Opposition Brief — Malot v. Roy F. Weston, Inc.

Supreme Court, U.S.

: FILED

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)) ‘JAN 19 1994

No. 95-996 weenie

In The

SUPREME COURT OF THE UNITED STATES

October Term, 1995

JAMES J. MALOT,

Petitioner,

v.

ROY F. WESTON, INC., and

WESTON SERVICES, INC.,

Respondents.

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

RESPONDENTS’ BRIEF IN OPPOSITION

TO PETITION FOR CERTIORARI

William H. Boice*

Dean W. Russell

R. Scott Tewes

Theodore H. Davis, Jr.

Kilpatrick & Cody

1100 Peachtree Street

Suite 2800

Atlanta, Georgia 303.

(404) 815-6500 *Counsel of Record

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QUESTION PRESENTED

Petitioner’s “Questions Presented” are argumentative

and raise policy questions concerning the federal judiciary

that are wholly unrelated to the merits of the parties’ dispute.

Respondents submit that Petitioner’s request for review

properly presents a single issue: Whether the District Court

and Court of Appeals correctly concluded that Respondents

were entitled to judgment as a matter of law that Claim 8 of

the patent in suit was invalid and not infringed.

LIST OF PARTIES

The parties are correctly identified in the style of the

Petition and of this response.

|

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TABLE OF CONTENTS

Page

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Nee li ast ctisaeniainnssiabiaeneibendion li

SPREE GE” BINED GPU EB viccccsescscccecesccccnssnecbaneserssseccnnios l

SUMMARY OF THE ARGUMENT ...................:::cceceeeeeeneee 2

SE ESTE RE A cv Re ae 3

I. PETITIONER SEEKS TO ADD TO THE

OVERBURDENED DOCKETS OF THE

FEDERAL APPELLATE COURTS .............c.csseccscccees 3

fl. PETITIONER’S ARGUMENTS IGNORE THE

TEACHINGS OF THIS COURT ON THE

STANDARD FOR ENTRY OF SUMMARY

da acalchtaial nl ae ppnaeeniniapbindansensecsases 6

Il. THE DISTRICT COURT AND THE COURT

OF APPEALS CORRECTLY DETERMINED

THAT NO MATERIAL FACTUAL DISPUTES

PRECLUDED ENTRY OF SUMMARY

ido as a acaeadealbaabnesgtadebniocehensenanenees 8

A. As a Matter of Law, Claim 8 is Invalid Under

35 U.S.C. § 102 Because Anticipatory Prior Art

Predated the Claim in Question ......................c000008- 9

-1li-

TABLE OF CONTENTS (continued)

Page

B. As a Matter of Law, Claim 8 is Invalid

Under 35 U.S.C. § 103 as Obvious..................... 12

C. The Courts Below Correctly Determined

that Respondents’ Process Does Not Infringe

Claim 8 Because it is the Same as Processes

Known and Publicly Used Before Petitioner’s

PROCESS WAS COMBER VIG nccsccccscesessveccssnccessssccsscoess 13

Ea PIII niteiescsicindnnsdsndcascieaichonmsaneteosndicdapashishmasannedanimaaiananies 15

-jV-

TABLE OF AUTHORITIES

Page

CASES

Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986).......... 6

Automatic Radio Mfg. Co. v. Hazeltine Research, Inc.,

SIP ides ART UR TID ccxsicinss een alstsinatinp apaeaatenainlnalienaataites 7

Becton Dickinson & Co. v. C.R. Bard, Inc.,

DAE Fe FFE rs Seas ROOD titicivintavantesecncudscmaanne 13

Cable Elec. Prod., Inc. v. Genmark, Inc.,

TAD FR HOES COG, Cae, Fa i veveccessrsccsescsenccccsscceiscsinnssces 7

Celotex Corp. v. Catrett, 477 U.S. 317 (1986) ................0.. 13

Corning Glass Works v. Sumitomo Elec. USA, Inc.,

BGS £00 LAS) CEG. EOE: Te hiccnististiceintcsensisticcrndotnte 13

Corona Cord Tire Co. v. Dovan Chem. Co., |

SIO Ss Fae (A itiinsivcnnliatisiaiamnecana 11

Frederick S. Wylie P.C. v. Texaco, Inc., 764 F.2d 604

(Di Gae,. BGS hi ikiiinsinicesccsinaiataiciiiie snide aeaeaiaianaaas 6

Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848

CBO Cir. SUBD snincecsiisitisesstekcenstanctaitinaninaieanaimaaaalsmaamatia 6

TABLE OF AUTHORITIES (continued)

