Petition for Writ of Certiorari — Malot v. Roy F. Weston, Inc.

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IN THE

Supreme Court of the United States

OCTOBER TERM, 1995

JAMES J. MALOT,

Petitioner,

Roy F. WESTON, INc. and

WESTON SERVICES, INC.,

Respondents.

Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR WRIT OF CERTIORARI

MARY HELEN SEARS *

THE M.H. SEARS LAW FIRM,

CHARTERED

2300 N Street, N.W.

Sixth Floor

Washington, D.C. 20037

(202) 663-9048

Counsel for Petitioner

* Counsel of Record

WILSON - Erpgs PRINTING Co., INC. - 789-0096 - WASHINGTON, D.C. 20001

QUESTIONS PRESENTED FOR REVIEW

Are litigants like Petitioner—whose cases have so-

phisticated, complicated or subtle fact patterns—

being deprived of the right to a fair hearing by the

growing tendency of overburdened appellate courts to

resort to summary disposition in lieu of merited rea-

soned consideration and analysis?

The summary judgment of invalidity and noninfringe-

ment of Petitioner’s patent claim rested upon imper-

missible District Court fact findings which: (i) un-

critically endorsed as anticipatory under 35 U.S.C.

102(a), (b) or (g) controverted, uncorroborated, self-

serving, affidavit averments of prior use or invention

of the patented process; and (ii) also pronounced

anticipatory under 35 U.S.C. 102(b) a publication

as to which the Patent Office had found differences

sufficient under 35 U.S.C. § 103 in weight and char-

acter to justify reissuing the patent. Can the appellate

affirmance of the District Court without opinion be

justified on any legally cognizable ground?

At oral argument, Respondent’s counsel admitted that

the alleged prior inventors’ work failed to fulfill an

essential condition of the patent claim. Should the

Court of Appeals accordingly have reversed and re-

manded for trial or, at the very least, explained its

reasoning fully?

(i)

THE PARTIES

The names of all parties to the proceeding in the Court

of Appeals for the Federal Circuit appear in the caption

of this case.

TABLE OF CONTENTS

JURISDICTION

PERTINENT STATUTES AND RULES

STATEMENT OF THE CASE

SUMMARY OF ARGUMENT

REASONS WHY THE WRIT SHOULD BE

GRANTED ...

i. AFFIRMANCE WITHOUT OPINION—AN

ABDICATION OF APPELLATE RESPONSI-

BILITY ...

Il. THE BARBED WIRE PATENT CASE, COR-

ROBORATION OF PRIOR USE OR INVEN-

TION AND “PERSONAL KNOWLEDGE”

AFFIDAVITS

lil. THE FEDERAL CIRCUIT'S RESORT TO

RULE 36 EFFECTIVELY BURIES THE DIS-

TRICT COURT’S LEGAL ERRORS AS WELL

AS ITS OWN

CONCLUSION

APPENDIX

Judgment of the Court of Appeals for the Federal

Circuit—August 11, 1995

Order of Court of Appeals for the Federal Circuit

Denying Rehearing—September 22, 1995

Order of the District Court for the Northern Dis-

trict of Georgia Granting Summary Judgment,

with Opinion—May 12, 1994 .

(iil)

Page

TABLE OF CONTENTS—Continued

Statutory Provisions: Page

35 U.S.C. § 102(a), (b) and (g) ......................... 18a

pit FoR) ff . | eee 18a

iy I TE IIE ‘Gkcstinntinscictucdecnnnonicecaseccmmmiensomnainn 19a

36 USC. 6 SFA .........-.. A Rae SOAR DON CO BE PN 19a

35 U.S.C. § 282 ....... Baer MA ROE! ABN A 23a

Federal Rules of Civil Procedure, Rule 56 .-............... 25a

Rules of the Federal Circuit, Rule 36 ........................ 26a

Claim 8 of U.S. Reissue Patent 33,102 -................... 28a

TABLE OF AUTHORITIES

Cases Page

Adickes v. S.H. Kress and Co., 398 U.S. 144

PM wcatcsineesecsiseneds . sakes 22

Conroy v. Reebok Int'l, 14 F.8d 1570 (Fed. Cir.

| RAED RSET ECS PONE OM AD ee NLD ha 16

International Visual Corp. v. Crown Metal Mfg.

Co., 991 F.2d 768 (Fed. Cir. 1993) .... 16

National Classification Committee v. United States,

TGB FBG 1G6 CRMC. GAP. TOG cccnnecccevccsccseccsccncscsseee 17

Paragon Podiatry Lab., Inc. v. KLM Labs., 984

A Bt £t Ae A. | Re eenemeneneen 16

Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993)... 19

SRI Int'l v. Matsushita Elec. Corp., 775 F.2d 1107

(Fed. Cir. 1985) . na nssbiphbieishaiiciacadmaemde tate 22

United States v. Diebold, fae. - 369 U S. 654 (1962) .. 22

Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1182 (Fed.

Cir. 1991) ........ TR Ie ET SAVE We OA AS SALAD PRD 16

Washburn & Moen Mfg. Co. v. Beat’Em All Barbed

Wire Co., 143 U.S. 275 (1892) ........ 11, 18, 19, 20

Statutes

BD Chilis MP OD cccsensdictsncaceteinucensemnmntaone 1

28 U.S.C. 2101 (c) ...... icine aes ae 2 1

35 U.S.C. 102 (a) é TONG SLE TO 1

35 U.S.C. 102 (b) ..... idjusieeaeiie aaa Neeciiete cane 1,2

35 U.S.C. 102 (2) 1

OE Ge Io casonsncdescrcasandetaca-cioeins ecu ee 1,6

35 U.S.C. 251 aol anenhaliib baie seaadoeues 1,5

35 U.S.C. 271 Lithdtpetbubnicbeans tical tna Oe ee 1

Bee GS titts SU Sncdosnieses stone 1

Rules

Federal Rules of Civil Procedure, Rule 56 _.............. ; aan

Federal Circuit Rules, Rule 36 ......1, 3, 13, 14, 15, 20, 21, 22

Other Authorities

Dragich, “Will The Federal Courts Of Appeal

Perish If They Publish? Or Does The Declining

Use Of Opinions To Explain And Justify Judicial

Decisions Pose A Greater Threat?” 44 The

American U. Law Bev. 158 ..........-2022<-.0cce-000----2020- 15

TABLE OF AUTHORITIES—Continued

Page

Kester, J.G., “Appeals Courts Keep More And More

Opinions Secret”, The Wall Street Journal, De-

cember 18, 1995, page A-15 ......0..... en. 17-18

IN THE

Supreme Court of the United States

OCTOBER TERM, 1995

No.

JAMES J. MALOT,

Petitioner,

Vv.

Roy F. Weston, INc. and

WESTON SERVICES, INC.,

Respondents.

Petition for Writ of Certiorari to the

United States Court of Appeals

for the Federal Circuit

PETITION FOR WRIT OF CERTIORARI

JURISDICTION

The judgment of the Court of Appeals for the Federal

Circuit (infra, la) was entered August 11, 1995 pur-

suant to 28 U.S.C. §1295(a). A timely petition for

rehearing was denied (infra, 3a) on September 22,

1995. This petition is filed under 28 U.S.C. § 2101(c),

and is timely pursuant to this Court’s Rule 13(3).

PERTINENT STATUTES AND RULES

The statutory provisions involved are 35 U.S.C.

§§ 102(a), 102(b), 102(g), 103, 251, 271 and 282.

The rules involved are Federal Rule of Civil Procedure

56 and Federal Circuit Rule 36. In pertinent portion,

all appear infra, 18a to 27a.

2 -

STATEMENT OF THE CASE

Petitioner James Malot is the owner and coinventor of

Reissue Patent 33,102 which contains the claim at issue.’

He is also a professional engineer and the President of

Terra Vac Corp., a company which competes with Re-

spondent Weston in the environmental cleanup of soil

and groundwater.

Petitioner’s reissued patent claim 8 (infra, 28a) cov-

ers a highly effective process for using a vacuum ex-

traction technique to remove completely (i.e., very often

to levels in parts per billion of soil) liquid organic con-

taminants (such as dry cleaning fluids, paint thinners,

liquids in which paint, ink or other pigments are sus-

pended, gasoline and many other industrially used organic

liquids) from the part of the earth’s subsurface known as

its “vadose” (i.e., unsaturated) zone. through which air

is able to move laterally. The claim was held invalid and

not infringed in an unpublished summary judgment deci-

sion (4a to 17a) by the District Court for the Northern

District of Georgia which, inter alia, made fact findings

on controverted issues. This decision also (a) ignored a

voluminous conflicting evidentiary record adduced in the

U.S. Patent and Trademark Office (“PTO”) reissue pro-

ceeding which the moving defendant, Respondent Weston,”

made no effort to address; (b) held anticipatory of the

claim under 35 U.S.C. § 102(b) American Petroleum

Institute (“API”) Report No. 4429 (A226-251) describ-

ing a process that the PTO had found, based on Petitioner

Malot’s evidence, to be sufficiently different in character

'The reissue patent was granted October 12, 1989 to replace

Patent 4,660,639 issued April 28, 1987.

Claim 8 (infra, 28a) at issue is the only one of the several

in the patent which covers completely decontaminating a polluted

site and the only one asserted against Weston in the District Court.

2 The caption shows two corporate defendants, Roy F. Weston,

Inc. and Weston Services, Inc., but the two are now merged and

will therefore be referred to herein as “Respondent”.

from that of Claim 8 to merit reissuing it;* (c) ignored

Weston’s failure to present evidence supporting the affida-

vits to show that its alleged prior inventor or user affiants

had ever completely cleaned up (i.e., “decontaminated”

as required by the claim) the soil at any contaminated

site; and (d) ignored the deposition testimony of Malot’s

expert that Weston’s accused activity at one site infringed

the patent claim, electing to accept instead the affidavit

of a Weston employee (as buttressed by an opinion of

Weston’s expert) that purported to state that Weston had

practiced the API process at that site.

The Court of Appeals for the Federal Circuit pro-

ceeded under its own Rule 36 (infra, 26a-27a) to affirm

summarily (infra, 1a).

