about 1 to about 4% by weight edible fat, the

_ whole being bonded by from about 5 to about 12%

by weight of a wet binder, all weight benig based | on

the weight of the block.

: 7. The article of ‘dain 6 wherein the amount of wet

binder ranges from ‘about 7 to about 9%.

“8. The article of claim 7 _ whe ‘rein the wet binder

is wet molasses, .

“9 A palatable animal feed block characterized by

its resistance to weathering comprising from abont

& to about 40% by weight sodium chloride, from

about 1 to about 4% by weight of a material selected

from the group consisting of edible mineral oil and

edible fat, dehydrated molasses ane) a’ horn fly con-

trolling amount of phenothiazine, the whole being

bonded by a wet binder, the ¢ vavalent amount of

molasses’ in the block being ». . less than 50%.

10. A method. for preparing an animal feed having

a molasses equivalent of not less than 50% and char-

acterized by -its resistance to weathering which com-

prises compressing in block form a mixture of mo-

lasses in a concéntration sufficient to provide a

molasses equivalent of not less than 50% vomprising

dehydrated molasses, from about 5 to about 40% by

weight sodium chloride, from about 5 to about 12%

by weight of a wet binder to form a block, all of said

weight being based on the weight of the block.

“11. A. method for controlling the consumption of

molasses in cattle to a level not in excess of- one

a Ww eee

pound per day which comprises feeding eattle an

animal feed block comprising from about 5 to about

40% by weight sodium chloride and dehydrated mo-

lasses, bonded by a wet binder, the equivalent amount

of molasses in thie bluck being not less than 50%.”’

_ 6. The foregoing claims reveal a total of six ingredient

sodium chloride; dehydrated molasses; mineral oil; edible

fat; wet molasses; and phenothiazine. None of these in-

gredients were, in facet, invented by Staley, and all of

- them were known in the prior art. (Tr. 742; Def. Ex, M-

Doe. (, G, L, R, S, T, U; Tr. 412-20; 442-50.) —

et Poloxsalene, a bleat-control drug, ix not disclosed in

the Staley patent. (Tr. 986-87.) While the specification

of the Staley patent does reveal a constituent called di-

methylpolysiloxene, it ix not synonymous with poloxalene,

nor is it presently considered an anti-bloat .drug. (Tr.

987)

8. The United. States Patent Office considered three

previous patents before issuing the Staley patent. These

were the Schreiber patent, No. 1,638,963: a Canadian pat-

ent, No. 624,812; and a British patent, No. 297,250. (Pit.

Ex. 2; Def. Ex. M—Doe. W, . <> oe

-% At trial, the defendant introduced into evidence six-

teen other previous. patents and two other publications.

(Def. Ex. M.) Plaintiff introduced into evidence five addi- .

tional patents and two additional publications. (PIf. Ex.

50-54; Pif. Ex. 44, 47.) .

10.°The concept of animal feed-in the form of a block

is old in the prior art. This is clearly evident fron

Knapheide patent, No. 2,124,950, and an Australian pat-

ent, No. 205,187. (Def. Ex. M—Doe. S, T; Plf.. Ex. 2.)

Block-making equipment- was also known in the prior art.

(Def. Ex. M—Doe. Z; Pif. Ex. 2.)

— A-d — .

11. Both. the prior art and evidence adduced at trial

reveal that molasses is a valuable animal feed in that it is

highly palatable, has a large amount of fermentable car-

bohydrates which provide a ready energy source, and

contains trace minerals such as iron and potassium. It is

- particularly valuable in ruminants such as cattle because

it aids in their digestion of roughage. (Tr. 190-196; Def.

Ex. M—Doe. C, G.)

12. Conversely, the prior art and evidence also. show

that molasses presents many problems in that it is difficult

to transport, store, handle and feed. It is sticky at nor-

mal temperatures, viscous at lower temperatures, and is

hygroscopic, i.c., tending to absorb and retain moisture.

Further, molasses, if over-consumed by ruminants, is detri-

mental to the digestive process. (Tr. 190-196; 268; Def.

Ex. M—Doc. F, G, M, 8S, T.)

13. The three ingredients called for by claim 1 of the

Staley patent are dehydrated moiasses, a wet binder, and

5 to 40% sodium chloride. The claim also states that the

equivalent amount of molasses is not less than 50%.

14. Dehydrated molasses is a carrier plus wet molasses

that have been mixed and dried. Dehydrated molasses

is Old in the prior art. (Tr. 83, 742:. Def. Ex. M—Doe. B,

_D, E, F, G) | ats, |

15. Several prior art items reveal animal feed which -

contained a high proportion of molasses. For example,

Svenska patent, No. 521,332, discloses that ‘molasses is

mixed with artificially dried hay meal substantially ina

proportion of at least 53: parts by weight of molasses to

47 parts by weight of hay meal ... It is possible fo go as

far as to about 75 to 80 parts by weight of molasses and

25 to 20 parts by weight of hay meal. . .”? (Def. Ex. M—

Doc. G.)

ees es

~ 16. Other prior art items which disclose animal feed

containing high proportions of molasses are Hughes, No.

24,113 and Kupfer, No. 28,703. (Def. Ex. M—Doe. E, R‘)

17. The use of a wet binder, and particularly molasses,

is also disclosed in the prior art. Such may be found in

these patents: Gunesch, No. 3498, and .Knapheide, No.

2,124,950. (Def. Ex. M—Doe. Q, 8.)

18. Evidence adduced at trial -also’ revealed ‘that wet

molasses is, and was previous to’the Staley patent, a com-

mon wet binder in the industry, (Tr. 218-219, 247, 414,

513.) _ ,

19. Sodium chloride, otherwise known as ordinary salt,

was included in the blocks of the Staley patent for the

purpose of controlling consumption of the blocks. (PIf.

Ex. .2.) |

20. In 1957 the defendant registered one of its products,

a protein block, with the State of Kansas. That block

contained no more than 13% salt for the following purpose, -

as was stated on the block's labe!:

“The consumption of Stockade Protein Supplement

Blocks is controlled primarily by the amount of salt

contained.in the block. This gives the advantages of

daily feeding without the necessity of daily attention.

It will probably be necessary to replace blocks about

every ten days.” (Def. Ex. G, H.)

21, A similar block of the defendant, confaining salt

for the identical reason as outlined in Finding: 20, was

also registered in Oklahoma in 1957. (Def. Ex. I, J.)

22. In plaintiff's advertising of its “Sweeétlix” blocks,

the following statements were made:

-“Consumption rate is steady, low, efficient . . . because

it is controlled by salt. This has been an effective

type of control in protein blocks for many years.”

_ (Def. Ex. M-Doe. O.)

and 4 .

“High levels of salt (as high as 33%) are being used

~ successfully and economically in controlling the ‘eon- °

sumption rate of protein blocks under many feeding

conditions. Now, the concept of using salt has been

extended to controlling of a high level molasses block.”

(Def. Ex. M-Doe. P.).

— 23. This evidence, when put in juxtaposition with the

statement of the witness-patentee Porter to the effect that

the idea of salt “evolved” out of joint discussions which

the four patentees conducted, severely diminishes the

eredibility of Porter and, furthermore, in view of this,

the Court is reasonably convinced of the accuracy of the

defendant’s contention that. the addition of salt to control

consumption was old and had been taught in the prior

art. (Tr. 103.)

24. The concept of salt as’a controlling constituent in

an animal's diet in order to obtain fairly constant daily’

rations of other diet supplements is revealed in the Dunn

patent, No, 2,489,758. (Def. Ex. M-Doe. L.)

25. The concept of salt in high concentrations as an .

ingredient in range supplemental feeds such as protein,

and thereby regulating intake and making self-feeding

possible, was revealed in an article published by the Uni-

versity of Arizona in Rig and in another article appear:

ing in the Salt Digesttin 1956. (Def. Ex. M-Doe. M, N.)

26. Elsewhere in the record there appears additional

Sand substantial evidence to the effect that salt was known

to control the intake of dietary supplements and drugs ;

prior to 1960 and as early as 1934. (Tr. 218, 247-248, 404,

745.) ;

— A-8 —

27. The defendant itself had made blocks for. use in

the cattle-feed industry as early as 1956. Different ones

of those blocks contained, among other things, dehydrated

molasses, liquid molasses, salt, oil, fat and phenothiazine.

Defendant also made blocks of dehydrated molasses with

liquid molasses as a wet binder, (Tr, 412-422; 442-450.)

28. By admission of counsel for plaintiff, the -particular

form or shape of the subject matter in the patent in ques-

tion has no significance over any other shape or form

except for the fact that (1) this particular subject matter

did set up in-block form, and (2) a block form provides

certain advantages as are described in the Staley patent.

(Tr. 910.)

29. The size and shape of the block is of*little signficance

in the Staley patent. (PIf. Ex. 2.), Neither is it of special

significance that the subject matter is called a “block,” .

“eake,” “briquette,” or “tablet.” (Wright Dep. pp. 148-149,

158, 223-225.)

30. The prier art ‘is replete with items having high .

proportions of dehydrated ‘molasses in the shape of

briquettes and cakes. This is revealed in the’ Svenska

patent, No. 521,552; Dupire patent, No. 713,620; Hughes

patent, No. 24,113; Hughes -patent, No. 707,113; and De-

Tornya patent, No. 12,527. (Def. Ex..M-Doe. G, ©, E,

B, F.) | | |

_ 31. During prosecution of the application for the Staley

patent before the United States Patent Office, Staley ean-

celled original claim 11 following rejection theréof by the

Patent Office. Original Claim 11 read:

“11. An animal feed block characterized by its re-

sistance to weathering comprising dehydrated mo-

lasses bonded by a wet binder, the equivalent amount

of molasses in the block being not less than 50%.”

mii

This claim. was identical to Claim 1 of the current Staley

patent except that Claim 1 recites the presence of salt

as an ingredient. (Tr. 701-702; Plf. Ex. 3.)

32. The United States Patent Office rejected Original

Claim 11 because it was: ;

“Unduly broad and inoperative for the purpose dis-

closed since it fails to recite the presence of salt in

the required amount.”

It was also rejected on the hasis of its being “fully. met

by Schreiber under 35 U.S.C. 102.” The Schreiber referred

to therein is Schreiber patent, No. = sae 963. (Def. Ex. |

M-Doe. W; Plf. Ex. 3.) ws

33. At trial, a conflict of evidence appeared in regard

to whether or not a nutritionist of ordinary skill in the

-art in the late 1950’s, given a dehydrated molasses block, °

would have added salt-as an ingredient of the block in

order to control its consumption. ‘Witness Burns stated

that this was obvious to one skilled in the art, while wit-

ness Bartley ‘testified to the contrary. (Tr. 743-744; 952-

953.) The Court, after reviewing the entire record, finds

from the whole of the evidence that such an addition was

vies to one skilled in the art.

