Opposition Brief — Esab Group, Inc. v. Centricut LLC

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Supreme Court, U.S.

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No. 04-1470 ?

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IN THE

Supreme Court of the United States

THE ESAB GROUP, INC.,

Petitioner,

V.

CENTRICUT LLC (NEW HAMPSHIRE)

and CENTRICUT LLC (DELAWARE),

Respondents.

On PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES CouRT OF APPEALS

FOR THE FEDERAL CIRCUIT

BRIEF IN OPPOSITION

MICHAEL J. BuUJOLD EDWARD A. HAFFER*

Davis AND BujoLp, P.L.L.C. 1000 Elm Street

NEAL E. FRIEDMAN P.O. Box 3701

500 North Commercial Street Manchester, NH 03105-3701

4" Floor (603) 627-8115

Manchester, NH 03101 e

(603) 624-9220 ey Se

Counsel for Respondents

195093 g

COUNSEL PRESS

(800) 274-3321 * (800) 359-6859

i

QUESTIONS PRESENTED

1. Whether the Federal Circuit adopted a “new standard”

usurping the role of the trier of fact, or merely correctly

applied the “clearly erroneous” standard of Fed. R. Civ. P.

52(a) in reversing the Trial Court’s finding of infringement?

2. Whether the Federal Circuit correctly held that ESAB

failed to meet its burden of proof on infringement because it

failed to present relevant expert testimony?

li

PARTIES TO THE PROCEEDING AND

RULE 29.6 STATEMENT

The Respondents in this case are Centricut LLC (New

Hampshire) and Centricut LLC (Delaware). Centricut LLC

(New Hampshire) is in dissolution. Centricut LLC (Delaware)

is a wholly owned subsidiary of Hypertherm, Inc.

iil

TABLE OF CONTENTS

QUESTIONS PRESENTED ..........---++++--

PARTIES TO THE PROCEEDING AND

RULE 29.6 STATEMENT ........----++++--

TABLE OF CONTENTS .......----eeeeeeeeee

TABLE OF CITEDAUTHORITIES .........--.

STATEMENT OF THECASE .........--+-++-:

REASONS FOR DENYING THE PETITION .....

I. THEFEDERAL CIRCUIT DID NOT ADOPT

A “NEW STANDARD” USURPING THE

ROLE OF THE TRIER OF FACT, BUT

MERELY CORRECTLY APPLIED THE

“CLEARLY ERRONEOUS” STANDARD OF

FED. R. CIV. P. 52(a) IN REVERSING THE

TRIAL COURT’S FINDING OF INFRINGE-

NS oe oi ee cew tae el hear we es

ee OI cccp usec se ueewee ees ewee

m Ped. B. Civ. B SAO) oon sec ccceses

C. ESAB’s “ery Unscientific” Argument .

D. The Work-Function Tables ..........

Page

iil

iv

Contents

Page

Il. THE FEDERAL CIRCUIT CORRECTLY

HELD THAT ESAB FAILED TO MEET ITS

BURDEN OF PROOF ON INFRINGEMENT

BECAUSE IT FAILED TO PRESENT

RELEVANT EXPERT TESTIMONY. ...... 19

Ill. SINCE THE FEDERAL CIRCUIT

CONFINED ITS DECISION TO THE

INFRINGEMENT ISSUE AND DID

NOT REACH ANY ISSUES OF CLAIM

CONSTRUCTION, ESAB’S ARGUMENT II

ip BAI TORRES nce hs eho ak eee A 25

Be 8 eer re errr re rr Tre 26

TABLE OF CITED AUTHORITIES

Page

CASES:

Elliott v. Commodity Futures Trading Commission,

202 F.36 926 C7" CA Bee 6nd doh enenstucas 21

Daubert v. Merrell Dow Pharmaceuticals, Inc.,

S09 U.S. STO CAGGS) ocd 3 60 ete eee 20, 21

General Electric Co. v. Joiner, 522 U.S. 136 (1997)

cabana ade ae Ae eS a 20, 24

Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999)

bag acaba e 5 o we bre wea ke ae ee oe 21

Intellectual Property Development, Inc. v.

UA-Columbia Cablevision of Westchester, Inc.,

336 F.3d 1308 (Red. Cir. 2003) oo castes, 25

Lemelson v. United States, 752 F.2d 1538 (Fed. Cir.

OES) ic. cs Acces eae eee eee 4

Libas, Ltd. v. United States, 193 F.3d 1361 (Fed. Cir.

1GOOE on cn dav wew dian ene eee 21

Mitchell v. United States, 141 F.3d 8 (1* Cir. 1999)

64nd nd Cea biee ae eed eek eee ae eee 21

Perez-Trujillo v. Volvo Car Corporation (Sweden),

137 FS SO Ut Ce ee oe ee ee 21

United States v. Ortiz, 422 U.S. 891 (1975) ....... 16

vi

Cited Authorities

Page

United States v. U.S. Gypsum Co., 333 U.S. 364 (1948)

o 0 6-0:0.0:6 di e'R 6 aoe alee alee eee eee 4,24

Weisgram v. Marley Co., 528 U.S. 440 (2000) ..... 21, 24

RULES:

Fed. R. Cow. SG) si cccissavesesae aa i, 3,4

Fed. K. DVGG. POl siisasscccsu swan beurre 19

Fed. Ri. SVG Fas 60s vn dd nwdeakeeeneearuenn 20, 21

Sup. Ch. BO oieeisxiavndeteee eee 3

OTHER:

Advisory Committee Notes to the 2000 Amendment

00 FOR, I: VEG. FOe -s ons ska i euaancesaagnens 19

|

STATEMENT OF THE CASE

Centricut, LLC (New Hampshire) sought a declaratory

judgment that it did not infringe United States Patent No.

5,023,425 (“425 patent”) of ESAB Group, Inc. (“ESAB”).