Page

Johnston v. IVAC Corp., 885 F.2d 1574

(Red. Cas. 19GB) ccssoccssssssecsstessscntntseagnbsinntgeititauiniduinniaal 13

Kiva Corp. v. Baker Oil Tools, Inc., 412 F.2d 546

(Sth Cir.), cert. denied, 396 U.S. 927 (1969) ...........cccec00 11

Lear, Inc. v. Adkins, 395 U.S. 653 (1969) .....cccccccccceeeseees 7,12

Price v. Symsek, 988 F.2d 1187 (Fed. Cir. 1993) ............... 1]

Rinieri v. Scanlon, 254 F. Supp. 469 (S.D.N.Y. 1966).......... 8

Rolls-Royce, Ltd. v. GTE Valeron Corp., 625 F. Supp.

343 (E.D. Mich. 1985), aff'd, 800 F.2d 1101

Cad. Cie. 1500 Gs cscscscicinsscccesssensshiteiotsensengitainaientsnnadmmeiials 11

Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714

(Ped. Cir. 8991). .ccsccscssessetssscdsssecsididicciviiennsesmiaaseiehintbadnats 12

Sinclair & Carroll Co. v. Interchemical Corp.,

32S U.S. FST CIDE) accccesccctvaccoonsecnsnsshiisspisanadiesieanmepivaiion 12

Standard Havens Prods., Inc. v. Gencor Indus.,

953 F.2d 1360 (Fed. Cir. 1991), cert. denied,

B13 B. Ce, CB CGB) ccacetcesnsccissnstensicttcnananiitindsesinantinmaiiias 9

-Vi-

TABLE OF AUTHORITIES (continued)

Townsend Eng. Co. v. HiTec Co., 829 F.2d 1086

NE A: BIE Piicccchnasiclsiititaleciniantiehitehiiicemiitshaaiciadidani 7

Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc.,

Tare See Be Ce Fa et ttttahndntetinisstnnscctnsionns 10

Verdegaal Bros. v. Union Oil Co., 814 F.2d 628

(Fed. Cir.), cert. denied, 484 U.S. 827 (1987) .............0000. 9

Walter v. Fiorenzo, 840 F.2d 427 (7th Cir. 1988) ..........0...... 8

Washington & Moen Mfg. Co. v. Beat ‘Em All

Barbed-Wire Co., 143 U.S. 275 (1892) ..........cccccc0000 10, 11

STATUTES

Be SE i iiiecncscciaticnscapnnisnscaininsactiintannbiniasemonnamiantin i, 9, §2

a Cita: Uh SIP cantnintiipsibneneinncenencesccenninatnctoncerenseasiminmases 1,12

OTHER AUTHORITIES

Annual Report of the Director of the Administrative

Office of the United States Courts (1960)..............c0.00004 3

Annual Report of the Director of the Administrative

Office of the United States Courts (1990) ...............00000000+ 3

Black’s Law Dictionary (Rev. 4th ed. 1968) ..................... 11

-Vii-

TABLE OF AUTHORITIES (continued)