The process covered by the patent claim was originally

invented by Malot and his coinventor, Visser, to cope

with a serious environmental spill problem at a manu-

facturing plant of Visser’s employer, the Upjohn Com-

pany, in Puerto Rico, where massive quantities of carbon

tetrachloride from leaky tanks threatened the water sup-

ply of a village. The unsaturated vadose zone at the site

extended about 300 feet below the surface and tests

showed that contaminant had already partly reached the

underlying groundwater. Calculations showed 85 to 90

percent of it was still in the vadose soil layer, however

(A939-940; A945-946). EPA experts summoned on an

emergency basis to the site and others consulted by

telephone, could only suggest either excavating the top

25 feet of soil (a useless exercise that would have re-

quired closing the plant) or using massive quantities of

water to flush the pollutant into the groundwater, from

which removal could be effected by a laborious, many

years long, “pump and treat” process.*

3 The “A” citations refer to pages of the two-volume Joint Ap-

pendix filed in the Court of Appeals.

* This entails pumping the water to the surface, using a distilla-

tion or extraction process to remove pollutant, returning the puri-

fied water to the subsurface and continuing to repeat this until

After study, the coinventors proposed to use a series

of wells equipped with high vacuum pumps capable of

exerting a sufficient vacuum through pipe perforations

located in the contaminated area (usually near the well

bottom) to vaporize all of the liquid contaminants pres-

ent in the unsaturated soil ° over a period of continuous

treatment and simultaneously to draw air continuously

and laterally through the surrounding pore space in the

soil to entrain the vapor and replace vapor-laden air.

The vacuum pumps also served to exhaust the vapor-

laden air continuously to the surface for further treat-

ment (A940; A945-6). The EPA experts expressed dis-

belief as to the effectiveness of the proposed process, but

being unable to suggest a clearly effective alternative,

agreed to let them proceed. The proposed process proved

effective and ultimately a cleanup of carbon tetrachloride

to within less than 10 parts per billion parts of soil was

effected within a period of about three years (/d.).

After proving the process was effective. on January 4,

1984, Malot and Visser filed a patent application which

eventually culminated in issuance of two patents, one of

which—Patent 4,660,639—contained the patent claim at

issue. Visser’s employer, Upjohn, embarked on a licens-

water tests show the content of pollutant to be below the environ-

mentally tolerable level (usually specified in terms of parts per

million or billion of soil). Calculations made at the time showed

soil flushing alone would have taken approximately 60 to 75 years

because of the low porosity of the vadose zone soil at the site.

(A939-940; A945-946)

5 The “unsatureted” or ‘‘vadose” zone of the subsurface varies

in thickness from a few feet to hundreds of feet. It is a complex

zone where at least air, water, water vapor and one or more types

of soil are always present and air is able to move laterally through

the pore spaces between soil particles. There are two other zones

of interest—the phreatic, or fully saturated zone (containing soil

and water only) and the intermediate “capillary fringe’ zone,

wherein water wicks up between soil particles (so that it forms

thin liquid columns which prevent the minimal amounts of air

present from flowing laterally). This zone is also deemed a satu-

rated zone because lateral air flow is not possible there.

ing program and in the course thereof, was apprised by a

prospective licensee of the existence of API Report 4429

and informed that its content might invalidate the patent.

As a result of this and other issues raised by prospective

licensees, an application for reissue of the patent under

35 U.S.C. § 251 was filed (A851-4). The applicants in-

vited PTO attention, inter alia, to the API Report.

This Report describes a hypothetical process for re-

moving gasoline vapor spontaneously formed above a pool

of liquid gasoline “floating on the water table” (A226-

251). (The “water table” is the level to which water rises

in a well or other shaft. Liquid gasoline, which is lighter

than water, tends to collect in a layer atop the water

under such circumstances and is colloquially said to

“float” thereon. )

Gasoline, unlike carbon tetrachloride and many others

of the heavier, higher boiling contaminants to which the

process defined by Claim 8 is addressed, is a mixture of

many different hydrocarbons ranging from light, low

molecular weight moiecules that spontaneously vaporize

under norma! temperature and pressure conditions (e.g.,

ethane, propane, butane)* to heavier ones that do not

(e.g., octanes, nonanes, decanes).* The API Report sug-

gested that by using suction blowers which exert a slight

negative pressure differential “ at the top of a well shaft,

® These products impart to gasoline its well known characteristic

odor. Their vapors pose a danger of explosion and/or asphyxiation

when present in air at concentrations above a limit value of about

1 percent.

7 These more difficuitly vaporizable hydrocarbons and the aromatic

hydrocarbons (e.g., benzene, toluene) that are often present in

gasoline and other common hydrocarbon mixtures (e.g., fuel oil,

jet fuel, kerosene) are today deemed particularly hazardous to

human health when present in soil and groundwater, but their

toxicity was not well-recognized as recently as the 1970’s.

8 Normal air pressure, of one atmosphere, measured barometri-

cally, equals 29.92 inches of mercury or 405 inches of water. The

the easily vaporized fractions of gasoline, which tend to

some extent to diffuse upward, could be induced to move

through the soil in vapor form and through the perfora-

tions in a pipe within a shaft and could then be bled off

to the surface. The Report also suggests that bleeding off

the contaminated air would cause fresh air to flow in

and replace it, thereby causing the spontaneously vapor-

izable components of gasoline to restore the liquid-vapor

equilibrium by further spontaneous vaporization. Since

the heavier molecular weight liquid components of gaso-

line would not be materially affected by the process as

envisioned, the Report suggested that, as the gasoline

vapor concentration in the air at the top of the shaft

diminished and the point was reached where the vapors

were “no longer hazardous”, the procedure (called “ven-

tilation”)} could be discontinued, leaving residual, non-

spontaneously vaporizable liquid hydrocarbons behind.

(A244).

The PTO relied upon the API Report as the basis for

rejecting all of the reissue application claims (including

claim 8) as unpatentable under 35 U.S.C. § 103 (A873-

880). The patentees presented expert evidence from Dr.

W. Thomas Straw, a professor of hydrogeology, who dem-

onstrated that the API Report actually suggests a process

that could not work as described. He showed that vapor

situated above “floating” liquid gasoline resting on the

water table would be in the capillary fringe, a saturated

zone through which air cannot flow laterally. He further

API report suggests the blowers should create a negative pressure

differential of 6 inches of water (a little less than half an inch

of mercury) at the top of a well shaft (A246). This slight, virtually

unnoticeable vacuum exerted at the surface will bleed out spontane-

ously formed and/or preexisting light weight gasoline vapors,

which usually tend to rise upward, even without the negative sur-

face pressure differential, from underground areas relatively near

the surface. It cannot fully decontaminate a contaminated vadose

zone by drawing air laterally through it and volatilizing liquid

contaminants present there, as required by Claim 8 (infra, 28a).

showed that liquid volatilizable contaminants present in

the unsaturated vadose zone are in an entirely different

posture from the same contaminants positioned in a sat-

urated zone. This is in part because liquid contaminants

in the vadose zone adsorb to soil particles in addition to

mixing, to a limited but non-negligible extent, with the

water that is always present (which tends to coat soil

particles) (A992-1013). Further evidence presented to

the PTO showed that Malot’s company, Terra Vac, using

the claimed process, had fully decontaminated vadose

zones containing liquid chlorinated organic contaminants

to final contaminant concentrations expressed in parts of |

and 5 per billion parts of soil, respectively, at two com-

mercial sites (A954-966; A980-987) and had removed

gasoline containing a benzene component to a level of

4.5 parts per million of soil (the environmentally accept-

able standard in Florida) at a site controiled by the State

of Florida (A967-979).” The three affiants who pre-

sented this evidence each also stated that they were sur-

prised by Terra Vac’s success in decontaminating a

vadose zone because they were familiar with “ventilation”

or venting processes similar to that postulated by the

API Report and, in their experience, had found venting

ineffective to decontaminate a vadose zone and _ useful

only to remove potentially hazardous vapors of low molec-

ular weight hydrocarbons.”

® The Gentry declaration describing this gasoline cleanup filed in

the PTO points out that the oil industry paid very little attention

to contamination of the unsaturated vadose zone during the 1970's

and early 1980's, focussing virtually exclusively upon recovering

liquid gasoline (which was salable) from the saturated zone and

eliminating potentially explosive, hazardous vapors from buildings

and other places where they might cause liability (A971).

10 Still other sworn evidence submitted to the PTO recounted

the story of how the claimed invention was made (A937-950) and

presented vignettes about other persons who initially disbelieved

the effectiveness of the Claim & process to decontaminate a vadose

The PTO thereupon granted Reissue Patent 33,102

containing all of the original claims. Shortly thereafter,

Malot acquired all rights in the reissue patent and its

companion patent, 4,593,760, also based upon the same

Malot-Visser patent application filed January 4, 1984.

In 1992, Malot filed suit against Weston for infringe-

ment of Claim 8 of the reissue patent, inter alia, at the

Georgia World Congress Center (“GWCC”) site in

Atlanta.

After a period of discovery, Weston filed a motion for

summary judgment of invalidity and noninfringement of

Claim 8. Invalidity was premised upon affidavits claiming

prior invention by others. Of these, the Court of Appeals

at oral argument focussed upon Yaniga (A351-359) and

Knopik (A128-139). Noninfringement was _ premised

upon the affidavit of a Weston employee, Corbin (A501-

504), (who alleged that the process of the API Report

was used at GWCC) and an opinion of Hoag, a civil

engineering professor, who in pertinent part simply con-

tradicted the Straw declaration of record in the PTO,

asserting that the API Report describes a process to be

conducted in the vadose (unsaturated) zone (A214), and

pronounced Weston’s “Work Plan” for the project “iden-

tical” to the Report’s teachings (A247).

Malot opposed and presented counterevidence as well

as legal argument (A1285-2449).

With respect to Knopik’s claim of prior invention,

Malot specifically pointed out material inconsistencies be-

zone, and expressed surprise when its effectiveness was proved,

whom Malot encountered in his business.

In particular, Malot pointed out that an Administrator at the

Office of Technology Assessment (“OTA’’), after reviewing cleanup

data from sites where the process of Claim 8 was performed,

pronounced that process “the best innovative technology” he had

seen in five y2ars of reviewing allegedly new environmental tech-

nologies at the rate of about five per day (A949).

Pm ee

tween the later Knopik affidavit and Knopik’s own earlier

patents,’’ Knopik’s deposition testimony in the case,”

and documents available from non-Knopik sources."

Malot’s own affidavit, based on knowledge acquired in

his personal day-to-day experience since 1981 in soil and

11 Knopik patent 4,183,407 (filed in 1977 and cited by the PTO

against Malot but successfully distinguished before Claim 8 was

first issued) shows using a 1/32 horsepower fan at the top of a

well shaft to bleed off “residual” vapors of gasoline from an un-

specified underground zone after completion of siphoning up liquid

gasoline in liquid form lying atop the water table (A1199).

