Opposition Brief — Evans Cooling Systems, Inc. v. General Motors Corp.

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No. 97-1038

Sapreme Court ofthe Huited States

OCTOBER TERM, 1997

EVANS COOLING SYSTEMS, INC.

and PATENT ENFORCEMENT FUND, INC.,

Petitioners,

v.

GENERAL MOTORS CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to the United :

States Court of Appeals for the Federal Circuit

BRIEF IN OPPOSITION

Robert G. Krupka

(Counsel of Record)

Jonathan F. Putnam

David S. Brafman

KIRKLAND & ELLLIS

153 East 53rd Streeet

New York, New York 10022

(212) 446-4800

Attorneys for Respondent

QUESTION PRESENTED

Did the Federal Circuit err in declining to create a new

“allegation of misappropriation” exception to the on sale bar to

patentability that has never been recognized by this Court or any

other court, where innocent third parties placed the alleged

invention on sale to the public more than one year before the

patent application was filed?

a

RULE 29.6 STATEMENT

Pursuant to Supreme Court Rule 29.6, General Motors

Corporation advises the Court that the following is a list of

General Motors’ non-wholly-owned subsidiaries as reported to

the Securities and Exchange Commission in Exhibit 21 to

General Motors’ Form 10-K Annual Report for the year ended

December 31, 1996:

Asset Leasing GmbH

Carus Grundstucks-Vermietungsgesellschaft mbH & Co.

General Motors GmbH & Co. OHG

Opel-Automobilwerk Eisenach-PK W GmbH

Contro Toonico Herramental, S.A. de C.V.

Packard Electric Hebi Co., Limited

Packard Electric Bai Cheng Co., Limited

Delphi Italia Automotive Systems S.r.1.

Delphi Italia Service Center S.r.1.

DRB s.a./n.v.

Opel France S.A.

ENCI S.A.R.L.

Texton P.L.C.

Delphi Harrison

Delphi L’EM Argentina S.A.

Reinshagen Tournai S.A.

GM Ovonic L.L.C.

Banque Opel

General Acceptance (Thailand) Ltd.

Holden National Leasing Limited

GM Finance HB

OPEL Leasinggesellschaft mbH

Polbank, S.A.

P.T. GMAC Lippo Finance

General Motors de Argentina S.A.

Beijing Wanyuan GM Automotive Electronic

Control Co., Ltd.

-ii-

RULE 29.6 STATEMENT

(continued)

Hubei Delphi Automotive Generator Co., Ltd.

Saginaw Norinco Lingyun Drive Shaft Co., Ltd.

Zhejiang Delphi Asia-Pacific Brake Co. Ltd.

General Motors Colmotores, S.A.

IBC Vehicles Limited

Millbrook Pension Management Ltd.

DIRECTTV Enterprises, Inc.

IBC Vehicles (Distribution) Limited

GM-Saab Communication GmbH

Packard CTA Pty. Ltd.

Packard Electric Systems Samara Cable Company

PT General Motors Buana Indonesia

P.T. Packard Kabelindo Murni Indonesia

Radiodores Richard, S.A.

In addition, General Motors has recently acquired an

interest in:

PanAmSat Corporation

NETSAT Express, Inc.

LLC ELAZ-GM Corporation

Delphi Saginaw NSK Co., Ltd.

NSK Ltd.

Sodex

Flip Chip Technologies, L.L.C.

Aegis Technologies, L.L.C.

ProSTEP GmbH

ISF Internationale Schule Frankfurt

Geschaeftsfuehrungs GmbH

ISF Internationale Schule Frankfurt GmbH & Co. KG

SurFin Ltd.

DIRECTV Japan Kabushiki Kaisha

Shanghai Saginaw Dongfeng Steering Gear Co., Ltd.

-ill-

RULE 29.6 STATEMENT

(continued)

Delphi Chassis Systems Poland Sp.z.oo.

Autohaus am Nording GmbH

Aisin GM Allison Co., Ltd.