Charles W. Joinder, Limiting Publication of Judicial

Opinions, 56 Judicature 195 (1972) .......ccccccessessseeeeeeeeees 5

Hon. Paul R. Michel, The Challenge Ahead: Increasing

Predictability in Federal Circuit Jurisprudence for the

Next Century, 43 Am. L. Rev. 1231 (1994)... 3

Hon. Jon O. Newman, No “Secret” Opinions on Appellate

Courts, Wall Street Journal, January 2, 1996, at A9.......4

Eugene M. Prince, Law Books, Unlimited,

Ae Fatt, Gk: Ba CE cisisnticmiimes enaiinnninintibinintnninnia 5

Hon. Bruce M. Selya, Publish and Perish: The Fate

of the Federal Appeals Judge in the Information

Age, SS Cito St. L.. 5. GOS (IGS). ..ccercsccssrssccesescressccssosaes 4

-Viil-

STATEMENT OF THE CASE

The courts below entered and upheld summary judg-

ment in Respondents’ favor not, as Petitioner suggests,

because this case is complex, but instead because it is simple.

Petitioner’s allegations before the District Court were

narrow: That Respondents had literally infringed a single

claim (“Claim 8”) of Petitioner’s patent through Respon-

dents’ removal of liquid organic contaminants from a single

site. Respondents’ defenses were equally narrow: (1) Peti-

tioner’s patent was invalid under 35 U.S.C. § 102 because of

anticipatory prior art encompassing Petitioner’s claim:

(2) Petitioner’s claim was “obvious” under 35 U.S.C. § 103;

and (3) Even if Petitioner’s claim was not invalid, the

technology employed by Respondents in the single site clean

up did not infringe that claim.

Based on undisputed testimony and documentary

evidence, and following full briefings and hearings, both the

District Court and the Court of Appeals concluded that

Respondents were entitled to judgment as a matter of law

because (1) Petitioner’s Claim 8 was invalid; and (2) even if

valid, Claim 8 was not infringed by Respondents’ process.

Because these holdings applied well-settled principles of law

Supported by undisputed evidence and testimony, the Court

of Appeals determined that Petitioner's arguments were so

lacking in merit that they did not warrant extended analysis.

SUMMARY OF THE ARGUMENT

The Court should deny review because the Petition

presents no issue warranting this Court’s attention. Peti-

tioner cannot demonstrate an intercircuit conflict bearing on

the parties’ dispute or that the decision of the Court of

Appeals is inconsistent with that of a state court of last

resort. Petitioner cannot demonstrate that the District Court

and the Court of Appeals erred in their resolution of an

important federal question. And Petitioner cannot

demonstrate that this case presents issues of constitutional

magnitude.

Rather, Petitioner merely disagrees with the determi-

nations of the courts below that no material factual disputes

precluded entry of summary judgment in Respondents’

favor. Because the District Court and the Court of Appeals

properly resolved this question, and because this case other-

wise involves the application of well-established legal prin-

ciples, summary disposition and summary affirmance were

appropriate.

t2

ARGUMENT

I. PETITIONER SEEKS TO ADD TO THE OVER-

BURDENED DOCKETS OF THE FEDERAL

APPELLATE COURTS

This Court should reject Petitioner’s suggestion that

there is no place in federal practice for the summary disposi-

iion of cases presenting neither novel legal issues nor dis-

puted material facts. Respondents agree with Petitioner that

the federai appellate courts are burdened with overwhelming

dockets. In 1960, under 4,000 appeals were taken to the

United States Courts of Appeals. Annual Report of the

Director of the Administrative Office of the United States

Courts 210 (1960). By 1990, this figure had risen to over

30,000 appeals annually. Annual Report of the Director of

the Administrot've Office of the United States Courts 1-3

(1990).

The parties disagree, however, on the appropriate

response to the problem of crowded dockets. Petitioner’s

arguments turn on the unlikely proposition that it is in the

interest of judicial economy for federal appellate courts to

produce a comprehensive opinion in every case before them,

regardless of the underlying lack of merit of the appeal.

Petitioner also suggests that this Court should impose upon

the Courts of Appeals a requirement that those courts retain

appeals under consideration for a set (but unspecified) period

' Significantly, the United States Court of Appeals for the Federal Cir-

cuit, to which Petitioner seeks a Writ of Certiorari, consistently has

demonstrated its leadership in dealing with the explosive growth of

appellate dockets. See Hon. Paul R. Michel, The Challenge Ahead:

Increasing Predictability in Federal Circuit Jurisprudence for the Next

Century, 43 Am. L. Rev. 1231, 1232-33 & n.6 (1994).

rs

of time, regardless of the actual time required to dispose of

those appeals.