Knopik’s subsequently sought patent 4,323,122 specifically states

this device is not intended to remove liquids from underground

zones (A1204). In addition, Knopik’s first patent 3,980,138 (A1192-

1196) depicts a device for siphoning up liquid gasoline lying on

the water table and shows the well casing at the top of the borehole

was unsealed against air leakage around the well casing——a neces-

sity when liquid gasoline recovery is the objective (A1377).

Knopik’s affidavit alleges he at times sealed the top of the borehole

when using this device, thus expediently conforming it to one

requirement of claim 8 (A131). No other evidence supports this

assertion.

12 Knopik testified at deposition that he stopped the work of

recovering liquid gasoline, in liquid form, from the top of the water

table and ceased venting hydrocarbon vapor when an insurance

company asked him to, or when the recoverable liquid gasoline (in

liquid form) reached an insignificant level (A1745; 1755). He

also admitted that he cculd not recall he ever measured contaminart

levels remaining in soil after he stopped vapor venting operations

(A1761)—yet his affidavit asserts he decontaminated he vadose

zone at various sites (A136).

13 Knopik’s affidavit relies on a memo from the Minnesota Pollu-

tion Control Agency (A157) to ailege that he cleaned up gasoline ac-

cording to an environmental standard, but fails to acknowledge that

the standard relates to stack sampling of air with an explosimeter,

which, according to the testimony of the former president of Oil

Recovery Systems (“ORS’’), makes a “coarse” measurement show-

ing whether hydrocarbon vapor in air at the top of a borehole is

above or below the lower explosive limit (A1774), but tells nothing

about soil decontamination. Knopik’s affidavit also alleges he re-

ceived its Exhibit C (A150) an ORS draft document of unknown

authorship “‘before September 1982” (A135) but does not explain

how he fixed the time and has no supporting indicia.

groundwater decontamination, was also presented to show

the existence of a controversy with regard to the inability

of the Knopik equipment to achieve what Knopik’s affi-

davit says it did and to expose a controversy about the

technical meaning of various documents appended to the

Knopik affidavit.”

With respect to Yaniga (who claimed prior invention

and prior use of the Claim 8 process at ORS between

1982 and January 4, 1984 and alleged knowledge of

earlier prior uses in Pennsylvania by unidentified others

at unidentified sites), his declaration is largely cast in

grandiose generalities, with liberal sprinklings of claim

language. It does, however, contain two rather specific

assertions. The first is that he and Sanders, the former

president of ORS, developed an “explosion proof vent

system” based on Knopik’s patent 4,183.407 which was

capable of performing, and did perform, the Claim 8

14 Malot’s declaration, inter alia, shows that Exhibit C to Knopik’s

affidavit, which speaks of pulling air through ground saturated

witn hydrocarbon (an impossibility as Straw demonstrated in the

PTO), rests upon an ORS fan said in Exhibit C to have a capacity

to draw air at 1100-1600 cubic feet per minute. The efficiency curve

of this fan, produced from ORS files (Malot Declaration Exhibit

A; A1402), shows it could not have exerted sufficient vacuum at the

top of a well to pull air through the unsaturated vadose zone

(A1372-1373). Malot’s declaration also shows the 1/32 horsepower

fan of Knopik patent 4,183,407 likewise could not have done so

(A1373-1374). Malot’s affidavit also shows the devices of Knopik

patents 3,980,138 and 4,323,122—both designed for siphoning liquid

gasoline in liquid form from the top of the water table—each oper-

ated to vaporize part of that liquid internally and explains that it

is more reasonable to construe Knopik Exhibit G’s calculated figures

for “‘vaporization” in gallons as pertaining to this internal vaporiza-

tion problem and not to contaminant vaporized from the vadose

zone, especially in view of Exhibit G’s reference to gasoline layer

thickness measurements, which refer to the thickness of a layer

of liquid gasoline above the water table in a well (A1379-80).

‘5 Yaniga purported to have disseminated advertising materia]

about this system at pre-January 4, 1984 meetings and conferences

and referred to Exhibits A-D (A360-371) of his declaration as

process (A356-357)."° The second is a reference to a

Coventry, Rhode Island site where Yaniga says the Claim

8 process was performed before the January 4, 1984 filing

date to which Malot’s patent is entitled (A355-356).

Malot countered these assertions by pointing to a signifi-

cant inconsistency in the various documents produced by

ORS relating to the “explosion proof vent system.” ' and

to discrepancies between the Yaniga declaration and the

final report on the Coventry, Rhode Island project.”

As to both Knopik’s and Yaniga’s affidavit assertions,

Malot also relied on this Court’s decision in Washburn &

Moen Mfz. Co. v. Beat'Em All Barbed Wire Co., 143

U.S. 275, 284-85 (1892), requiring both specific detail

about prior use or invention and indeperdent corrobora-

tion to establish proof that is “clear, satisfactory and be-

yond a reasonable doubt” (143 U.S. at 282) that the

claimed prior work truly ensued.

examples. But Exhibits A (A360), B (A361) and D (A365-371)

are clearly interna! drafts, authorship and dates of which are un-

known. Exhibit C (A362-364) includes a brochure but the only

proven date of dissemination is October 30, 1987 (A362), more than

three years after Malot’s application filing date.

1“ The Malot declaration, as noted above, shows that the 1100-

1600 cubic feet per minute fan of the “explosion proof vent system”

later called the “SVS” (A363-364), according to the document

which is its Exhibit A, clearly could not have drawn a negative

pressure differential capable of pulling air laterally through a

contaminated vadose zone and volatilizing contaminants present

there (A1372-1373).

17 Malot declaration Exhibit D is the “final report” of this proj-

ect. It states that the operations performed at Coventry were

siphoning up liquid gasoline from the top of the water table and

venting of potentially dangerous hydrocarbon vapors from base-

ments of nearby cottages. This report also refers to the pickup

by the water in the saturated zone of additional gasoline con-

taminant (from soil previously in the unsaturated vadose zone

during a rainy spring period when the water table rose significantly

above its normal level (A1405-1414). It thus rebuts the Yaniga

assertion that the #«nsaturated vadose zone at this site was de-

contaminated of liquid gasoline as Claim 8 requires.

The noninfringement affidavit of Weston’s employee

Corbin, as supported by Hoag’s opinion affidavit, is

countered by the opinion of Malot’s expert Feenstra that

the Weston GWCC work did use the Claim 8 process

(A1726-1731; A2580). It is also countered by Malot’s

declaration (A1397) and by a letter obtained from the

Georgia Department of Natural Resources (A2408-2409 )

showing cleanup ‘in the vadose zone” to agency specifica-

tions. The contaminants at the site were chlorinated

VOCs,"* (A303) not gasoline, and the vacuum devices

placed at the top of the various boreholes were capable of

drawing a vacuum of 12 inches of mercury (nearly half

an atmosphere) (A301). The opinion of Hoag that the

process Weston used was the one postulated in the API

Report is contrary to the Straw affidavit and inconsistent

with the Elliott, Komoski and Gentry declarations in the

reissue file history.

In the reply brief supporting summary judgment

(A2454-2477), Weston argued that its affidavits and

declarations must be fully accepted because each is al-

legedly premised on personal knowledge, and attacked

the Malot declaration (A1367-1401) as inadmissible be-

cause it is not expressly so posited (though individual

paragraphs clearly are) and it contains opinions (A2454-

2477). Contradictions of and inconsistencies with the

affiants’ own documents and with the reissue file history

evidence were ignored.

The District Court decision, issued after an oral hear-

ing remarkable for the failure of the district judge to pose

one question or even comment about any aspect of the

motion (A2517-2571), ignored Malot’s position in all

respects and also ignored the evidence in the reissue file

history to grant the motion (infra, 4a to 17a).

Malot filed a timely appeal to the Court of Appeals

for the Federal Circuit. After full briefing, an oral ar-

gument was held on August 7, 1995.

'ST.e., volatile organic compounds (or contaminants).

een

At that argument, the appellate panel made clear that

if it were satisfied that the Knopik affidavit and Yaniga

declaration are sufficiently corroborated, it might proceed

under the Court’s Rule 36 (infra, 26a) to affirm the Dis-

trict Court summarily.”

Weston’s counsel asserted that Exhibit G to the Knopik

affidavit (A167-185), Knopik Patent 3,980,138 (A1192-

1196), the ORS “brochures” (A360-371)” and the Min-

nesota Pollution Control Agency memorandum (Exhibit

E to the Knopik affidavit, A157) are corroborating docv-

ments and proceeded to make arguments concerning each

that are in conflict with facts in the record.*’ In the course

19 A transcript of the oral argument tape (hereinafter cited as

“Transcript’”), prepared by a certified court reporter, has been

lodged with the Clerk and served upon the Respondent’s counsel.

This transcript makes no reference to individual appellate panel

members by name but attributes to “The Court” all statements by

any of the three members. The statement of the Court of Appeals

referred to in text appears at page 24 thereof.

“°Of these, only Exhibit C to Yaniga’s declaration (A362-4)

clearly even includes a “brochure’’.

“1 One can look vainly through these documents to find an indi-

cation that anyone, including Knopik or Yaniga, actually decon-

taminated a vadose zone as Claim 8 suggests.

Respondent’s counsel argued (Transcript pp. 15-16) that since

both Exhibit G to Knonpik’s affidavit and his patent 3,980,138

show removing liquid and vapors, the vapors must have come from

the vadose zone—-but this is both inaccurate and a non sequitur.

Vapors of low molecular weight gasoline components may exist,

e.g., in the capillary fringe, from whence they would be exhausted

first by any device designed to siphon up liquid gasoline (as the

device of patent 3,980,138 was). Moreover, the propensity of the

device of this patent to vaporize appreciable liquid gasoline in-

ternally after collecting it, acknowledged in later Knopik patent

4,323,122 (A1204) is ignored in this argument.

The Weston argument at Transcript pp. 17-18 (that the ORS bro-

chure statement that “[t/]he SVS [a later name for the explosion-

proof vent system] works by pulling air through ground saturated

with hydrocarbon” means a “saturated” vadose zone (A364) is

inherently unbelievable. Yaniga, with two degrees in geclogy

of doing so, he made a key admission. He said the

Minnesota Pollution Control Agency document

“is saying .. . that when you get to the point that

you no longer have detectable hydrocarbons... .

[you're] no longer causing evaporation to go on

down there.

