Opposition Brief — Wallshein v. Cablestrand Corp.

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JAN 3 1995

No. 94-811 .

Os HE SLERM

In The

Supreme Court of the United States

October Term, 1994

+

MELVIN WALLSHEIN,

Petitioner,

CABLESTRAND CORPORATION

and

ALLAN B. WEISS,

Respondents.

+

On Petition For Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

e

RESPONDENTS’ BRIEF IN OPPOSITION TO

PETITION FOR WRIT OF CERTIORARI

CHaRLES H. THOMAS

Cisto & THOMAS

4201 Long Beach Boulevard

Suite 405

Long Beach, California 90807

(310) 595-8422

Counsel for Respondents

Cablestrand Corporation and

Allan B. Weiss

COCKLE LAW BRIEF PRINTING CO., (800) 225-6964

OR CALL COLLECT (402) 342-2831

QUESTIONS PRESENTED

The questions presented in the petition are argumen-

tative, replete with misstatements of fact and law, and

repetitious. The only question which could have been

stated is:

1. Did the Court of Appeals, by affirming the Dis-

trict Court’s determination of failure of Petitioner to carry

the burden of proving infringement of his patents, so far

depart from the accepted and usual course of judicial

proceedings, or sanction such a departure by the District

Court, as to call for an exercise of the Supreme Court's

power of supervision?

ii

TABLE OF CONTENTS

Page

CRIRSTR IGS FRSC G Me on ccccccnccecvneniicuecus i

STATEAGENT OF FEO CAG. 6 cc cccccnccncccisvtens 1

SUMMARY OF THE ARGUMENT ................. 3

PSIG, Ks cope nvsccicsvaxstintionenes 4

PETITIONER’S ATTACK UPON THE CAFC DECI-

SION OF MARCH 8, 1993 IS UNTIMELY........ 4

THE DISTRICT COURT PROPERLY CONSIDERED

THE EVIDENCE WITH RESPECT TO ALL ISSUES

AND ENTERED FINDINGS IN ACCORDANCE

WITH THE FEDERAL RULES OF CIVIL PRO-

CEPR vo coerce onne dunesteseaundabuaeerenetnbel 6

The District Court Correctly Found, Based on the

Evidence, That There Was No Infringement...... 6

The Finding That the Accused Wire Does Not Have

a “Lumen” Is Not Clearly Erroneous ............ 12

THE ALLEGATIONS OF THE EXISTENCE OF PUR-

PORTED “BIASES” BY THE DISTRICT COURT

WERE NOT TIMELY RAISED IN THE APPEAL

GAIUS ov cccccuadccusapenn bstebadeeeeseneaaesees 15 |

THE ALLEGATIONS OF DENIAL OF DUE PROCESS

BY THE DISTRICT COURT ARE SPECIOUS AND

REPLETE WITH FALSE REPRESENTATIONS. .... 15

THE ALLEGED “BIASES” ATTRIBUTED TO BOTH

THE DISTRICT AND APPELLATE COURTS ARE

PITRE FRAC ASIN 6.0 0 civ nc cvessaanesusemetes 23

COURS boss oa cceccdsd ukaseeeewbeniveeteae 24

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iii

TABLE OF AUTHORITIES

CASES

Allen Bradley Co. v. Local Union No. 3, I.B.E.W.,

145 F. 2d 215 (CA 2 1944), reversed on other

grounds 325 U.S. 797, 65 S. Ct. 1533..........

Black Diamond Coal Co. v. Excelsior Coal Co., 156

ck ee ee 2 ee . | rr

Brown Paper Mill Co., Inc. v. Irwin, 134 F. 2d 337

ees so ade pwe o 5 ovee we ee ees

Dunbar v. Meyers, 94 U.S. 399, 49 L. Ed. 110, 25 S.

Sata ie ee PRESS a ane

FCC v. League of Women Voters of California et

om, Soe ea. aoe, Oe L. Be. 2a 276.............

Federal Trade Commission v. Minneapolis — Hon-

eywell — Regulator Co., 344 U.S. 206, 73 S. Ct.

By OE tis UE et CADE) eee ccc cece.

Gaddis v. Calgon Corp., 506 F. 2d 880, 184 USPQ

ee aay kd a6 oy heads owe uned 64

General Talking Pictures Corp. v. Western Elec.

Co., 304 U.S. 175, 58 S. Ct. 849, 82 L. Ed. 1273

se aoa) vo on 4680856 ko vende ones

Johnson v. IVAC Corp., 885 F. 2d 1574, 12 USPQ 2d

eas ds o daw unde wes'wke es ss

National Labor Relations Bd. v. Pittsburgh Steam-

ship Co., 340 U.S. 498, 71 S. Ct. 453, 95 L. Ed.

eh Oe ros bye 6h vv 004s e opedees

Peterson, Lighterage & Towing Corp. v. New York

Central R. Co., 126 F. 2d 992 (CA 2 1942).....

