Opposition Brief — Kaliardos v. General Motors Corp.
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No. 94-1574 i TRE CLERK
IN THE
SUPREME COURT OF THE UNITED STATES
OCTOBER TERM, 1994
NICHOLAS KALIARDOS,
Petitioner,
GENERAL MOTORS CORPORATION,
BASF CORPORATION, H.B. FULLER COMPANY,
H.B. FULLER AUTOMOTIVE PRODUCTS, INC.,
and DAUBERT INDUSTRIES, INC.,
Respondents.
ON PETITION FOR A WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RESPONDENTS’ GENERAL MOTORS,
BASF AND FULLER
BRIEF IN OPPOSITION
HERBERT FURMAN BERNARD J. CANTOR
29709 Deer Run (Counsel of Record)
Farmington Hills, MICHAEL P. BRENNAN
Michigan 48331 RoBER> S. NOLAN
(810) 661-2293 HARNESS, DICKEY &
Attorney for PIERCE, P.L.C.
Respondent-Defendant 5455 Corporate Drive
General Motors Corporation. Troy, Michigan 48098
(810) 641-1600
April 20, 1995 Attorneys for
creed
Washington, 0.C. « THIEL PRESS © (202) 328-3286
ILABLE COPY
——
Respondents-Defendants.
:
(1)
RULE 14.1(a) QUESTIONS
PRESENTED BY PETITIONER
. Did the magistrate-judge in the trial court err in hold-
ing that the evidence produced by Plaintiff in response
to Defendant’s motion for summary judgment did
not create a genuine issue of material fact concerning
whether accused products infringed asserted claims,
either literally or under the doctrine of equivalents,
such as to require a full trial?
. Did the trial judge in the trial court err in adopting the
“Report and Recommendation” of the magistrate-
judge and dismissing Plaintiff’: action on the merits
and by abusing his discretion in denying Plaintiff’s
motion for leave to supplement his responses with a
test report of his expert and/or in not granting Kaliar-
dos’ request for an oral hearing?
. Did the appeal court err in affirming the district
court’s dismissal of Plaintiff-Appellant’s case concern-
ing the evidence Kaliardos offered and the plain lang-
uage and historical intent of the application of Federal
Rule 56?
.Is the federal judiciary using Rule 56 to rid their
dockets of difficult cases and/or litigants and, if so,
will such use of Rule 56 be allowed to continue?
(1)
PARTIES TO THE PROCEEDINGS RULE 14.1(b)
All the parties in the court below are identified in the
caption of the Petition.
RULE 29.1 LIST OF PARENTS AND SUBSIDIARIES
General Motors Corporation’s Rule 29.1 list is attached
at Appendix D.
BASF Corporation’s Rule 29.1 list is attached at
Appendix E.
H.B. Fuller Company’s Rule 29.1 list is attached at
Appendix F.
H.B. Fuller Automotive Products, Inc. is a wholly-
owned subsidiary of H.B. Fuller Company.
Daubert Industries, Inc.’s Rule 29.1 list of parents and
subsidiaries appears in its separate Brief in Opposition to
the Petition for Writ of Certiorari.
(112)
Page
TABLE OF CONTENTS
RULE 14.1(a) QUESTIONS PRESENTED
Re
PARTIES TO THE PROCEEDINGS RULE 14.1(b).......... ii
RULE 29.1 LIST OF PARENTS AND SUBSIDIARIES ....... ii
a iii
TABLE OF AUTHORITIES, STATUTES AND
oS v
SUMMARY OF OPPOSITION TO CERTIORARI........... 2
COUNTERSTATEMENT OF CASE.................... %
PACTUAL BACKGROUND .............0c ccc ccccene '
PROCEEDINGS IN THE DISTRICT COURT............. 9
KALIARDOS PATENT NO. 3,959,530................. 13
KALIARDOS PATENT NO. 4,356,036. ................ 15
KALIARDOS LACKS FACTUAL EVIDENCE OF
SIMILARITY OF FUNCTION/WAY/RESULTS......... 16
KALIARDOS’ EXPERT TESTIFIED THAT BASF’S
COATINGS DO NOT CONTAIN MOST OF THE
INGREDIENTS SPECIFIED IN KALIARDOS’
ER 18
KALIARDOS’ EXPERT BYRD TESTIFIED THAT THE
FULLER COATINGS DO NOT CONTAIN ALL OF
KALIARDOS’ CLAIMED INGREDIENTS............. 19
KALIARDOS’ EXPERT GEECK TESTIFIED THAT
DAUBERT’S COATING DOES NOT CONTAIN
ALL OF THE CLAIMED INGREDIENTS ............. 20
EXCLUSION OF EVIDENCE ..... 0. ccc ccc ccc eens 21
(iv)
Page
THE QUESTIONS PRESENTED FOR REVIEW
BY APPELLANT KALIARDOS UNDER
CUES MAA og 555 ke ee 25
‘1. Did the magistrate-judge in the trial court err in
holding that the evidence produced by Plaintiff in
response to Defendant’s motion for summary judg-
ment did not create a genuine issue of material fact
concerning whether accused products infringed
asserted claims, either literally or under the doc-
trine of equivalents, such as to require a full trial?” ....... 25
“*2. Did the trial judge in the trial court err in adopt-
ing the ‘“‘Report and Recommendation”’ of the magis-
trate-judge and dismissing Plaintiff’s action on the
merits and by abusing his discretion in denying Plain-
tiff’s motion for leave to supplement his responses
witha test report of his expert and/or in not granting
Kaliardos’ request for an oral hearing?”............+.. 26
‘*3. Did the appeal court err in affirming the district
court’s dismissal of Plaintiff-Appellant’s case concern-
ing the evidence Kaliardos offered and the plain lang-
uage and historical intent of the application of Federal
MPP eT TCT E TEC CE RET TURE E TELL 27
**4. Is the federal judiciary using Rule 56 to rid their
dockets of difficult cases and/or litigants and, if so,
will such use of Rule 56 be allowed to continue?”’........ 28
Ge. cdc Rakha ee wba eer nee ewes 30
APPENDICES:
Appendix A — Magistrate’s ‘Report and Recommen-
«ve 6 a 63 Cee a ee 6 en a ee la
Appendix B — District Court’s Opinion Granting Summary
Judgment of Non-Infringement to Co-Defendants
National Starch and Beazer East..........+0e0eee0:> 27a
Appendix C — Order Granting Partial Summary Judg-
sment of Mom-Infringement 2... ccc ccc ccwnsosasene 39a
Appendix D — General Motors Corporation Rule 29.1
PEPPUPTTCTT TTT TC CUTE ETT Te 42a
(v)
Page
Appendix E — BASF Corporation Rule 29.1 Statement ..... 49a
Appendix F — H.B. Fuller Rule 29.1 Statement .......... 50a
TABLE OF AUTHORITIES
Cases:
Adickes v. S.H. Kress & Co., 398 U.S. 144, 158 n.17
0 4d We 6 Be ae ok kok vbw wcl 26
Anderson v. Liberty Lobby, Inc., 477 U.S. 242,
249-50, 91 L.Ed.2d 202, 212, 106 S.Ct.
Sy SE EE 4 6 ws Co ek bee cea’. oot: 2, 3, 24
Arizona v. California, 460 U.S. 605, 618, 75 L.Ed.2d
318, 333, 1031 S.Ct. 1382, 1397 EE re 14
Buiiders Concrete, Inc. v. Bremerton Concrete Products
Co., 757 F.2d 255, 257 (Fed. Cir. | 2,3, 22
Celotex Corp. v. Catrett, 477 U.S. 317, 322,91
L.Ed.2d 265, 273, 106 S.Ct. 2548, 2552
GI hb tg eno ek ee ee od he ole Rie 2, 23, 28
Fowle v. C&C Cola, 868 F.2d 59, 67 (3rd Cir. Pere 26
Graver Tank & Mfg. Co. v. Linde Air Products Co..
339 U.S. 605, 609-10, 94 L.Ed. 1097, 1102,
70 S.Ct. 854, 856-57 has da hd we Ces es 3, Ba, ao
Griffin v. M.D.O.C., 5 F.3d 186, 190 (6th Cir., eee 14
Intellicall, Inc. v. Phonometrics Inc., 952 F.2d 1384,
Sa ir G dak obo deb 00 6s ye i vas hoe mk nk 25
Kaliardos v. General Motors et al., 777 F.Supp. 543
SESE EER Roce Ci re ee 20
Lear Siegler, Inc. v. Sealy Mattress Co. of Michigan,
837 F.2d 1422, 1425-26 (Fed. Cir. CE irae ee a 22-23
Lewmar Marine, Inc. v. Barient, Inc., 827 F.2d 744,
Sr 4
Malta v. Schulmerich Carollons, Inc., 925 F.2d 1320,
1327, 1329 (Fed. Cir. 1991), reh. den., 959 F.2d
923 (1992), cert. denied, 119 L.Ed.2d 566
(vt)
Cases, continued: _Page_
Mannesmann Demag Corp. v. Engineered Metal Products
Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986) .......... §, 22
Markman v. Westview Instruments Inc., 1995 U.S.App.
LEXIS 7595, p. 21 (Fed. Cir., Apr. 5, 1995). ........... 14
Matsushita Electric Industrial Co., Ltd. v. Zenith
Radio Corporation, 475 U.S. 574, 586-7, 89
L.Ed.2d 538, 552, 106 S.Ct. 1848 (1986) ............. 28
Smithkline Diagnostics Co. v. Helena Laboratories Corp.,
859 F.2d $78, S89 (Fed. Cir. 1968)... 2c cc cece es 3, 22
United States v. Raddatz, 447 U.S. 667, 673-74, 65
L.Ed.2d 424, 432, 100 S.Ct. 2406 (1980) ............ 27
Statutes:
Se es ITER: oc es be ea do esectueetenenas 26, 27
SG eer errr re ey ey eo os ee 4
Other Authorities:
H.R. Rep. No. 94-1609 (1976)... ........0c cece ceoucs 27
RS MPC TECT CCIE ee 3, 27, 29
Se ee PINs oo 6 cee ca weesen tesco senvewss 25
RK Rt Seer rer rrr errr rrr eran ok 2, 24
ate BOGS FORA. cc ccc cer ees erdbaeerenseus as 26
gy a Re) Sore rr errr rT eT Tere. ee 26
No. 94-1574
IN THE
SUPREME COURT OF THE UNITED STATES
OCTOBER TERM, 1994
NICHOLAS KALIARDOS,
Petitioner,
GENERAL MOTORS CORPORATION,
BASF CORPORATION, H.B. FULLER COMPANY,
H.B. FULLER AUTOMOTIVE PRODUCTS, INC.,
and DAUBERT INDUSTRIES, INC.,
Respondents.
ON PETITION FOR A WRIT OF CERTIORARI TO
THE UNITED STATES COURT OF APPEALS
FOR THE FEDERAL CIRCUIT
RESPONDENTS’ GENERAL MOTORS,
BASF AND FULLER
BRIEF IN OPPOSITION
TO THE HONORABLE SUPREME COURT:
The Respondents General Motors Corporation, BASF
Corporation, H.B. Fuller Company and H.B. Fuller Auto-
motive Products, Inc. respectfully request that this Court
deny the Petition for Writ of Certiorari submitted by
Petitioner Nicholas Kaliardos.
]
2
SUMMARY OF OPPOSITION TO CERTIORARI
The Petition for Writ of Certiorari should be denied.
Summary judgment of noninfringement was properly
granted and affirmed because of the admitted lack of
evidence that is required by the substantive patent law
to prove infringement of the claims of the patents-in-suit.
There is no genuine issue of any material fact; rather,
there is an admitted absence of material facts that are
essential to Petitioner’s prima facie case. Hence, “the
plain language of Rule 56(c) [F.R.C.P.] mandates the
entry of summary judgment.” Celotex Corp. v. Catrett,
477 U.S. 317, 322, 91 L.Ed.2d 265, 273, 106 S.Ct. 2548,
2552 (1986); Anderson v. Liberty Lobby, Inc., 477 U.S.
242, 249-50, 91 L.Ed.2d 202, 212, 106 S.Ct. 2505, 2511
(1986) (‘‘There is no issue tor trial unless there is suffici-
ent evidence favoring the nonmoving party for a jury to
return a verdict for that party.’’)
Specifically, there are only two ways to prove infringe-
ment under the substantive patent law: (1) literal infringe-
ment; and (2) “doctrine of equivalents” infringement.
First, to prove literal infringement, the patentee has the
burden of showing that every single one of the elements
specified in at least one of his patent claims is actually
found in the accused product. E.g., Butlders Concrete,
Inc. v. Bremerton Concrete Products Co., 757 F.2d 255,
257 (Fed.Cir. 1985). Petitioner Kaliardos’ experts, how-
ever, admitted that at least some of the ingredients
specified in his patent claims are not found in the accused
coating products. Thus, there was insufficient evidence
to support a jury verdict of literal infringement so that
summary judgment was mandated.
Second, to prove infringement under the “doctrine of
equivalents,’’ the patentee has the burden of showing that
the accused product contains the same or the equivalent
3
of each ingredient specified in at least one patent claim
AND that the accused product performs substantially
the same function, in substantially the same way, to
produce substantially the same result as the entire com-
bination of ingredients specified in such patent claim.
Graver Tank & Mfg. Co. v. Linde Air Products Co., 339
U.S. 605, 609-10, 94 L.Ed. 1097, 1102, 70 S.Ct. 854,
856-57 (1950); Butlders Concrete, supra 757 F.2d at
258. In addition, the patentee must explain, by sub-
stantial, comparative, factual evidence, how and why
each of these three similarities exist. Malta v. Schulmerich
Canillons, Inc., 925 F.2d 1320, 1327, 1329 (Fed.Cir.
1991), reh. den., 959 F.2d 923 (1992), cert. denied, 119
L.Ed.2d 566 (1992). Here, Petitioner Kaliardos’ expert
testified that he has no factual evidence showing that
the function/way/results of the accused coatings are
similar to the combinations specified in the claims of
the patents-in-suit. Thus, there was insufficient evidence
to support a jury verdict of infringement under the
“doctrine of equivalents’”’ so that summary judgment
was mandated by Rule 56 F.R.C.P.
There is no such thing as Kaliardos’ asserted ‘‘pre-
sumption of infringement.’’ Under the substantive patent
law, the patentee has the burden of proving infringement
by a preponderance of evidence. Smithkline Diagnostics
Co. v. Helena Laboratories Corp., 859 F.2d 878, 889
(Fed.Cir. 1988); Mannesmann Demag Corp. v. Engineered
Metal Products Co., 793 F.2d 1279, 1282 (Fed.Cir.
1986). Petitioner Kaliardos’ litany of discovery disputes
and discovery motions are not material to the summary
judgment decision which focuses on Kaliardos’ failure to
show all of the essential elements required by the sub-
stantive patent law to prove infringement. Anderson,
477 U.S. at 247-48, 91 L.Ed.2d at 211 (1986) (‘Only
4
disputes over facts that might affect the outcome of the
suit under the governing law will properly preclude the
entry of summary judgment. Factual disputes that are
irrelevant or unnecessary will not be counted.”)!
Petitioner Kaliardos’ case is based upon his notion,
without any factual evidence whatsoever, that General
Motors automobile assembly plant personnel must have
secretly added the ingredients which Kaliardos lists in
his patented recipes into the drums of coating which
G.M. purchases, before spraying the coating into auto-
mobile doors. Kaliardos simply does not believe the
BASF records of the formulations it has used since 1953
to the present—nor does he believe the testimony and the
numerous laboratory tests of his own experts—nor the
Fuller and Daubert formulation and production records—
nor the deposition testimony of numerous BASF, Fuller
and General Motors past and present employees—nor the
laboratory tests made by each of the Defendants. Yet,
each clearly establishes that the accused coatings do not
contain the ingredients set forth in his patent claims.
The magistrate-judge summed up Kaliardos’ case as
follows:
My review of this record establishes that the form-
ulas used by the defendants in manufacturing their
coatings have repeatedly been shown not to contain
the essential elements of the Kaliardos patents,
through both the disclosure of the formulas and
ltronically, if BASF’s accused coating actually did infringe,
Kaliardos’ patents would be invalid under 35 U.S.C. §102(b)
because BASF’s accused coating was “‘on sale’ by BASF and in use
by General Motors for many years before Kaliardos made his inven-
tions and before the filing dates of his patent applications. Lew-
mar Marine, Inc. v. Barient, Inc., 827 F.2d 744, 747 (Fed. Cir.