Why? Probably because what you have left are the

fractions of the contaminant, they're not volatile.

which are what you're going to have left if you prac-

tice this [patented] process also.” ™

In fact, the mere venting of spontaneously volatilized

low molecular weight gasoline components does leave

“fractions of the liquid contaminant” in the soil as Wes-

ton counsel acknowledged. But applying “a vacuum

through said perforate lower portion of said well casing”

that is “effective to draw air through said contaminated

vadose zone and to volatilize liquid contaminant .

present in said .. . zone” (infra, 28a), as required by

Claim 8 does not do so. The Elliott, Komoski and Gentry

affidavits in the PTO reissue file are eloquent testimony

that no such residues are left by the patented process.

(A351), cannot be presumed to have permitted ORS to make a

basic geological error by calling the unsaturated zone “saturated”.

As to Exhibit E of the Knopik affidavit, see note 22, infra.

*2 See Transcript p. 20. As already pointed out, the explosimeter

test of air is only a coarse measure. As Sanders, the former presi-

dent of ORS testified, the explosimeter “has a lower explosive

limit ‘upper explosive limit” (A174) which is “between 1 and 7

percent in air” for gasoline. As he further admitted, a zero

explosimeter reading won't measure ievels as low as “parts per

million or very, very low concentrations” (/d.). Clearly, even if,

arguendo, concentrations of lower molecular weight hydrocarbons

in air could tell one anything about the overall concentration of

higher molecular weight gasoline components remaining in soil, a

residual contaminant concentration in soil of even, e.g., '. percent

(i.e., one part per 200 parts of soil), would represent substantial

contamination—and that soil could surely benefit from being decon-

taminated by the process fo Claim 8.

The Court of Appeals entered its judgment of sum-

mary affirmance under its Rule 36 (infra, la) a mere

four days after oral argument.

Malot’s timely petition for rehearing, raising, inter alia,

the infirmities of Weston’s alleged corroboration for the

Knopik and Yaniga affidavits and the significance of Wes-

ton’s admission of incomplete cleanup, was denied on Sep-

tember 22, 1995 (infra, 3a).

SUMMARY OF ARGUMENT

By resorting to summary affirmance under its Rule 36

instead of taking the care and time needed to understand

the intricacies of the facts in this case, the Federal Cir-

cuit ran roughshod over well-entrenched legal principles

to which it routinely pays lip service. It also signaled its

approval of the District Court’s subversion of the same

principles. The rule of law itself and the reliance of

Petitioner and other litigants upon the same legal prin-

ciples thereby stand abused.

REASONS WHY THE WRIT SHOULD BE GRANTED

I. AFFIRMANCE WITHOUT OPINION—AN ABDICA-

TION OF APPELLATE RESPONSIBILITY

A recent law review article reports that “(t]he courts

of appeals issued more than 6,200 summary dispositions

in 1993”, over 5,900 of which were summary affirm-

ances. It notes that the rules governing these dispositions

vary among the circuits.

The Federal Circuit’s Rule 36 (infra, 26a) contains

its criteria for entry of a judgment of affirmance without

opinion. Inasmuch as the District Court decision in this

case (infra, 4a to 17a) granted a summary judgment

23 Dragich, “Will The Federal Courts Of Appea! Perish If They

Publish? Or Does The Declining Use Of Opinions To Explain

And Justify Judicial Decisions Pose A Greater Threat?” 44 The

American U. Law Rev. 758, 763 (1995).

motion, one must infer the appellate panel deemed that

summary judgment was supported by the record, not-

withstanding the manifest inconsistencies and contradic-

tions that record contains.

The Federal Circuit pays consistent lip service to the

proposition that grants of summary judgment are reviewed

de novo.“ Yet Petitioner’s experience in this case sug-

gests that its words are divorced from its actions when

an appreciation of the genuine issues of material fact that

are present cannot be reached swiftly and easily. Where, as

here, arriving at such appreciation necessitates a tolerance

for attention to complex detail, plus the patience to assess

the effects of a myriad of inconsistent, contradictory and

discrepant scientific and technical niceties, the review is

cursory at best.*°

Over the years since the federal appellate courts com-

menced the practice of relegating many of their opinions

to the “unpublished” category, legal scholars have engaged

in an ongoing debate abcut whether, how, and to what

extent the existence of these unpublished appellate opin-

ions is harmful to the integrity of the legal system. To-

day’s level of resort in appellate courts to summary dis-

position is susceptible to all the same criticisms that at-

tend the proliferation of unpublished opinions. Indeed,

summary dispositions may readily be viewed as a subset

(albeit one that has the harshest impacts, particularly

* Conroy v. Reebok Int’l., 14 F.3d 1570, 1575 (Fed. Cir. 1994) ;

International Visual Corp. v. Crown Metal Mfg. Co., 991 F.2d 768,

770 (Fed. Cir. 1993); Paragon Podiatry Lab., Inc. v. KLM Labs.,

984 F.2d 1182, 1190 (Fed. Cir. 1993) ; Vas-Cath, Inc. v. Mahurkar,

935 F.2d 1555, 1560 (Fed. Cir. 1991).

“* The Transcript reveals an alarming lack of acquaintance by

the appellate panel with what occurred in the District Court. The

panel, for example, attributed to the district judge at the oral

argument comments and questions that were simply not made. See,

e.g, Transcript pp. 3, 9-10, 23-24 and compare them to the district

judge’s opaque and unrelenting silence throughout the oral argu-

ment (A2517-2571).

upon litigants and the rule of law) of the unpublished

opinion controversy.

A decade ago, Judge Wald, writing separately in Na-

tional Classification Committee v. United States, 765 F.2d

164, 173, n. 2 (D.C. Cir. 1985) cataloged

less . . . soundly reasoned opinions, reduce[d] judi-

cial accountability, increase[d] . . . risk of nonuni-

formity; allow[ing] difficult issues to be swept under

the carpet and result[ing] in a body of “secret law”

practically inaccessible to many lawyers

as among the pernicious consequences then recognized

by many lawyers to attend upon the proliferation of un-

published opinions. It requires neither special insight nor

creative imagination to perceive that where summary af-

firmance is increasingly resorted to, there can be no yard-

stick for the soundness of the wholly unexpressed reason-

ing, and no index for judicial accountability or even for

uniformity. Moreover, difficult issues can readily be buried

and the potential for bodies of secret law—so secret that

they are harbored and nurtured independently, solely in

the separate minds of individual judges—becomes ex-

ponentially magnified. Even short reflection upon the

disparate nature of the likely separate bodies of secret

law so generated conjures up an ominous—even night-

marish—vision of a form of legal anarchy where lawyers

lack any reasonably predictable means for determining

how to advise clients in situations that are not governed

by biack letter statutory language and judges are free to

determine cases on the basis of whimsy, emotion or even

chance.

Only last week in a Wall Street Journal “op-ed” piece *

deploring the expanding proliferation of both unpublished

opinions and summary determinations, a lawyer warned

of appellate courts’ “temptation . . . to bury shoddy rea-

26 Kester, J.G., “Appeals Courts Keep More And More Opinions

Secret”, The Wall Street Journal, December 13, 1995, p. A115.

soning or to tailor results to particular parties”, adding

that

Supreme Court Justice Owen Roberts worried half

a century ago that if precedent can be routinely ig-

nored, the law becomes “a restricted railroad ticket,

good for this day and train only.” We expect our

courts to build on prior decisions and to explain

why not if they don’t. If they select some decisions

to be secret . . . then judges themselves undermine

the rule of law.

In this case, whether unintentionally (as is presumed)

or otherwise, the Federal Circuit panel exhibited no con-

cern about undermining the rule of law. Zealously pur-

suing the simplest avenue for disposing of this case, the

panel blithely ignored the legal errors committed by the

District Court, as well as its own responsibility to exer-

cise supervisory authority.

II. THE BARBED WIRE PATENT CASE, CORROBORA-

TION OF PRIOR USE OR INVENTION AND “PER-

SONAL KNOWLEDGE” AFFIDAVITS

More than a century ago, in reversing a lower court’s

finding that a patent was anticipated by the prior public

use and/or invention of 2 third party, this Court in Wash-

burn & Moen Mfg. Co. v. Beat’ Em All Barbed-Wire Co.,

143 U.S. 275, 284-5 (1892) laid down the rule that such

an anticipation must be proved by evidence that is “clear,

satisfactory and beyond a reasonable doubt”.

The District Court in this case did not deign to ex-

plain the basis upon which it wholeheartedly espoused a

single affidavit from Knopik (A128-139), a single decla-

ration from Yaniga (A351-359) and one declaration from

Farmer (A186-194) as the respective bases for its find-

ings that each of Knopik, Oil Recovery Systems and

Exxon” (infra, Sa to 8a) was a prior user (or inven-

27 The District Court’s finding regarding Shell (infra, 8a) rests

solely on two Shell documents (A1064-1068), one incomplete, un-

supported by written or oral testimony from any source.

tor) of the patented process. In each instance, the story

told in the affidavit or declaration rested on naked mem-

ory and was not borne out, either by testimony from

other witnesses who saw the process being performed, or

by unambiguous contemporaneous documents.

Inescapably, the testimony presented in these affidavits

and declarations is of the same

unsatisfactory character . . ., arising from the forget-

fulness of witnesses, their liability to mistakes, their

proneness to recollect things as the party calling them

would have them recollect them, aside from the

temptation to actual perjury,”*

that this Court recognized in Washburn & Moen. As it

said,

Witnesses whose memories are prodded by the eager-

ness of interested parties to elicit testimony favorable

to themselves are not usually to be depended upon

for accurate information. ... Indeed, the frequency

with which testimony is tortured, or fabricated out-

right, to build up the defense of a prior use of the

thing patented, goes far to justify the popular im-

pression that the inventor may be treated as the law-

ful prey of the infringer.”°

The Federal Circuit, as recently as Price v. Symsek,

988 F.2d 1187 (Fed. Cir. 1993), acknowledged the ruie

of law

“that an inventor’s testimony respecting the facts

surrounding a claim of . . . priority of invention can-

not standing alone rise to the level of clear and con-

vincing proof. Throughout the history of the determi-

nation of patent rights, oral testimony by an alleged

inventor asserting priority over a patentee’s rights is

28143 U.S. 275, 284. The EPA Semi-Annual Status Reports for

the last few years show that the Claim 8 process of achieving de-

contamination is the most widely used innovative cleanup tech-

nology and thereby provide the very motives for preying on Malot

that this Court perceived in 1892.

