Opposition Brief — American Imaging Services, Inc. v. Intergraph Corp.

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AMERICAN IMAGING SERVICES, INC.,

Petitioner,

Vv.

INTERGRAPH CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to

the United States Court of Appeals

for the Federal Circuit

BRIEF IN OPPOSITION

DAVID VANCE LUCAS JOHN G. ROBERTS, JR.*

General Counsel LORANE F. HEBERT

INTERGRAPH CORPORATION HOGAN & HARTSON L.L.P.

289 Dunlop Boulevard 555 Thirteenth Street, N.W.

Huntsville, AL 35894 Washington, D.C. 20004

(256) 730-2032 (202) 637-5810

JONATHAN ROSS DANIEL J. FURNISS

SUSMAN GODFREY LLP TOWNSEND AND TOWNSEND

1000 Louisiana Avenue AND CREW LLP

Suite 5100 379 Lytton Avenue

Houston, TX 77002 Palo Alto, CA 94301

(713) 651-9366 (650) 326-2400

*Counsel of Record Counsel for Respondent

QUESTION PRESENTED

Whether this Court should grant certiorari to review the

Federal Circuit’s detision—based on “‘an extensive summary

judgment record,” Pet. App. 34a—that certain claims of U.S.

Patent No. 5,353,393 are invalid because they were antici-

pated by the prior art, a decision which does not conflict with

any decision of this Court or any federal court of appeals.

(i)

ll

RULE 29.6 STATEMENT

Respondent Intergraph Corporation has no parent corpora-

tions and no publicly held corporation owns 10% or more of

its stock.

TABLE OF CONTENTS

Page

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REASONS FOR DENYING THE WRIT...........ccccccceceeseee 5

I. THERE IS NO CONFLICT WARRANTING THIS

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Il. THE FEDERAL CIRCUIT APPLIED SETTLED

LAW TO THE FACTS OF THIS CASE AND

REACHED THE CORRECT RESULT ...........c.c.c0c000- 9

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TABLE OF AUTHORITIES

Page

Cases:

Boggs v. West, 188 F.3d 1335 (Fed. Cir. 1999)........... 7

El Paso Natural Gas Co. v. Neztsosie, 526 U.S.

A Se Litorcechssahtcssenentilasncnapichsidlsiietialaenladhatipaibincnidicin 5,6

Envirco Corp. v. Clestra Cleanroom, Inc., 209 F.3d

Re i Gas BE etncekccdciccne madi eitcineniarignnnanns 8

Ethicon Endo-Surgery, Inc. v. United States Surgi-

cal Corp., 93 F.3d 1572 (Fed. Cir. 1996)................. 7

Fireman’s Fund Ins. Co. v. United States, 909 F.2d

Ae I: Gls NE titiihncxensetAnnesadavioiatininasialan aban 8

Fountain v. Filson, 336 U.S. 681 (1949)... 6

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

967 (Fed. Cir. 1995), aff’d, 517 U.S. 370 (1996)...... 3,9

Pitney Bowes, Inc. v. Hewlett-Packard Co., 182

F Oe ee Cs Ge EI se ciiewntisetsienrecrnevineicintrenses 8

Virginia Military Institute v. United States, 508

as EE Wiihericlindaninccssaepeniaiieilicdiabeadnihitebuncabiaies 11

Watt v. Alaska, 451 U.S. 259 (1981) ou... cece eeeeeeeees 5

Wisniewski v. United States, 353 U.S. 901 (1957) ...... 7

Rule:

i Fae IE Si icteric cticnh iidchecsaihip mp coralataia Minassian 5,9

Other Authorities:

Robert L. Stern, et al., Supreme Court Practice (7th

OE Fe iiiniteiensnsktcencscdacitaneetlarnaaas abana 7

IN THE

Supreme Court of the Anited States

No. 00-543

AMERICAN IMAGING SERVICES, INC.,

Petitioner,

V.