-iv-

TABLE OF CONTENTS

Page

CTE FICIN PIs i cede cc awewasenewes i

Sas Be EME UIEIE DE o¥.4 0 saw swe eeeeeueene beuen ii

FARE OF AU ReEM 6 cco ce ceksseicvesdees Viii

COUNTER STATEMENT OF THE CASE ............ l

A. De ki ins Vase eed cepa wks l

B. Evans Delayed Six Years Before Filing for the

MG Fai 4d ak Sas a eed BAe a es l

i. Independent Car Dealers Placed the Accused

Engine Cooling System On Sale More Than One

Year Before the Patent Application was Filed .... . l

D. Petitioners’ Spurious Trade Secret Allegations .... 3

E. The Federal Circuit Found Petitioners’ Allegation

of Misappropriation Against GM Irrelevant in Light

of the Sales Activities of Independent Car Dealers . 3

_

REASONS FOR DENYING THE WRIT ......------>- 4

A. The Question Presented by Petitioners is Not

Raised by the Decision Below ........--..+++>> 5

B. The Decision Below Does Not Conflict with

This Court’s Precedent .........:eeeeeeeeevees 6

1. The supposed rule of this Court urged by

Petitioners is inapposite ..........-++++: 6

2. The cases cited by Petitioners either support

the decision below or are dicta.........-. 6

3. This Court’s decision in Kewanee Oil

strongly supports the decision below ...... 9

es The Decision Below Does Not Conflict with

Any Lower Court Decision ........--++++++5: 10

D. The Issue Raised by Petitioners is Not of Broad

Significance ..........ee cece cece eceeceeees 11

E. In Any Event, the Decision Below was Correct .. 11

COT IIE vig. o.cab-s Vee ee web bee EC Seg wee ew ete 14

-Vil-

TABLE OF AUTHORITIES

Page

FEDERAL CASES

Andrews v. Hovey,

eo Sig wf | eee ren, eee re 1,2

Bonito Boats, Inc. v. Thunder Craft Boats, Inc.,

gf MM Fl | A Rn era ee 12

In re Caveney,

Ok Foe r ree. Ce. TORS) coe sv cee sccas 13

Diamond v. Chakrabarty,

Or Ge IE 3. vk wo eee wk bans seees 12

Eastman v. Mayor of N.Y.,

SOF. DOGG Ue. AFC) oe eee ik. 8, 11

Gearon v. United States,

121 F. Supp. 652 (Ct. Cl. 1954),

cert. denied, 348 U.S. 942 (1955) .......... 10, 11

Kendall v. Winsor,

GZ U.S. 21 OW.) S22 CABS) nce veces 7,8

Kewanee Oil Co. v. Bicron Corp.,

ye So | PR nn a 9, 10

LaBounty Mfg. v. United States Int'l Trade Comm'n,

958 F.2d 1066 (Fed. Cir. 1992) ............00. 12

Lorenz v. Colgate-Palmolive-Peet Co.,

167 F.2d:423 (3d Cir. 1948) ............ 8,10, 11

-Vili-

eat a

Markman v. Westview Instruments, Inc.,

S17 U.S. STO CGS). wc cece cer ccececeees 11

In re Martin,

74 F.2d 951 (C.C.P.A. 1935) ......--- 4,8, 10, 11

Mason v. Hepburn,

13 App. D.C. 86 (D.C. Cir. SEs Rain entae 4 12

Pennock v. Dialogue,

27 USS. (2 Pet.) 1 (1829) ....... eee eee eee 6

Shaw v. Cooper,

32 U.S. (7 Pet.) 292 (1833) ......--- eee eee eee 7

UMC Elecs. Co. v. United States,

816 F.2d 647 (Fed. Cir. 1987),

cert. denied, 484 U.S. 1025 (1988) ...........-- 8

Warner-Jenkinson Co. v. Hilton Davis Chem. Co.,

117 S. Ct. TOMO CIGIT) 5 ne ceed secs 10, 11

FEDERAL STATUTES

SSUES. S TODD) wok. ove hn cnc deen sc censees 1,9, 11

-1X-

COUNTER STATEMENT OF THE CASE

Because Petitioners’ statement of the case

mischaracterizes both the record before and the decision of the

U.S. Court of Appeals for the Federal Circuit, Respondent

General Motors Corporation presents this counter statement of

the case.

A. Nature of the case. The U.S. District Court for

the District of Connecticut (Chatigny, J.) granted summary

judgment for General Motors under the on sale bar, 35 U.S.C.