34. In the latter 1950's, it -was obvious to one skilled

in the art of animal nutrition and block- making, to use a

wet binder , and particularly wet ceuauu (Tr. 747.)

35. Claim 2 of the Staley patent is identical to Claim ~

1 except Claim 2 adds 1-4% of mineral oil and edible fat

to the block.. There is nothing of particular significance

lodiadiand

in the percentage specified. (Tr. 757.)

36. To include fat or oil. in a molasses block is disclosed’

in the prior art, namely, Australia patent, No, 205,187.

(Def. Ex. M-Doe. T; Tr. 715-716.)

~— A-10 —

37. Defendant itself was in 1956 adding oil or fat as

ingredients in its protein and mineral blocks. (Tr. 417-

419.) ; . |

38. In the year 1959, it was obvious to a man of ordinary

- skill in the art to add oils to feed blocks in order to in-

crease their weathering capability and to facilitate the

block-making process. (Tr. 748, 754.) |

39. Claim 3 of the Staley patent is identical to Claim 2,

but specifies that the wet binder is wet molasses. “As was

noted in Findings, 17, 18 and 34, supra, the use of wet

molasses as a binder was disclosed in the prior art, was

used cominonly in the industry, and its use was obvious

to one ‘skilled in the art.

49. Claim 5. of the Staley patent is identical to Claim

2, except the amount of salt ranges from 5 to 20%, in-

stead of from 5 to 40%. _ :

41. The prior art revealed the’ concept of varying the

amount of salt in mixtures in order to arrive at the de-

sired daily consumption. (Def. Ex. M-Doc. M; Tr. 729-

732, 744.)

_ 42. Plaintiff itscif found after testing that salt per-

centages up to 20% did not affect the consumption rate.

(Def. tix. A; Tr. 121.)

_ 43. The defendant, in making its protein blocks in 1957,

included salt, in the amount of 13-14% in order to control

their consumption. (See Findings 20 and 21.)

44. The Court finds as a matter of fact. that the -salt

range of 5-20%, as set out in Claim 5 of the Staley patent,

was old in the.art and was ébvious to one skilled in’ the

art as of 1957.0

45. Claim 6 of the patent In suit is similar to Claim 2, —

_ except that it specifies a salt content of: from 15-23%, a

dehydrated niolasses content of from -70-77% (with the

edie

dehydrated molasses having a molasses equivalent of from

85-90% ), OG a wet binder of from 5-12%. :

46. Relative to the salt content of Claim 6, the Court

finds it to be old in the art and obvious to.one skilled in

the art. (See Findings 41-44, supra.)

47. As to the percentage of dehydrated: molasses (and

its molasses equivalent) in Claim 6, such was disclosed

in prior patents and is thus completely anticipated. (See

Findings 15, 16.) |

48. Regarding the’ portion of Claim 6 which sets forth

a wet binder of 5-12%, there is no special significance to

mat range as Opposed se ally other percentage range. (Tr.

197.) . ear :

49, Claim 7 of the patent in suit is identical” to Claim

6, with the single exception: being that the amount of wet

binder is designated as being 7-9%, rather than 5- 12%.

This range is of no special signfiicance. (Tr. 758.)

50. Claim 8 is identical to Claim 7, except that it des- °

ignates the wet binder as being wet molasses. As noted

‘before, this was disclosed: in the prior art and was com-.

mon in the industry. (See Findings 17, 18.) °

51. Claim 9 of the subject patent is identical to Claim 2,

except for the addition of ‘‘a horn fly controlling amouat

of phenothiazine . . .’’ The concept of incorporating this

particular drug in a block of molasses as a preventative

for worms is disclosed in Australian patent, No. 205, 187.

(Def. Ex. M—Dece. T, U.)

a2. The patentees did not discover the use of phenothi-.

azine as a horn fly control, said usage having been made

as early as 1938. (Tr. 95, 299.)

53. As early as 1957, defendant’ Was incorporating phen-

othiazine inte its rhineral and protein blocks. (Tr. 412, 4235,

144-745.)

—. =:

54. A nutritionist of ordinary skill in the art in the lat-

ter 1950’s, ‘in preparing to put out a dehydrated molasses

feed: block, would have found it obvious to include pheno- *

thiazine in such a block 1 in orde ‘r to control horn flies. (Tr.

745.)

55. Claim 10 of the patent Is diveokell at a ‘method for

preparing an animal feed J. 2? The Court finds this claim

to be old and completely seliclonled in the ‘prior art,

\\speelfically in the Arnold patent, No, 1,996,395 . (Def. ix.

M—Doe. Z: Tr. 758.) .

56. Claim 11 is directed at a method for controlling the

consumption of molasses in cattle to a specified daily

amount. The manner in which this is to be done is by

‘feeding eattle an animal feed block . . .’? as is described

in Claim 1 of the subject patent. As has been diseussed

earlier in ‘these findings, animals have been fed through

block prior to the present patent, and the patent in suit

suggests nothmg new or different. in the way the feed

block is to be fed to animals. The same method has been

utilized for. years prior to this patent, and has been done

so even by the defendant herein, (Tr. 759.) The consump-

tion is controlled by salt, and as has been mentioned here-

inabove, this has. been found to be old in the prior art.

(See Findings 20-26.) ;

57. The Court’ finds as a matter of fact that the United

‘States Patent, Office failed to cite the most relevant prior

art wnen it granted the Staley patent.

58. In making the foregoing findings, the Court has spe-

cifically rehed on the weight and credibility of the evi-

dence, given attention to the testimony of the extremely

well-qualified expert witnesses on both sides, with special

credulity being imparted to defendant’s expert witness

Burns as to the state of the art, which the Court found to

be buttressed with an abundance of written evidenee in

the form of former patents and learned treatises, negativ-

pega eon

— A-13 —

ing both the novelty and nonobviousness requirements for

a patentable product.

D9. It is understood’ that defendant contends plaintiff

failed to sustain its burden of proof as to infringement of.

Claims 1-3 and 5-10 because there was no proof adduced

by the plaintiff that’ the defendant’s blocks were, in faet,

‘‘resistant to weathering.’? Assuming the validity of the

patent issue, the Court, upon examining. the record, finds

this oe a to be unsupported and without merit. (Tr.

323, 365, -372.373:)

60. In this vein, defendant also contends that the plain-

tiff did not prove infringement of Claims 6-8 because there

was no evidence that the accused blocks of the defendant

contained the requisite amounts of dehydrated molasses |

(70-779), wet molasses binder (7 9%) and fat (1-4%).

Again, a®careful review of the record reveals this couten-

tion to be unfounded, (Tr, 311-348, 369.)

61. The defendant also 8) that plaintiff failed - to

-prove infringement of Claim 9, in that, according to de-

. fendant, plaintiff did not show! that defendant’s blocks

contained a ‘hori fly- controlling amount of phenothia-

zine.’’ The Court finds this: contention to be without merit,

since the essence of defendant! 's sales claim is .that its

block containing phenothiazine Will control horn flies.” (Tr.

333, 366-368. )

62. A similar contention was made by the defendant as

to Claim 11 of the Staley patent, i. e., that plaintiff did not —

prove defendant ‘‘controlled or induce 1d the controlling of

molasses consumption in- cattle to a level not in exeess of

one pound per day.”? Ilere, again, the Court finds evidence

to the contrary in the record, thereby voiding this conten. .

tion. (Tr. 318, 365-566.)

63. The defendant has claimed that it has been damaged

by plaintiff, in that plaintiff allegedly used the patent in

| °

— A-l4—

- suit to control competition, and that plaintiff allegedly

improperly publicized its patent in order to gain an: un-..

fair competitive advantage. The Court finds no evidence

in the record supporting thix contention,

- Conclusions of Law

1. The three statutory requirements for patentability

are: (a) novelty: (hb) utility; and (c) nonobviousness, See

35 U.S.C.A, §101-103.

2. The patent at ixsne here fails to meet two of the three

requirements, specifically, novelty and nonobviousness.,

3. The evidence before the Court shows that the prior

art discloses each and every concept, component and limi-

tation of the cleven claims of the Staley patent.

4. A patént ix presumed to be valid and a patent's in-

validity must be shown by clear and Convineing evidence.

Such eviderice ix abundantly present in this record. See _

35 USCA, (282; Bimco c. Peterson Filters, 406 F.2d 431

‘(10 Cir. 1968).

5. The statutory presumption of validity hes also — '

rebutted herein because the United States Patent Office |

failed to cite the most pertinent prior art, which was «ub-

sequently introduced by the defendant at trial. See M. B.

Skinner v. Continental Lndustrics, dne., 346 F.2d 170 (10

Cir, 1965). |

6. Tue evidence before the Court shows that the differ-

ences between the subject matter contained in the claims

of the Staley patent and the prior art are such that the

subject matter as a whole would have been obvious at the

time of the claimed invention to a person having ordinary

skill in the art to which the subject matter pertained. See

Graham vo. John Deere, 333 US. 1, 86 S.Ct. 684 (1964);

M. B. Skinner Company e. Continental Indvstries, Inc.,

supra. i} )

—A-15—

7. The record pean that plaintiff ened its pro-

posed claim for a patent on a block characterized by its

resistance to weathering and comprising dehydrated mo-

lasses bonded by a wet binder, the equivalent amount of

_ molasses in the blotk being not lesx than 50%. The only

difference between that abandoned claim and Claim 1 of

the Staley patent ix 540% sodium chloride. That differ-

ence was obvious to one skilled in. the art and, conse.

quently, Claim 1 ix invalid. Graham v. Deere, supra,

8. Claims 2 through 9 are variations in recipes of the

; * components set forth in Claim 1, with additives in addi-

tion to Claim 1 being edible mineral oil or animal fat,

and the medicant phenothiazine, all of which variations

were without significance from Claim 1 and were from

prior use of publication obvious to one skilled in the art

of animal nutrition. :

‘9. Claim 10, referring to a method for preparing the

recipes of Claims 1 through 9 in block form, and, Claim

11, referring to a method for controlling consumption of

molasses in cattle based on the Claim 1 retipe, were peither -

novel nor nonobvious to one <killed in the art of animal

nutritiqn. 7

10. Claims 1 through 11 of the subject patent are in.

valid. :

11. There can be no infringement of an invalid patent:

therefore, infringement ix not present in thix case. See

M. B. Skinner Company ¢. Continental Industries, Inc.,

supra. . s

12. The defendant's counterclaim alleging that plaintiff

attempted to use its patent to control competition has no

evidentiary basix in fact and is without’ "merit; it is there-

fore denied. ib:

13. The defendant ix not ‘entitled to be awarded it« at. .

‘torney fees under 35 USCA. 6285.

inex *

14. The Clerk is direeted to enter judgment for the de-

_fendant and against the plaintitt upon the complaint, tax-

ing the costs herein to the plaintiff.