Prouty v. Ruggles, 41 U.S. 336, 10 L. Ed. 985 (1842)

Page

iv

TABLE OF AUTHORITIES —- Continued

Page

Rice v. Sioux City Memorial Parks Cemetery, 349

U.S. 70, 75 S. Ct. 614, 99 L. Ed. 897 (1955)........ 11

Texas Instruments, Inc. v. United States Interna-

tional Trade Commission, 988 F. 2d 1165, 26

CaP Oe DO CO a a who a dete bebe i ewes 9

Unique Concepts, Inc. v. Brown, 939 F. 2d 1558, 19

Coe Se ae EEE s 6 odo Sie cS oa dices Beis oc )

United States v. Forness, 125 F. 2d 928 (CA 2 1942)

cert. den. 316 U.S. 694, 62 S. Ct. 1293, 86 L. Ed.

i, SPR Eee Menger pS CREME MRE tin ns Oe Fd es Sey ala trader ram 23

Young v. Murphy, 9 Fed Rules Serv. 52a.11, Case 2,

| ee ogee ie. Sing Moret OP ets ela 23

FEDERAL RULES

Rules of the Supreme Court of the United States

PRE Se whe Gi se 0n sc ineeen vases cuekaeeneetiene 10

Dees Be Be Ges ek onc sok ck eels wees ea eek eee 4

Rules of the Court of Appeals for the Federal Circuit

PURO ZO CAI ods enntincanceek ensue ekieeueeaes 2

Federal Rules of Civil Procedure

ii Oe a a ea ae Liven

ls et eee 18, 19

Walia Oh ON i ot oak eh ei an 19

|

TABLE OF AUTHORITIES - Continued

Page

LocaAL Rutes or THE U.S. District Court

CENTRAL District OF CALIFORNIA

alin OR Bee Oe Gl orci csv esas beavcecevecsedud 20

ie Se ee Oe i cen kee en Fa eee Onewee eee 2

STATEMENT OF THE CASE

Petitioner alleges that there was such a deviation

from the Federal Rules of Civil Procedure by the District

Court that he was denied due process. Yet Petitioner fails

to relate specifically how the actions of the District Court

of which he complains violated any passage of the Fed-

eral Rules of Civil Procedure. Petitioner further alleges

that the Court of Appeals for the Federal Circuit (CAFC)

denied him due process by applying the “clearly erro-

neous” standard to the findings of the District Court and

that this was somehow contrary to the Federal Rules of

Civil Procedure. He makes this assertion despite the fact

that Rule 52(a) of the Federal Rules of Civil Procedure

specifically states that findings of fact shall not be set

aside unless clearly erroneous, and due regard shall be

given to the opportunity of the trial court to judge of the

credibility of the witnesses. Moreover, Petitioner ignores

the fact that the CAFC based its affirmation of the District

Court on its own interpretation de novo of the critical

claim limitation of “partially separating turns.”

The Petition for Writ of Certiorari totally ignores the

great weight of evidence against Petitioner that was pre-

sented at trial in the District Court and which was repro-

duced in the Appendix on appeal and referred to

extensively in the briefs submitted on appeal to the

CAFC. It is therefore appropriate to refer specifically

herein to matters in evidence and statements in the pro-

ceedings as reproduced in the Appendix and considered

by the CAFC in reaching its judgment of May 24, 1994.

References to specific pages of the CAFC Appendix

are in the form: (Apx.__). References to the Trial Tran-

script specify the separate volumes of the transcript taken

in chronological order at trial as Volumes I, I’, II, III and

IV. References to pages and line numbers are to the

numbered pages and lines within the volume cited. These

references to the Trial Record are in the following form:

(T. R. Vol. __, p. __, 1. __, Apx. __). Also, since the trial

was a bench trial the direct testimony of each party’s case

in chief was presented in the form of a narrative declara-

tion in accordance with Rule 13.6 of the Local Rules of the

U.S. District Court for the Central District of California.

References to pages and lines of this narrative testimony

is in the form of (Narr. _, p.__, 1.__, Apx.__). In

addition to the Appendix page designations required by

CAFC Rule 28(e), references to Exhibits include the trial

exhibit numbers and are in the following form: (Exh. __,

Apx. __).

The critical issues which were before the District

Court for trial were:

1. Whether or not Cablestrand’s wire infringed the

patents in suit;

2. Whether or not the patents in suit were valid;

3. Whether or not Wallshein was barred by either

laches or estoppel in his claims against Cablestrand;

4. Whether or not Allan B. Weiss had any personal

liability in connection with the manufacture of the wire;

and

5. Whether or not Wallshein was barred by either

laches or estoppel from recovery against Weiss person-

ally.

SUMMARY OF THE ARGUMENT

This petition is untimely with respect to any alleged

denial of due process for vacation of the District Court

order of May 29, 1992, since Petitioner failed to timely file

a Petition for Certiorari when the Appellate Court

vacated that judgment on March 8, 1993.

Petitioner’s allegations of a denial of due process are

sheer fabrication. The plain truth is that Petitioner

received full and fair consideration of his allegations in

the courts below. The Petition for Certiorari in this case is

filled with outrageous misstatements of fact and unsup-

ported allegations of fictitious “biases” which purpor-

tedly lead to a denial of due process in the litigation

below. Petitioner offers no facts, but only unsupported

allegations as to the existence of “complex subject mat-

ter” and “heavy docket” biases. Petitioner’s argument

totally ignores the fact that the evidence considered by

the District Court weighed heavily against him. Neither

the District Court nor the CAFC violated the Federal

Rules of Civil Procedure. Petitioner simply failed to carry

his burden of proof, but is now dissatisfied with the

result.

