Opposition Brief — Pirkle v. Ogontz Controls Co.

No. 95-45 |

CLERK

In The

Supreme Court of the United States

October Term, 1995

4

FRED L. PIRKLE and THEKM-OMEGA-TECH, INC.,

Petitioners,

Vv.

OGONTZ CONTROLS COMPANY and

THOMAS M. KENNY,

Respondents.

+

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

,

-

BRIEF IN OPPOSITION

¢

Douctas L. Overtoom

Counsel of Record

Larry L. TurRNeR

Howarp J. BASHMAN

MontTGomEry, McCRACKEN,

Waxxer & RHOADS

Three Parkway — 20th Floor

Philadelphia, PA 19102

(215) 7200

Counsel for Respondents

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QUESTIONS PRESENTED FOR REVIEW

I. Whether this is an appropriate case for this Court

to decide if patent claim interpretation is a question of

fact for a jury or a question of law for the court given

that: (a) a jury, a district court judge and the Federal

Circuit have interpreted the patent claims at issue in this

case and found infringement, and (b) petitioners waived

the argument that claim interpretation is a question of

fact for the jury by arguing in both the trial court and on

appeal to the Federal Circuit that claim interpretation is

an issue of law to be decided by the court?

II. Whether the Seventh Amendment is satisfied by

two jury trials regarding the issues of validity and

infringement or whether that provision of the Constitu-

tion requires additional jury trials to be held until a

verdict in petitioners’ favor is obtained?

Il]. Whether this Court should grant certiorari to

entertain petitioners’ claim - which was rejected by the

Federal Circuit in banc — that a panel of Federal Circuit

judges used summary affirmance to avoid application of

binding Federal Circuit precedent?

ii

PARTIES TO THE PROCEEDINGS

The petitioners in this proceeding are Fred L. Pirkle

and Therm-Omega-Tech, Inc.

Respondents are Ogontz Corporation (formerly

Ogontz Controls Company) and Thomas M. Kenny. Pur-

suant to Rule 29.1, Ogontz Corporation states that it has

no parent or subsidiary companies.

iii

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED FOR REVIEW........... i

PARTIES TO THE PROCEEDINGS................. ii

Sime GO PAST IMATION . 0.5... 550. ocnee ee. iv

STATEMENT OF THE CASR....................... 2

SUMMARY OF THE ARGUMENT ................. 8

OPI Bio hae a oy gc, ek 10

I. THIS IS NOT AN APPROPRIATE CASE FOR THIS

COURT TO DECIDE IF THE SEVENTH AMEND-

MENT REQUIRES QUESTIONS RELATING TO

THE MEANING OF PATENT CLAIM TERMS TO

E> SURE OED BOD A POUR, coo coo oc ee cca 10

A. This Is Not An Appropriate Case To Exam-

ine Whether The Judge Or The Jury Should

Interpret The Claims Of A Patent Because

Both Did So In This Case and Found

WENN. os Set oe cee cos kc kcs...... 11

B. T-O-T Waived The Present Argument By

Failing To Raise It Below.................. 12

II. T-O-T’S REQUEST TO SET ASIDE THE JURY

VERDICTS ON PATENT INFRINGEMENT AND

ON THE AFFIRMATIVE DEFENSE OF PATENT

INVALIDITY DO NOT WARRANT ADDI-

TIONAL APPELLATE REVIEW BY THIS

CIS eI 3h wks cE ss Cebit eas boa 14

Ill. A COURT OF APPEALS IS NOT REQUIRED TO

ISSUE A WRITTEN DECISION WHEN AFFIRM-

ING A JUDGMENT OF A DISTRICT COURT... 19

A. The Merits Panel Did Not Conspire To Use

Federal Circuit Rule 36 To Avoid Applica-

tion Of The Markman Decision............ 19

GI Oe oh dies ives 5 <u San ese ee bec ueks: 21

iv

TABLE OF AUTHORITIES

Page

CASES

Atlantic & Gulf Stevedores, Inc. v. Ellerman Lines

Lid., 369 US: S06 CORR) cs 6. csccewev eset eceseezes 15

Fraige v. American-National Watermattress Corp., 996

F.2d 295: Cred, Cie. Dia cis cine bed bo Sain gegersknn 17

Markman v. Westview Instruments, Inc., 52 F.3d 967

(Fed. Cir. 1995) (in banc), petition for cert. filed,

63 U.S.L.W. 2663 (U.S. Jul. 03, 1995) (No. 95-26)

BP Pe IRE EF Ys FET at pe 9. 44, 12. 33;.19, 26

Structural Rubber Products Co. v. Park Rubber Co.,

GGG Pet 132R Ck. Cae SOG, bs oes oes ew oi ts «: 18

Structural Rubber Products Co. v. Park Rubber Co.,

748 F208 Fe red. Coe TS ss a eG 17, 18

Structural Rubber Products Co. v. Park Rubber Co.,

1986 WL 12326 (N.D. Ill. Oct. 24, 1986)........... 18

Taylor v. McKeithen, 407 U.S. 191 (1972) (per cur-

SOD SSS a eo EWice REE 20 aa Fe ee a oe 19, 20

United States v. Baynes, 548 F.2d 481 (3d Cir. 1977)

COE CORIIIR ES 5 os oss sc aie es OOS Kae 19

Witco Chemical Corp. v. Peachtree Doors, Inc., 787

F.2d 1545 (Fed. Cir.), cert. dismissed, 479 U.S. 877

CIO) 35 BSE) fe EC eee 15, 16, 17

No. 95-45

*

In The

Supreme Court of the United States

October Term, 1995

4

FRED L. PIRKLE and THERM-OMEGA-TECH, INC.,

Petitioners,

Vv.

OGONTZ CONTROLS COMPANY and

THOMAS M. KENNY,

Respondents.

¢

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Federal Circuit

o

BRIEF IN OPPOSITION

¢

Respondents, Ogontz Corporation (formerly Ogontz

Controls Company) and Thomas M. Kenny (collectively

“Ogontz”), respectfully request that this Honorable Court

deny the petition for a writ of certiorari to review the

Judgment Order of the United States Court of Appeals for

the Federal Circuit, which summarily affirmed, without

opinion, the district court’s final judgment.

¢

STATEMENT OF THE CASE

In a Judgment Order entered April 6, 1995, see App.

1, a three-judge panel of the United States Court of

Appeals for the Federal Circuit summarily affirmed,

without opinion, the final judgment of the United States

District Court for the Eastern District of Pennsylvania

awarding $216,846.00 in favor of Ogontz in a patent

infringement action brought against Fred L. Pirkle and

Therm-Omega-Tech, Inc. See App. 3.

In their petition for a writ of certiorari, Fred L. Pirkle

and Therm-Omega-Tech, Inc. (where appropriate collec-

tively referred to as “T-O-T”) seek review of the district

court’s final judgment of patent infringement. In addi-

tion, T-O-T requests in a footnote that the Federal Cir- |

cuit’s Judgment Order be vacated as to all “other issues”

raised in T-O-T’s appeal to the Federal Circuit. Petition at

22 n.13. These “other issues” are neither enumerated nor

identified. Id.

