# Opposition Brief — Pirkle v. Ogontz Controls Co. > Briefs, arguments, decisions, and more. URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386012_2044%3A3 ## Record - **Collection:** Supreme Court brief - **Document type:** Opposition Brief - **Published:** January 1, 1995 - **Citation:** 516 U.S. 863 ## Text 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 EST AVAILABLE COPY. Lat J EEE "y bee ae > n 3 * Ree wei sass Se 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 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 --- Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386012_2044%3A3. Public record. Not legal advice.