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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1996
- **Citation:** 516 U.S. 1117

## Text

Supreme Court, U.S.
: FILED
i"
)) ‘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

Ee SEINE 1 HED scccccnssuccecsvcesoosecssssocesasscanencacevensenes i
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

-)3-

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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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_1433%3A2. Public record. Not legal advice.