Addendum Comment ;

The histury of patent law in the United States, from its

English origins in the Statute of Monopolies to its consti-

tutional foundation in Art. 1, (8, Ch. 8, and through its

statutory and judicial growth and implementation, Was

well and interestingly stated by Justice Clark in 1966 in

Graham v. Deere, «upra. In discoursing on the last stata-

tory enactment of 1952, Justice Clark spoke of patent eri-

teria as follows:

“The 1952 Patent Act «ets out the conditions of

patentability in three sections. An analysis of the

structure of these three sections indicates that patent-

ability is dependent upon three explicit conditions:

novelty and utility as articulated and defined in § 101

and §102 (3% U.S.C, © 101 and § 102), and nonobvi-

ousness, the new statutory = eco as set on in

£108 (3 U.S. § 108) .

(Graham, p. 691 of 56 CL)

“Under § 103, the scope and content 6f the prior art

are to be determined; differences bet ween the prior art

and the claims at i<=ue are to be axeertained; and the

level of ordinary skill in the pertinent art resolved."’

(Graham, p. 694 of 56 St.)

This lawsuit involves the pacentalility of a molasses

feed block for ruminant livestock. From the evidence pro-

duced at the trial—much of it in Jengthy documentary

form of former patent« and learned treatix<es—and apply-

ing the applicable law, the Court has concjuded the Staley

patent discloses no invention. It deals entirely with seleet-

Wert = AT

ing desired recipes for a block performing salutary, dietary .

and veterinary objectives, and which is commercially sale-

able in a highly competitive industry. There is no new

ingredient in these recipes. Each ingredient is present for

its age-old purpose of supplying a particular food or

medicinal value. There is no new cooperation among the

ingredients that produces either a different product or a

‘. different result than is known in the prior art. Nor could

the fact, apparent from the evidence, that Staley was in

the commercial field with an animal feed block which bet-

ter filled a long-felt want and enjoyed commercial success,

make the item patentable. Anderson's Black Rock, Inc.

v. Pavement Salvage, Inc., 90 S.Ct. 365 (1969)...

The ultimate conclusian of law here is that the patent

in issue, while having usefulness or utility, lacks the re-

quired conditions of novelty and nonobviousness.

In accordance with the Fintlings of Fact and Conclu-

sions of Law, the Clerk shall enter judgment herein with-

out further journal entry.

At Wichita, Kansas, this 13th day of October, 1970.

a FRANK G. THEIS

United States District Judge

Bs ok as ii

APPENDIX B

Judgment (Docket Entry) of the District Court

70-—Oct 13 Decision of: the Court; filed and Entered; -

Theis, Judge: Findings of Fact and Conclusions

of Law. There can be no infringement of an in-

valid patent; therefore, infringement is not present

in this ease. The Defendant's counter-claim alleging

. that -plaintiff attempted to use its patent to control

competition has no evidentiary basis in fact and is

without merit; it is therefore denied. The defendant

is not entitled to be awarded its attorney fees. under -

35 U.S.C.A. 285. The Clerk is directed to enter judg-

ment for the defendant and against the plaintiff upon

the complaint, taxing the costs herein to the plaintiff. ©

‘ Addendum Comment. The ultimate conclusions of

law here is that the patent in issue, while having

usefulness or utility, lacks the required conditions of

novelty and nonobviousness. In accordance with the

Findings of Fact and Conclusions of Law, the Clerk

shall enter judgment herein without further journal

entry.

— A-19 —

APPENDIX C

Opinion Below of the Circuit Court of Appeals

United States Court of Appeals

Tenth Cireuit

‘ November Term, 1971

A. E. Staley Manufacturing Com-

pany,

Plaintiff-Appellant,

v. . No. 71-1049

Harvest Brand, Ine.,

Defendant-Appellee. ]

Appeal From the United States District Court

for the District of Kansas

(Filed December 2, 1971)

John W. Hofeldt, Chicago, Illinois, for Plaintiff-Appellant.

Edmund C. Rogers and John M. How ell, Clayton, nah,

for Defendant-Appellee.

Before Pickett, Hill and Barrett, Cireuit Judges.

Barrett, Cireuit Judge.

This ix a patent infringement suit brought by the A. E. |

Staley Manufacturing Company against Harvest Brand,

— A-20 —

Incorporated, alleging an infringement of Staley’s patent

No. 3,246,336 which-Staley has owned Since it was issued

-on April 12, 1966. The patent application was filed on

April 8, 1963. |

Staley’s patent describes a cattle feed bloek which com-

bines dehydrated ‘molasses, liquid “molasses as a wet

binder, significant amounts of salt, and some type of

mineral oil or edible fat. The resulting product is a highly

palatable feed block for cattle or sheep from which they

will eat-a surprisingly consistent amount each day. Two

novel benefits are derived from this regulated consump-

tion. First, although molasses is very beneficial to cattle,

too large an intake can cause scouring or diarrhea. This

problem has been eliminated in the Staley patent block.

Second, because eattle like the iaste of molasses, unpalat-

able medicines ean be added to the Staley block and eattle

will consume them in a controlled amount. The Staley

patent feed block thus accomplished two new and novel

results. s

The lower court found that the patent was infringed

but that it was not valid. The Court found that the patent

had utility but that it did not have novelty as required

by 35 U.S.C, (102, and that it was not non-obvious as

required by 35 US.C., 6108. From this decision Staley

appeals.

The lower court made no findings of fact which would

negate the elaim of novelty. Novelty can be disproved

‘by showing anticipation or aggregation. McCullough Tool

Company v. Well Surveys, Ine., 343 F.2d 381 (10th Cir.

1965), cert. denied 383 U.S. 933 (1966). This court said

in Griswold v. Oil Capital. Valve Co., 375 F.2d 532 (10th

Cir. 1966), at 537 that: .

““The doctrine of anticipation by patents is a narrow

and technical one. To come within it, all the elements

Qo -

— A-21—-

of the invention, or comparable ones, must do sub-.

stantially the same work in substantially the same

way and be’ within-ene sthucture. (Citation omitted).

As to the matter Ie ‘egation, the doctrine requires

that the prior patents, or the art generally, demon-

strate the segments or elements with substantially the

same results and functions.’ .

The Court siated in its finding of fact No. 58 that a

review of all evidence disclosed a lack of novelty and non-

obviousness, both of which are requirements for a patent-

able product. We disagree. There were no findings of

fact concerning anticipation or aggregation, notwithstand-

ing the rule that the law prestmes a patent valid. 35

USCA, § 282. The great weight of the evidence does

not suaigeet the Court’s conclusion on the issue of novelty,

359 US.CLA, § 282, provides that one who secks to have

_a patent declared invalid has the burden of establishing

its invalidity by clear and convincing evidence. _We have

conducted a thorough review of the record. In our judg-

ment, appellee Harvest Brand has failed to sustain this

burden. [For a detailed diseussion of the law concerning

novelty ‘in this Cireuit see Searamueci v. Dresser Indus-

tries, Ine., 427 F.2d 1309 (10th Cir. 1970).]

Turning now to the issue of obviousness prescribed un-

der 30 U.S.CLA., § 103, we have reviewed the prior art in

order to Diteeninn whether a person ordinarily skilled in

the art would find it obvious to combine the same elements

in the same manner as Staley’s patent teaches us.

The record reveals that a person ordinarily skilled in

the art would know that:

1, Animal feed blocks had been made in the past such

as salt bloeks, mineral blocks, protein blocks and molasses

blocks.

— A-22 —

- 2. Malasuse had been used as a feed supplement and a

carrier of unpalatable medicines, ©

3. Mineral oils had been used to facilitate blocking and

improve the weathérability of blocks.

4, Feed supplements had been used which had high

levels of salt. - i

5. Blw@RY had been made-which used wet molasses as a

wet binder. :

The trial court made detailed findings to the effeet that

each and all of the ingredients employed by Staley in its

patented block were well known to a man of ordinary

skill in the art. The Court did not, however, make any

findings dictated by the great weight of the evidénce in

the record reflecting the failures and drawbacks of the

prior art in accomplishing the novel result’ achieved

through the Staley patent. Each of the prior arts above

referred ta were wrought with practical limitations:

1. Protein and mineral blocks were designed to fill a

‘particular need not necessarily connected with the fune-

tion of a molasses-salt block. As a carrier of medicines

they were failures because they were not palatable enough

to cattle to hide the taste of Nhe medicines and their con-

sumption was too variable. ,

2. Molasses has long been known to aid animals with

rueminate digestive tracts in digesting roughage. It has

also been known to cause scouring’ if .taken in large

amounts. No molasses product was ever made before

Staley’s patent which allowed a livestock operator to place

the medicine carrier unaitended near his stock and be as-

sured that his cattle were getting a proper amount of medi-

cine, Protein and mineral blocks had too great a variation

of daily intake to be successfully used. AH previous mo- °

lasses products were too palatable to use successfully as

—A-3—

medicine carrfers. The aggressive cattle would overfeed

and the timid cattle would underfeed. —-

3. Mineral vils were a rather novel and effective addi-

tion to the ‘prior art. . However, the addition of oils in

large amounts seftened the blocks.

4. Large amounts of salt have been incorporated into

mineral and protein blocks to. control consumption. The

amount of salt used normally in these blocks is roughly

the same amount as Staley used. However, with the

highly palatable riolasses blocks the daily consumption is

relatively stable while the less palatable mineral and pro-

tein blocks show a relatively high rate of daily variation.

The evidence proves that cattle develop a tolerance for

salt which they like. This can eventually lead to salt

poisoning. As a factor in determining the prior art, this

would lead one to believe that a block with a high salt

content, especially when mixed jwith the highly palatable

inolasses, would slowly cause cattle to consume an increas-

ingly larger daily ratfon. However, this is not true of

Staley’s block.

D. The use of a wet binder in molasses blocks was old

in the art. Wet molasses had been used as a wet binder

with dehydrated molasses to make the blocks easier to

form. Wet molasses, however, causes blocking and stor-

age problems.

Harvest Brand claimed that the prior art would teach

one to mix salt, molasses (dehydrated and wet), and oil. |

Its own history belies this. In 1958 Harvest Brand made

100 non-infringing dehydrated molasses blocks with a wet

binder for a customer. It claimed that these blocks were

successful, yet several years later when it made blocks -

for public sale it sold blocks w hich the lower court found

infringed on Staley" s patent.

— Ah

Staley introduced evidence showing the state of the art

when it put its product on the market. Within two months

after Staley marketed its patented block, VyLactos Labo-

ratories was selling a non-infringing block called ‘‘Kattle

Kandy.’’ It contained molasses, a high protein level .