INTERGRAPH CORPORATION,

Respondent.

On Petition for a Writ of Certiorari to

the United States Court of Appeals

for the Federal Circuit

BRIEF IN OPPOSITION

Respondent Intergraph Corporation (“Intergraph”) respect-

fully requests that this Court deny the petition for certiorari

filed in this case.

STATEMENT OF THE CASE

Petitioner is the holder of U.S. Patent No. 5,353,393 (the

““ °393 patent”), entitled “Apparatus and Method for Ma-

nipulating Scanned Documents in a Computer Aided De-

sign System (“CAD system”). The ’393 patent addresses

the need for converting a paper document into computer-

readable form, permitting changes to that document using

computer tools, and producing an edited version of that

document in both hard copy and electronic form.

2

In this action, petitioner alleges that three software pro-

grams produced by Intergraph infringe all 42 claims of the

°393 patent. Intergraph moved for summary judgment on

the ground that the ’393 patent is invalid because it was

anticipated by, and obvious in light of, the prior art, in-

cluding “SuperPaint,” a computer graphics editing pro-

gram. The District Court subsequently held a Markman

hearing for the purpose of construing the patent’s claims,

and the parties “submitted an extensive summary judgment

record.” Pet. App. 34a.

In opposing summary judgment, petitioner argued that

SuperPaint did not anticipate the ’393 patent because the

patent is limited to CAD systems, and SuperPaint is not a

“CAD system” as that term is used in the ’393 patent. Pet.

App. 33a. According to petitioner, the patent defines

“CAD system” as a system capable of producing engineer-

ing drawings, and because SuperPaint cannot produce

engineering drawings, it did not anticipate the °393 patent.

Id. Petitioner never attempted to demonstrate that Super-

Paint did not anticipate the °393 patent because it lacked

other functions and attributes of the ’393 patent.

The District Court rejected petitioner’s proposed con-

struction of “CAD system,” and held that the patent broadly

defines that term as a system “commonly used to create and

edit drawings and other graphic displays on a computer

screen or other cathode ray tube (CRT) display.” Pet. App.

53a-54a. The court then concluded that SuperPaint antici-

pated each of the patent’s claims—save dependent claims

12, 35, 36, and 42—because it has the ability to create and

edit drawings and other graphic displays on a computer

screen. Pet. App. 64a. The remaining claims, the court

concluded, were obvious in light of SuperPaint. Pet. App.

3a. Accordingly, the court granted summary judgment in

favor of Intergraph. Pet. App. 75a.

3

Petitioner subsequently moved to alter or amend the

judgment. In its motion, petitioner reiterated its argument

that SuperPaint did not anticipate the ’393 patent because

SuperPaint cannot produce engineering drawings, but did

not argue or even suggest that SuperPaint lacked other

functions and attributes of the ’393 patent. Pet. App. 2la &

n.1. The District Court denied that motion. Pet. App. 21a.

Petitioner appealed. Petitioner argued that the District

Court erred in construing “CAD system” as a system

“commonly used to create and edit drawings and other

graphic displays on a computer screen or other cathode ray

tube (CRT) display,” and urged the Court of Appeals to

construe the term more narrowly as a system “capable of

producing engineering drawings and the like.” Appellant’s

Br. 18. Petitioner also argued that the District Court erred

in holding that SuperPaint anticipated the ’393 patent be-

cause SuperPaint cannot be used to produce engineering

documents. Jd. at 31-32. Again, petitioner never con-

tended or suggested that SuperPaint did not anticipate the

’393 patent because it lacked other functions and attributes

of the ’393 patent.

In a unanimous decision, the Federal Circuit affirmed in

part, reversed in part, and vacated in part. Pet. App. 2a.