Respondents submit that just the opposite is appropr-

iate. To give but one example, this Court has for decades

recognized that a substantial portion of the petitions for

certiorari presented to it do not present questions warranting

extended attention. Likewise, the response of the Chief

Judge of the Second Circuit to the Wall Street Journal

editorial cited in the Petition contains what should be a self-

evident point, namely that “[p]Jreparing full opinions on

every appeal would significantly delay the decision of all

appeals.” Hon. Jon O. Newman, No “Secret” Opinions on

Appellate Courts, Wall Street Journal, January 2, 1996, at

A9. Thus, contrary to Petitioner’s claims, it is the cultivation,

rather than the prohibition, of summary affirmances such as

that undertaken by the Court of Appeals in this case that will

encourage the development of sound jurisprudence:

[Curtailing published opinions] maw be the

last, best hope of the appellate judiciary.

Opinion writing is far from an exact science,

and good opinions, like well-made suits of

clothes, are best when custom tailored. The

work is labor intensive. Because published

opinions require extra pains, reducing the

number of published opinions will allow

judges to devote more time and energy to

the elucidation of important legal principles

in cases that warrant great care and contem-

plative thought.

Hon. Bruce M. Selya, Publish and Perish: The Fate of the

Federal Appeals Judge in the Information Age, 55 Ohio St.

L. J. 405, 414 (1994).

Moreover, the proliferation of “law review” opinions

such as that sought by Petitioner threatens the American

‘atte

legal system in another manner independent of demands on

court time to produce them:

(UJnlimited proliferation of published opin-

ions constitutes a burden and a threat to a

cohesive body of law.... [T]here are limits

on the capacity of judges and lawyers to pro-

duce, research and assimilate the sheer mass

of judicial opinions. These limits are dan-

gerously near at present and in some systems

may already be exceeded .... Common law

in the United States could be crushed by its

own weight if present trends continue.

Charles W. Joinder, Limiting Publication of Judicial Opin-

ions, 56 Judicature 195, 196 (1972).

Particularly are these principles true in cases such as

this one that present undisputed facts and no novel legal

questions. As Dean Pound observed without the benefit of

today’s explosive growth in appellate dockets:

After reading upwards of fourteen

hundred double-column pages of judicial

opinions, carefully sifted from many thou-

sands of pages in the National Reporter Sys-

tem, one is impelled to ask why paper,

printer’s ink, labor, and shelfroom should be

devoted to the perpetuation of what for the

largest part is avowedly but repetition of

things long familiar and is too often merely

elaborate elucidation of the obvious.

Quoted in Eugene M. Prince, Law Books, Unlimited, 484

A.B.A. J. 134, 134 (1962).

More to the point, Petitioner entirely overlooks the

interest of parties such as the Respondents who, having been

unjustly charged with infringement, are forced to engage in

time-consuming and expensive litigation. As the Second

Circuit has noted in the trademark infringement context,

Sa

“[w]hether a litigant is seeking to halt an alleged

infringement or . . . seeking a declaration of

noninfringement, it is entitled to have the infringement issue

resolved promptly so that it may conduct its business affairs

in accordance with the court’s determination of its rights.”

Goya Foods, Inc. v. Tropicana Prods., Inc., 846 F.2d 848,

854 (2d Cir. 1988). Having raised arguments on appeal that

deserved no extended discussion, Petitioner should not

directly benefit from the meritless nature of those claims by

securing review by this Court.