(22%) and salt (1%). A witness fronr VyLactos testified

that the salt level was 1% because that is what the experts

recommended at that, time. He also stated that consump-

tion was regulated by the block density, i.e., the harder

the block, the less each animal consumed. He admitted

that the block was too palatable and that one had to limit

the number of blocks available to the eattle because they

would overfeed. VyLactos also had trouble with weather-

‘ability. Its blocks did not hold up well in rain. After

-about a year, VyLactos’ stopped producing its ‘‘Kattle

Kandy’? and introduced a block which is almost identical

to Staley’s block. :

Harvest Brand’s expert witnesses testified that it would

have been easy for anyone in the feed block business to

come up with Staley’s block in 1962. A Staley expert in

animal feeds had nuatieeuly testified that in 1962 he would

have been dubious about the success of any molasses blocks:

which contained high levels of salt. He stated that mo-

lasses and salt are hygroscopic, i.e., they both absorb large

amounts of water. He also stated that they are water solu-

able. For these reasons, he and a Harvest Brand witness

opined, one would expect serious weathering problems in

a block containing salt and molasses. Another witness

for Harvest Brand stated that since salt and molasses have

different ‘characteristics, one would expect :problems dur-

ing the blocking process. The witness testified that from

his own tests in 1963 he foung that molasses needs high

pressure plus. some water to block successfully. Salt, how-_

ever, requires low pressure and an absence of water to

block well. At the time these tests were conducted, Har-

‘~

— A-25—

vest Brand had not been able to make a successful block

combining saly and molasses.

Harvest Brand points out that before 1962 there were

many patents involving feed: blocks, molasses products,

molasses with medicine, and blocks with oil among others.

‘However, most of these patented:inventions had serious

drawbacks. We said in MeCullough ‘Tool Company v.

Well Surveys, Ine., 343 F.2d 381- (10th ‘Cir. 1965), cert.

denied 583 U.S. 933 (1966), supra, at 399 that:

. — . . . e

‘*Rudimentary or unsuccessful experiments with’ sso-

lated elements of a combination’ do not anticipate an

invention whieh successfully combines those elements’’

(Citations omitted). .

Sfaley admits that all of the elements are old and Known

in the art. However, Staley argues that as it overcame

all of the problems and ‘went against the teachings of the

prior art to develop the patented block, it qualifies for a

patent. We agree. As we said in McCullough, supra:

“The general rule is that before a device may be pat-

entable, the improvement over the prior art must in-

volve more than would be obvious to one of ordinary

skill in the art (Citations omitted). If those skilled -

in the art are working ih a given field and have failed

after repeated efforts to discover a particular new ~

and useful improvement, the person¢who first makes.

‘the discovery does more than make the obvious im-

provement which would suggest itself to a.mechanie

skilled in the art, and jis entitled to protéetion as an

inventor’? (Citations onitted). 343 F.2d at 399.

We feel that Staley has inade such an improvement, In

Bewal, Inc. v. Minnesota Mining and Manufacturing Com-

' pany, 292 F.2d 159 (10th Cir. 1961), the test for determin-

ing whether a combination was patentable was stated. At

164 we said: ! : -

— A-% —

“When old clements are united in such a manner that

the union accomplishes either a new result or an old

result in a more facile, cconomical and efficient way

in a particular environment which presented. peculiar

and difficult problems, it is a true combination and

patentable’’ (Citations omitted).

Staley’s inventors overcame serious practical problems in

arriving at on or oy ee oe oe

tevel of achievement.

he invention requires only four ingredients. The

ts are not too critical. However, simplicity is not a

bar

to invention as long as the steps taken are not obvious

to the ordinary mechanic. Blish; Mize and Silliman Hard-- .

ware pany v. Time Saver Tools, 236 F.2d 913 (10th —

Cir. 1956), cert. denied 352 U.S. 1004 (1957); Goodyear .

Tire & Co. Inc. v. Ray-O-Vae Company, 321 US.

275 (1944) ;

We are mindful of the rule stated in Searamucei v.

Dresser Industries, Inec., 427 F.2d 1309 (10th Cir. 1970),

supre, that the ultimate validity of. a patent is a legal”

question for the trial court, based on findings of fact.

Staley’s contested patent recognized that the value of

feeding molasses to livestock was old in the art. It re-

cited, however, the nutritional Values and ‘drawbacks

ich had previously restricted the use of feeds contain-

mug, - nd assem few cm veniboy vagal < orcad

tion had exceeded: the most efficient feed utilization and

could not be conveniently and economically fed in open

range. The key claim, then, in the Staley block was the

use of a high percentage of molasses with salt which

proved (1) to be resistant to weathering in the open

range; (2) to provide in a controlled manner a source of

fermentable carbohydrates for ruminants; (3) to control

_ consumption on an economical per unit hasix; and (4) to

be.a palatable feed block which could inclade a horn fly

controlling amount of phenothiazine. Appellant argues

— ye pe

that the product of these claims was entirely new and that

the new product proved to have a different and surprising

result. We agree. There was. po contrary argument, and

the lower court specifically found that the Staley f

block ix useful and

claimed for it. The quest

ability, ix one of fact in ;

utility, commercial success, Mjxfaction of long-felt' want,

unsuccessful efforts of ‘others, public acquiescence in -

validity, imitation, experiments, and independent produc-

tion by others, 69 CLLS, Patents, (70 (1951).

Substantial evidence means evidence which affords a

substantial haxix of fact to “upport a conclusion. Consoli-

dated Edison Co. v. National Labor Relations Bodrd, 305

US. 197 (1938). In its Addendum Comment the tfial court

concluded that “There is no new cooperation among the

ingredients that produces either a different product or a

different result than is known in the prior art.” Having

thus found, the Court specially concluded that the Staley

patent lacks novelty and non-obviousness. This conelusion

necessarily involved application of the fact-law Process.

We are persuaded, on the entire evidence, that ~ mistake

has been committed. See United States v. United States

Gypsum Co. 333 U.S. 364 (1948). We hoki’ that the dis-

trict court erred in its conclusion that the Staley patent

lacked novelty and non-obviousness. Therefore, we must.

reverse, We hold that the Staley patent is valid. We re

mand for further proceedings determinative of Staley's

prayer for injunctive relief and damage award. ~ -

Reversed and remanded.

Piekett, Cirenit Judge, dissenting. No. 71-1049

In reversing the trial court and sustaining the patent

in this case, I think we are guilty of weighing the evidence

amd failing to observe the “clearly erroncous” rule. The -

patent defines a compressed feed block for cattle contain.

—y we

ing sodium chloride (<alt), dehydrated molasses, mineral

oil or edible fat, wet molax«ex, and phenothiazine. It is

agreed that all of these element~ were known in the prior

hart and were not invented by Staley, and that the patent

in suit was ixwed ax a result of a combination of these

elements. Generally, when old elements are combined to

gether in a manner which ~ceures a new and useful _re-

sult, or an old re<ult in a more facile, cconomical and ef-

ficient manner, the rewult ix patentable. Searamucei v.

Dresser Industries, Ine. 427 F.2d 1908 (loth Cir. 1970);

Eimeo Corporation v. Peterson Filters and Engineering —

Co, 406 F.2d 431, 434 (10th Cir. 1968), cert. denied, 395

U.S. 963 (1969). The eential< of patentability are that —

the invention be (1) useful, (2) new, ame (3) es oon

to a person skilled in the art. % US’, () 101, 102, 105;

Graham v. John Deere Co. 383 US. 1, 12 (1966). A mere

aggregation of old clement~ which performs ne new fune-

tion or produges no different result than that previously

produced ix not patentable. Searammuece’ v. Dresser Indus -

tries, Inc. <«pra. The ix-wex of novelty and nonobvious-

ness present questions of fact to be determined by the

trial court and the<e finding< are net to be disturbed on

appeal unlex« clearly erroneous. Boutell vy. Warren Volk &

Wilson-Volk, Inc., 449. F.2d 673 (10th Cir. Get. 22, 1971):

Searamucei v. Dresser Industries, Inc. ««pra: Eimeo Cor-

poration v. Peterson Filters and Engingszipg Co. -«pra;

Graham v. John Deere Co., supra’

! For the purpese of suggeting «me guileline. to be helpful

to the trial coarrts im determing factual meqtiries as to new

obviousness, it was said in Graham v. John Deere Co. 85 ~

US. 1 (1966), at 17-18: « :

bist

Lit

tte

be .

te :

ii!

£5 Re

factual inquiries, Under § WE the sope and content ‘of

the prier art are te be determined differeners between the

prier art are te determined, diflerenees between the

prier art and the claims at heuer are te be ascertained;

and the level of enrilinary skill im the pertinent art re-

— A-29 — N Ss .

Although there was other evidence, the parties to this

litigation relied primarily on the testimony of expert wit-

~ messes, The trial court made detailed and exhaustive

findings relating to the novelty and nonobviousness of the

patent. It was specifically found that ‘the prior art re-

vealed the concept of varying the quantity of salt in mix-

tures to regulate consumption of food by cattle, and that

the use of molasses as a binder in making feed blocks was.

also known to the art. The other ingredients as used in

the patentee’s feed block were found to be old. In more

or less of a summary of its findings, the trial court said:

“In making the fotegoing findings, the Court has

specifically relied on the weight and credibility of the . -

evidenve, given attention to the testimony of the ex-

tremely well-qualified expert witnesses on both sides,

with special credulity being imparted to efendant's

expert Witness Burns as to the state of the art, which

the Court found to be buttressed with an abundance of

written evidence in the form of fornier patents and

learned treatises, negativing both the novelty and non-

obviousness requirements for a patentable product.”’

I shall not attempt to detail the facts, but from a oni

review of the record I am *sutisfied that the trial court’s

findings are not only supported by substantial evidence,

but by a preponderance of the evidence. 1. would affirm.

‘ .

solved. Against this background, the obviousness or nonob-

viousness of the subject matter is determined. . . -

“This is not to sav. however. that there will not be dif-

ficulties in applying the nonobvieusness test. What is ob-

Viousness is pot a question upon which there is likely to be

uniformity of thought in every given factual context. The

difficulties, however, are comparable 1” those encountered

daily by the couPts in such frames of reference ax ne gli-

genee and scienter, and should be amenable to a case-by-

> case development, We believe that striet observance of

the requirements laid down here avill, result .in that uni-

formity and definiteness which Congress called for ing the

Wo. > et.”

a ae

APPENDIX D

Judgment of the Circuit Court of Appeals

November Term—December 2, 1971

Before Hon. John C. Pickett, Hon, Delmas C. Hill

and Hon. James E. Barrett, Circuit Judges

A. E.* Staley Manufacturing Co.,

Plaintiff-Appellant,

- | No. 71-1049.

Harvest Brand, Inc.,

Defendant-Appellee. |

This cause came 6n to be heard on the record on appeal

from the United States District Court for the Distriet of

Kansas, and was argued by counsel. *

On consideration whereof, it is ordered that the. ‘aa.

ment of said Court is reversed and the cause is remanded

for further proceedings in accordance with the opinion of

this Court; Pickett~Cirguit Judge, dissenting.