*9 Id. at 284-5.

regarded with skepticism . . . [citing cases from this

Court including Washburn & Moen (denominated

The Barbed Wire Patent) ].

The panel in this case had no compunction about tak-

ing written testimony, all-too-obviously cast in the lan-

guage of Claim 8, as proof of prior use in this case. The

slightest reflection, however, should have suggested such

testimony is probably less reliable than—and should

hence be treated, if anything, even more skeptically under

Washburn & Moen than—oral testimony. The panel

went so far as to say that if it

“were to come to the conclusion that the Knopik and

Yaniga declarations are fully corroborated and what

they say is true, .. . if you all understand from our

perspective if that’s how we ruled on corroboration,

the case might not even need to be delayed by the

preparation of an opinion . . ., for example, Rule

Petitioner has pointed out above (pp. 13-14) the rea-

sons why the alleged corroborating documents of Knopik

and Yaniga are deficient and cannot clearly and unam-

biguously support as “true” the sweeping generalities of

the two affidavits.

Respondent’s counsel at oral argument effectively ad-

mitted that neither Knopik nor Yaniga succeeded in de-

contaminating a vadose zone, as required by Claim 8,

when he acknowledged that Knopik left “fractions of the

contaminant” “’ behind after conducting his process and

then asserted that everyone who practices the Claim 8

process does so. The panel, however, was not troubled by

this flat inconsistency with Petitioner’s evidence (in the

reissue file history) demonstrating decontamination to a

level of a few parts per billion of soil using the process

of Claim 8. Indeed, the celerity of the Rule 36 affirm-

ance and the later denial of rehearing eloquently so

testify.

30 Transcript, p. 24.

31 Transcript, p. 20.

STENT Rr ee

Ill. THE FEDERAL CIRCUITS RESORT TO RULE 36

EFFECTIVELY BURIES THE DISTRICT COURT'S

LEGAL ERRORS AS WELL AS ITS OWN

The Federal Circuit’s resort to Rule 36 in this case

clearly allowed it to take the path of least resistance in

performing its own appellate function. In addition, the

Federal Circuit thereby shucked off the demanding task

included among the duties of all appellate courts, of ex-

ercising a necessary supervisory function by correcting

manifest district court error in an instructive manner.

The District Court here not only made fact findings

based on affidavits; to do so, it apparently dismissed the

affidavits and declarations in the PTO reissue file as un-

reliable or incredible—since otherwise it would have been

forced to face the evidentiary conflicts between them and

Weston’s affidavits.”

The District Court thereby effectively converted this

case into one of trial by affidavit.

By resorting to Rule 36, the Federal Circuit not only

cloaked this aberrant procedure in secrecy; it sent a signal

to the District Court that the procedure is condoned in

patent cases.

Similar signals of condonation attend the District

Court’s failure to examine whether Weston had discharged

its evidentiary burden under Federal Civil Rule 56 to

32 For example, Professor Straw’s evidence, as an expert in

hydrogeology, is that the API Report postulates conducting a

process in the saturated capillary fringe (of drawing air through

that zone) which could not work—while Hoag, an expert in civil

engineering, swore that the API Report postulates drawing air

through the unsaturated vadose zone. As another example, each of

Komoski, Elliott and Gentry testified by declaration in the PTO

that venting (with a fan, such as the API Report describes, cap-

able of producing a vacuum of about one-half inch of mercury

at the top of a well shaft) is incapable of decontaminating a

vadose zone; each of Knopik and Yaniga, in his declaration, claims

that he did thus decontaminate a vadose zone.

prove the absence of a genuine issue of material fact,

its failure to view the evidence in the light most favorable

to Petitioner, the non-moving party, and its failure to

draw all reasonable inferences in Petitioner’s favor. Yet

each of these is seemingly required by the case law from

both this Court—e.g., United States v. Diebold, Inc., 369

U.S. 654, 655 (1962); Adickes v. S.H. Kress and Co.,

398 U.S. 144, 156 (1970)—and the Federal Circuit

itself, e.g. SRI Int'l. v. Matsushita Elec. Corp., 775 F.2d

1107, 1116 (Fed. Cir. 1985).

The Federal Circuit’s abdication of the responsibility

to perform meaningful and informative appellate review

of the District Court decision in this case can be expected

to have a snowball effect in at least the District Court for

the Northern District of Georgia, absent this Court’s

intervention. The position of the Federal Circuit, as the

sole appellate arbiter in patent cases, necessarily imparts,

to every similarly motivated Rule 36 affirmance that court

may deliver, equally far-reaching and unfortunate con-

sequences.

CONCLUSION

Favorable consideration and grant of certiorari in this

case are respectfully requested.

Respectfully submitted,

MARY HELEN SEARS *

THE M.H. SEARS LAW FIRM,

CHARTERED

2300 N Street, N.W.

Sixth Floor

Washington, D.C. 20037

(202) 663-9048

Counsel for Petitioner

* Counsel of Record

APPENDIX

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Sk TE EE ee de ay

;

APPENDIX

[Filed Aug. 11, 1995]

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

94-1446

JAMES J. MALOT,

Plaintiff-A ppellant,

Roy F. WEsTON, INC. and

WESTON SERVICES, INC.,

Defendants-A ppellees.

On Appeal from the United States District Court

Northern District of Georgia (Atlanta)

in Case No(s). 1:92-CV-628

JUDGMENT

This CAUSE having been heard and considered, it is

ORDERED and ADJUDGED:

Per Curiam: (MAYER, CLEVENGER and RADER,

Circuit Judges):

AFFIRMED, See Fed. Cir. R. 36.

DATED Aug. 11, 1995

ENTERED BY ORDER OF THE COURT

s’ Francis X. Gindhart

Clerk

ISSUED AS A MANDATE: October 10, 1995

en to00

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

ORDER

A combined petition for rehearing and suggestion for

rehearing in banc having been filed by the APPELLANT,

and the petition for rehearing having been referred to the

panel that heard the appeal, and thereafter the sugges-

tion for rehearing in banc having been referred to the

circuit judges who are in regular active service,

UPON CONSIDERATION THEREOF, it is

ORDERED that the petition for rehearing be, and the

same hereby is, DENIED and it is further

ORDERED that the suggestion for rehearing in banc

be, and the same hereby is, DECLINED.

The mandate of the court will issue on September 29,

1995.

FoR THE Court,

FRANCIS X. GINDHART,

Clerk

By s Diane M. Frye

DiANE M. Fry!

Chief Deputy Clerk

Dated: September 22, 1995

cc: Mary Helen Sears

William H. Boice

Malot v Weston Inc, 94-1446

(Dct—1:92-CV-628 )

[Filed May 16, 1994]

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

Civil Action No. 1:92-cv-628-RLV

JAMES J. MALOT,

- Plaintiff,

Roy F. WEsTON, INC. and

WESTON SERVICES, INC.,

Defendants.

ORDER

This patent infringement case is before the court on the

defendants’ motion for summary judgment as to patent

invalidity and non-infringement and the plaintiff's motion

to compel discovery. The court has considered the briefs

of the parties and heard argument of counsel at a hear-

ing conducted on March 21, 1994.

I. INTRODUCTION

This case involves technology for removing volatile

liquid contaiminants, such as gasoline and other kinds of

fuel, from the ground. The process involves applying a

vacuum to the top of one or more well casings to the zone

of the earth to be cleaned; the vacuum must be capable

of drawing air through that zone and of converting the

liquid contaminants to a gaseous form so that they may

be expelled through the tops of the wells.

The plaintiff contends that he and a co-inventor devel-

oped a process for removing volatile liquid contaminants

from the soil and applied for patent on this process. Pa-

eee

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Gi asiceaatel eT

ed NN Apt. tm Meribel rn Dd

Phe ee

tents were issued, but Malot and his co-inventor filed a

reissue application in order to correct presumed deficien-

cies that might affect the validity of the patents already

issued. The pateut office then granted Reissue Patent

33,102 [hereinafter referred to as the “102 patent”),

which provides the basis for this litigation. A patent may

consist of several “claims,” and it is only Claim 8 of the

instant patent that is at issue in this litigation.

The defendants contend that the invention described

in Claim 8 is not novel and is obvious. Because of this,

the defendants argue that the patent is invalid. In the

alternative, the defendants contend that if Claim 8 of

the patent is construed narrowly in order to escape invalid-

ity in light of the prior art, the defendants have not in-

fringed on the patent because the process they used is

different.

Il. FACTUAL BACKGROUND

In 1973, Duane Knopik learned that one of the under-

ground gasoline storage tanks at his service station in

Forest Lake, Minnesota, was leaking. Gasoline from the

tank had percolated through the soil and into the base-

ment of a building more than a block away. Knopik

sought advice as to how to clean up the leaked gasoline,

but neither the local fire department nor the Minnesota

Pollution Control Agency offered a workable solution to

the problem.

Knopik then designed and built his own device for use

in decontaminating the soil. This device included a con-

duit with an elongated, perforated filter attached to its

lower end. This conduit was placed into a well bored

into the contaminated soil. The upper end of the well

around the conduit was sealed with materials to prevent

air from the surface of the ground being drawn down into

the shaft, into the filter, and up through the conduit.

When strong suction was applied to the conduit, air,

liquids, and vapors in the soil were drawn through the

perforated filter and up to the surface of the ground.

The air drawn through the soil volatilized, or vaporized,

some of the liquid gasoline in the soil before it was sucked

into the vertical conduit.

While using his decontamination system, Knopik

learned that it was effective in recovering liquid contami-

nants in the vadose zone above the water table, as well

as recovering contaminants floating on the water table.’

Because of the apparent success of this system in decon-

taminating the soil at his service station, Knopik began

receiving requests to use the system to remove volatile

liquid contaminants from other spill sites. By 1975,

Knopik was being contacted by various entities which

were interested in his remediation, or decontamination,

system.

As Knopik’s business expanded, he developed other

variations of his soil remediation system, including a soil

venting system using an exhaust fan to draw air through

the soil into a radial array of perforated pipes embedded

in the soil. This system was used to remove contaminant

vapors and also to volatilize liquid contaminants in the

vadose zone. By September 1982, Knopik had decon-

taminated approximately 50 sites in the Midwest and had

approximately 100 installations operating throughout the

United States.

Knopik applied for and received various patents cover-

ing his inventions. See, e.g., Patent No. 3,980,138 issued

on September 14, 1976; Patent No. 4,183,407, issued on

January 15, 1980; and Patent No. 4,828,122, issued on

April 6, 1982.