II. | PETITIONER’S ARGUMENTS IGNORE THE

TEACHINGS OF THIS COURT ON THE STAN-

DARD FOR ENTRY OF SUMMARY JUDG-

MENT

Petitioner’s arguments are flatly contrary to this

Court’s holdings on the correct standard for entry of sum-

mary judgment. Under Rule 56, “a party opposing a

properly supported motion for summary judgment ‘may not

rest upon the mere allegations or denials of his pleading, but

. . Must set forth specific facts showing that there is a

genuine issue for trial.’” Anderson v. Liberty Lobby, Inc.,

477 U.S. 242, 247 (1986) (quoting First National Bank of

Arizona v. Cities Service Co., 391 U.S. 253, 288 (1968)). In

particular, “bald assertions, absent any evidentiary base, are

insufficient to create a material issue of fact... .” Frederick

S. Wylie P.C. v. Texaco, Inc., 764 F.2d 604, 612 (9th Cir.

1985).

Petitioner lost this case in the courts below because

the uncontroverted evidence presented by Respondents

showed that (1) every step of the Claim 8 process was known

and publicly used in prior art processes not disclosed to the

Patent and Trademark Office when it allowed Claim 8 and

(2) Respondents’ process accused of infringing Claim 8 was

a

exactly the same as the prior art processes. In response to

Respondents’ motion for summary judgment, Petitioner

totally failed to make the evidentiary showing necessary to

raise any genuine issue of material fact with respect to either

patent invalidity or noninfringement. Instead, Petitioner

merely relied upon his own declaration purporting to

evaluate the evidence introduced by-Respondents. The

declaration, riddled with speculation, conclusions, and

Statements made on information and belief (A1367-1401),

failed to satisfy the requirements that it be made on personal

knowledge and that it set forth facts that would be admissible

at trial. See, e.g., Automatic Radio Mfg. Co. v. Hazeltine

Research, Inc., 339 U.S. 827, 831 (1950) (affidavit made

upon information and belief does not comply with Rule

56(e)), overruled on other grounds, Lear, Inc. v. Adkins, 395

U.S. 653, 664 (1969); Townsend Eng. Co. v. HiTec Co., 829

F.2d 1086, 1089 (Fed. Cir. 1987) (patentee’s “opinion about

the meaning and application of various phrases and

provisions of [its] claim . . . does not create factual disputes

that preclude[] the grant of summary judgment”); Cable

Elec. Prod., Inc. v. Genmark, Inc., 770 F.2d 1015, 1025 (Fed.

Cir. 1985) (declaration offering an “interpretation” of

undisputed factual evidence insufficient Statement of

allegedly conflicting facts Showing genuine issue for trial).

Both the District Court and the Court of Appeals concluded

that the materials submitted by Petitioner were insufficient to

raise any disputed issue of material fact and that the evidence

of prior public use submitted by Respondents rendered Claim

8 of Petitioner’s patent invalid as a matter of law.

Petitioner’s latest arguments are insufficient to create

a material issue of fact, whether in this Court or in the’ courts

below. At heart, Petitioner’s claims are nothing more than

vitriolic attacks on the credibility of Respondents’ witnesses,

whom Petitioner cavalierly asserts are, inter alia, “inherently

unbelievable,” unable to resist “the temptation to actual

4.

perjury,” and to be “regarded with skepticism.” Petitioner’s

conclusory allegations, however, cannot obscure the com-

plete absence of evidence supporting his claims of

supposedly perjured testimony. Nor, as the Court of Appeals

accurately noted, can they obscure the corroboration of that

testimony by Petitioner’s own coinventor. (Transcript of

Oral Argument at 8-10, 12-13) Because “[a] motion for

summary judgment cannot be defeated merely by an

opposing party’s incantation of lack of credibility over a

movant’s supporting affidavit,” the Petition, like Petitioner’s

prior efforts, fails to create a material factual dispute. See

Walter v. Fiorenzo, 840 F.2d 427, 434 (7th Cir. 1988); see

also Rinieri v. Scanlon, 254 F. Supp. 469, 474 (S.D.N.Y.

1966) (“[T]he opposing party may not merely recite the

incantation ‘credibility’ and have a trial on the hope that a

jury may disbelieve factually uncontested proof.”).