ARGUMENT

PETITIONER’S ATTACK UPON THE CAFC DECISION

OF MARCH 8, 1993 IS UNTIMELY

In his petition Petitioner attacked the portion of the

CAFC decision of March 8, 1993, which vacated the judg-

ment of the District Court entered on May 29, 1992 (Peti-

tion, pages 16-17). Rule 13 of the Rules of the Supreme

Court provides that a petition for Writ of Certiorari to

review a judgment of a United Stated Court of Appeals

must be filed within ninety days after the entry of the

judgment.

The period within which an appeal must be taken of

a Petition for Certiorari filed begins to run anew only

when the lower Court changes matters of substance or

resolves a genuine ambiguity in a judgment previously

rendered and not when a judgment previously entered

has been reentered or revised in an immaterial way; FCC

v. League of Women Voters of California et al., 468 U.S. 364 at

373, 82 L. Ed. 2d 278; Federal Trade Commission v. Min-

neapolis - Honeywell - Regulator Co., 344 U.S. 206, 73 S. Ct.

245, 97 L. Ed. 2455 (1952). Here there was no revision

whatsoever of the first CAFC judgment of March 8, 1993

in the second CAFC judgment of May 24, 1994. Peti-

tioner’s petition for a review of the CAFC decision of

March 8, 1993, comes more than a year and a half after

that decision was entered, and is woefully untimely as to

that decision.

At page 17 of his Petition Petitioner argues that the

action of the CAFC in vacating the District Court Order

of May 29, 1992, was ultra vires. This assertion now

directly contradicts his own prior statements made in his

een aca

own appeal brief in his cross appeal of that District Court

Order. In that brief Petitioner stated:

“The statutory basis for jurisdiction of this

Court to hear the appeal and cross appeal is 28

USC Section 1291 and 28 USC Section 1295(a)(1).

The present appeal is timely, having been

filed within 30 days of the date of the decision

of the U.S. District Court entered on May 29,

1992, as required by Federal Rule of Appellate

Procedure 4(a)(1). The present appeal is from a

final order or a final judgment that disposes of

all claims of liability with respect to all parties

in both Civil Action No. CV 84-4219 and Civil

Action No. CV 89-4329.”

Petitioner then went on to request that the Lower

Court be affirmed in Action I and reversed in Action II.

Petitioner now approaches this court with the disin-

genuous argument that the action of the CAFC in vacat-

ing the order, which he had acknowledged as being final

and appealable and in which he requested partial affir-

mation, was ultra vires.

In footnote 9 of the Petition Petitioner asserts that the

CAFC decision to vacate the District Court’s holding of

its intent to find for Petitioner was “contrary to the law.”

Petitioner provides no illumination as to “the law” to

which he refers. However, this point is moot since Peti-

tioner’s petition is untimely as to the CAFC judgment of

March 8, 1993.

THE DISTRICT COURT PROPERLY CONSIDERED

THE EVIDENCE WITH RESPECT TO ALL ISSUES

AND ENTERED FINDINGS IN ACCORDANCE WITH

THE FEDERAL RULES OF CIVIL PROCEDURE

The District Court Correctly Found, Based on the Evi-

dence, That There Was No Infringement

The accused wire does not have “partially separating

turns” as required by the patent claims. The claims of

Petitioner’s patents require coiled strands made from a

material sufficiently elastic to permit bending of the arch-

wire by selectively and at least partially separating adja-

cent turns. Fig. 5 of both patents illustrates the degree of

separation contemplated. With reference to Fig. 5 of the

reissue patent drawings (Exh. 1, Apx. 81) it can be seen

that where the archwire 10 is bent there is a significant

partial separation between the adjacent turns of the heli-

cally wound filaments 11, 12 and 13. It is possible for this

separation to occur because at the center of the wire coils

there is a lumen. As a result there is little friction between

the central core wire, if one is utilized, and the over-

wound filaments which would prevent the longitudinal

separation of adjacent turns.

The patents discuss the creation of a separation

between turns sufficiently large so that the protection of

tissues in the mouth and the prevention of food particles

from entering into the spaces in the wire are of concern

(Exh. 1, col. 4, 1. 54-59, Apx. 74). The patents discuss this

extent of separation as being on the order of the thickness

of the fastening wires 36 (Exh. 1, col. 6, 1. 62-68, Apx. 75),

which is on the order of .009 to .010 inches (Narr. Dr. |

Garth Reid, p. 7, 1. 23-27, Apx. 14). |

a

The patents state that the localized separation of

originally abutting turns, as depicted in Fig. 5, allows the

wire to bend significantly without permanently being

deformed and without loss of resiliency when mounted

in orthodontic brackets (Exh. 1, col. 5, 1. 64 - col. 6, 1. 11,

Apx. 75).