1 The vadose zone is one of three subsurface zones of the earth’s

crust. The vadose zone is the upper of the three subsurface zones

and contains air in addition to water and soil particles. The lowest

of the three subsurface zones is the “‘phreatic zone,” also known as

the water table; there is no air present in this zone. Between these

two zones is the “capillary fringe,” where capillary forces act to

draw up and hold thin columns of water in the pore spaces between

soil particles.

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In 1977, another company, Oil Recovery Systems, be-

gan its business of developing equipment and techniques

for ground water decontamination. Originally, the com-

pany’s principal product was a water pump system which

depressed the water table around a recovery well, causing

oil or water to flow into the well. However, after consul-

tations with Duane Knopik, ORS designed a system using

a fan to draw air and vapors of hydrocarbon contami-

nants through the soil above the water table into perfo-

rated collection pipes and up to the surface. This system

was tested in November 1981 to determine the air flow

that would be generated by the system.

In December 1981, ORS prepared a brochure describ-

ing its “Explosion Proof Vent System.” ‘Chat description

stated, in part:

The EPVS works simply by pulling air through

ground saturated with hydrocarbon. This causes

both the free liquid and that trapped by soil to

vaporize. These vapors get carried through the

EPVS to the outside atmosphere where they are

readily disbursed. . . .

Pulling air through the ground results in hydro-

carbon liquid vaporizing and then being carried

through the Vent System... .

ORS offered the Vent System for sale as a new product

by March 1982. In April 1982, ORS licensed from

Duane Knopik the right to make, use, and sell an “Ex-

haust System and Process for Removing Underground

Contaminant Vapors.”

In the late 1970s and early 1980s, at least two other

entities developed similar systems for removing volatile

liquid contaminants from soil by using vacuum to draw

air through the soil. In 1979, Exxon Company, USA,

developed a process utilizing vent wells into which vertical

PVC pipes were inserted. These pipes had perforated

lower portions surrounded by a permeable gravel pack

and utilized fans to create a vacuum to draw air through

the soil to volatilize the liquid contaminants. Addi-

tionally, Shell Oil Company developed a similar system,

also utilizing vacuum to draw air through the soil.

In 1982, Upjohn Company experienced a carbon

tetrachloride leak from one of its underground storage

tanks in Barceloneta, Puerto Rico. Upjohn contracted

with a a Puerto Rican geotechnical engineering company

for soil drilling and sampling; this company, in turn, con-

tacted Soil and Materials Engineers and retained that

firm as a consultant to provide soil testing and evaluation

services. James Malot, of Soil and Materials Engineers,

first met Melvin Visser, an Upjohn chemical engineer,

who was present at the Barceloneta site to coordinate the

response to the chemical spill, in September 1982.

After considering and rejecting several clean up meth-

ods, Visser and Malot decided that they would attempt

to remove the liquid contaminants through the use of a

vacuum extraction method. At this time, neither Visser

nor Malot was aware of the work done by Duane Knopik,

ORS, Exxon, or Shell.

Bore holes were dug, and slotted pipes were fitted the

holes. Sand was placed in the space between the slotted

portion of the pipe and the inside surface of the hole.

The space between the pipe and the hole was then sealed

to prevent air from being pulled downward along the

outer surface of the pipe. Vacuum was then applied in

a two-step process. First, a very high vacuum pump was

connected to the pilot extraction well, and a vacuum ap-

plied. As the vacuum pump operated, the vacuum be-

came more measurable in monitoring wells at greater

distances from the pilot well. Concentrations of vapors

from the pilot well began to increase over this period of

time. After the flow of air through the soil had begun,

the high vacuum pump was replaced by a lower vacuum

blower which also served to extract contaminants from

the soil but at greater electrical efficiency.

Because of the success of the operation, Malot and

Visser decided to patent the process they had utilized

and, as a consequence, filed an initial patent application

(serial number 567,972, on January 4, 1984). However,

on May 9, 1984, the patent office rejected the claims cited

in the patent application. Referring to the Knopik patent,

the patent office stated:

Knopik discloses a process for recovering organic

liquids from underground areas in which a well is

completed above the water table and put on a

vacuum to recover the fluids on the surface where

said fluids are condensed, separated and treated.

In response, the co-inventors rewrote the claims to

point out the purported differences between their process

and that utilized in Knopik patent 4,323,122.

A fundamental difference between Applicants’ in-

vention and Knopik is that Knopik withdraws liquid

contaminants from the liquid layer that flows on the

water table and is below the vadose zone, whereas

Applicants’ volatilize the contaminant to cause it

to pass off in vapor form and the contaminant is

removed from the vadose zone rather than from a

layer of liquid that floats on the ground water.

Knopik does not teach or suggest volatilizing the

contaminant present in the vadose zone by means

of a high vacuum.

Based upon this representation, the patent office, on No-

vember 27, 1984, provisionally allowed three claims of

the patent application. The patent office then issued a

“final” rejection on July 11, 1985, rejecting all but the

three provisionally allowed claims. Following another at-

tempt at reconsideration by Malot and Visser, the patent

office eventually issued patent no. 4,593,760 and patent

no. 4,660,639, which contains claim 8, which is the

subject of the instant motion for summary judgment.

Shortly after these patents were issued, questions as to

their validity were raised based upon prior publications.

10a

Because of these questions, Malot and Visser availed

themselves of established procedures that permit a patent

owner to go back to the Patent Office and obtain its

assessment of the patent’s ability of the issued patent

claims over a newly found published references.

The publications were American Petroleum Institute

Report No. 4429, a 1982 article by Thornton, et al., in

a Journal of Environmental Science and Health, and an

excerpt from a 1982 EPA handbook.

After examining the publications and the argument of

counsel for Malot and Visser, the Patent Examiner con-

firmed the claims of the issued patents, stating in part as

follows:

It is clear from the record that one of ordinary skill

in the art of ground contamination would have a

certain level of expertise in geology or hydrogeology.

The vadose zone would therefore be understood as

being the unsaturated zone lying above both the

water table and the “capillary fringe” zone. With

this understanding of the vadose zone, in regard to

claims 1-8, the prior art and affidavits of record

support the conclusion that it was not known at the

time the invention was made to remove volatile

liquid contaminant from a vadose zone by applying

a vacuum effective to cause vaporization of a sub-

stantial quantity of a liquid contaminant within the

vadose zone as specifically recited in the respective

claims. Although vapor removal by vacuum systems

was known, the record supports the conclusion that

the prior art failed to appreciate that such systems

could be used in the specifically claimed manner to

remove volatile liquid contaminant from the vadose

zone.

This “reason” was given despite the fact that the Patent

Examiner had previously, on November 18, 1988, reached

a different conclusion:

— ee aw

lla

The API publication number 4429 . . . discloses on

page 14 a set-up for a process of removing gasoline

. . . from a subterranean zone having a water table,

a layer of liquid residual gasoline on top of the

water table in the vadose zone, and gasoline vapors

above the residual liquid gasoline. By definition, the

vadose zone lies above the water table and therefore

the residual liquid gasoline the figure on page 14

of API 4429 is the [sic] fact in the vadose zone... .

Figure labels and exhaust fan on top of the well to

the right which will cause a pressure differential or

vacuum within the conduit and in turn will induce

vapor flow from the vadose zone into the conduit.

This removal of gasoline vapor actually increase

volatilization and cause[s] a volatilization of the

liquid gasoline layer by changing the equilibrium of

the vapor/liquid interface. This changing of the

equilibrium is discussed on page 5 of API 4429

and teaches that as the vapor is removed faster or

in larger quantities, it causes a greater vaporization

of the liquid at the vapor/liquid interface. Since

both the vapor and the liquid gasoline are in the

vadose zone above the water table, the vacuum or

exhaust means in fact causes a volatilization of the

liquid gasoline in the vadose zone by more rapidly

removing the gasoline vapors and changing the gasc-

line vapors/liquid equilibrium.

In regard to the vacuum of patent '639 allegedly

being different from the vacuum of API 4429, the

patent ‘639 states on column 2, lines 38-43, that

what is contemplated is a “relative pressure drop”.

Both the patent ‘639 and API 4429 use similar

“vacuum” sources, i.e. a blower fan, to cause the

necessary air flow by the created pressure differential.

It would appear that the reason for the change in the

Patent Examiner’s conclusions is that Malot and Visser

persuaded him that their process did not use a vacuum

12a

to remove vapors, allow more vapors to form and then

remove those vapors but, instead, they argued that their

process actually created the vapors to be removed through

the suction process. See Statement pursuant to 37 C.F.R.

1.56.

Ill. LEGAL DISCUSSION

A. Motion to Compel Discovery

The plaintiff has filed a motion to compel the defend-

ants to produce documents to support causes of action

for infringement of claims other than claim 8 under the

patent. The defendants have responded that they have

submitted all relevant documents and that the plaintiff's

complaint is simply that too many documents were pro-

duced and that they were produced in a way that the

plaintiff has difficulty determining whether there has been

infringement claims other than claim 8. Because the

defendants have represented to this court that they have

made a thorough search of all their files relating in any

way to soil contamination remediation, this court will not

require that they do anything further. The court has care-

fully considered the briefs of the parties and finds no basis

for granting the motion to compel.*

B. Patent Invalidity and Infringement

A patent is invalid if the patented process or invention

has been “anticipated” by prior art. To anticipate an in-

vention, the prior art must disclose every element of the

claim limitations and must be contained in a single prior

art reference. Verdegaal Brothers, Inc. v. Union Oil Com-

pany of California, 814 F.2d 628 (Fed. Cir. 1987).

However, the law of anticipation “does not require that

2 The court notes that in its order dated February 15, 1994, the

court granted the plaintiff’s motion for oral argument on its motion

to compel but that at the hearing conducted on March 21, 1994,

pursuant to that order, the plaintiff raised no issues and made no

argument regarding his motion to compel.

eT a oe -

l3a

the reference ‘teach’ what the subject patent teaches.

Assuming that a reference is properly ‘prior art,’ it is only

necessary that the claims under attack, as construed by

the court, ‘read on’ something disclosed in the reference,

i.e., all limitations of the claim are found in the reference,

or ‘fully met’ by it.” Kalman v. Kimberly-Clark Corp.,

713 F.2d 760, 772 (Fed. Cir. 1983). Moreover, an

anticipatory reference “need not duplicate word for word

what is in the claims. Anticipation can occur when a

claimed limitation is ‘inherent’ or otherwise implicit in the

relevant reference.” Standard Havens Products, Inc. v.