ESAB counterclaimed for infringement against Centricut, LLC

(New Hampshire) and its successor, Centricut, LLC (Delaware)

(collectively, “Centricut”). After a bench trial, the Court found

infringement by Centricut, and awarded ESAB over $2 million

in damages. App. 17a.' The Court also permanently enjoined

Centricut against future infringement. A83.? On appeal, the

Federal Circuit reversed, holding that ESAB had failed to meet

its burden of proof on infringement, because it failed to present

relevant expert testimony. App. 2a. ESAB’s combined petition

for panel rehearing and rehearing en banc was denied.

App. 44a.

Centricut manufactured and sold oxygen electrodes for

replacement use in plasma arc torches of various manufacturers,

including ESAB. See A296-99, 349, 944-45. Plasma is a high-

temperature, ionized gas used in cutting metals; it supports an

electrical arc between the torch and the metal being cut. See

°425 Patent, Col. 1, L. 9-13 (A106). Electrodes are

“consumables”; i.e., they wear out with use and must be replaced

periodically. A944-45.

At issue on appeal was Independent Claim 1 of the *425

Patent, in which the following is claimed:

1. An electrode adapted for supporting an arc in a

plasma arc torch and comprising a metallic holder

having a front end, and a cavity in said front end, and

an insert assembly mounted in said cavity and

1. References to “App. _” are to the appendix to ESAB’s Petition

for Writ of Certiorari.

2. References to “A_” are to the appendix filed with the Federal

Circuit.

2

comprising an emissive insert composed of a metallic

material having a relatively low work function, and a

sleeve surrounding said emissive insert so as to separate

said emissive insert from contact with said holder, said

sleeve having a radial thickness of at least 0.1 inches

at said front end and being composed of a metallic

material having a work function which is greater than

that of the material of said emissive insert, and said

sleeve being composed of a metal which is selected

from the group consisting of silver, gold, platinum,

rhodium, iridium, palladium, nickel, and alloys wherein

at least 39% of the composition of the alloy consists of

one or more of said metals and whereby said sleeve

acts to resist movement of the arc attachment point

from said insert to said holder.

A109 (emphasis added).

At the bench trial, the principal issue concerned the work-

function limitation.’ “Work function is an energy. It’s the energy

that’s required to remove an electron from inside the material

to outside the material.’ App. 6a. Finding that the accused

electrode contained a “sleeve” with a higher “work function”

than its “emissive insert,” the Trial Court ruled that Centricut’s

electrode literally infringed Claim lof the ’425 Patent.

App. 21a-22a.

3. Centricut had previously moved for summary judgment, arguing,

among other things, that its accused electrode did not include the “cavity”

or “sleeve” limitation. However, ruling to the contrary in its claim

construction, the Court denied Centricut’s motion. A18-30.

4. This is how the Federal Circuit correctly described the term.

App. 6a.

3

REASONS FOR DENYING THE PETITION

I. THE FEDERAL CIRCUIT DID NOT ADOPT A

“NEW STANDARD” USURPING THE ROLE OF THE

TRIER OF FACT, BUT MERELY CORRECTLY

APPLIED THE “CLEARLY ERRONEOUS”

STANDARD OF FED. R. CIV. P.52(a) INREVERSING

THE TRIAL COURT’S FINDING OF INFRINGE-

MENT.

A. Overview

This case presents no “new standard” (ESAB Petition,

Questions Presented) under which the role of a trier of fact is

usurped by an appeals court. Rather, it presents an orthodox

and wholly correct application of the “clearly erroneous”

standard of Fed. R. Civ. P. 52(a). “A petition for a writ of

certiorari will be granted only for compelling reasons.”

Sup. Ct. R. 10. Here, there are none.

The Federal Circuit correctly held that the Trial Court

committed clear error (Fed. R. Civ. P. 52(a)) in its reliance on

so-called work-function tables (App. 8a-10a) — an error that

ESAB does not even mention. Also unmentioned by ESAB is

the fact that the Trial Court pointedly rejected the arguments

ESAB now makes (see Argument IC, below), a rejection the

Federal Circuit upheld. App. 13a-14a. In short, the Trial Court

was clearly wrong in its reliance on the work-function tables,

but right in its rejection of ESAB’s present arguments — now

being made for the fourth time.’

ESAB failed to meet its burden of proof that the claimed

work-function element, or its substantial equivalent, was present

in the accused Centricut electrode. “It is well settled that each

element of a claim is material and essential, and that in order

5. First, at trial (see Argument IC); second, in its brief to the Federal

Circuit (at 3-31 — n.b. 3-8, 16-17, and 24-31); third, in its petition for

rehearing en banc to the Federal Circuit (at 2, 5-6, and 10-15).

4

for a court to find infringement, the plaintiff must show the

presence of every element or its substantial equivalent in the

accused device.” Lemelson v. United States, 752 F.2d 1538, 1551

(Fed. Cir. 1985). ESAB tried to prove the work-function element

through witnesses who not only lacked work-function expertise

but admitted lacking it. This obvious failure of proof was sharply

rejected by both the Trial Court and the Federal Circuit.

Yet, incredibly, it is on this very issue — on which the Trial

Court and Federal Circuit completely agreed —- that ESAB

argues the Federal Circuit “usurped” the role of the trier of fact.

The argument is false.

B. Fed. R. Civ. P. 52(a)

ESAB misconceives what the Federal Circuit did. It did

not sit as a Trial Court, according varying degrees of “weight”

to the testimony of the different witnesses. Rather, it reviewed,

as it had to, the entire evidence to determine whether the

Trial Court’s finding of infringement of the °425 Patent was

“clearly erroneous” under Fed. R. Civ. P. 52(a). As this Court

has said: “A finding is ‘clearly erroneous’ when although there

is evidence to support it, the reviewing court on the entire

evidence is left with the definite and firm conviction that a

mistake has been committed.” United States v. U.S. Gypsum

Co., 333 U.S. 364, 395 (1948).