Even when the accused wire is flexed to the extent

that it acquires a permanent deformation, there is no

separation of turns which is visible to the naked eye, and

no separation of turns which has any clinical significance

to an orthodontist (Narr. Dr. Garth Reid, p. 8, 1. 13-20 and

p. 14, |. 7-25, Apx. 15 and 17). There is no separation of

adjacent turns in the bent wire manufactured by the

Respondent Cablestrand which would allow food parti-

cles to become trapped between the adjacent turns, as

contemplated in Petitioner’s patents (Exh. 1 at col. 4, I.

55-59, Apx. 74). Likewise, there is no partial separation

which would even approach the thickness of the fasten-

ing wires that hold the archwire onto the bracket, as

described in the patents (Exh. 1, col. 6, |. 62-68, Apx. 75).

No contrary evidence at trial was presented. Instead,

Petitioner attempted to show through photographs taken

with an electron microscope that the adjacent helically

overwound strands of the accused wire had “at least

partially separating adjacent turns”.

It is a fundamental axiom of patent law that an

omission in the accused device of an ingredient or ele-

ment contained in the complainant’s patent avoids an

infringement; Dunbar v. Meyers, 94 U.S. 399, 49 L. Ed. 110,

25 S. Ct. 697; and Gaddis v. Calgon Corp., 506 F. 2d 880, 184

USPQ 449 (CA 5). Omission of even one element or

ingredient of a combination covered by any claim of a

patent avoids any charge of infringement based upon that

claim, Prouty v. Ruggles, 41 U.S. 336, 10 L. Ed. 985 (1842);

Black Diamond Coal Co. v. Excelsior Coal Co., 156 U.S. 611,

39 L. Ed. 553 (1895).

The District Court properly held in its Findings of

Fact and Conclusion of Law that the accused wire did not

meet the claim requirement for partial separation of turns

(Finding of Fact VI and Conclusion of Law IV).

In its prior decision in Johnson v. IVAC Corp., 885 F. 2d

1574, 12 USPQ 2d 1382 (CAFC 1989) the CAFC had previ-

ously rejected a contention by a patentee that evidence of

microscopic structural features could create literal

infringement where those microscopic features played no

part in the function of the accused device. In this litiga-

tion the CAFC specifically addressed the separating turns

limitation and the findings of the District Court that the

Respondent Cablestrand’s wire did not meet that limita-

tion.

Petitioner falsely alleges that “the CAFC proceeded

to “dispose” of the appeal on a totally new theory which

was conceived by the CAFC but had no basis whatsoever

in the trial record” (Petition, page 26). In fact the CAFC

specifically held that it was reviewing the construction

given the claims de novo. The CAFC correctly observed

that Petitioner’s proposed claim construction was that the

phrase “at least partially separating” included any degree

of separation, no matter how small or microscopic. The

CAFC disagreed with Petitioner and quite accurately held

that Petitioner’s proposed claim construction would ren-

der meaningless this express limitation in the claims.

Petitioner’s argument that the strands of the Respon-

dent Cablestrand’s wire will separate (when bent suffi-

ciently to inelastically deform) is a characteristic of all

prior art stranded wire. It was a blatant misrepresenta-

tion for Petitioner to state at trial that what he illustrated

in Fig. 5 and discussed extensively throughout his pat-

ents, and which appears as the penultimate limitation of

his claims was intended to merely state a physical charac-

teristic of all prior art coaxial stranded wire (e.g., Exh.

420, p. 183, Apx. 173).

The CAFC followed its own precedents in Unique

Concepts, Inc. v. Brown, 939 F. 2d 1558, 19 USPQ 2d 1500

(1991) and Texas Instruments, Inc. v. United States Interna-

tional Trade Commission, 988 F. 2d 1165, 26 USPQ 2d 1018

(1993) in which it had rejected a patentee’s proffered

claim construction because it would render the disputed

claim language mere surplusage. The CAFC therefore

correctly construed the claims as requiring the amount of

separation between adjacent turns upon bending of the

arch wire to be of a magnitude somewhat greater than

microscopic. The CAFC properly held, based upon its

own precedents, that all of the limitations of the claim

must be considered meaningful. It properly rejected Peti-

tioner’s argument (adopted for purposes of trial) that the

phrase “at least partially separating turns” was merely a

truism describing a phenomenon dictated by the laws of

physics and which occurs in every prior art wire and that

this phrase should be treated as mere surplusage. The

CAFC properly concluded that the separations between

adjacent turns must be of some magnitude greater than

microscopic.

10

The holding of an absence of “at least partially sep-

arating turns” was dispositive of the issue of infringe-

ment, and indeed of the entire case. The CAFC stated

that, during oral argument before it, Petitioner’s counsel \

had agreed that an affirmation on the issue of non- }

infringement would render moot the issues of laches and

the Respondent Weiss’ personal liability.

An issue of fact is not “important” for purposes of

considering a Grant of Certiorari under U.S. Supreme

Court Rule 10. Normally, the United States Supreme

Court will not grant certiorari to review a decision that

turns solely upon an analysis of facts, or to determine

whether the evidence supports a judgment of a district

court or an administrative agency. As to such issues, the

courts of appeals are generally the courts of last resort.