Recognizing that “[t]he first step in any invalidity analysis

is claim construction,” Pet. App. 4a, the court took up the

first issue raised by petitioner by setting out the appropriate

standard of review: “Claim construction is an issue of law,

which this court reviews de novo without deference to the

trial court.” Pet. App. 5a (citing Markman v. Westview

Instruments, Inc., 52 F.3d 967, 979 (Fed. Cir. 1995), aff'd,

517 U.S. 370 (1996)). Applying settled law, the court then

proceeded to conduct its own review of the intrinsic evi-

dence—the claims, specification, and prosecution history.

Pet. App. 5a-7a. Based on its review of that evidence, the

court agreed with petitioner that the District Court had

erred and that “CAD system” was properly construed as a

4

graphics system “well-suited for producing engineering

drawings.” Pet. App. 7a. |

Turning to the second issue raised by petitioner—whether

the District Court erred in holding that SuperPaint antici-

pated nearly all claims of the ’393 patent, see Appellant’s

Br. 27-32—the court noted that claims 1-7 and 14-29 “are

not limited to use in a CAD environment,” i.e., a system

capable of producing engineering documents, but instead

are “broad enough to encompass a general graphics pro-

gram such as SuperPaint.” Pet. App. 9-10a. Because peti-

tioner’s “only contention opposing anticipation of these

claims [was] that SuperPaint is not a CAD system, and

therefore, cannot produce detailed engineering drawings,”

the court held that the District Court had not erred in de-

termining that SuperPaint anticipated claims 1-7 and 14-29.

Pet. App. 9a (emphasis added).

As for the remaining claims, the court concluded that

claims 8-11, 13, 30-34, and 37-41 were not anticipated by,

but were obvious in light of, SuperPaint, and that genuine

issues of fact remained as to whether claims 12, 35, 36, and

42 were obvious in light of SuperPaint. Pet. App. 11a, 13a-

15a. Accordingly, the court vacated the District Court’s

judgment insofar as it related to the latter claims and re-

manded for further proceedings. Pet. App. 17a.

Petitioner filed a petition for rehearing. There, for the

first time, petitioner suggested that SuperPaint lacks other

functions and attributes of the ’393 patent, and urged the

court to remand for further proceedings. Pet. Reh’g 1-2.

Despite ample opportunity to do so, petitioner—by its own

admissioiu—had not “fully develop[ed] a record concerning

the functionality and attributes of SuperPaint.” /d. at 6.

The panel unanimously denied rehearing.

5

REASONS FOR DENYING THE WRIT

Petitioner has now filed a petition for certiorari seeking

nothing more than the proverbial “second bite.” The peti-

tion does not meet any of the established criteria warranting

certiorari. See S. Ct. Rule 10. The decision below does

not conflict with any decision of this Court or any other

federal court of appeals, and raises no issues of broad im-

portance. Quite the opposite. Believing that the Court of

Appeals reached the wrong result, petitioner “requests that

this Court grant writ of certiorari to reverse the Court of

Appeals’ ruling that claims 1-7 and 14-29 were anticipated

as a matter of law,” Pet. 9, so that it may attempt to demon-

strate that SuperPaint “lack[s] other functions and attributes

of the [393] patent.” Pet. 13. “Most certainly, this Court

does not sit primarily to correct what [it] perceive[s] to be

mistakes committed by other tribunals.” Watt v. Alaska,

451 U.S. 259, 275 (1981) (Stevens, J., concurring). Peti-

tioner had every opportunity to attempt to demonstrate that

those claims were not anticipated by any prior art, both

before the District Court and the Court of Appeals. The

petition should be denied.

I. THERE IS NO CONFLICT WARRANTING RE-

VIEW BY THIS COURT.

1. There is no conflict between the decision below and

El Paso Natural Gas Co. v. Neztsosie, 526 U.S. 473 (1999).