Il. THE DISTRICT COURT AND THE COURT OF

APPEALS CORRECTLY DETERMINED THAT

NO MATERIAL FACTUAL DISPUTES PRE-

CLUDED ENTRY OF SUMMARY JUDGMENT

The result in this litigation is not only correct, but

routine. Even if this Court were to overlook the failure of the

Petition itself to identify a legitimate issue of federal law

warranting review, this case presents nothing more than the

application of well-settled legal principles to undisputed

facts. This Court therefore should deny the Petition because

the record before the courts below establishes Respondents’

entitlement to judgment as a matter of law.

A. As a Matter of Law, Claim 8 is Invalid

Under 35 U.S.C. § 102 Because Anticipa-

tory Prior Art Predated the Claim in Ques-

tion

The courts below correctly determined that Peti-

tioner’s Claim 8 was invalid as anticipated by prior art. A

patent claim is invalid under 35 U.S.C. § 102 if every

element of the claim was practiced in a prior art invention or

process. Verdegaal Bros. v. Union Oil Co., 814 F.2d 628,

631 (Fed. Cir.), cert. denied, 484 U.S. 827 (1987). An

element of a claimed invention may be disclosed by the prior

art, even though that element is not expressly described, if

the element is inherent in the reference. Standard Havens

Prods., Inc. v. Gencor Indus., 953 F.2d 1360, 1369 (Fed. Cir.

1991) (“An anticipatory reference, however, need not

duplicate word for word what is in the claims. Anticipation

can occur when a claimed invention is ‘inherent’ or

otherwise implicit in the relevant reference.”), cert. denied,

113 S. Ct. 60 (1992); Verdegaal Bros., 814 F.2d at 631

(earlier invented process anticipates later claimed process

even if the earlier inventor did not recognize one property of

that process because that property was inherently possessed

by the earlier process).

In entering summary judgment in Respondents’ favor

under 35 U.S.C. § 102, the District Court had before it

declaration testimony from two individuals--Duane Knopik

and Paul Yaniga--clearly establishing that that the process

underlying Claim 8 was in use well prior to the Petitioner’s

putative date of invention. (A128-39; A351-59) Respon-

dents also introduced evidence that Exxon Co. USA and

Shell Oil Co. also had used the same technology well before

Petitioner. (A188-193; A211-23; A1064-68) Finally, the

District Court had the benefit of admissions by Petitioner’s

-9.

coinventor that the claim was predated by Respondents’

showing:

Q: And does the description contained

in Exhibit 5 of the process used by

Soil Venting System describe the

process covered by your patent.

A: Very well, yes.

Q: That is, the system described in

Exhibit 5 in your view is the same as

the system described in the patent?

A: Yes.

(A 594: 6-12)

Unable even now to identify any evidence placing the

evidence before the District Court into dispute, Petitioner

relies on a distorted view of the law governing both

anticipation and corroboration in attempting to discredit

Respondents’ evidence of prior art. As to anticipation, Peti-

tioner invokes Washington & Moen Mfg. Co. v. Beat ‘Em All

Barbed-Wire Co., 143 U.S. 275 (1892), to suggest that the

burden of proving invalidity is equivalent to the criminal law

“beyond a reasonable doubt” standard. Petitioner fails to

note, however, that subsequent decisions by this Court and

others have long since abandoned the “reasonable doubt”

rule and that a showing of clear and convincing evidence is

the modern standard for anticipation. See generally Trans-

World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552,

1558-59 (Fed. Cir. 1984) (citing Radio Corp. of Am. v. Radio

Eng. Labs., 293 U.S. 1, 7-8 (1934); Eibel Process Co. v.

Minnesota & Ontario Paper Co., 261 U.S. 45, 60 (1923)).

Of equal importance, Petitioner also fails to disclose that,

even if it remains good law, Washington & Moen expressly

limited its own scope to claims of anticipation supported

only by oral testimony, circumstances that clearly are not

present in this case. See Washington & Moen, 143 U.S. at

284-85.