The facts, viewed in the light most favorable to

Ogontz, the verdict winner, are as follows.

Ogontz has designed and manufactured freeze pro-

tection devices for the railroad industry for over 40 years.

(Rec.2284).1 Ogontz was founded by Thomas J. Kenny, Sr.

and is now run by his son, Thomas M. Kenny. (Rec.2283;

2288-89.)

In January 1979, Fred L. Pirkle was hired primarily as

a salesperson for Ogontz. (Rec.3530, 3872-3873.) At that

1 The appendix filed in the United States Court of Appeals

for the Federal Circuit is cited herein as “Rec.”

ee |

time Pirkle had some experience in mechanical engineer-

ing. (Rec.3530.) Pirkle entered into an “Employment

Agreement” establishing his obligations to render and

disclose to Ogontz all inventions or improvements made

during his employment and to protect Ogontz’ trade

secrets. (Rec.3872-73.)

In 1981, Pirkle became Ogontz’ Product Development

Manager. As Product Development Manager, Pirkle’s

specific responsibility was to assist in the development of

concepts and prototypes to be tested, engineered and

produced by Ogontz. (Rec.5429.) Ogontz provided Pirkle

with engineering and technical assistance, machine tools

and a shop to use while working for Ogontz. Id. Pirkle set

about to improve Ogontz’ freeze protection line, includ-

ing a valve known as the Harasewych valve. Id. During

the winter of 1981-82, Pirkle told William J. Doyle, then

Ogontz’ Executive Vice President, that he had conceived

a “revolutionary” idea to modify the Harasewych valve

so as to provide a new snap-acting mechanism for freeze

protection. (Rec.5430-5431.)

In May 1982, Ogontz, working in conjunction with its

largest customer, Consolidated Rail Corporation (“Con-

rail”) (Rec.2287), sponsored a “cold room” test for freeze

protection valves. (Rec.5431; 2290-91.) During the cold-

room test, Ogontz engineers developed two new valves

by modifying existing Ogontz valves. These valves

became known as the SA and LA valves. (Rec.5432;

2292-93.) Both the SA and the LA were used extensively

by Conrail.

One evening after the cold-room test, Pirkle showed

Ogontz’ Vice President for Marketing and Sales, Norm

Cooper, a prototype of a modification to the Harasewych

valve, described by Pirkle as a snap-acting valve.

(Rec.5432-33.) Cooper asked Pirkle what he intended to

do with the device. Pirkle told Cooper that he would not

show it to Ogontz or Kenny “until he [Kenny] came

around,” because he did not want Kenny “to make any

more money.” (Rec.5433.) Pirkle also said that he would

gain nothing by showing the prototype to Kenny. Id. The

valve examined by Cooper was the MV-1, which Pirkle

invented during his employment by Ogontz. (Rec.5440.)

On October 9, 1982, Pirkle’s employment at Ogontz

was terminated. Shortly thereafter, Pirkle patented and

used the stolen MV-1 invention to start Controls Consult-

ing Co., which later became T-O-T. (Rec.3531.) By Novem-

ber 1982, Pirkle was soliciting orders from Ogontz’

leading customer, Conrail, for the MV-1 valve. (Rec.5434;

3531.) On December 8, 1982, Pirkle began selling the

MV-1 valve to Conrail. Id. On January 25, 1983, Pirkle

applied for a patent on the valve mechanism embodied

by the MV-1. Id. United States Patent No. 4,460,007 (the

‘007 patent) issued from that application on July 17, 1984.

(Rec.118; 4074.)

In May 1983, upon learning of Pirkle’s theft of its

intellectual property, Ogontz began integrating the tech-

nology that Pirkle had stolen into its own freeze protec-

tion products. (Rec.118; 3644.) Ogontz named the product

the QR-E. (Rec.3644; 3682.) In September 1983, Ogontz

filed suit against Pirkle in the Chester County, Pennsylva-

nia, Court of Common Pleas for breach of contract and

misappropriation of the MV-1. (Rec.119.) The Chester

County court found that Ogontz was the sole and exclu-

sive owner of the technology claimed in the ‘007 patent

ici licen ade:

and ordered Pirkle to assign the patent to Ogontz.

(Rec.5420-24.) Three years of appeals in the state courts

followed. (Rec.5398.) The state appellate courts rejected

every legal argument pursued by Pirkle. (Rec.5391-98.)

On September 5, 1990, the Pennsylvania Supreme Court

denied Pirkle’s Petition for Allowance of Appeal.

(Rec.5398.) Thus, there exists a final, unreviewable and

binding determination that Ogontz is the owner of the

‘007 patent and its subject matter.

The day after the state court judgment ordering T-O-T to

remove the MV-1 valve from the market became final, T-O-T

introduced the “Guru plug.” (Rec.2457; 2302.) Ogontz then

notified T-O-T that the Guru plug also infringed the ‘007.

(Rec.2306.)

The case now before this Court was initiated by T-O-T in

an attempt to subvert Ogontz’ successful litigation in the

state court system. T-O-T’s federal suit, along with asserting

a host of other groundless causes of action, disputed owner-

ship of United States Patent Nos. 4,460,007 and 4,878,512 (the

‘512 patent)? and the subject matter of those patents.

(Rec.17-36; 37-46; 2047.) The ’512 patent is a “continuation”

of the application which issued as the ‘007 patent and there-

fore claims the same invention, or “subject matter,” as the

‘007 patent. (Rec.2308; 4212 et seq.)

In July 1992, the district court granted Ogontz’

motion for summary judgment on all of T-O-T’s claims

except for certain tort claims based on communications

2 Ownership of the ‘512 patent had not been at issue in the

state court litigation.

that Ogontz made informing customers and potential cus-

tomers of Ogontz’ rights to the inventions and patents in

question and the progress of Ogontz’ efforts through the

courts to enforce its rights. (Rec.17-36; 37-46.) The district

court denied Ogontz’ motion as to these claims out of an

“abundance of caution” (Rec.2050) to give T-O-T an addi-

tional opportunity to produce evidence in support of its

allegations. (Rec.2050-51.)

The first of two jury trials began on November 15,

1993 on T-O-T’s remaining tort claims, Ogontz’ patent

infringement counterclaims, and T-O-T’s affirmative

defenses to those counterclaims. The district court held

the evidence produced at trial “insufficient for a reason-

able jury to find a violation . . . under Pennsylvania law”

(Rec.2047) on T-O-T’s tort claims because Ogontz’ letters

were “essentially true” (Rec.2051) and Ogontz had “a

privilege to advise competitors and persons who might

deal in that property of [Ogontz’] interests.” (Rec.2047.)