As held in National Labor Relations Bd. v. Pittsburgh Steam-

ship Co., 340 U.S. 498, 71 S. Ct. 453, 95 L. Ed. 479 (1951):

“This is not the place to review a conflict of

evidence nor to reverse a Court of Appeals

because were we in its place we would find the

record tilting one way rather than the other,

though fair-minded judges could find it tilting |

either way. It is not for us to invite review by

this Court of decisions turning solely on evalua-

tion of testimony where on a conscientious con-

sideration of the entire record a Court of

Appeals under the new dispensation finds the

Board’s order unsubstantiated.”

Likewise, this Court has held in General Talking Pic-

tures Corp. v. Western Elec. Co., 304 U.S. 175, 58 S. Ct. 849,

82 L. Ed. 1273 (1938) that granting of a Writ of Certiorari

11

would not be warranted merely to review the evidence or

inferences drawn from it.

Furthermore, this Court held in Rice v. Sioux City

Memorial Parks Cemetery, 349 U.S. 70, 75 S. Ct. 614, 99 L.

Ed. 897 (1955):

“A writ of certiorari will not be granted by

the Supreme Court except in cases involving

principles the settlement of which is important

to the public, as distinguished from that of the

parties... °

The CAFC did indeed find that the determination by

the District Court with respect to the issue of “partially

separating turns” was dispositive of the entire litigation,

since without that claim element there could be no

infringement by any party. Thus, even if the District

Court had limited its findings to only that issue, its

judgment would properly have been upheld. If there had

been any “heavy docket bias” or “complex issues bias” as

Petitioner alleges, the District Court would surely have

gone no further in its findings. Quite to the contrary,

however, the District Court fully considered each and

every one of the critical issues in this litigation, previ-

ously enumerated herein, and entered findings of fact

and conclusions of law with respect to all of them.

Petitioner falsely alleges that the District Court did

not independently evalucte the evidence or render its

judgment on the evidence. These allegations are without

any support in the record and are totally untrue.

12

The Finding That the Accused Wire Does Not Have a

“Lumen” Is Not Clearly Erroneous

Another claim feature which is absent from the

accused wire is a plurality of coiled strands wound in the

form of a coiled wire having a lumen extending there-

through. In the patents in suit the term “lumen” is repeat-

edly referred to as a “passage” 18 within which a mandrel

60 may or may not be left subsequent to manufacture

(Exh. 1, col. 3, 1. 57-66, and col. 4, 1. 18-22, Apx. 74). In his

patents Petitioner stated that the feature of being able to

leave the mandrel 60 inside the archwire or, at the option

of the user, remove it prior to use allowed one to affect

the characteristics of the wire (Exh. 1, col. 7, 1. 59 - col. 8,

1. 3, Apx. 76). The patents state that “where most of the

work involves bends in small spaces, the mandrel 60 is

advantageously removed so as to increase the working

range of the archwire” (Exh 1, col. 7, |. 68 to col. 8, 1. 3,

Apx. 76).

At trial Petitioner sought to broaden the scope of his

claims by redefining the term “lumen”. His new defini-

tions were especially created for purposes of trial and

appear nowhere in the patents in suit nor in the prior art.

The District Court properly found Petitioner’s evidence

that the accused wire met this claim limitation to be

unconvincing. The District Court, in its findings of fact

and conclusions of law, defined the term “lumen” as

utilized in the patents in suit and held that the accused

wire does not have a lumen (Conclusions of Law III).

The patents also state that the ability to remove the

mandrel allows one to alter the characteristics of flex-

ibility, springiness, and rigidity by selectively twisting

13

the ends of the wire in opposite directions (with the

mandrel removed) to reduce the diameter of the lumen as

desired by the user (Exh. 1, col. 8, 1. 21-42, Apx. 76). The

lumen diameter can be reduced to a substantially zero

diameter (Exh. 1, col. 9, 1. 17-22, Apx. 77). By substantially

eliminating the lumen lateral flexibility and longitudinal

springiness are sacrificed in favor of more rigidity (Exh.

1, col. 8, 1. 39-42, Apx. 76).

At trial numerous samples of promotional material

used by distributors of the Respondent Cablestrand’s

orthodontic archwire were presented (Exhs. 768-799 and

900-927, Apx. 516-525, 707-778, and 1650-1706). Nowhere

in any of this promotional material was there any claim of

a capability of removal of a center core strand from the

surrounding overwound strands.

Petitioner argues at page 24 of his petition that the

accused wire infringed because his witness, Dr. Thurow,

in court was able to “effortlessly” withdraw the core wire

from the accused wire. However, it is uncontroverted that

Dr. Thurow spent approximately fifteen minutes of time

manipulating and partially unraveling the strands of a

short section of the accused wire in order to be able to

accomplish this “effortless” task (T.R. Vol. II, p. 4, 1. 17-22,

Apx. 55). On cross examination Dr. Thurow testified,

when asked if there was any reason for removing the

Cablestrand wire, that he had only become aware of the

possibility within the last few weeks and had not applied

it clinically (Appendix to Petition for Certiorari, page

44a).