As to corroboration, Petitioner Stridently asserts that

Respondent’s overwhelming documentary evidence is

entitled to no weight. When corroboration is required,

however, a “rule of reason” analysis determines whether the

testimony should be accepted. Price v. Symsek, 988 F.2d

1187, 1195 (Fed. Cir. 1993). Under such an analysis, all

pertinent evidence should be evaluated in determining

whether the testimony has been adequately corroborated. Id.

at 1196. “Corroborating evidence means nothing more than

evidence that tends to Strengthen or confirm other evidence

already given.” Black’s Law Dictionary 414 (Rev. 4th ed.

1968). see also Corona Cord Tire Co. v. Dovan Chem. Co.,

276 U.S. 358, 381 (1928) (business records including record

of shipment and shipping order); Kiva Corp. v. Baker Oil

Tools, Inc., 412 F.2d 546, 551-52 (5th Cir.) (job tickets

prepared by affiant and his employer), cert. denied, 396 U.S.

927 (1969); Rolls-Royce, Ltd. v. GTE Valeron Corp., 625 F.

Supp. 343, 353-54 (E.D. Mich. 1985) (“[T]he law requires

that there be some contemporaneous .. . physical evidence to

establish the reduction to practice within the required time

period ... .”), aff'd, 800 F.2d 1101 (Fed. Cir. 1986).

In this case, Respondents presented ample evidence

and testimony to corroborate the affidavits and declarations it

submitted. This uncontroverted showing included documen-

tary evidence of two processes identical to that Claimed by

Petitioner in use as early as 1981. (A150; A361) It included

descriptions of the successful remediation of volatile con-

taminants through the same processes during 1982. (A136;

A167-85; A 360-71) And it included testimony and

evidence of the prior use of the same process by parties

other than the affiants and declarants attacked by the

Petition. (A211-17; A1604-68) This showing not suprisingly

created an abiding conviction on the part of the District

Court that public knowledge and use of the Claim 8 process

fi,

before it was “invented” by Petitioner had been established

as a matter of law.

B. As a Matter of Law, Claim 8 is Invalid

Under 35 U.S.C. § 103 as Obvious

Independent of its invalidity under 35 U.S.C. § 102,

Claim 8 is invalid under 35 U.S.C. § 103. The United States

patent system also does not allow the patenting of obvious

improvements in the state of the art. The requirement of

nonobviousness, codified in 35 U.S.C. § 103, rejects as

unpatentable “insignificant variations and innovations of a

commonplace sort.” Graham v. John Deere Co., 383 U.S. 1,

16 (1966). Because patent rights limit free competition,

protection of the public interest in the free enterprise system

requires that patents with obvious subject matter be declared

invalid. See Lear, Inc. v. Adkins, 395 U.S. 653, 670 (1969);

Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327,

330-31 (1945).

The determination of obviousness is a question of

law. Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 716 (Fed.

Cir. 1991). Applying this test, the District Court concluded

that prior art, including the work of Duane Knopik, the ORS

Soil Vent System described by Paul Yaniga, and the Exxon

East Meadows system, taught the use of vacuum to induce

air flow through contaminated soil in the vadose zone to

volatilize liquid contaminants as described in Claim 8. In

reaching this conclusion, the District Court had before it

testimony explaining the scientific principles governing the

volatilization of contaminants by air flowing through the

soil. (A206-220) The same scientific principles are inherent

in the volatilization of subterranean contaminants by air flow

as taught by each of the foregoing prior art systems. The

remaining elements of Claim 8 pertaining to well

construction were known to those skilled in the art and

-12-

would have been obvious to use in a vacuum extraction well.

(Al36-139; A358-359; A217-218; A632-633; AI93-194).