See Pet. 12-13. There, this Court held that the court of

appeals erred in sua sponte addressing the propriety of an

injunction where the parties against whom it was issued had

not appealed those portions of the district court’s orders

issuing the injunction. 526 U.S. at 479. In deciding an issue

not presented on appeal, the court of appeals clearly contra-

vened the rule that a cross-appeal must be taken before an

appellee may “attack [a] decree with a view either to enlarg-

ing his own rights thereunder or of lessening the rights of his

adversary,” id. (quotation omitted), a rule “meant to protect

institutional interests in the orderly functioning of the judicial

6

system, by putting opposing parties and appellate courts on

notice of the issues to be litigated and encouraging repose of

those that are not.” Jd. at 481-482.

Quite unlike the court of appeals in Neztsosie, the Federal

Circuit did not reach out and decide an issue not presented on

appeal. Rather, the Federal Circuit reviewed the District

Court’s rulings on claim construction and anticipation—

issues raised by petitioner on appeal. See Appellant’s Br. 12-

32. In fact, the Federal Circuit even agreed with petitioner

that the District Court’s construction of “CAD system” was

erroneous, and adopted petitioner’s proposed claim construc-

tion of that term. Accordingly, petitioner’s contention that

“the parties [here] did not have notice of the issue to be

litigated and subsequently made the subject of the Court of

Appeals de novo claim construction,” Pet. 13, is utterly

belied by the record. This case does not even remotely

conflict with Neztsosie.

Nor is there any conflict between the Federal Circuit’s

decision and Fountain v. Filson, 336 U.S. 681 (1949), which

petitioner mentions only in passing. See Pet. 6. There, this

Court held that the court of appeals erred in deciding an issue

not raised in a summary judgment motion presented to the

district court. 336 U.S. at 682. Because that issue had not

been raised below, the party against whom it was resolved

was deprived of the opportunity to dispute material facts. Jd.

at 682-683.

Here, by contrast, the claim construction and anticipation

issues decided by the Federal Circuit were the subject of

Intergraph’s motion for summary judgment, and petitioner

had ample opportunity to present evidence and arguments

both as to its proposed claim construction and as to whether

SuperPaint anticipated the ’393 patent. Indeed, petitioner did

“submit[] an extensive summary judgment record.” Pet.

App. 34a. Moreover, petitioner raised both of these issues on

appeal. Petitioner’s contention that it was “deprived of its

7

opportunity to address and develop the factual record”

because the Federal Circuit “sua sponte” construed claims 1-

7 and 14-29 and reviewed the issue of anticipation is thus

simply untenable. Pet 7.

2. There is also no conflict between the decision below

and the decision of any other federal court of appeals. In

fact, although petitioner suggests that the Federal Circuit’s

decision conflicts with the decisions of other circuits, peti-

tioner neglects to mention a single decision evidencing such

aconflict. See Pet. i, 5.

Petitioner does assert that the decision below is contrary to

other decisions of the Federal Circuit, and “seeks writ of

certiorari in order to urge this Court to require the Federal

Circuit court to conform its ruling in this case to its previ-

ously announced holdings.” Pet. 10. Of course, any intracir-

cuit conflict between the Federal Circuit’s own decisions

would be a matter for the Federal Circuit, not this Court, to

resolve in the first instance. See Wisniewski v. United States,

353 U.S. 901, 902 (1957) (per curiam); see also Robert L.

Stern, et al., Supreme Court Practice 176 (7th ed. 1993)

(“Ordinarily, a conflict between decisions rendered by

different panels of the same court of appeals is not a suffi-

cient basis for granting a writ of certiorari.”). But the Court

need not even invoke that principle here because the decision

below does not conflict—and indeed is in perfect accord—

with the Federal Circuit cases cited in the petition.