§ 102(b), thereby invalidating Evans’ U.S. Patent No. 5,255,636

(the “636 patent”). The Federal Circuit-affirmed that ruling on

appeal, specifically holding that Petitioners’ allegation of trade

secret misappropriation by GM had no effect on the invalidating

nature of the pre-critical date sales activity between independent

car dealers -- whom Evans has never contended had any

involvement in, or awareness of, the alleged misappropriation --

and the retail public.

B. Evans delayed six years before filing for the

*636 patent. The-application that led to the °636 patent was

filed on July 1, 1992. Pet. 2. However, Evans allegedly

conceived the underlying invention back in 1984 and claims to

have reduced it to practice in 1986. Pet. 5. According to

Petitioners’ brief to the Federal Circuit, Evans did not seek

patent protection thereafter because he “believed that his

invention was of only marginal public interest.” Thus, Evans

took absolutely no steps to bring any benefits of his alleged

invention to the public by filing a patent application until he

learned of the sale of the accused GM engine cooling system.

Pet. 10.

os Independent car dealers placed the accused

engine cooling system on sale more than one year before the

patent application was filed. The accused engine cooling

x

system is associated with General Motors’ LT1 engine. The

first commercial General Motors car to employ the LT1 engine

was the 1992 Corvette.

The on sale event that the Federal Circuit found

dispositive involved a retail transaction between an independent

Corvette dealer in West Bloomfield, Michigan and a customer

named Aram Najarian in June 1991. As found by the trial court

and reiterated by the Federal Circuit on appeal, “It is undisputed

that on June 13, 1991, a retail customer named Najarian entered

into a contract with a GM dealer relating to the purchase of a

1992 Corvette with the LT1 engine cooling system. In

executing the contract, the dealer ‘agree[d] to sell’ and the

customer ‘agree[d] to purchase’ a 1992 Corvette with an “LT1’

engine. The customer paid a deposit of $500 and the dealer

transmitted the order to GM.” App. 15; see also App. 5.

The Najarian transaction was just one of over two

thousand orders involving the 1992 Corvette before the critical

date. As the Federal Circuit detailed: “GM sent an ‘Order

Guide’ for the 1992 Corvette to its independent dealers in late

April or early May, 1991 to be used for ordering the vehicle

described in the Order Guide. At about the same time, GM sent

its dealers a supplemental brochure that provided additional

ordering information for the 1992 Corvette, specifically stating

that the car had reverse flow engine cooling [the subject matter

of the alleged invention]. A representative of GM testified that

it expected the dealers would start ordering the vehicles as soon

as the Order Guide was sent to them. A sales representative at

a GM dealership also testified that it was the dealership’s

common practice to order new cars and enter into agreements to

sell new cars shortly after receiving the Guide. GM produced

computer records documenting over 2000 orders placed by

dealers around the country for the 1992 Corvette before the

critical date.” App. 2-3. Over 300 of the pre-critical date orders

“were placed on behalf of specific retail customers” like

Najarian. App. 3.

D. Petitioners’ spurious trade secret allegations.

The basis for Petitioners’ argument in this Court is a trade secret

lawsuit that Evans brought against General Motors and that is

pending in Connecticut state court. Evans’ allegations in that

action completely lack merit, as shown by a series of dated

engineering documents demonstrating that GM’s LT1 engine

cooling system had been fully and independently developed

before the time when Evans alleges that the trade secret theft

took place.

Accordingly, Evans’ assertion that “GM did not contest

that there is sufficient evidence to present a triable issue of fact

as to whether it had misappropriated Evans’ invention” (Pet. 3)

is absolutely wrong. General Motors has always contended that

there is no evidence that supports Evans’ allegation; in the

courts below, GM argued successfully that there was no need for

any inquiry into the factual basis of Evans’ allegation of

misappropriation because that allegation was irrelevant as a

matter of law to the validity of the °636 patent.

E. The Federal Circuit found Petitioners’

allegation of misappropriation against GM irrelevant in

light of the sales activities of independent car dealers. After

reviewing the overwhelming evidence of pre-critical date sales

activity, as set forth above, the Federal Circuit “easily

discarded” Petitioners’ argument that the accused product was

not on sale as a matter of law. App. 7. Accordingly, the Federal

Circuit held that the Najarian transaction -- made “nearly a

month prior to the critical date -- evidences an effective offer for

sale that invalidates the °636 patent.” App. 8.