Here, the “entire evidence” includes a conspicuous

omission. No evidence whatsoever was adduced of either the

actual work-function values or the actual relative work-function

rankings in the accused Centricut electrode. This was ESAB’s

burden to prove; and its failure was total. Lemelson, 752 F.2d at

1551. “Indeed, neither party introduced evidence of tests or other

evidence concerning the exact materials used in the accused

device.” App. 7a.

6. To say, as ESAB does (at 5), that the accused device used

hafnium for the insert and silver for the sleeve is imprecise and

(Cont’d)

7

:

5

4

4

5

The “entire evidence” includes one and only one work-

function expert: Centricut’s expert, Professor Marten denBoer,

a tenured full professor of physics at the City University of

New York and its Graduate School. A639-45, 1292-1305. No

other witness was a work-function expert. Although Professor

denBoer is a physicist, the meaning of work function in physics

is the same as it is in engineering — a point acknowledged by

the engineer-inventor of the device claimed in the *425 Patent.

A186. Professor denBoer “testified that it was not possible to

determine the relative work functions of the sleeve and the

emissive insert of the accused device without direct testing

because many factors affect the work function of a surface.”

App. 7a. Significantly, however, no such testing was done. Id.

ESAB argues:

The approach adopted by the Federal Circuit had the

direct effect of improperly usurping the role of the trier

of fact. [ESAB Petition, at 2 (emphasis added). ]

It is well settled that . . . original findings of fact by the

district court may not be set aside unless clearly

erroneous, and that “due regard” must be given to the

opportunity of the trial court to judge the credibility of

witnesses. . . . The rationale underlying the requirement

of due deference to a district court’s original findings

is grounded . . . [in part] in the district court's ability

to observe the demeanor of witnesses firs.nand. .. .

[At 11-12 (emphasis added).]

(Cont'd)

inadequate. The hafnium and silver were not pure, but alloyed. As the

Federal Circuit correctly observed, the “exact materials used in the

accused device” (App. 7a) were never proved. Id.

7. As the Federal Circuit noted, Professor denBoer also “testified

that work function is a product of specific surfaces, not of specific

elements as represented in the tables.” App. 11a.

The panel should not have adopted its new framework

... under which it is permitted to engage in original

fact finding (and then on a selective weighing of the

evidence), contrary to the district court's original

decision. [At 17 (emphasis added). ]

[T]he panel’s decision entirely disregarded the

testimony of knowledgeable, experienced witnesses

(including adverse witnesses in particular) actively

engaged in the field of plasma cutting. The testimony

was disregarded, in material part, on the basis that the

relevant witnesses were not “expert in the field.”

[At 18 (emphasis added). ]

[T]he framework adopted by the Federal Circuit panel

in the present appeal must be set aside in favor of an

approach that permits the trial court to take all relevant

evidence into account, including the testimony of those

knowledgeable in the relevant field of endeavor.

[At 22 (emphasis added). ]

One might infer from ESAB’s arguments that the Trial Court

credited certain testimony, and that the Federal Circuit

supplanted the Trial Court’s assessments with its own. Nothing

could be further from the truth. The arguments that ESAB makes

here — based on “the testimony of knowledgeable, experienced

witnesses (including adverse witnesses in particular) actively

engaged 1m the field of plasma cutting” (at 17) — are the very

same arguments that it made to the Trial Court, to the Panel,

and to the Court en banc. See Argument IC, below; ESAB’s

brief to the Federal Circuit (at 3-31 — n.b. 3-8, 16-17, and

24-31); and its petition for rehearing en banc to the Federal

Circuit (at 2, 5-6, and 10-15). See also A922-24. However, the

7

Trial Court rightly rejected those arguments, calling them “very

unscientific” (A924), as indeed they are. The Federal Circuit

agreed. App. 13a-14a, 44a. On this point, therefore, the Trial

Court and the Federal Circuit are one.

C. ESAB’s “Very Unscientific” Argument

In ESAB’s brief to the Federal Circuit (at 3-31 —n.b. 3-8,

16-17, and 24-31) and its petition for rehearing to the Court

en banc (at 2, 5-6, and 10-15), ESAB cited extensively to the

testimony of non-experts on work function.* However, as both

the Trial Court and the Federal Circuit correctly recognized,

and as each of the ESAB-cited witnesses so clearly

demonstrated, knowledge cf plasma cutting is emphatically not

the same thing as knowledge of work function. Hence, both the

Trial Court and the Federal Circuit properly concluded that

ESAB’s reliance on these non-experts was improper.’

8. Much of ESAB’s argument was, and is, couched in terms of

“emissivity.” But as Professor denBoer explained, emissivity is not the

same thing as work function. (A669.) “They are related, but not the

same.” (/d.) “Emissivity is, in science, the propensity of the surface to

emit, in this case, electrons.” (/d.) “[W]Jork function is the energy barrier

that an electron needs to surmount to be emitted from the surface. . . .”

(Id.) Professor denBoer also explained that “thermionic emission” and

“thermionic emissivity” are related to work function, but are not the

same as work function. (A668-70.) Again, as the Federal Circuit correctly

said, ““Work function is an energy. It’s the energy that’s required to

remove an electron from inside the material to outside the material.”

App. 6a. ESAB is therefore simply wrong when it argues, “the panel’s

decision expressly acknowledges that ‘work function’ is the measure of

the ability of a metal to emit electrons (i.e., “emissivity’).”

9. It was the obvious, indeed admitted, lack of expertise of these

witnesses that caused both the Trial Court and the Federal Circuit to

reject ESAB’s arguments. It emphatically was not the case, as ESAB

now argues, that the “panel dismissed all other probative factual

testimony ostensibly on the basis that much of the testimony was couched

in terms of the relative ‘emissivity’ of the disputed materials, hafnium

and silver, rather than expressly in terms of work function.” At 13

(emphasis added).