The jury returned a verdict in favor of Ogontz reject-

ing T-O-T’s affirmative defenses of patent validity and

enforceability. (Rec.5546-47; 5551.) The jury also awarded

damages to Ogontz for T-O-T’s infringement of the ‘007

patent through the sale of the MV-1 valve. (Rec.5548.) The

jury was deadlocked as to the question of literal infringe-

ment by T-O-T’s Guru plugs. (Rec.5549-50; 5552-53.)

The retrial on the issue of infringement by T-O-T’s

Guru plugs commenced on April 11, 1994. On April 28,

1994, the jury found that the 4H-R Guru plug in both the

“T” and “PAK” configurations, the 4H Guru plug in the

“PAK” configuration and the original Guru plug in the

“PAK” configuration all infringed claims 4, 9 and 10 of

the ‘007 patent. (Rec.5555-57.) The jury also awarded

Ogentz damages for its lost profits due to the infringe-

~ment of the ‘007 patent by T-O-T. Id.

The trial court denied T-O-T’s post-trial renewal of

its motions for judgment as a matter of law and for a new

trial. (Rec.16.) Thereafter, T-O-T appealed to the United

States Court of Appeals for the Federal Circuit.

In its opening brief on appeal to the Federal Circuit,

T-O-T raised eight separate issues. Except for the cryptic

and oblique reference to “other issues” on page 22 of the

present petition, T-O-T has in this Court abandoned all

but one of those issues. Of the three questions presented

in the petition before this Court, only Question Two was

among the questions presented for review to the Federal

Circuit.

On April 5, 1995, a three-judge panel of the United

States Court of Appeals for the Federal Circuit heard oral

argument in the appeal. The Federal Circuit allocated 15

minutes of argument time per side, and during the argu-

ment the panel granted additional time to counsel for

both sides.

On April 6, 1995, the Federal Circuit entered a judg-

ment order affirming, in its entirety, the district court’s

final judgment. See App. 1. The judgment order states, in

relevant part:

3 Petitioners worded the first question presented to this

Court to give the appearance that they had raised it below;

however, in truth they argued the opposite position from the

position they now espouse.

This CAUSE having been heard and consid-

ered it is ORDERED and ADJUDGED:

AFFIRMED.

Id.

On April 20, 1995, T-O-T filed a petition for rehearing

and suggestion for rehearing in banc. The Federal Circuit

ordered Ogontz to file an answer to the petition for

rehearing together with a sufficient number of copies of

the answer to permit its distribution to the entire in banc

court. A copy of Ogontz’ answer to the petition for

rehearing is set forth in the appendix to this brief in

opposition. See Resp. App. 1-15.

In an order dated May 24, 1995, the Federal Circuit

denied T-O-T’s petition for rehearing and declined its

suggestion for rehearing in banc. See App. at 49-50. On

May 30, 1995, T-O-T filed in the Federal Circuit a motion

seeking a stay of that court’s mandate. On June 1, 1995,

Ogontz filed a response opposing the motion for a stay.

On June 12, 1995, the Federal Circuit issued an order

denying T-O-T’s motion for a stay of the mandate. The

Federal Circuit’s mandate issued on June 19, 1995.

On July 6, 1995, T-O-T filed its petition for a writ of

certiorari in this Court.

SUMMARY OF THE ARGUMENT

This Honorable Court should deny T-O-T’s petition

for a writ of certiorari.

With respect to the first question presented by peti-

tioners, whether the Seventh Amendment requires claim

clade

interpretation to be submitted as a question of fact to the

jury or to be determined as a matter of law by the court,

this is not an appropriate case to examine this question

for two reasons. First, the question is moot because here

both a jury and judges exercising de novo review have

concluded that T-O-T is liable for patent infringement.

Second, petitioners did not argue on appeal to the Federal

Circuit or in their post trial motions that the Seventh

Amendment requires the issue of claim interpretation to

be submitted to the jury, but rather argued that claim

interpretation is a matter of law subject to de novo review

by the court on appeal. It was only after the Federal

Circuit Court of Appeals subjected the claims to de novo

review and affirmed the judgment of the district court

that petitioners, then realizing they had lost under both

standards, seized upon their current argument. Peti-

tioners have waived their current argument not only by

failing to raise it at the appropriate time below, but also

by actively arguing against it.

With respect to petitioners’ second question involving

the scope of the Seventh Amendment, the Seventh Amend-

ment does not require that issues of infringement and val-

idity be decided by the same jury because those issues are

not indistinguishably interwoven; rather, they are separate

and distinct considerations that may be decided separately

by different juries. Moreover, this is no longer a question of

importance because the Federal Circuit in its recent in banc

ruling in Markman v. Westview Instruments, Inc., 52 F.3d 967

(Fed. Cir. 1995) (in banc), petition for cert. filed, 63 U.S.L.W.

2663 (U.S. Jul. 03, 1995) (No. 95-26), held that the court, and

not the jury, should decide the meaning of a patent claim as

a matter of law. Thus, there is no risk today that two juries

10

might come to differing conclusions as to the meaning of a

single patent claim. Therefore, this question will not arise

again in the future.

Petitioners’ third question for review regarding the

Federal Circuit’s failure to produce a written opinion

regarding its decision subjects this Court to argument

unsupported by rule, case or statute. Contrary to peti-

tioners argument, a court of appeals is not required to

render a written opinion whenever it affirms a district

court’s judgment. Indeed, this question has already been

answered by this Court. The answer is no.

4

ARGUMENT

I. THIS IS NOT AN APPROPRIATE CASE FOR THIS

COURT TO DECIDE IF THE SEVENTH AMEND-

MENT REQUIRES QUESTIONS RELATING TO

THE MEANING OF PATENT CLAIM TERMS TO BE

SUBMITTED TO A JURY

T-O-T contends in its first question presented for

review that the Seventh Amendment requires that ques-

tions regarding the meaning of patent claim terms must

be submitted to the jury when extrinsic evidence raises a

genuine dispute concerning the meaning of those terms.

T-O-T further argues that there is “no patent-related issue

of greater national importance or pervasive effect than

the issue presented by this case concerning the command

of the Seventh Amendment regarding the proper roles of

judge and jury vis-a-vis patent claim interpretation.” Peti-

tion at 9. T-O-T’s argument, however, is moot and irrele-

vant because both a jury, a district court judge, and the

11

Federal Circuit have interpreted the patent claims at issue

and have all come to the conclusion that the patent in

question is infringed by T-O-T’s Guru plugs. They all

concluded that a finding of infringement was warranted.

Moreover, T-O-T argued in its post trial motions and on

appeal to the Federal Circuit that claim interpretation

presents a question of law for the court to decide. T-O-T

waived any argument to the contrary by failing to

advance it below.

A. This Is Not An Appropriate Case For This

Court To Examine Whether The Judge Or The

Jury Should Interpret The Claims Of A Patent

Because Both Did So In This Case And Found

Infringement

The judgment entered by the district court in this

case must stand whether it is believed that a judge or a

jury, or a combination of both, should determine the

meaning of patent claims.