In Boggs v. West, 188 F.3d 1335, 1337-38 (Fed. Cir. 1999),

the Federal Circuit refused to entertain an issue raised for the

first time on appeal, reciting the “general rule” that “an

appellate court will not hear on appeal issues that were not

clearly raised in the proceedings below.” Similarly, in

Ethicon Endo-Surgery, Inc. v. United States Surgical Corp.,

93 F.3d 1572, 1583 (Fed. Cir. 1996), the court remanded on

the issue of doctrine of equivalents where it was unclear

whether the district court had ruled on the issue or whether

8

the issue had even been argued to the district court. Here, as

discussed, it is beyond cavil that the issues of claim con-

struction and anticipation were raised in the district court, |

that petitioner had ample opportunity to present evidence and

arguments in its favor, and that the district court ruled on

those issues.

Certainly, the Federal Circuit’s decision in Fireman's Fund

Ins. Co. v. United States, 909 F.2d 495 (Fed. Cir. 1990), does

not present a conflict. There, the court noted that “[w]here

the grounds urged in support of the judgment have not been

presented to and passed upon by the tnal court, we prefer not

to address them in the first instance,” yet proceeded to do just

that. 909 F.2d at 499. In any event, Intergraph did not raise

any new grounds in support of the judgment on appeal, but

rather sought affirmance on the same grounds that were

pressed in and ruled on by the district court.

Finally, in Envirco Corp. v. Clestra Cleanroom, Inc., 209

F.3d 1360, 1366 (Fed. Cir. 2000), and Pitney Bowes, Inc. v.

Hewlett-Packard Co., 182 F.3d 1298, 1314 (Fed. Cir. 1999),

the court remanded infringement issues after determining that

the district court’s claim construction was erroneous. In this

case, there was no need for the court to remand because

petitioner’s sole contention—both on appeal and in the

district court—was that SuperPaint did not anticipate the

*393 patent because SuperPaint is not a CAD system, i.e., a

system capable of producing engineering drawings. Thus,

once the court determined—in complete agreement with

petitioner—that “CAD system” as used in the °393 patent

means a system capable of producing engineering drawings,

and further determined that claims 1-7 and 14-29 are not

limited to a CAD system, remand was unnecessary because

petitioner had not demonstrated a genuine issue of fact as to

whether SuperPaint anticipated those claims.

LT eM

9

Il. THE FEDERAL CIRCUIT APPLIED SETTLED

LAW TO THE FACTS OF THIS CASE AND

REACHED THE CORRECT RESULT.

At bottom, petitioner’s complaint is not so much that the

Federal Circuit decided this case in a manner that conflicts

with other federal decisions, but that the court simply reached

the wrong result. Indeed, petitioner “requests that this Court

grant writ of certiorari to reverse the Court of Appeals’ ruling

that claims 1-7 and 14-29 were anticipated as a matter of

law.” Pet. 9. But “[{a] petition for a writ of certiorari is rarely

granted when the asserted error consists of * * * the misap-

plication of a properly stated rule of law.” S. Ct. Rule 10.

This case raises no issues of broad importance justifying a

departure from this Court’s customary practice.!

In any event, the Court of Appeals below applied settled

law to the facts of this case and reached the correct result.

The court began with the first issue raised by petitioner on

appeal—whether the District Court erred in construing “CAD

system” as a system “commonly used to create and edit

drawings and other graphic displays on a computer screen or

other cathode ray tube (CRT) display.” See Pet. App. 4a-9a;

Appellant’s Br. 12-26. First, the court set forth the well-

settled standard of review: “Claim construction is an issue of

law, which this court reviews de novo without deference to

the trial court.” Pet. App. 5a (citing Markman, 52 F.3d at

979). Then the court—correctly—began its review by

examining the intrinsic evidence, Pet. App. 5a, and con-

cluded by agreeing with petitioner that the District Court

! Petitioner’s claim that the decision below “will have the unde-

sirable effect of encouraging the district courts to limit their

Markman inquiries to a single issue and simply let the Court of

Appeals perform the claims construction on appeal with respect to

any and all other issues” is absurd. Pet. 11. That is certainly not

what occurred in this case. Moreover, it should not be presumed

that federal district courts will abdicate or shirk their responsibili-

ties and duties.