1987) (‘‘That which would literally infringe if later in time, antici-
pates if earlier than the date of the invention.”’)
5
scientific testing of those formulas. There is simply
no evidence in this record which would create a
genuine issue of material fact as to whether any of
the accused products infringe upon Kaliardos’
patents either literally or under the doctrine of
equivalence. Simply put, plaintiff’s case is one that
began with, and continues to rest upon, pure specu-
lation and conclusion. This is insufficient to with-
stand summary judgment. Accordingly, for the
reasons stated, I respectfully recommend that the
defendants’ motions for summary judgment be
granted and that this matter be dismissed. [emphasis
added]?
COUNTERSTATEMENT OF CASE
Petitioner Kaliardos’ Statement of the Case and State-
ment of Facts omit most of the relevant facts. Therefore,
Respondents state such relevant facts below.
Petitioner Kaliardos is appealing from the Federal
Circuit’s affirmance of the district court’s grant, based
upon the magistrate-judge’s ‘‘Report and Recommenda-
tion,” of three separate motions for summary judgment
of non-infringement of Kaliardos’ patents. These motions
were brought by: (1) General Motors Corporation
(“G.M.”) and its supplier BASF Corporation, jointly;
(2) Daubert; and (3) H.B. Fuller Company and its sub-
sidiary H.B. Fuller Automotive Products, Inc., jointly
(“Fuller”). This present Brief in Opposition to the Peti-
tion for Certiorari is submitted on behalf of General
Motors, BASF and Fuller.
2See attached Magistrate’s Report and Recommendation, p.
26a, Res. App. A. Note that page numbers cited as “‘A-__ ,”” in
this brief refer to the Appendix which was submitted to the
Federal Circuit.
6
Kaliardos complains that anti-rust, wax-type coatings
which have been used by General Motors in some of its
model automobiles, and which have been supplied by the
other parties, infringe Kaliardos’ Patent Nos. 3,959,530
and 4,356,036. These two patents claim specific formu-
lations or “recipes’’ for wax-type coatings. Each of the
suppliers use different formulations or recipes which
was the reason for their separate motions.
FACTUAL BACKGROUND
Starting in 1953, BASF (and its predecessors) supplied
General Motors with a coating comprising a mixture of:
(1) a synthetic wax; (2) a microcrystalline wax; (3) a
hydrocarbon resin; and, (4) an aluminum particle pig-
ment. These ingredients were dissolved in naphtha and
mineral spirit solvents. The liquid coating was sprayed
into the interiors of car doors and body parts of some,
but not all, model cars. The solvents evaporated leaving
a thin coating of wax-resin-pigment upon the metal sur-
faces to protect against moisture and rusting. BASF
supplied that coating, substantially unchanged (i.e.,
except for slight changes in percentages of ingredients)
to G.M. for about 34 years, from 1953 until 1987), when
it discontinued the product. Kaliardos complains that
that coating infringed his patents, even though that coat-
ing predates his patents by many years.
The BASF coating meets the requirements of G.M.’s
performance specification, No. 998-1128, which describes
the tests the coating must pass. (A-656-660)
In 1983, while still using BASF’s aluminum colored
coating, G.M. began using a “‘clear”’ coating (i.e., actually
a tan colored coating wihout aluminum pigment) which
was supplied by Daubert and others. Fuller began supply-
7
ing its formulation of the “clear” coating after August
1988. This coating must meet the requirements of G.M.’s
performance specification No. 998-2150. Kaliardos
asserts that the Daubert formulations infringe both of
his patents and that the Fuller formulation infringes
only the earlier 530 patent.
In 1972, about 19 years after G.M. began using the
accused BASF coating, Nicholas Kaliardos, who was in
the drycleaning business and who is a self-taught chemist,
invented his first coating recipe, and filed the patent
application which became the °530 patent-in-suit that
issued May 25, 1976. Between 1973 and 1980, Kaliardos
submitted a number of samples of different anti-rust
coating formulations to the G.M. Fisher Body Division
for performance testing. Mr. Kaliardos stated that
“*[M] any of the coatings which the plaintiff supplied [to
G.M.] do not relate to the patents-in-suit.” (Plaintiff's
Response to Request No. 5, August 26, 1989). There is
no evidence that any of the coatings that Kaliardos sup-
plied contained the specific recipes set forth in his patent
claims. The samples which he submitted did not meet
G.M. specifications (G.M. engineer Reichel Dep., A-791).
In 1980, G.M. advised Mr. Kaliardos that it would no
longer test proposed samples because he “has yet to sub-
mit any material that would meet our specifications”
(A-674).
In 1981, Kaliardos filed his second patent application
which issued October 26, 1982 as Patent No. 4,356,036
(036). The specification of this patent includes a copy
of portions of G.M.’s earlier published specification No.
998-1128 which relates to the aluminum colored coating
that had been supplied by BASF since 1953.
Regardless as to whether Kaliardos’ samples did or did
not meet G.M.’s specifications, Mr. Kaliardos’ patented
8
\
formulations could not be used in an automobile manu-
facturing plant because his formulations include a large
amount of a chlorinated solvent called perchloroethylene
or tetrachloroethylene. This ingredient is required in
both of his patents. Perchloroethylene is a dry-cleaner’s
spot remover and is “very important” to his formulation.
Kaliardos’ ’036 patent (col. 8, line 31, A-50) states:
‘The use of perchloroethylene is very important
because it cleans and dissolves any oil present on
the surface and allows the coating to make good
contact with the surface.”
G.M. does not use any chlorinated solvents in coatings
because the material is hazardous (G.M. engineer Reichel,
A-799-800). Kaliardos’ chemical expert Geeck testified
that perchloroethylene is not permitted in an automotive
plant because it is dangerous in large quantities (Geeck
Dep., A-3326). Kaliardos’ other chemical expert Strand-
bergh testified that perchloroethylene is toxic and is
considered to be carcinogenic (Strandbergh Dep., A-864).
Fuller’s chemist testified “It’s very irritating to the lungs
and throat area.” (Pellny Dep., A-744.)
Moreover, perchloroethylene costs about three to four
times more than the naphtha solvent used by ail of the
Defendants (Edwards Dep., A-923; Fuller chemist Pellny
Dep., A-774). In addition, perchloroethylene attacks and
damages the paint that is used on cars. Therefore, it is
not usable in a car (BASF analytical chemist Fujimoto
Dep. A1029-30). Perchloroethylene, in the quantities
required by Kaliardos’ formulations, is detectable by its
distinctive smell, according to Kaliardos’ chemical expert
(Epstein Dep., A-909).
There is no evidence that anyone has ever manu-
factured, purchased or used the coating formulations
that are specified in any of the Kaliardos patent claims.
9
In 1980, when General Motors refused to test any
more samples, Mr. Kaliardos concluded, without any
factual support, that G.M. must be using his patented
formulations. Hence, he wrote to G.M. in the early
1980’s complaining of infringement.
In response, G.M. and BASF advised him that they
were not using his formulation and, in 1984, they gave
him a liquid sample of the BASF coating to test so as to
satisfy himself that the BASF formulation was not the
same as his patented formulations. Kaliardos had that
material tested by a chemical laboratory in 1985. The
laboratory reported that it did not find the ingredients
of his patented formulations. Nevertheless, Kaliardos
filed a complaint in the U.S. District Court in Detroit
on September 14, 1988 against G.M. and BASF for
patent infringement and alleged conspiracy and misap-
propriation of his proprietary information. The conspir-
acy and misappropriation count was dismissed by sum-
mary judgment for lack of factual support and as barred
by the Statute of Limitations.?
PROCEEDINGS IN THE DISTRICT COURT
Discovery depositions were taken of six BASF chem-
ists including: the chemist who originated the formula-
tion of BASF’s accused coating in 1953; the two chemists
who successively were responsible for the formulation of
the BASF coating; BASF’s manager of technical services
and quality control; BASF’s research manager; and two
BASF analytical chemists who performed analytical tests
on BASF’s accused coating. Kaliardos also took the
depositions of a former BASF workman who had mixed
3See magistrate-judge’s “Report and Recommendation” of
December 27, 1990, A-2337 and the district court’s Order of
June 5, 1991, A-2363). No appeal was taken from that Order.
10
BASF coatings and of six G.M. engineers and technicians.
In addition, Kaliardos was supplied with all of the BASF
formulation data from 1953 to 1987, including ingredi-
ents, percentages of ingredients, sources of ingredients,
batch mixture records, and reports of chemical labora-
tory tests.
The Defendants took the discovery depositions of Mr.
Kaliardos and of his chemical expert witness, David Byrd,
who testified that he had re-tested the same 1984 sample
that G.M. and BASF had given to Mr. Kaliardos and that
he failed to find in that sample most of the ingredients
listed in Kaliardos’ patent claims. He hedged on his find-
ings concerning perchloroethylene by stating in his
written reports that he detected less than 5% perchloro-
ethylene. However, when cross-examined at his deposi-
tion, he admitted that less than 5% was “‘another way
of saying” that he found none (Byrd Dep., A-3002).
As a result of this discovery, on January 30, 1992
G.M. and BASF filed a joint motion for summary judg-
ment of non-infringement. But, before decision, Kali-
ardos amended his complaint and brought in more
supplier companies. He added Defendants Daubert, H.B.
Fuller Company, National Starch & Chemical Corpora-
tion and Koch Fuels, Inc. Later, he added Beazer East,
Inc. and H.B. Fuller Automotive Products, Inc. That
resulted in further discovery which delayed the pending
G.M./BASF motion for summary judgment.
On September 7, 1990, Koch Fuels was dismissed by
summary judgment because it “had no involvement in the
subject matter of this suit.”” Next, on November 12,
1991, National Starch’s and Beazer’s “Motion for Sum-
mary Judgment of Non-Infringement” was granted. They
were dismissed because their coatings were found by
the court not to infringe Kaliardos’ patents, either
11
literally or under the doctrine of equivalents. That
decision is reported at 777 F.Supp. 543 (E.D. Mich.,
1991) (see attached copy at Appendix B). No appeal was
taken by Kaliardos.*
In December 1991, Daubert and Fuller filed their
separate motions for summary judgment of non-infringe-
ment, and G.M. and BASF, jointly, re-filed their motion
for summary judgment of non-infringement. However,
rulings were deferred until further discovery depositions
were taken of Kaliardos’ expert Byrd and of several other
chemists who, by then, had been retained by Mr. Kali-
ardos to conduct more tests on the various coatings
involved in this lawsuit. Samples of Fuller's coating,
which has a different formulation than the coatings
made by BASF or Daubert, were supplied to Kaliardos
for these tests. Also, Kaliardos was given complete infor-
mation about Fuller’s formulations, production, etc.
Similarly, Daubert supplied complete information con-
cerning its formulations, its records of the contents of
each of the batches of coatings it made, etc.
All of this resulted in Kaliardos’ stipulation to an
“Order Granting Partial Summary Judgment of Non-
Infringement,” dated October 16, 1992 (Appendix C).
This Order held that certain of Kaliardos’ patent claims
were not infringed literally or under the doctrine of
equivalents, and these claims were dismissed from the
lawsuit. That left Kaliardos’ complaint that: BASF,
Daubert and Fuller coatings infringe claims 1 and 2 of
‘in its Opinion, the district court held that certain of the
ingredients that are listed in Kaliardos’ patent claims were
required for either literal infringement or for doctrine of equiv-
alents infringement because these ingredients were added to the
claims by Kaliardos in order to secure approval of his patent
(777 F.Supp. at pp. 545, 549, 29a-30a, 38a).
12
the °530 patent under the doctrine of equivalents; that
BASF and Daubert coatings literally infringe claims 1, 5
and 6 of the ’036 patent; and, that BASF and Daubert
coatings infringe claims 1-6 of the 036 patent under the
doctrine of equivalents.
The discovery depositions of Kaliardos’ expert chem-
ists Byrd and Geeck were no easy matter. They refused
to answer numerous questions; they refused to produce
test samples; and Byrd walked out of one deposition
(which resulted in a motion to compel and an Order
assessing sanctions for unilaterally terminating the depo-
sition). A number of court hearings on motions to com-
pel and court Orders were required to obtain meaningful
information from them. Obtaining the facts from Kali-
ardos and his experts Byrd and Geeck dragged over a
long period of time. On Defendants’ request, the court
ordered Byrd and Geeck to appear for the continuations
of their depositions in the courthouse where a magistrate
was available to immediately rule on their objections to
deposition questions or refusals to answer them.
Finally, an oral hearing on the motions for summary
judgment was conducted by the magistrate-judge on
October 22, 1992. At that time Kaliardos’ counsel and
Defendants’ counsel presented their oral arguments. No
testimony was taken at the hearing.
On October 7, 1993, U.S. Magistrate-Judge Marc L.
Goldman handed down his “Report and Recommenda-
tion” (Appendix A) which recommended that the district
judge grant the three motions for summary judgment.
Kaliardos filed objections. While his objections were
pending, Kaliardos filed a motion for leave to file a belated
supplement, comprising an unsworn test report prepared
by his expert Byrd, to his responses to the motions for
summary judgment of non-infringement. That report
13
related to tests conducted by Byrd on BASF coatings. In
these tests, he mixed a number of additional ingredients
into samples of BASF coatings and compared the modi-
fied BASF coating samples with each other. He did not
compare them with the patented compositions. The dis-
trict judge denied the motion, holding that the report was
untimely and was unverified. Although not decided, it
was apparent on its face that the report was unrelated to
the issue of whether BASF’s actual, unadulterated formu-
lation was the same as the patented formulations. The
report did not relate to either Daubert’s or Fuller’s
coatings.
On March 30, 1994, the district court issued its “Order
Accepting Magistrate-Judge’s October 7, 1993 Report
and Recommendation”’ granting the three motions for
summary judgments (A-1) and issued a Judgment dismiss-
ing the lawsuit (A-3). Kaliardos appealed only from the
district court’s Order of March 30, 1994.° The Court of
Appeals for the Federal Circuit affirmed the district court
on November 22, 1994.®
Turning now to the patent claims-in-suit and the lack
of evidence of infringement:
KALLIARDOS PATENT NO. 3,959,530’
Kaliardos asserts that claims 1 and 2 of the 530 patent
are infringed by the BASF, Daubert and Fuller coatings.
The claims read as follows:
“1. A cleaning and protective coating composition
consisting essentially of a mixture of: wax residue
Copy attached to Petition at p. 48.
Copy attached to Petition at p. 54.
See copy at Kaliardos’ Petition for Writ of Certiorari, p. 62.
14
such as paraffin and microcrystalline wax, perchlo-
roethylene, petroleum distillate having a boiling
point ranging between 350° and 380°F and, a non-
ionic surfactant such as nonylphenoxypoly(ethyl-
eneoxy)ethanol and, a small arnount of [N,N,N’,N’-
tetrakis(2-hydroxypropyl)ethylenediamine].
2. The composition set forth in claim 1 wherein said
paraffin wax comprises at least 3%, said microcrys-
talline wax comprises at least 2%, said nonionic sur-
factant comprises at least 1% and said ethylenedia-
mine comprises at least 1%.”
The district court found, in the non-appealed decision
granting National Starch’s and Beazer’s motion for sum-
mary judgment, that the italicized terms were changes
that were made by Kaliardos in response to the Patent
Office examiner’s rejection and that “these changes were
necessary to secure the patent” (see 777 F.Supp. at p.
545; Kaliardos file history, pp. 33-34, A-1619-1620).°
8The absence of those necessary ingredients from the
accused coatings is another reason why summary judgment of
non-infringement is appropriate. The district court’s unappealed
decision that the italicized ingredients are necessary for infringe-
ment of the patent claims, due to the Patent Office prosecution
history, is the law of the case. Griffin v. M.D.O.C., 5 F.3d 186,
190 (6th Cir., 1993); Arizona v. California, 460 U.S. 605, 618,
75 L.Ed.2d 318, 333, 1031 S.Ct. 1382, 1397 (1993) (“As most
commonly defined, the doctrine [of law of the case] posits that
when a court decides upon a rule of law, the decision should
continue to govern the same issues in subsequent stages in the
same case.) See Markman v. Westview Instruments Inc., 1995
U.S.App. LEXIS 7593, p. 21 (Fed.Cir., Apr. 5, 1995) (“con-
struing and determining the scope of the claims in a patent is
strictly a legal question for the court.”