HOWARD K- PHILLIPS, Clerk

By: /s/ HELEN R. BARTHA

Deputy Clerk

— A-31—

APPENDIX E

Motion for Extension of Time in Which to File a Petition

for Rehearing and for Leave to File a _

Supplement to the Petition |

: (Filed December 13, 1971)

In the

United States Court of Appeals

For the Tenth Circuit

A. E. ‘Staley Manufacturing Com: |

pany,

: Plaintiff-Appellant, - * 7

v. . ; Appeal No. 71-1049.

Harvest Brand, Ine.,

- Defendant-Appellee. |

‘

Now comes appellee, Harvest Brand, Ine., and moves

‘ this Court for an extension of fourteen (14) days’ time .

until Deeember 30, 1971, in which to petition for rehear-

ing in the above matter.” This,extension is necessary due

to the very recent and sudden death on November 7, 1971,

of one of the partners of the law firm representing appel-

lee which has resulted in an extremely heavy work load

_on thNvour remaining members of the firm." We beg the

Court's indulgence and ask that the extension be granted.

Appellee further moves the Court for leave to file a

supplement to the petition of not over fifteen (15) pages

which will set forth the faetual assertions made in ap-

pellant’s briefs upon which the Court- apparently relied

but which are false or grossly overrstated. Beeause of

— A-32— ‘

the great number of such assertions, it is not possible to

cover them and the other grounds for the rehearing in

the ten (10) pages allowed.

KINGSLAND, ROGERS, EZELL, KILERS

& ROBBINS

By JOHN M. HOWELL

Suite 2162, Pierre Laclede Center ;

7733 Forsyth Boulevard

) “St. Louis, Missouri 63105

Tel. No. (314) 727-5188

- Attorneys for Defendant-Appellee

— A-33 —.

APPENDIX F

Order Granting Motion for Extension of Time and

‘Leave to File a Supplement i

In the United Siates ¢ ‘ourt of Appeals

for the Tenth Circuit

A.-E. Staley Manufacturing 7

Company,

.j iF

_. [re Appellant, Appeal No.

71-1049.

Harvest Brand, Inc., ¢

Defendant- Appellee.

Motion for extension B Dae in which to file a petition

for rehearing and for leave to file a supplement to the

petition.

Grante |

. to 12-

Judges Pickett, Hill, Barrett

Dee. 16, 1971

HOWARD K. PHILLIPS, Clerk

By: /s/ HOWARD-K. PHILLIPS

Deputy Clerk

sie i oes

APPENDIX G [

Petition for Rehearing; and Petition that Rehearing

En Banc Be Granted

(Filed Dee. 29, 1971)

In the U nited States Court of Appeals,

~ for the Tenth © ircuit

A. E. Stgley Manufacturing

Company,.

- Plaintiff-Appellant, Appeal No.

wh 71.1049.

Harvest Brand, Ine.,

Defendans-.¥ppellee. '

Defendant-Appellee hereby petitions for a rehearing

of the decision of the court entered December 2, 1971, for.

reasons hereafter set forth. Time to file the Petition, and

to file the accompanyin’ supplement, was extended to De-

cember 30, 1971.

Because of the importance of the issue presented by

this Petition and the apparent inconsisteney in this eir-

cit in interpreting rule 52(a) FRCP, it is requested that

the rehearing be held en bane.

The decision here is inconsistent with the established

rules of this cireuit that findings based upon reasonable

evidence will be sustained on appeal, that findings based

upon credibility of expressly preferred witnesses will not

be upset, and that findings based upon disputed evidence

will- be sustained, FRCP 52(a). Searamucci v. Dresser In-

dustries, Inc., 427 F2d 1309 (CA 10); Eimco Corporation

— | —_< =

v. Peterson Filters and Engineering Co., 406 F2d 431 (CA-

10); Boutell vy. Volk, 449 F2d 673 (CA 10); McCullough

Tool Company v. Well Surveys, Inc., 343 F2d 381 (CA 10);

Admiral Corp. v. Zenith Radio Corp., 296 F2d 708 (CA

10); and M. B. Skinner Co. v. Continental Industries, Inc.,

346 F2d 170 (CA 10).

The decision places a melancholy imprimatur upon mis-

‘representation, exaggeration, and distortion of the record

by an appellant. And it may ,destroy defendant with

damages in a day ‘of tight money.

The case presents as grave a problem in appellate court

procedure as could occur since the new appellate -rules.

For this court has interpreted the rules <o as to create a

‘ dilemma that actually denied appellee the hearing to

which it was entitled. ©

There is an irreconcilable conflict between, on the one

hand, limiting an appellee toa fifty-page brief and a

thirty-minute’ argument, and; on the other hand, opening

findings of fact to a plenary review and revision ma

scientific patent ease that took a week to try. Let us

explain.

When we, as appellee, were confronted with how to brief

this case on appeal, we decided to spend the fifty pages

and thirty minutes showing how there was substantial evi-

dence supporting each finding, and had to forego pointing

to the multitude of false and misleading statements in the

briefs of appellant. For plaintiff’s briefs were not based

on the record made below, but on a nonexistent, imagina-

tive record created by the fertile imagination of appellant.

Our dilemma was based upon the rule heretofore ef.

feetively established that findings supported by substan-

tial evidenee will be sustained. ;

The Court's interpretation of the rules puts an appellee

in an impossible position. AM an appellant has to do is

— hi

cram into its briefs as many unsupported allegations of

facts as. possible. Appellee then must make a choice of

answering those assertions or presenting its own case. It

eannot do both within the time and space limitations,

and without. doing both, it-cannot get a fair hearing.

The danger in the approach of the court is serious. To

give an example: the Court reversed a finding of facet

based upon an express statement of the trial court that

as to the prior art it believed one witness, Burns, over

another witness, Bartley. This Court has said no, it be-

lieves Bartley. We submit we should not have had to

argue that finding based on credibility, so that our omis-

sion of argument iv extenso was justified. ~

Another example: this Court relied upon an alleged fail-

ure of one of defendant’s witnesses to produce the blocks

in question back in 1939, Actually the testimony was only

a passing question to the witness to obtain an explanation

of cast blocks in comparison with pressed blocks. No

question of success or failure was involved. The trial

judge knew this, and evaluated the colloquy accordingly.

But on appeal, appellant blew it up into a major failure

to make -blocks and this court has been led into using it as

a critical example of failure. It was no such thing.

How ean an appellee re-create the climate. around the

interrogation in the trial court so that the appellate judges

can know the emphasis, and can sense ‘the proportionate _

value of single episodes in a trial that took a week?

Or take another thing: this Court said flatly that cattle

like salt, and, developing a tolerance for it, try to eat too

much, leading to salt poisoning. True, appellant said so,

citing FE 196,-which has only a footnote reference to the

death of one cow for speculative reasons. There was no

supporting testimony explaining this. But there is also

much evidence about successful feeding of cows with

larger aimounts of salt- than were fed to that single un-

st — ad

— A-37 —

fortunate beast, and abundant ‘conclusions that salt poison-

ing Was not a problem.

Another thing: This Court said that the trial court made

no findings ‘reflecting the failures and drawbacks of the

prior art in accomplishing the novel result’? of the Staley

patent (Op. 5). The same argument about alleged failures

by MFA, VyLactos, and Harvest Brand were made in

substantially the same language in Staley’s brief below,

and rejected because untrue. What kind of findings should

have been made? Should the trial court find non-facts?

Unless this Court gives credence to the trial judge’s .

ability to determine the facts as presented in person -to

him, the only alternative-for a fair hearing on appeal is

pellate level than the time and length limitations of the

Appellate rules allow.* Since this gyurt has altered the

rule, and has reversed on facts, at least we ean properly

ask a full hearing and opportunity to set the facts straight.

, >

The Issues on Appeal

Since we are asking for a rehearing en bane, we note

: b J

that the two primary issues of this case are as follows:

1. It being old to-make self-feeding feed blocks contain-

ing protein and molasses including large percentages of

salt to limit consumption, and old to make feed blocks con-

taining over 50%. molasses, was it obvious to either in-

crease the amount of molasses in the first block to over

00%, or use such quantities of salt to control the eon-

sumption of the second block already containing over 50%

molasses? |

* At most, if the appellate court feels that no finding on a crit-

ical pomt has been made, it should send the case back for such

findings, where plenary treatment can be had

a far more extensive presentation of the facts at the ap- |

ol NE

. Subsidiary to the above: It being old to make pro-

tein ano izine blocks with salt to control consumption,

and it being old to make molasses:phenothiazine blocks,

was it patentable to use salt to limit consumption of the

molasses-phenothiazine blocks?

The trial court, on the facts, held anttione to be patent-

‘able. .

The “Pacts” Relied Upon by This Court’ S. :

Opinion Are in Error and Untrue . ae.

This Court in its opinion has baséd st findings. on as-

" sertions by appellant in, its briefs that, simply and bluntly

stated, are false,. misleading and unsupported. -For ex-

amples, | the following statements m the Opinion earried

over from plaintiff’s briefs, simply are not true.

1. This Court-erred in saying that the lower court found

the patent anticipated under 35 USC 102 (Op. 3), implyirg -

that the Court failed.to distinguish between Sections 102

and 103 of the Code. — »°

The lower court found only the two method ‘elaine 10

and 11 anticipated (Fdgs. 55 and 56, A. 44), and no others.

' ‘This court -has been led to confuse the issue of anticipa-

tion (See. 102) of those two process. claims with the jssue

of obviousness (See. 103) of the re maining claims. If Claim:

11 is upheld, any farmer. who simply puts a molasses-salt

block out in his field is an infringer. Did the court intend

this? ,

2. This court erred in saying that there were no findings’

of faet concerning’ anticipation or aggregation (Op. 4).

. But anticipation of claims 10 and 11 was found as above

stated (Fugs. 5D “and 56, A. 44), and aggregation was

spelled out in. detail in the Addendum. This court has

apparently notsunderstood that, when the trial court said

(A. 48-9):

— A-39 —

“<“ * * Each ingredient is present for its age-old. pur-

pose of supplying a particular food or medicinal value.

There is no ew cooperation among the ingredients

that produces either a different product ora different

result than is known in the’ prior. art.-* * *%,

it was simply using the definition of aggregation inste: id

of the word. The definition’ should at least equal the word.

‘This was a critical error by this Court, because this Court

reversed the fact finding that salt did only the same thing

in molasses blocks that it had in prior blocks.

“3. This: Court. erred in saying that protein blocks were .

failures ‘heeause they were not palatable enough to eattle

to. hide the taste of’ the medicines and their consumption

was too variable (Op. 5 and 6). Here this Court has made

its own. finding, which actually is false, based on false

representations: by plaintiff. How could it be true, since

defendant still sells the protein blocks with salt and pheno-

thiazine? How ean it be true when plaintiff’s advertis: ing

-asserted that salt Was used in its molasses blocks for the

sae purpose as it had -beei used in protein, blocks? Would,

plaintiff have | hased rad adve ‘rising ¢laim on a failure ?