Gencor Industries, Inc., 753 F.2d 1360, 1369 (Fed. Cir.

1991). Also, it is not necessary that the prior art refer-

ence recognize a particular property of the process if the

property was inherently possessed by the earlier process.

Verdegaal Brothers, 814 F.2d at 633.

Claim 8 of the patent in suit reads as follows:

A process for decontaminating an underground

vadose zone which is located above the water table

and is contaminated with a volatile contaminant

which is percolating downwardly through said vadose

zone, which comprises:

establishing a vacuum extraction well compris-

ing a well casing having a perforate lower

portion located in the contaminated vadose

zone and above the water table so that fluids

can flow from said contaminated vadose zone

into said perforate lower portion of said well

casing, the area around said vacuum extrac-

tion well casing above said perforate lower

portion being substantially sealed to impede

flow of air around said well casing from the

surface of the ground to said perforate lower

portion of said well casing;

applying a vacuum through said vacuum ex-

traction well to said perforate lower portion

of said well casing, said vacuum being effect

l4a

to draw air through said contaminated vadose

zone and to volatilize liquid contaminant that

is present in said contaminated vadose zone

above the water table and surrounding said

perforate lower portion of said well caisng

[sic], the vapor containing the volatilized

liquid contaminant being drawn into said well

casings and thence being transported to a

location above ground.

A careful reading of claim 8 shows that each of its essen-

tial elements was anticipated in prior art. For example,

the ORS venting system formulated in 1981 shows that

(1) it is a process for decontaminating soil above the

water table (i.e., the vadose zone, (2) by pulling air

through the ground saturated with hydrocarbon (i.e., using

a vacuum), (3) it uses a well casing perforated at the

lower end that is placed in the vadose zone, (4) the area

around the surface is sealed so as to impede the flow

of air from the surface to the perforate portion of the well

casing, and (5) the vacuum created by pulling air through

the ground causes both the free liquid and the liquid

trapped in the soil to vaporize and then be expelled above

ground.

The court notes that nothing in claim 8 refers to the

Strength of the vacuum utilized to vaporize the liquid

contaminant. It was only later, in response to the patent

office’s rejection of the claim, that the plaintiff urged the

patent office to consider that it was a very strong vacuum

created and utilized to volatilize the liquid contaminant.

The court concludes that this gloss placed upon claim 8

was ineffective to validate that claim because prior art

clearly established the need for a vacuum strong enough

to pull air through the soil and, thereby, volatilize the

liquid contaminant in the soil.

API 4429 also anticipated the essential elements of

claim 8. That publication discussed a model wherein a

shaft is sunk into the center of a circular spill and fitted

15a

with a pipe that is slotted for an interval extending from

the water table to above the depth that is contaminated

with vapors (i.e., the vadose zone). The pipe is sealed

so that no air flows along the pipe except where it is

slotted, and the top of the pipe is connected to a blower

which draws air up the pipe and exhaust it to the atmos-

phere. Vent holes are sunk in the ground around the

perimeter of the spill so that when the blower is activated,

air can flow into these vent holes. Although API 4429

initially references a flow of air “through the vapor-laden

soil,” it also recognizes that the volatilization of hydro-

carbons will occur. Although fairly technical in its pres-

entation, API 4429 clearly suggests that as vapors are

removed through the use of a vacuum, the remaining

liquid contaminant is vaporized to fill the void created by

the lack of equilibrium resulting from the removal of the

earlier existing vapors.

Not only were the elements of claim 8 anticipated in

the prior art, but the elements of claim 8 were also ob-

vious. Under 35 U.S.C. § 103, a device for process is

not patentable “if the differences between the subject

matter sought to be patented and the prior art are such

that the subject matter as a whole would have been

obvious at the time the invention was made to a person

having ordinary skill in the art to which said subject

matter pertains.”

Because claim 8 essentially describes a method of ap-

plying a vacuum “to draw air through said contaminated

vadose zone and to volatilize liquid contaminant that is

present in said contaminated vadose zone,” the court finds

that the defendants have shown that this process was

obvious in light of the prior art. As noted previously, the

ORS soil vent system, the Duane Knopik system, and the

Exxon and Shell systems all utilized a vacuum to draw

air through contaminated portions of the vadose zone.

With respect to the volatilization of the liquid contami-

nant, the ORS soil vent system was described as working

16a

“by simply pulling air through ground saturated with

hydrocarbon. This causes both the free liquid and that

trapped by soil to vaporize. These vapors get carried

through the [Explosion Proof Vent System] to the outside

atmosphere where they're readily disbursed. .. . Pulling

air through the ground results in the hydrocarbon liquid

vaporizing and then being carried through the Vent

System... .”

For the foregoing reasons, this court holds that claim

8 of the patent in suit is invalid.

However, even if claim 8 is valid, the court finds that

the defendants have not infringed the patent. Infringe-

ment does not occur if the alleged infringer is simply

utilizing what is obvious or what was taught by the prior

art.

The evidence before the court shows that the defend-

ants’ system simply draws air through the soil to remove

vapors of contaminant in the same manner as prior soil

venting systems. The system used by the defendants is no

different from that formulated by Duane Knopik, ORS,

Exxon, and Shell. The defendants’ system merely draws

air through the soil, removing vapors from the contami-

nated area, thereby allowing additional molecules of

liquid gasoline to evaporate and diffuse upward and then

be extracted through the use of the vacuum created in

the shafts sunk into the soil. It is obvious that the de-

fendants’ system utilizes a technique that is disclosed by

the prior art.

For the foregoing reasons, the court finds that even if

claim 8 of the patent in suit is valid, the defendants have

not infringed that claim.

IV. SUMMARY

The plaintiff's motion to compel discovery [pleading no.

38] is DENIED.

aja, - ate

17a

The defendants’ motion for summary judgment with

respect to claim 8 of the patent [pleading no. 41] is

GRANTED.

SO ORDERED, this 12th day of May, 1994.

's/ Robert L. Vining, Jr.

RoBERT L. VINING, JR.

United States District Judge

[Entered on Docket Apr. 17, 1994]

18a

STATUTORY PROVISIONS

§ 102. Conditions for patentability; novelty and loss of

right to patent

A person shall be entitled to a patent unless—-

(a) the invention was known or used by others in

this country, or patented or described in a printed publi-

cation in this or a foreign country, before the invention

thereof by the applicant for patent, or

(b) the invention was patented or described in a printed

publication in this or a foreign country or in public use

or on sale in this country, more than one year prior to

the date of the application for patent in the United States,

or x * * *

(g) before the applicant’s invention thereof the inven-

tion was made in this country by another who had not

abandoned, suppressed, or concealed it. In determining

priority of invention there shall be considered not only

the respective dates of conception and reduction to prac-

tice of the invention, but also the reasonable diligence of

one who was first to conceive and last to reduce to prac-

tice, from a time prior to conception by the other.

(July 19, 1952, c. 950, 66 Stat. 797; July 28, 1972,

Pub.L. 92-358, § 2, 86 Stat. 502; Nov. 14, 1975, Pub.L.

94-131, § 5, 89 Stat. 691.)

§ 103. Conditions for patentability; non-obvious subject

matter

A patent may not be obtained though the invention is

not identically disclosed or described as set forth in sec-

tion 102 of this title, if the differences between the subject

matter sought to be patented and the prior art are such

that the subject matter as a whole would have been obvi-

Ous at the time the invention was made to a person having

ordinary skill in the art to which said subject matter

pertains. * * s ‘

—

\ eihatie

19a

(As amended Nov. 8, 1984, Pub.L. 98-622, Title I,

§ 103, 98 Stat. 3384.)

§ 251. Reissue of defective patents

Whenever any patent is, through error without any

deceptive intention, deemed wholly or partly inoperative

or invalid, by reason of a defective specification or draw-

ing, or by reason of the patentee claiming more or less

than he had a right to claim in the patent, the Commis-

sioner shall, on the surrender of such patent and the

payment of the fee required by law, reissue the patent

for the invention disclosed in the original patent, and in

accordance with a new and amended application, for the

unexpired part of the term of the original patent. No new

matter shall be introduced into the application for reissue.

The Commissioner may issue several reissued patents

for distinct and separate parts of the thing patented, upon

demand of the applicant, and upon payment of the re-

quired fee for a reissue for each of such reissued patents.

The provisions of this title relating to applications for

patent shall be applicable to applications for reissue of a

patent, except that application for reissue may be made

and sworn to by the assignee of the entire interest if the

application does not seek to enlarge the scope of the claims

of the original patent.

No reissued patent shall be granted enlarging the scope

of the claims of the original patent unless applied for

within two years from the grant of the original patent.

(July 19, 1952, c. 950, 66 Stat. 808.)

§ 271. Infringement of patent

(a) Except as otherwise provided in this title, whoever

without authority makes, uses or sells any patented inven-

tion, within the United States during the term of the

patent therefor, infringes the patent.

20a

(b) Whoever actively induces infringement of a patent

shall be liable as an infringer.

manufacture, combination or composition, or a material

Or apparatus for use in practicing a patented process,

constituting a material part of the invention, knowing the

same to be especially made or especially adapted for use

in an infringement of such patent, and not a staple article

or commodity of commerce suitable for substantial non-

infringing use, shall be liable as a contributory infringer.

(d) No patent owner otherwise entitled to relief for

infringement or contributory infringement of a patent

shall be denied relief or deemed guilty of misuse or illegal

extension of the patent right by reason of his having done

one or more of the following: (1) derived revenue from

acts which if performed by another without his consent

would constitute contributory infringement of the patent;

(2) licensed or authorized another to perform acts which

if performed without his consent would constitute con-

tributory infringement of the patent; (3) sought to en-

force his patent rights against infringement or contribu-

tory infringement; (4) refused to license or use any rights

to the patent; or (5) conditioned the license of any rights

to the patent or the sale of the patented product on the

acquisition of a license to rights in another patent or pur-

chase of a separate product, unless, in view of the circum-

stances, the patent owncr has market power in the rele-

vant market for the patent or patented product on which

the license or sale is conditioned.

(e)(1) It shall not be an act of infringement to make,

use, or sell a patented invention (other than a new ani-

mal drug or veterinary biological product (as those terms

are used in the Federal Food, Drug, and Cosmetic Act

and the Act of March 4, 1913) which is primarily manu-

factured using recombinant DNA, recombinant RNA,

rybridoma technology, or other processes involving site

specific genetic manipulation techniques) solely for uses

PEF SiS, Pe ON, Be A ori

2la

reasonably related to the development and submission of

information under a Federal law which regulates the

manufacture, use, or sale of drugs or veterinary biological

products.