10

erred and that a “CAD system” is a graphics system capable

of producing engineering drawings. Pet. App. 7a. See

Appellant’s Br. 18. Yet petitioner asserts—repeatedly—that

the Court of Appeals erred by “sua sponte” construing the :

claims at issue. Pet. 2, 3, 7. That contention is simply

indefensible.

The court then turned to the next issue raised by petitioner

on appeal—whether the District Court erred in holding that

SuperPaint anticipated claims 1-11, 13-34, and 37-41 of the

*393 patent. See Pet. App. 9a-lla; Appellant’s Br. 27-32.

Noting that petitioner’s “only contention opposing anticipa-

tion of these claims [was] that SuperPaint is not a CAD

system, and therefore, cannot produce detailed engineering

drawings,” Pet. App. 9a (emphasis added), the court an-

swered that question in the negative with respect to claims 1-

7 and 14-29-—notwithstanding its determination that the

District Court had erred in its construction of “CAD sys-

tem”—because those claims “are not limited to use in a CAD

environment,” but instead are “broad enough to encompass a

general graphics program such as SuperPaint.” Pet. App. 9a-

10a.

Petitioner now contends that the Federal Circuit improperly

and sua sponte decided the anticipation issue—even though

petitioner raised it on appeal—and that the court should have

remanded so that petitioner could be given another chance to

prove that SuperPaint did not anticipate the ’393 patent. Pet.

3, 7, 9. Petitioner, however, had every opportunity to dem-

onstrate a genuine issue of fact as to whether SuperPaint

“lack{s] other functions or attributes” of the ’393 patent. Pet.

13. Although petitioner “submitted an extensive summary

judgment record” to the district court, Pet. App. 34a, it never

attempted to demonstrate that SuperPaint did not anticipate

the 393 patent for any reason other than that it is not capable

of producing engineering drawings and, therefore, is not a

CAD system. Nor did petitioner ever once indicate-—until its

belated suggestion in its petition for rehearing—that Super-

i aac cal

11

Paint lacks other functions or attributes of the *393 patent.

Instead, petitioner chose to rise or fall with its argument that

SuperPaint is not a CAD system.? The Court of Appeals did

not err when it decided the anticipation issue on the basis of

the recerd petitioner created. This Court should not grant

certiorari to allow petitioner the “second bite” it seeks.?

2 Petitioner claims that the “implied understanding” among the

parties and the District Court was that claims 1-7 and 14-29

“incorporate[] the CAD limitation.” Pet. 8. To the contrary, there

was no such understanding. Indeed, since the term “CAD system”

does not appear in those claims—unlike each of the other claims or

those from which they depend—it is obvious from the plain face of

the patent that claims 1-7 and 14-29 do not incorporate a “CAD

system” limitation. See Lodging App. (claims 1-42).

3 Even if petitioner’s claim that the Federal Circuit erred had

merit, the interlocutory nature of this case provides an additional

reason for denying certiorari. See Virginia Military Institute v.

United States, 508 U.S. 946 (1993) (Scalia, J.) (opinion respecting

denial of certiorari).

12

CONCLUSION

For the foregoing reasons, the petition should be denied.

Respectfully submitted,

DAVID VANCE LUCAS

General Counsel

INTERGRAPH CORPORATION

289 Dunlop Boulevard

Huntsville, AL 35894

(256) 730-2032

JONATHAN ROSS

SUSMAN GODFREY LLP

1000 Louisiana Avenue

Suite 5100

Houston, TX 77002

(713) 651-9366

*Counsel of Record

JOHN G. ROBERTS, JR.*

LORANE F. HEBERT

HOGAN & HARTSON L.L.P.

555 Thirteenth Street, N.W.

Washington, D.C. 20004

(202) 637-5810

DANIEL J. FURNISS

TOWNSEND AND TOWNSEND

AND CREW LLP

379 Lytton Avenue

Palo Alto, CA 94301

(650) 326-2400

Counsel for Respondent