Here, the jury interpreted the patent claims in this

case and found that T-O-T infringed the ‘007 patent.

Therefore, Ogontz’ victory would not be affected if patent

claim interpretation is a jury question.

On the other hand, if patent claim interpretation is a

matter of law exclusively for the court and subject to de

novo review, as the Federal Circuit’s in banc decision in

Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.

Cir. 1995) (in banc), petition for cert. filed, 63 U.S.L.W. 2663

(U.S. Jul. 03, 1995) (No. 95-26), states, again Ogontz’

victory remains unaffected. Here, both the district court

and the court of appeals have reviewed and interpreted

12

the claims and found that the language of the claims, as

construed by them, supports as a matter of law the jury’s

finding of infringement. See App. at 1 and 49-50. There-

fore, Ogontz’ victory would not be affected if claim inter-

pretation is a question of law.

The present petition is an argument for review of

Markman, not the case at hand. As Ogontz has shown,

however, no matter what disposition is made of the peti-

tion for certiorari filed in Markman, Ogontz’ victory over

T-O-T will not be affected.

In this suit, a jury, a district court judge and a merits

panel of the Federal Circuit have interpreted the patent

claims at issue and concluded that those claims are

infringed by T-O-T’s products. At some point petitioners

must accept defeat.

B. T-O-T Waived The Present Argument By Failing

To Raise It Below

On post trial motions before the district court and on

motions before the court of appeals, T-O-T argued that

claim construction is a question of law for the court. See,

e.g., Counterclaim Defendants’ Post-Trial Renewal of

Their Motion For Judgment as a Matter of Law On The

Counterclaim In Civil Action No. 86-3374, Or In The

Alternative, Motion For a New Trial, at 4; Brief for Appel-

lants at 33; Appellants Petition for Rehearing at 2. T-O-T

argued to the Federal Circuit panel that patent claim

construction was a matter of law, and that the issue

would soon be decided by the Federal Circuit in banc in

—————E————eEeEEeEeeeEeerereeeoereereOw

13

Markman.‘ Id. The decision in Markman was released on

April 5, 1995, the day before the Federal Circuit ruled on

T-O-T’s appeal.

After the Markman decision was released, holding (as

T-O-T had argued) that claim interpretation was a matter

of law, T-O-T moved for a rehearing in banc of the pre-

sent case by the Federal Circuit. The principal support for

its arguments was the decision in Markman, which T-O-T

hailed as a vindication of its position that claim inter-

pretation is a question of law. T-O-T argued that its loss

on appeal before the merits panel was obviously the

result of a clerical error or a conspiracy between the

Judges on the panel to ignore the decision in Markman

and implement their own personal view of what the law

should be. Appellants’ Petition for Rehearing at 3 and 6.

Ogontz explained in its answer to T-O-T’s petition for

rehearing that, in accordance with Markman, the panel

had properly exercised its “power and obligation to con-

strue as a matter of law the meaning of language used in

the patent claim.” Answer to Petition for Rehearing at 4,

quoting Markman, 52 F.3d at 979. The active judges of the

Federal Circuit rejected T-O-T’s arguments by rejecting

T-O-T’s suggestion for rehearing in banc.

Now, after its arguments were rejected by the entire

Federal Circuit, T-O-T attempts to argue a position com-

pletely contrary to what it has argued to this point. For

the first time, T-O-T argues that the Seventh Amendment

4 Similarly, T-O-T also argued before the district court in its

post trial motions that patent claim construction was a matter of

law.

14

requires a jury to interpret patent claims when extrinsic

evidence raises a dispute concerning their meaning.

Under the decisional law of this Court, T-O-T has

forever waived the right to request a jury to interpret the

patent claims of the ‘007 patent, or to raise that issue

before this Court. In Yakus v. United States, 321 U.S. 414,

444 (1944), this Court stated that “[n]o procedural princi-

pal is more familiar to this Court than that a constitu-

tional right may be forfeited in criminal as well as civil

cases by the failure to make timely assertion of the right

before a tribunal having jurisdiction to.determine it.” In

this case, T-O-T not only failed to assert the right it now

attempts to argue, but it affirmatively argued against the

very existence of that right.

In light of the foregoing, this Court should not con-

sider T-O-T’s argument that the Seventh Amendment

requires a jury to interpret the meaning of patent claims

where extrinsic evidence exists. Not only is T-O-T’s argu-

ment disingenuous in light of its arguments before the

district court and Federal Circuit, but it must also be

considered waived by T-O-T’s failure to raise it at any

prior time during the appeal.

For all these reasons, this Court should reject T-O-T’s

first ground for certiorari.

II. T-O-T’S REQUEST TO SET ASIDE THE JURY VER- |

DICTS ON PATENT INFRINGEMENT AND ON |

THE AFFIRMATIVE DEFENSE OF PATENT |

INVALIDITY DO NOT WARRANT ADDITIONAL

APPELLATE REVIEW BY THIS COURT

T-O-T also requests this Honorable Court to grant its

petition for a writ of certiorari based upon its argument

—————————————————

15

that the issues of patent validity and infringement were

allegedly inextricably intertwined and should have been

tried before the same jury. T-O-T argues that the jury

verdicts against it should not stand under the “no reex-

amination of facts” clause of the Seventh Amendment.®

Petition at 15. However, T-O-T offers no legitimate reason

for setting aside the jury verdicts on the issues of validity

and infringement, which were entered upon full and fair

jury trials.

Contrary to T-O-T’s argument, Ogontz’ rights under

the Seventh Amendment would be violated by setting

aside the jury verdicts. Unless there is an unavoidable

factual basis for concluding that inconsistent verdicts

have been reached, the Seventh Amendment commands

that the courts must presume that there is no inconsis-

tency. See, e.g., Atlantic & Gulf Stevedores, Inc. v. Ellerman

Lines Ltd., 369 U.S. 355, 364 (1962) (where there is a view

of the case that makes the jury’s answers to special inter-

rogatories consistent, they must be resolved that way).

Here, there is no inconsistency between the jury ver-

dicts. T-O-T has offered nothing but speculation that the

second jury verdict might be inconsistent with the first.

T-O-T’s claim that the Federal Circuit’s opinion in Witco

> T-O-T admitted in its petition for rehearing to the Federal

Circuit that “the Markham [sic] decision attenuates the constitu-

tional magnitude of the error” that allegedly resulted from hav-

ing different juries return verdicts on validity and infringement.

Petition for Rehearing at 8. Indeed, under Markman claim inter-

pretation is not even a function of the jury. Therefore, T-O-T’s

second question will never arise again, and there is conse-

quently no need for this Court to spend its limited judicial

resources reviewing the issue.

16

Chemical Corp. v. Peachtree Doors, Inc., 787 F.2d 1545 (Fed.