8

Consider what the Trial Court said:

THE COURT: Yeah, if you’re trying to use this witness

[Mr. Landry] to establish that scientific fact, I can’t let

do you that. He disclaims any knowledge or expertise

in the area. You didn’t disclose him as an expert witness

in that field. If that’s your point, I can’t let you do that.

MR. ARROYO: But your Honor, he’s a witness also

on behalf of the defendant and officer of the company.

It’s an admission that we can use in the case as evidence

that can be used against Centricut without any, I mean,

presuming —

THE COURT: Your job, again, I may be

oversimplifying it, but I think I warned you many times

prior to trial, you’ve got to simplify it. Your job is to

prove that their accused device uses a silver insert at a

higher work function than the emitter and the

surrounding copper holder. That’s your job, right?

Haven’t we brought it down to that, and so arguing

with this witness about what he may or may not have

subjectively understood about a process he never

studied and hasn’t been disclosed as an expert on this

I guess is interesting and you can build your record if

you want to do that for purposes of appeal within

reasonable limits, but it’s not moving the ball much.

MR. ARROYO: But your Honor, it is part of our proof.

As I said, thermionic emissivity and work function are

reciprocals of each other.

THE COURT: So say you, so say you, and maybe you

will have some evidence that will back that up that

[sic]. You’re not a witness and you’re not giving

evidence in the case. If you’re saying to me that’s what

I want this fellow to do, I can’t let you do that.

He’s not a disclosed expert on the reciprocal nature of

the thermionic emissions and high work function, he

9

hasn’t been disclosed on that subject matter, he’s

demonstrated no expertise in the area, in fact he’s

disclaimed expertise in the field. He’s got a two-year

degree from a vocational technical school and says he

never studied it in any capacity, so how can I possibly

let you use him to establish that fact if that’s what you’re

trying to do? You’ve got to get somebody qualified to

do it and you have to have disclosed him. [A444-46.]

MR. ARROYO: All right, do you understand what the

nature is of the testimony we are offering at this point

in terms of the relationship between emissivity and

work function?

THE COURT: I understand what your theory is, and I

also understand that you’re trying to extract it from

witnesses that don’t subscribe to your theory.

I understand that.

MR. ARROYO: And by extracting it, I would hope,

your Honor, that by extracting it from adverse witnesses

it will make the point more soundly established.

THE COURT: But you have a basic legal problem of

proof of evidence, which is he is not an expert.

He’s not qualified as an expert, not disclosed as an

expert, disclaims expertise in the field, so that he might

be persuaded to say that there’s a physics equivalent

here, probably wouldn’t be persuasive. A, you can’t

use him for that purpose. You didn’t disclose him as

an expert. B, he’s not an expert, he’s not qualified to

give that opinion testimony. He in fact disclaims, as I

understand his testimony, he disclaims any expertise

in the field of work function, so if he were to stumble

into saying yes, high transfer heat rate equals low or

10

high work function or whatever, it doesn’t move the

ball, it’s not reliable evidence.

MR. ARROYO: Your Honor, certainly we can agree

that if a witness is an adverse party, the people in

responsibility admit statements that the admissions of

a party may be used in a case for all purposes —

THE COURT: Not uninformed admissions on matters

of expertise, not opinions, not unqualified opinions.

You get somebody on the stand to say flies come from

rotten meat and I have to accept that because he’s

admitted it? Hardly. That’s junk science as you like to

point out.

MR. ARROYO: When it’s admitted as a basic fact

throughout the case —

THE COURT: No, no, it’s not a basic fact, see, that’s

the problem, that’s the problem, it’s not a basic fact.

It’s not a basic fact. It’s a scientific fact. So it’s not a

basic — it’s not who did what, when, where, how. It’s

a principle of science that has to be proven through

expert witnesses usually. [A458-60.]

ESAB cites to the testimony of Mr. Couch (at 6-7, 19-20),

the CEO of Hypertherm, Centricut’s parent company, calling

him the “wizard of plasma.” At 6, n. 2. Yet as to his own inexpert

understanding of the science relating to work function,

he testified as follows:

I dont understand the physical chemistry of those two

materials in this oxidizing atmosphere. I dont

understand it. [A913 (emphasis added). ]

I really — we, as a manufacturer of this type of product

or any products, want to understand the underlying

11

physics of what is going on, and we don t. And we have

research work underway to try to understand it better, _

but we right now dont. [A914 (emphasis added). ]

Q. Mr. Couch, how well do you understand thermionic

emissivity?

A. I understand it very poorly. [A906 (emphasis

added). ]

ESAB also cites to the testimony of Mr. O’Hara (at 6),

Centricut’s expert on invalidity (an issue Centricut did not

appeal). Yet as to his own inexpert understanding of the science

relating to work function, he testified that he had never used

work function as a criterion for designing an electrode, emissive

insert, holder, or any other electrode-component for an air or an

oxygen environment; never studied work function in high

school, college, graduate school, or any academic setting; and

had only a limited understanding of work function. A276-78.

Moreover, Mr. O’Hara specifically denied that he had any

understanding of ESAB’s asserted reciprocal relationship

between work function and emissivity (A242); indeed, he

testified, “I did not relate work function and emissivity.” A243.

Again, ESAB made essentially the same arguments at trial

and to the Federal Circuit that it makes here — referring to,

among other things, emissivity and the testimony of “Messrs.