The court below then turned to Petitioners’ request that

it create a “new exception” to the on sale bar based on Evans’

.*

allegation of misappropriation. App. 8. The Federal Circuit

first considered the Supreme Court cases cited by Petitioners in

this Court and found none of them “dispositive” of the issue

before it. App. 9-10. The Federal Circuit next considered the

reasoning of “the one other court that has addressed this precise

issue” and termed “persuasive” that court’s rejection of the

exception sought by Petitioners. App. 10-11.

The Federal Circuit then held that “[e]ven if [it] were to

create an exception to the on sale bar such that third parties

accused of misappropriating an invention could not invalidate

a patent based upon sales by the guilty third party,” that

exception would not prevent the bar from applying here.

Specifically, the court explained that Jn re Martin, 74 F.2d 951

(C.C.P.A. 1935), “squarely holds that activities of third parties

uninvolved in the alleged misappropriation raise the statutory

bar, even if those activities are instigated by” the alleged

misappropriator. App. 11-12. Noting that Petitioners had

“never contended that the independent dealers had any

participation in or knowledge of the alleged theft,” the Federal

Circuit held that the on sale bar was raised by the innocent

dealers “by placing orders for innocent retail customers like

Najarian.” App. 12.

REASONS FOR DENYING THE WRIT

The petition for a writ of certiorari should be denied.

Petitioners flatly misstate the decision below by asserting that it

turned on the sales activities of General Motors, the party

accused of misappropriation, rather than those of the

independent dealers. As a result, Petitioners advance a question

that is not presented by the decision below and place exclusive

reliance on a supposed rule of this Court’s cases that is not even

implicated by the decision below. In any event, the decision

below reflects sound patent policy and is fully consistent both

with the decisions of this Court and with the results of every

-4-

reported decision of any court that has ever considered the

esoteric issue raised by Petitioners.

A. The Question Presented by Petitioners is Not Raised

by the Decision Below.

Petitioners assert that this case presents the question

whether “a patent [can] be invalidated by a party who ... steals

an invention ... and puts the invention on sale more than one

year before the inventor files a patent application.” Pet. i. But

that question was not decided by the court below and

accordingly is not presented for review by this Court. Instead,

as the Federal Circuit repeatedly made clear, its holding turned

not on the sales activities of General Motors -- the “party who

... [allegedly] st{ole] an invention” -- but rather on the sales

activities of third party independent dealers. See App. 8, 11-12,

13. The Federal Circuit explicitly declined to “reach or decide”

the legal import of GM’s own sales activities. App. 8.

Further, the court below expressly recognized that the

case does not present the issue urged on this Court by

Petitioners. The Federal Circuit held that the ’636 patent would

be invalid under the on sale bar in light of the sales activities of

the independent dealers “[e]ven if we were to create an

exception to the on sale bar such that third parties accused of

misappropriating an invention could not invalidate a patent

based upon sales by the guilty third party.” App. 11. In other

words, even if this Court granted certiorari and decided

Petitioners’ proffered question in their favor, the Federal

Circuit’s judgment of patent invalidity would stand. Because the

sole issue put forth by Petitioners is not raised by the decision

below, the petition necessarily must be denied.

B. The Decision Below Does Not Conflict with This

Court’s Precedent.

1. The supposed rule of this Court urged by

Petitioners is inapposite.

Just as the question stated by Petitioners is not presented

by the decision below, the supposed rule of this Court put forth

by Petitioners is not implicated by the decision below. The

gravamen of the petition is the assertion that the Federal

Circuit’s opinion conflicts with binding precedent from this

Court establishing that “surreptitious and fraudulent use of an

invention by a misappropriator of the invention cannot

invalidate an inventor’s patent on the invention.” Pet. at 11

(emphasis added). But, as just noted, the Federal Circuit did not

hold the °636 patent invalid based on the sales of the alleged

misappropriator. Accordingly, even if this Court’s cases had

established the rule that Petitioners assert they did, the Federal

Circuit’s decision would in no way conflict with that rule. This

circumstance completely negates Petitioners’ argument for

certiorari.

2. The cases cited by Petitioners either support

the decision below or are dicta.