4. This Court aii in saying that all previous cubase

products were too palatable io use successfully as medi-

cine carriers. -The aggressive cattle would overfeed and

the timid cattle. wonld underfeed (Op. 6).

_The statement: is Ina ‘curate, as the “\rizona block con-

tained molasses and protein and salt to control consump-

tion.* Legally it is beside the point, because the issue is

whether it is patentalle to employ. salt .to. control con-

* That the Arizona block contained protein ; as avell as molasses,

with salt to control consumption, should be. re al ng with

the statement in plaimtifi” s patent (It. 24, col. 3. 1.°43) that “Pro-

teins, minerals, vitamins and other. nutritional : supplements ee

may be incorporated into oir feed blocks” so long as 50% mo-

‘lasses equivalent is present, and salt.

_ a

bee mae a oy

sumption of molassen: blocks when it was well- news to

control ov eres ating of blocks with salt. The solution was

present ahead of the problem.

Tf overeating were true of molasses’ blocks, it also ,had

been true of, protein blocks. Why add big amounts of salt-

to protein-phenothiazine prior art blocks except that other-

wise the eattle would overeat them? This Court’s. new

fact finding misses the point, which is that, assuming the

_molasses-phenothiazine blotk of the prior art (Australian

» patent) were over-caten, would an animal dietician of

1960, who knew about using salt to contro] consumption of

-over-tasty feed blocks, have obviously concluded te try

salt to control the molasses block consumption ?

5. This Court seems to have erred, as far as we can

understand its statement, in saying that, mineral orls were

a rather novel and effective addition to the prior art,

but that the addition. of: oils in large amounts softened

the blocks (Op. 6). :

What is the significance of this? What re@ord supports.

it? Certainly the record abundantly establishes that all

prior art blockers knew to add “enough oil to improve

weatherability and blocking, without adding so much ese

the block is too soft (plaintiff's patent says the oil

not necessary”, Ki. 24, Col. 3, 1. 33). ; |

6. This court erred i in finding as fact that with molasses.

blocks, daily consumption is relatively. stable ‘while the

less palatable mineral and protein blocks show a relatively

high ‘rate of daily variation (Op. 7). This point was

argued and rejected below, on the whole evidence.

Consumption of Staley’s block is not relatively stable.

Staley’s patent itself (I 128, col. 2, I. 15, ef seq.) admits

a daily consumption range. of from 95 ounces: to a pound,

or a 320% variation.—And phantiff’s expert Bartley, on

cross-examination, admitted that the Staley blocks them-

ee ee ee ne 8

— A-41 — .

° selves, with*ypoloxalene, would vary in-tonsumption rate

by more than 400% or “higher than” a variation of one-

- quarter pound to one pound per animal per day (A. 447-—

9). Bartley’s actual documentary: test reports’showed vast

variations in daily consumption (KH. 186, 187) much greater

than his testimony indicated, which may explaiy the trial

court’s- preference for — testimony.

. The Court erred in saying that the evidence proves

en cattle develop a a for ‘salt which the *y’ like,

which ean lead‘to sali poisoning (Op. 7).

Staley repeatedly argued that because cattle wi eat.

too much salt and die, no one would think of combining

re With molasses. The Aiizona article (ki 47) and P. Ex.-

644 (4 192) quickly demonstrate this is wrong. Salt. poi-

soning occurs only when cattle are given insufficient water.

How should an appellee deal with such faet issues on~

appeal?

)

8. This Court erred in the inference that wet molasses

used as a binder caused’ blocking and storage probiems.

There is no ey idence that any ordinary blocker ever had.

any problems with using wet molasses in small propor:

tions as a binder, as taught in the prior art. All evidence

is contra. Surely the Court is not erediting Staley: with

limiting the amount of wet molasses for use as a binder

in view of Svenska, Dupire, Arnold patents and others,

9° This Court erred in the inference that ices Har--

au Brand did not continue to make the 1958 blocks, these

blocks were failures (Op. 7 and 8). This very argument

Was. rejected below hecatse contrary to faet.

The truth is that, in 1958,- Central Fee “d ‘ad Supply

Company supplied some dehydrated molasses Yo: Harves:

Brand and asked Harvest Brand to block it. Harvest

Brand did so, and sent thie blocks on to Central, a com-

pletely successful “alfiiment of the request. That is ab-

solutely all there was to this episode. Staley has led: this

_eourt to believe that this represented Harvest Brand’s |

first attempt to block molasses, that it was a failure, and

that Harvest Brand spent the next six years -in an effort

‘to block molasses: All of that is false. From 1958 to 1965

Harvest Brand was not ‘‘trying and failjng’’; it was doing.

‘absolutely nothing’ about molasses blocks, out of choice,

beeause of economic conditions as explained to the trial

court.

| 10. This Court erred in the ference that the pri ior art

taught a1% salt level in animal feed as an optimum

amount for all purposes (Op. 8). This is a fact error by,

distortion ‘of the record. It means that this amount will

insure the recommended minimum daily, dietary amount

to the Animals. This fact has in its true context nothing

to do with another known fact,-that large amounts of salt

control consumption of animal feed blocks. These are two

different things.

11. This Court erred in the inference that overeating the

VyLactos Kattle Kandy blocks, because. of absence of

salt, was a critical’ problem that required careful limita-

tion of the number of blocks made available to the cattle

(Op. 8).

This testimony (which was taken by plaintiff, not by .

_ defendant), considered in its entirety as it: was presented

to the trial judge, shows that-Kattle Kandy was: not over-

eaten. Contrary to the statement in the Opinion, page 8,

. VyLactos’ president did not admit the block was. too

palatable, as his testimony clearly shows. - Kattle Kandy

was not a failure for any reason. connected with the case

at bar.

12. The Court erred in saying that the VyLactos blocks

did not hold up well in rain (Op. 8). This is opposite

_ to what plaintiff’s witness said. The record shows that

only a very thin outer surface ‘of the block softened when

+ — A-43 —

wet.- This is, and absolutely must be, true -of all blocks,

inbheline Staley’s- (PX. 38, E. 185). How else ‘an it be

gotten at by the cattle than for saliva to dissolve its

outer surface} .

is ‘ . ‘ ¢ ae : ,

13. This Court. erred jn savine that the-ecombination of

« Pome] :

dehyd¥ated . molasses and ‘salt - alone has unexpected

weather resistance (Op. 9). The evidence does not sup-

port this argument, which was made and rejected below.

It is not true, and appellant’s oWm witness admitted it

is not true. (A. 110). In facet, plaintiff’s- patent says the No

salt can be - eliminated ‘without josing ‘‘satisfactory

Weathering properties’? (I 25, col. 2, 1, 29).

14. This Court erred in saying that a Harvest Brand

witness stated that since salt and molasses have different.

characteristics, one would- expect problems in blocking

them together, in that mol: asses needs high pressure and

some water to block while salt needs low pressure and an

absence of water to block (Op. 9).

This Witness was Kviesitis of Velastes (riot Race

_ Brand). He was ealled by plaintiff and not by defendant.

The blocks he experimented with had 50-759 ( salt, much

more than is used by plaintiff's patent. And he sueceeded

in making blocks (A, 497-8), and did’ not fail. -

Staley’s patentees had no difficulty in blocking their

salt-molasses blocks, as they simply sent the mixture io

an experienced blocker, who: readily bloeked it and re-

turned the blocks to. Staley, ‘Harvest Brand’s block mak-

ers found it quite easy to bloek the molasses-salt mixture,

- with time-honored techniques, Based on plaintiff's argu-

ments, which are contrary to fact, this Court erroneously

reversed the trial court, Who, Was supported by the great

weight of the evidence,

This Court erred in the inference that Ts -vest

Mone had tried but had no. suceess in making a‘molasses —

salt block before 1963 (Op. 9). This has beer considered

above, BS . ; : .

wat

ary

“,

wa,

ae al

i he

There is not a shred of evidence, that prior to 1963

Harvest Brand had tried to make a r.olitsses-salt’ block

but “‘had not been able to’. It had not tried, nor had

iny need to do so, owing to economic éonditions’ of de-.

hwdrated molasses at the time.

Conclusion

‘We submit that, if appellate courts are to reverse find-

ings of fact, carcfully spelled out by a trial court, based

frequently ‘on disputed evidence, sometimes based on ex-

pressed preference of one witness over another, some new

cuidélines must be presented to litigants in advance, and

‘much more time and space must be given to the arguments

_and briefs,

If upset t of findings, or an alleged absence of findiniss,

is to be the’ basis tor appellate disagreement with a trial

court, a. way must be found to have the result based on.

‘true facts, and not on. the multitude of false representa-

tions of plaintiff’ s briefs, Indeed,-it almost seems,as if

_ plaintiff deliberately deceived the court in an inordinate

desire to win.

A rehearing should be granted, with adequate brief

‘space and time to consider the findings of facet, and to |

demonstrate that as to them, the trial court was right

and plaintiff’s misrepresentations are wrong,

Respe etfully submitted

ROGERS, EZELL, EILE RS & ROBBINS

JOUN M. HOW KILL - KG

Suite 2162, 7733: F orsyth Blvd.

"St. Louis, Missouri 63105

WHEELER & MITCHIELSON

By FRED MITCHELSON |

301 National Bank Building

Pittsburg, Kansas -66762

Attorneys for Defendant-Appellee

sy eee

Certificate of Service

Service ‘of the foregoing Petition for Rehearing: and

Petition That Rehearing Kn Bane Be Granted served this

28th day of December , 1971, by mailing, airmail postage

prepaid, five copies dices to the offices of John W.

Hofeldt, Haight, Simmens & Hofeldt, 141 West Jackson

Soule vard, Chicago, —— — an cicls for Plaintiff-

Appellant:

MARY C: WARD

; : — A416 —

_ APPENDIX H

Supplement to Petition for Rehearing

In the United States Court of Appeals |

For the Tenth Cireuit

. A. K. Staley Manufacturing Com-

pany, ai -/ —

‘Plaintiff-Appellant,

v. : _& Appeal No. 71-1049,

au Brand, Ine.,

| Defendant- Appellee.

SUPPLEMENTAL LIST- OF ERRONEOUS.

STATEMENTS IN PLAINTIFF'S BRIEFS:

Space: limitations prevent more than a listing of some

statements. from plaintiff's briefs that dre categorically

wrong,. grossly exaggerated, or out of .context. Little

comment ean be given other than the éitation tb the cor-

rect testimony. |

Plaintiff’s Main Brief

Misstatements or misleading statements in plaintiffs °

Main Brief on appeal include the following:

Page 3: “The combination of ingredients in a block .

somehow limits the daily consumption by the animal to.

a specified ainount, and the rate of consumption is re-

markably regular from day to day, and from animal to

animal.’ ‘Vitamins and medicaments incorporated i in the

patented block are regularly consumed in preseribed dos-

ages, eliminating the expensive and tedious job of animal-

by-animal hand feeding’ by the farmer or the raucher.”?

