# Opposition Brief — Wallshein v. Cablestrand Corp.

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Opposition Brief
- **Published:** January 1, 1995
- **Citation:** 513 U.S. 1126

## Text

' os

a
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

a P

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386012_0758%3A2. Public record. Not legal advice.