Cir.), cert. dismissed, 479 U.S. 877 (1986), supports its

position was considered and rejected by the Federal Cir-

cuit.®

Moreover, to the extent that the Federal Circuit in

Witco expressed any views as to the interconnectedness of

the issues of an invalidity defense and claim construction,

its reasoning was clearly and carefully restricted to the

record in that case. The Federal Circuit simply refused to

construe Witco as a sweeping edict that these issues may

never properly be decided by separate juries.”

6 The actual holding of Witco was that the trial court abused

its discretion when it coerced a deadlocked jury into reaching a

verdict on infringement. See 787 F.2d at 1548-49. This clearly did

not occur in the present case. Here the district court was exceed-

ingly sensitive to the jury’s important role, and excused the first

jury — without objection by either party — after only one day of

deliberations. Before concluding its deliberations the first jury

reached a verdict, by special interrogatories, on the affirmative

defenses of validity and unenforceability. (Rec. 5546-47; 5551;

2053-54.) As explained above, the Seventh Amendment does not

permit this verdict to be set aside absent compelling evidence

that it was erroneous. Such evidence is lacking here.

7 The actual language of the Witco opinion reads:

Furthermore, it is inappropriate, in light of the evidence

presented and arguments made at this trial, to have one

jury return a verdict on the validity, enforceability

and contract questions while leaving the infringe-

ment questions to a second jury. We reached this con-

clusion only after considering the totality of the

circumstances and by answering, “How may the ends

of justice be served?” [Citations omitted] . . . Here the

arguments against infringement are indistinguisha-

bly woven with the factual underpinnings of the

i siaeaeeianeinaiainiaieiiiaaiaiaaiieiiaiiil

17

It is well-settled within the Federal Circuit that the

issues of validity and infringement may be decided by

separate juries. For example, in Fraige v. American-

National Watermattress Corp., 996 F.2d 295 (Fed. Cir. 1993),

a jury returned special verdicts finding infringement and

invalidity due to anticipation and obviousness. The

appeals court left the special verdict on infringement

intact, but remanded for a new trial limited to the issue of

validity, thus requiring two different juries to consider

the issues of infringement and validity. Fraige, 996 F.2d at

300.

In Structural Rubber Products Co. v. Park Rubber Co.,

749 F.2d 707, 720 (Fed. Cir. 1984), the Federal Circuit,

discussing the Seventh Amendment, noted that “[t]o aid

comprehension, complex cases have been tried a step at a

time, receiving the jury’s answer to one phase of a case,

and only then continuing to the next.” The court reiter-

ated its holding that a trial court “may ask for a general

answer on one or more specific legal issues.” Structural

Rubber, 749 F.2d at 720. In the initial Structural Rubber

trial, a jury found that devices made by Park Rubber Co.

infringed Structural’s patents but that the patents them-

selves were invalid. On appeal the Federal Circuit

reversed the judgment as to invalidity only and

validity and enforceability determinations and the

subject matter of the contract.

787 F.2d at 1549 (emphasis added).

Certainly in this case, where the district court and the Fed-

eral Circuit agree completely with the jury’s findings that the

‘007 patent is both infringed and not invalid, the “ends of jus-

tice” are best served by denying review of T-O-T’s second

ground for certiorari. (Rec.11; 5546-47.)

18

remanded for further proceedings. Structural Rubber, 749

F.2d at 724. A second jury trial was held limited to the

issue of invalidity. Structural Rubber Products Co. v. Park

Rubber Co., 1986 WL 12326 (N.D. Ill. Oct. 24, 1986). At the

second trial the new jury found the patent claims valid

and the trial court granted Structural’s request for a

permanent injunction against Park. The Federal Circuit

affirmed the judgment following the second trial without

published opinion. Structural Rubber Products Co. v. Park

Rubber Co., 854 F.2d 1328 (Fed. Cir. 1988). Thus, it is clear

that validity and infringement may be considered by two

different juries.

Because the only authorities identified by T-O-T are

limited to determinations made upon the specific argu-

ments and evidence presented at the trial of other cases;

because T-O-T has identified no evidence or argument

presented at the trial of this case that would justify setting

aside the jury verdict at issue here; because the verdict on

validity was reached on special interrogatories pursuant

to Federal Rule of Civil Procedure 49; because the ver-

dicts are in no way inconsistent with each other; because

the trial judge, who heard the evidence at both trials,

reviewed the verdicts on post trial motions; because the

merits panel of the Federal Circuit made a de novo

review of the patent claims and affirmed the judgment of

the trial court; because the Federal Circuit considered and

rejected the present argument in its refusal to grant

rehearing in banc; and because the Seventh Amendment

requires that the verdicts be retained unless it is virtually

impossible to make sense of the verdicts as returned, the

rational answer in this case to the question “how may the

19

ends of justice be served” is to deny T-O-T’s second

ground for certiorari.

Ill. A COURT OF APPEALS IS NOT REQUIRED TO

ISSUE A WRITTEN DECISION WHEN AFFIRM-

ING A JUDGMENT OF A DISTRICT COURT

A. The Merits Panel Did Not Conspire To Use

Federal Circuit Rule 36 To Avoid Application

Of The Markman Decision

In the third question presented for review, T-O-T asks

this Court to hold that the entry of a summary affirmance

of the trial court’s judgment “denies the appellants their

statutorily granted right of appeal.” Petition at i. T-O-T

further argues, in essence, that the use of Federal Circuit

Rule 36 by the judges implies that the judges of the

United States Federal Circuit Court are involved in a

conspiracy against T-O-T.

T-O-T’s argument mistakes the absence of a written

decision for a lack of appellate review. The use of a

judgment order does not indicate that an appeal is receiv-

ing less than close appellate scrutiny. See Taylor v.

McKeithen, 407 U.S. 191, 194 n. 4 (1972) (per curiam);

United States v. Baynes, 548 F.2d 481, 482-84 (3d Cir. 1977)

(per curiam) (rejecting due process challenge to the affir-

mance of a criminal conviction by judgment order).

The Honorable Judges Pauline Newman and Randall

Rader and Senior Judge Byron Skelton read and consid-

ered briefs totaling over 125 pages. They gave each party

a full opportunity to argue the issues raised on appeal.

20

Indeed, each party was given extra time for oral argu-

ment. Based on the briefs and arguments, the Panel deter-

mined that T-O-T’s appeal was without merit.

The appellate review T-O-T received from the Federal

Circuit did not end with the three-judge panel assigned

to their appeal. T-O-T filed a petition for rehearing and

suggestion for rehearing in banc. The Federal Circuit

ordered Ogontz to file an answer for distribution to the

entire in banc court. After reviewing T-O-T’s petition and

Ogontz’ answer thereto, none of the fourteen active

judges on the Federal Circuit noted his or her dissent

from the denial of rehearing in banc. See App. 49-50.