15
KALIARDOS PATENT NO. 4,356,0369
Kaliardos complains that BASF’s coating and Daubert’s
coatings literally infringe claims 1, 5 and 6 and, also, in-
fringe claims 1-6 of the 036 patent under the doctrine
of equivalents. These claims read as follows:
“1. An anti-corrosion coating composition compris-
ing a mixture of aluminum paste or zinc paste con-
taining aluminum or zinc flakes and a solvent,
microcrystalline wax, aromatic hydrocarbon resin
having a softening point, R and B, of 70°C.-140°C.,
chlorinated rubber having a combined chlorine con-
tent of at least 66%, neutral barium sulfonate, chlo-
rinated solvent, aromatic hydrocarbon solvent and
mineral spirits.
2. The anti-corrosion coating composition set forth
in claim 1 wherein said composition comprises by
weight:
aluminum paste or zinc 15-43%
microcrystalline wax 5-4%
aromatic hydrocarbon resin 10-18%
chlorinated rubber 2-6%
neutral barium sulfonate .5-1%
chlorinate solvent 7-23%
aromatic hydrocarbon solvent 22-32%
mineral spirits 1.3-4%
3. The anti-corrosion coating composition set forth
in claim 1 wherein said composition comprises by
weight:
aluminum paste 21-28%
microcrystalline wax 1.3-3.5%
aromatic hydrocarbon resin 7-23%
neutral barium sulfonate .5-1%
2 Copy at Petition, p. 77.
16 :
chlorinated solvent 7-23%
aromatic hydrocarbon solvent 23-42%
mineral spirits 1.3-3.5%
4. The anti-corrosion coating composition set forth
in claim 1 wherein said composition comprises by
weight:
zinc paste 15-43%
microcrystalline wax .5-4%
aromatic hydrocarbon resin 10-18%
neutral barium sulfonate .5-1%
chlorinated solvent 7-23%
aromatic hydrocarbon solvent 23-42%
mineral spirits 1.9-4%
5. The anti-corrosion coating composition set forth
in claim 1 wherein said chlorinated solvent com-
prises perchloroethylene.
6. The anti-corrosion coating composition set forth
in claim 1 wherein said aromatic hydrocarbon sol-
vent comprises toluene and xylene.
The district court held that “{T]he italicized terms
were changes made by the plaintiff in response to refer-
ences cited by the P.T.O. These changes were necessary
to secure the patent.” (See 777 F.Supp. at p. 545.)!°
KALIARDOS HAS NO EVIDENCE OF SIMILARITY
OF FUNCTION/WAY/RESULTS
For infringement under the doctrine of equivalents,
the patentee must prove by comparative factual evidence
that the accused product, as a whole, has substantially
10-There is no evidence that the italicized terms are found
in the accused coatings, which is another reason why summary
judgment of non-infringement is appropriate.
17
the same function/way/results as the entire product that
is specified in the patent claims AND, in addition, must
separately explain how and why the function/way/results
are the same. Malta v. Schulmerich Carillons, Inc.,
supra, 925 F.2d at 1327. Kaliardos has presented no such
factual evidence. There is no evidence in the record
where anyone said or demonstrated or established in
any way, whether by fact or even by opinion, that the
BASF, Daubert, or Fuller accused coatings have substan-
’ tially the same function/way/results as the coating com-
positions that are specified in the patent claims of either
the °530 or ’036 patents. To the contrary, Kaliardos’
expert Byrd testified that he has no such evidence, as
follows:
Q. Do you have any evidence to establish that any of
the coatings of any of the defendants which are
accused of infringements in this case perform sub-
stantially the same function in substantially the
same way to produce substantially the same re-
sults as the compositions that are specified in the
claims of Mr. Kaliardos’ Patent No. 5,950,530?
THE WITNESS: I don’t know.
You don’t know the answer to that question?
That’s right. (A-3052-53)
0: POD
Do you have any evidence to establish that any of
the accused products of any of the defendants in
this lawsuit perform substantially the same func-
tion in substantially the same way to produce sub-
stantially the same result as those of the compo-
sition of chemical ingredients specified in the
claims of Mr. Kaliardos’ Patent No. 4,356,036?
A. THE WITNESS: No. (A-3052)
With respect to the alleged infringement by Fuller of
the ’530 patent claims 1 and 2 under the doctrine of
18
equivalents, Kaliardos’ expert Byrd affirmatively stated
that the function/way/results are not the same:
Q. Is it fair to say that the H.B. Fuller material that
you tested does not give the same results as the
Kaliardos’ patented formulations?
A. Yer
Q. Is it fair to say that the H.B. Fuller material that
you tested does not perform the same function as
the Kaliardos’ patented formulations?
A. Yes.
Q. And is it fair to say that the H.B. Fuller formula-
tions that you tested do not work the same way as
the Kaliardos’ patented formulations?
A. Yes. (A-3026)
Further, Kaliardos, expert Byrd testified that he did
not even conduct any comparative tests to determine
whether any of the Defendants’ coatings work in the
same way (A-3049-50) or perform the same functions
(A-3051) or produce the same results as the compositions
specified in the claims of the °530 (A-3042) or the 036
patents (A-3042).
KALIARDOS’ EXPERT TESTIFIED THAT BASF’S
COATINGS DO NOT CONTAIN MOST OF THE
INGREDIENTS SPECIFIED IN THE PATENT CLAIMS
Referring to the ingredients that are listed in claim 1
of the 530 patent, Byrd testified that BASF’s coating
“Do not have a nonionic surfactant” (A-3015); that he
did not find any nonylphenoxypoly(ethyleneoxy)ethanol
in BASF’s coating (A-3032); that he did not find any
[N,N,N’,N’-tetrakis(2-hydrocypropyl)ethylenediamine] in
any BASF coating (A-3018, 3028, 3032); and that he
did not find any petroleum distillate having a boiling
19
point ranging between 350° and 380° F in BASF’s coat-
ing (A-3017). Further, initially he testified that he did
not detect any perchloroethylene in BASF’s coating
(A-3004).
Referring to claim 2 of the ‘530 patent, Byrd testified
that he never determined the amounts of the ingredients
in any of the accused coatings of any of the Defendants
(A-3064). He admitted that he does not have any evi-
dence that BASF’s accused coating contains the percent-
ages of ingredients that are spelled out in claim 2 of the
530 patent (A-3062, 3063).
As to claims 1, 5 and 6 of the ’036 patent, Kaliardos’
expert Byrd testified that BASF’s coatings do not have
each of the claimed ingredients. More specifically, Byrd
testified that he did not find in BASF’s coating any aro-
matic hydrocarbon resin having a softening point, R and
B, of 70°C.-140°C (A-3004). He testified that he did
not find any chlorinated rubber having a combined
chlorine content of at least 66% (A-3004); and he did
not find any chlorinated solvent (A-3005). He testified
that he did not find neutral barium sulfonate (A-3005);
nor any barium sulfonate at all (A-3031, 3017). As to
claims 2, 3 and 4 of the ’036 patent, he did not even
attempt to determine whether BASF’s coating contained
the percentages of the ingredients that are set forth in
those claims (A-3064).
KALIARDOS’ EXPERT BYRD TESTIFIED THAT
THE FULLER COATINGS DO NOT CONTAIN
ALL OF KALIARDOS’ CLAIMED INGREDIENTS
Byrd testified that Fuller’s coatings do not contain
four of the five ingredients listed in Kaliardos’ claims 1
and 2 of the 530 patent. The only common ingredient
is wax. He said that “Fuller doesn’t have perchloroethy-
lene” (A-3260); Fuller’s coating “Does not include a
20
small amount of [N,N,N’,N’-tetrakis(2-hydroxypropy])-
ethylenediamine]” (A-3032); and, he testified that Ful-
ler’s coating does not include a “nonionic surfactant such
as nonylphenoxypoly(ethyleneoxy)ethanol” (A-3262).
Byrd also testified that he did not find in Fuller’s coat-
ings “petroleum distillate having a boiling point ranging
between 350 and 380 F” (A-3261), which the district
court held was “necessary to secure the patent.” (See
Kaliardos v. General Motors, 777 F.Supp. at p. 545.)
With respect to claim 2 of the ’530 patent, no evidence
whatsoever was presented concerning any similarity of
percentages of ingredients between Fuller’s coatings and
the amounts of ingredients specified in claim 2.
KALIARDOS’ EXPERT GEECK TESTIFIED THAT
DAUBERT’S COATING DOES NOT CONTAIN
ALL OF THE CLAIMED INGREDIENTS
During discovery, Daubert made available its formula-
tions, laboratory test reports and its batch manufactur-
ing records, which identified each of the materials and
the amounts of the materials mixed together to make
Daubert’s coatings. Kaliardos’ expert chemist, Mr. Geeck,
examined these materials and testified that “[E] xcept
for the wax, Daubert coating formulations are not the
same as the formulations specified in the claims of either
Kaliardos’ ’530 patent and ’036 patent’ (Geeck Dep.,
A-3322, 3324). Additionally, Mr. Geeck testified that
he did not find any ethylenediamine in Daubert’s coat-
ings (A-3302, 3303); nor did he find any petroleum dis-
tillate having a boiling point ranging between 350
and 380 F (A-3304); he did not find any [N,N,N’,N’-
tetrakis(2-hydroxypropyl)ethylenediamine] (A-3305,
3306, 3311); nor did he find any neutral barium sulfon-
ate (A-3320, 3322); nor did he find any chlorinated sol-
vents (A-3321). No evidence was presented to show that
21
Daubert’s coatings contain the same percentages of
ingredients that are specified in the Kaliardos patent
claims.
EXCLUSION OF EVIDENCE
Kaliardos’ Petition, at page 39, and elsewhere, refers to
evidence concerning a Pontiac Grand Prix door and a
laboratory analysis of the coating taken from the door.
That evidence was excluded by the magistrate because of
failure to identify what the material was or where it came
from. It should not have been referenced by Petitioner
in his brief. To explain, Kaliardos’ expert Byrd, apparent-
ly unwittingly, tested a sample piece of the hard, blue-
colored, epoxy adhesive which is used within Pontiac
Grand Prix doors to “glue” the bent edges of the metal
door panels together. Kaliardos had that sample piece
additionally tested by another laboratory in California.
Upon investigations by G.M., unrefuted affidavits were
submitted to the magistrate with a motion to exclude the
blue-colored sample and the tests concerning it. The
unrefuted affidavits identified that sample as an epoxy
adhesive, not a wax coating, and established that G.M.
did not use wax coatings in that particular model car
(Burton Affidavit, A-1492; Cantalin Affidavit, A-1495;
Mayhem Affidavit, A-1480).
During his deposition, Kaliardos’ expert Byrd admitted
that he had known all along, and he had told Kaliardos,
that the “blue” material was not the same as the tan
colored coatings-in-suit and he admitted that the material
was an adhesive (Byrd, A-3254, 3256). Since the magis-
trate excluded that material, it should not have been
included in Kaliardos’ petition.
22
ARGUMENT AGAINST CERTIORARI
The patentee has the burden of proving infringement,
either literally or under the doctrine of equivalents, by a
preponderance of evidence. Smithkline Diagnostics Co. v.
Helena Laboratories Corp., 859 F.2d 878, 889 (Fed. Cir.
1988); Mannesmann Demag Corp. v. Engineered Metal
Products Co., 793 F.2d 1279, 1282 (Fed.Cir. 1986).
To prove literal infringement, Kaliardos must present
factual evidence showing that every single ingredient that
is specified in the asserted patent claims is actually found
in the accused coatings. Builders Concrete, Inc. v. Brem-
erton Concrete Products Co., 757 F.2d 255, 257 (Fed.
Cir. 1985). To prove infringement under the doctrine of
equivalents, Kaliardos must provide substantial factual
evidence showing: (1) that BASF’s, Fuller’s and Dau-
bert’s coatings contain either the same or an equivalent
of each and every ingredient that is specified in the pat-
ent claims-at-issue; AND, (2) that the accused coatings
perform substantially the same function, in substantially
the same way, to produce substantially the same results
as the coating formulations specified in such patent
claims. Graver Tank & Mfg. Co. v. Linde Air Products
Co., 339 U.S. 605, 609-10, 70 S.Ct. 854, 856-57, 94
L.Ed. 1097, 1102 (1950); Builders Concrete, Inc. v.
Bremerton Concrete Products Co., 757 F.2d at 258;
AND, (3) to explain by factual, comparative, evidence
how and why the accused coatings have the same func-
tion/way/results as the combination of ingredients that
are specified in the patent claims. That is the controlling
patent law which Kaliardos must meet in order to defeat
a motion for summary judgment. Malta v. Schulmerich
Carillons, Inc., 925 F.2d 1320, 1327, 1329 (Fed.Cir.
1961), cert. denied, 119 L.Ed.2d 566 (1992). The law is
well settled. Lear Siegler, Inc. v. Sealy Mattress Co. of
23
Michigan, 837 F.2d 1422, 1425-26 (Fed.Cir. 1989).
Malta, supra, 925 F.2d at p. 1329 explains:
6eé
.
. substantial evidence of comparison as to the
function, way and result is required as part of the
patentee’s prima facie case of infringement under
the doctrine [of equivalents]. Therefore, if the com-
parison evidence is not substantial, the issue may
not be submitted to the jury.
We have also held that the comparison as to each
Graver Tank element must be made ‘explicitly’ and
‘separately.” Lear Siegler, 837 at 1425-26. Conse-
quently, a jury verdict of infringement under the
doctrine can only survive a motion for JNOV if sub-
stantial evidence was presented that explicitly and
separately compares the function/way/result of the
accused device with the function/way/result of the
claimed invention to show that they are substan-
tially the same.”
If any one of the essential elements of proof of in-
fringement is missing, summary judgment is mandated
under Rule 56(c). It is not discretionary. Celotex Corp.
v. Catrett, 477 U.S. 317, 322-23, 91 L.Ed.2d 265, 273,
106 S.Ct. 2548, 2552 (1986):
“In our view, the plain language of Rule 56(c) man-
dates the entry of summary judgment, after ade-
quate time for discovery and upon motion, against
a party who fails to make a showing sufficient to
establish the existence of an element essential to
that party’s case, and on which that party will bear
the burden of proof at trial. In such a situation,
there can be ‘no genuine issue as to any material
fact,’ since a complete failure concerning an essen-
tial element of the non-moving party’s case necess-
arily renders all of facts immaterial. The moving
24
party is ‘entitled to a judgment as a matter of law’
because the non-moving party has failed to make a
sufficient showing on an essential element of her
case with respect to which she has the burden of
proof.”
In Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-
48, 91 L.Ed.2d 202, 211, 106 S.Ct 2505 (1986), the
Court stated the standard for summary judgment:
‘Rule 56(c) of the Federal Rules of Civil Procedure
provides that summary judgment ‘shall be rendered
forthwith if the pleadings, depositions, answers to
interrogatories and admissions on file, together
with the affidavits, if any, show that there is no
genuine issue as to any material fact and that the
moving party is entitled to a judgment as a matter
of law.
By its very terms, this standard provides that the
mere existence of some alleged factual dispute be-
tween the parties will not defeat an otherwise prop-
erly supported motion for summary judgment; the
requirement is that there be no genuine issue of
material fact. [emphasis in original]
As to materiality, the substantive law will identify
which facts are material. Only disputes over facts
that might affect the outcome of the suit under the
governing law will properly preclude the entry of
summary judgment. Factual disputes that are irrele-
vant or unnecessary will not be counted. [empha-
sis added]
[T| here is no issue for trial unless there is suffi-
cient evidence favoring the non-moving party for a
25
jury to return a verdict for that party. 477 US. at
249.
[T]he standard for summary judgment mirrors the
standard for a directed verdict under Fed. R. Civ.
P. 50(a). 477 U.S. at 250.”
THE QUESTIONS PRESENTED FOR REVIEW BY
APPELLANT KALIARDOS UNDER RULE 14.1(a)!!
“1. Did the magistrate-judge in the trial court err in
holding that the evidence produced by Plaintiff in re-
sponse to Defendant’s motion for summary judgment
did not create a genuine issue of material fact concern-
ing whether accused products infringed asserted claims,
either literally or under the doctrine of equivalents, such
as to require a full trial?”
It is clear that there was no genuine issue of material
fact concerning the motions for summary judgment.