Petitioner hypocritically chastises the District Court

for not explaining why the courtroom demonstration of

14

Dr. Thurow was given little or no weight and for not

commenting in its findings on this test. However,

although Petitioner now claims that Dr. Thurow’s mas-

tery of this manipulation of the wire strands was exceed-

ingly important, he did not consider it at all important at

the trial. Quite to the contrary, at trial when Petitioner

himself was unable to extract the core wire from the

surrounding strands of the accused wire Petitioner’s

counsel stated:

“However, I just want to make it very clear,

your honor, that this test and this whole concept

of withdrawing the core from the strand is

totally, totally irrelevant to the patent.” (T.R. vol.

I’, p. 5, 1. 18-21, Apx. 51B).

Petitioner also alleges in his Petition that the District

Court ignored purported “critical facts” that required a

finding of infringement. Petitioner’s statements are both

false and misleading. In his brief he attributed to one of

Plaintiff’s expert witnesses, Dr. Larry McKnight, a state-

ment that certain test results submitted to the District

Court were false. This is absolutely untrue. Furthermore,

at page 23 of his Petition Petitioner does not even quote

Dr. McKnight, but rather again attributes to him state-

ments that he never made.

Furthermore, whether or not the accused wire had a

lumen is inconsequential, since infringement could not be

found because the accused wire did not meet the “par-

tially separating turns” claim limitations. Neither the tes-

timony of Dr. McKnight to which Petitioner refers, nor

15

the courtroom demonstration of Dr. Thurow had any-

thing whatsoever to do with the findings regarding par-

tially separating strands, which was totally dispositive of

the entire case.

THE ALLEGATIONS OF THE EXISTENCE OF PUR-

PORTED “BIASES” BY THE DISTRICT COURT WERE

NOT TIMELY RAISED IN THE APPEAL BELOW

On certiorari to review a decision of a Federal Court

of Appeals which affirmed a District Court ruling a ques-

tion is not properly brought before the United States

Supreme Court where it was not raised on appeal to the

Court of Appeals. In his appeal to the CAFC Petitioner

did not even raise the purported “heavy docket” bias and

the purported “complex subject matter” bias. These alle-

gations have now appeared for the first time in the pre-

sent Petition for Certiorari. They were totally absent from

his brief and oral arguments in his appeal to the CAFC, as

well as his petition for rehearing to the CAFC. It was only

after receiving an adverse decision of the CAFC that

Petitioner raised these heretofore unexpressed and

recently fabricated allegations. Quite obviously these

allegations are directly attributable to the adverse judg-

ment of the CAFC rather than any actual defect in the

manner of conduct of the prior proceedings by either the

District Court or the CAFC.

THE ALLEGATIONS OF DENIAL OF DUE PROCESS

BY THE DISTRICT COURT ARE SPECIOUS AND

REPLETE WITH FALSE REPRESENTATIONS

As one of his allegations of denial of due process

Petitioner faults the District Court for taking more than a

16

year from the conclusion of trial until entering its Notice

of Intended Judgment and Order Thereon (Petition, foot-

note 12, page 9). This statement is false. The presentation

of evidence was concluded somewhat after 5:00 PM on

Friday, May 3, 1991. The District Court, with the concur-

rence of Petitioner’s counsel, requested closing argu-

ments to be submitted in writing and established a

briefing schedule for closing arguments according to

which Petitioner’s rebuttal would have been due on May

22, 1991. Petitioner’s counsel, subsequently filed a stipu-

lated request for an extension of this date to July 8, 1991.

This was the date on or about which Petitioner filed his

rebuttal closing argument and at which time trial was

concluded.

Thus, Petitioner’s statement that the District Court

did not render its initial Notice of Intended Judgment of

May 29, 1992 for more than a year after trial is blatantly

false.

Furthermore, Petitioner’s objection to the lapse of

time, from July 8, 1991 to May 29, 1992, at which time the

District Court issued its initial Notice of Intended Judg-

ment is most curious. Petitioner waited more than six

years before bringing any charge of infringement against

the Respondent Cablestrand and more than eleven years

before bringing any charge of infringement against the

Respondent Weiss. Moreover, in his petition Petitioner

states that the issues were complex. Nevertheless, he

faults the District Court for taking a number of months to

consider these complex issues before issuing the Notice

of Intended Judgment.

17

Petitioner also stated in his petition that more than

two years elapsed before the District Court complied

with the CAFC’s mandate to issue findings of fact and

conclusions of law under Rule 52(a) of the Federal Rules

of Civil Procedure (Petition, Footnote 12, page 9). The

CAFC issued this mandate on March 8, 1993. The District

Court complied with that mandate with its findings of

fact and conclusions of law on May 28, 1993. Thus, the

District Court complied with the mandate within about

two and a half months, not more than two years as

Petitioner falsely alleges.

Petitioner further alleges, without authority, that the

District Court’s partial reversal of its own judgment is

totally contrary to law. This is absolutely untrue. Rule

52(b) of the Federal Rules of Civil Procedure specifically

provides that when findings of fact are made in actions

tried by the court without a jury, the question of the

sufficiency of the evidence to support the findings may

thereafter be raised whether or not the party raising the

question has made in the District Court an objection to

such findings or has made a motion to amend them or a

motion for judgment.