Indeed, if any of the other judges of the Federal Circuit

had believed the merits panel had used Federal Circuit

Rule 36 to avoid application of the Markman decision,

they certainly would have voted to rehear the appeal in

banc. Their refusal to do so clearly illustrates that they

believed the panel properly applied the precedents of the

Federal Circuit.8 While T-O-T is no doubt disappointed

with the outcome of its appeal, the appeal received suffi-

cient appellate review.

The rule of law that T-O-T seeks this Court to

announce is contrary to this Court’s decisions and has no

basis in reason. For example, in Taylor, 407 U.S. at 194 n.4,

this Court stated that:

We, of course, agree that the courts of appeals

should have wide latitude in their decisions of

8 For additional explanation of this point, see Answer of

Appellees to Appellants’ Petition for Rehearing In Banc. Resp.

App. at 1-15.

21

whether or how to write opinions. That is espe-

cially true with respect to summary affirmances.

The consequences of the rule T-O-T would have the

Court adopt would be far-ranging. The courts of appeal

would be required to issue written decisions on every

appeal, wasting limited and precious judicial resources

on cases the panel finds unworthy of special note.

For these reasons, this Court should reject T-O-T’s

third ground for certiorari.

¢

CONCLUSION

For the foregoing reasons, Ogontz respectfully

requests that this Court deny the petition for a writ of

certiorari.

Respectfully submitted,

Douctas L. OvERTOOM

Counsel of Record

Larry L. TURNER

Howarp J. BASHMAN

MontTGOMERY, MCCRACKEN,

WALKER & RHOADS

Three Parkway —- 20th Floor

Philadelphia, PA 19102

(215) 665-7200

Counsel for Respondents

Resp. App. 1

ANSWER OF APPELLEES TO APPELLANTS’

PETITION FOR REHEARING WITH

SUGGESTION FOR REHEARING IN BANC

UNITED STATES COURT OF APPEALS

FOR THE FEDERAL CIRCUIT

Appeal No. 94-1454

FRED L. PIRKLE and

THERM-OMEGA-TECH, INC.,

Plaintiffs-Appellants,

v.

OGONTZ CONTROLS COMPANY

and THOMAS M. KENNY,

Defendants-Appellees.

Appeal from decisions of the United States District Court

for the Eastern District of Pennsylvania, in Civil Action

Nos. 86-3374 and 90-2430, entered May 19, 1994, July 8,

1994 and July 28, 1994, Hon. Clifford Scott Green, Senior

District Judge

Douglas L. Overtoom

Montgomery, McCracken,

Walker & Rhoads

Three Parkway, 20th Floor

Philadelphia, PA 19102

Attorney for Appellees

Larry L. Turner

Howard J. Bashman

OF COUNSEL

Resp. App. 2

UNITED STATES COURT OF APPEALS FOR THE

FEDERAL COURT

Pirkle v. Ogontz Controls

No. 94-1454

CERTIFICATE OF INTEREST

Counsel for the appellee, Ogontz Corporation (for-

merly Ogontz Controls) and Thomas M. Kenny, certifies

the following:

1. The full name of every party or amicus repre-

sented by me is:

(a) Ogontz Corporation

(b) Thomas M. Kenny

2. The name of the real party in interest (if the party

named in the caption is not the real party in interest)

represented by me is:

N/A

3. The parent companies, subsidiaries (except

wholly-owned subsidiaries), and affiliates that have

issued shares to the public, of the party or amicus curiae

represented by me are:

None (see also attached disclosure statement).

4. The names of all law firms and partners or associ-

ates that appeared for the party or amicus now repre-

sented by me in the trial court or agency or are expected

to appear in this court are:

(a) Montgomery, McCracken, Walker & Rhoads:

(i) David H. Marion, Esquire

(ii) Robert E. Welsh, Jr., Esquire

ee at mn ET narra ere eer rn ne ihe wore ennnmontarmianec snr N=

Resp. App. 3

(iii) Larry L. Turner, Esquire

(iv) Stephen D. Ellis, Esquire

(v) Douglas L. Overtoom, Esquire

(b) Woodcock, Washburn, Kurtz, Mackiewicz

& Norris:

(i) Norman L. Norris, Esquire

(ii) Dale Heist, Esquire

(c) Reed, Smith, Shaw & McClay:

(i) Robert C. Podwil, Esquire

8-23-94 /s/ Douglas L. Overtoom

Date Douglas L. Overtoom

MONTGOMERY,

McCRACKEN, WALKER

& RHOADS

Three Parkway, 20th Floor

Philadelphia, PA 19102

(215) 665-7200

Counsel for Appellee

Resp. App. 4

TABLE OF CONTENTS

PAGE

CERTIFICATE OF TIGTEIRBGS 650 cece kc isescesus i

TABLE CF COMMU eee eka’ dpe ccens 60000 cet vas bce ii

TABLE OF AUF ERGiree Mee 66.06 vis CuCe Geile ce cd iii

I. EGER. Been sdeces 8 vaseaes shad ci 1

H. ARGUMBIE Ss cos. cwiss cuswnsd eas tocsnie Jaan 3

A. A Rehearing On The Affirmance Of The

Judgment Of Patent Infringement is not

ADOCODTIONS, « oc kc icc chee seek lb cue eine eae 3

B. Appellants’ Antitrust and State Law Argu-

ments have been Argued and Reargued and

are not the Proper Subject for Rehearing.. 7

C. An In Banc Rehearing Of Appellants’ State

Law Claims Would Be Wasteful Of Valuable

Joncas SID in ca cos Seda cee a cannes 10

FE. COIN EA Si ove cp watngmeeduteeres the cee 11

Resp. App. 5

TABLE OF AUTHORITIES

PAGE

CASES

Atari Games Corp. v. Nintendo of America, Inc.,

re mee Rae CN Sih s BOD 6s on hc vc in o's dade oo wane 9

Genentech, Inc. v. Eli Lilly and Co.,

998 F.2d 931, 944 (Fed. Cir.),

cert. mented, 144° S. Ct. 2426 (1993)... 6... oe ace ees 7

Markham v. Westview Instruments, Inc.,

No. 92-1049, 1995 WL 146983 (Fed.

Caer Os 29eo) fim OR) oF ois oc ieee es 3-7

Professional Real Estate

Investors v. Colombia Pictures,

Be he a OIE ie kc sev ccccudsvccscsncus 9-10

OTHER AUTHORITIES

es sn oie cos vchekwe ccawes 8

Internal Operating Procedures

Information Sheet (Fed. Cir.).................. y a Tee

Internal Operating Procedures 9.3.3 (3d Cir.)......... 11

Resp. App. 6

I. INTRODUCTION

This Court should deny Appellants’ Petition For

Rehearing And Suggestion For Rehearing in Banc

because: 1) appellants have produced absolutely no evi-

dence that the panel overlooked or misapprehended any

point of law or fact on appeal; 2) appellants are merely

rearguing points made and lost before the Federal Circuit

and the District Court for the Eastern District of Pennsy]l-

vania; and 3) the Federal Circuit has no interest in mak-

ing in banc decisions concerning Pennsylvania law.