“ *@

Fae A -47 —

_ False. Ex: 38 (E. 185) is a previously written record of

Bartley’s actual. work, showing that Staley molasses-salt

blocks varied in average ‘consumption by a ratio. of about

Dd:1. That article very ¢léarly shows that ‘“‘eareful man-

agement of the blocks is m: indatory,’’ that block yin a

tion was ‘effected by weathe) aa managerial factors,’

that the blocks had difference in softndss. varying con-

sumption rates, and that plaintiff’s blocks were” softer at

certain times because of weather Contin ons. .

Page 5: “The inherent and well recognized problems

of molasses did not recotnmend it as a solution to the

proble m of administering drugs or medicaments to eattle.’’

“alse. See «prior Australian patent, 1956 (KE. 76) and

Vierling patent (KE: 79) using self-fed phenothiazine. Also

VylLactos fed phenothiazine in loose molasses in 1956 (A,

016). The -rest. of this paragraph on. page 5 relates to

loose feeds, not blocks,

Page’ 6: ‘Prior attempts to solve cach of these prob-

lems were legion.” Sophistry. The. cited patents ‘relate

to making molasses blocks Without any evidence that any

of those patentecs tried to control the rate of consumption,

or had any concern with phenothiazine. There isa careful

' disregard of the fact that protein-blocks had already been

successfully sold to feed controlled anounts of pheno-

thiazine to éattle.

Page 7: ‘Another prior art failure was recalled on the

witness stand by Otis W es ah alse, This was mo-

lasses dissolved in a barrel of water to Which dry feed

was added (A, 166). It is irrelevant,

Page a “Despite or becuse of these prior art teach-

ings, Staley as well as three of its competitors were, in

the- ‘period 1958-62, still investing time and money .in. ane

ing-a solution.” Actually the problem had alre: ady been

solved by the Australian patent in .19:; DQ, (I. 76) and by

the enon paper in 1951 (1. a and by Vierlitig (KE.

¥ Sot | —ASS

79). Harvest) Brand easily and suc eessfully forined blocks

for Central ‘Grain in 195 98, using Central's” dehydrate:]

_ mbdlasses; did nothing else at all with ‘molasses blocks

-until it built its own dehydrated molasses plant in 1963-4,

' and then, quickly produced molasses blocks using salt as

it had songs used salt in protein blocks.

Page 7: “Phe Missouri Farmers Association” had pre-

viously, in 1939; attempted to make YWmolasses | block .

Defendant's expert witness, who had been associated with

this research, would not characterize it as successful .

(A. 403). Misleading. The matter came up only im

passing, the witness remarking that he had east blocks

in his laboratéry in 1939. It was no more than that. The-

trial court recognized this and properly evaluated it. To —

} say that the witness “would not characterize it as suceess-

ful” implies iat it. was unsuccessful, which is: totally

‘\ Page 8: Re-V yLactos: Kattle Kandy was not a failure.

2 It was a protein-molasses block. Molasses blocks are used

" ad one time of year, and protein blocks at another, and it

was not sucecssful to.combine them (A. 502). But the

block was successful as to rate of consumption uml as to ”

weathering, despite plaintiffs present false statements to.

_ the contrary. And if VyLactos dropped. Kattle Kandy

after a couple of years, it-also dropped the molasses salt

lock alter a couple niore years Ciktviesitis, Dep. 151).

Page 8: Re Harvest Brand: Plaintiff falsely states that

“Harvest Brand, in 1989, made a- block of dehydrated

_ molasses,” that “turned out-to be very dry and crumbly,”

that the “addition of wet* molasses did not help”, and

that a “hundred of these blocks weré shipped to the eus-

tomer.” This is athass of untruth. The truth: Only the

intial block was dry and crumbly. Napier, using a block-

— A-4)—

wet molasses, and were successfully shipped out (A. 238,

et seq.). Fa

Page 8:° The -last at is immaterial, because

molasses blocks had already been made with pheno-

thiazine,

Page 9: “It was found that not only would the cattle e

cat from the block each.day, they did not overeat, a sur -

prising result in view of the palatability of both of the —

main constituents,” There is ho’ evidence to indieate that

- anyone Was surprised, since the sali ‘control idea was con-

Sessedly taken over by Staley ‘from ‘pete. salt blocks .

(See Ki. 67, col. 2). ’

Page 11: “In a period ities n 1958 and 1963, four

competing companies -in the livestock foed- industry were

~aetivelypursning research -to—developa_mieans 10 over-

come the problems inherent in the handling and feeding —___

of molasses.”-“Three of these se companies. were unable to

‘solve the problem: they tried and failed.? False. This

false proposition appears repeatedly throughout plaintiff's

brief. See above.

Pages 11-12: As to the section numbered 1, the faet

that no findings were made as to ‘alleged failures of ‘com-

petitors came about because the proposition is not true.

In addition, there was direct evidence before the trial |

court that the level of skill in this art, as te the formulas -

_for making blocks, is the high level of. graduate degreés or |

un equivalent in long experience, and the evidence was

not challenged. The premise of the man of skill in the art

requires him to have all the prior art before him. Otler-

Wise, ignorance ean reward the obvious with patents.

Page 12: Paragraph 2 2 is false. The prior-art was opera-

tive, clearly predicted the objectives of the Staley patent,

and taught how they could be achiev ed, Saying that there

. Was an n texpected result in’ the Staley patent is wrong

~ and contrary to the facts found below.

Page 13: “No finding of fact was-made regarding the

-novelty or obviousness of. the combination as a whole.

This is eontrary to-the facts. In the first place, the Court

ssaid there was no true combination but only an aggrega-

tion of the. elements, each acting in its old manner. And

sce Findings 33, 34, 38,-40:

- Page 15: “No finding made by the court even purports

. to satisfy any of the conditions ef Seetion 102." False.

Findings 5) and 56 say. claims 10 and 11 are anticipated.

Defendant did not argue that other claims were invalid

under Seétion 102, but rather under 105.

Page 15: “There. is-not the: barest suggestion that any-.

one ever combined molasses and salt in signifieant quanti-

ties or had ever tased molasses and salt together.in a

~ livestock feed—in any form at any time: anywhere.” False.

: vr, 1956, con-

taining phenothiazine and dehydrated molasses ai least

50% ~=molasses equivalent- (A. 516). Defendant's Ex. M,~

(KE. 53) shows that cubes (bleeks) containing 25% salt

mixed with cottonseed, alfalfa, molasses, bone meal, eal-

ejum carbonate, and mineral salts were used in Arizona -

in 1951. Plaintiffs patent says “Proteins, minerals,

vitamins and other” supplements may be added to the

patented block (E. 24, col. 3, 1. 45). : .

“Pages 17-18: Plaintiff says “the evidenee establishes

that in the late 1950s and continuing up to 1962 ...

feed nutritionists .. . at Harvest Brand... at Missouri

Farmers Association .. ..and at VyLactos Laboratories

- were. stymied by the problem of providing a molasses

product. which wax weatherable and capable of self- feed

ing, as well as an-aeceptable means for the <elf-administra-

tion of medicaments in the pasture or on the range .. .

In their work,-they investigated various schemes showr

in the prior art and improvised on them, but were undhie

a ill

to suggest or provide a solytion. They tried. They tested.

They ‘tried again—and they failed.” False. See above.

. Page 18: The first paragraph re “Missouri. Farmers «

Association” is false. See above and note repetition of

this falsity. - “

Page 19: After the Staley, blocks came on the market,

“MFA went back to the drawing boards” , dropping its =. |

attempts at making suitable fly and worm control products

from a mineral block, and “the blocks of the Staley patent

. were adopted.” False. MEFA’s formula originated with

MFA, ‘and there is no evidence that it came from the’

Staley block (.A. 214). | —

Page 19: “The blocks of the Staley pate nt w ere adopted ds

(A. 214)” meaning that Holst silealined that MFA copied

Staicy’s patent. -Ar_ outrageous and inevitably deliberate

misstatement. Holst’s statement (A. 214) was “As I re-

eall, Dr. Johnson thought that we. should hide the flavor

of the phenothiazine and we felt molasses would be the

‘good way to do it. Sinee dried molasses was available

_* b J

we.chose to go this route.” Combining phenothiazine with

dried molasses was certainly not the Staley patent. It

was the earlier Australian patent.

appreciated the molasses block as early as 1953” and that

others at VyLactos had encouraged, him: to develop such

a product.” There is no evidence that anyone at VyLactos

cared about molasses blocks until 1962.

Page -19: Says VyLactos’ product came several months:

after Staley’s block came on the market. The implica-

tion is falsé. Development of Kattle Kandy began at the

end of 1961, its fermula was finished in the summer ef :

1962, and JKattle Kandy was shipped and invoiced at least

— A-02 —

as early as October 26, 1962 (I. 148). “Staley’s first ship-

ment was not until in September, 1962 (A. 32).

Page 20: ‘As Kviesitis himself acknowledged (A. 494-

495), the block would not weatlier properly,’? and that no

anatter how: hard the blocks were made, rain, heat.and hu-

midity would cause the product to soften at the surface

where consumption takes place. Totally false. Read A.

494-5. NKattle Kandy behaved exactly like Staley’s s blocks ’

(A, 439-440). :

Pages 20-21: ‘By the first, part ‘of 1964, VyLactos had

purchased and analyzed a patented Staley Sweetlix block

(A. 499-500; I. 164), and in June.of that year, announced

its new ‘Seotech Block A’ (A. 4973- I. 157, 159-163).”’

False. . VyLactos formulated its Seotch Block February

Zt; 1964; did not get a Staley block until Mareh 12. ———

———Page-2i:—¥-yhaetosfailedin- jhe-atiempt to follow the

route charted by the prior art. False. Kattle Kandy

‘blocks were not a failure with respect to anything in-

volved in the present lawsuit..

‘Page 21: * The prior art actually led VyLactos astray as

‘t had MFA and Mr. Burns.’? False. None of the three

was led astray. |

Page 21: Implying that a°l% salt limit was taught by

the art. False. Prior art taught up to 339 salt to con-

trol consumption of protein-molasses blocks. . See the Ari-

zona paper (KE. 47).

Page 21: That VyLactos was dubious of *the concept of

combining salt and molasses” in a block in 1963. False.