Respondents in their appeal from the initial Notice of

Intended Judgment, and Petitioner in his cross-appeal

from that same order, both urged the District Court to

reverse itself on the respective portions of that order

which did not favor them. Both parties filed motions in

the District Court urging the District Court to accept

copies of the appeal briefs which the parties had previ-

ously submitted to the CAFC prior to its decision of

March 8, 1993. In Petitioner’s motion to the District

Court, filed on or about March 30, 1993, urging the Court

18

to accept briefs of the parties and the Appendix, Peti-

tioner’s counsel stated:

“the parties have expended much time, effort,

and money in preparing the foregoing briefs

and Appendix to set forth their best arguments

concerning the key liability issues in this litiga-

tion. It is believed that the briefs and such addi-

tional materials may be of interest and

assistance in the preparation of the findings and

conclusions.”

Thus, Petitioner’s argument that the reversal by the Dis-

trict Court of its own Judgment I “is totally contrary to

law”, not only lacks any legal authority, but is utterly

hypocritical, since Petitioner specifically urged the Court

to reverse that portion of the Notice of Intended Judg-

ment that did not favor him.

Petitioner’s argument that the District Court’s action

was “ultra vires” is utterly without merit. Petitioner

alleges that there was a ten-day time limit within which

the District Court could have reversed its initial deter-

mination. Petitioner cites no precedent to support this

argument. Petitioner instead refers to Rule 59 of the Fed-

eral Rules of Civil Procedure. However, that Rule relates

only to a court ordering a new trial within ten days after

entry of judgment (FRCP Rule 59(a)-(d)) and with

motions to alter or amend a judgment (FRCP Rule 59e)).

Petitioner made no motion for a new trial within the ten-

day time limit provided in Rule 59(b), nor at any other

time, and the Court did not order a new trial at any time.

There was no motion by any party for alteration or

amendment of the judgment.

19

While Rule 59 of the Federal Rules of Civil Procedure

has no applicability in this case, Rule 60(a) does. As

explained by the District Court in the Introduction to its

Findings of Fact and Conclusions of Law:

“On or about May 29, 1992, this Court issued a

Notice of Intended Judgment along with an

Order for additional briefing on the issue of

damages. Upon receipt of the written memoran-

dum of points and authorities the Court

intended to prepare and file its complete Find-

ings of Fact and Conclusions of Law and its

Judgment. The Notice of Entry stamp under

F.R.C.P. Rule 77(d) was erroneously placed by

the clerk.”

The District Court never intended for its Notice of

Intended Judgment and Order Thereon to be a final,

appealable judgment, although due to a clerical error it

was indicated as such. The District Court properly cor-

rected this error on its own initiative in its Findings of

Fact and Conclusions of Law, which Rule 60(a) provides

can be done at any time. As provided by Rule 60(a) of the

Federal Rules of Civil Procedure this correction was

delayed until the remand since, without leave of the

Appellate Court, the District Court could not have made

this correction while both Petitioner’s and Respondents’

appeals of the order of May 29, 1992, were still pending.

The District Court’s actions were entirely in accordance

with Rule 60(a) which was applicable in this case and

which covers corrective measures to be taken to remedy

clerical mistakes, such as occurred here.

Since the order of May 29, 1992, was never intended

to constitute a final judgment, the District Court was free

20

to consider further its ultimate judgment and revise its

intended holding if warranted. In any event the CAFC

properly vacated the order of May 29, 1992, so that order

was null and void and of no further force or effect.

Petitioner cites no specific authority to support his asser-

tion at page 20 of the Petition that the action of the

District Court was an unwarranted reversal and totally

contrary to law. Indeed, there are no authorities to sup-

port Petitioner’s position.

In addition to attacking the substance of the findings

of fact and conclusions of law filed by the District Court

on May 28, 1993, Petitioner maintains that the fact that

the District Court chose to adopt some of the Respon-

dent’s proposed findings which the applicable Local

Rules of the District Court require to be filed somehow

taints these findings. This is simply not the law.

The U.S. District Court for the Central District of

California, like many of the Federal District Courts, has

implemented a specific rule, Local Rule 9.5, that requires

the parties to submit proposed findings of fact and con-

clusion of law prior to trial. The purpose of this rule is

not to require the parties to file needless papers which,

having been prepared with great time, effort and expense

to the litigants, the District Court should thereupon

ignore. Quite to the contrary, the purpose of this rule is to

allow each party to best present the concise facts it pro-

poses to prove and a concise statement of the applicable

law as it relates to those facts as an aid to the District

Court in reaching its own findings.

Contrary to Petitioner’s assertion, there was nothing

sinister or unusual in the methodology adopted by the

21

District Court in examining the proposed findings and

conclusions of the parties and in picking and choosing

from among them those which the court deemed to have

been adequately proven. Indeed, that is the entire purpose

behind requiring the litigants to file proposed findings and

conclusions.

Petitioner falsely asserts that the District Court per-

formed a “wholesale adoption of the prevailing parties

proposed findings”. Quite to the contrary, the District

Court quite evidently selected only those proposed find-

ings and conclusions which it believed were supported

by the evidence and which stated the applicable law.