Landry, O’Hara, etcetera” and Mr. Couch. See A922-24; see

also ESAB’s brief to the Federal Circuit (at 3-31 — n.b. 3-8,

16-17, and 24-31) and its petition for rehearing to the Court en

banc (at 2, 5-6, and 10-15). But as stated above, the Trial Court

correctly recognized these arguments as “very unscientific”:

THE COURT: You know, that argument troubles me

because it seems very unscientific. “It must be so

because it works.” No. It works. Why it works, who

knows.

12

MR. ARROYO: Your Honor, —

THE COURT: You don’t throw a hypothesis out there

and then say, my hypothesis [is] proved because it

works — you haven t isolated anything.

MR. ARROYO: Your Honor, when —

THE COURT: Of course, who knows why it works.

Why isn t it equally true that it works because you have

a heat sink function? That's why it works.

MR. ARROYO: One of the difficulties here, your

Honor, and you will recall when the —

THE COURT: In other words, your proposition is

because their electrode works, necessarily the silver

has a higher work function. Necessarily. Because

otherwise it wouldnt work. But there’s competent

evidence that, no, it works because it keeps the emissive

insert cooler. That’s why it works. Not because of any

arc migration discouragement. Not at all. | don’t know.

How do I know? [A924-25 (emphasis added). ]

The Court’s trial insight into ESAB’s lack of proof was

correct, but impermanent. Where the Trial Court went wrong,

however, was not in adopting ESAB’s present arguments;

it never did. Where the Trial Court went wrong — indeed, clearly

wrong — was in its post-trial decision,'® in which it professed

to rely on the work-function tables to find infringement.

App. 22a, n. 4.

10. The Trial Court’s decision was issued 82 months after trial.

App. 42a; A850 and 993.

13

D. The Work-Function Tables

The Trial Court’s clearly erroneous finding of infringement

purported to rest on the work-function tables:

[I]t is clear from the scientific references . . . [i.e., the

work-function tables] that silver commonly has a

higher work function than hafnium. Nothing in the

record suggests that Centricut made its silver sleeves

from one of the relatively few low-work-function forms

of silver. It is more likely than not that the accused

electrodes’ sleeves were made from common forms of

silver having a higher work function than hafnium

[used for the emissive insert]. [App. 22a, n. 4 (emphasis

added). |

However, no evidence was evidence adduced — let alone

expert evidence — that any of the work-function tables contained

“typical” or “common” work-function values for silver. Thus,

the Trial Court’s statement that “silver commonly has a higher

work function than hafnium” (id.) has no evidentiary support

whatsoever, let alone any expert evidentiary support.

The Federal Circuit accurately summarized the evidence

on the work-function tables as follows:

[T]he district court found the work-function tables

showed that the accused device met the work-function

limitation by a preponderance of the evidence, even

though the only expert testimony directly contradicted

this conclusion.

Centricut called as its witness Dr. Marten denBoer, a

physics professor who was qualified as an expert

witness on the issue of work function. He filed an expert

report to which a number of work-function tables from

various scientific reference books were appended. The

tables reported the measured work functions of samples

of various pure metals, including silver and hafnium.

14

In the report, Dr. denBoer attempted te rank the work

functions of copper, hafnium, and silver. He concluded

that “tabulated values of . . . work function are .. . of

limited value in attempting to rank work functions of

specific materials” because many factors affect the

work function of a surface. (J. A. at 1335.)

Dr. denBoer’s subsequent testimony and affidavits

supported his conclusion in the report that reference to

work-function tables is an unreliable way to rank the

work functions of specific materials. In particular, he

testified that work function is a property of specific

surfaces, not of specific elements as represented in the

tables. He also testified that the tables were prepared

under much different conditions than a torch in

operation and that these differences in conditions

greatly impact the work function measurement.

He concluded that the tables were not probative as to

the relative work functions in the actual accused device. -

[App. 10a-1 la].

At the Federal Circuit, ESAB stayed away from the work-

function tables — and with good reason. Other than a short

reference to them in its brief to the Federal Circuit (at 27, n. 7),

ESAB did not even mention the work-function tables. As the

Federal Circuit said, “Esab barely mentions the work-function

tables in its brief. Esab points to no expert testimony or contrary

testimony [to Professor denBoer’s] supporting the use of the

tables.” App. I la.

And in its petition for rehearing en banc, ESAB continued

to stay away from the work-function tables. Its tack was

essentially the same as it had been before the Panel. Not only

did it fail to tell the Court en banc that the Trial Court had

sharply rejected its central argument; it also said nothing about

the actual basis for the Trial Court’s finding of infringement —

the work-function tables.

15

Thus, at the Federal Circuit, rather than stand foursquare

behind the Trial Court’s rationale, ESAB left it alone. Thatnon-

endorsement spoke, and speaks, volumes. It amounted, and

amounts, to an implicit acknowledgment of the clear error of

the Trial Court’s rationale. On this, ESAB was right.

But in its petition to this Court, ESAB changes tack for the

first time. Now, it refers to the tables (at 5, 8 n. 4, 15, and 16),"

and makes the following argument (at 15):

As noted, the district court found that Esab had satisfied

its burden of proof by a preponderance of the evidence

by reference to published work function values that

consistently ranked silver as having higher work

function than hafnium. The panel dismissed the

relevance of this additional evidence, also on the basis

of a selected excerpt of denBoer’s testimony, in which

he indicated that the reported measurements were

generally obtained under conditions that were different

from those prevailing in an operating plasma cutting

torch. App. 11a.

There was no dispute that the measured work function

values presented in various reference tables were

accurate and resulted from comparable measurements

or assigned valves. This was conceded in an earlier

affidavit submitted by denBoer. A. 1292 43 (“Such

values are accepted for purposes of comparison, for

example, in checking calculations of work functions,

under certain specific experimental conditions,

normally involving clean metals at room temperature

under ultra-high vacuum.”) [Emphasis added. }

ll. Atpp. 5 and 15, however, ESAB does not use the word “tables,”

but instead refers to them as “reference texts” and “published work

function values.”

