# Appendix — Harvest Brand, Inc. v. A. E. Staley Manufacturing Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_0726%3A2 ## Record - **Collection:** Supreme Court brief - **Document type:** Appendix - **Published:** January 1, 1972 - **Citation:** 406 U.S. 974 ## Text & of . 2 : . . . . : . ' . e . . ~~ ] . . ‘ . . sae tS ale 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 : a. 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 - s 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 | ° f — 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 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. | fr 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 | ~s : (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 FY wo — 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 — | —_ =. — 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- Y h 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): ee — A-39 — “ 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 Before Hon. John ©, Pickett, Hon. Delmas C. Hill-and 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 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40385606_0726%3A2. Public record. Not legal advice.