Indeed, the District Court declined to adopt any one of

the Respondents’ proposed findings and conclusions con-

cerning the issue of validity of the patents in suit, which

was tried by the District Court.

At the close of evidence at trial The District Court in

instructing counsel regarding their closing statements,

specifically called their attention to the proposed findings

of fact and conclusion of law that the parties had previ-

ously filed prior to trial. The District Court directed the

parties to:

“review the findings of fact and conclusions of

law to determine whether it is current as far as

your position is concerned. And I strongly urge

that as far as the findings of fact and conclu-

sions of law are concerned, let’s stress brevity

and simplicity.” (T.R. Vol. IV, p. 196, 1. 1-5).

At the time Petitioner voiced no objection to the

intent of the District Court to render brief, simple find-

ings and use the parties’ proposed findings. Petitioner

22

only made such objections after his own findings were

not adopted.

Petitioner goes on to state that by adopting some, but

certainly not all, of the findings of fact and conclusions of

law proposed by Respondents, the District Court was

taking “the path of least resistance.” This is totally illogi-

cal, since the District Court could just as easily have

adopted Petitioner’s proposed findings had it found in

Petitioner’s favor and if the evidence had supported such

findings.

Petitioner then makes the absurd statement that

adoption of the proposed findings of fact and conclusions

of law would dispose of the matter while minimizing the

probability of appeal. This is ridiculous since Petitioner

had previously appealed when only a portion of the

initial Notice of Intended Judgment was against him.

Petitioner then makes the further false statement that by

adopting the proposed findings the District Court would

not have to resolve complex issues in the case. However,

the District Court did indeed resolve each and every one

of the salient issues in the litigation.

Petitioner states that the findings did not contain any

reference to the evidence proffered at trial or to the trial

transcript. He apparently objects to the fact that the find-

ings do not cite specific exhibits or specific pages of the

trial transcript testimony. However, there is no require-

ment whatsoever that this should be done.

Quite to the contrary, and as stated in the notes of the

Advisory Committee on Rules with respect to FRCP Rule

52, the judge need only make brief, definite, pertinent

findings and conclusions upon the contested matter;

ee eee

23

there is no necessity for over-elaboration of detail or

particularization of facts. United States v. Forness, 125 F. 2d

928, (CA 2 1942) cert. den. 316 U.S. 694, 62 S. Ct. 1293, 86

L. Ed. 1764; Peterson, Lighterage & Towing Corp. v. New

York Central R. Co., 126 F. 2d 992 (CA 2 1942); Brown Paper

Mill Co., Inc. v. Irwin, 134 F. 2d 337 (CA 8 1943); Allen

Bradley Co. v. Local Union No. 3, 1.B.E.W., 145 F. 2d 215 (CA

2 1944), reversed on other grounds 325 U.S. 797, 65 S. Ct.

1533; and Young v. Murphy, 9 Fed Rules Serv. 52a.11, Case

2, 1946. In raising this objection to the findings the only

authority cited by Petitioner is an essay of Sir Francis

Bacon from the year 1597. Clearly, such a citation has no

relevance to the Federal Rules of Civil Procedure.

Petitioner alleges “irregular” actions of the District

Court, yet has shown no action by the District Court that

was inconsistent with the Federal Rules of Civil Pro-

cedure.

THE ALLEGED “BIASES” ATTRIBUTED TO BOTH

THE DISTRICT AND APPELLATE COURTS ARE

TOTAL FABRICATION

While Petitioner now attributes to the District Court

a concocted “complex subject matter bias” and “heavy

docket bias” he did not raise any such purported issues

in his appeal to the CAFC. Interestingly, in Footnote 28,

he states that District Courts have been known to voice

their opinions, even on the record, that they “dislike”

technically complex cases, most frequently, patent cases.

However, he apparently found no such statement on the

record by this District Court, since he makes no reference

to the record of this case in this connection. Indeed,

Petitioner has shown not the slightest indication that the

24

judgment of either the District Court or the Appellate

Court was motivated by any bias.

Petitioner’s purported “biases” are totally illusory

and intended to distract this Court from the plain and

simple fact that the District Court did not consider Peti-

tioner’s witnesses, other evidence, and arguments to be

credible. The CAFC properly concurred that indeed Peti-

tioner had failed to prove the threshold issue of infringe-

ment, which was totally dispositive of the case.

a

CONCLUSION

Petitioner’s Petition for Certiorari is not worthy of

consideration by this Court. It is nothing more than a

frivolous attempt to foist upon this Court further consid-

eration of Petitioner’s meritless claims which he has thus

far failed to prove. Nothing has been shown to warrant

an exercise of this Court’s power of supervision. Peti-

tioner is merely seeking yet another tribunal before

which to press claims which are unsupported by the

relevant evidence.

25

For all of the foregoing reasons Respondents urge the

Court to summarily deny Petitioner’s Petition for Cer-

tiorari.

Date: January 3, 1995

Respectfully submitted,

CHARLES H. THOMAS

\ Attorney for Respondents

Cablestrand Corporation

and

Allan B. Weiss

Cisto & THOMAS

Suite 405

4201 Long Beach Boulevard

Long Beach, California 90807-2007

(310) 595-8422