16

ESAB’s new argument on the work-function tables should

fail for waiver, since it was not raised with the Federal Circuit.’

See, e.g., United States v. Ortiz, 422 U.S. 891, 898 (1975)

(declining to consider issue that petitioner had not raised with

appeals court). And it certainly fails for at least two other reasons.

First, ESAB’s statement that “published work function

values ... consistently ranked silver as having higher work

function than hafnium” is like the Trial Court’s statement that

“silver commonly has a higher work function than hafnium.”

App. 22a, n.4. Again, no evidence was evidence adduced — let

alone expert evidence — that any of the work-function tables

contained “typical” or “common” work-function values for

silver. Thus, whatever “consistency” might appear on the face

of some tables is meaningless. Furthermore, there are

inconsistencies, as the Federal Circuit noted:

The work-function tables reported work-function

values for numerous elements. Many of the tables

before the court provided data on multiple samples of

the same element using multiple methods for measuring

work function. For example, one table reports sixteen

work-function values for silver ranging from 3.08-

4.8leV. (J.A. at 1361.) The same table reported a single

range of 3.53eV for hafnium. (/d. at 1362.) On this

table, one of the work-function values reported for

silver was less than the work-function value reported

for hafnium. [App. 8a, n.3.]

Most fundamentally, to quote ESAB’s paraphrase (at 15)

of Professor denBoer, “the reported measurements [in the work-

function tables] were generally obtained under conditions that

were different from those prevailing in an operating plasma

12. Nor was it even raised with the Trial Court, to the best of

Centricut’s knowledge and belief, based on its review of ESAB’s

Proposed Findings of Fact and Conclusions of Law and its related Post-

Trial Memorandum.

17

cutting torch.” Those differences are striking. As Centricut said

in its brief to the Federal Circuit (at 16-17):

To sum up on the work-function tables: in resting its

finding solely on them, the Court clearly failed to take

into account the following: (1) that the tables are based

on conditions normally involving metals that are pure,

clean, at room temperature, and under ultra-high

vacuum; (2) that, in stark contrast, the “critical time”

for determining work function for purposes of the “425

Patent is during “actual operation” — (a) when in the

case of the components of the accused electrode, the

‘metals are alloyed — not pure, (b) when the metals’

surfaces are oxidized — not clean, (c) when the

temperature is 30,000 degrees K[elvin] — not room

temperature, and (d) when the environment is an

oxidizing environment — not an ultra-high vacuum;

(3) that those very oxidizing conditions will cause the

work function of a silver surface to fall and the work

function of a hafnium surface to rise; and (4) that for

these reasons, work function is now understood to be

a variable, determined by the particular atomic

arrangement of the surface under examination,

and not an intrinsic property of a material.

[Emphasis added. ]

4

Second, when ESAB says, “There was no dispute that the

measured work function values presented in various reference

tables were accurate,” it is not merely wrong, but outrageously

wrong. Centricut emphatically disputed the tables’ accuracy for

the purpose of determining infringement. Their glaring

unreliability for this purpose was a critical part of Centricut’s

case, both at trial and on appeal. See, e.g., Centricut’s brief to

the Federal Circuit at 6-18, 20-23.

Although it is true that Professor denBoer said, “Such values

are accepted for purposes of comparison, for example, in ;

checking calculations of work functions, under certain specific i

18

experimental conditions, normally involving clean metals at

room temperature under ultra-high vacuum” (A. 1292 43), those

conditions are starkly different from the conditions under which

a plasma torch operates. For the reasons summarized at the end

of the preceding paragraph, they provide absolutely no reliable

basis for a finding of infringement."

Indeed, ESAB itself acknowledges Professor denBoer’s

criticisms of the work-function tables:

While denBoer criticized these measurements as not

necessarily indicative of the actual work function values

under torch operating conditions, he also did not

propose any practical method for obtaining a direct

measure of these values for hafnium and silver under

the operating conditions of 30,000°K.., nor did he offer

any opinion that hafnium had a higher work function

under prevailing torch operating conditions in fact.

[At 16.]

Part of that statement betrays ESAB’s persistent misconception

about the burden of proof. It was ESAB’s burden, not Centricut’s,

to present a “method for obtaining a direct measure of these

values for hafnium and silver under the operating conditions of

30,000°K,” or to present some other reliable scientific evidence

from which infringement could be proved. This, however, ESAB

utterly failed to do.

13. ESAB is also outrageously wrong when it says, “There is also

undisputed testimony that even if the hafnium insert material is positioned

well off center in the holder material, the electric arc still emits off of

the hafnium surface as a further indication of its lower work function

under operating conditions. A. 223 (17-25).” At 16 (emphasis added).

That point was hotly disputed. Professor denBoer testified diametrically

to the contrary, saying among other things: “[I]t’s the motion of the gas

that’s most decisive in determining where the arc emits from, and

therefore even if the center were silver and the surround were hafnium,

... then the arc would continue to emit from the silver.” A720-21.

See also A716-22 (denBoer) and A880-84 (Couch).

19

ll. THE FEDERAL CIRCUIT CORRECTLY HELD

THAT ESAB FAILED TO MEET ITS BURDEN OF

PROOF ON INFRINGEMENT BECAUSE IT FAILED

TO PRESENT RELEVANT EXPERT TESTIMONY.