Moreover, the four 19th Century cases of this Court cited

by Petitioners did not establish the rule alleged by Petitioners

but rather either support the Federal Circuit’s decision or at most

contain only dicta on the subject at issue. In the first case,

Pennock v. Dialogue, 27 U.S. (2 Pet.) 1 (1829), this Court

actually invalidated the patent-in-suit under the public use bar.

Id. at 23-24. In addition, the invalidating use had been with

permission of the patentee. /d. at 4-5. For both reasons, any

statements in Pennock regarding the application of the statutory

bars where there had been fraud or piracy are dicta.

la na tl ici

Shaw v. Cooper, 32 U.S. (7 Pet.) 292 (1833), is more

pertinent because it did involve allegations that the invention

was first disclosed to the public through piracy. /d. at 311.

Nonetheless, this Court stil] invalidated the patent at issue under

the public use bar because the innocent public had come to

know the invention, even if through piracy. /d. at 323

(“Whatever may be the intention of the inventor, if he suffers his

invention to go into public use through any means whatsoever,

without an immediate assertion of his right he is not entitled to

a patent ....”) (footnote omitted). Thus, not only are any

comments in Shaw concerning when the statutory bar might nof

apply mere dicta, but the result in Shaw fully supports the

Federal Circuit's decision.

As in Pennock and Shaw, this Court invalidated the

patent at issue in Andrews v. Hovey, 124 U.S. 694 (1888), under

the statutory bars. Furthermore, the Court concluded its analysis

in Andrews by holding that the language of Section 102(b)’s

predecessor “seems to us to clearly intend that ... the patent shall

be held to be invalid, without regard to the consent or allowance

of the inventor. Otherwise the statute cannot be given its full

effect and meaning.” /d. at 719.

The case most heavily relied on by Petitioners, Kendall

v. Winsor, 62 U.S. (21 How.) 322 (1858), did not even involve

the issue of patent validity, let alone the statutory bars. Instead,

Kendall concerned a now-defunct provision of the Patent Act of

1839 that afforded prior third-party users the right to continue

using an invention after it was patented by someone else. See

id. at 325-26. The Federal Circuit viewed these differences as

dispositive. See App. 10 (declining to give weight to Kendall

because “[t]he statutory on sale bar wasn’t even in issue” there).

As the appellate court with specialized expertise on the Patent

Code, the Federal Circuit is particularly well-qualified to

determine whether the language of Kendall has any import in

this completely different context.

. 3

Indeed, there is a crucial difference between the statute

at issue in Kendall and the on sale bar. The defunct prior-user

provision created a private right for the particular individual

who used an invention before it was patented by another. In that

context, the equitable standing of the individual prior user had

understandable importance. By contrast, the on sale bar benefits

the public at large by encouraging early disclosure of inventions

to the public and by preventing the patenting of inventions

already in the public domain. See UMC Elecs. Co. v. United

States, 816 F.2d 647, 652 (Fed. Cir. 1987), cert. denied, 484

U.S. 1025 (1988). Accordingly, it does not make sense for the

bar to turn on the character of the particular party that causes the

disclosure of the invention to the public. Cf Martin, 74 F.2d at

956 (holding that “it clearly was proper ... for the Patent Office

tribunals, representing the public, to take cognizance of” a

public use instigated by a party accused of misappropriation).

As noted above, the Federal Circuit considered the cases

cited by Petitioners and determined that none was controlling

before affirming the invalidation of Petitioners’ patent. App. 10.

Importantly, this conclusion is the uniform judgment of history.

Every court this century that has considered the effect of alleged

misappropriation on the statutory bars has concluded that the

cases cited by Petitioners are not controlling. See Lorenz v.

Colgate-Palmolive-Peet Co., 167 F.2d 423 (3d Cir. 1948)

(reviewing the Court’s 19th Century cases and holding that no

exception to the statutory bars exists for activities that result

from fraud or piracy); Martin, 74 F.2d at 955 (stating that none

of the cases was “authoritative” regarding the effect of

allegations of misappropriation on the statutory bars); Eastman

v. Mayor of N.Y., 134 F. 844, 852-55 (2d Cir. 1904) (discussing

whether “fraudulent, surreptitious, or piratical” use of an

invention could raise the statutory bars and rejecting the cases

as either dicta or having only a “remote bearing on the questions

now in issue’’).

The supposed conflict with this Court’s cases trumpeted

by Petitioners simply does not exist.