There cannot be a genuine issue of material fact where
the non-moving party, Kaliardos, failed to present some
of the essential evidence to show literal infringement (i.e.,
the presence of every single claimed ingredient in the
accused products) or infringement under the doctrine of
equivalents (i.e., evidence of the presence of equivalent
ingredients AND showing substantially similar function/
way/results with explanations as to how and why).
Hence, there was no error by the district court or the
court of appeals which warrants the grant of certiorari.
Intellicall, Inc. v. Phonometrics Inc., 952 F.2d 1384,
1389 (1992) (summary judgment of non-infringement
1 Note, the argument headings are reproductions of Kaliar-
dos’ four ‘Questions Presented for Review’”’ in his Petition for Writ
of Certiorari.
26
properly granted where patentee failed to produce evi-
dence of equivalency).
“*2. Did the trial judge in the trial court err in adopt-
ing the “Report and Recommendation” of the magis-
trate-judge and dismissing Plaintiff’s action on the merits
and by abusing his discretion in denying Plaintiff's
motion for leave to supplement his responses with a test
report of his expert and/or in not granting Kaliardos’
request for an oral hearing?”
The district judge stated that, “pursuant to 28 USC
636(b)(1)(B), Fed. R. Civ. Pr. 72(b), he conducted a de
novo review of the magistrate’s “‘Report and Recom-
mendation,” which found that Kaliardos lacks essential
evidence. There is no showing as to exactly where or how
he committed error in so doing.
Moreover, there was no abuse of discretion in deny-
ing Plaintiff’s motion to supplement his responses with
a test report which was untimely and not verified and,
therefore, not in accordance with Rule 56(e). The court
properly relied upon Adickes v. S. H. Kress & Co., 398
U.S. 144, 158 n. 17 (1970) and Fowle v. C&C Cola,
868 F.2d 59, 67 (3rd Cir. 1989), which states:
6é
.
. .There was no compliance [by the expert’s
report] with Rule 56 (e) ... the substance of the
report was not sworn to by the alleged expert, there-
fore, the purported expert’s report is not competent
to be considered on a motion for summary judg-
ment. See Adickes v. S. H. Kress & Co., 398 US.
144, 158, 158 n.17, 90 S.Ct. 1598, 1608 n. 17, 26
L.Ed. 142 (1970) (‘unsworn statement does not
meet the requirements of Fed. Rule Civ. P. 56(e)’).”
Further, there was no abuse of discretion in not grant-
ing Kaliardos’ request for another oral hearing before
27
deciding the motions for summary judgment. Kaliardos
had an oral hearing before the magistrate; he was not
entitled to another oral hearing before the district judge.
That question was definitively addressed in United States
v. Raddatz, 447 U.S. 667, 673-74, 65 L.Ed.2d 424,
432-3, 100 S.Ct. 2406 (1980). Referring to 28 U.S.C.
636(b)(1)(B), Raddatz states that the district judge is
required to “make a de novo determination of those
portions of the [magistrate’s] report or specified pro-
posed findings or recommendations to which objection
is made.” And, “It should be clear that on these disposi-
tive motions, the statute calls for a de novo determina-
tion, not a de novo hearing.” Then Raddatz quotes
from the House Report, H.R. Rep. No. 94-1609 (1976):
The use of the words ‘de novo determination’
is not intended to require the judge to actually
conduct a new hearing on contested issues.
Raddatz summarizes:
. In providing for a ‘de novo determination’
rather than a de novo hearing, Congress intended to
permit whatever reliance a district judge, in the
exercise of sound judicial discretion, chose to place
on a magistrate’s proposed findings and recom-
mendations.”
“3. Did the appeal court err in affirming the district
court’s dismissal of Plaintiff-Appellant’s case concerning
the evidence Kaliardos offered and the plain language
and historical intent of the application of Federal Rule
56?”
The appeals court affirmed the district court’s sum-
mary judgment dismissal because of the absence of essen-
tial evidence of infringement. As this Court stated in
28
Matsushita Electric Industrial Co., Ltd. v. Zenith Radio
Corporation, 475 U.S. 574, 586-7, 89 L.Ed.2d 538, 552,
106 S.Ct. 1348 (1986):
‘When the moving party has carried its burden
under Rule 56 (c), its opponent must do more than
simply show that there is some metaphysical doubt
as to the material facts.
In the language of the Rule, the nonmoving party
must come forward with specific facts showing that
there is a genuine issue for trial.”
Kaliardos made no such showing. Hence, there was no
error in affirming the dismissal.
“4. Is the federal judiciary using Rule 56 to rid their |
dockets of difficult cases and/or litigants and, if so, will
such use of Rule 56 be allowed to continue?”
Kaliardos misinterprets the purpose of Rule 56. The
purpose is to rid the dockets of factually unsupported
claims. Pertinent here is this Court’s statements in Celo-
tex supra:
“One of the principal purposes of summary judg-
ment rule is to isolate and dispose of factually
unsupported claims or defenses, and we think that
it should be interpreted in a way that allows it to
accomplish this purpose (477 U.S. at 373)
The Federal Rules of Civil Procedure have for
almost 50 years authorized motions for summary
judgment upon proper showings of the lack of a
genuine, triable issue of material fact. Summary
judgment procedure is properly regarded not as a
29
disfavored procedural shortcut, but rather as an inte-
gral part of the Federal Rules as a whole, which are
designed ‘to secure the just, speedy and inexpen-
sive determination of every action.’
Rule 56 must be construed with due regard not only
for the rights of persons asserting claims and de-
fenses that are adequately based in fact to have
those claims and defenses tried to a jury, but also
for the rights of persons opposing such claims and
defenses to demonstrate in the manner provided
by the Rule, prior to trial, that the claims and
defenses have no factual basis.” (477 U.S. at 327)
This present lawsuit is utterly without factual founda-
tion. This is the very kind of case for which summary
judgment has been designed.
30
CONCLUSION
Respondents General Motors, BASF and Fuller respect-
fully ask this Court to deny Kaliardos’ Petition for Writ
of Certiorari.
Respectfully submitted,
HERBERT FURMAN BERNARD J. CANTOR
29709 Deer Run (Counsel of Record)
Farmington Hills, MICHAEL P. BRENNAN
Michigan 48331 RoBert S. NOLAN
Attorney for HARNESS, DICKEY &
PIERCE, P.L.C.
Respondent-Defendant
General Motors
Corporation
5445 Corporate Drive
Troy, Michigan 48098
(810) 641-1600
(810) 641-0270 (FAX)
Attorneys for
Respondents-Defendants
General Motors Corporation,
BASF Corporation,
H.B. Fuller Company,
H.B. Fuller Automotive
Products, Inc.
April 20, 1995
la
APPENDIX A
Magistrate’s ‘‘Report and Recommendation”
[Filed Oct 7 93]
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION — FLINT
Civil No. 88-CV-73729-DT
NICOLAS KALIARDOS,
Plaintiff,
vs.
GENERAL MOTORS CORPORATION, BASF
CORPORATION, DAUBERT INDUSTRIES, INC.,
H.B. FULLER COMPANY and H.B. FULLER
AUTOMOTIVE PRODUCTS, INC.,
Defendants.
HON. PAUL V. GADOLA
HON. MARC L. GOLDMAN
REPORT AND RECOMMENDATION
This is an action claiming infringement of certain
claims of United States Patents 4,959,530 [’530] and
4,356,036 [’036]. The defendants in this action are
General Motors [GM] and three companies which sup-
plied General Motors with anti-corrosive coatings for use
on its automobiles, BASF Corporation, Daubert Indus-
tries, Inc., and H.B. Fuller Company. The pertinent
facts are as follows.
2a
BACKGROUND
In the late 1960’s and early 1970’s, the plaintiff,
Nicholas Kaliardos, was engaged in the dry cleaning
business. Sometime around 1971, Kaliardos began
experimenting with the chemicals used in his dry cleaning
business in an effort to develop an anti-corrosion wax
coating for use on automobiles. He began this experimen-
tation after being told that the Fisher Body Division of
General Motors was looking for a coating for bare steel
that would withstand salt spray. In the period between
1972 and 1981, Kaliardos submitted several samples of
his products to the Fisher Body Corrosion Laboratory for
testing. After each test, Fisher Body reported that the
product did not meet GM Material Specification 998-
1128. However, Kaliardos was never shown the test
results. Curious about the performance of his product
and suspicious of the conclusory test reports from
Fisher Body, Kaliardos submitted his creations to inde-
pendent laboratories for testing. Kaliardos claims that the
results of these independent tests revealed that his
coatings met GM’s anti-corrosion requirements.
In 1974, Kaliardos submitted an anti-corrosion coating
invention to the Patent and Trademark Office [PTO].
The Patent Office Examiner initially objected to the
broad language in the proposed claims, and Kaliardos
modified those claims to specifically define several of the
terms. On May 25, 1976, Kaliardos was granted U.S.
Patent 3,959,530 [The °530 patent]. (Gaim 1 to the
530 patent reads:
A cleaning and protective coating composition
consisting essentially of a mixture of:
wax residue such as paraffin and microcrystalline
wax, perchloroethylens, petroleum distillate having
a boiling point ranging between 350 degrees and
3a
380 degrees F. and a nonionic surfactant, such as
nonylphenoxypoly (ethyleneoxy) ethanol, and a
small amount of [N,N,N’, N’-tetrakis (2-hydroxy-
propyl) ethylenediamine] .!
In both the patent application and an affidavit filed in
connection with this case, Kaliardos explained the func-
tion of the various ingredients of his coating. The wax
residue is waterproof and remains pliable in both cold
and hot weather. Petroleum distillate, recommended as
Solvent 140 in the patent language, acts as a carrier for
the other ingredients, dissolving the wax once the wax is
heated. The coating spreadability is improved by the
surfactant, and the coating adheres better to the metal
car body once the chelating agent is added. Finally, and
most importantly according to Kaliardos, the perchetoro-
ethylene dissolves any oil remaining on the metal. This
chlorinated solvent cleans the car body, helping the other
coating materials to stick to the bare surface. “Sagging”
had been a prevalent problem with other coatings, and
Kaliardos claims that he eliminated sagging and flaking
problems when he began using perchloroethylene in his
experiments. Perchloroethylene was commonly used as
a spot remover in the dry cleaning industry.
After receiving the °530 patent, Kaliardos began
experimenting with weldable zinc and anti-corrosive
coatings. He continued submitting his coatings for testing
at the Fisher Corrosion Lab. In 1978, General Motors
amended Material Specification 998-1128, and began
requiring aluminum pigment, hydrocarbon resins, and a
petroleum solvent in its anti-corrosion coatings. Kaliardos
'The underlined portions of the language indicate the changes
that were made at the direction of the patent office in order to
secure the patent.
4a
added aluminum to his coating to meet GM Material
Specification 998-1128.
On October 26, 1982, Kaliardos was granted a patent
for a new formula containing zinc or aluminum. Claim
1 to U.S. Patent No. 4,356,036 [the ’036 patent] reads:
An anti-corrosion coating composition comprising:
a mixture of aluminum paste or zinc paste contain-
ing aluminum or zinc flakes and a solvent, micro-
crystalline wax, aromatic hydrocarbon resin having a
softening point, R and B, of 70C. - 140C., chlori-
nated rubber having a combined chlorine content
of at least 66%, neutral barium sulfonate, chlori-
nated solvent, aromatic hydrocarbon solvent, and
mineral spirits.
In the patent language, Kaliardos recommends using
perchloroethylene as the chlorinated solvent and using
toluene and xylene as the aromatic hydrocarbon solvents.
Ingredients that were not part of the ’530 patent, but
were included in the ’036 patent, include chlorinated
rubber and aluminum or zinc paste. According to Kali-
ardos, he added the chlorinated rubber because it has a
high resistance to acids and alkalies. He stated that with-
out the ingredient, the coating would not pass the GM
detergent test listed in the material specifications. The
aluminum paste provided a silver pigment for the coatings
and also forms a protective finishing layer over the other
ingredients. Aluminum is apparently more effective than
zinc because less of the material is required.
For many years prior to 1979 and continuing to the
present, General Motors has used wax-type coatings to
prevent corrosion on the inside surfaces of its auto-
5a
mobiles.” Defendants BASF, Daubert, and Fuller, are
among the several companies that supply GM with wax-
type anti-corrosion coatings. BASF claims that it has
manufactured an anti-corrosion coating since the 1960s,
based on Canadian Patent 743,631 issued to Rebecca
Sandretto, a former employee of a predecessor company,
in 1966. Daubert has supplied GM with coatings since
1979. Fuller was not organized until August 1988, when
it bought certain assets of the Widger Chemical Co., and
the company has supplied coatings to GM since its
inception.
In early 1980, before Kaliardos obtained the ’036
patent, the Fisher Corrosion Lab notified Kaliaros that
after seven years of testing his anti-corrosion products,
they were discontinuing any further testing because none
of Kaliardos’ products had met GM’s specifications.
However, Fisher Body apparently relented and tested
another coating. In an October 23, 1980 letter, Fisher
Body informed Kaliardos that his aluminized sample did
not meet the requirements of Specification 998-1128.
Kaliardos was directed to make no further submissions.
In late 1982 or early 1983, after obtaining the ’036
patent, Kaliardos contacted General Motors and began
claiming that the anti-corrosion coatings provided by
their suppliers and used on their vehicles infringed both
his 036 and ’530 patents. Kaliardos claimed that GM
had directed its suppliers to manufacture coatings based
on the samples and formulas that Kaliardos had provided
for testing.
2 Other automakers were using an “oily wax” as early as 1975,
but the thickness of the early coatings caused problems on the
assembly line.
6a
On September 14, 1988, after years of correspondence
and testing, Kaliardos filed a complaint in the United
States District Court for the Eastern District of Michigan,
charging General Motors and BASF with patent infringe-
ment. In February 1990, Kaliardos added four other
suppliers as defendants, including Daubert and H.B.
Fuller.?
In 1991, after a lengthy period of discovery, the
defendants filed motions for summary judgment. They
asserted that plaintiff had failed to establish that the
defendants had infringed his two patents either literally
or under the doctrine of equivalents. In response to this
motion, plaintiff submitted the affidavit of his expert,
David Byrd, which purportedly established that the
products used by GM and manufactured by the defen-
dant did infringe plaintiff’s patents. Because the affidavit
contained information which contradicted testimony
Byrd had given previously in depositions, a new round of
discovery began.
Following completion of this new round of discovery,
new motions for summary judgment were filed by the
defendants. In response to these motions, plaintiff agreed
to modify his claims. Plaintiff conceded that the coatings
manufactured by BASF, Fuller, and Daubert do not
literally infringe any of the claims of the ’530 patent. He
further conceded that the coatings of the above-named
defendants do not infringe claims 3, 4, 5, and 6 of the
*530 patent under the doctrine of equivalents. Thus,
plaintiff continues to assert that GM has infringed all
3Two of these new defendants, Beazer East Inc., and National
Starch & Chemical Corporation, were granted summary judgment
in a memorandum opinion and order entered by the Honorable
Paul V. Gadola. Kaliardos v. General Motors Corp., 777 F.Supp.
543 (E.D. Mich. 1991).
7a
claims of the ’530 patent, both literally and under the
doctrine of equivalents, and that the rest of the defen-
dants have infringed only claims 1 and 2 of the °530
patent under the doctrine of equivalents.
With respect to the ’036 patent, plaintiff conceded
that the Fuller coating does not infringe that patent
under either theory. He also conceded that the BASF
and Daubert coating do not literally infringe claims 2,
3, 4, and 7 of the ’036 patent and, further, that they do
not infringe claim 7 of the ’036 patent under the doctrine
of equivalents. Finally, plaintiff conceded that Daubert
coating Nox-Rust X-170 does not infringe the ’036
patent at all. An order granting summary judgment on
these claims was entered by United States District Judge
Paul V. Gadola on October 19, 1992.
As a result of this order, the following claims remain
against each defendant:
1. BASF-—Infringement under the doctrine of
equivalents of claims 1 and 2 of the ’530 patent.
Literal infringement of claims 1, 2 and 7 of the
036 patent. Infringement under the doctrine of
equivalents of claims 1-6 of the ’036 patent.
2. DAUBERT-—Infringement of claims 1 and 2 of
the ’530 patent under the doctrine of equivalents.
Literal infringement of claims 1, 5 and 6 of the
‘036 patent. Infringement under the doctrine of
equivalents of claims 1-6 of the ’036 patent.
3. FULLER—Infringement of claims 1 and 2 of the
’530 patent under the doctrine of equivalents.