The work-function piece of this case might have been

entirely different if: (1) ESAB had offered an expert on work

function; and (2) that expert had given evidence, contrary to

Professor denBoer’s, that the work-function tables are

scientifically reliable for proving infringement here, or that some

other scientific basis existed to support ESAB’s claim of

infringement of the work-function element. Neither happened,

however. '*

Fed. R. Evid. 702 provides:

If scientific, technical, or other specialized knowledge

will assist the trier of fact to understand the evidence

or to determine a fact in issue, a witness quatified as

an expert by knowledge, skill, experience, training, or

education, may testify thereto in the form of an opinion

or otherwise, if(1) the testimony is based on sufficient

facts or data, (2) the testimony is the product of reliable

principles and methods, and (3) the witness has applied

the principles and methods reliably to the facts of the

case. [Emphasis added. ]

Note also the Advisory Committee Notes to the 2000

Amendment to Fed. R. Evid. 701: “Rule 701 has been amended

to eliminate the risk that the reliability requirements set forth in

Rule 702 will be evaded through the simple expedient of

proffering an expert in lay witness clothing.” (Emphasis added.)

ESAB’s efforts to evade the reliability requirements of Rule

702 rightly failed. Both the Trial Court and the Federal Circuit

14. ESAB refers (at 19, n. 12) to the designation of “experts”

(plural). But the only expert it designated was a patent agent, who had

no work-function expertise and did not even give evidence at trial.

20

~

were correct in rejecting ESAB’s “very unscientific” arguments

based on non-expert testimony. As the Federal Circuit said:

66

By agreement of the parties, the district court construed

the term “‘work function’ as ‘the potential step,

measured in electron volts, which permits thermionic

emission from the surface of a given material.” .. .

“Work function is an energy. It’s the energy that’s

required to move an electron from inside the material

to outside the material.” [App. 6a.]

Indeed, in this case the technology involved was

complex. The district court concluded that “the field

of technology from which [the invention] sprang is so

poorly understood that it qualifies as a ‘black art.’”

[App. 14a, 29a n.6.]

“Work function” is thus a scientific matter or, at the least, a

matter requiring technical knowledge or “other specialized

knowledge.” Rule 702. But ESAB met none of Rule 702’s

requirements: it had no witness who qualified as an expert on

work function, let alone one who testified on the basis of

“sufficient facts or data” (the inventor, for example, did not

even know the source of the data for the work-function chart

presented in Col. 4 of the ’425 Patent (A187-88, 107)), or on

the basis of “reliable principles and methods,” or by applying

such “facts and principles reliably to the facts of the case.”

However, while rightly reyecting ESAB’s “very unscientific”

reasoning, the Trial Court succumbed to its own, through its

misuse of the work-function tables — a clear mistake, as the

Federal Circuit fully recognized. In thus running afoul of Rule

702, the Trial Court also ran afoul of this Court’s teachings in

Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579

(1993); General Electric Co. v. Joiner, 522 U.S. 136 (1997);

21

Kumho Tire Co. v. Carmichael, 526 U.S. 137 (1999); and

Weisgram v. Marley Co., 528 U.S. 440 (2000).

Under Daubert, “the trial judge must ensure that any and

all scientific testimony or evidence admitted is not only relevant,

but reliable.” 509 U.S. at 589 (emphasis added). Kumho Tire

applies the same standard to technical or other specialized

knowledge. 526 U.S. at 148. Here, the Trial Court relied on

scientific evidence — the work-function tables — that no expert

witness said was “reliable,” and the one and only expert witness

said was un-reliable for ranking the work-function values in

the accused electrode.

Ironically, although the Court’s post-trial decision was

incorrect, its trial comments reflected that it correctly

apprehended ESAB’s failure to meet its burden of reliable

scientific proof. For example, during the final day of trial, after

the close of ESAB’s direct case and while addressing Centricut’s

motion for judgment as a matter of law, the Court made the

following comments to ESAB’s counsel:

THE COURT: No, but it would have been nice to have

a witness come in here and say, I’m an expert in physical

science and I’ve tested their device and this is the device

I tested and it’s theirs, and I measured the work function

of the silver in terms of its thermionic emissivity

measured in electron volts, and guess what, it’s higher.

That would have been nice. . . . So, you know, we didn’t

try it that way, but there might have been an easier way

15. The fact that this was a bench trial rather than a jury trial is no

bar to applying the rationale of Daubert and its progeny. That case law

applies not only to issues of admissibility, but also to issues of weight of

the evidence. Libas, Ltd. v. United States, 193 F.3d 1361, 1366 (Fed.

Cir. 1999). Accord, Elliott v. Commodity Futures Trading Commission,

202 F.3d 926, 934 (7th Cir. 2000). See Mitchell v. United States, 141

F.3d 8, 14-17 (1st Cir. 1999); and cf: Perez-Trujillo v. Volvo Car

Corporation (Sweden), 137 F.3d 50, 52, n.5 (Ist Cir. 1998). Moreover,

Rule 702 itself is couched in terms of the “trier of fact.”

22

to try it. So here we are on this long, winding,

inferential, deductive road. And what you’re going to

have to do is, since you don’t have a little completed

picture for me and all you have is these puzzle pieces,

you’ re going to have to put those puzzle pieces together

for me. [A927-28 (emphasis added). ]

THE COURT: Sure. And I’m sitting here asking

myself a simple question. Does their device have that?

Have what? Does it have a silver sleeve surrounding

the emissive insert that has a higher work function than

the emissive insert in the copper. Does it have that? No

one has gotten on this stand and said, yes, it does

because I’ve tested it.

MR. ARROYO: Your Honor, I submit to you that no

one has to get on the stand and say that they’ve

tested it.

THE COURT: Okay. You’re right.

MR. ARROYO: They all come in and admit that they

designed it.

THE COURT: You could get on the stand and say, we

dont have to test it because by definition, silver has a

higher work function than hafnium and by definition,

silver has a higher work function than copper.

But nobody seems to be willing to say that either. [A931

(emphasis added). ]

THE COURT: I’m sure they work. I’m sure they work,

but that doesn’t necessarily answer the question.

Skipping ahead — I’m not going to consider this on

the motion, but Dr. [den]Boer says, I dont know.

23

Nobody can tell you. Nobody can tell you. Silver can

have a work function much lower than the hafnium.