3. This Court’s decision in Kewanee Oil strongly

supports the decision below.

Indeed, this Court’s most recent discussion of the effect

of trade secret misappropriation on the statutory bars strongly

supports the decision below. In Kewanee Oil Co. v. Bicron

Corp., 416 U.S. 470 (1974), the Court faced the question

whether the patent law preempted state trade secret protection.

In holding that there was no such general preemption, the Court

relied upon the observation that the risk that “holders of

patentable inventions would not seek patents, but rather would

rely on the state [trade secret] protection” was not substantial

because state trade secret laws provided “far weaker protection

in many respects than the patent law.” Kewanee Oil, 416 U.S.

at 489-90. Specifically, the Court recognized that an inventor

who opts to maintain an invention as a trade secret rather than

file for a patent assumes several risks, including the “substantial

risk that the secret will be passed on to his competitors, by theft

or by breach of a confidential relationship.” /d. at 490. In light

of this risk, the Court concluded:

“The possibility that an inventor who believes

his invention meets the standards of patentability

will sit back, rely on trade secret law, and after

one year of use forfeit any right to patent

protection, 35 U.S.C. § 102(b), is remote

indeed.” Jd. (emphasis added).

The €ourt’s conclusion was premised on the belief that use by

a misappropriator would constitute a statutory bar; otherwise, it

would not have made sense to speak of the forfeiture under

section 102(b) of the right to seek a patent as a risk attendant to

trade secret theft.

Relatedly, Petitioners’ complaint about the relative

weakness of trade secret protection (Pet. 19-20) is not well taken

since it was Evans who made the choice to rely on trade secret

protection for six years rather than filing for a patent. Indeed, as

Kewanee Oil makes clear, it is that relative weakness that makes

state trade secret laws constitutional.

oe The Decision Below Does Not Conflict with Any

Lower Court Decision.

Not only does the decision below not conflict with the

19th Century Supreme Court cases cited by Petitioners, but the

decision below also does not conflict with the decision of any

lower court. Petitioners’ request for an “allegation of

misappropriation” exception presented a question of first

impression for the Federal Circuit, and the decision below was

unanimous. Therefore, there is no conflict within the Federal

Circuit. Compare with Warner-Jenkinson Co. v. Hilton Davis

Chem. Co., 117 S. Ct. 1040, 1046 (1997) (certiorari granted

where three dissenting opinions involved five of twelve Federal

Circuit judges).

Moreover, the decision below accords with the decisions

of the few other lower courts that have considered the issue.

Only three previous reported decisions directly addressed the

issues raised by this case. In Lorenz, the Third Circuit flatly

rejected an exception to the statutory bars and held that public

use by a party accused of misappropriation invalidated the

patent-in-suit. See Lorenz, 167 F.2d at 429-30. The Lorenz

holding was adopted by the Court of Claims in Gearon v. United

States, 121 F. Supp. 652, 654-55 (Ct. Cl. 1954), cert. denied,

348 U.S. 942 (1955), which held that an inventor whose idea

had been stolen by the U.S. Army lost the right to a patent by

virtue of the Army’s use and subsequent publication of the idea.

Finally, in /n re Martin, the Court of Customs and Patent

Appeals held that activity by a third party, not alleged to have

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creer caren tiee emanate aie nl

participated in any misappropriation, invalidated a patent under

the statutory bars even if that party obtained the technology

directly from a misappropriator. Martin, 74 F.2d at 955.

(Although the Second Circuit ultimately decided Eastman on

other grounds, its discussion left little doubt that it, too, would

have rejected a misappropriation exception to the statutory bars.

See Eastman, 134 F. at 854.)

There is not a single case from any court whose holding

conflicts with the decision below. Accordingly, there is no

confusion or uncertainty in the law that warrants this Court’s

intervention.

D. The-Issue Raised by Petitioners is Not of Broad

Significance.

Whether an allegation of misappropriation ever has any

effect on the application of the statutory bars has arisen in the

federal courts (at least as reflected in reported decisions) on only

five occasions this century -- Eastman, Metin, Lorenz, Gearon,

and the decision below. Thus, in contrast to such issues as claim

interpretation (see Markman v. Westview Instruments, Inc., 517

U.S. 370 (1996)) and the doctrine of equivalence (see Warner-

Jenkinson Co., 117 S. Ct. 1040), which are implicated in

virtually every patent case, Petitioners’ issue stands (if it stands

anywhere at all) at the very periphery of the patent laws. There

is no call for this Court to use its limited resources to consider

this rare and isolated issue.