4. GENERAL MOTORS-—The claims against GM are
derivative of those against the suppliers because
GM is named as a user of the accused products.
There is also an allegation that GM may have
infringed the patents by adding chemicals to the
8a
coatings after they had been delivered by the
suppliers.
The defendants are requesting summary judgment with
respect to each of these claims.
LEGAL PRINCIPLES
Rule 56(c) of the Federal Rules of Civil Procedure pro-
vides that summary judgment shall be granted if there is
no genuine issue of material fact. The burden is first on
the moving party to show that there is an absence of evi-
dence to support the non-moving party’s case. Celotex
Corp. v. Catrett, 477 U.S. 317, 322 (1986); Hines v. Joy
Manuf., 850 F.2d 1146, 1149-50 (6th Cir. 1988); Gregg
v. Allen-Bradley Co., 801 F.2d 859,861 (6th Cir. 1986).
Once the moving party presents sufficient evidence to
support the motion, the burden shifts to the adverse
party to set forth facts showing a genuine triable issue.
Fed.R.Cwv.P. 56(e); Gregg, 801 F.2d at 861.
Summary judgment should be granted against a party
who fails to make a showing sufficient to establish the
existence of an element essential to that ~urty’s case.
Celotex Corp. v. Catrett, 477 U.S. at 325. In deciding
the question, the court must bear in mind the quantum
and quality of proof necessary to support liability at
trial. The standard mirrors that governing a directed ver-
dict under Federal Rule of Civil Procedure 50(a). The
inquiry under each is the same: Whether the evidence
presents a sufficient disagreement to require submission
to a jury, or whether it is so one-sided that one party
must prevail as a matter of law. Anderson v. Liberty
Lobby, Inc., 477 U.S. 242, 251-52 (1986). The non-
movant “must do more than simply show that there is
some metaphysical doubt as to the material facts.”
———_>rs sve ee EEE
9a
Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475
U.S. 574, 586 (1986). If the evidence put forward by the
non-moving party is merely colorable, or is not signifi-
cantly probative, summary judgment may be granted.
Id. Similarly, speculation or hypothesis is not sufficient
to create a genuine issue of material fact. Boddy v. Dean,
821 F.2d 346, 349 (6th Cir. 1987). With this standard
in mind, I now turn to the legal principles which control
in this case.
In his decision granting National Starch and Beazer’s
motions for summary judgment, Judge Gadola outlined
the law of patents which is applicable to the case. Kali-
ardos v. General Motors Corp., 777 F.Supp. 543 (E.D.
Mich. 1991). Because this is the ‘‘law of the case” which
must be followed in this report and recommendation, |
will repeat it here.
A patent is a federal statutory grant under 35 U.S.C.
§101. The patent, to be protected, must comport
with certain statutory requirements. Section 112 of
Title 35 states in relevant party that:
[A patent] specification shall conclude with one
or more claims particularly pointing out and
distinctly claiming the subject matter which the
applicant regards as his invention.
35 U.S.C. §112. The Federal Circuit has stated that
“(t]he claims alone delimit the right to exclude;
only they may be infringed.” Environmental Instru-
ments Inc. v. Sutron Corp., 887 F.2d 1561, 1564
(Fed.Cir. 1989).
In patent law, every element of the claim must be
found in the accused product—either actually or by
a substantially equivalent element—in order to find
an infringement.
10a
[W]here the respondent in constructing his
[product] omits one of the ingredients of the
complainant’s combination, he does not infringe
the complainant’s patent.
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d
931, 950 (Fed.Cir. 1987) [Nies, J., concurring],
cert. denied, 485 U.S. 961, 1009, 108 S.Ct. 1226,
1474, 99 L.Ed.2d 426 (1988); see also Lemelson v.
United States, 752 F.2d 1538, 1551 (Fed. Cir.
1985) [“the plaintiff must show the presence of
every element or its substantial equivalent in the
accused (product)”’].
Thus, the accused infringer . . . is entitled to
summary judgement, on the ground of non-
infringement, by pointing out that the patentee
failed to put forth evidence to support a finding
that [an element] of the asserted claim was met
by the . . . accused [product]. Johnston, 885
F.2d at 1578.
Infringement may be shown in only two ways. First,
if every single element of limitation in the claim is
found in the accused product, there is literal infringe-
ment. See Builders Concrete, Inc. v. Bremerton
Concrete Produs. Co., 757 F.2d 255, 257 (Fed.Cir.
1985). Second, infringement can occur where the
accused product has corresponding elements which
perform substantially the same function in sub-
stantially the same way to obtain the same result.
See Graver Tank Co. v. Linde Air Prods. Co., 339
U.S. 605, 609-10, 70 S.Ct. 854, 856-57, 94 L.Ed.
2d 1097 (1950); Builders Concrete, 757 F.2d at
258. This second path to infringement is called the
doctrine of equivalents.
The doctrine of equivalents will not extend to allow
the patentee to recapture through equivalence cer-
tain coverage given up during prosecution of his
| es
lla
patent application. See Pennwalt, 833 F.2d at 934,
n.1. Therefore, the language changed by the plaintiff
in securing his patents is critical if the doctrine of
equivalents infringement is pursued. This limitation
is called prosecution history estoppel.
Prosecution history estoppel, which precludes a
patentee from obtaining a claim construction that
would resurrect subject matter surrendered during
prosecution of his patent application . . . limits a
patentee’s reliance on the doctrine of equivalents.
Builders Concrete, 757 F.2d at 258; see also Jonsson
v. Stanley Works, 711 F.Supp. 1395, 1403 (N.D.
Ohio 1989) [‘‘Arguments and remarks made by
plaintiff’s counsel during prosecution of the patent
application can also be used to determine the scope
of the claims”], aff’d., 903 F.2d 812 (Fed.Cir.
1990). Finally, a claimant may not “broaden his
claim by dropping [an] element which he was
compelled to include in order to secure his patent.”
1.T.S. Rubber Co. v. Essex Rubber Co., 272 US.
429, 443, 47 S.Ct. 136, 141, 71 L.Ed. 335 (1926).
In view of the issues remaining in this case, it is neces-
sary to note in greater detail what is required of a plain-
tiff who is aiieging infringement under the doctrine of
equivalents. In Lear Siegler, Inc. v. Sealy Mattress Co. of
Michigan, 873 F.2d 1422 (Fed. Cir. 1987), the court
recognized that under Graver Tank, infringement under
the doctrine of equivalents does not require complete
identity for every purpose and in every respect, but does
require substantial identity of the function performed,
means by which the function is performed, and the result
achieved. 873 F.2d at 1425. This substantial identity
must be proven with respect to all three of these ele-
ments. As stated in Lear Siegler, 873 F.2d at 1425-26
12a
[relying on Nestier Corp. v. Menasha Corp.-Lewtsystems
Div., 729 F.2d 1576, 1579-80 (Fed.Cir. 1984)]:
The party asserting infringement must present
“evidence and argument concerning the doctrine
and each of it elements” (emphasis added). The
evidence and argument on the doctrine of equival-
ents cannot merely be subsumed in plaintiff’s case
of literal infringement.
* * *
Absent the proper Graver Tank context, 1.e., a show-
ing of how plaintiff compares the function means
and result of its claimed invention with those of
the accused device, a jury is more or less put to sea
without guiding charts when called upon to deter-
mine infringement under the doctrine .. . [N/estier
requires that the three Graver Tank elements must
be presented in the form of particularized testimony
and linking arguments.
In Lear Siegler, the court found that there was no testi-
mony broken down into the three Graver Tank elements
as required by Neistier. Additionally, the court found
that there was no argument linking the evidence elicited
to the three elements of equivalence doctrine. The court
therefore concluded that it has been error to submit the
matter to the jury and that a judgment notwithstanding
the verdict should have been granted. Lear Stegler, 873
F.2d at 1427.
The same analysis was utilized by the Federal Circuit
in Malta v. Schulmerich Carillons, Inc., 952 F.2d 1320
(Fed. Cir. 1991). In Malta, the cowrt found that in the
absence of “particularized testimony and linking argu-
ment as to each of the function/means/result prongs of
the tripartite Graver Tank equivalency test,” infringe-
ment under the doctrine of equivalents may not be
found. Jd. at 1327.
13a
This type of analysis is equally applicable in motions
for summary judgment. First, it must be noted that the
same summary judgment standard is applied to patent
claims as applied to other types of claims. Avia Group
Int'l. v. L.A. Gear California, Inc., 853 F.2d 1557,
1561 (Fed. Cir. 1988). In London v. Carson Pirie Scott
& Co., 946 F.2d 1534, 1536 (Fed. Cir. 1991), the court
recognized that there can be no genuine issue of material
fact where a party has failed to adduce proof to meet an
essential part of the applicable legal standard. The court
applied this principle in determining whether the plaintiff
had created an issue of fact as to whether the defendant
infringed plaintiff’s patent under the doctrine of equiva-
lents. The court found that in order to survive summary
judgment, the plaintiff would be required to present
some evidence showing that the defendant’s product per-
formed substantially the same function in substantially
the same way to achieve substantially the same result.
The absence of evidence on any one of these three ele-
ments would warrant a grant of summary judgment with
respect to the claim of infringement. 946 F.2d at 1539-
40. This standard is equally applicable to the case at bar.
In finding that there existed no genuine issue of
material fact as to whether National Starch and Beazer
infringed either of these two patents, the court stated
that Kaliardos had failed to present any evidence showing
that the ingredients used in these two defendants’ pro-
ducts contained any one of the elements of plaintiff's
claims. The court went on to note that, in prosecuting his
patents, plaintiff had made changes in his applications in
order to secure the patent. In the ’530 claim, plaintiff
had modified the coating so as to require a) perchloro-
ethylene and b) petroleum distillate having a boiling
point ranging between 350 degrees and 380 degrees
l4a
Fahrenheit. In the ’036 patent, claim 1 was modified to
require a) aromatic hydrocarbon resin having a softening
point, R and B of 70C.-140C, and b) chlorinated rubber
having a combined chlorine content of at least 66%.
The court went on to find that, in order to have literal
infringment of claim 1 of the ’530 patent, the challenged
product would have to contain perchloroethylene, a
nonionic surfactant and [N.N.N.’,N’-tetrakis (2-hydroxy-
propyl) ethylenediamine]. In order for there to be
infringement by equivalents of claim 1 of the °530
patent, the challenged substance would have to contain
perchloroethylene.
For there to be literal infringement of claim one of the
"036 patent, the accused substance would have to contain
mixtures of aluminum paste or zinc paste or equivalent
mixtures, aromatic hydrocarbon resins having softening
points, R and B, of 70 degrees C.-140C., chlorinated
rubber having chlorine content of at least 66% and aro-
matic hydrocarbon solvents or chlorinated solvents. In
order for there to be infringement by equivalents of the
°036 patent, the aromatic hydrocarbon resins and chlori-
nated rubber with chlorine content of at least 66% was
considered essential. These findings by Judge Gadola are
applicable to this report under the law of the case doc-
trine and will be applied here. See Gnffin v. MDOC, No.
91-1523, 1993 U.S. App LEXIS 24392 (6th Cir. Sep-
tember 23, 1993).4
* While the law of the case doctrine is generally applied to deci-
sions of a lower court that have been decided on appeal, the doc-
trine would seem to be applicable in this case, where a district
judge has made findings on issues later presented to a magistrate
judge.
OR BN Ot Rabe am
ate
15a
ANALYSIS
Plaintiff’s responses to the motions for summary judg-
ment are difficult to analyze because his claims have
evolved over time. Indeed, his factual and legal arguments
have evolved greatly since the court’s decision on the
Beazer and National Starch motions. Analysis is further
complicated by the fact that the evidence put forward
by the plaintiff is inconsistent in the sense that tests per-
formed on the same substances over a period of years
have produced differing results. This has resulted in con-
flicting affidavits being filed by plaintiff's primary
expert, David Byrd.
In analyzing the evidence in this case for the purpose
of resolving the motions for summary judgment, the
court must be mindful of the nature of the evidence
presented by the opposing parties. The defendants have
submitted affidavits, deposition testimony, and docu-
ments showing that the products that they were produc-
ing and selling to GM did not infringe upon plaintiff’s
products either literally or under the doctrine of equiva-
lents.
In response, the plaintiff and his expert have analyzed
what they believed were sealants from six GM car doors
selected at random from junkyard to determine whether
the sealants in those cars infringed on plaintiff's patents.
Unfortunately, plaintiff’s inability to identify the mate-
rials tested, their confusion over the cars from which
the doors were taken, and their inability to identify the
producers of the particular sealants found on the doors
have increased the difficulty in evaluating the evidence.
The best that can be said for plaintiff’s evidence in
opposition to the motions for summary judgment is that
it is muddled and difficult to comprehend. In light of this
16a
state of the record, I believe that the clearest way to
analyze whether there exists a genuine issues of fact for
trial is to examine the remaining allegations against
each defendant individually to determine what, if any-
thing, remains as a legitimate factual issue requiring jury
determination.
BASF
As noted above, plaintiff claims that BASF’s $51Z001
wax coating has infringed claims 1 and 2 of the ’530
patent under the doctrine of equivalents and has infringed
the ’036 patent both literally and under the doctrine of
equivalents. BASF claims that it has used a single anti-
corrosion coating formula, which it has occasionally
altered, since the early 1960’s. As of September 3, 1976,
the formulation for BASF’s $51Z001 wax coating was
listed as follows:
VM&P Naptha—54.66%
Mineral Spirits—7.79%
High melting point wax—.60%
Petroleum hydrocarbon resin—23.39%
Aluminum flake powder—2.12%
Microcrystalline wax—11.44%
Sometime prior to January 31, 1984, hydrocarbon
resin was substituted for petroleum resin, and leafting
aluminum flake paste was substituted for leafing alumi-
num powder. BASF substituted No. 2429 Naphtha for
VM&P Naphtha in May 1982, but switched back to the
VM&P Naphtha in August 1982. The aluminum paste
used by BASF includes trace amounts of stearic acid,
which can act as both a surfactant and a chelating agent.
According to BASF, the formula is based on a patent
for an anti-corrosion coating issued in Canada to Rinshed-
ats
—_—T —
17a
Mason Company” employee, Rebecca Sandretto. The
Sandretto patent lists as ingredients: Microcrystalline
wax, a hydrocarbon solvent [VM&P Naphtha is recom-
mended], pigment [Aluminum, iron and other metals
are suggested], and a petroleum resin [petroleum resin ts
a hydrocarbon resin] .°
In November 1984, GM provided Kaliardos with a can
of a liquid sample of BASF’s coating for testing. Chemi-
cal Industrial Services, Inc. [CIS] tested the sample, and
in a report dated January 29, 1985, CIS stated that the
sample did not contain perchloroethylene, which is neces
sary for infringement of the '530 patent. The test also
failed to disclose the presence of chlorinated solvent or
chlorinated rubber, which would be necessary for infringe-
ment of the ’036 patent. The test also found Naphtha,
which is primarily an aliphatic solvent, rather than an
aromatic hydrocarbon solvent. VM&P Naphtha will not
dissolve Parlon, the chlorinated rubber suggested by
Kaliardos in the 036 patent. Byrd Dep. pp. 134-135.
On May 8, 1988, David Byrd submitted results from a
test conducted on the same sample of BASF coating. The
test results showed a quantity of less than 5% perchloro
ethylene or other chlorinated solvents. However, Byrd
later testified that this finding was the equivalent of no
detection at all. The test also did not detect chlorinated
rubber.
In October 1989, David Byrd again tested a sample of
BASF coating on different machinery and issued the
following findings concerning the substances contained in
the coating:
sit appears that Rinshed-Mason was purchased by Inmont
Corporation, which itself was later purchased by BASF.
SExhibt 15, Defendants’ Motion for Summary Judgement.
18a
Microcrystalline wax—present
Hydrocarbon resin—present
Chlorinated rubber—present
Aluminum—present
Zinc—not detected
Barium—present trace
Surfactant—present
Perchloroethylene—present
On January 2, 1990, Kaliardos gave Clayton Environ-
mental Consultants a sample of the same BASF coating
and a sample of sealant allegedly taken from the doors of
a 1983 Oldsmobile Ciera. Gas chromatrography/mass
spectrometry tests performed at Clayton’s Novi labora-
tory detected aromatic compounds in both samples, but
did not detect tetrachloroethane.’ Clayton then sent a
sample to their Windsor laboratory for static headspace
analysis by gas chromatography using an electron capture
detector [GC/ECD]. The presence of a very small amount
of tetrachloroethane was detected by the test.® Finally,
on October 19, 1992, mere days before the motion for
summary judgment was argued, Mr. Byrd submitted
another affidavit stating that further tests on the BASF
’Tetrachloroethane is another name for perchloroethylene.