During the course of this litigation appellants Term-

Omega-Tech and Fred L. Pirkle (hereinafter collectively

“T-O-T”) have accused both judges and officers of the

courts involved in this matter with fraud,! collusion,? and

incompetence.

True to form, T-O-T now impugns the integrity of

Circuit Judges Newman and Rader and Senior Circuit

Judge Skelton by suggesting that they entered the judg-

ment order in this matter in derogation of their duty as

1 T-O-T argued that counsel for Ogontz defrauded the

Pennsylvania courts. That contention was completely and cor-

rectly rejected by the district court. See, e.g., Joint Appendix at

A.27-28.

2 Counsel for T-O-T stated to the district court on the record

that Ogontz only won in the state court proceedings because

Ogontz’ attorney “had it in with the Judge.” See Joint Appendix

at A.959-60.

3 T-O-T’s suggestion that the judgment order issued by the

Federal Circuit in this appeal was entered due to a clerical

mistake is insulting, incredible and not worthy of further com-

ment. See Appellants’ Petition for Rehearing With Suggestion

For Rehearing In Banc at 3.

Resp. App. 7

appellate judges to make “difficult or troublesome deci-

sions,” or, worse, to deliberately conceal divisive or dis-

turbing issues. See Appellants’ Petition for Rehearing

With Suggestion For Rehearing In Banc at 6-7 n.1. While

any litigant with ink and paper has the ability to suggest

that three distinguished Circuit Judges of this Court

improperly used a judgment order to “conceal divisive or

disturbing issues,” id., the petition for rehearing falls far

short of substantiating such a grave assertion.

A three judge merits panel of the Federal Circuit will

enter a judgment of affirmance without opinion only

when they unanimously agree that “the appellants have

utterly failed to raise any issues in the appeal that require

an opinion to be written in support of the court’s judg-

ment of affirmance.” Internal Operating Procedures Infor-

mation Sheet provided by the Court to the parties upon

mailing of the judgment order (hereinafter “1.0.P. Infor-

mation Sheet”). In spite of the fact that T-O-T unques-

tionably failed to persuade any member of the panel that

any of the eight separate issues raised on appeal had

merit, T-O-T ignores the Federal Circuit’s admonition that

“petitions for rehearing are rarely considered mer-

itorious,” id., and disregards the Court’s instructions not

fo reargue matters already considered by the panel. Id.

Instead, T-O-T demands yet another bite of an apple it

has already gnawed to the core.

Resp. App. 8

Il. ARGUMENT

A. A Rehearing On The Affirmance Of The Judg-

ment Of Patent Infringement is not Appropri-

ate.

A rehearing on the affirmance of the judgment of

patent infringement is not appropriate. All of appellants’

present arguments were addressed in the briefs and/or

discussed at oral argument. Nor is the distinguished

panel guilty of “hiding the ball” by its use of a judgment

order.

On the same day that this appeal was argued before

the panel, this Court released an in banc decision holding

that claim construction was a matter of law subject to de

novo review on appeal. Markham v. Westview Instruments,

Inc., No. 92-1049, 1995 WL 146983 (Fed. Cir. Apr. 5, 1995)

(in banc). It was thus clear at the time the panel heard

oral argument and issued its affirmance of the judgment

in this matter that claim construction is a matter of law

subject to de novo review. Id.

Appellants’ argument seems to be based upon the

assumption that the panel was unaware of the Markham

opinion, or in a conspiracy not to apply the holding of

that decision, or misunderstood Markham’s holding. Such

a position is insupportable. Appellants fully briefed the

line of cases supporting the Markham decision, and the

panel inquired about the issue of de novo review during

oral argument. See Brief of Appellants at 32-45. In fact,

appellants’ counsel admits that he expressly reminded

the panel of the in banc consideration of Markham and

instructed the panel that “the Markham in banc decision

Resp. App. 9

would control.” Appellants’ Petition For Rehearing With

Suggestion For Rehearing In Banc at 2. It is disingenuous

of appellants to complain that the panel overlooked or

misapprehended the holding of Markham or its power to

conduct de novo review of a patent’s claim language. If

anything, the judges were more keenly aware and more

sharply focused on the requirements established by Mark-

ham.

Under Markham, the panel in the present appeal had

the “power and the obligation to construe as a matter of

law the meaning of the language used in the patent

claims,” Markham, WL 146983 at *11. There is no evidence

to indicate that the panel failed to carry out its duty. The

panel apparently did reexamine and re-construe the

claims and agreed with the previous findings of the jury

and the district court that T-O-T’s devices infringe claims

4, 9 and 10 of Ogontz’ ‘007 patent. Thus, three separate

evaluations, by a jury, a district court judge and a merits

panel of the Federal Circuit, have now concluded that the

patent claims at issue are infringed by T-O-T’s products.

At some point appellants must accept defeat..

The panel reached its conclusions after examining the

materials submitted for review by the parties, and ques-

tioning counsel for both parties about those materials at

oral argument. In the briefs and appendices submitted,

the panel was presented with the patent claims of the ‘007

patent, the patent specification, the prosecution history

(including the entire file wrapper for the ‘007 patent)4

* Interestingly, appellants objected to the inclusion of the

prosecution history of the ‘007 patent as irrelevant material and

Resp. App. 10

and, to the extent provided by the parties, extrinsic evi-

dence received by the district court. The panel, therefore,

had available to it all the necessary information required

by Markham to review and construe de novo the claim

language as a matter of law. Markham WL 146983 at *11.

To suggest — without any shred of evidence to support

such an argument -— that the panel failed to conduct this

review, or deliberately refused to do so, demonstrates the

desperation of T-O-T’s position.5

Contrary to appellants’ argument, review of the audi-

_ otape of the oral argument will indicate that the panel did

review the claims de novo and did construe the meaning

of the claims as a matter of law. During oral argument

Judge Rader specifically indicated to appellees’ counsel

that the panel could make a de novo review and construe

the claims at issue as a matter of law. In addition, Judge

Rader raised questions concerning the specific meanings

of various terms contained in the claims. Judge Rader’s

questioning indicates that the panel, well aware of the in

refused to include this highly relevant information in the Joint

Appendix unless Ogontz advanced the copying costs. Ogontz

agreed to advance the costs to avoid troubling this Court with

additional motion practice. Even now, T-O-T still complains that

the prosecution history was irrelevant, a position which is

clearly frivolous in light of the holding in Markham, and refuses

to reimburse Ogontz for inclusion of this material in the appen-

dix as requested in Ogontz’ Bill of Costs. See Appellant’s Objec-

tions To The Bill Of Costs Of Ogontz Corporation at 3-4.