E. In Any Event, the Decision Below was Correct.

Finally, this case does not warrant review because the

Federal Circuit’s decision was plainly correct. In the first place,

there is nothing in the language of Section 102(b) that supports

the exception sought by Petitioners. See 35 U.S.C. § 102(b); see

also App. 13 (noting that the exception sought by Petitioners

sits

“has no basis in the language of the statute”). Accordingly,

settled notions of statutory construction dictate that the statute’s

plain meaning be respected. See, e.g., Diamond v. Chakrabarty,

447 U.S. 303, 308 (1980) (“Courts ‘should not read into the

patent laws limitations and conditions which the legislature has

not expressed””) (citation omitted). As noted above, this Court

made precisely this point in Andrews v. Hovey. See 124 U.S. at

719.

Moreover, Petitioners’ proposed exception would

conflict with the policies behind both the patent code in general

and the statutory bars in particular. The fundamental purpose of

the patent laws is to increase the common good by making more

and better technologies available to the public. See Bonito

Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 151

(1989). This purpose is directly furthered by the statutory bars

through the incentive they create to file for a patent promptly,

leading to early public disclosure of inventions. See LaBounty

Mfg. v. United States Int'l Trade Comm'n, 958 F.2d 1066, 1071

(Fed. Cir. 1992). Evans scorned the goal of prompt filing by

delaying his patent application for six years after reducing his

alleged invention to practice, three years after suspecting that

GM had misappropriated his invention, and more than one year

after the accused device was placed on sale to the public.

Application of the on sale bar here therefore properly furthers

the aim of encouraging prompt filing.

Petitioners argued in their papers to the Federal Circuit

that Evans’ delay in filing is explained by the fact that Evans

was “unaware of any public interest in his aqueous system” until

General Motors introduced the 1992 Corvette. This purported

“excuse” is actually a powerful reason to apply the bar here, for

it is directly antithetical to long-settled patent policy. See, e.g.,

Mason v. Hepburn, 13 App. D.C. 86 (D.C. Cir. 1898) (holding

that a prior inventor was not entitled to benefit from the patent

laws where he “attached no importance” to an invention until

12.

learning of the work of a subsequent inventor because “the

inventor, who ... withholds his invention from the public, comes

not within the policy or objects of the Constitution or acts of

Congress.”) Perhaps that is why Evans now claims his delay

was caused by being unable to afford filing a patent application.

Pet. 18. That excuse rings hollow, however, given that Evans

did file several other patent applications during the period at

issue.

The proposed exception would also violate another

important policy of the statutory bars by removing technology

from the public domain. See Jn re Caveney, 761 F.2d 671, 676

(Fed. Cir. 1985). By June 30, 1991, hundreds of retail

customers like Najarian had ordered cars containing the LT1

engine cooling system and accordingly had come to believe that

the accused system was freely available. Application of the bar

here ensures that this reasonable expectation is not frustrated.

The proposed exception would also have far-reaching

and pernicious consequences. Under Petitioners’ argument, it

would be possible to obtain a valid patent on an invention that

had been in public use or on sale for many years as long as the

original communication of the invention to the public arguably

resulted from some act of misappropriation.

Finally, the exception sought by Petitioners is not needed

to ensure individual equity. As the Federal Circuit noted, Evans

has “an appropriate remedy” in the still-pending state court

proceeding “if GM in fact misappropriated his invention.” App.

13. Petitioners argue that they have been wronged because the

invalidation of their patent results in third parties having

royalty-free access to the alleged invention. Of course, that is

always the result of application of the statutory bars; otherwise,

there would be no incentive to file promptly. Like the rest of the

petition, this argument does not establish why this Court should

create a brand-new exception to the on sale bar.

=o

CONCLUSION

For the foregoing reasons, the petition for writ of

certiorari should be denied.

Dated: New York, New York Respectfully submitted,

January 22, 1998

Robert G. Krupka, P.C.

(Counsel of record)

Jonathan F. Putnam

David S. Brafman

KIRKLAND & ELLIS

153 East 53rd Street

New York, NY 10022

(212) 446-4800

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