SThere is some question as to what was actually tested at the
Windsor laboratory. According to Daryl Strandbergh, the director
of the Novi lab, he sent over a liquid material in a sealed test tube
to Windsor. This would indicate that the material sent was from
the sample submitted by GM. Paul Epstein, the director of the
Windsor lab testified that the substance that was tested was solid
and gummy in texture which would seem to indicate that it was
the sample taken from the Ciera. The chemist conducting the
test, Paul Johnson later filed an affidavit stating that the substance
that he tested was a liquid, rather than a solid substance. The
defendant’s motion to strike all of these affidavits, because of the
inability to identify the substance tested, was denied.
19a
liquid material disclosed the presence of 1,1 dichloro-
ethene and certain aromatic solvents.
BASF has submitted the affidavit and deposition of
Tommie Bemis, who formulated the BASF product for
23 years. He stated that BASF has never used perchloro-
ethylene, any other chlorinated solvent, chlorinated
rubber, zinc, or neutral barium sulfate in its product.
BASF has also submitted the affidavit of Rebecca San-
dretto, the holder of the Canadian patent on the BASF
product who states that her invention did not contain
perchloroethylene. Finally, BASF relies on the CIS tests
which revealed no perchloroethylene in the substance.
To the extent that plaintiff asserts that the BASF
product literally infringes the 036 patent, I must con-
clude that the defendant is entitled to summary judg-
ment. In order for there to be a literal infringement of
claim 1 of the ’036 patent, every single element of
limitation must be found in the accused product. The
036 patent requires that there be, among other ingredi-
ents, neutral barium sulfonate. Here, even assuming that
perchloroethylene was contained in the BASF product
as found in some of plaintiff’s tests, there is simply no
evidence of any neutral barium sulfonate. Indeed, Mr.
Byrd testified that while he did detect some barium in
one of his tests, he never tested for neutral barium
sulfonate. In the absence of any evidence of the presence
of this required element of claim 1 of the '036 patent,
it cannot be said that the plaintiff has met his burden of
showing a genuine issue of fact with respect to literal
infringement. Accordingly, summary judgment on this
claim should be granted to BASF.?
9 Even if it could be said that there was sufficient evidence to
create a genuine issue of fact on the claim of literal infringement of
[footnote continued]
er ey
20a
The question of whether there exists a genuine issue
of fact on the claim of infringement by equivalents of
both patents revolves around the Graver Tank function/
way/result analysis. As noted earlier, the Federal Circuit
requires that there be explicit testimony and linking
argument substantiating all three aspects of equivalency.
Lear Siegler, 873 F.2d at 1425-26. Here, there is no such
testimony. Indeed, when specifically asked whether any
of the defendants products perform substantially the
same function in substantially the same way to produce
substantially the same results as plaintiff’s two patents,
Mr. Byrd testified that he had no evidence to support
that conclusion. Indeed, he stated that he did not con-
duct any tests on any of the defendants’ products to
determine how their ingredients work in combination
or whether they work the same way as plaintiff’s pro-
ducts. In the absence of any evidence that the Graver
Tank elements have been met in this case, BASF is also
entitled to summary judgment on the claims of infringe-
ment of both the ’036 and ’530 patents under the doc-
trine of equivalents.!°
DAUBERT
Daubert began developing a wax-type anti-corrosion
coating in 1975, and they first started selling a product
formulated to meet CM Specification 998-1128 in
the ’036 patent, there is no evidence that the components of the
accused product meet the percentage requirements of the second
claim of that patent.
10RASF and General Motors have also asserted that plaintiff’s
patents are invalid under 35 U.S.C. §102(b) since the “infringing”
product was sold by BASF and used by General Motors more than
one year before the dates of Kaliardos’ patent applications. In view
of my recommendation, this issue does not need to be resolved.
MA ens ont! AAO SARL MOLLY
2ia
February 1979. Since 1979, Daubert has produced three
different wax-type anti-corrosion formulas. NOX RUST
X-151, which was used by the company from 1979 until
1986, combines:
Microcrystalline wax—16-21%
Polyethylene wax—.6-.8%
Hydrocarbon resin—!4.5-16.5%
Lead sulfonate—.4-.6%
Colloidal silica—.7-1.2%
Aluminum paste—1.0-2.0%
VM&P Naphtha—6.2-59.0%
In 1986, the company discontinued manufacture of
NOX RUST X-151 and started manufacturing a product
without aluminum to meet GM Material Specification
998-2250, which was issued in 1983 and calls for a clear
coating. This product, NOX RUST X-170,"! combines:
Hydrocarbon resin—29.8-34.5%
Barium sulfonate—1.8-2.1%
Petroleum oil—6-7%
VM& P Naphtha—41.5-42.5%
Caster oil derivative—.5-1.6%
Colloidal silica—.4-1.5%
Petrolatum wax—8.5-10.5%
Microcrystalline wax—7.0-10.7%
Plaintiff contends that the NOX-RUST X-151 infringes
the ’530 patent under the doctrine of equivalents and the
036 patent both literally and under the doctrine of
equivalents. He further contends that NOX-RUST X-170
infringes the 530 patent under the doctrine of equiva-
lents. In support of this claim, plaintiff relies solely on
11 naubert discontinued production of the NOX RUST X-170
in 1990 and began using NOX RUST X-175. The X-175 formula is
not alleged to be infringing either of the patents.
22a
tests conducted on the door of a 1984 Buick Skylark
which he believes contained a Daubert sealant. Tests on
that door detected chlorinated rubber and solvents but
also detected zinc and no aluminum. A trace of per-
chloroethylene was also detected.
Defendants have submitted the results of tests con-
ducted by the Shrader Laboratory on its door coatings
which show that its coatings do not contain any chlori-
nated solvents. They also contend that plaintiff has
failed to establish that the Skylark door contains any
sealant manufactured by Daubert.
As noted above, the uncontested evidence shows that
NOX-RUST X-170 was not manufactured until 1986.
Daubert therefore contends that whatever is on the
1984 Skylark cannot be X-170. Daubert further notes
that the test of the Skylark door disclosed zinc, but not
aluminum. The uncontested evidence shows that NOX-
RUST X-151 did not contain zinc, but did contain
aluminum.
Because the Skylark was manufactured before 1986,
the material on the door cannot be NOX-RUST X-170.
Because the sealant contains zinc, but no aluminun, it
cannot be NOX-RUST X-151. Thus, there is no evidence
in this record to suggest that these Daubert sealants
infringed plaintiff’s patents either literally or under the
doctrine of equivalents. I therefore recommend that
Daubert’s motion for summary judgment be granted.!”
121 should also be noted that any coating alleged to contain
chlorinated rubber or aluminum cannot infringe the °530 patent
either literally or under the doctrine of equivalents. Kaliardos
stated in his application for the ’036 patent that chlorinated rubber
performs the important function of making the coating more
resistant to detergents. I find that this additional ingredient in the
[footnote continued]
ORR ABM ct Pil AT tees Baise
23a
FULLER
Fuller manufactures two formulas that are named in
this suit. The formula for WC-2291 lists:
Microcrystalline wax—15-30%
VM&P Naphtha (an aliphatic solvent containing
small amounts of aromatics)—20-40% |
Aliphatic oil (Hydro treated)—1-5%
Calcium sulfonate—5-10%
Paraffinic wax—5-10%
Aliphatic hydrocarbon resin—15-30%
A second product, WC-2291-P, is similar to WC-2291, but
also contains mineral spirits.
Kaliazrdos claims that Fuller coatings WP-2291 and
WP-2291-P infringe claims 1 and 2 of his ’530 patent
under the doctrine of equivalents. In support of this
claim, David Byrd submitted an affidavit on October
19, 1992 stating that he detected the chlorinated solvent
1,1, dichloroethene and the aromatic solvents benzene,
toluene, ethylbenzene and xylene in both the WC-2291
and WC-2291-P coating samples submi*ted by Fuller.
Byrd also stated that he examined wax coatings taken
from the doors of a 1987 Chevrolet Celebrity, a 1988
Oldsmobile Delta 88, and a 1991 Pontiac Grand Prix.’°
He stated that he found microcrystalline wax and per-
chloroethylene in the Celebrity and the Delta 88 and
’036 patent materially affects the basic ingredient composition of
the ’530 patent. Dow Chemical v. American Cyanamid Co., 615
F.Supp. 471 (E.D. La. 1985), aff'd 816 F.2d 617 (Fed. Cir. 1987).
Similarly, the addition of aluminum in the ’036 patent materially
affects the composition of the ’530 patent in that it is said to
provide a hard shell as well as pigment.
13 piaintiff initially identified the Pontiac Grand Prix as a 1989
Cadillac Eldorado. After a great deal of discovery and expense, it
has been properly identified.
<< Sisal SI
24a
found zinc and surfactants in the Grand Prix.'* In his
affidavit, Byrd also compares the ingredients of the
"530 patent with the recipe for the Fuller WC-2291-P
and concludes that the Fuller coating “thas the ingredients .
or their equivalents of claim 1 of U.S. Patent No.
3,959,530.”
In response, Fuller has submitted the affidavit of
Michael Pellney, a chemist and the Technical Director for
Fuller and before that, for Widger Chemical. Pellney
States in his affidavit that there is neither perchloro-
ethylene nor aromatic hydrocarbon solvents in the
Fuller formulas, both of which are necessary to find
infringement of the 530 patent under the doctrine of
equivalents, pursuant to the law of the case. He further
states that Fuller never manufactured or sold coatings
containing the ingredients in Kaliardos’ patents.
In addition, Fuller contends that the tests conducted
on the doors of the 1987 Celebrity and the 1988 Olds
Delta cannot be considered in opposition to its motion
for summary judgment. This contention is correct. It
should be remembered that Fuller did not begin manu-
facturing these coatings until 1989 and therefore, no
coating by Fuller could possibly be on these vehicles.
l4The deposition testimony and affidavits regarding the 1991
Pontiac Grand Prix has been stricken by me in an order dated
October 1, 1992. There was meager evidence in the record that this
vehicle even contained a wax coating similar to those in issue here.
Indeed the evidence seemed to indicate that Mr. Byrd tested an
adhesive rather than a coating. Regardless, Byrd filed two affi-
davits, one stating that the Pontiac contained a Daubert coating,
the other stating that it contained a Fuller coating. Plaintiff’s
inability to identify the source of the alleged sealant on the 1991
Pontiac door compelled the conclusion that it not be considered
against any of the defendants.
25a
Finally, as with the BASF motion, there is no showing,
with the requisite specificity, that the accused product
performs substantially the same function, in substanti-
ally the same way with substantially the same results as
the patented substance. Indeed, Byrd’s testimony at his
deposition is to the contrary. He specifically stated that
there is no evidence to meet and he has conducted no
tests to estalbish the Graver Tank requirements. There-
fore, I find that there is no genuine issue of fact for trial
on the issue of infringement under the doctrine of
equivalents and recommend that summary judgment be
granted in favor of Fuller.
GENERAL MOTORS
General Motors was initially alleged to have infringed
plaintiff’s patents under 35 U.S.C. §271(a) as an unauth-
orized user or seller of the patented inventions. Because
I have concluded that plaintiff has failed to meet his
burden of creating a genuine issue of fact on the issue of
infringement with respect to the three suppliers, sum-
mary judgment should also be granted in GM’s favor.
Plaintiff's secondary contention that GM may have
modified the materials supplied by the other defendants
so as to infringe on the patent is the exact type of specu-
lative and conclusory argument which may not be deemed
to create a genuine issue of fact for trial. See Matsushita
Elec. Indus. Co., 475 U.S. at 86; Boddy, 821 F.2d at
349. Accordingly, for the reasons stated with respect to
the other defendants, summary judgment should be
granted to General Motors.
RE REE ER SO PRCA
26a
CONCLUSION
My review of this record establishes that the formulas
used by the defendants in manufacturing their coatings
have repeatedly been shown not to contain the essential
elements of the Kaliardos patents, through both the dis-
closure of the formulas and scientific testing of those |
formulas. There is simply no evidence in this record
which would create a genuine issue of material fact as |
to whether any of the accused products infringe upon
Kaliardos’ patents either literally or under the doctrine of
equivalence. Simply put, plaintiff’s case is one that began
with, and continues to rest upon, pure speculation and
conclusion. This is insufficient to withstand summary
judgment. Accordingly, for the reasons stated, I respect-
fully recommend that the defendants’ motion for sum-
mary judgment be granted and that this matter be dis-
missed.
Pursuant to Rule 72(b) of the Federal Rules of Civil
Procedure and 28 U.S.C. §636(b)(1), the parties are
hereby notified that within ten days after being served
with a copy of this recommendation, they may serve and
file specific written objections to the proposed findings
and recommendations. Further, either party may respond
to another party’s objections within ten days after being |
served with a copy thereof. The parties are further
informed that failure to timely file objections may con-
stitute a waiver of any further right of appeal to the
United States Court of Appeals. Untted States v. Walters,
638 F.2d 947 (6th Cir. 1981).
Moat RAL: RB: Westone nee Ate mei it BBL eae AES a
/s/ Marc L. Goldman
MARC L. GOLDMAN
UNITED STATES MAGISTRATE JUDGE
Date: OCTOBER 7, 1993
27a
APPENDIX B
District Court’s Opinion Granting Summary Judgment
Non-Infringement to Co-Defendants
National Starch and Beazer East
[Kaliardos v. General Motors et al,
777 F.Supp. 543 (E.D. Mich. 1991)]
UNITED STATES DISTRICT COURT,
E.D. MICHIGAN, S.D.
No. 88-73729
NICOLAS KALIARDOS,
Plaintiff,
GENERAL MOTORS CORPORATION,
BASF CORPORATION, DAUBERT INDUSTRIES,
INC., H.B. FULLER COMPANY, NATIONAL
STARCH & CHEMICAL CORPORATION, and
BEAZER EAST, INC., JOINTLY AND SEVERALLY,
Defendants.
Nov. 12, 1991
Alex Rhodes, Richard Knoll, Birmingham, Mich., for
Nicolas Kaliardos.
Herbert Furman, General Motors Corp., Detroit, Mich.,
Bernard J. Cantor, Harness Dickey, Troy, Mich., for
General Motors Corp., BASF Corp. and H.B. Fuller Co.
28a
Ira S. Auslander, Auslander & Churilla, John A. 4
William J. Schramm, Brooks & F.ushman, Southfield,
Mich., for Daubert Industries, Inc.
William G. Abbatt, Ernie L. Brooks, Brooks & Kush-
man, Bob Randenburg, Southfield, Mich., for Nat. Starch 1
& Chemical Corp. and Beazer East, Inc.
MEMORANDUM OPINION AND ORDER :
GRANTING DEFENDANTS’ NATIONAL STARCH :
& CHEMICAL CORPORATION AND BEAZER ;
EAST, INC. MOTION FOR SUMMARY
JUDGMENT ON COUNT 1, PATENT
INFRINGEMENT
GADOLA, District Judge.
Plaintiff Nicholas Kaliardos filed this complaint on
September 14, 1988, charging General Motors Corpora-
tion and BASF Corporation with infringing U.S. Patent
Nos. 3,959,530 and 4,356,036. In February 1990 plain-
tiff added claims of infringement against National Starch
& Chemical Corporation. In September 1990 plaintiff
added claims of infringement against Beazer East, Inc.
ca Nain nein Rte NAS Neh be Bain IS PLL NOs eds ee NMS eS NE tee are ea Shao lt
The patents each relate to specific mixtures of chemi-
cal ingredients for wax-type, solvent-based, anti-rust
coatings. Plaintiff accuses National Starch and Beazer of
infringement by manufacturing and selling wax-type,
solvent-basee coatings to General Motors. Defendants
National Starch and Beazer now bring the instant motion
for summary judgment on the patent infringement claims
against them. For the reasons set forth below, the defen-
dants’ motion is granted.