5 Each of the judges on the panel took an oath to uphold the

Constitution and the laws of the United States. It is axiomatic

that a presumption exists that a merits panel of a United States

court of appeals will follow the law. T-O-T has utterly failed to

rebut that presumption here.

eT een eee N

Resp. App. 11

banc decision in Markham, followed the holding of that

case and made a de novo review of the claim language

and construed the claim language as a matter of law by

examining the claim language itself, the specification, the

prosecution history and, where helpful, the available

extrinsic evidence. Moreover, the panel’s unanimous

decision, and the entry of a judgment of affirmance with-

out opinion, makes clear that upon review the panel

agreed that the judgement of infringement was proper

and that appellants’ argument was utterly without merit.

There is absolutely no evidence to support appel-

lants’ assertion that the panel overlooked or misap-

prehended the holding of Markham. Indeed such a

suggestion under the circumstances is outrageous.

6 Appellant’s counsel certifies that this appeal presents the

“precedent-setting question” of whether panels of the court are

obliged to apply in banc holdings of the court to pending

appeals. This truly is not an issue in this appeal. As explained

above, the evidence indicates the panel did apply Markham in

the present appeal. In any case, the Federal Circuit is in agree-

ment with the general rule that a court should apply the law in

effect at the time it renders its decision, unless doing so would

result in manifest injustice. Genentech, Inc. v. Eli Lilly and Co., 998

F.2d 931, 944 (Fed. Cir.), cert. denied, 114 S. Ct. 1126 (1993).

Appellant is merely attempting to manufacture an issue where

none exists.

Resp. App. 12

B. Appellants’ Antitrust and State Law Arguments

have been Argued and Reargued and are not the

Proper Subject for Rehearing.

The antitrust and state law arguments in appellants’

petition, similar to appellants’ patent infringement argu-

ment, also present this Court with the same arguments

that appellants made in the district court and before the

panel on appeal. Again, in their request for yet another

hearing on their state law and antitrust claims, appellants

ignore the standards, provided to the parties along with

the judgment order, governing petitions for rehearings of

this Court’s rulings, which clearly are not satisfied in the

present case.

Petitions for rehearing are not to be used, as appel-

lants attempt here, merely to “reargue matters already

briefed and orally argued.” I.O.P. Information Sheet. The

purpose of a petition for rehearing is to point out particu-

lar points of law or fact that the court has overlooked or

misapprehended in its opinion. Fed. R. App. P. 40(a). To

seek a rehearing by the panel a party “must be able to

identify in the court’s opinion a material error of fact or

law the correction of which would require a different

judgment on appeal.” I.0.P. Information Sheet. Therefore,

the Federal Circuit usually requires that “the court must

have filed an opinion in support of its judgment for a

petition for rehearing to be appropriate.” Id.

The granting of a suggestion for rehearing in banc is

even more restricted. The Federal Circuit generally

requires that “the merits panel entered a precedential opin-

ion” before a rehearing in banc is considered appropriate.

Id. Moreover, to justify reconsideration in banc T-O-T

Resp. App. 13

must show that the merits panel failed to follow identifia-

ble decisions of the Supreme Court of the United States or

precedential opinions of the Federal Circuit. Id.

T-O-T has not established any of the foregoing

requirements for rehearing or rehearing in banc. First, no

opinion, precedential or otherwise, was filed in support

of the judgment because in the panel’s opinion the appel-

lants had utterly failed to raise any issue on appeal

concerning the state law and antitrust claims that

required an opinion to be written. Second, T-O-T fails to

identify a single controlling decision that the merits panel

failed to follow. Third, appellants have identified no mis-

apprehended points of law or overlooked facts warrant-

ing a rehearing of the state law or antitrust claims; rather,

all of the legal arguments made by appellants are argu-

ments which have already been made, repeatedly, by

appellants and rejected by the District Court and this

Court as meritless.

The only case cited by appellants in support of

rehearing their state law claims, Atari Games Corp. v.

Nintendo of America, Inc., 897 F.2d 1572 (Fed. Cir. 1990), is

not controlling either factually or as a matter of law,

especially in light of Professional Real Estate Investors v.

Colombia Pictures, 113 S. Ct. 1920 (1993). The issue is not

whether Ogontz as a patent owner was wholly insulted

from the antitrust laws, but rather whether Ogontz as a

patent owner, a trade secrets holder and a party to a legal

employment contract was immune from antitrust liability

when exercising its rights under the Constitution to peti-

tion the courts for redress.

Resp. App. 14

Contrary to appellants’ position, the merits panel

properly followed the controlling precedent of the

Supreme Court, which held in Professional Real Estate

Investors v. Columbia Pictures, 113 S.Ct. 1920 (1993), that

those who petition the government for redress are gener-

ally immune from antitrust liability unless the petition is

a “mere sham” to cover the attempt to interfere with

competition. Id. at 1926. Sham litigation under the Noerr

doctrine cannot be found where an objective view of the

matter shows that a reasonable litigant could realistically

expect success on the merits. Id. at 1928. An objectively

reasonable effort to litigate cannot be a “sham” within the

meaning of the exception to the Noerr doctrine of immu-

nity from antitrust liability regardless of plaintiff’s sub-

jective intent. Id. at 1926. A winning lawsuit, such as

Ogontz’, is by definition a reasonable effort at petitioning

for redress and, therefore, immune from antitrust liability.

Id. at 1928 n.5.

C. AnIn Banc Rehearing Of Appellants’ State Law

Claims Would Be Wasteful Of valuable Judicial

Resources.

The request of appellants that this Court grant in

banc reconsideration on issues of state law represents a

curious request for the allocation of judicial resources.

The Third Circuit, which is presumably faced with similar

requests on a regular basis, has an internal operating

procedure providing that “rehearing in banc is ordinarily

not granted when the only issue presented is one of state

law.” 1.0.P. — 9.3.3 (3d Cir. 1994). This rule of the Third

Circuit provides a valuable example in the present case.

There is simply no reason for this court to expend its

Resp. App. 15

judicial resources on an in banc rehearing of appellants’

self styled “panoply of claims” to the extent they involve

Pennsylvania law. Appellants’ Petition for Rehearing And

Suggestion For Rehearing In Banc at 13. Therefore, the

petition for rehearing of the state law claims should also

be denied.

Il. CONCLUSION

Evidently, appellants do not believe that it is possible

the panel would have ruled against them had the panel

really understood the law and appellants’ arguments, and

believe that if they repeat their arguments enough times,

eventually the panel or the court in banc will agree with

them. Appellants have identified no legal basis for their

entitlement to repeated bites at the same apple. Quite

simply, appellants were wrong when they first made

these arguments and they are still wrong.

For all the foregoing reasons, this Court should deny

the petition for rehearing and suggestion for rehearing in

banc.

Date: May 11, 1995

/s/ DL Overtoom

Douglas L. Overtoom

MONTGOMERY, McCRACKEN,

WALKER & RHOADS

Three Parkway, 20th Floor

Philadelphia, PA 19102

(215) 665-7200

Attorney for Appellees