VyLactos quickly succeeded in making blocks containing

50-74% salt, the remainder molasses,

Page 92: First paragraph: Plaintiff's outburst with re-

_____spect_to what might hav e been cnown by VyLactos. False.

See above.

om —'A-53 es

faa 22: The Harvest “Brand. story is again se ay

~sibly misrepresented. See above. Note that on. page 8

plaintiff said that addition of wet molasses did not help,

but on page 22 admits that the wet molasses addition was

suecessful. - ; i ;

' Page 23: Pluintiff writes that Harvest Brand in Decem- -

~ ber, 1963, had to confess it. inability to ‘‘meet the demand

“of its customers’? for a high level molasses block. Harvest

Brand had not had a dehy drated molasses “plant operating

prior to 1964.° |

Page 23: It says that when Harvest Brand offered a

block,. it did not use the prior art. False. Prior art

taught salt to control the block’s consumption—liquid. mo-

lasses to bind it, fat to make it weather and easy to mold,

and to incorporate phenothiazine in it. As to phenothia-

levels of phenothiazine to eradicate. hornflies ‘‘were

thought to‘be totally impractical in a program of self ad-

ministration.” Valse. The Australian patent of 1956

taught that phenothiazine could be masked .in a niolasses

block. Vierling patent (KE. 81, col. 4, 1 45) teaches use

of molasses to mask phenothiazine for self-feeding of ther-

_ apeutie dosage. Harvest Brand’s prior art protein-pheno-

thiazine block (A. 228-9, E. 13-16, Ex. F) still is being

sold, w ith an amount of phenothiazine subsiantially atthe ————

range set by plaintiff's patent “(A. 219),** and a econ-

sumption rate higher than plaintiff’s patent proposes.

* Phenothiazine to control horntlies received government ap-

proval only in 1962 (.A. 423). Then its manufacturer, Interstate

Chemical, actively solicited all teed manufacturers. Plaintiff got

its ideas from Interstate. :

** It makes no difference whether Harvest Brand. or anyone

else, recognized and adopted, or overlooked, the teaching of the

Australian ‘patent, or other prior art. The teaching was there, —__

aml bars plajntiff from re-patenting molasses blocks with pheno-

thiazine.

— A-o4 —

. t

Page oT: “MEA and.Harvest Brand were independently

and desperately struggling to find a qneans to administer

phenothiazine. * False. VyLactos had a phenothiazine-

molasses block on the inarket a year ahead of Staley, | and

the Australian patent antedated both. The Distriet Court

made no effort to reconcile its conclusion of obviousness

with ‘‘these facts, > beeause: one, they are noi irue; two,

since the Autralian patent, and VyLactos’ own 1956 mo-

lasses and phenothiazine preceded these efforts, it is le-

gally immaterial w hether or not latecomers failed to find

the eartier work and put it to use.

Page 29: ‘‘Protein and mineral blocks’’ for administer:

ing phenothiazine were totdl failures’’. False. Protein

blocks with phenothiazine are still being sold suecessfully.

Page 29: “Skilled nufritionists and researchers at Har-

vest Brand and VyLactos as late as 1962 could not make

it work’’, i.e., using wet molassés to bind dehydri ated mo-

lasses.” False. Nayier quickly did make it werk (A. 239,

241-2) just as the prior art taught. There is no evidence

whatever that VyLactos tried the wet molasses binder and

‘could not make it work.

Page 31: The Chalkley patent cannot discourage block-

_ing molasses, which had been successfully done many

years before. Chalkley only taught wad to package a par-

ticular molasses product. :

Page 32: ‘** * * When Harvest Brand tested weather-

‘ability... ‘those blocks melted into the ground (A. 267).”? |

Staley’s counsel is bound to know that the reason they

did so was that, i an aceclerated test; the sprinkler is-

left on the blocks until they do melt down, and” the time

required is a measure of the hardness of the block. Plain--

tiff’s counsel knew this because when he took Napier’s

"deposition, Napier explained that. operation. (Nap. Dep.

18, 24). .Any block, including Staley’s, undergoing the

same test, would melt into the ground.

Page 32: ** Defend: ant? s expert Burns would not, and did

not think to incorporate high levels-of salt?’ in a molasses

block -because “* Almost) invari: bly it would reduce the

weatherability.”’ False. There ‘vas no conuectton in con-

text between Burns’ statement and ‘what he would or did

think to do, with respect to including salt ina molasses

block. (See. A A, 345.)

Page 32: Staley argues that because of the Ge hrt pat-

ent (not.of record on appe: 1), one skilled in the art would

be deterred from using it in a dehydrated molasses salt

block. False.. Wet molasses was the siandard binder, as

even, plaintiff's own witness admitted ( A. 141).

Page 32: One of the last things to ceeur to him would

have been to compound the w cathering problem by adding

salt.”?» False, an unsupported statement of ‘counsel. Salt

_melts in protein bloeks—inanineratt tocks;in-satt locks,

but these facts hav e ee deterred its use‘in blocks.

Page 33: ‘‘Prior to the invention of the Staley patent,

no one had ever combined. high levels of sal ind molasses

in any feed.’ False. The Arizona publication had 33.30

salt combined with molasses and eubed (4. 53, table 1).

Page 33: Staley says that a reader of cited publications

would conclude that salt is ‘“‘high!y palatable and may be

over-consumed”? to the point of comsumption resultig in

abnormally high intake and occasional salt poisoning, cit-

ing EK. 196. That is false. The feed there was cottonseed

meal plus salt, the former being the lure. Also insuffi-

cient access to water was provided. There is no evidence

that salt as such is overeonsumed because of palatability.

Page 33: ‘*Progressively increased proportions of. salt

were required ... to achive any control... large vari-

ations occurred.’? Whatever variations were present in

Caeell

he-priorart were also present in the Staley block: Staley’s

own expert Bartley admitted a Variation of over 400°; i

(See charts EK. 183, and E. 18) seq. a

Plaintiff’s Reply Brief ;

Pages 1-2: Restatement ‘of false propositions of main

brief. Still false.

Page 2: ‘Direct evidence of skill in the art is avail-

able.’ False as to what plaintiff refers to. The person of

ordinary skill (85 USC 103) is a person of a. certain range.

of knowledge of the ‘art-_here usually with a graduate

degree. according, to: the direet evidence. Plaintiff’s prop-

osition is that if any persons do not come up with the

answer, that is proof -of non-obviousness—even though

ihey may not have had all the prior art before them, or

may have preferred a different approach, or may not have

put adequate people onto the job. That is a false and dan-

gerous proposition. | |

‘Pages 3-4: Reiterating the false story re Burns making

blocks. Also adds the false filip-that he added a ‘‘chem-

jeal”’ to solidify the molasses. The whole section is’ shot

through with falsity, now repeated again. ae

Page 5: More repetition of the false story of what hap-

pened with Central Grain.

Page 6: ‘‘Harvest Brand asserts . . .”’ False. Har-

—yest-Brand. did not fail to come ‘up with a successful

means to administer drugs. -

Page 6: The “Australian patent’” does not disclose **a

dehydrated molasses block.’’ False, Tliat patent (KF. 76)

heats molasses with tallow until water is removed (de-

hydrating). |

Page 6: False statement that Burns judged a east block

made by him or by the Australian patent unworthy of

weathering or feeding fests. Further he later said that

he would expect the block {io hold its shape at room

temperatures. |

sic SS oun

Pages 6-7: The proposition quoted from defendant’s

brief stated the true law, prior to the present decision,

and according to a multitude of prior decisions. The so-

called person of skill in the art must be supplied with all

the prior art.

Page 8: ‘The fact is that the MFA nutritionist had ae-

~ quired a recent knowledge . . .?? False. Totally unproved

and it was plaintiff’s Job to prove.it if true.

Page 8: -VyLactos got knowledge from Staley. False.

Again they were plaintiff’s witnesses and if what plain-

tiff says had been true, plaintiff should have put in the

evidence.

Page 8: [asi paragraph is a crude distortion of what

_ defendant wrote. We said that testing a 50-75% salt block

Was not a copying of Staley, and ‘we still s ay so. Plaintiff

had used the episode in a-false contention that it showed

VyLactos doubtful about salt-molasses blocks.

Page 9: That Harvest Brand goes ‘‘outside the record,”’

in ‘‘repeatedly asserting that the prior art discloses ‘high

level de hydrated molasses blocks’ (Harvest Brand’s Br

pp. 6, 11, 17, 19, 21) and even that ‘high level molasses

~ and salt blocks’ were old (Harvest Brand Br. p. 42).’

The first quote .is of the record and the findings. The

second quote is totally false, and did not appear in our

brief.

Page 9: ‘*There is but one reference in the prior art to

a molasses blo¢ék . . .’’, namely, the Australian ‘patent.

False. Patents to Dupire (EB. 27), Boyd (FE. 29), Hughes

(Ki. 51), and deTornya (EF. 33), Svenska (KE. 34), and

Arnold (i. 85) all deseribe de hydrated molasses blocks’

That they are sometimes called ee ae Senene t-te

substance. Plaintiff's patent says (KE. 25, eol. 2, 1. 4) they

can be any stitable size or shape.’ ” Plaintiff’s patentee

— A-58 as

Wekgat also said so (A. 540) and. that it can be ecalled_a

block or a cake or a briquette or a tablet (A. 547-8). The .

trial court so found (dg. 29, 30, A. 40). Plaintiff's

lawyer is playing semmanties, but contrary to his patentee.

Respectfully submitted,

ROGERS, BZELL, ETLERS & ROBB INS

- By EDMU ND C. ROGERS

JOUN M, HOWELL

Suite 2162, 733 -Forsyth Blvd.

- St. Louis, Missouri 63100 _ .

e HK ELER & MITC HIELSON

By FRED MITCHELSON

301 National Bank Building

Pittsburg, Kansas 66762

Attorneys for Defendant-Appellee

— A-59— A oa

APPENDIX I

Order Denying Rehearing

January Term--February 4, 1972

Hon. James KK. Barrett, Circuit Judges.

A. E. Staley Manufacturing Com->;

pany, a Corporation of ‘the State |

of Delaware,

. Appellant;

No. 71-1049,

Vv.

} Harvest Brand, Ine.,

Appellee, 2

Upon consideration of appellee’s Petition for Rehe

ar-

ing, it is ordered that said petition be and is de

nied,

ie:

' APPENDIX J

, Order Denying Rehearing En Banc

January Term—February 4, 1972

- Before Hon. David P. Lewis, Chief Judge; and Hon.

Delmas C. Hill, Hon. Oliver Seth, Hon. William J. Hollo-

way, Jr., Hon. Robert H. Williams,*Ilon. Janes E. Barret,

and Hon. William E. Doyle, Cireuit Judges. .

A. E. Staley Manufacturing Com- :

pany, a Corporation of the State

of Delaware, %

R Appellant, | No, 71-1049.

_ Harvest Brand, Inc.,

Appellee. |

The Petition for Rehearing having been denied by the

original panel to whom the case was argued and sub-

mitted, and no member of the panel or judge in regular

active service on the Court having requested that the .

Court be polled on rehearing en bane, (Rule 35, Federal

Rules of Appellate Procedure), the request’ for Rehearing

En Banc is denied. ae

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.