29a
FACTS
During the 1970’s vehicle corrosion was a serious
problem for automobile manufacturers. The plaintiff, a
self-taught chemist, experimented with, tested and
invented two wax-type, anti-corrosion coatings. Plaintiff
submitted his inventions to the Patent and Trademark
Office (PTO). After some language difficulties expressed
by the Patent Office Examiner, plaintiff was granted
U.S. Patent No. 3,959,530 and No. 4,356,036. Claim 1 to
U.S. Patent No. 3,959,530 reads as follows:
A cleaning and protective coating composition
consisting essentially of a mixture of
wax residue such as paraffin and microcrystalline
wax,
perchlogoethylene,
petroleum distillate having a boiling point ranging
between 350 degrees and 380 degrees F., and
a nonionic surfactant such as nonylphenoxypoly
(ethyleneoxy) and
a small amount of [N.N.N’, N’-tetrakis (2-hydro-
xypropyl) ethylenediamine].
The italicized terms were changes made by the plaintiff in
response to references cited by the PTO. These changes
were necessary to secure the patent. Claim 1 to US.
Patent No. 4,356,036 reads as follows:
An anti-corrosion coating composition com-
prising
a mixture of aluminum paste or zinc paste con-
taining aluminum or zinc flakes and a solvent,
microcrystalline wax,
aromatic hydrocarbon resin having a softening
point, R and B, of 70 C.-140 C.,
30a
cholrinated rubber having a combined chlorine
content of at least 66%,
neutral barium sulfonate,
chlorinated solvent,
aromatic hydrocarbon solvent and
mineral spirits.
Again, the italicized terms were changes made by the
plaintiff in response to references cited by the PTO.
These changes were necessary to secure the patent. Plain-
tiff asserts he invented the two wax-type, anti-corrosion
coatings to specifically meet the requirements of General
Motors Material Specifications 998-1128 and 998-2150.
General Motors never accepted any of plaintiff’s coatings
for use.
From 1980 to the present, General Motors has used
wax-type coatings on the inside surfaces of its auto-
mobiles. From the mid-1970s, Koppers, Inc. and Parr,
Inc., predecessor companies to National Starch and
Beazer, supplied General Motors with a wax-type coating,
defendants’ product No. 820-1913, that General Motors
sprayed into the interior of car doors and other body
parts. Two prototype batches of a dripless coating, defen-
dants’ product No. 820-1914, were made in 1987-88.
Both of these products correspond to General Motors
Material Specification 998-2150. According to defen-
dants and their affiant Mr. Habjanic, no coating was
supplied by National Starch, Beazer or any predecessor
company that met General Motors Material Specification
998-1128. National Starch is the successor to a part of
Beazer’s business that used to supply coating No. 820-
1913.
Plaintiff claims that General Motors received proprie-
tary information from plaintiff during the testing process
on his patented coating. Plaintiff further claims that
te Rb bi eta
3la
General Motors gave this information to National Starch
and Beazer, among others, in order to duplicate and
utilize the coatings without compensating the plaintiff.
National Starch, Beazer and General Motors deny these
allegations. Further, defendants’ affiants Mr. Habjanic
and Mr. Meilus state that the defendants’ products No.
820-1913 and No. 820-1914 do not contain the identical
nor the essential ingredients contained in the plaintiff's
patented coatings. The plaintiff, in a sworn affidavit,
disputes this last contention, further adding that “the
ingredients or their equivalents which Mr. Habjanic repre-
sents are not present in Koppers 820-1913 and 820-1914
coatings are necessary for meeting the General Motors
998-1128 and 998-2150 Material Specifications.”
STANDARD OF REVIEW
Under Rule 56(c) of the Federal Rules of Civil Proce-
dure, summary judgment may be granted “‘if the plead-
ings, depositions, answers to interrogatories, and admis-
sions on file, together with the affidavits, if any, show
that there is no genuine issue as to any material fact and
that the moving party is entitled to judgment as a matter
of law.” ‘‘A fact is ‘material’ and precludes grant of sum-
mary judgment if proof of that fact would have [the]
effect of establishing or refuting one of the essential
elements of the cause of action or defense asserted by the
parties, and would necessarily affect [the] application of
appropriate principle[s] of law to the rights and obliga-
tions of the parties.” (Citation omitted.) Kendall v.
Hoover Co., 751 F.2d 171, 174 (6th Cir. 1984) (quoting
Black’s Law Dictionary 881 (6th ed. 1979)). The Court
must view the evidence in a light most favorable to the
! Kaliardos Affidavit at para. 13.
32a
nonmovant as well as draw all reasonable inferences in
the nonmovant’s favor. See United States v. Diebold,
Inc., 369 U.S. 654, 655, 82 S.Ct. 993, 994, 8 L.Ed.2d
176 (1962); Bender v. Southland Corp., 749 F.2d 1205,
1210-11 (6th Cir. 1984).
The movant bears the burden of demonstrating the
absence of all genuine issues of material fact. See Gregg
v. Allen-Bradley Co., 801 F.2d 859, 861 (6th Cir. 1986).
The initial burden on the movant is not as formidable as
some decisions have indicated. The moving party need
not produce evidence showing the absence of a genuine
issue of material fact; rather, ‘“‘the burden on the moving
party may be discharged by ‘showing’—that is, pointing
out to the district court—that there is an absence of evi-
dence to support the nonmoving party’s case.’”’ Celotex
Corp. v. Catrett, 477 U.S. 317, 325, 106 S.Ct. 2548,
2554, 91 L.Ed.2d 265 (1986). Once the moving party
discharges that burden, the burden shifts to the non-
moving party to set forth specific facts showing a genuine
triable issue. Fed.R.Civ.P. 56(e); Gregg, 801 F.2d at 861.
To create a genuine issue of material fact, however,
the nonmovant must do more than present some evi-
dence on a disputed issue. As the United States Supreme
Court stated in Anderson v. Liberty Lobby, Inc., 477
U.S. 242, 249-50, 106 S.Ct. 2505, 2511, 91 L.Ed.2d
202 (1986).
There is no issue for trial unless there is sufficient
evidence favoring the nonmoving party for a jury to
return a verdict for that party. If the [nonmovant’s]
evidence is merely colorable, or is not significantly
probative, summary judgment may be granted.
(Citations omitted); See Catrett, 477 U.S. at 322-23, 106
S.Ct. at 2552-53; Matsushita Elec. Indus. Co. v. Zenith
Radio Corp., 475 U.S. 574, 586-87, 106 S.Ct. 1348,
ze ee eee ee en are Seen ae Can eb mene anne oo
33a
1355-56, 89 L.Ed.2d 538 (1986). The standard for sum-
mary judgment mirrors the standard for a directed verdict
under Fed.R.Civ.P. 50(a). Anderson, 477 U.S. at 250,
106 S.Ct. at 2511. Consequently, a nonmovant must do
more than raise some doubt as to the existence of a fact;
the nomovant must produce evidence that would be
sufficient to require submission to the jury of the dispute
over the fact.
Further, summary judgment is as applicable in patent
cases as any other. As the Federal Circuit stated in John-
ston v. IVAC Corp., 885 F.2d 1574, 1576 (Fed.Cir.
1989):
As in other cases, the grant of summary judgment
under Fed.R.Civ.P. 56 is appropriate in a patent
case where no genuine issue of material fact exists
and the movant is entitled to judgment as a matter
of law.
e a4
[T]he motion of an accused infringer for judgment
on the ground of non-infringement of a patent may
be granted where the patentee’s proof is deficient in
meeting an essential part of the legal standard for
infringement.
APPLICABLE LAW
A patent is a federal statutory grant under 35 U.S.C.
§101. The patent, to be protected, must comport with
certain statutory requirements. Section 112 of Title 35
states in relevant part that:
[A patent] specification shall conclude with one or
more claims particularly pointing out and distinctly
claiming the subject matter which the applicant
regards as his invention.
34a
35 U.S.C. §112. The Federal Circuit has stated that
“(t]he claims alone delimit the right to exclude; only
they may be infringed.’’ Environmental Instruments Inc.
v. Sutron Corp., 877 F.2d 1561, 1564 (Fed.Cir. 1989).
In patent law, every element of the claim must be
found in the accused product—either actually or by a
substantially equivalent element—in order to find an
infringement.
[W]here the respondent in constructing his [pro-
duct] omits one of the ingredients of the com-
plainant’s combination, he does not infringe the
complainant’s patent.
Pennwalt Corp. v. Durand-Wayland, Inc., 833 F.2d 931,
950 (Fed.Cir. 1987) (Nies, J., concurring), cert. denied,
485 U.S. 961, 1009, 108 S.Ct. 1226, 1474, 99 L.Ed.2d
426 (1988); see also Lemelson v. United States, 752
F.2d 1538, 1551 (Fed.Cir. 1985) (“the plaintiff must
show the presence of every element or its substantial
equivalent in the accused [product]”’).
Thus, the accused infringer . . . is entitled to sum-
mary judgment, on the ground of non-infringement,
by pointing out that the patentee failed to put forth
evidence to support a finding that [an element] of
the asserted claim was met by the . . . accused
[product].
Johnston, 885 F.2d at 1578.
Infringement may be shown in only two ways. First, if
every single element of limitation in the claim is found in
the accused product, there is literal infringement. See
Builders Concrete, Inc. v. Bremerton Concrete Prods. Co.,
757 F.2d 255, 257 (Fed.Cir. 1985). Second, infringement
can occur where the accused product has corresponding
elements which perform substantially the same function
35a
in substantially the same way to obtain the same result.
See Graver Tank Co. v. Linde Air Prods. Co., 339 U.S.
605, 609-10, 70 S.Ct. 854, 856-57, 94 L.Ed. 1097
(1950); Buslders Concrete, 757 F.2d at 258. This second
path to infringement is called the doctrine of equivalents.
The doctrine of equivalents will not extend to allow
the patentee to recapture through equivalence certain
converage given up during prosecution of his patent appli-
cation. See Pennwalt, 833 F.2d at 934 n.1. Therefore, the
language changed by the plaintiff in securing his patents
is critical if the doctrine of equivalents infringement is
pursued. This limitation is called prosecution history
estoppel.
Prosection history estoppel, which precludes a
patentee from obtaining a claim construction that
would resurrect subject matter surrendered during
prosecution of his patent application . . . limits a
patentee’s reliance on the doctrine of equivalents. ...
Builders Concrete, 757 F.2d at 258; see also Jonsson v.
Stanley Works, 711 F.Supp. 1395, 1403 (N.D.Ohio
1989) (“Arguments and remarks made by plaintiff’s
counsel during prosecution of the patent application can
also be used to determine the scope of the claims”),
aff'd., 903 F.2d 812 (Fed.Cir. 1990). Finally, a claimant
may not “broaden his claim by dropping [an] element
which he was compelled to inciude in order to secure his
patent.” J.7.S. Rubber Co. v. Essex Rubber Co., 272 US.
429, 443, 47 S.Ct. 136, 141, 71 L.Ed. 335 (1926).
ANALYSIS
Plaintiff Kaliardos claims that National Starch and
Beazer have infringed Claim 1 of each of his patents.
However, plaintiff has not produced sufficient initial or
rebuttal evidence to meet his burden of production.
36a
In response to interrogatories asking plaintiff which of
the products manufactured or sold by National Starch
and/or Beazer infringes plaintiff’s patents, plaintiff identi-
fied the product sold under General Motors Specification
998-1128. However, no sales of this product by National
Starch or Beazer have been identified by the plaintiff. In
fact, the defendants’ affiant states that no product sold
by National Starch, Beazer or their predecessors matched
General Motors Material Specification 998-1128.° If the
defendants did supply General Motors with the coating it
used under 998-1128, then plaintiff should have come
forth with some hard evidence. The plaintiff states that
he needs more time to effect discovery to retrieve this
evidence. However, National Starch has been a named
defendant for 20 months. Beazer has been a named defen-
dant for over 13 months. Thus, this court is lead to the
conclusion that there is either no link betwewn the
movants and 998-1128, or plaintiff has been extremely
dilatory in his discovery. Either conclusion is fatal to
plaintiff’s case.
Further, the affidavits of Habjanic and Meilus state
that National Starch’s and Beazer’s wax-type coatings do
not include (a) perchloroethylene,* (b) nonionic surfac-
tants,” (c) [N.N.N’, N’-tetrakis (2-hydroxypropy]l)
2 Plaintiff's Answer No. 17 to Defendant Beazer’s First Set of
Interrogatories; Plaintiff’s Answer No. 7 to Defendant National
Starch’s First Set of Interrogatories.
3 Habjanic Affidavit at para. 3.
* Habjanic Affidavit at para. 7 (referring to movants’ product
820-1913); id. at para. 11 (referring to movants’ product 820-
1914); Meilus Affidavit at paras. 7 and 14 (referring to all movants’
anti-corrosion coatings).
> Habjanic Affidavit at para. 9 (referring to movants’ product
820-1913); Meilus Affidavit at para. 8 (referring to all movants’
anti-corrosion coatings).
aad Mond arta yd ina
37a
ethylenediamine] ,° (d) mixtures of aluminum paste or
zinc paste or equivalent mixtures,’ (e) aromatic hydro-
carbon resins having softening points, R and B, of 70
degrees C.-140 degrees C.,° (f) chlorinated rubber having
a combined chlorine content of at least 66%,” (g) aro-
matic hydrocarbon solvents,!® or (h) chlorinated sol-
vents.!! Plaintiff has not put forth any proof that these
affidavits are false or misleading. The only evidence
plaintiff has offered is his own affidavit. The Plaintiff
states that the ingredients of movants’ products 820-1913
and 820-1914 listed in the attachments to the Habjanic
Affidavit are accurate.!* The plaintiff then points out
that the ingredients in the movants’ products are identi-
fied by their trademark names and not their chemical
formulae.!? The complainant continues:
There are no disclosures in Attachments “A” and
“B”’ of the ingredients in the trademarked products,
their chemical formula [sic] or their percentages by
weight.
SMeilus Affidavit at para. 9 (referring to all movants’ anti-
corrosion coatings).
” Habjanic Affidavit at para. 12 (referring to movants’ products
820-1913 and 820-1914).
8Meilus Affidavit at para. 10 (referring to all movants’ anti-
corrosion coatings).
9 Habjanic Affidavit at para. 13 (referring to movants’ products
820-1913 and 820-1914); Meilus Affidavit at para. 11 (referring to
all movants’ anti-corrosion coatings).
10Meilus Affidavit at para. 13 (referring to all movants’ anti-
corrosion coatings).
II Meilus Affidavit at para. 12 (referring to all movants’ anti-
corrosion coatings).
12k aliardos Affidavit at para. 8.
13 ryid. at para. 9.
38a
Kaliardos Affidavit at para. 10. While this is true, this
does not refute the very clear statements made by Mr.
Habjanic and Mr. Meiluc. All this does is tell the court
that the plaintiff does not know these trademarked pro-
ducts’ chemistry. This bare statement does not indicate
that the trademarked products used as ingredients in the
movants’ products contain any one of the elements in
the patentee’s claims.
Elements (a) through (c) are essential for literal
infringement of Claim 1 to U.S. Patent 3,959,530. Ele-
ment (a) is essential for equivalent infringement of Claim
1 to U.S. Patent 3,959,530. Elements (d) through (h) are
essential for literal infringement of Claim 1 to USS.
Patent 4,356,036. Elements (e) and (f) are essential for
equivalent infringement of Claim 1 to U.S. Patent
4,356,036. As not all elements are present in the movants
products, patent infringement is not possible. Therefore,
summary judgment in favor of the movants is proper.
Johnston, 885 F.2d at 1578.
39a
APPENDIX C
Order Granting Partial Summary Judgment
of Non-Infringement
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
Civil Action
Case No. 88-CV-73729-DT
HON. Paul V. Gadola
NICOLAS KALIARDOS,
Plaintiff,
vs.
GENERAL MOTORS CORPORATION, BASF
CORPORATION, DAUBERT INDUSTRIES, INC.,
H.B. FULLER COMPANY, and H.B. FULLER
AUTOMOTIVE INDUSTRIES, INC.,
jointly and severally,
Defendants.
ORDER GRANTING PARTIAL
SUMMARY JUDGMENT OF NON-INFRINGEMENT
Upon stipulation of the Plaintiff Nicolas Kaliardos
(Kaliardos) and the Defendants General Motors Corpora-
tion (General Motors); BASF Corporation (BASF);
Daubert Industries, Inc. (Daubert); H.B. Fuller Com-
pany (Fuller Company); and H.B. Fuller Automotive
Products (Fuller Automotive), by and between their
respective counsel, IT IS HEREBY ORDERED:
40a
1. The BASF, Fuller Automotive, and Daubert coat-
ings do not literally infringe claims 1, 2, 3, 4, 5 and 6 of
U.S. Patent No. 3,959,530.