Accordingly, the District Court correctly concluded that the

combination of all of the elements disclosed by Claim 8 was

taught by the prior art and would have been obvious to a

person of ordinary skill in the art at the time the claimed

invention was made.

c. The Courts Below Correctly Determined

that Respondents’ Process Does Not In-

fringe Claim 8 Because it is the Same as

Processes Known and Publicly Used Before

Petitioner’s Process Was Conceived

The District Court correctly determined that Peti-

tioner failed to carry his burden of proving infringement. To

establish literal infringement of Claim 8, Petitioner must

prove that every element of Claim 8 is used in Respondents’

Process. Becton Dickinson & Co. v. C.R. Bard, Inc., 922

F.2d 792, 796 (Fed Cir. 1990); Corning Glass Works v.

Sumitomo Elec. USA, Inc., 868 F.2d 1251, 1259 (Fed. Cir.

1989). To obtain summary judgment, therefore,

Respondents need only demonstrate Petitioner’s inability to

prove a single element of his case. See Celotex Corp. v.

Catrett, 477 U.S. 317, 323 (1986); Johnston v. IVAC Corp.,

885 F.2d 1574, 1577 (Fed. Cir. 1989).

The District Court correctly concluded that the prior

art process used by Respondents was no different from the

processes reflected in the prior art. Respondent established

that its process drew air through the soil, thereby causing

liquid contaminants in the soil to evaporate:

Movement of fresh air through the soil

vented preformed vapors of the contaminant,

disturbing both the equilibrium existing

between vapor and liquid contaminants, and

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thus allowing more liquid contaminant to

evaporate. As the flow of air continued, it

removed the new vapors, which in turn

resulted in the removal of additional liquid.

(A503)

At least one of the processes used by witnesses

practicing prior art worked exactly the same way: “[T]he soil

venting technology applies a vacuum to an extraction well to

pull air through contaminated ground, thereby causing the

liquid contaminants trapped in the soil to vaporize.” (A135)

Likewise, the process used by another of the parties’ com-

petitors worked by “drawing air through the soil, causing the

trapped liquid hydrocarbon to vaporize.” (A356-357) (quota-

tion omitted). Respondents’ soil venting process is therefore

exactly the same as prior art processes known and used

before Petitioner and his coinventor ever met. Thus, if Peti-

tioner’s argument were correct that the prior art processes

were different from the process described in Claim 8, the

Respondents’ use of the prior art processes cannot infringe

Claim 8.

Petitioner cannot have it both ways. Either Claim 8

describes a process that was previously used by others, in

which case Claim 8 is invalid, or Claim 8 describes some

process different from that previously used by others, in

which case Respondents’ process cannot infringe. In no case

can Petitioner’s patent prevent others from using a process

that was known and used in the prior art. Thus, even if

Claim 8 were valid, the District Court and Court of Appeals

correctly entered and upheld summary judgment because

Respondents used a prior art process at the single site

cleanup charged to be an infringement.

Petitioner’s tortured characterization of the oral argu-

ment before the Court of Appeals cannot change this result.

In oral argument, counsel for Respondents noted that both

Petitioner’s and Respondents’ processes leave nonvolatile

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“fractions of the contaminant” at the site of a cleanup. Page

20 of the Petition in turn acknowledges that Petitioner’ s pro-

cess fails to remove “a few parts [of contaminant] per billion

of soil.” The parties thus agree on the self-evident proposi-

tion that neither process--however effective it may be--

removes every atom making up every molecule of every

hydrocarbon contaminant that may be found at a particular

site. Petitioner’s suggestion that the wholly semantic distinc-

tion between the parties’ phrasing of the same point is the

proper subject for a petition for certiorari strains the limits of

responsible advocacy.

CONCLUSION

To the extent that the Petition raises issues not re-

solved by the courts below, this Court is an inappropriate

forum for their review. As to the merits of Petitioner’s

claims of infringement, the courts below applied well-

established legal principles to undisputed facts to reach a

result that was not only correct, but routine. Respondents

therefore request that this Court deny the Petition.

Respectfully submitted this 22d day of January, 1996,

William H. Boice* Kilpatrick & Cody

Dean W. Russell Suite 2800

R. Scott Tewes 1100 Peachtree Street

Theodore H. Davis, Jr. Atlanta, Georgia 30309-4530

(404) 815-6500

* Counsel of Record

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