(2) It shall be an act of infringement to submit—

(A) an application under section 505(j) of the

Federal Food, Drug, and Cosmetic Act or described

in section 505(b)(2) of such Act for a drug claimed

in a patent or the use of which is claimed in a patent,

(B) an application under section 512 of such Act

or under the Act of March 4, 1913 (21 U.S.C. 151-

158) for a drug or veterinary biological product

which is not primarily manufactured using recom-

binant DNA, recombinant RNA, hybridoma _tech-

nology, or other processes involving site specific

genetic manipulation techniques and which is claimed

in a patent,

if the purpose of such submission is to obtain approval

under such Act to engage in the commercial manufacture,

use, or sale of a drug or veterinary biological product

claimed in a patent or the use of which is claimed in a

patent before the expiration of such patent.

(3) In any action for patent infringement brought

under this section, no injunctive or other relief may be

granted which would prohibit the making, using, or sell-

ing of a patented invention under paragraph (1).

(4) For an act of infringement described in paragraph

(2)—

(A) the court shall order the effective date of any

approval of the drug or veterinary biological product

involved in the infringement to be a date which is

not earlier than the date of the expiration of the

patent which has been infringed,

(B) injunctive relief may be granted against an

infringer to prevent the commercial manufacture,

22a

use, or sale of an approved drug or veterinary bio-

logical product, and

awarded against an infringer only if there has been

commercial manufacture, use, or sale of an approved

drug or veterinary biological product.

The remedies prescribed by subparagraphs (A), (B), and

court for an act of infringement described in paragraph

(2), except that a court may award attorney fees under

section 285.

(f)(1) Whoever without authority supplies or causes

to be supplied in or from the United States all or a sub-

~ §tantial portion of the components of a patented inven-

tion, where such components are uncombined in whole

or in part, in such manner as to actively induce the com-

bination of such components outside of the United States

in a manner that would infringe the patent if such com-

bination occurred within the United States, shall be liable

as an infringer.

(2) Whoever without authority supplies or causes to

be supplied in or from the United States any component

of a patented invention that is especially made or espe-

cially adapted for use in the invention and not a staple

article or commodity of commerce suitable for substantial

noninfringing use, where such component is uncombined

in whole or in part, knowing that such component is so

made or adapted and intending that such component will

be combined outside of the United States in a manner that

would infringe the patent if such combination occurred

within the United States, shall be liable as an infringer.

(g) Whoever without authority imports into the United

States or sells or uses within the United States a product

which is made by a process patented in the United States

shall be liable as an infringer, if the importation, sale, or

use of the product occurs during the term of such process

{

23a

patent. In an action for infringement of a process patent,

no remedy may be granted for infringement on account of

the noncommercial use or retail sale of a product unless

there is no adequate remedy under this title for infringe-

ment on account of the importation or other use or sale

of that product. A product which is made by a patented

process will, for purposes of this title, not be considered

to be so made after—

(1) it is materially changed by subsequent proc-

esses; or

(2) it becomes a trivial and nonessential com-

ponent of another product.

(h) As used in this section, the term “whoever” in-

cludes any State, any instrumentality of a State, and any

officer or employee of a State or instrumentality of a State

acting in his official capacity. Any State, and any such

instrumentality, officer, or employee, shall be subject to

the provisions of this title in the same manner and to the

same extent as any nongovernmental entity.

(As amended Sept. 24, 1984, Pub.L. 98-417, Title II,

§ 202, 98 Stat. 1603; Nov. 8, 1984, Pub.L. 98-622, Title

I, § 101, 98 Stat. 3383; Aug. 23, 1988, Pub.L. 100-418,

Title IX, § 9003, 102 Stat. 1564; Nov. 16, 1988, Pub.L.

100-670, Title II, § 201(i), 102 Stat. 3988; Nov. 19,

1988, Pub.L. 100-703, Title II, § 201, !02 Stat. 4676;

Oct. 28, 1992, Pub.L. 102-560, § 2(a)(1), 106 Stat.

4230; Dec. 8, 1994, Pub.L. 103-465, Title V, § 533(a),

108 Stat. 4988.)

§ 282. Presumption of validity; defenses

A patent shall be presumed valid. Each claim of a

patent (whether in independent, dependent, or multiple

dependent form) shall be presumed valid independently

of the validity of other claims; dependent or multiple de-

pendent claims shall be presumed valid even though de-

pendent upon an invalid claim. The burden of establish-

24a

ing invalidity of a patent or any claim thereof shall rest

on the party asserting such invalidity.

The following shall be defenses in any action involving

the validity or infringement of a patent and shall be

pleaded:

(1) Noninfringement, absence of liability for infringe-

ment or unenforceability,

(2) Invalidity of the patent or any claim in suit on

any ground specified in part II of this title as a condition

for patentability,

(3) Invalidity of the patent or any claim in suit for

failure to comply with any requirement of sections 112

or 251 of this title,

(4) Any other fact or act made a defense by this title.

In actions involving the validity or infringement of a

patent the party asserting invalidity or noninfringement

shall give notice in the pleadings or otherwise in writing

to the adverse party at least thirty days before the trial,

of the country, number, date, and name of the patentee

of any patent, the title, date, and page numbers of any

publication to be relied upon as anticipation of the patent

in suit or, except in actions in the United States Claims

Court, as showing the state of the art, and the name and

address of any person who may be relied upon as the

prior inventor or as having prior knowledge of or as hav-

ing previously used or offered for sale the invention of

the patent in suit. In the absence of such notice proof

of the said matters may not be made at the trial except

on such terms as the court requires.

(July 19, 1952, c. 950, 66 Stat. 812; July 24, 1965, Pub.

L. 89-83, § 10, 79 Stat. 261; Nov. 14, 1975, Pub.L. 94-

131, § 10, 89 Stat. 692; Apr. 2, 1982, Pub. L. 97-164,

Title I, § 161(7), 96 Stat. 49.)

25a

FEDERAL RULES OF CIVIL PROCEDURE

Rule 56. Summary Judgment

(a) For Claimant. A party seeking to recover upon a

claim, counterclaim, or cross-claim or to obtain a declara-

tory judgment may, at any time after the expiration of

20 days from the commencement of the action or after

service of a motion for summary judgment by the adverse

party, move with or without supporting affidavits for a

summary judgment in the party’s favor upon all or any

part thereof.

(b) For Defending Party. A party against whom a

claim, counterclaim, or cross-claim is asserted or a de-

claratory judgment is sought may, at any time, move

with or without supporting affidavits for a summary judg-

ment in the party’s favor as to all or any part thereof.

shall be served at least 10 days before the time fixed for

the hearing. The adverse party prior to the day of hear-

ing may serve opposing affidavits. The judgment sought

shall be rendered forthwith if the pleadings, depositions,

answers to interrogatories, and admissions on file, to-

gether with the affidavits, if any, show that there is no

genuine issue as to any material fact and that the moving

party is entitled to a judgment as a matter of law. A

summary judgment, interlocutory in character, may be

rendered on the issue of liability alone although there is

a genuine issue as to the amount of damages.

(d) Case Not Fully Adjudicated on Motion. If on

motion under this rule judgment is not rendered upon

the whole case or for all the relief asked and a trial is

necessary, the court at the hearing of the motion, by

examining the pleadings and the evidence before it and

by interrogating counsel, shall if practicable ascertain

what material facts exist without substantial controversy

and what material facts are actually and in good faith

controverted. It shaJl thereupon make an order specifying

26a

the facts that appear without substantial controversy, in-

cluding the extent to which the amount of damages or

other relief is not in controversy, and directing such fur-

ther proceedings in the action as are just. Upon the trial

of the action the facts so specified shall be deemed estab-

lished, and the trial shall be conducted accordingly.

(e) Form of Affidavits; Further Testimony; Defense

Required. Supporting and opposing affidavits shall be

made on personal knowledge, shall set forth such facts

as would be admissible in evidence, and shall show af-

firmatively that the affiant is competent to testify to the

matters stated therein. Sworn or certified copies of all

papers or parts thereof referred to in an affidavit shall be

attached thereto or served therewith. The court may per-

mit affidavits to be supplemented or opposed by deposi-

tions, answers to interrogatories, or further affidavits.

When a motion for summary judgment is made and sup-

ported as provided in this rule, an adverse party may

not rest upon the mere allegations or denials of the ad-

verse party’s pleading, but the adverse party’s response,

by affidavits or as otherwise provided in this rule, must

set forth specific facts showing that there is a genuine

issue for trial. If the adverse party does not so respond,

summary judgment, if appropriate, shall be entered

against the adverse party.

(As amended Dec. 27, 1946, eff. Mar. 19, 1948; Jan. 21,

1963, eff. July 1, 1963; Mar. 2, 1987, eff. Aug. 1, 1987.)

27a

RULES OF THE FEDERAL CIRCUIT

Rule 36. Judgment of affirmance without opinion.

The court may enter a judgment of affirmance with out

opinion, citing this rule, when it determines that any of

the following circumstances exist:

(a) the judgment, decision or order of the trial court

appealed from is based on findings that are not clearly

erroneous;

(b) the evidence in support of a jury verdict is sufficient;

the pleadings is supported by the record;

(d) the decision of an administrative agency warrants

affirmance under the standard of review in the statute

authorizing the petition for review; or

(e) a judgment or decision has been entered without an

error of law;

and an opinion would have no precedential value.

28a

Claim 8 of U.S. Re. Patent 33,102

8. A process for decontaminating an underground

vadose zone which is located above the water table and

is contaminated with a volatile liquid contaminant which

is percolating downwardly through said vadose zone,

which comprises:

establishing a vacuum extraction well comprising a

well casing having a perforate lower portion lo-

cated in the contaminated vadose zone and above

the water table so that fluids can flow from said

contaminated vadose zone into said perforate

lower portion of said well casing, the area around

said vacuum extraction well casing above said per-

forate lower portion being substantially sealed to

impede flow of air around said well casing from

the surface of the ground to said perforate lower

portion of said well casing;

applying a vacuum through said vacuum extraction

well to said perforate lower portion of said well

casing, said vacuum being effective to draw air

through said contaminated vadose zone and to

‘volatilize liquid contaminant that is present in said

contaminated vadose zone above the water table

and surrounding said perforate lower portion of

said well [caisng] casing the vapor containing the

volatilized liquid contaminant being drawn into

said well casing and thence being transported to

a location above ground.

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.