2. The BASF, Fuller Automotive; and Daubert coat-
ings do not infringe claims 3, 4, 5 and 6 of U.S. Patent
No. 3,959,350 under the Doctrine of Equivalents.
3. Plaintiff’s complaint with respect to infringement of
claims 3, 4, 5 and 6 of U.S. Patent No. 3,959,530 is dis-
missed with prejudice.
4. The Fuller Automotive coatings do not infringe any
of the claims of U.S. Patent No. 4,356,036 by literal
infringement or under the Doctrine of Equivalents.
5. The BASF and Daubert coatings do not literally
infringe claims 2, 3, 4 and 7 of U.S. Patent No. 4,356,-
036.
6. The BASF and Daubert coatings do not infringe
claim 7 of U.S. Patent No. 4,356,036 under the Doctrine
of Equivalents.
7. Plaintiff’s complaint of infringement of claim 7 of
U.S. Patent No. 3,356,036 is dismissed with prejudice
with respect to BASF and Daubert.
8. Plaintiff’s complaint of infringement of U.S. Patent
No.4,356,036 by Fuller Company and Fuller Automotive
is dismissed with prejudice.
9. Daubert’s coating Nox-Rust X-170 does not infringe
U.S. Patent No. 4,356,036.
Dated:10/16/92 /s/ [Ilegible]
UNITED STATES DISTRICT JUDGE
4la
SO STIPULATED:
/s/ Alex Rhodes /s/ Bernard J. Cantor
Attorney for Plaintiff Attorney for Defendants
General Motors, BASF, H.B.
Fuller Company and H.B.
Fuller Automotive Products, Inc.
/s/ John A. Artz (10/14/92)
Attorney for Defendant
Daubert Industries, Inc.
42a
APPENDIX D
General Motors Corporation Rule 29.2 Statement
STATEMENT PURSUANT TO
SUPREME COURT RULE 29.1
General Motors Corporation does not have a parent
company. Its non-wholly owned subsidiaries that have
issued shares to the public are identified below.
Publicly Traded Subsidiaries and Affiliates:
Isuzu Motors Ltd.
Suzuki Motor Corp.
Other Subsidiaries:
AC Bakony Kft.
Adela Investment Co. S.A.
AeroVironment, Inc.
AMBRAKE Corporation
Anadolu Otomotiv Sanayi VE Ticaret A.S. |
Applied Intelligent Systems, Inc.
Aralmex, S.A. de C.V.
ARINC Incorporated
Asset Leasing GmbH
| Aura S.r.1.
Autos y Maquinas del Ecuador S.A, (AYMESA)
Banque de Credit General Motors
Bujias Mexicanas, S.A. de C.V.
CAMI Automotive, Inc.
CEI Co., Ltd.
Calsonic Harrison Co., Ltd.
Carus Grundstucks-Vermietungsgesellschaft mbH & Co.
Object Kuno 65 KG
Carus Grnndstucks-Vermietungsgesellschaft mbH & Co.
Object Leo 40 KG
43a
Other Subsidiaries, continued:
Centro Tecnico Herramental, S.A. de C.V.
Cilva Holdings Plc
Cimflex Teknowledge
Coalition Undertaking Remedial Efforts, Inc.
Colonial Mortgage Service Company of California
Comau Productivity Systems, Inc.
Compagnie des Faisceaux Tunisiens International S.A.
Compania Nacional de Direcciones Automotrices, S.A.
de C.V.
Componentes Delfa, C.A.
Constructora Venezolana de Vehiculos, C.A.
Controladora General Motors, S.A. de C.V.
Convesco Vehicle Sales GmbH
DHB America Inc.
DHB-Componentes Automotivos S.A.
DRB s.a./n.v.
Daewoo Automotive Components, Ltd.
Delkor Battery Company, Ltd.
Detroit Diesel Corporation
Diavia S.r.1.
EDESA Societe Anonyme Holding
EPEC S.A.
Empresa Mixta GEMACVEN, S.A.
Freev ale Limited
G. & F. Company
GM Nigeria Limited
G.M.A.C., Financiera de Columbia S.A. Compania de
Financiamiento Comercial
General Motors Bankgesellschaft m.b.H.
General Motors Egypt, S.A.E.
General Motors France Automobiles S.A.
General Motors Hungary Automotive Distribution
Limited Liability Company (aka General Motors
Hungary (Distribution) Ltd.)
44a
Other Subsidiaries, continued:
General Motors Hungary Automotive Manufacturing
Limited Liability Company (aka General Motors
Hungary (Manufacturing) Ltd.)
General Motors Kenya Limited
Genie Mecanique Zairois, S.A.R.L.
I.K. Coach Co., Ltd.
IBC Vehicles (Distribution) Limited
IBC Vehicles Limited
ITC Inland Teknik Oto Yan Sanayi Limited Sirketi
limor Engineering, Inc.
Ilmor Engineering, Ltd.
Industries Mecaniques Maghrebines, S.A.
Industrija Delova Automobila, Kikinda
Isuzu-General Motors Australia Limited
Isuzu Motors Limited
Jinbei GM Automotive Co. Ltd.
Kabeltrommel GmbH & Co. KG
Kabelwerke Reinshagen GmbH
Kabelwerke Reinshagen Werk Berlin GmbH (aka Kabel-
werke Reinshagen Berlin Plant GmbH)
Kabelwerke Reinshagen Werk Neumarkt GmbH (aka
Kabelwerke Reinshagen Neumarkt Plant GmbH)
Macopel, S.A. de C.V.
Mecel AB
Metal Casting Technology, Inc.
Millbrook Pension Management Ltd.
National Car Rental System Inc.
New Cure, Inc.
New United Motor Manufacturing, Inc.
New Venture Gear, Inc.
Omnibus BB Transportes, S.A.
Opel-Automobilwerk Eisenach-PKW GmbH (a/k/a Opel-
AWE GmbH)
45a
Other Subsidiaries, continued:
Opel-Handler Versicherungsdienst GmbH
Opel-Wohnbau GmbH
P.T. Mesin Isuzu Indonesia
PDES, Inc.
PW-Allison Engines
Packard CTA Pty. Ltd.
Packard Electric Vas kft
Penske Transportation, Inc.
Perceptron, Inc.
Promotora de Partes Electricos Automotrices
Qual-Effic Services, Inc.
Robotic Vision Systems, Inc.
Ruedas de Aluminio, C.A.
Saab Automobile AB
Senalizacion y Accesorios del Automovil Yorka, S.L.
Shinsung Packard Company, Ltd.
Sociedad de Comercializacion Internacional Colmotores
S.A.
Societe Francaise des Amortisseurs de Carbon S.A.
Subaru-Isuzu Automotive, Inc.
Sung San Company, Ltd.
Suzuki Motor Corporation
Truck and Bus Engineering U.K., Limited
United Australian Automotive Industries Limited
Uveral S.A.
Vanguarda Componentes Automotivos, S.A.
Vauxhall Motors (Finance) Plc
View Engineering, Inc.
Volvo GM Canada Heavy Truck Corporation
Volvo GM Heavy Truck Corporation
Woodbridge Foam Deutschland, GMBH
46a
Other Subsidiaries, and Affiliates
of Electronic Data Systems Corporation:
Aristacom International, Inc.
BSS Belgique
BSS Greece
BehaviorTech, Inc.
Beijing International Information Processing Company
Limited
CAPSCO Software Canada, Ltd.
CLIOR
CLS Corporation
COGSYS Limited
Centigram Communications Corporation
China Management Systems Corporation
Comtrac Corporation
EDS Hellas
EDS-Scicon Defence Limited
Empenion Corporation
Europe Assurance Informatique
F.1.J. (France Informatique Juridique)
Federal Integrated Systems Corporation
First City Bancorporation of Texas, Inc.
GEST’HELP Huissier
GMB Belgique
Healthco Holding Corporation
Hitachi Data Systems Holding Corporation
Hospitality Franchise Systems, Inc.
Infosys
Institut des Techniques Avancees
Interpractice Systems, Inc.
Japan Systems Kabushiki Kaisha (aka Japan Systems
K.K.)
LEA GP Incorporated
MCE
47a
Other Subsidiaries, and Affiliates
of Electronic Data Systems Corporation,
continued:
Neodata Holdings, Inc.
Nippon EDS Co., Ltd. (aka Nippon EDS Kabushiki
Kaisha)
Postal Buddy Corporation
PROGICAL
Riser Foods, Inc.
Simpad, Sociedad Anonima de Capital Variable (aka
Simpad, S.A. de C.V.)
Soft-Switch, Inc.
Systems Control Technology, Inc.
Systems Technology Management Corporation
Telecommunications Data Services, Incorporated
The ASK Group, Inc.
Thomas Group, Inc.
Westcott Communications, Inc.
YLYS Informatique
Other Subsidiaries, and Affiliates of
Hughes Aircraft Company:
ACCSCO S.A.
AMRAAM International Licensing Company
American Mobile Satellite Corporation
Comlinear Corporation
ELTRO GmbH
ELEKLUFT Elecktronic-und Luftfahrtgerate GmbH
Empresa Nacional de Optica S.A.
FLIR Systems, Inc.
First Portland Technology Corp.
Guiado y Control SA
HBH Company
HESI-FTIC Environmental Sciences, Inc.
Hughes Escorts Communications Limited
48a
Other Subsidiaries, and Affiliates of
Hughes Aircraft Company,
continued:
Hughes-J VC Technology Corporation
Hughes-Kenwood RDSS, Inc.
Hughes-Pareto Research Partnership
Hughes Software Systems Private Limited
i-Logix Inc.
Interactive Entertainment, Inc.
International Electro-Optical Industry Anonim Sirketi
International Mobile Machines Corporation
Japan Communications Satellite Company, Inc.
Japan Satellite Communications Network Corporation
Microelectronics and Computer Technology Corporation
Nippon Avionics Co., Ltd.
Pacific Monolithics, Inc.
RALS (RAM Alternate Launcher System)
Satelitron S.A. de C.V.
Societe Lyonnaise d’ Informatique Boursiers
Software Productivity Consortium, Inc.
Translant, Inc.
UKADGE Systems Limited
49a
APPENDIX E
BASF Corporation Rule 29.1 Statement
BASF Corporation is a subsidiary of BASF Aktien-
gesellschaft of Ludwigshafen, Germany.
50a
APPENDIX F
H.B. Fuller Rule 29.1 Statement
H.B. FULLER AND CONSOLIDATED SUBSIDIARIES
AS OF NOVEMBER 30, 1994
H.B. Fuller Company
Branches: Indonesia, Korea, Netherlands (LPD)
H.B. Fuller Company Puerto Rico, Inc.
H.B. Fullor International Inc.
Branches: Australia, Hong Kong, Singapore
ChemEquity, Inc.
ChemEquity Communications, Inc.
F.A.1. Trading Company
Fiber-Resin Corporation
H.B. Fuller Automotive Products, Inc.
Lombard Acquisition Corporation
H.B. Fuller Automotive Technology Systems, Inc.
Foster Products Corporation
TEC Incorporated
H.B. Fuller Licensing & Financing Inc.
Alreline, Inc.
Kativo Chemical Industries, S.A.
(See listing of subsidiaries on the following pages.)
Pinturas Centroamericanas Costa Rica S.A.
Mundo de Colores Pintica, S.A.
Pinturas Ecuatorianas, S.A.
Distribuidora Americana, S.A.
Glidden Panama S.A.
Glidden Avenida Nacional, S.A.
Glidden Colon, S.A.
Glidden Chitre, S.A.
Glidden David, S.A.
Glidden Bethania, S.A.
5la
Glidden El] Dorado, S.A.
Glidden Via Espana, S.A.
Glidden Chorrera, S.A.
Fabrica Pinturas Glidden, S.A.
H.B. Fuller Austria GesmbH
H.B. Fuller Belgium N.V./S.A.
Harved Oy
H.B. Fuller GmbH, Luneburg
Karl Sager, GmbH
H.B. Fuller GmbH, Munich
Isar-Rakoll Chemie, GmbH
H.B. Fuller France S.A.
H.B. Fuller Blattmann AG
H.B. Fuller Italia s.r.1.
H.B. Fuller SICAM S.p.A.
H.B. Fuller (Jersey) Limited
H.B. Fuller Nederland B.V.
Prakoll, S.A.
H.B. Fuller Sverigo AB
H.B. Fuller Holdings Limited
H.B. Fuller U.K. Limited
H.B. Fuller Coatings Limited
H.B. Fuller Canada, Inc.
H.B. Fuller Company Australia Pty. Ltd.
H.B. Fuller (China) Adhesives Ltd.
H.B. Fuller India Private Limited
H.B. Fuller Japan Company, Ltd.
H.B. Fuller Korea Co., Ltd.
H.B.F. Adhesives (Malaysia) Sdn. Bhd.
H.B. Fuller Company (N.Z.) Ltd.
H.B. Fuller Holdings (NZ) Ltd.
H.B. Fuller Powder Coatings (NZ) Ltd.
H.B.Fuller Powder Coatings Pty. Ltd.
H.B. Fuller (Philippines), Inc.
H.B. Fuller-Realty (Philippines) Company
52a
H.B. Fuller Taiwan Company Ltd.
H.B. Fuller (Thailand) Co., Ltd.
Multi-Clean Products Pty. Ltd.
Multi-Clean (Lebanon) S.A.R.I.
H.B. Fuller Lebanon S.A.R.L.
Nippon Tilement Company, Ltd.
KATIVO CHEMICAL INDUSTRIES,
S.A. AND CONSOLIDATED SUBSIDIARIES
AS OF SEPTEMBER 30, 1994
Chemical Supply, S.A.
H.A. Fuller Argentina, S.A.
H.B. Fuller Latin America
H.B. Fuller Bolivia, Ltda.
H.B. Fuller Brasil, Ltda.
H.B. Fuller Brasil — Sul, I tda.
H.B. Fuller Chile, S.A.
H.B. Fuller Colombia, Ltda.
Kativo Costa Rica, S.A.
Kativo Comercial, S.A.
Reca Quimica, S.A.
H.B. Fuller Costa Rica, S.A.
Acrilicos de Centroamerica, S.A.
Alfombras Canon, S.A.
Analko, S.A.
Sinteticos, S.A.
Deco Tintas, S.A.
H.B. Fuller Dominicana, S.A.
H.B. Fuller Ecuador, S.A.
Inversiones Kem Supply, S.A.
Kativo de E] Salvador, S.A.
Kativo Industrial de El] Salvador, S.A.
H.B. Fuller El Salvador, S.A.
53a
Deco Tintas de El Salvador, S.A.
Norchem, Ltda.
Kativo Comercial de Guatemala, S.A.
Compania Mercantil de Pinturas
Kativo de Guatemala, S.A.
Kiosko de Pinturas, S.A.
H.B. Fuller Guatemala, S.A.
Sinteticos de Guatemala, S.A.
Punlo de Viniles, S.A.
Alfombras Canon de Guatemala, S.A.
Kativo de Honduras, S.A.
Aerosoles de Centroamenica, S.A.
Alfombras Canon, S.A.
Comercial Punto de Viniles, S.A.
Kiosko Comercial, S.A.
Kativo Comercial, S.A.
Punto de Viniles, S.A.
Kiosko de Pinturas, S.A.
Fabrica de Pinturas Surekoto de Honduras, S.A.
Servicios e Inversiones de Honduras, S.A.
Deco Tintas De Honduras, S.A.
H.B. Fuller Honduras, S.A.
Comercial Fuller, S.A.
H.B. Fuller Mexico, S.A.
Industrias Kativo de Nicaragua, S.A.
Ditribuidora Industrial y Comercial, S.A.
H.B. Fuller Nicaragua, S.A.
Chemical Supply Corporation
Kativo de Panama, S.A.
Kativo Comercial, S.A.
Colorcentro, S.A,
Fuller Istmena, S.A.
Procesamientos Contables, S.A.
Alquileres Industriales, S.A.
Alfombras Canon, S.A.
54a
Deco Tintas Comerciales, S.A.
H.B. Fuller Panama, S.A.
H.B. Fuller Comercial, S.A.
Deco Tintas de Panama, S.A.
Vigilia, S.A.
Sistema Integrados, S.A.
Chemical Supply Peruana, S.A.
H.B. Fuller Peru, S.A.
H.B. Fuller Uruguay, S.A.
H.B. Fuller Venezuela, S.A.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.