Hey, I dont know, but he’s a physicist. He's the only

expert that’s testified on that subject, and he said silver

can have a work function lower than hafnium.

Once that comes into play, shouldnt there be some

evidence that this particular silver doesnt? [A933

(emphasis added). }

THE COURT: No, there’s no problem — that’s a red

herring issue. There’s no problem with the definition

of the invention. The problem is a problem of proof.

It’s not even a question of substance. It’s a question of

proof. What's your proof in this courtroom to

demonstrate that their device infringes? We’re in the

court world now. So this is a question of what do you

have on your scale that tends to prove, more probably

than not, that their silver in their accused device has a

higher work function than the emissive insert in the

copper and/or the copper holder? What is it? And what

you seem to be saying is, well, because it works, and it

wouldn t work if it didn't have a higher work function.

Because it’s designed to work and it wouldn’t be

designed to work unless the emissive insert had a lower

work function. [A934-35 (emphasis added). ]

Again, the Court’s trial insight into ESAB’s lack of proof

was correct, but impermanent. Its erroneous post-trial Order to

the contrary may be examined in light of what this Court once

said about inadequate scientific proof:

[N]othing in either Daubert or the Federal Rules of

Evidence requires a district court to admit opinion

evidence which is connected to existing data only by

the ipse dixit of the expert. A court may conclude that

there is simply too great an analytical leap between the

24

data and the opinion offered... . [T]he studies upon

which the experts relied were not sufficient, whether

individually or in combination to support their

conclusions. .. .

Joiner, 522 U.S. at 146-47. Here, there is not even the “ipse

dixit” of an expert to “connect[] the existing data” (the tables)

to the Court’s conclusion. There is nothing — except the Court’s

own “ipse dixit.” The work-function tables “upon which the

. .. [Court] relied were not sufficient, whether individually or

in combination to support . . . [its] conclusions.” “[{T]here is

simply too great an analytical leap between the data” and the

Court’s finding of infringement.

The Federal Circuit held that “where the accused infringer

offers expert testimony negating infringement, the patentee

cannot satisfy its burden of proof by relying only on testimony

from those who are admittedly not expert in the field.”

App. 15a. That is certainly correct. Centricut would respectfully

submit, moreover, that even if it had offered no “expert testimony

negating infringement,” ESAB would still have failed to meet

its burden of proof, and the Trial Court’s decision should still

have been reversed. Weisgram is instructive. There, this Court

unanimously held that “the authority of the Court of Appeals to

direct entry of judgment as a matter of law extends to cases in

which, on excision of [expert] testimony erroneously admitted,

there remains insufficient evidence to support the jury’s verdict.”

528 U.S. at 457. For ESAB on the work function issue, there

was not even erroneously admitted expert testimony; there was

no expert testimony at all. Thus, even if Professor denBoer’s

testimony were not part of the “entire evidence” (U.S. Gypsum

Co., 333 U.S. at 395), the Federal Circuit’s decision should stand.

25

lI. SINCE THE FEDERAL CIRCUIT CONFINED ITS

DECISION TO THE INFRINGEMENT ISSUE AND

DID NOT REACH ANY ISSUES OF CLAIM

CONSTRUCTION, ESAB’S ARGUMENT II IS

IRRELEVANT.

In its Argument II (at 18-22), ESAB addresses claim

construction, saying among other things, “It is well settled under

controlling decisions that the claims of an issued patent are

construed as they would be understood by persons of ordinary

skill in the relevant art.” The statement is correct — but

irrelevant.

“The determination of infringement is a two-step process.

First, the Court construes the claims at issue to determine their

scope. Second, it compares the properly construed claims to

the accused device.” /ntellectual Property Development, Inc. v.

UA-Columbia Cablevision of Westchester, Inc., 336 F.3d 1308,

1313-14 (Fed. Cir. 2003) (emphasis added). Here, the Federal

Circuit’s decision was confined to the second step. No issues of

claim construction were addressed.'® As the Federal Circuit

said: “There was no dispute concerning the district court’s

construction of the work function limitation. The question was

whether the accused device satisfied the limitation.”"” App. 7a.

(emphasis added).

16. Centricut had also appealed the Trial Court’s claim construction

of the “cavity” and “sleeve” limitations. But the Federal Circuit did not

reach them, saying, “On appeal, Centricut urges that the district court’s

construction of these claim limitations was also erroneous. In view of

our disposition, we do not reach these issues, and accordingly do not

discuss them further.” App. 6a, n. 2.

17. ESAB is thus obviously incorrect when it says (at 7) that

Centricut “conceded that its accused electrode corresponded to each of

the elements of the asserted claims as previously construed by the court.”

Although ESAB qualifies the preceding statement with the words,

“with the possible exception of the so-called ‘work-function limitation,’”

(Cont'd)

26

Not only is ESAB’s claim-construction argument irrelevant,

but it suffers from the same infirmities of the “very unscientific”

argument that was rejected by both the Trial Court and the

Federal Circuit. See Argument IC, above.

CONCLUSION

For the foregoing reasons, ESAB’s Petition for a Wnit of

Certiorari should be denied.

Respectfully submitted,

EDWARD A. HAFFER*

1000 Elm Street

P.O. Box 3701

Manchester, NH 03105-3701

(603) 627-8115

MICHAEL J. BUJOLD

Davis AND BujJoLp, P.L.L.C.

NEAL E. FRIEDMAN

500 North Commercial Street, 4" Floor

Manchester, NH 03101

(603) 624-9220

Counsel for Respondents

* Counsel of Record

(Cont’d)

the qualification is an absurd understatement. The Federal Circuit’s

statement, quoted above, is accurate. The question whether Centricut’s

accused device in fact satisfied the work-function limitation was hotly

disputed. It was the foremost issue at trial; it was the foremost issue on

appeal.